DuetsBlog

Collaborations in Creativity & the Law

Subway Drops Footlong TM from Advertising

Posted in Advertising, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks

The last time I was at the airport I snapped this photo showing how Subway finally appears to have dropped its use of the TM symbol in association with the word FOOTLONG:

SubwaySignage

As you will recall, Subway had attempted to federally-register the word FOOTLONG as a trademark for hotdog sandwiches, but Sheetz’ trademark challenge on genericness grounds was successful and not appealed by Subway. Subway also failed in its attempt to own FOOTLONG as a service mark for restaurant services.

Here is a handy set of links to our previous coverage of this story:

Trademark Bully Baloney?5FootlongLogo

Subway’s “Footlong” Trademark Infringement Claim a Real Stretch

Sheetz Flushing Subway’s Footlong TM Hope?

Millions of False TM Notices to Remove?

What Subway has managed to federally-register is its $5 Footlongs Logo, shown to the right — it appears, however, given inevitable inflation (Simple $6 Menu), this will be a short-timer:

Have a wonderful Memorial Day weekend, and have a few footlongs, while you’re at it!

Use of NAVAJO – Is Urban Outfitters Infringing or Not?

Posted in Dilution, Famous Marks, Fashion, Genericide, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

Battles continue to wage over use of the “Navajo” and “Navaho” marks in New Mexico federal court. The Navajo Nation (“the Nation”) sued Urban Outfitters and its subsidiaries, including one of my favorite retailers, Anthropologie, (collectively “Urban Outfitters”) in 2012. The suit is now heating up with motion practice. The complaint alleges that Urban Outfitters violated the Lanham Act by infringing their trademarks, unfair competition and diluting their trademarks. The Complaint further alleges Urban Outfitters violated the Indian Arts and Crafts Act and New Mexico state law.

navajoThe Nation has used the Navajo name and trademark commercially for over 150 years to sell a variety of goods and services, including clothing, shoes, bags, jewelry and household wares.

In 1943, the Nation registered NAVAJO® as a trademark for its goods and services. It now owns 86 registered trademarks. The Navajo Nation asserts that its trademark is famous and one of its most valuable assets. It is a brand identifier for the Nation’s Indian-styled and produced goods.

In at least as early as March 2009, Urban Outfitters began using the “Navajo” and “Navaho” marks in product lines or to sell goods. These goods included clothing (see below), jewelry, footwear, handbags, caps, gloves, undergarments and flasks. These marks, the Nation alleges, evoke the Navajo Indian Tribe’s tribal patterns.

uoUrban Outfitters defends the lawsuit, alleging, among other things, that the NAVAJO® mark is generic and therefore not protected under the Lanham Act. Specifically, Urban Outfitters assert the mark is generic for a fashion trend or groups of goods. Further, Urban Outfitters asserts that the Nation has abandoned the marks.

The Nation brought a summary judgment motion on its trademark infringement claim. It offered a consumer survey showing customers recognize the mark as referring to authentic goods associated with the Nation not as a generic term for any class of goods.

A generic mark is one that is “a common description of products and refers to the genus of which the particular product is a species.” Donchez v. Coors Brewery Co., 392 F.3d 1211, 1246 (10th Cir. 2004). I have posted about generic marks before here.

The Nation disputes the allegation of genericness. It asserts that the NAVAJO® mark is inherently distinctive as either fanciful, arbitrary or suggestive. According to the Nation, the mark is a fanciful because the term “Navajo” is an archaic, invented name, and fanciful when applied to the classes of goods of jewelry, clothing and accessories. Ironically, the Nation explained that the term was originally a derogative term used by the Spanish when referring to members of the Nation. The Nation members themselves refer to themselves as Diné. Accordingly, NAVAJO® is an invented term and fanciful when applied to the goods sold by the Nation.

In the alternative, the mark is arbitrary when used to describe these goods. Finally, the Nation contends that the mark is at the very least suggestive, because it suggests or requires an extra inference that goods sold are associated with the Nation.

Even if the Court found the mark descriptive, the Nation contends that NAVAJO® is protected because it acquired a secondary meaning. In other words, the consuming public associates it with the Nation’s brand.

In its motion, the Nation relies heavily on a consumer survey to assert actual confusion. This survey found as much as a 53% confusion rate, and an adjusted rate of 40%.

Urban Outfitters will be filing its response in a couple of weeks. It will likely again argue that the mark is generic, has been abandoned and attack the survey evidence.

In addition to this motion, the Nation brought a separate motion for summary judgment seeking to dismiss the counterclaims and affirmative defenses that are predicated on arguments concerning genericness and abandonment of the marks. Although the court previously dismissed the Urban Outfitters counterclaim to cancel the NAVAJO® mark based on genericness, this counterclaim was dismissed on the grounds of sovereign immunity—not the merits of the claim. However, with respect to an affirmative defense of genericness, the Nation may not be able to benefit from sovereign immunity. If so, the court will have to address the merits of the genericness argument.

Companies Get the Unions They Deserve

Posted in Guest Bloggers, Mixed Bag of Nuts

James E. Lukaszewski, ABC, APR, Fellow PRSA

I grew up in a union household. My father was a teacher in the Minneapolis Public School system for nearly thirty years. Once he finished his first probationary year and was certified, he joined the union, became the shop steward, and ran the building he was in for the next 29 years. In many ways, it was a very strange existence as I look back on it from age 73. What was going on in the Minneapolis school district every day is what energized my father. He was a band and choir teacher, also licensed to teach social studies, American history and Polish. He was a very educated man who spoke six languages, from Latin to Russian. In fact, I considered him to be a very learned man.

But when it came to unions and labor/management issues, he was of a one-track mind – that of being a victim of the system helping other system victims.

I lived at home for twenty years and every workday looked and sounded pretty much the same. When Dad returned from work at about 4:45 in the afternoon, Mom was fixing dinner and he was grousing about what a crappy day he and the teachers were forced to endure.

During the first course of supper, which we all ate together he described in vivid terms how the school superintendent had mucked it up for the school principals. During the second course, he would then extrapolate what the school principal had turned around and did to make the teacher’s day miserable.

By dessert, he was already explaining his plot and plan to get even with everyone the next day. This was five days a week for twenty years.

As a teacher, he did make an important impression on his students. Even fifteen years after he retired, if I were anywhere near north Minneapolis and my last name was mentioned out loud, someone would ask about “Mr. Luke,” always in a respectful and positive way.

In our dining room, for as long as I can remember, was an original, unabridged dictionary, a bound book approximately twelve inches thick. As a part of our dinner ritual, he would select a multi-syllabic word for me and each of my three sisters. Before we could leave the table, we had to use that word successfully in a sentence. At the time, it was kind of a pain, but the fact is, all four of us always had vocabulary levels several grades beyond where we actually were in school.

So dedicated to his union activities was my father that, on the day he died – we were with him at the time – he was no longer speaking, but my sisters and I agreed that had he been able to speak, he would have said the following once again:

“The greatest failure of my life is not having been arrested and jailed for leading an illegal teacher’s strike against the Minneapolis school board.”

He was the first I person ever heard who said they, “were giving management only what management really deserved.”

I got “the victim” part many years later because I was never a union member, which is mostly about being a victim. I was just living with one. My bedroom was on the first floor near the bathroom, and I could hear him every morning in front of the mirror rehearsing the arguments he was going to make to the principal and to his fellow union members about getting even that day for yesterday’s problems.

My career has become what Fred Garcia calls “Management Anthropology.” It’s taken me into a wide variety of contentious situations including labor disputes and negotiation. The labor management problem resolution process remains largely the way it was 50 years ago when my father was engaged. It is a form of combat. There is mindless denigration and disparaging of and on both sides, tough talk, bullying. All kinds of war-like analogies and metaphors tend to get into the conversation and the news, so war is always possible.

What I’ve learned is that peace beats war every time. War-like attitudes, language, metaphors and images, invariably lead to conflict. War creates victims at wholesale rates, wounded at wholesale rates, and survivors at wholesale rates. All of these victims suffer from extraordinary emotional stress from their victimization, and the exercise of trying to manage and mitigate these circumstances always becomes defensive, abusive and offensive.

The bottom line is, and I believe always has been, that unions are formed to fix grievances known only to employees but based on management behavior. I’ve never actually found the management war college that teaches these abusive and victimizing behaviors. If I could find it, I would tear it down and replace it with The Management Academy for Waging Peace.

My philosophy has, for decades, been one of waging peace at every opportunity, avoiding the production of critics, angry people, victims and enemies. These individuals live forever, lie in wait to make a perpetrator’s life deservedly miserable whenever the opportunity arises, and are always trying to recruit additional victims to their numbers.

High-profile labor trouble generates serious temporary harm and permanent enmity. Waging Peace must be driven by a management leadership strategy and mindset focused on the goal of getting a contract or a useful result through principled, honorable positive and peaceful communication. Here are Ten Steps to Successfully Wage Peace, Reduce Contention and Avoid War.

  1. Avoid Strikes: They are the most permanently destructive actions companies can have happen to them. Even a lousy contract arrived at peacefully is generally far better than protracted negotiations with a strike. Settle. Settle. Settle. Be or find better negotiators next time. There will always be another contract to negotiate.
  2. Get Real: The Company owns the jobs, work, assets, markets, and future. All workers really have is a piece of paper in their back pocket with some rules. Keep your testosterone in check.
  3. Zip Your Lip: Focus on getting a contract. Avoid doing or saying anything that gets in the way. If it’s constructive, say it or do it. If it’s combative or abusive, there will be combat and abuse.
  4. Focus on the Goal: No, it’s not the defining moment in American labor/management relations. No, the workers of America (fewer than one in 9 is a union member) are not ready to take to the streets. Stay at the table. Stop taking things personally. Either grow up or stay at 50,000 feet, or both.
  5. Prioritize Your Communication: Internal first; employees and victims first – customers, vendors, non-union workers, retirees, anyone directly affected. Yes, even those who oppose you will get your message from you, directly. News and new media will hear the news simultaneously.
  6. Communicate Intentionally: Talk and act with compassion and victim sensitivity. Act conclusively; make unchallengeable, fundamentally sound decisions. Act, plan, talk, behave, and succeed with everyone’s best interests in mind. Preserve your resources and conserve your energy. Act honorably and ethically at all times. Build trust, reduce fear.
  7. Work Against the Usual Negative Patterns: Always be positive; be constructive; focus on tomorrow. Fix things now. Stop counting everything every day.
  8. Reduce Your Defeat Potential, Practice Foolishness and Stupidity Reduction: Avoid the usual serious mistakes:
    • Begin with a “Final Offer.” (There is only one . . . at the end.)
    • Try to run the entire enterprise with supervisory people and managers. (Better to rest and stay alert.)
    • Call for Congressional action. They are no longer capable of answering.
    • Ask the President for help. (He never signs labor agreements.)
    • Claim your company will be irreparably harmed. It’s a lie.
    • Blame the other for delays, stalling and obstruction.
    • Buy big ads that “explain your position.” (Who cares?)
    • Let the media drive your actions. Why? Media always:
      • Over-alarm;
      • Over-analyze;
      • Over-sympathize;
      • Over-hyperbolize;
      • Over-symbolize;
      • Make stuff up
      • Generally conduct themselves well below the standard they set for others.
  9. Go direct to all audiences and constituents from the beginning, because you can.
  10. Manage Your Own Destiny from the beginning: Correct, clarify and comment immediately to keep the record straight. Fail to do it and someone else will. And you will suffer.
  11. (Bonus) Control Your Mouth: How about leaving unsaid at least three things you’re dying to or being urged by others to talk about. Long-term relationships are built on leaving three or four things unsaid that you would love to include, every day.

My father was right about one thing… Skip these eleven steps and you will deserve the union you get.

Softening a Double Entendre With a Picture?

Posted in Advertising, Articles, Branding, Marketing

SaveYourAssBillboardIt has been a while since I’ve seen a billboard in the Twin Cities worth writing about, but this one engaged my attention. Let’s hope for more as our weather turns for the better.

It appears the Minnesota Department of Health is continuing its billboard campaign prodding folks to get a colonoscopy, remember these gems from two years ago?

CoverYourButtMDHAdSkirtMDHAdPullYourHeadOutMDH AdComparing the currently running “Save your Ass” billboard (there I said it) at the top of this post, to those from two years ago, illustrates the point that sequels rarely better the original.

Interesting to me is that MDH’s “Cover Your Butt” billboard uses softer words, but a harsher image, and this season it chose to flip the proposition in favor of covering the harsher word with a softer image of a playful donkey, to bring the double meaning to life.

The billboard campaign is not without controversy, so marketing types, what say you, and which of these is your favorite and why?

An appetite for the unexpected: Bay Area Restaurant Names

Posted in Branding, Food, Guest Bloggers, Idea Protection, Mixed Bag of Nuts, Trademarks

- Laurel Sutton, Senior Strategist at Catchword Brand Name Development

When the San Francisco Chronicle’s “Top 100 Bay Area Restaurants 2015” guide arrived today, I started paging through eagerly. But not to see if my favorite spot made the list, or even to see if I’d eaten at any of the top 100, as most people do, in the special Bay Area competitive spirit that can lead to knife fights over the last fresh bunch of arugula in the Berkeley Bowl. No, I was looking at the restaurant names in hopes of finding at least one that sounded nothing like a restaurant. I was not disappointed.

Of course many of the top San Francisco/Bay Area restaurant names are either French or Italian, no matter what kind of cuisine is served, because France and Italy = good food, better drink, and a rarified dining atmosphere that’s worth the many dollar signs listed in the “Prices” column of the guide. The trend may have started with Alice Waters’ Chez Panisse, which opened in 1971 and which has remained as the symbol of high-quality, locally-sourced, and lovingly prepared dishes. (Chez Panisse is named after Honoré Panisse, a character in a trilogy of Marcel Pagnol films about working class life in Marseille, France called Marius, Fanny and César.)

In the category called “Northern California”, we find the names Atelier Crenn (atelier is French for “workshop, studio”; Crenn is the surname of the chef), Camino (Italian for “fireplace, hearth” – a massive fireplace is part of the kitchen), Chez Panisse (naturellement), Molina (Molina is a Spanish/Italian surname that refers to a person who lives, works, or manages a mill), Piccino (Italian for “teeny”, reflecting the size of the original location), Picco (“peak” in Italian), Saison (French for “season”), and Sante (Italian for “salute”, French for “health”).

In the “Italian” category, of course, almost all of the 17 restaurants have Italian names. The exceptions are Flour+Water (the ingredients for pasta), A16 (the name of the highway that runs from Naples to Canosa, Pugli in Italy), Redd Wood (evoking the surname of the chef, Richard Reddington, its wood-burning oven, and the local redwoods), and SPQR (an acronym for senatus populusque romanus, SPQR translates to “The People and Senate of Rome” and was the emblem of the Roman Empire). The rest of the “Italian” list is filled with names like Acquerello (“watercolors”), Ciccio (a childhood nickname of the owner), Delfina (a woman’s name), Gialina (ditto), Poggio (“a special hillside place”), and Tosca (after the opera).

All these names are immediately evocative and even expected, if not unique or trademarkable. (A quick browse through TESS shows that most of the above-referenced restaurants have not bothered to trademark their names. How many “Tosca” eating establishments are likely to exist in the US alone? Dozens? Hundreds? Yet none of them have trademarks!) But the real finds are those entrepreneurs who throw caution to the wind and come up with unique – if opaque – names.

2015’s Top Restaurant list gives us Hopscotch (drinks made of hops and scotch), Trick Dog (a vintage piggy bank), Press (a wine press), and my favorite, State Bird Provisions. Opened in 2011, this restaurant features the quail, the state bird of California, in both bird and egg form. At first glance, the name seems to indicate a grain and feed store (provisions for birds) rather than a restaurant (provisions made of birds); it takes a moment to make the semantic shift once you understand what they’re selling. It does pique one’s curiosity – do many people know that the quail is the state bird of California? (Not me!) And, as a bonus, the name is actually trademarked. Good work!

Although “disruptive” restaurant names, like State Bird Provisions or Trick Dog, may initially be harder to remember or associate with their business, over time they have a better chance of building a unique brand – as well as staking out IP protectable rights. In a sea of Piccos and Poggios and Piccinos, a name like Hopscotch stands out, and offers more than a typical dining experience. But as with any other venture, a good name won’t save a bad restaurant. Here, the proof of the pudding is literally in the eating.

Trademark vs. Copyright: Avoid the HAVOC

Posted in Advertising, Articles, Branding, Copyrights, Famous Marks, Idea Protection, Infringement, Television, Trademarks

I’ve come across yet another college-hoops related trademark dispute — but what’s even more interesting is the way the AP covered the story. It’s a reminder that we IP lawyers can and must dispel any public confusion between the different forms of intellectual property.

Shaka Smart, the longtime basketball head coach at Virginia Commonwealth University, recently accepted an offer to be the head coach of the University of Texas Longhorns. Smart is known for employing a fast-paced style of defense known as “HAVOC” that uses a full-court press in an attempt to force opponents into making mistakes.

Smart has used the HAVOC style to great effect, as VCU reached the NCAA Final Four in 2011 and made every NCAA Tournament since, and VCU has become synonymous with the word HAVOC, even displaying “#HAVOC” on the seats in their basketball arena.

Havoc

The dispute itself is this: once Smart elected to leave VCU for Texas, the Board of Regents at Texas filed two federal trademark applications to capitalize on the HAVOC mark: HOUSE OF HAVOC and HORNS HAVOC. It seems VCU isn’t willing to let HAVOC leave Richmond along with Coach Smart, so a dispute arose between the universities. For its part, VCU has two state trademark registration in Virginia for the HAVOC mark, but did not have any federal trademark applications at the time. There must have been an undisclosed settlement agreement between the parties, as Texas has since expressly abandoned its applications, and VCU filed four new trademark applications containing the “HAVOC” wording.

Plenty of news outlets have scooped DuetsBlog this story, and it seems Coach Smart intends to continue to use HAVOC going forward. What actually brought me to the keyboard was the AP’s article on the dispute, which seems to confuse the distinction between trademark and copyright. It has been republished in various publications across the country, including the Washington Post.

For an IP lawyer, the cringing begins with the headline “Smart says ‘Havoc’ style a way of life, not just a copyright” (emphasis added). The confusion between copyright and trademark gets worse from there:

The University of Texas may have bowed out of the legal fight with Virginia Commonwealth over the copyright of “Havoc.”

Don’t expect new Longhorns coach Shaka Smart to shy away from the coaching style that got him there.

Smart on Monday called a recent copyright tussle between Texas and VCU “comical.”

“Havoc isn’t a copyright. It’s not a brand. It’s a way of playing. At VCU it became a way of life of how we did things,” Smart said.

Now, journalists these days are very busy indeed, and it’s absurd to suggest that an article written on deadline can’t go to press until an IP lawyer gets final cut. Perhaps the AP reporter was thrown off by Smart’s own use of “copyright” in his above quote. But it’s abundantly clear that this is a trademark issue. A trademark is an indicator of source for goods or services — it’s generally synonymous with a “brand” or a “calling card.” Interestingly, Coach Smart suggests that “HAVOC” is not a brand but merely a “way of playing,” suggesting that the term is just a generic term for a particular style of basketball.

On the other hand, copyright refers to the various legal rights that extend to “original works of authorship” such as “literary, dramatic, musical, architectural, cartographic, choreographic, pantomimic, pictorial, graphic, sculptural, and audiovisual creations.” In other words, Coach Smart’s instructional video detailing the schemes of his “HAVOC” defense is protected via copyright against others who, for example, sell bootleg copies of the DVD or create “derivative works” based on the video.

So perhaps this will serve as a guide to future reporters covering trademark disputes — as they say, if we can help just one person, we’ve done our job.

The Juice Runs Out for Yankee Parody Trademarks

Posted in Dilution, Fair Use, Famous Marks, First Amendment, Trademarks, TTAB

A good general business practice is to apply to register trademarks early. You’ll find out if there is an issue. You’ll have time to change rather than having to take everything off the shelf under the threat of a lawsuit. Yet a recent decision from the Trademark Trial and Appeal Board in New York Yankees Partnership v. IET Products and Services, Inc. presents a good example of when you’re better off avoiding the application process all together.  It also raises some interesting questions in light of the B&B Hardware ruling (doesn’t everything these days?)

At issue were two applications, a standard character mark for the phrase THE HOUSE THAT JUICE BUILT along with a design logo of a syringe wearing an Uncle Sam hat (shown below, left). Both applications identified apparel and baseball caps. The New York Yankees opposed, asserting claims of likelihood of confusion, false association, and dilution by blurring based upon prior rights in the phrase THE HOUSE THAT RUTH BUILT along with the logo of a baseball bat wearing an Uncle Sam hat (shown below, right).

Combined Juice Logos

In case you’re not up to date on your slang, “juice” is hip way to reference steroids. So when you hear that an athlete is “juicing,” it’s likely a reference to allegations or admissions that the athlete has used steroids (although there’s an outside chance they recently purchased a new blender).  A discussion of the steroids problem in baseball could fill a number of pages (enough for a congressional report, perhaps). While the problem was rampant among players for all teams, some of the most well-known players during the steroid era played for the New York Yankees, including Roger Clemens, Andy Pettitte, Gary Sheffield, David Justice, Jose Canseco, Jason Giambi, and, most recently, Alex Rodriguez.

The applicant’s primary defense was that its marks were a parody of the Yankees logo and stadium nickname, and therefore were protected by Section 43(c)(3) of the Lanham Act, which provides that:

The following shall not be actionable as dilution by blurring . . . any fair use . . . of a famous mark by another person other than as a designation of source for the person’s own goods or services.”

The Board took this opportunity to clarify the case law regarding the use of the parody defense in Trademark Trial and Appeal Board proceedings. In the Board’s 2012 decision of Research in Motion Ltd. v. Defining Presence Marketing Group Inc., the Board had stated that it would “assess an alleged parody as part of the circumstances to be considered for determining whether the [opposer] has made out a claim for dilution by blurring.” In doing so, the Board relied upon the Fourth Circuit decision of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC.

The Board reasoned that because the Lanham Act’s fair use defense is limited to use “other than as a designation of source,” it would be “virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board” (But you’re saying there’s a chance?).  As a result, the Board rejected the defense and found the applied-for marks to be likely to dilute the Yankees’ marks.

The case was submitted on brief on June 12, 2014, well before the B&B Hardware decision. Yet the Board did not issue its decision until nearly a year later on May 8, 2015, approximately a month and a half after the Supreme Court issued the B&B Hardware ruling. In light of this timing, the B&B decision may not have played a role in the outcome of this decision.

However, it is worth noting that the Board declined to reach the Yankees’ likelihood of confusion claim, instead issuing a ruling on the claim of dilution by blurring. It is often the reverse, because the evidentiary standards involved in a claim of a likelihood of confusion claim are easier to meet than the standards for a dilution claim. This is particularly true with respect to the evidentiary showing required to establish fame for dilution. In light of B&B Hardware, will the Board be more likely to abstain from reaching likelihood of confusion claims in the future?

Also, the Board seemed to make a concerted effort to identify the facts and issues which it did not consider in reaching its decision. The result is that if the Yankees sue the applicant for trademark infringement, the applicant need not be concerned about a preclusive ruling from the Board regarding likelihood of confusion or the applicability of the parody defense to the claim of dilution.

It appears that the Board may be taking care to provide clear guidance on the issues that were (and weren’t) decided.  While we’ve certainly been critical of the B&B decision on this blog, perhaps there is a silver lining after all.

Trademarks Can Be a Bitch

Posted in First Amendment, Trademarks, TTAB, USPTO

And I mean that literally.

We’ve laid down a lot of digital ink in the past about pejorative marks – lately in reference to the Redskins (at least here, here, and here) and  The Slants (here and here), both of which have been deemed disparaging enough to deny them a federal trademark registration.  We’ve even addressed some sexism in branding.  And I’m about to lay down a little more such ink.

I once saw a sign at my high school, which is attached to a convent, that said basically “tweet and post as if you were talking to one of the Sisters,” so I’m going to do my best to adhere to that with the topic at hand.

The topic is the word “bitch” in trademarks.

It’s a word that, by long-standing definition, refers to a female dog.  It also, of course, has been used as a pejorative term against women.   However, it also can characterize a strong, assertive woman.

In March, Flying Dog Brewery of Virginia won a long and hard fought First Amendment battle over the trademark RAGING BITCH in the state of Michigan.  The state of Michigan’s liquor commission had banned their beer labeled RAGING BITCH on the basis that the name was sexist and offensive, and Flying Dog tried to recoup lost profits because of the ban.  The Sixth Circuit ruled that the liquor commission had violated Flying Dog’s First Amendment rights and that the liquor commission should have been on notice that “banning a beer label for vulgarity violates the First Amendment” based on Bad Frog Brewery, Inc. v. N.Y. State Liquor Auth., 134 F.3d 87 (2d Cir. 1998) and remanded it to the district court (the parties then settled).

raging-bitch-label

The imagery clearly refers to a female dog.

The interesting part about this case is that Flying Dog owns an active federal trademark registration for the mark RAGING BITCH for beer (and incidentally, I’ve tried it and it’s quite a good beer).  For those unfamiliar with the nuances of brewery law, if a brewery wishes to sell their product in another state, they have to obtain a COLA (certificate of label approval) from the federal government’s TTB.  In addition, they often undergo specific licensing procedures within the relevant state, which is where the Michigan Liquor Control Commission balked at sales of the product due to the name.  Here, although they had an approved federal trademark registration which requires use in interstate commerce (and  a COLA license), they were impeded by the local authority in one state.

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs or national symbols. TMEP 1203.03(c).  To be disparaging, it must be shown (1) that the communication reasonably would be understood as referring to the plaintiff; and (2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities. Id.

During some Wild-Blackhawks playoff intermissions, a question was posed to me:  why is Blackhawks OK but the Fighting Illini are not?  One refers to a revered leader of the Sauk and Fox Indians while the other to a made-up chief, Chief Illiniwek.  Seemingly, it’s a matter of connotation – a Redskin with a potato mascot may be acceptable under Section 2(a) if it is not understood to be referring to an Indian tribe plaintiff.

And in general, is society too offensive or too easily offended?  Or, even in such a politically correct society, are we not offended often enough?

Trademark a feeling.

Posted in Branding, Guest Bloggers, Mixed Bag of Nuts, Non-Traditional Trademarks, Sight, Smell, Sound, Taste, Touch, Trademarks

Aaron Keller, Managing Principal, Capsule

How fast are you getting at typing with your thumbs? My high school typing instructor would be so proud of my advancements. I’d say 60 words a minute if I am humming along with an idea of what to write. Not bad, proud to say I am writing this post on my Apple iPhone 6, and though my thumbs are manly, the letters are accommodating.

Now, what makes me curious is the rewarding outcome for all this work. The sound when I have finally completed my effort and this message is sent. I know the sound, it feels like a small jet taking off from my desk.

The sound brings a little rush and a mental reward for all my effort and tired thumbs. To me the sound has a feeling attached, the feeling of accomplishment.

So, in my searches for the entity owning this sound, I have explored the world of Apple intellectual property. I’ve found a registered trademark for the Mac startup chime and a trademark for the store design layout, both I have enjoyed and agree there should be some attribution and ownership.

But, nothing on the sound rapidly approaching as I finish this blog post. Perhaps it has been filed and just not obtained yet, or maybe this is a gap in the legal department at Apple (not likely).

I also have to admit to an anterior motive for finding the intellectual property behind this story. As an author of our next book on The Physics of Brand, we are seeking stories of brands protecting intellectual property surrounding the less considered sense (sound, taste and touch).

So, if you’re also getting excited about finishing this blog post and wondering, “what stories do I know about non-traditional trademarks,” leave a comment. Perhaps we will be able to share your name and story.

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

Posted in Articles, Infringement, Law Suits, Trademarks, TTAB

Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States.

As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution, success, jurisdiction) to consider, weigh and balance. Dabblers probably best step aside.

Now, thanks to the recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc., we must factor in the likelihood of preclusion too, throughout the trademark life cycle.

After noting that “the idea of issue of preclusion is straightforward,” but admitting it “is challenging to implement,” the Court broadly held that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.” (emphasis added)

This broad holding begs the question of what other types of issues decided by the TTAB — beyond the likelihood of confusion question before the Court — may result in the application of issue preclusion. Priority? Inherent Distinctiveness? Genericness? Functionality? Descriptiveness? Acquired Distinctiveness? Fame? Dilution? Intent to Deceive? Bona Fide Intent to Use? Fraud? Intent to Deceive the USPTO? Intent to Resume Use? Abandonment? Laches? Deceptiveness for False Advertising? False Suggestion of Connection for Right of Publicity Violations?

As to the likelihood of confusion question (which the Court found to be fundamentally the same for registration and infringement purposes), the Court unclearly directed: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.” (emphasis added) As is typical when the Supreme Court speaks, more questions are raised than answered.

Does the Court contemplate anything other than the potential for unregistered common law rights and restricted channels of trade when it refers to “usages adjudicated by the TTAB”? What about applications and registrations for typed drawing marks versus stylized marks? What about the presence of house marks and/or famous trade dress on packaging, but not included in the drawing of the applied-for mark? What about goods listings that are appropriate under USPTO rules (e.g., jewelry), but broader than what might be in actual use to support the registration or application (e.g., lapel pins)? Does a cautious following of B&B Hardware counsel in favor of seeking to register narrower trademark claims that include only the stylized version of a mark used with the sleekest description of goods possible?

Exactly what does the Court mean by materially the same usages? Does it contemplate partial preclusion scenarios? Does the materially the same reference invoke the material alteration standard? Does it invoke the “can’t materially differ” standard in trademark tacking cases? If so, under Hana Financial, doesn’t that question go to a jury? Yet, in B&B Hardware (argued to the Supreme Court on the very same day as Hana Financial), the Court wasn’t troubled by the absence of juries in TTAB decisions.

Perhaps most notably, the word “should” appeared twenty-six times in the majority opinion of the Supreme Court’s B&B Hardware decision, and the word “shall” only appeared five times (each of the five references related to specific statutory language), leaving me to ask, must a district court apply issue preclusion when the Supreme Court thinks it should, when the Court specifically avoided use of the words shall and must? In other words, is the decision of preclusion left to the sound discretion of the district court?

One of the other million dollar unanswered question remains: How does one predict the likelihood of preclusion?

For those looking for absolute certainty, don’t clear and adopt a mark for use you can’t federally register, don’t apply to register a mark likely to be opposed unless you can win and you’re prepared to see it though, don’t start defending an opposition if you aren’t prepared to see it through, but if you do and lose, by all means take a de novo appeal to federal district court if you’re a losing opposer who may want to force the use to stop, or if you’re a losing applicant who wants to keep using the applied-for mark.

For the rest of us who are comfortable living with some level of uncertainty, it’s time to read the tea leaves with a view to predicting not only likelihood of confusion, but the likelihood of preclusion too.