Collaborations in Creativity & the Law

Copyright Watch: Suit over the NCIS Bert the Far***g Hippo

Posted in Copyrights, Infringement, Mixed Bag of Nuts, Television

I can’t even say the word!  Don’t worry, I’ll have to eventually.  Let’s just say the folks at CBS are likely pretty steamed up over getting hauled into court on a smelly copyright suit involving a noisy character from its popular NCIS show.

The California designer, developer, and manufacturer of the original “Bert the Farting Hippo” is suing CBS as well as a host of others including the online retailer authorized by CBS to operate and sell goods in the CBS Store.  The copyright infringement suit alleges that the retailer went rogue in 2012, opting to source the copyright-protected plush and popular noisemaker in China rather than the California company that developed the original, Folkmanis, Inc.

As of this morning, Bert the Farting Hippo appears to be pulled from the virtual shelves of the CBS Store.  Earlier this week, The Hollywood Reporter noted that the hippo was still for sale at 53% off.

According to the Folkmanis complaint filed Monday in the Northern District of California, Bert’s first appearance on television came back in 2003 when the producers of NCIS acquired a silent version of the stuffed hippopotamus for use on the show.  When the hippo appeared on the show, the complaint alleges, “it was often accompanied by a dubbed sound effect of a fart attributable to the Hippo 1 puppet, and the show puppet was referred to and came to be known as ‘Bert the Farting Hippo.’”

Quick aside: I love the way lawyers write sometimes: a “fart attributable to…”  It almost hearkens to patent claim-writing parlance.  Attorney H. Michael Brucker, who filed the suit, must not be aware of the time-old rule, “you smelt it, you dealt it.”  It’s so much more conversational that way!  Then again, I see nothing about Bert’s ability to smell.  But I must admit, it’d be pretty cute if parents started to teach their children to assign blame using a more proper form of attribution.  But I digress.

The suit goes on to allege that in 2010, CBS and its online retailer-licensee “surmised that a hippo puppet would be a profitable product to offer for sale on the CBS Store.”  Folkmanis obliged, developing a version of its hippo that included “a sound box that emulates the sound of a fart.”  Emulates! Much to the chagrin of parents everywhere, of course.  In 2011, a keychain version of Bert was introduced.

Can you guess how many hippos they sold between just 2010 and 2012?  I’m not an NCIS fan so I didn’t know about Bert until I caught wind of this suit this week, so I’d never heard of this creature.  Would you believe it if I told you they sold some 30,000 farting hippos?  That’s what the complaint alleges.

Enter the presumably cheaper Chinese counterparts.  Folkmanis alleges that the online retailer operating the CBS Store started sourcing the hippos in China starting in 2012 and hasn’t purchased a single hippo or hippo keychain from Folkmanis since that time.  The lawsuit cites two copyrights, one for the stuffed animal toy, and one that’s pending that covers the keychain.

Since 2012, Folkmanis alleges that it has suffered an estimated $733,000.00 in damages.

Blue 42. Set. Trademark! I mean, Hike!

Posted in Articles, Branding, Fair Use, Famous Marks, First Amendment, Goodwill, Non-Traditional Trademarks, Product Configurations, Sound, Squirrelly Thoughts, Television, Touch, Trademarks, USPTO

Can you feel it? All around the country, fields are being groomed, stenciled, and painted. Tonight, the college football season begins with Georgia State taking on Abilene Christian in what could be a preview of one of hundreds of games that most of us don’t really care about. But like so many fans around the country, I’ll probably still watch it, at least for a quarter: I missed you Football.

Football certainly hasn’t been gone from the news though, as lawsuits addressing scholarships, unions, and additional antitrust violations have all made headlines. But one headline caught my attention, an article discussing the University of Southern California’s head coach Steve Sarkisian filing a U.S. Trademark Application for his moniker SARK. Sark joins a number of other college football coaches who have applied to register their names.

Just last month, we covered the University of Arkansas’s registration of the SOOOIE RAZORBACK cheer. There was also the Oregon/Oregon State CIVIL WAR, too. This got me wondering, if trademark law can protect coach names, chants, and intrastate rivalry games, what other fun ways can I think about work while watching football?

How about stadiums?

Check. Well, technically only the turf is claimed as a feature of the mark. Steve discussed this registration back in 2009. Also, the red version for Eastern Washington. Not the stadium itself. But still.



Check. Oh, and better get one for the away uniforms, too.

And speaking of uniforms, if you were considering launching a business that sold perfume or deodorant in the form of a football jersey, well. Don’t. Not just because its a terrible idea, but because you might be infringing on the trademark registration below:


And since we’re on the subject of product trade dress, don’t forget about football shaped brownies:


And you definitely won’t want to forget about your football shaped “alcoholic beverages except beers:”


And let’s see if you can guess what kind of goods or services this is a trademark for:

Yes, it’s a kicking tee. And yes, it’s registered on the Principal Register in connection with kicking tees.  How? Well, apparently, the texture on the tee is so unique that it has acquired distinctiveness in the minds of consumers as identifying a particular source. Right.

There’s even a trademark registration for this logo:


Which is apparently in no way associated with this registered trademark of Nike:


Or how about this trademark:

Yep, that yellow line is a trademark of Sportsvision. Martha covered that here around Super Bowl time – Oh, sorry Roger -  The Big Game time.

And if you’re attending a game at Texas A&M, not only will you be surrounded by trademarks, but you will BE a trademark, way to go 12TH MAN®!

There are certainly many more that we could cover, but I think it is pretty clear that this Saturday, whether you’re in the stadium, on the LA-Z-BOY® at home, or at the BLUE 42 SPORTS GRILL in Winter Garden Florida, you will be surrounded by trademarks. And football. Glorious, but possibly not-very-competitive, football. Enjoy it! – I know I will (GO HAWKS!!).

A Real Lulu of a Trademark Infringement Case

Posted in Articles, Branding, Food, Law Suits, Trademarks, USPTO

It’s that time of year again, the Minnesota State Fair is here, and trademark issues abound, again.

We’re actually not covering the trademark fair issue we planned to cover today because we just caught wind of a lulu of a trademark infringement case filed on Friday of last week against a brand new 2014 fair vendor: Lulu’s Public House.

This particular Lulu has been getting some nice press on their food offerings and on sporting the fair’s first rooftop patio, and in doing so, has gained the attention of another Lulu, and not the lemon, or the “wanna be” bed & breakfast, much less any of these federally-registered or published, peacefully-coexisting, apparently-unrelated Lulu’s eating establishments:






No, none other than LuLu’s Food Market & Deli Inc., d/b/a LuLu’s Market & Deli filed suit against The Firefly Group Inc., d/b/a Lulu’s Public House August 22, 2014 — the second day into the 2014 Minnesota State Fair, and at least two months after Lulu’s Public House was announced as a new 2014 fair vendor, to be located in the newly remodeled West End.

The Pioneer Press coverage of the story highlights the instances of confusion alleged in the complaint: “Lulu’s Market & Deli has been contacted by several well-wishers and job-seekers who confused it for the Lulu’s at the state fair.” It also focuses on similar menu items:

“In addition to the shared name, the complaint points out that both restaurants offer ‘Jucy Lucy’-style menu items — Lulu’s Public House sells a breakfast sandwich called the ‘Breakfast Juicy LuLu,’ while Lulu’s Market & Deli sells a cheeseburger called the ‘Fair Lucy’ — and taco menu items — Lulu’s Public House sells a prime rib taco, while Lulu’s Market & Deli sells a fish taco. The complaint says this too is likely to cause confusion among consumers.”

Notwithstanding the potential for confusion, given the timing and the delay in filing suit and failure to seek emergency injunctive relief before the opening day of the fair will likely weigh against the court taking action in time to affect any name and signage changes, at least for this year at the fair. Having said that, this case was filed in Ramsey County Minnesota State Court, not the typical federal court where most trademark infringement actions are heard, so we’ll have to wait and see what happens – but I’ll go out on a limb and predict no name changes, this year anyway, given the very heavy burden when seeking emergency injunctive relief.

Whether a name change is required between now and next year likely will depend on how the evidence develops over the course of the next year, and whether LuLu’s Public House has the stamina to defend itself, any predictions on either?

I’m so intrigued by this case, Lulu’s Market & Deli isn’t at the fair, but for more than two years the home page of their website features a jucy lucy burger called “The Fair” — honestly, what are the odds they find themselves in the present pickle of a trademark infringement action against a vendor located only at the fair?

Bottom line: Do you think the addition of “Public House” to Lulu’s at the Minnesota State Fair is enough to distinguish it from Lulu’s Market & Deli on Selby in St. Paul?

ALS Ice Bucket Challenge – The Anatomy of a Viral Phenomenon

Posted in Goodwill, Guest Bloggers, Social Media

Matt Kucharski, Executive Vice President, PadillaCRT

At PadillaCRT we’ve had numerous clients and prospects – both in the for-profit and not-for-profit world – ask us about the magic that is the ALS Ice Bucket Challenge. More specifically, they want to know how they can make their cause “go viral” in the same manner.

The short (and glib) answer is “you can’t.”

I mean, let’s be real. When has there EVER been a social media phenomenon that has generated participation from as wide a segment of the population as this one? Whether it’s Bill Gates accepting the challenge from Mark Zuckerberg, Neil Patrick Harris accepting the challenge from Ben Affleck, or me accepting the challenge from a colleague, this campaign has raised money – and more importantly raised awareness – like no other, and I really don’t see any organization being successful if they try to directly replicate it.

Now for the silver lining. Organizations can and will continue to be successful building their reputations and brands and expanding their network of advocates in social media, and they can learn some very important lessons from the ALS phenomenon.

In a previous guest post I wrote for Duets last year, I outlined the 3 reasons people refer brands in social media – Helping Others, Validation and Perks. Those three certainly apply to referring causes like ALS as well. Here’s a quick recap:

- Helping Others: While there are certainly diseases that have taken more lives, there are few as nasty as ALS. Research toward a cure is under-funded, and it’s a worthy cause.

- Validation: This one cuts two ways. People who are called out in the challenge are called out publicly. If they fulfill the challenge without actually posting the evidence online, there is no validation they did it. In addition, they want others to know that they did a good (and somewhat silly) thing because, well, it makes it just a little bit less silly.

- Perks: In this sense, it’s not free stuff, but instead it’s entertainment. It forces us not to take ourselves too seriously, it makes people smile, and nobody gets hurt in the process.

And let’s face it – isn’t there someone that YOU would like to see get a bucket of ice water dumped on their head?


Posted in Mixed Bag of Nuts, Smell, Taste, Trademarks

Although once illegal in the United States, absinthe can now be consumed in your local bars.  It was a favorite drink of writers and artists such as Ernest Hemmingway, Vincent van Gogh, Oscar Wilde and Pablo Picasso.  Unfortunately, this green anise-flavored spirit did not fare so well in Swiss Court last week.  The Swiss court blocked reservation of “absinthe.”  It was found to be a generic term along with “La Bleue,” or “Fée verte” (translated as “The Green Fairy”) which also describe the popular drink.

These three terms had previously been registered as trademarks in Switzerland in 2010.  However, numerous objections were filed against these registrations.  They were ultimately defeated last week.  We will have to see if this defeat sticks or if there is an appeal to Switzerland’s Federal Supreme Court.

Trying to obtain the term “absinthe” for the popular alcoholic beverage would likely suffer a similar fate in the United States.  However, I found an intent-to-use application for the clever mark ABSINTHE MINDED for beer containing absinthe flavoring on the Principal Register.  It would likely be a hit for Saint Patrick’s Day. 

I wonder if Oscar Wilde was drinking absinthe when he penned the quote “Anyone who lives within their means suffers from a lack of imagination.”

Role Reversal: David Bullying Goliath?

Posted in Branding, Famous Marks, Goodwill, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB

When claims of trademark infringement make the news, it is often because a billion dollar corporation is suing old man Donaldson’s tavern for trademark infringement (Although, McDonaldson’s might have been a bad choice…).  You’ve got your Ikeas, your Googles, Chick-fil-As, and your NFLs of course (not the National Forensics League, they’re cool).  David can fight back and win, but David never throws the first punch.

Well, as the saying goes, every once in a blue moon, there’s an exception to the rule. And our exception to the David-Starting-Fights-Rule is Mr. Jeff Moses. Jeff owns the MBF Company, a beer, wine, and spirits distribution company. He also owns a number of his own brands, including his Graffiti® brand of wine. And if you’re thinking that the little R in a circle may become important, well, Watson, I think we’d make a great team. (That’s a Sherlock Holmes reference; I can use that now, right?). Moses even found California graffiti artist to create labels for his wine, like the one below:

After Moses used (and registered) his GRAFFITI mark, the Blue Moon brand released a specialty edition line called the “Graffiti Collection.” According, to Blue Moon, the line’s premise rests on the fact that:

We never know what will come out of the creative minds of our brewmasters. These bigger, bolder ales are inspired by the unpredictable stories of our brewers.

Yes, crazy, creative, unpredictable names like “Pine in the Neck,” “Tounge-Thai-ed,” “Chimp,” and “Grape Scott.” Those zany stories have to be true. No way the marketing department was simply charged with the task of “finding ‘funny’ puns, like those craft brews are doing.”

But back to the lead. Blue Moon filed a trademark application for the mark GRAFFITI COLLECTION. Moses filed a Letter of Protest, which stated that Moses believe there would be a likelihood of confusion between his earlier trademark GRAFFITI in connection with “wine” and Blue Moon’s use of “GRAFFITI COLLECTION with “beer.” The Trademark Office granted the letter, and the Examining Attorney issued a refusal to register Blue Moon’s applied-for mark. Blue Moon chose to abandon the application, but continues to use the mark to promote its beer. Moses doesn’t like that and, according to one local news source, is considering taking legal action.

It’s an interesting article, as the news reporter also spoke with a communications manager for MillerCoors, who informed the reporter that “[a]ny time a name is under consideration, we decide if we need a trademark or not. In this case, we saw no grounds for confusion. Beer and wine are totally separate categories.” Of course, if the company had “chosen” that didn’t need a trademark registration, they they wouldn’t have filed at all. What he really means is that the company decided it is comfortable with taking the risk that the other factors (use of the Blue Moon brand, differences between the goods, and other factors) are all sufficient to avoid a likelihood of confusion in the real word (or that they don’t believe Moses will enforce his rights).

Moses appears to be fighting a bigger fight though. One of his primary problems appears to be Blue Moon’s (and really, all of the big beer companies’) attempts to co-opt the craft beer ethos:

They’re not a craft beer. They don’t own the name they’re using on the label. And it’s an insult to graffiti artists that they’re using graffiti and street art to represent a mass-produced beer product.

I’ll admit that Blue Moon does a better job than the beers that include the namesakes of the big breweries. It didn’t take long for Budweiser American Ale to get the axe. I would imagine that Miller Fortune isn’t far behind. Craft brew continues to grow, notwithstanding that there are new breweries opening every month. As Bloomberg reported in January:

Sales of craft beers grew 16 percent in volume over the past year versus a 1.7 percent decline for the biggest U.S. beer brands, according to researcher Symphony IRI Group. Sales of Bud Light were off by 1.3 percent and Miller Lite slid 4.4 percent.

There are a number of explanations, with taste likely at the top of the list, and “localization” not far behind. But that doesn’t explain why Big Beer has failed to capitalize on the growing trend of craft beers.  If I can borrow one of our guest blogger’s branding hats for a moment, though, I think I have a good explanation: crudely put, people have natural bull**** detectors. In some ways, it’s the basis of the entire jury system. When consumers see the “Budweiser Craft Beer,” they see Budweiser, they don’t see Craft Beer. That’s why you’ll never see the Coors name displayed prominently on a Blue Moon bottle, (or the other “craft” beers owned by Big Beer). No matter how hard they try, Goliaths can’t fool anybody by trying to squeeze into David’s clothing. Let’s wait and see if Moses can be successful in donning the clothes and role of Goliath against Blue Moon…

Hey Commish, Can You Trademark The (Fantasy Football) League?

Posted in Squirrelly Thoughts, Trademarks, USPTO

All around America, men will soon gather in front of their computers feverishly conducting research, generally wasting time, and participating in one of the manliest things they likely will do for quite some time:  their fantasy football league’s draft.

Fantasy football is an $11 billion dollar industry (to put that into perspective, the NFL had only $6 billion in revenue last year) and there is a multitude of fantasy football-related patent applications and granted patents.  But a search of the U.S. Trademark Office’s records reveal only 56 live applications and registrations having the likely generic term “fantasy football” in their goods or services description (one of those happens to be for the WASHINGTON FEDSKINS).

I recently ended a self-imposed hiatus from fantasy football for my UJustGotBeatByAGirl team by being the first woman ever accepted into the WAFFL league – the preeminent fantasy football league, or at least so my friends who started it over 15 years ago tell me.  Acceptance into the WAFFL league came after completing an application form longer than my law school application.  I had to find a team name to fit in with the off-color team names like the Belfast Bombers and the Junior High Pedophiles. There was also a significant essay section on trash talking and a long essay on the prospects of the Philadelphia Eagles this year.  It’s so serious, folks, that I’m surprised they didn’t make me do the 40-yd dash and take the Wonderlic.

Now acting like an owner in such a prestigious league, it’s important to me to protect the league’s important assets, including its WAFFL name.  A quick search of the USPTO records suggests that it’s available for use and registration, although internationally there is a WAFFL football league in England…but for that other kind of futbol.  So I decided to ask a question for all fantasy football players: “hey Commissioner, can I get a trademark registration for my fantasy league’s name for fantasy football league services?”

In order to get a U.S. trademark registration for a word or design, it must (1) function as a trademark, meaning it must be used to identify and distinguish the owner’s goods and services over those of others and (2) be used in interstate commerce.

First, a fantasy football league name ostensibly distinguishes one league from another league – especially when you play in multiple leagues at the same time.  The name distinguishes the entertainment services of providing and organizing a fantasy football league for one group over another’s.  A team name, however, would be unlikely to function in the trademark sense, because there really are no goods or services that your fake team is providing to others.

But as to whether a fantasy football league name would satisfy the second requirement, the typical lawyer answer applies:  “it depends.”  Interstate commerce would include any use that might possibly be regulated by the federal government under the Commerce Clause, which has been interpreted to apply to just about anything.  While secret, non-public, or certain “sham” transactions have been deemed such casual or de minimis use as to not give rise to federally registrable trademark rights, there could be room for fantasy leagues to file for federally registered trademark rights if sufficient use was shown.  For instance, if a fantasy football league were to have at least a public website and offer its league services to teams in different states, that may be enough under current law to support that there is adequate use of the mark in commerce and the website would also satisfy the specimen of use requirement for the application.

So, is your fantasy football league serious enough to warrant some trademark protection?  Doubtful, but if you really want to take the “fantasy” of fantasy football one yard further, I see trademark registrations and lucrative licensing deals for league swag in your future.

You can follow me on Twitter:  @Martha_Engel


Recalled Harleys: What if I could make my own fix?

Posted in Guest Bloggers, Idea Protection, Mixed Bag of Nuts, Technology

- Jason Voiovich, Vice President, Marketing, Logic PD

Bottom line: Your Harley gets recalled. You need to get on the road to Sturgis. So you need parts in a hurry. The specs for those parts are available for free online. And you can buy a MakerBot 3D printer from Home Depot for under $1500. What could possibly go wrong?

To tell this story, we need to assemble facts from three places.

First, on July 10, Harley Davidson recalled 66,421 Touring and CVO motorcycles because of an issue with its antilock brakes. Apparently, the flaw can cause the front wheels to lock up spontaneously. I’m not a physicist, but I’ve hit the occasional log on my mountain bike, and the results aren’t pretty. I can’t imagine what that’s like doing 90 on the road in South Dakota. The fix is pretty simple: A strap to keep the brake line from getting pinched.

Second, not four days later, Home Depot announced that it would start carrying the ultra-cheap and uber-cute MakerBot2 in its stores the following Monday. We have one in the office, and while it’s not the easiest equipment to use, it is certainly within the realm of the average “maker” to figure out.

Third, for the first time on Thingiverse, I noticed a functional aftermarket part for a real (not a toy or a scale model) Harley. This is a throttle lock lever attachment to allow the rider better thumb action control over the standard star-shaped part. Not a critical part, of course, but pretty cool. And free.

Let’s put one and two and three together, shall we?

What happens when they (inevitably) figure out that they don’t want to wait the 3-4 weeks to get into the dealer to have their strap fixed? That same enterprising soul figures out how to build a 3D model of said replacement/add-on part. And that person posts the part to Thingiverse. For free. What then?

I thought it would take until 2016 before we saw 3D printers in the mass market. In many ways, that’s still true for most things. But this is exactly the situation that I mentioned almost two years ago: Replacement and add-on parts are some of the most logical first steps, and we are beginning to see them now.

In other words, when you read articles like mine (and many others, I would add, mine certainly was not unique) and thought you had plenty of time to handle the legal issues, that time is up.

You need to start addressing this trend <em>today</em>.

Some questions your legal team had better start answering:

1. Who owns the IP for this new part? Is it shared IP? Is it fair use?

2. Who is liable if it fails? (The rider, the company that makes the MakerBot, Harley Davidson/the OEM, someone else)

3. Who gets paid? How? What if I sell the part? Does that change the equation?

I believe there is an opportunity for OEMs (Original Equipment Manufacturers, like Harley Davidson) to get in front of this trend. Think of the opportunity not only for replacement parts, but also for warranty fixes and other accessories. Harley already is a master of the accessories market; this would be a natural fit. The “quality” of the maker parts may not be quite up to production quality yet, but that seems like a weak reason to wait. IP owners need to figure out the legal implications fast, or the market for accessories will float into the “free-verse”, never to be paid for again.

Tick tock. There’s some dude driving to Home Depot right now…


I’m Gumby Dammit — A Flexible Trademark?

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Trademarks, USPTO

The Minnesota History Center is currently promoting its Toys of the ’50s, ’60s and ’70s exhibit — my favorite promotional billboard is the one captured above, featuring none other than Gumby.

I can still remember my Gumby toy and watching the Gumby Show as a young child along with the Davey & Goliath television series, both creations of Art Clokey (who passed away at 88 in 2010).

The programs were so perfectly wholesome, making the anthropomorphic Gumby character the natural target of an iconic series of R-rated Saturday Night Live parody skits featuring a young and hilarious Eddie Murphy as Gumby, a “cigar-smoking show business primadonna,” who coined the infamous and often repeated catchphrase: I’m Gumby Dammit!

The Gumby trademark — bolstered in strength, if not fame, by the character’s status as a long-lasting pop culture phenomenon — has enjoyed a similar exclamation of self-confidence and apparent, well-deserved respect from others over the years, as the brand’s owner Prema Toy has had virtually no trademark oppositions (one for footwear averted with a little help from an Examining Attorney), at least as it appears from the USPTO’s online TTAB database. This third party application for Gumby’s Pizza, was most likely brought into the fold, as detailed below.

The GUMBY word mark is still federally-registered in Int’l Classes 9 (DVDs), 16 (paper products), 25 (clothing), 28 (toys), 41 (entertainment services), and Gumby’s is also federally-registered in Int’l Classes 30 and 42, since Gumby’s Pizza & Wings is a restaurant franchise offered by Prema Toy. I figured there would be non-verbal product configuration trademark registrations for the appearance of the Gumby character too, but nope, nope, nope, only two dimensional depictions (here, here, and here).

Notwithstanding the fact that the only federally-registered marks consisting of or including the GUMBY word are owned by Prema Toy, this once singular trademark meaning of GUMBY recently has been threatened by a hightech software firm called Digital Surgeons who have dubbed one of their products with the so-called GUMBY FRAMEWORK trademark for ”software development tools for the creation of mobile internet applications and client interfaces.” Their application was published for opposition last summer, and there is no record of Prema Toy opposing or seeking an extension of time to oppose, and once Digitial Surgeons submits evidence of use, the registration should issue.

Digital Surgeons is currently promoting GUMBY 2.6, as a flexible, responsive CSS framework — powered by Sass: “Now more flexible than ever.” So, the Digital Surgeons have drawn their scalpels to clearly play on at least the meaning behind the iconic Gumby character, perhaps explaining this statement on the bottom of their website:

“Disclaimer: Gumby Framework holds no affiliation or association with our friends at www.gumbyworld.com, Primavision Inc. or Prema Toy Inc.”

Since the Digital Surgeons are apparently friends with the folks at Prema Toy, perhaps the disclaimer is enough to satisfy the brand owner, assuming they are aware of the use and pending application for federal registration.

So, if you were responsible for the GUMBY brand, how flexible would you consider it to be, and would you easily bend on this encroachment? Why?

If a flexible approach is adopted to permit unrelated brands that play on the bendable meaning associated with the GUMBY brand and character, will it lead to others, eventually taking the GUMBY brand into a very different posture and position? Would it make a difference to you to know that the Prema in Prema Toy means “heart” in Sanskrit?

Oh, and in case you’re wondering where Gumby’s best pony pal Pokey is, it appears that he doesn’t hold the same status as Gumby, since Pokey’s registrations have lapsed (here and here).

Colors, Words, and Colours: Pink with Envy

Posted in Advertising, Branding, Fair Use, Famous Marks, Infringement, International, Law Suits, Trademarks

It has been nearly a year since we posed the age-old question: Does this Pink Clash with My Pink? Okay, so it’s not that old of a question. In fact, most of you (readers) may not have ever considered the inquiry.

I guess I should clarify, by “clash with” I mean “infringe.” By “Pink” I mean “Victoria’s Secret Pink” and by the other “Pink” I mean Thomas Pink and yes, I understand that the phrasing of this entire endevour may be a bit confusing.

What do you think? If you walked into this store:


Would you assume there was some connection with this store?

In case you haven’t read the previous article, Thomas Pink, U.K. retailer of high quality men’s fashion dress clothes sued Victoria’s Secret over their “Pink” stores, which are geared primarily toward college-aged girls. Victoria’s Secret filed a declaratory judgment action in the U.S., but that was dismissed back in May based on a settlement between the parties. But the British court issued a ruling on August 4, ruling that Victora’s Secret’s use of the PINK mark as a store name does, in fact, legally clash with Thomas Pink’s use of PINK.

We talk a lot on Duets Blog about the difference between the right to register a trademark versus a right to use a trademark. (See Steve’s post and accompanying links here). Essentially, the idea is that when you are seeking to register a trademark, you are given the right to use that mark in any shape, style, or form, unless specifically noted. So if you apply to register the word MISGUIDED in connection with “legal opinions,” the U.S. Patent and Trademark Office would look to see whether the proposed registration would conflict with any prior registration (or live application), for marks confusingly similar to MISGUIDED, regardless of whether it appeared with an image of a powdered wig, whether it was in Arial font or Cambria, or whether it was used with the color black or the colour blue. Or pink, too.

The idea is that, unless a restriction on use is actually in the application (or prior registration) the Trademark Office will not look to see how the mark is actually used in the real world. It doesn’t matter whether the house mark NIKE always appears with NIKE AIR, if you’ve applied (or registered) AIR on its on, the Trademark Office will give the broadest interpretation possible to the marks as set forth in the application or registration. This leads to the oft-cited rule that merely adding (or deleting) a term from a previously registered mark is insufficient to avoid a likelihood of confusion if the goods or services are related (unless the term is diluted, but let’s leave that for another post…).

However, when we speak of the right to use, we usually are speaking in the context of a lawsuit for trademark infringement. Because that’s how you stop someone from using a trademark. (Cease and desist letters can work, but only under the threat of infringement, so the issue would still be the same). In this context, the defendant is free to cite any evidence regarding the party’s use which might help consumers avoid any confusion. For example, do the defendants and plaintiffs consistently use a house mark in connection with the mark (does “Victoria’s Secret” always appear below the term “Pink” and does “Pink” always appear as part of “Thomas Pink”?), are the target customers sufficiently different such that consumers wouldn’t presume a connection between the two uses (would I expect these University of Minnesota booty shorts to have some sort of connection with a high end menswear fashion designer?), whether the defendant only uses the name as an store that is attached and connected to their primarily store of a different flagship name, and other factors like the cost of the goods, advertising, number of third-parties using similar marks, etc.

British Judge Colin Birss has been quoted as concluding that “Consumers are likely to enter one of the (Thomas Pink) claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake.” I guess that’s possible. But if consumers never refer to “Thomas Pink” products as anything other than “Thomas Pink” they seem unlikely to enter into a Victoria’s Secret store  thinking it is some different version of the Thomas Pink brand. They might also wonder why, unlike every other Thomas Pink store, the signage is in bright pink rather that the black and gold of the Thomas Pink stores. Oh, and they might also notice that instead of the words “Thomas Pink, Jermyn Street London” the words “Victoria’s Secret” appear on the front of the store.

My apologies for wearing my opinion on my sleeve, but I don’t think there is any infringement here. It turns out, Judge Birss agrees. Sort of. If you read any of the news reports, you’ll basically just see that the use was found to be infringing and Victoria’s Secret may have to close their stores. But if you read the decision (H/T – IPKAT), it’s more complicated. The judge concluded that:

[E]ven inside a free standing PINK store there is sufficient emphasis on VICTORIA’S SECRET to counteract what might otherwise have been a likelihood of confusion under Art 9(1)(b) relating to the swing tags and labels.

Ultimately though Judge Birss found that Victoria’s Secret had violated Article 9(1)(c). Although I have lived and worked in the U.K. (just blocks from the Thomas Pink flagship store on Jermyn street, actually, – take the tube to the Piccadilly Circus station. Don’t get the sushi from Tesco), I’m not an expert in trademark law under U.K. or E.U. law. However, the difference between subsection (b) and (c) appears to be whether there is a confusion as to the goods (section b) or whether there is a confusion as to some type of endorsement or association that could be “detrimental to the distinctive character” of the prior mark.

Notwithstanding the quoted language when deciding the case under subsection b, the judge concluded that, under subsection c:

In my judgment average consumers who are familiar with the claimant’s reputation will encounter the defendant’s swing tags and labels and will enter the defendant’s premises with a view to buying the defendant’s goods complained of in this action.

An average consumer presented with swing tags or labels inside one of the defendant’s stores will appreciate from the context that it relates in some way to VICTORIA’S SECRET . . . However crucially what they will see is a sign very similar and reminiscent of the claimant’s sign. It does not include the full name Thomas Pink nor the Jermyn Street address, but the key element is the word PINK itself. It is even presented in a format which is reminiscent of the claimant’s PINK outlined format[.]

Victoria’s Secret will likely appeal the ruling. Or maybe the parties will settle. It appears though that the consequences for Victoria’s Secret are not as dire as some news reports suggest (i.e., having to close all of their “Pink” stores). Based on the judge’s ruling, it may be as simple as changing the font on the exterior of the sign (even I’ll admit that block letter font is pretty similar). Which brings us back to where (wear?) we started: the U.S. Trademark Office wouldn’t consider what font you’re using for your trademark, unless you’re applying for a stylized version. But like the British court, a U.S. court examining a claim of infringement would. Seems like a great way to put a (pink?) bow on this issue.



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