DuetsBlog

Collaborations in Creativity & the Law

An Adult’s Form of Parallel Play for Life?

Posted in Articles, Mixed Bag of Nuts

One of the phrases that came to mind this past Memorial Day weekend — while reflecting on the passing of my mother a few short months ago — is: Parallel Play.

“Parallel play is a form of play in which children play adjacent to each other, but do not try to influence one another’s behavior. Children usually play alone during parallel play but are interested in what other children are doing . . . . An observer will notice that the children occasionally see what the others are doing and then modify their play accordingly.”

Patty Jo was a very gentle, loving, supportive, humble, creative, generous, intentional, driven, hard working, encouraging, and extraordinary woman, right up until her final breaths in Houston, Texas, around kickoff time on Super Bowl Sunday.

Given her private and humble ways, I can hear her spirit saying, “oh come on now,” as I heap on these lifetime observations and this moment of well-deserved honor and praise.

One of her many gifts — as a elementary school teacher — was to understand what makes children tick. This gift enabled her to treat each of her own children, a dozen grandchildren, and her more than a thousand students as individuals with unique talents and needs.

She introduced the concept of “a child’s work” and “parallel play” to me when my four children were very young — the oldest to youngest only separated by five years, and I’ve never forgotten its importance to a child’s healthy growth and development.

Yet, I’m thinking a form of “parallel play” can continue throughout a lifetime, at least for me.

This concept comes to mind as my wife and I work in our yard together, rarely focused on beautifying the exact same aspect of the yard at any given moment, and without trying to influence the other’s specific approach to our yard work, our interest and observations of the other and our voluntary modifications demonstrate an invisible common bond and goal.

In another way, my siblings and I are all separated geographically, we lead our own very different lives, each pursuing unique goals and dreams, yet there is a genuine and often unspoken interest, respect, and observation of each other, sometimes leading to voluntary modifications, demonstrating an often invisible, yet real and common bond.

On that note, by brother Dave, an accomplished educator and award-winning artist and architect, recently entered the world of blogging, reluctantly he says, with the launch of his insightful Keep it Real venue, ironically, straight from Las Vegas, Nevada:

NeverGiveUp

And, just in case you’re wondering, that’s not Dave spread eagle, no one in our family, at least to my knowledge, enjoys that brand of flexibility, but he was in a position and sufficiently determined to capture the image on the “unreal” streets of Las Vegas.

So, if you’re interested in innocence, making, authorship, ownership, wilderness, and transparency, among other ideas, I encourage you to check it out, here.

And, I also encourage you to think about how “parallel play” might serve a continuing role in your personal and professional development as an adult.

Comcast’s Domain Name Enforcement on the Wrong Turf

Posted in Advertising, Domain Names

“Our client is . . . prepared to resolve this matter amicably and without pursuing its claims for damages, but only if you immediately comply with its demands.”

A common paradox of a form demand letter –  offering an “amicable” resolution to a dispute, which means complying with each and every one of the letter’s demands. It’s akin to the famous Henry Ford quote “you can have any color you want, as long as it’s black.”

Comcast didn’t get too far with this hard-line stance. Earlier this month, a Comcast vendor called “LookingGlass Cyber Security Center” sent a demand letter to the registrant of the domain name www.comcastroturf.com. The site, operated by Fight for the Future, is a pro-net neutrality advocacy website calling for the investigation of allegedly fake comments posted to the FCC’s public comment page on new net neutrality regulations. According to the site:

Someone has submitted nearly half a million anti-net neutrality comments to the FCC, many of which appear to be completely fake — using stolen names and addresses. This needs to be investigated and stopped now.

Screen Shot 2017-05-26 at 7.05.47 AM

Comcast’s vendor, presumably scrubbing domain name registrations for any use of “COMCAST,” promptly sent a form letter to Fight for the Future, with a variety of rote citations to the Anticybersquatting Consumer Protection Act and the Lanham Act. According to the letter, the law prohibits “using domain names that are identical or confusingly similar to someone else’s trademark.”

While this may be enough to scare off a layperson, or an unsophisticated domain name registrant, it is an incomplete statement of the law. The Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), does not simply prohibit registration of any domain name that incorporates a registered trademark. Instead, a plaintiff under the ACPA must also show the domain name registrant “has a bad faith intent to profit from the mark.” Courts have routinely dismissed ACPA claims when the domain was used for noncommercial purposes or for commentary.

Of course, the demand letter did not mention the bad faith element, presumably to make its demands appear ironclad. But this is a risky strategy. And one that didn’t pay off for Comcast’s vendor.

Once the press learned of the letter, Comcast quickly issued a statement backpedaling on any claims against comcastroturf.com:

Like most major brand owners, Comcast protects our company and brand names from being used improperly on the Internet by third parties. We use an established outside vendor to monitor for websites that use our name and brands without authorization, and the vendor routinely sends out notices to those sites. That is what happened here. This particular site also raised other legal issues supporting further investigation (for example, the site appears to collect personal information and has no posted privacy policy). After reviewing the site further, we do not plan additional action at this time.

As the saying goes, “you can send any demand letter you want, as long as it’s legally accurate.”

 

 

“Google” Still Not (Yet) Generic

Posted in Domain Names, Famous Marks, Genericide, Law Suits, Trademarks, USPTO

Last week the U.S. Court of Appeals for the Ninth Circuit issued a significant opinion on the topic of genericness, Elliott v. Google, Inc., No. 15-15809. The opinion affirmed a federal district court’s grant of summary judgment that “GOOGLE” trademark registrations (Reg. Nos. 2884502, 2806075) are not subject to cancellation for genericness.

Genericness a.k.a. “genericide” occurs when the public appropriates a trademark and uses it as a generic name for a particular type of goods or services, irrespective of the source of those goods or services.  Once a mark becomes generic, it is no longer subject to trademark protection. Examples of trademarks that became generic include aspirin, thermos, cellophane, and escalator.

This case arose out of a domain name dispute back in 2012, when the plaintiffs Chris Gillespie and David Elliott had attempted to register hundreds of web domains with the word “Google” such as “googlebarackobama.net” and “googledisney.com” Unsurprisingly, Google was not pleased, and filed a complaint with the National Arbitration Forum, requesting that the men transfer the domain names to Google pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP).  Google prevailed in the UDRP proceeding, and Gillespie and Elliot were ordered to transfer the domain names to Google. Shortly thereafter, Gillespie and Elliot (collectively “Elliot”) filed a complaint in federal court in Arizona, seeking cancellation of the GOOGLE trademark registrations.  The district court granted Google’s motion for summary judgment that its trademark registrations were not subject to cancellation for genericness.

Elliot argued, both at the district court and on appeal, that “google” had become a generic word for searching on the internet.  In particular, Elliot argued that a majority of the public understands the word “google,” when used as a verb, to mean the indiscriminate act of searching the internet without regard to the search engine used. Further, Elliot argued that verb use constitutes generic use as a matter of law.

The Ninth Circuit firmly rejected Elliot’s arguments on two grounds: “First, Elliott fails to recognize that a claim of genericide must always relate to a particular type of good or service. Second, he erroneously assumes that verb use automatically constitutes generic use.”

First, the court firmly rejected Elliot’s argument that the genericness inquiry must be framed as whether the relevant public primarily uses the word “google” as a verb for the indiscriminate act of searching the internet.  Instead, the court held, the claim of genericness of the word “google” must be made with regard to a particular type of good or service, i.e., a generic word for internet search engines generally.  Specifically, the court explained the following:

[W]e take this opportunity to clarify that a claim of genericide or genericness must be made with regard to a particular type of good or service. . . . But here, Elliott claims that the word “google” has become a generic name for “the act” of searching the internet, and argues that the district court erred when it focused on internet search engines. We reject Elliott’s criticism and conclude that the district court properly recognized the necessary and inherent link between a claim of genericide and a particular type of good or service. . . . [T]he Lanham Act specifies that the relevant question under the primary significance test is “whether the registered mark has become the generic name of [certain] goods or services.” In this way, the Lanham Act plainly requires that a claim of genericide relate to a particular type of good or service. . . .

If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “generic when used to describe a product made from the tusks of elephants.” This is not how trademark law operates: Trademark law recognizes that  a term may be unprotectable with regard to one type of good, and protectable with regard to another type of good.

Second, although Elliot presented evidence that the mark GOOGLE is used as a verb among the general public, the court held that “verb use does not automatically constitute generic use.”  The court held that even if the general public uses the word “google” as a verb, it is only a generic use if the public is referring to an internet search generally.  If the general public uses the word “google” primarily to identify a search on the Google search engine, the GOOGLE mark still serves a source-identifying function and its use as a verb is not generic.  The court also set forth a “discriminate” / “indiscriminate” distinction to evaluate verb usage of trademarks, stating that “an internet user might use the verb “google” in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.”   The court explained that much of Elliot’s admissible evidence were only examples of verb usage–which is not automatically generic use–without showing whether that verb use was discriminate or indiscriminate.  For example:

Elliott purports to offer an example of generic use by T-Pain, a popular rap music artist. But we will not assume that T-Pain is using the word “google” in a generic sense simply because he tells listeners to “google [his] name.” T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain’s inner thought process, we cannot tell whether he is using “google” in a discriminate or indiscriminate sense. In this way, many of Elliott’s admissible examples do not even support the favorable inference that a majority of the relevant public uses the verb “google” in a generic sense.

The court also tied in an oft-used Kleenex example to further emphasize that the type of semantic usage of a mark by the public is not dispositive of genericness:

We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for “a Kleenex tissue,” it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for “a Kleenex.” Instead, the party bearing the burden of proof must offer evidence to support a finding of generic use.

What do you think about this decision?  Google, Inc., is likely celebrating a big win for its GOOGLE mark–one of the most valuable marks in the world.  It’s also a helpful decision for many famous brand owners, who, as an ironic consequence of their own success and ubiquitous use by the public, are also put at risk by genericness challenges (e.g., Kleenex® facial tissues, Band-Aid® adhesive bandages, Xerox® photocopiers, etc.).

USPTO Proposes Cheaper, Faster Cancellation Option

Posted in TTAB, USPTO

The U.S. Patent and Trademark Office register contains a lot of dead weight. In order to obtain a trademark registration and maintain the registration, the owner must use the mark in U.S. interstate commerce (as always, with a few limited exceptions). What constitutes dead weight? Usually marks that are currently registered, but not actually used in commerce. These registrations could be identified in a preliminary clearance search by your attorney, causing you to choose a different name rather than the one you really want. The registration might be cited against your application, forcing you to choose whether you’d like to embark in a Petition for Cancellation of the registration, or just move on to a new name. If you or a client has ever found yourself in one of these positions, the USPTO is considering expanding the available options to remedy the situation and is seeking public comments.

Uncle Sam TTAB Poster

There is a need for a streamlined procedure for cancellation of registrations for claims of non-use or abandonment. With the ease of online filing, the number of trademark registrations has risen significantly, issuing at a rate 4,500 per week.  Beginning in 2015, the USPTO also began issuing to owners courtesy reminders informing them that the maintenance and renewal windows are now open. To be honest, it’s pretty easy to file a trademark application, obtain a registration, and maintain a registration. You can do it all electronically through the USPTO website.

Yet, it is also very easy to do it incorrectly, rendering that Certificate of Registration to be a worthless piece of paper – that’s where we attorneys add value. For example, an attorney can help determine whether a mark is actually used in commerce at the right time. The USPTO doesn’t have the time or resources to investigate whether a mark is in use, so the fact that the USPTO accepted a specimen does not provide any cover. To obtain the registrations, Applicants and registrants need only click a box acknowledging that the mark is in use, and provide a sample (aka, specimen) of how the mark is used in commerce. Even if the USPTO accepts the specimen and issues a Certificate of Registration, that registration could be cancelled if the mark was not used in commerce at the relevant date.

The risk of doing it incorrectly doesn’t stop third-parties from continuing to register marks that have questionable claims of “use in commerce.” There’s a vast array of individuals and entities with deadweight registrations. The first group that comes to mind are the registrations that you know aren’t used just based on looking at the registration. For example, the individual that claims to provide space travel services and owns dozens of registrations for various FUTURE trademarks in connection with a wide variety of goods and services, including space travel services and manufacture of space vehicles. As you might guess, the specimen that was accepted by the USPTO is, at best, questionable:

future - edited

 

Then there are the “Golden Ticketers.” These are people and entities that seem to have a plan to later sell or license one of their many marks that, again, have questionable claims to use in commerce. These commonly happen when a well-known brand has a new product, or may need to rebrand, for example, the Washington Redskins. There are a number of trademark registrations for a various WASHINGTON ___ marks with dubious claims to use in commerce, like the WASHINGTON ARROWS, AMERICANS, FOUNDERS, NATIVES, PANDAS, MONUMENTS, VETERANS, RED-TAILED HAWKS, and the WASHINGTON FEDERALS. Most are registered in connection with “Providing a website featuring information relating to the sport of football.” And as you can tell from the owner’s website, it is technically in use:

arrows

It provides helpful information regarding the sport of football, including pertinent details like “The team with the most points at the end of the game wins.”

In light of this, the USPTO has good reason to implement a new method of challenging registrations for non-use. While I encourage everyone to read the Notice in full,  here are the highlights:

  • The new procedures are limited solely to claims of abandonment, or non-use for some or all of the goods/services at the time the declaration of use in commerce was filed (application date for a 1a application, or the Statement of Use for a 1b application)
  • The Petitioner must include evidence supporting the claim of abandonment with the Petition
    • Evidence might include a declaration detailing searches for use of the mark
  • The Respondent must include evidence to rebut the claim in its answer
  • If requested and upon a showing of good cause, the TTAB will grant very limited discovery
    • The Respondent can also challenge the Petitioner’s standing and request limited discovery on this issue
  • The proceeding is designed to move fast:
    • Limited or no discovery
    • Abbreviated schedule
    • No oral hearing
    • Only one extension request per party
    • Estimated time from start to finish would be 70 days in the event of default, or 170 days for a contested Petition
  • No counterclaims would be allowed
  • After reviewing the Answer, the Petitioner could choose to convert the proceeding to a full cancellation (the Respondent does not have the option, though)

Overall, the proposed procedure could be a valuable tool, at least in those situations where non-use and abandonment are clear, or the mark has not been used for three years or more. However, where the period of non-use is less than three years, the petitioner would normally need to establish that the respondent had an intent not to resume use of the mark. The limited discovery granted by the TTAB would likely require some testimony on behalf of respondent with respect to intent to resume use. Regardless, if the TTAB implements the new rules, practitioners would have a cheaper, more time effective tool to clear the way for their client’s trademarks.

If you have any comments on the new rules, be sure to provide them ahead of the August 14, 2017 deadline to TTABFRNotices@uspto.gov.

 

Dubious Patent Trolls and a Crowdfunded Infringement Defense

Posted in Infringement, Law Suits, Mixed Bag of Nuts, Patents

trolls

We’ve spent time discussing the patent troll phenomenon in the past.  Patent trolls are less pejoratively referred to as non-practicing entities, because they do not make or use the inventions covered by their patents.  Instead, these non-practicing entities operate by purchasing patents on various technologies, accusing companies of infringing those patents, and demanding the companies pay licensing fees.  Faced with the threat of patent litigation, many companies—both large and small—will choose to simply pay the troll’s demand.  The infringement allegations might be thin, and the asserted patent might be invalid.  But the potential cost of litigation gives the patent troll great leverage over the companies they target.  Paying the demanded licensing fee is far more cost-effective than defending an infringement suit.

One company, however, is taking a different approach to what it views as a patent troll.  Cloudflare is an Internet security company and content delivery network.  Cloudflare is facing a patent infringement suit filed by patent owner, Blackbird Technologies.  The Complaint alleges Cloudflare is infringing the ‘335 patent, related to incorporating third-party data into existing Internet connections.  Cloudflare has vowed to fight the litigation, arguing both non-infringement and invalidity of the ‘335 patent.  To help in its efforts, Cloudflare is taking the creative approach of crowdsourcing its defense.   In a recent blog post, Cloudflare’s CEO offered up $20,000, to be divided among individuals who submit relevant prior art to invalidate the ‘335 patent.  In addition, and in an apparent effort to stop Blackbird from asserting any other patents against anyone, Cloudflare is offering another $30,000 for prior art submissions that invalidate Blackbird’s other 37 patents and patent applications.

Blackbird Technologies is . . . a law firm?  Blackbird’s website seems to offer legal services with “top law firm experience.”  But Blackbird is the plaintiff in the suit against Cloudflare.  Based on an assignment recorded with the U.S. Patent and Trademark Office, Blackbird purchased the ‘335 patent from the inventor in October 2016 for $1, and shortly thereafter initiated an infringement action against Cloudflare.  Blackbird is not merely representing a client, but instead appears to be stepping into the client’s shoes by purchasing the asserted patent and bringing suit as the plaintiff.

A little research reveals that this is a regular practice for Blackbird.  Blackbird owns at least 38 patents and published patent applications covering a broad range of technical fields.  Since September 2014, the firm has been named as the plaintiff in 109 federal patent infringement cases (107 in the District of Delaware, and 2 in the Central District of California).  The defendants in many of these cases were large corporations—Amazon, Wal-Mart, Petco, Uber, Lululemon, Target, and Netflix.

So, is Blackbird a patent troll?  Blackbird says its business model helps individual inventors and small companies by providing them with a low-cost solution to monetize their patents.  Blackbird also states that it is different from other companies labeled non-practicing entities, because Blackbird is “ready to litigate cases,” and is not merely looking “to settle cases quickly.”  Though it appears that most, if not all, of Blackbird’s suits have settled.

Cloudflare, however, views Blackbird as a pure patent troll, which led to Cloudflare’s crowdsourced effort to invalidate any and all of Blackbird’s patents.  Cloudflare’s CEO even went as far as a recent scathing blog post about the suit, accusing Blackbird of violating legal ethics rules.

Usually, infringement allegations asserted by non-practicing entities are quietly settled (see Blackbird’s 108 other cases filed since 2014).  Cloudflare’s approach to the infringement claims will be expensive, but also public.  Cloudflare’s response seems to include rallying its supporters and customers in publicly calling out Blackbird.  Cloudflare even invites supporters to “tell Blackbird Technologies what you think of their business practices” on Twitter.  It’s clear Blackbird has struck a nerve with this defendant.

Sign Up for The Ethical Use of Social Media

Posted in Articles, Branding, Marketing, Social Media

RCBA CLE - First slide

It’s that time of year, for lawyers anyway, to make sure they are up to date on their continuing legal education hours, which includes the need for the all important 2.0 ethics credit hours.

For our local readers who happen to be lawyers in need of such credits, the Ramsey County Bar Association has an amazing program for you entitled “Issues and Trends in the Ethical Use of Social Media and Technology.

The speakers for this program include:

And, the esteemed moderator for the panel portion of this discussion is Leanne Fuith, Dean, Career and Professional Development, Mitchell Hamline School of Law.

Details are here on how to register for the May 24 program (in my humble opinion, it’s an amazing bargain at $35 for RCBA members and $50 for nonmembers), come one and all.

To the extent you’re not in need of ethics credits, much less continuing legal education credits, come for the behind the scenes remarks I’ll be sharing about the creation of DuetsBlog.

A Steep Climb to Own a One Word Mark?

Posted in Articles, Branding, Food, Marketing, Trademarks, Truncation

SteepTea

The grocery aisles are fertile grounds for my keyboard, as you know. And, while I’m generally far more interested in coffee grounds than tea leaves (unless we’re speaking of the iced variety or reading between the lines of court decisions), the above shown box of tea bags caught my eye.

What initially captured my interest is the large yet engaging lower case branding of the word “steep” followed by the diminutive signature line “by BIGELOW” in all caps.

Given the descriptive character of the visually-emphasized word “steep” in connection with tea, and the “by” signature line of the well-known BIGELOW tea brand, my instincts told me a USPTO search would reveal a crowded field of marks containing STEEP, likely fueling my assumption that “steep” couldn’t be owned as a trademark for tea standing alone.

Turns out, STEEP was federally-registered back in 2004, for tea (as a single word mark with no style limitations), pursuant to an apparent showing of acquired distinctiveness under Section 2(f) of the Lanham Act, but the registration expired in 2010 and was cancelled under Section 8 of the Lanham Act in 2010, making way for the crowded field I imagined.

It also turns out, there is more to the story than I have time today to turn over every tea leaf of this one: The apparent principal behind the expired registration is back at the USPTO with a new STEEP application, claiming continuous use of STEEP for tea since 1994.

The irony is that the STEEP BY BIGELOW registration (first use in 2015) is now barring registration of the new STEEP application, here is the recent likelihood of confusion refusal.

So, I’ll leave you with a few questions that come to mind.

First, what’s the next move for the STEEP applicant?

And, looking back in time, did Bigelow add the signature line underneath the prominent use of “steep” to facilitate registration of STEEP BY BIGELOW and perhaps reduce the perceived risk of a trademark conflict with the prior registrant of STEEP for tea?

If so, will Bigelow regret not volunteering a disclaimer of the descriptive word “steep” since the USPTO oddly didn’t ask for one?

Assuming there are prior common law rights in STEEP and Bigelow wants to explain the lack of a disclaimer, might it point to the unitary mark theory?

Better yet, will the ineffective opposition (filed by the apparent principal of the prior registrant of STEEP) bar a future petition to cancel STEEP BY BIGELOW (to clear the path for re-registration of STEEP standing alone)?

If there are, in fact, prior common law rights in STEEP and the principal behind the STEEP application finds a way to federal court, has Bigelow relinquished a classic fair use defense in making “steep” part of its trademark use?

Finally, if risk avoidance is the goal (hoping for a steep slide into neutralizing a likelihood of confusion claim), might it be more effective to play with the meaning of the marks element of a likelihood of confusion claim, perhaps by adding graphic elements that invite other meanings of “steep” as compared to the more obvious one for tea?

MLB: A Monopoly on “Baseball”?

Posted in Mixed Bag of Nuts, Trademarks, TTAB, USPTO

The weather is finally getting warmer up here in Minnesota and it’s a great time to watch baseball, as I’ve been doing frequently of late. It’s been fun watching my home team, the Twins, enjoy a strong start to the season (anything above .500 is huge after our record-breaking disappointment last year), with our younger players making big improvements.

You may think that with the baseball season now in full swing, the MLB might be too busy to aggressively enforce all of its trademarks. You would be wrong. Major League Baseball Properties and the Office of the Commissioner of Baseball (“Opposers”) filed a notice of opposition last week before the Trademark Trial and Appeal Board against the registration of the word mark FOR BASEBALL USE ONLY (Application Serial No. 87153257).

The individual applicant, Joshua Morell filed the application last year, and it published for opposition in January, without any office actions issued. The application identifies numerous clothing goods in International Class 25,  including for example, hats, shirts, rainproof jackets, and sweat shirts.

The Opposers assert a likelihood of confusion under Trademark Act Section 2(d). The bases for this opposition are loaded with a barrage of baseball-related registrations owned by Opposers (or their related/affiliated companies), as listed below. You’ll see it is quite a long list, but it’s worth a glance through to consider the Opposers’ strategy and their chance of success. I won’t drone on with all the identified goods and services, but many include, for example, clothing, entertainment services, and promotion services.

  • Word Mark Registrations
    • MAJOR LEAGUE BASEBALL (Reg. Nos. 1528807, 1620020, 3326191, 3862153)
    • MAJOR LEAGUE BASEBALL ALL-STAR FANFEST (Reg. No. 1719587)
    • MAJOR LEAGUE BASEBALL PRODUCTIONS (Reg. No. 1745625)
    • THIS WEEK IN BASEBALL (Reg. Nos. 2743153, 2769617)
    • OFFICIAL BANK OF BASEBALL (Reg. No. 3565847)
    • THE BASEBALL CHANNEL (Reg. No. 3592912)
    • THIS IS BEYOND BASEBALL (Reg. No. 3746838)
    • ALL OF BASEBALL (Reg. Nos. 3779854, 3849163)
    • BASEBALL EVERYWHERE (Reg. No. 3845051)
    • R.B.I. BASEBALL (Reg. Nos. 3864816, 4687412, 4687414, 4750683, 4971324)
  • Design Mark Registrations
    • MAJOR LEAGUE BASEBALL & Design (Reg. Nos. 955967, 1055317, 1055318, 1055319, 1057260, 1057264, 1617698, 1625617)
    • R.B.I. BASEBALL MLB.COM & Design (Reg. Nos. 4758577, 4758578, 4758579, 4758580)
    • BASEBALL & Design (Reg. No. 1220334)
    • BASEBALL FEVER CATCH IT! & Design (Reg. No. 1230519)
    • MAJOR LEAGUE BASEBALL HOME VIDEO & Design (Reg. No. 1741015)
    • OFFICIAL GAME OF SUMMER BASEBALL & Design (Reg. No. 2791550)
    • NATIONAL LEAGUE OF PROFESSIONAL BASEBALL CLUBS SINCE 1876 & Design (Reg. Nos. 3644993, 3648872)
    • BASEBALL IQ MLB NETWORK & Design (Reg. No. 4294588)
    • LAS GRANDES LIGAS DE BEISBOL (Translation: “Major League Baseball”) (Reg. Nos. 2976531, 2976538)
    • SABOR A BEISBOL (Translation: “Flavor of Baseball”) (Reg. No. 3700391)
    • Design-Only (Reg. No. 2573503)
  • Opposers also cited two pending applications:
    • ONE BASEBALL (Serial. No. 86783219)
    • WE ARE BASEBALL (Serial No. 87095504)

In my view, some of the registrations cited by the Opposers are a bit off-base regarding a likelihood of confusion, particularly some of the design registrations. Quantity is not always better than quality. Even for the word mark registrations, the fact that those registered marks contain the descriptive or generic word “BASEBALL” (which, by the way, is disclaimed in many of the asserted registrations), is not necessarily sufficient for a likelihood of confusion based on the applicant’s arguably dissimilar mark FOR BASEBALL USE ONLY.

The strategy here seemed to be to assert any registrations owned by Opposers that contain the word “baseball.” Opposers even go so far as asserting in the Notice of Opposition that the public has come to recognize and refer to Opposers and their related entities “by the short-hand nickname ‘Baseball’.” That’s quite an interesting contention. Do you agree?

The applicant Joshua Morell has stated that “I am by no means damaging [the MLB] brand and none of the marks are even close to being identical to any of the MLB marks.” Morell has also explained that he is building a family of “Use Only” brands for athletes in different sports–he has also applied to register the marks MARATHON USE ONLY and RUNNING USE ONLY, among others.

Who do you think will prevail in this opposition proceeding? Stay tuned for updates.

Cover The Earth…With a Brand Refresh

Posted in Advertising, Branding, Goodwill, Trademarks

I spent much of Saturday morning watching Warren Buffett and Charlie Munger at the annual Berkshire Hathaway shareholder meeting.  I have previously made the pilgrimage to Omaha, waiting outside before dawn with a plan for our seats much like these guys. In the last two years, thankfully, they’ve streamed it live.  I love listening to these two talk about business, American values, political influence in current and future business opportunities – all while sipping Cokes and chomping on See’s Candies peanut brittle.  It’s wholesome, often nostalgic, and the banter between the two is remarkably entertaining (at times it’s like the two judges from the Muppets).  Come to think of it, Warren and Charlie really need a podcast.  One of the investing tips that they consistently hammer on is being sure you understand the business.

I think I get paint.

What I don’t get, however, is the use of this logo in the 21st century.  When another patent attorney and former colleague of mine Jason Campbell posted his photo below to Facebook, I audibly gasped.  Cover the Earth…with a can of spilt paint?!?  The juxtaposition with “automotive finishes” doesn’t help as it makes me think of motor oil.

IMG_2537

I’m technically a millennial, although it pains me to say that as I often feel more at ease with the likes of Warren Buffet.  I’ve grown up knowing that lead paint is bad, the environment needs protection, and paint needs to be properly disposed.

All I see when I look at that logo is a giant, bright green Mr. Yuk sticker.

However, the logo is one of the oldest, still active marks on the Trademark Office’s register.  It was first registered in 1906.  When AdWeek asked about its relevancy and openly pondered its need for a redesign back in 2015, Sherwin Williams’ corporate communications director said at the time that it “is not meant to be taken literally, rather it is a representation of the our desire to protect and beautify surfaces that are important to people.”  Does the use on this van really convey that to a consumer?

I have a fondness for nostalgic brands, but the message still needs to remain relevant in its time or it loses its luster.  Attorneys use the term of “goodwill” frequently with marks – maybe a nostalgic brand loses some of that in changing times if it doesn’t adapt?  We have seen much debate on climate change, the EPA, and national parks.  Can’t Sherwin Williams deftly shift this from “Cover the Earth with-all-of-this-toxic-paint-that-we’ve-spilt” to something like “Cover the Earth…With Color” while maintaining rights in the logo?  Don’t we all seek a more vibrant and colorful world?

Change Your Name Already!

Posted in Advertising, Almost Advice, Branding, Domain Names, Guest Bloggers, Marketing, Mixed Bag of Nuts, Product Packaging, SoapBox

-Mark Prus, Principal, NameFlash Name Development

I sometimes get asked by prospective clients if they should change their name, and I help them evaluate if a change is necessary. But sometimes there are stubborn companies who persist in marketing a name that is not right. Overstock.com is a prime example of this behavior.

In early 1999, Dr. Patrick M. Byrne recognized the potential in liquidating excess inventory through the Internet. He started Overstock.com as a way for consumers to gain easy access to closeout merchandise. Overstock.com is a pretty good name for that business model.

In January 2011, Overstock.com acquired the O.co URL and began incorporating it into its marketing. CEO Dr. Patrick M. Byrne said, “When we first started our business in 1999, we only sold surplus inventory. We are no longer just an online liquidator. Our current offerings span from furniture and home decor to cars. We want an identity that more accurately reflects our company as it has evolved: hence ‘O.co’.”

I’ll admit I’m biased, but the strategy shift provided the prime opportunity to change their name.

However, Overstock.com doubled down and tried to leverage its name through a sexy sell with a campaign about “It’s All About The ‘O’ “(wink, wink added for emphasis). While the Overstock.com name faded into the background it was still the official name of the company.

Fast forward to today. Overstock.com continues to use the name that the CEO admitted didn’t fit six years ago. But now, instead of hiding their name embarrassment, they want to draw attention to it. Their latest campaign uses offensive “name shaming” language to point out that people also look at Overstock.com and think they only sell closeout items.

Dear Overstock.com CEO:

WILL YOU PLEASE JUST CHANGE YOUR NAME ALREADY?????

Signed,

Mark Prus
Principal @NameFlash

Overstock.com has spent years explaining their business model because they continue to use a name that does not fit it. How much further ahead would the company have been if they had just changed their name when given the right opportunity years ago?

We all get attached to things and letting go is hard. But there are times when you need to suck it up and change your name rather than continue to use a name that does not fit your current or future strategy!