DuetsBlog

Collaborations in Creativity & the Law

More Imaginative THANN Other Soap Brands

Posted in Articles, Branding, International, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Sight, Trademarks

On a recent trip to the Washington, D.C. area, I had the opportunity to stay at the Bethesda North Marriott Hotel & Conference Center, and I’ll have to say, as a trademark type, it was difficult to avoid being drawn to their unique and engaging bath soap and packaging:

ThannSoapMarriott

In my experience, most bath soap bars and cartons on display in hotel guest rooms are pretty basic, nothing special, not much to talk about, much less write about. But, with THANN, Marriott appears to have found an imaginative partner in the bathroom amenities category:

“Marriott Hotels is on a journey to reimagine the future of travel and THANN amenities will elevate the guest experience at our hotels,” said Matthew Carroll, vice president, Brand Management, Marriott Hotels. “Our research shows that customers rank bathroom amenities among the top five most important influences on their overall guest room experience. Partnering with THANN will also enable Marriott to meet another customer desire for the introduction of new amenities on a regular basis. As THANN’s products continue to become available in North America, we are excited to be among the first to offer the brand’s products to our guests.”

THANN’s website indicates that its “unique products and imaginative packaging have won the prestigious Thailand Prime Minister’s Export Award, Japan’s G-Mark Award for excellence in industrial design, and the Hong Kong Design Center’s coveted Design for Asia Grand Award.”

Although the shape of the soap carton and package is pretty clearly attention-getting from the photo above, the distinctiveness of the soap bar shape itself is not captured in the above photo appearing on Marriott’s website, so here is some of my handiwork to help illustrate the point:

THANNSoapSRB2 THANNSoapSRB

 

 

 

 

 

 

 

 

 

 

 

Our loyal DuetsBlog readers will fully appreciate that the Supreme Court has determined product packaging and containers on the one hand, deserve different legal treatment from product shape and configuration on the other hand:

“Recall that back in March 2000 in Wal-Mart Stores, the Supreme Court drew a black and white line between non-traditional trademark protection for product configurations (which now must have proof of acquired distinctiveness or secondary meaning to enjoy protection or registration) and non-traditional trademark protection for product packaging or trade dress (which may forego proof of acquired distinctiveness so long as the claimed non-traditional trademark is sufficiently unique to qualify as being inherently distinctive).”

Applying Supreme Court teaching to the THANN example, the soap carton has the potential for immediate protection as inherently distinctive product packaging, while the soap bar shape, no matter how unique, can never obtain immediate protection because it can never be considered inherently distinctive, proof of acquired distinctiveness is necessary before any exclusive rights can attach.

From where I’m sitting, the shape and configuration of the soap bar is at least as distinctive and source-identifying as the carton and package, but no doubt, the divined black/white rule provides clarity, certainty, and predictability on the issue.

I’m doing my level best to not get all lathered up on this one, but where was the Supreme Court when we needed it to deliver a similar black/white rule on issue preclusion in the B&B Hardware decision, with the kind of the clarity sought by INTA’s Amicus Brief?

Marketing types: Do you consider the shape of the bar soap to be more distinctive than the soap carton package?

Trademark types: Why did the Supreme Court deliver a black/white rule in Wal-Mart, but not in B&B Hardware?

In closing, maybe one day, THANN will more than imagine federally-registered trademark protection for both the shape of the soap bar and the package, since it only has sought registered protection for the THANN word and logo mark in the U.S., at least to date.

Slanted Perspective?

Posted in First Amendment

What’s the first thing that comes to mind when I refer you to “the Slants?”  Is it a non-perpendicular or horizontal line?  Is it the news coverage of MSNBC or Fox News?  Is it a derogatory term for Asians?  Or, perhaps its “the first all-Asian American dance rock band in the world” whose efforts to trademark their band name, “The Slants,” were denied trademark registration under 15 U.S.C. 1052(a), which precludes the registration of consisting of or comprising “immoral, deceptive, or scandalous matter.”

This was certainly not the first registration rejected on the “immoral” or “scandalous” subject matter bar, and its unlikely to be the last.  Those of you following trademark news have probably heard of the disputes surrounding the Washington Redskins, which DuetsBlog has previously discussed.  (See list here.)  However, while upholding the rejection of “The Slants” registration, one of the Judges on the Federal Circuit panel opined perhaps more strongly than ever before that there are real First Amendment problems with 1052(a)’s prohibitions.

Judge Kimberly Moore penned a lengthy “additional views” opinion nearly twice as long as the opinion affirming the rejection.  She made a compelling case that 1052(a) is unconstitutional at least as to the “immoral” or “scandalous” prongs and suggested the Federal Circuit revisit its precedent regarding the constitutionality of those provisions.  I encourage anyone interested in the topic to read the opinion, as I will not do it justice here.

There are certainly rational arguments to be made on both sides of this issue.  I, however, lean towards finding the provision unconstitutional, particularly as applied to the group  “The Slants,” who have adopted the name to “take ownership” of anti-Asian stereotypes.  The simple fact is that it becomes exceedingly difficult to make consistent and reasonable conclusions on the “immorality” of any marks.  Moreover, the entire purpose of the First Amendment is to allow ideas (no matter how offensive the may be) exposure to the “marketplace of ideas” so they can be rejected or accepted by society as a whole.  If we do not allow society to be exposed, then we’ve lost faith in the ideal that gave rise to the First Amendment in the first place, and we’ve simply engaged in censorship.

Breaking Update:  Just this morning, the Federal Circuit issued a sua sponte order vacating its prior decision and ordering the parties to brief for en banc review the question: “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?”  This could mean that the Federal Circuit is inclined to hold the “disparaging marks bar” is unconstitutional.  However, it could also be that the Court wants to eliminate any doubts about the law caused by Judge Moore’s lengthy “additional views” opinion.  In either event, this is likely to be a very important ruling on trademark registration that could have a very significant impact in the near future.

 

Anyone for a Jimmy John’s Freaky Fast Delivery?

Posted in Branding, Guest Bloggers, Mixed Bag of Nuts

Aaron Keller, Managing Principal, Capsule

image001We appreciate brands with personality. From our studies of brands, there are way too many living in a pool of vanilla ice cream and wondering why their customers don’t engage. Brands need interesting, engaging personalities and they are most effective when coming to life within the experience.

The Jimmy John’s experience is seeping with personality. Instead of a pool of vanilla ice cream, they’re scooping out Italian Nightclub, which oddly enough is a sandwich name and could easily be an ice cream. And, if you haven’t spent some time in a Jimmy John’s, you’re missing a treat for sandwich lovers and an appropriate amount of cheeky personality. The experience leaves you feeling like someone took the time to consider all the details surround a “freaky fast” sandwich.

Consider our admiration for this brand when this little private shed of awkwardness showed up on the job site outside our office. The name is slightly different and someone could perhaps argue you’re not going to have an issue with confusing Jimmy John’s with this blue plastic experience. But, if my job is managing the Jimmy John’s brand, this would make me pull the legal equivalent of a “hey, hey, hey, we know funny and that’s not funny.” Just doesn’t make sense to allow someone to pull your brand down into bowels of a portable potty.

Then we discovered that DuetsBlog had already spent some time sitting on this stool of a subject matter in a previous post. So, we’ve got an answer for the Jimmy John’s creative director John Kraynak who may be “grinning and bearing it” as the previous post put so eloquently. It would appear that Jimmy’s Johnny is the senior user of this brand name. Though, this might be an opportunity for this wickedly smart John Kraynak to take a positive, brand driven approach. Here it is: if you’re growing a strong, creative brand you might want to approach the blue shed people and offer them a rebranding. It wouldn’t cost much compared to the damage this comparison has and will have on this coveted franchise brand.

Though, this may just be me. For those who know me, I appreciate a witty poo/brand joke. I’ve already considered buying a copy of History of Shit and leaving it inside the Jimmy’s Johnny. So, this “Likelihood of Confusion” comparison might just be my scatological sense of humor showing up again. Perhaps you have a point of view. Or just a poo joke to share.

Either way, all’s good in the porto.

Super Inspire Me!

Posted in Advertising, Branding, Famous Marks, Marketing, Mixed Bag of Nuts

I had the great fortune to attend the recent FUSE conference held in Chicago for design and branding professionals, and see Oscar-nominated documentary filmmaker Morgan Spurlock speak.

spurlock My friend on the left is Kitty Hart from Capsule, who blogged about FUSE in the post entitled “Day 3: A Morning of Design Heroes.” My friend and colleague Steve Baird also blogged about the conference. Morgan Spurlock’s presentation was as amazing, as you would expect. I will merely focus on one of the areas in which he enlightened us.

When the iconic brand GE approached Mr. Spurlock, asking him to promote their brand by showing their “cool” MRIs, he said NO! Instead, he convinced GE to sponsor an important issue, and thereby connect its brand with an emotional topic. What a success!

It was hard to hold back the tears when he showed the GE-funded Focus Forward video clip entitled “Fire With Fire,” which shows a six-year old girl’s battle with terminal cancer. The GE logo was bookended — being shown at both the beginning and the end of the clip.

SPOILER BELOW! I highly recommend watching the clip before reading more of this blog post.

The Reader’s Digest version (for those of you who did not watch the video clip) is that the doctors in Philadelphia tried an innovative new treatment of injecting modified HIV cells into the girl’s blood. This modification kept the cells from infecting her with HIV, and at the same time these cells violently attacked her tumors. Remarkably, a girl with no chance of recovery was CURED!

I do not know about you, but this clip made me want to buy a GE light bulb. This video clip shows the power of emotion (and Morgan Spurlock’s genius). Indeed, this vignette even made me think that GE may have even had a hand in her recovery, through providing products or medical devices.

Marketing genius!

Trolling for an Inventive Method for Patent Enforcement

Posted in Genericide, Idea Protection, Infringement, Law Suits, Loss of Rights, Patents, SoapBox, Squirrelly Thoughts, Technology, USPTO

In the wake of Jon Stewart and Stephen Colbert leaving their respective shows on Comedy Central for newer pastures, John Oliver has emerged as a new beacon of political humor and satire.  If you haven’t watched his show, and especially if you considered the former two as having an obvious political slant, you should check out Last Week Tonight on HBO.  His shots get fired everywhere.

On this week’s, John Oliver took a shot at the patent system, particularly patent trolls:

I don’t know who looks worse out of Oliver’s segment – trolls or trial lawyers.  Or maybe Mark Cuban since he never seems to ask about patents.  Until this segment, I didn’t take note of how often Shark Tank uses the lack of a patent as a reason for rejecting a business idea, but I digress.

As Oliver’s comments make clear, there certainly is room for improvement to correct the litigation flaws created by so-called “patent trolls” – a hotly discussed topic lately in many business, law offices, blogs, and legislatures.

Much of the discussion of the “patent troll” surrounds how exactly a “patent troll” is defined.  Some refer to patent trolls as “non-practicing entities,” and others to “patent assertion entities.”  These sound in the media like lazy, menacing, evil, money-grubbing corporate shells waiting for their crossing fee from under the bridge – and surely there are some of those.  But that “patent troll” definition can also appear as an independent inventor who doesn’t make, use, or sell his invention.  Maybe that inventor’s idea was stolen by another company that now makes, uses, or sells it.  Before filing a lawsuit, he may set up a corporate entity to hold the asset to help protect him from personal liability or fund the litigation.  Patent litigation is expensive and shouldn’t that right be afforded to everyone?  Otherwise wouldn’t the Apples and the Samsungs be the only ones skating in the rocket docket of Marshall, TX?  We need to think very carefully about how we define “patent troll” before we try to make it unjustly hard for so-called trolls to litigate.

The major “troll” examples identified in Oliver’s segment – a patent that underlies the technology in every Android app and patents for copying – are technology that has become so woven in the fabric of our everyday lives that targeting people for making, using and selling a patented invention seems to the general public as utterly ludicrous.  And I don’t blame them.  In the trademark realm, we don’t allow the enforcement of trademark rights where the mark has become generic and therefore lacking in its ability to identify source.  Aside from defenses of laches or prosecution history estoppel, patent law doesn’t have a similar provision that protects such generally known ways of doing something from being asserted against others for making, using or selling the patented product.  But does it need something like the concept of genericide?

One way of resolving the issue may be to take from the model of trademark law – the Declaration of Use filed at the 6th anniversary of registration and then with the renewal every 10 years after the registration date.   This Declaration of Use requires a statement that use is continuing and providing a specimen showing use (and of course, a fee).  Patent law has maintenance payments that are required only for utility patents at 3.5 years, 7.5 years, and 11.5 years from grant of the patent.  But aside from payment of the fee, nothing else is required.  Maybe instead of a declaration of use, it may need a declaration of relevancy – and maybe that relevancy term is dependent upon the industry.

The patent law currently provides a 20-year term of an exclusive right to make, use, or sell the patented invention, in exchange for an enabling public disclosure of the invention to the public.  The whole purpose behind the system is for the public to gain possession of an inventive idea and replicate it or re-purpose it.  But 20 years in some industries, like the rapidly advancing software industry, may be too long of a term of protection.  Maybe we need shorter terms for software patents, much like we have a shortened term for design patents (14 years from issuance).

We must think very carefully about how we define “patent troll” and how we treat them.  We also need to find a delicate balance in avoiding seemingly frivolous lawsuits and protecting inventors’ rights.

How might Oliver treat the similar subject of trademark bullying?

Big Green Egg on Hunt for TM Registration

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Trademarks, USPTO

As it turns out, four days after Easter, the USPTO refused registration of the Big Green Egg’s claimed exclusive rights in the shape and color of its popular barbecue smoker and grill:

GreenEggSpecimenAs you will recall, we wrote about this product configuration trademark application, back in December of last year. Here are the challenges raised by the USPTO in refusing registration:

Specimen Refusal: Applicant submitted the above shown photograph of the goods as a specimen of use, but the Examiner noted that the drawing of the mark showed a smooth surface, lacking the obvious dimples, so overcoming the refusal will likely require a new drawing so it matches the use shown in the specimen; this will then raise the question of whether the dimples can be claimed as part of the non-traditional trademark.

The Examiner is inquiring about whether the dimples have a functional purpose, and if so, she is directing the Applicant to show them in dotted lines to make clear they are not claimed as part of the mark to be registered. If the Applicant attempts to claim them as part of the applied-for mark, showing them in solid lines, the next question will likely be whether that change constitutes a material alteration, requiring a new application.

Shape of Goods Incapable of Serving as Trademark: The Examiner indicated “the shape of the applicant’s goods is nondistinctive and incapable of functioning as a mark,” relying on “printouts from competitors’ websites and the patent applications . . .  which demonstrate that the shape of the applicant’s goods is so commonly used in the industry that consumers are accustomed to seeing such elements on similar products.”

Color Green May Be Capable of Trademark Ownership: Here the Examiner seemed to direct Applicant’s next steps, noting: “The color green as applied to the goods does not appear to have any functional advantage and does not appear to be commonly used by the applicant’s competitors. Therefore, if the applicant limits the mark to just the color green applied to the goods, the applicant may be able to establish that this the product design has acquired distinctiveness or the applicant may be able to register the product design on the Supplemental Register.”

Shape of Goods is Functional and Must Not Be Included as Part of Claimed Trademark: This portion of the refusal relates back to the incapability refusal discussed above, but the Examiner labels the shape of the Big Green Egg with the dreaded F-Word: “[T]he shape of the goods is functional.” Then, the Examiner goes on to discuss the Morton-Norwich factors (that we have discussed numerous times before):

The existence of a utility patent that discloses the utilitarian advantages of the product or packaging design sought to be registered:

The Examiner wrote: “Although there does not appear to be an issued utility patent that describes the functional advantages of the shape of the applicant’s goods, there are several published patent applications that discuss the functional advantages of the shape of the applicant’s goods.”

Advertising by the applicant that touts the utilitarian advantages of the design:

The Examiner directed Applicant’s attention “to excerpts from its website, which discuss the advantages of the shape of the applicant’s goods,” but she did not provide quotations of the concerning language.

Facts pertaining to the availability of alternative designs:

As to the alternative design factor, the Examiner wrote: “The applicant’s goods are a type of grill known as a Komado grill. For this type of grill, the shape used by the applicant is one of a limited number of shapes, and based on the attached examples of competitor use appears to be the preferred shape for this type of grill.”

Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture:

The Examiner’s discussion of this factor seemed confused: “The . . . patent applications and other evidence indicate that the style of grill shown in the applicant’s mark is expensive (to purchase). Thus, it seems likely it is also expensive to manufacture. As a result, all of the above factors favor a finding that the shape of the goods is functional and unregistrable.” Generally, this factor should only disfavor Applicants who have chosen designs that result from the most simple or inexpensive methods of manufacture; this appears not to be the case here.

Last, the Examiner issued an Informational Requirement, basically a set of very pointed questions and requests for advertising, promotional materials, and explanatory materials, that could lead to additional grounds for further functionality refusals, depending on what the materials show and the answers to the questions posed.

So, what do you think, is the shape of The Big Green Egg really nothing more than a Kamodo style grill, or does it have noticeable and distinguishing elements that might permit the particular shape of The Big Green Egg to be owned as part of the claimed non-traditional trademark?

If, in the end, The Big Green Egg is not allowed to claim the shape, and the color green is all that is left, is that enough to support registration and exclusive ownership?

Stay tuned, as we continue to monitor The Big Green Egg’s hunt for non-traditional trademark protection and registration.

Lance Armstrong: Phoenix or Forever Fraud?

Posted in Branding, Goodwill, Guest Bloggers, Mixed Bag of Nuts

Randall Hull, The Br@nd Ranch®

There is much to admire about Lance Armstrong. Really. Cancer survivor, founder of Livestrong, professional triathlete at age 16, successful professional cyclist, marathon runner. Yes, Lance was a very good athlete and road-racing cyclist long before he was diagnosed with cancer and after he returned to the sport prior to including performance-enhancing drugs in his racing regimen.

But, like many cycling fans, I was frustrated by his Tour de Shame, denying doping, lying under oath — which will cost him a $10 Million penalty, intimidation, and suing those who attempted to prove that he did indeed “dope”, even in the face of the mounting evidence. There is a peloton of litigation following Lance.

In 2013, the very foundation he helped establish disassociated themselves from Lance by expunging his name from their identity. Brand Armstrong wasn’t just tarnished, it was toxic.

So, one wonders, can Lance Armstrong resurrect his brand?

Perhaps. But it will require serious steps to re-establish trust, erase the arrogant, narcissistic, Janus-faced image he created and continues to engender.

For example, in December 2014, after a night of partying in Aspen, he struck two vehicles and then convinced his girlfriend to take the blame. Or, his January 2015 interview in For the Win where he admits he would probably dope again.

Let’s be honest, Armstrong is a narcissist. But that is neither an indictment of him nor an excuse for his behavior, merely a realization of the personality behind the figure.

Narcissism is not itself the bane of personal branding even though it can get in the way. Look at many of the alpha male brands, I won’t mention specific names but you likely can identify two or three. Powerful, successful athletes, entrepreneurs, and international figures all exhibit degrees of narcissism, but they didn’t choose to cheat the rules to keep up with the competition and seemly convince themselves it is justified by the circumstances. And therein lies the problem for Lance.

In terms of personal branding, perception is key and his rebuilding phase must start with demonstrating true penitence for what he did and the people he wronged both through personal and legal acts.

Lance will have to speak from the heart, not from prepared scripts as we saw with Tiger Woods. It will also take more than apologies to former teammates.

Maybe someday Brand Armstrong will mean something positive and inspiring again. Like Tiger, it is what Lance “does next that counts”. Brand Armstrong must realize resurrection requires more than just saying “sorry”.

Coke Walks Tightrope in ZERO Branding

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO (interestingly those applications all being opposed by RC Cola):

“Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.”

Yesterday, the Seventh Circuit Court of Appeals spoke on the subject, affirming the Northern District of Illinois’ grant of summary judgment in favor of Coca-Cola in the trademark infringement suit brought by Baig, reasoning:

“[W]e conclude that Baig has not provided evidence from which a rational jury could determine ‘Naturally Zero’ had established secondary meaning. . . . [It] was a tiny and brief entrant with negligible sales in the bottled-water portion of the beverage industry; its trivial role made it ‘difficult, maybe impossible’ for it to develop secondary meaning in the beverage industry for its mark. Moreover Baig’s narrow advertising efforts — limited to trade publications, which are primarily read by industry insiders, and some pamphlets handed out at gas stations — are also insufficient to show that a substantial segment of consumers associated ‘Naturally Zero’ with a single source. And Baig’s relatively insignificant and intermittent sales from 1998 to 2004 are insufficient for a finding that a substantial number of consumers would consider ‘Naturally Zero’ to be uniquely associated with Baig’s brand.” (case citations omitted).

Given the Court of Appeals’ agreement with Coca-Cola that no trial was necessary to address Baig’s claimed trademark infringement, and given the “tiny,” “brief,” “negligible,” “trivial,” “insignificant,” and “intermittent,” references characterizing Baig’s claimed use of “Naturally Zero,” one has to wonder whether attorney’s fees ought to be awarded Coca-Cola, at least on Baig’s pro se appeal of the case.

The beverage giant must be pleased with the win, but in the end, given all it has been forced to spend on defending this deep-pocket lawsuit, I’m guessing Coke may still be left with a bad aftertaste in its mouth on this one. Recall, the Seventh Circuit has shown a willingness to grant fees in trademark bullying fact patterns, and we know from 3M’s experience that Goliath can be bullied by David too, so relative size isn’t determinative.

In case you’re wondering about the status of the consolidated ZERO trademark oppositions brought by RC Cola (on genericness grounds) that Coca-Cola is currently defending at the TTAB, the parties are waiting for the Board to schedule a date for oral argument — this one might be worth attending, as I’ve written previously:

[I]t remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

Stay tuned, hopefully we’ll know before the end of the year exactly where the meaning of ZERO stands.

First dinosaurs, then wooly mammoths. Are trademark attorneys next to go extinct?

Posted in Genericide, Infringement, Law Suits, Look-For Ads, Squirrelly Thoughts, Trademarks

A world without trademark attorneys… frightening, isn’t it? (maybe more for me than for someone who isn’t a trademark attorney). It seems unlikely, but we may be inching closer to this apocalyptic scenario.

In Australia, a group of researchers, legal academics, and other organizations are collaborating on the creation of a computer program that they hope will remove the subjectivity from trademark infringement analysis. The goal is to develop a program which can calculate a similarity score between two marks. The score could be relied upon by businesses in choosing names and courts in determining trademark disputes.

This certainly isn’t the first time a computer has taken on tasks normally reserved for humans. IBM famously created computers that could beat world chess champions as well as win $1 million on Jeopardy!. Computers have also been able to discover laws of physics that took humans centuries to unearth. Oh, and don’t forget the more recent creation of a self-aware Mario.

But for all the trademark attorneys out there, please, take a deep breath. We’re not unnecessary (yet). In fact, most trademark attorneys would welcome the opportunity to remove some of the subjectivity in trademark analysis in order to be able to provide more certain advice to their clients. Unfortunately, removing all of the subjectivity is likely impossible.

Trademark infringement involves more than just the similarity of the marks themselves. The legal analysis involves balancing numerous factors. The type of goods or services sold is a major factor, and others include the channels of trade in which the products are sold, the sophistication of the consumers, the number of similar marks used on related goods or services, the intent of the defendant, and others. Thus far, the Australian project appears to be focused solely on the similarity of the marks.

Also, the scope of protection granted to a trademark can expand or contrast over time. The protection can even disappear entirely. We’ve lost a lot of good brands over the years to genericide, including every day words like aspirin, thermos, escalator, dry ice, cellophane and others. Even when trademark rights aren’t lost in their entirety, if similar marks are in use by third-parties without evidence of confusion, then the rights afforded to one owner may be more narrow.

If the project is successful, the computer program could serve as an additional resource for trademark attorneys. It could be a helpful tool in providing some objective assessment of risk that marks might be considered similar. If the “similarity score” is a 3 out of 100, it is likely a good choice. The score of 99 will hopefully be enough to deter your client from investing in its idea for Starbux coffee shops. But will businesses, lawyers, or courts really feel comfortable relying on a score of 60? Or 40? The program might help confirm the clear cases, but is unlikely to be helpful in the close calls, where objectivity is needed most.

On the other hand, the program could be helpful where the other factors weigh in favor of one party. A high (or low) similarity score would present another piece of objective, factual evidence that could help in motions for summary judgment. It would also be a lot cheaper than hiring a linguistics expert to analyze the marks.

The software could also be utilized in-house or by marketing and advertising firms to analyze new name candidates prior to providing it to the decision makers. Providing the similarity score for those high risk names could help avoid emotional investment in a name that is all-but-assured to be turned down by legal. I don’t care what your selling, the name “Nike” is going to be an uphill battle that you’re better off avoiding.

The project is likely to provide some very helpful insight in the future. But I think I’ll come into work tomorrow, just in case.

Britto v. Apple: Utilizing the IP Kitchen Sink

Posted in Advertising, Articles, Branding, Copyrights, Counterfeits, Dilution, Fashion, Infringement, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Can an artist’s particular style of art constitute both copyrightable expression and trade dress?

Brazilian artist Romero Britto has filed suit against two artists known as “Craig & Karl” for copyright infringement — and since the artists’ work was featured by Apple, Britto has sued the company as well for trade dress infringement.

Britto’s complaint, filed in the Southern District of Florida earlier this month, alleges that Britto “is beloved throughout the world and his unique and colorful fine art works are sold and exhibited in hundreds of galleries and museums across the globe.” Britto’s works employ various colorful clashing patterns applied to everyday items, as shown below:

Britto Works

Britto alleges that a variety of Craig & Karl’s past works appropriate this style, and offers a variety of colorful comparisons in the complaint.

Britto Comparison

When an artist files an infringement suit based on his past works, the natural assumption is that copyright — and only copyright — is at issue. And while Mr. Britto does allege copyright infringement, it only extends to Craig & Karl’s own works.  The wrinkle in this case: Britto only became aware of Craig & Karl’s work because the duo was featured in a recent Apple ad campaign with the (now-ironic) title “Start Something New,” featuring various works created exclusively using Apple products. As shown below, Craig & Karl’s image employs a similar series of patterns and colors to depict “the creative power we have at our fingertips.”

Apple Ad CK

To reach Apple as a defendant, Britto alleges that his works aren’t simply copyrightable expressions but comprise the “Britto Trade Dress” — i.e., “a series of unique registered and unregistered trademarks and distinctive trade dress to identify the BRITTO™ brand’s expansive line of goods and services to consumers.” He defines his trade dress within the complaint rather broadly:

The overall Britto Trade Dress is composed of a specific combination of elements that are used in BRITTO® products, promotional materials, and packaging—vibrant color combinations, often dominated by bright yellow; compositions constructed by the juxtaposition of randomly shaped swaths of recurring distinctive patterns (including polka dots and stripes) to form the subject matter of the image, with each compositional element all outlined in bold black strokes; and uplifting, bright and happy visual themes. This specific combination of visual elements when taken in its entirety creates a distinctive overall visual impression that is uniquely “BRITTO,” and serves as a source identifier for Plaintiff’s products, promotions and services.

While the image used in the Start Something New campaign may have no direct comparison to a past Britto work, Britto alleges that it is similar enough to create a likelihood of confusion as to source, association, endorsement, or sponsorship under the Lanham Act. As a sidenote, Mr. Britto does own six trademark registrations in the U.S., including registrations for the BRITTO and ROMERO BRITTO (Stylized) marks for “paintings” and “artistic design services for others in the field of commissioned artworks.”

Britto further alleges that the deleterious effects of Apple’s ad campaign constitute actual confusion between his work and Craig & Karl’s:

As with any Apple campaign, the Start Something New Campaign had massive exposure and breathless press coverage, and many of the media profiles prominently featured the Infringing Apple Image. Plaintiff was inundated with reports of the Start Something New campaign and the Infringing Apple Image. These reports ranged from, for example, incorrect congratulations on Mr. Britto’s new deal with Apple, to consternation from business partners in potentially collaborative or competing product categories, to inquiries from collectors wanting to know if the image they saw in the Apple store or on the Apple website was by Romero Britto.

While the image used in the Start Something New campaign does appear to share features with Britto’s past works, it remains to be seen whether Britto can successfully establish trade dress protection for his artwork.  Trademark law does not apply naturally to artistic expressions alone — instead, the works must function as a brand and have recognized “secondary meaning” to the public as an indicator of source.

Britto’s definition of his trade dress seems quite broad, and courts may be hesitant to grant Britto a monopoly in “vibrant color combinations,” “the juxtaposition of . . . distinctive patterns” and “bright and happy visual themes.” That said, Britto’s complaint is detailed enough to allege significant notoriety and goodwill as to his particular style of art, and he appears to have sufficient marketing savvy to protect the core elements of his brand (such as the BRITTO mark itself). It will be interesting to see if Britto is willing to pursue his trade dress claims to the bitter end, if for no reason other than to create an interesting precedent.

And as for the copyright claims: generally speaking, an artist’s particular “style” cannot be copyrighted. But it is an open question as to whether a “critical mass” of design cues can be appropriated to the point of constituting copyright infringement.  The standard is whether the allegedly infringing works are “substantially similar” in terms of expression — i.e., the use of patterns, color, similar depiction of items, etc. The recent “Blurred Lines” verdict has shown that juries are willing to find copyright infringement among similar, though not identical, works.

So has Britto been wronged? Or have Craig & Karl Start(ed) Something New?