DuetsBlog

Collaborations in Creativity & the Law

A Less Possessive Hershey’s Brand?

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

The possessive form of the Hershey’s brand dates back to at least as early as 1894, according to U.S. Reg. No. 54,041 – a more than 100 year old trademark registration from 1906.

Last week, Brand New reported on Hershey’s new logo and corporate identity – without the apostrophe and letter “s” at the end:

I’m guessing that the possessive form of the HERSHEY’S trademark will continue to appear on chocolate bars and packaging, since all references to the rebrand seem to focus on the corporate identity, but if others have more information on this point, please feel free to weigh in.

Moreover, so far, there is no record of any trademark filings in the U.S. to match the new truncated look, perhaps also signaling that this look won’t hit packaging, at least in any dominant kind of way.

Here is how AdAge reported the change:

“The new branding will impact all visual aspects of how The Hershey Company presents itself, from consumer communications to websites to the interior design of its office spaces and the look of its retail stores,” the company said in a statement. While rooted in a rich heritage, the new corporate brand reflects a modern, approachable look that reflects the company’s openness and transparency as it has grown into a global company.”

Marketing types, if that is the goal, why leave the truncation and elimination of the possessive form to corporate communications, why not take it all the way to packaging? And, do you believe that makes sense as the next logical step, or does the trademark syrup just become too sticky?

Perhaps Hershey’s is merely dipping its toe in the chocolate of the less possessive format?

Given that Hershey’s has more than 150 live U.S. Registrations smooching the possessive form of the brand name (and many multiples of that number outside the U.S., I’m sure), if the truncated un-possessive format were to replace the more than 100 year old Hershey’s format, trademark types, would you feel comfortable advising the brand managers that amendments could be obtained safely without losing all these valuable registrations?

In other words, do you believe that removing the apostrophe and “s” creates a material alteration of the Hershey’s trademark? In the U.S.? What about outside the U.S.?

Would you hedge by having the new corporate identity appear in a trademark sense but in a more subtle way, almost as a corporate signature on the back corner of a packaging label?

There is certainly a lot to think about when an entire worldwide trademark portfolio is already in place — seems to me, this is a perfect opportunity for a graceful collaboration between legal and marketing types.

Don’t Litter, Eh?

Posted in Advertising, Branding, Fair Use, Famous Marks, Trademarks

The Toronto Globe and Mail recently reported on a clever anti-littering campaign that was launched and quickly aborted in Toronto due to trademark concerns.  The premise for the campaign was to take wrappers and packaging from some well-known brands and position it to create words describing litterers–words like dipstick, dumb, lazy, lowlife, pig, etc.  While it’s a close call, I suspect this campaign was expected to be slightly more effective than my headline for this post.

Now, I’m no Canadian lawyer (although I do own a Canadian tuxedo), but I wonder how in the name of Bryan Adams this ad campaign was approved all the way through publication without anyone thinking about getting the permission of the brand owners.  Not surprisingly, the brand owners whose packaging was used for the ads raised concerns about negative associations that might result from the ads.  And if Canadian trademark law is anything like U.S. trademark law, they would have probably had a pretty decent case.  That’s not to say that Toronto (or whatever ad agency put the campaign together) would be defenseless–indeed, I can imagine a couple arguments based on the fact that the packaging is not being used as a trademark and this could potentially constitute a type of fair use–but, at the very least, this campaign was something that was likely to start a fight.  Well-established brands are precious commodities and it’s unthinkable that any reputable brand would be okay with its brand being equated with trash.  (Unless, of course, you’re in the trash business.)

Perhaps the ad campaign was launched under the theory of “better to beg forgiveness than to ask permission,” or perhaps the ad agency that put the campaign together was willing to gamble in an effort to get their name out.  Whatever the logic, I think it was always an unfortunate foregone conclusion that this ad campaign would not survive long.  What do you think?

 

Another Real Lulu: Anatomy of an Affidavit

Posted in Articles, Branding, Food, Goodwill, Infringement, Law Suits, Marketing, Trademarks

On Tuesday of this week, we discussed the trademark infringement case filed by Lulu’s Market & Deli against Lulu’s Public House (depicted above), here is a link to a pdf of the Complaint.

As you will recall, we expressed a healthy dose of skepticism about the claims being asserted by Lulu’s Market & Deli, and we predicted that no emergency injunction would issue before the closing of the 2014 Minnesota State Fair next Monday. It appears our prediction will hold, given that today is the last opportunity to obtain an emergency order from the court to impact use this season.

Although the complaint was filed last Friday, along with a Motion for Temporary Restraining Order, as Ramsey County District Judge Robert A. Awsumb — who was assigned the case on Monday — noted in his Order on Tuesday, no emergency hearing will be scheduled until Lulu’s Market & Deli files with the court, proof of service of the complaint and motion on Lulu’s Public House.

Let’s count the number of ways, according to the actions of Lulu’s Market & Deli, that this is so not an emergency that would require immediate court intervention.

First, despite District Judge Awsumb’s warning on Tuesday, still no evidence of serving notice on Lulu’s Public House has been filed with the court.

Second, the owner of Lulu’s Market & Deli, submitted his Affidavit, last Friday to explain the need for the emergency injunction, but in doing so, admitted: “On or about June 26, 2014, I read a story in the St. Paul Pioneer Press about new food vendors entering the Minnesota State Fair, which is taking place this August 21 through September 1. Among the new vendors who were reported to be entering the State Fair was an operation called ‘Lulu’s Public House,’ . . . . The newspaper story ran in the ‘Eats’ section of the Pioneer Press. Since June 26, 2014, I have also seen several other internet news and information sites publicize the entry of ‘Lulu’s Public House’ at the State Fair.”

So to be clear, Lulu’s Market & Deli waited to file suit and request emergency court action until after the State Fair opened and more than eight weeks after admitted knowledge of Lulu’s Public House coming to the State Fair — and, the June 25 Pioneer Press article specifically referenced the “Breakfast Juicy LuLu” menu item that Lulu’s Market & Deli is complaining about.

Third, the Affidavit of the owner of Lulu’s Market & Deli also admitted: “Since the June 26, 2014 Pioneer Press story ran, I have been contacted by between five and ten people each week who mistakenly believed that ‘Lulu’s Public House’ was affiliated, associated, or connected in some way with Lulu’s Market & Deli.”

So, by the third full week of July, Lulu’s Market & Deli had heard from twenty to forty ”confused” people, but waited more than another four weeks to take formal action (the papers are also silent about and beg the question of when Lulu’s Market & Deli first contacted Lulu’s Public House), tellingly after the opening of the State Fair.

By Tuesday of next week, when the court reopens after Labor Day, the claimed need for emergency relief will be moot.

To be serious about seeking an emergency temporary restraining order, Lulu’s Market & Deli needed to move quickly upon learning what it learned in June, it needed to communicate through its actions that immediate attention and court action was required to avoid irreparable harm. Yet, the complaint, motion for temporary restraining order, and supporting affidavits, all beg the question of why Lulu’s Market & Deli waited so long, seriously undermining the request for immediate and emergency court intervention.

Of course, actions speak louder than words.

Just curious, why does the operation of Lulu’s Public House at the Minnesota State Fair create a twelve day emergency for Lulu’s Market & Deli, when another’s food truck – operating under the name ”Lulu’s Street Food” — has been circling the streets in the Twin Cities for more than a year?

As predicted, it appears this dispute will be sorted out after the 2014 Minnesota State Fair ends.

If so, that will provide Lulu’s Public House plenty of time to redeem itself and probe the claims and motives of Lulu’s Market & Deli, if it is inclined to defend itself.

There appears to be plenty to probe, based on a cursory review of the complaint, motion, and affidavits filed by Lulu’s Market & Deli.

First, Lulu’s Market & Deli does not appear to own a registered trademark, so it actually will have the burden of proving the existence of common law rights and the scope of those rights.

Second, although Lulu’s Market & Deli’s motion for a temporary restraining order contends that Lulu’s is an “arbitrary term” that “deserves the highest protection” and “no proof of secondary meaning” is required — the owner’s Affidavit admits that the “Lulu’s Market & Deli” name “is derived from the original owner’s last name. . . .”

Surnames are considered descriptive, and as such, they don’t enjoy exclusive rights upon first use, but they require a showing of secondary meaning or acquired distinctiveness. Here, the current owner’s Affidavit admits to only “spending $15,000 on advertising and marketing using the business’s name” since he became the owner in 2010.

Secondary meaning is not assured to Lulu’s Market & Deli. And, it will be interesting to see how Lulu’s Market & Deli plans to prove that Lulu’s enjoys a special significance or secondary meaning while another’s food truck — also using the Lulu’s name — has been roaming the Twin Cities for more than a year.

It is unclear whether Lulu’s Market & Deli will be able to rely on the claimed 13 years of use of Lulu’s by the prior owner with the last name Lulu — no chain of title has been made of record yet, and the current owner seems to lack personal knowledge of any prior use (“[t]o the best of my knowledge, since it first went into business, it has always operated under the name Lulu’s Market & Deli”), calling into question whether a proper assignment was made when he took over the business on the corner of Selby & Fry in St. Paul, Minnesota.

Indeed, the plaintiff’s assumed name filing for “Lulu’s Market & Deli” is dated September 14, 2010.

Nevertheless, assuming for the moment that prior common law rights can be proven, Lulu’s Market & Deli also will have to establish more than de minimis and otherwise manageable confusion in the marketplace.

Keeping that in mind, all of the customer, employee, and friend generated Affidavits purporting to prove “actual confusion” appear tainted by a leading questionnaire admittedly provided to each of them by the owner of Lulu’s Market & Deli, specifically asking: “When you heard or read about Lulu’s Public House entering the Minnesota State Fair, did you believe that it was affiliated or associated with Lulu’s Market & Deli?”

Ouch, that burns a lot like molten cheese dripping from a juicy lucy. This kind of evidence is not persuasive and it isn’t going to cut it, if the case is pursued beyond the closing of the State Fair in 2014.

The complaint and other papers filed by Lulu’s Market & Deli also question the good faith of Lulu’s Public House in adopting and using its name. Those filings call out the actions of the owner of Lulu’s Public House as ”wrongful,” “cavalier,” “willful, deliberate, and/or intentional,” “infringing,” and “unlawful.”

We had the distinct pleasure of meeting Lulu — the owner of Lulu’s Public House — and snapping the photo (above and to the right) two nights ago.

The Lulu we met is anything but the way described, she is charming, and seems to be a real and authentic sweetheart who wears the American flag quite well, by the way.

Oh, and did I mention, her name is Lulu? I’m thinking that quiets at least the motive behind selecting the name Lulu’s Public House.

So, we’ll be following this case closely, stay tuned dear readers.

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.

Uniforms?

 

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?

ABSINTHE MAKERS ARE NOT TOASTING IN SWITZERLAND

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