Collaborations in Creativity & the Law

What do you mean(s) we lost?!?

Posted in Law Suits, Patents

Tomita Technologies USA, LLC was handed a devastating loss earlier this week in its long-enduring battle with Nintendo over stereoscopic (i.e. 3D) image technology.  Back in 2013, Nintendo lost a patent infringement jury trial in the Southern District of New York and was ordered to pay $30.2 million in damages to Seijiro Tomita, the inventor of United States Patent No. 7,164,664.  Roughly speaking, the ‘664 Patent provides a way to display 3D images without the need for 3D glasses.  Tomita had accused Nintendo’s 3DS system of infringing the patent.

Nintendo appealed the original jury verdict to the United States Court of Appeals for the Federal Circuit.  The Federal Circuit then reversed the construction of a critical claim term underlying the original judgment, which required a new trial in the district court.  The district court concluded in the new trial that Nintendo did not infringe the patent because the means by which the 3DS accomplished its stereoscopic image was different (and frankly, more sophisticated) than the means disclosed and claimed in the ‘664 patent.

Ultimately, Tomita lost in this case as a result of something known in patent law as “means-plus-function” claiming.  Dennis Crouch over at Patently-O previously did a nice summary of the what “means-plus-function” claiming is, and why such claiming is starting to fall out of favor with patent applicants.  When you draft a patent claim that identifies a functional attribute of your invention, the protection of the patent is generally limited to the particular structure you have used and disclosed to accomplish this function.  Tomita’s invention depended primarily on hardware components to accomplish the image offset function, whereas Nintendo relied primarily on software algorithms.

Aside from resulting in a bad day for Tomita, this lawsuit highlights again the difficulties that we are currently facing with regards to intellectual property protection for functions that are accomplishable with software.  As it currently sits, the United States does not have any clear protection scheme for protecting software rights.  Rather, software is “protected” through a mishmash of patent, copyright, trademark, and trade secret law, none of which were truly designed to work for software.  (See here.)

Our intellectual property regime also has problems with trying to protect inventions in a world where technological capabilities are expanding at break-neck speed.  Often times, important inventions from the “analog” world can be replicated through software or digital means and in the case of a “means-plus-function” patent, that will frequently be sufficient to avoid infringement.  At some point, we need to make a policy decision as to whether we think this is okay.

To be clear, I’m not suggesting that the differences between the Nintendo and Tomita functions were merely one using software while the other used hardware; there appeared to be additional differences as well.   However, I think a case like this presents a good opportunity to ask the questions about how intellectual property rights should be considered in our environment of constantly evolving technological capability.  We need to find a new balance between incentivizing invention without creating undue obstacles to innovation.

Who’s Got PRINCE Control?

Posted in Copyrights, Idea Protection, Patents, Trademarks

My home state of Minnesota prides itself primarily on three things:  our ability to withstand our winters, our 10,000 lakes, and our dearly beloved Prince.  While we take a beating when it comes to our sports teams, all of his purple life we had Prince.  Just like you might do for your neighbors, he opened his Paisley Park doors to any one of us to come hang out and dance until the wee hours of the morning.  Minnesotans kept a respectful distance from him and honored his desire for privacy, even though Paisley Park borders a well-traveled highway in the western suburbs.  Maybe it was just that we all knew we weren’t cool enough to talk to him, but honestly what would you even try talk to him about?!?   After I moved out of the state for college, Prince was often a symbolic rock when I was feeling a little homesick.   When my freshman year roommate decorated her side of the room with dozens of photos of my two least favorite things (Brett Favre in a Packers uniform and Dave Matthews) to mark her territory, I blared Prince from my side of the room.   When the Vikings “set a new mark for futility” and lost the NFC to the Packers, Chappelle’s True Hollywood Story skit about Prince aired.  My Wisconsin-born friends suddenly found being from ‘Sota to not be so pitiful.  “Where is Lake Minnetonka?”   “Did he really have parties like that?”  “Wait, he still does?!”

Prince’s death last week rocked Minnesota pretty hard.   That cool, funky vibe that emanated from his small 5’2″ frame felt noticeably absent in Minneapolis over the weekend.   His aura made you want him to drop some insane, sexy, humorous, wise, out of this world one-liner on you (pay attention heirs, I hope a desk calendar compilation of these is forthcoming).  As much as the world may have been surprised by stories coming out of Minnesota about our state’s relationship with him, I was equally surprised by the extent of all of the Prince tributes worldwide.   As the video from the SNL 40th anniversary party makes clear, even the cool people at the lunch table thought he was too cool for them.  When you grow up thinking of him as your neighbor who floats on purple smoke, threw great parties, and oh also happened to be a musical genius, I never really noticed the true extent of his international stardom.

While he was known for his privacy, he also was known to be strict about his copyrights in his works – probably even more so than Kanye West.  But…he did not have a will,  which means the ownership of his copyrights in his works will certainly be called into question.  The copyright term for an individual’s work is “the author’s life plus an additional 70 years.”   Assuming that he owns them personally, rather than as an asset of some corporate entity, that would give his heirs ownership rights in these works for another 70 years.  The ownership of the copyrights in his songs, and what “heirs” get to lay claim to them, is certainly going to be a hotly contested battle.

And then there are the trademark rights for a guy who once was only referred to by a symbol or The Artist Formerly Known As Prince.  Even before it was confirmed by a judge yesterday that Prince had no will, his trademark filings gave subtle hints that maybe his affairs were not fully in order.   All of the applications that I found appear to be owned by Paisley Park Enterprises.  The maintenance filing for his registration for PRINCE (registered after his Love Symbol period) for “entertainment services, namely, live musical and vocal performances by an individual” was not filed when due in 2004, so that registration was cancelled.  It was refiled in 2005 by a different firm, and again the maintenance filing was not timely filed and so that registration was cancelled in 2013.  It was refiled in October 2014 by yet another firm and just scheduled to publish two days ago.  Meanwhile, his iconic “Love Symbol” is handled by yet another firm — that seems to have even handled simple recent filings in paper filings, which is a rather unusual practice in the last few years due to a preference for electronic filings by the USPTO.  It makes you wonder what actually was going on behind the scenes here.

With one more verse to the Prince IP story, I need another piece of your ear.  You see not only was Prince a musical genius, he was also an inventor of this keyboard design and had a design patent for this, which expired a few years ago.

princeWho will end up owning Prince’s IP rights – and controlling his legacy – remains to be seen, but as I just overheard someone say while I  finished drafting this post “the people of Minnesota should own it.”



Trademark Lessons for New Businesses from a Lawsuit Against a Colorado Juice Bar

Posted in Articles, Dilution, Fair Use, Infringement, Law Suits, Trademark Bullying, Trademarks

It is a big, exciting, and dangerous risk to start a new business. There were approximately 400,000 in 2014 (continuing a recent downward trend, according to Gallup). Most entrepreneurs know that the odds are stacked against them, as about 50% of new companies fail during their first five years (dig deeper into the numbers here.).

There are countless reasons why new businesses fail and so many are out of the owner’s control. However, a business’s name and trademarks are within its control. Unfortunately many new businesses don’t learn of the risks associated with trademarks until it is too late. A recent lawsuit against Sol Kitchen juice bar and café provides some cautionary lessons for new businesses.

Sol Kitchen opened just the second week of April in 2016.  The company has already been sued. The plaintiff is Baja Management, owner of the Sol Cocina Mexican restaurant chain. Baja Management has locations in California, Arizona, and recently announced last January that it would be opening a location in Denver, Colorado. Reportedly, Baja Management sent a cease-and-desist letter to Sol Kitchen in January, but the discussions stalled when Baja Management would not agree to pay Sol Kitchen for it to change its name. Sol Kitchen had already invested at least $10,000 into its website, logos, and other items.

Understandably, many new businesses are shocked when they receive a cease-and-desist letter. The owners of Sol Kitchen noted that state or federal officials did not object to their name. Recipients of cease-and-desist letters often feel like they are being “bullied” or unfairly singled out. While these reactions are normal, the reactions reflect a misunderstanding of U.S. trademark law (which, admittedly, doesn’t always align with common sense).

Here are three common misunderstandings regarding trademark disputes that may help your business avoid a similar situation:

  1. Registering your entity name does not provide protection for your trademark. When you incorporate your business or obtain a federal tax number, the state and federal officials do not evaluate the availability of your name as a trademark. Most states will examine only whether there is an identical business name (meaning, you could probably register Starbux Coffee House, Inc., but it doesn’t mean you can legally use the name). If you want legal advice regarding the availability of a trademark, you need to consult with a trademark attorney.
  2. Just because another company is not in your city or state, its rights are not necessarily limited. If a company obtains a federal trademark registration, that company has the right to use that trademark nationwide, except against third-parties who have established valid common law rights prior to the filing date of the trademark application.
  3. The fact that other companies are using the same word in their business doesn’t always justify another third-party use. The issue is whether there are so many third-parties using a particular term in U.S. commerce in connection with the same or related goods or services such that the trademark should be entitled to a narrow scope of protection. This is a fact intensive, legally complicated, and ultimately very subjective analysis. If you’re relying primarily on third-party use as a defense, you’re facing an expensive legal battle, and one that you may end up losing.

Avoiding these three misunderstandings can help reduce the risk that your business finds itself on the receiving end of a cease and desist letter. Ultimately though, every business should consult with a trademark attorney before crossing the line to where it would be cost-prohibitive to change the name of a business or product.

A preliminary clearance search of the records of the U.S. Patent and Trademark Office (or a “knock-out” search) can quickly and relatively inexpensively identify clear problems with a new trademark or name. A trademark attorney can also equip you with some knowledge in how to select a new or modified name that carries less risk.

While a search cannot identify every potential problem, it can significantly reduce the risk of being the target of an infringement lawsuit. Such a search can help avoid legal fees and rebranding costs and, perhaps more importantly, provide you with a little peace of mind. With all of the other unknown challenges facing small businesses, evaluating the risk of a possible trademark dispute, while there is still time to change course, is an opportunity that every new business should use.

Is the Taste as Sweet?

Posted in Guest Bloggers, Mixed Bag of Nuts

–James Mahoney, Razor’s Edge Communications

An upscale little bistro/bakery with two Boston-area locations serves terrific pastries and lunches. The ambiance is delightful, the service is good; and the waitstaff nicely uniformed. All in all, an enjoyably classic “sidewalk café” experience.

In the blink of an eye, that all changed for me recently. An item in the Boston Globe noted that a national chain had bought a majority share in the business. In that moment, it went from being a cool local joint to a cog in a big wheel.

Now I have nothing against the bigger company. In fact, I’m an occasional customer there, and have never had a complaint about the food or the service.

Nevertheless, to my mind, the bistro/bakery just flipped from being an entrepreneur’s genuine small-business dream to being a gimmick. It’s quite possible that nothing may change—though I doubt that—and I may be accused of being a shallow snob. But I’m betting that you’ll see this brand start to pop up all over.

And as it does, those chain-made pastries won’t taste quite so sweet to me.

I’ve noticed the same type of response in others when this sort of thing happens. Craft beer and organic packaged foods are two examples. In both cases, I’ve heard identical reactions to the news that they’d been acquired by national/international conglomerates: “Arghhh. Well, that’s it for them as far as I’m concerned.”

Musicians suffer similar slings and arrows, accused of selling out if their tunes become soundtracks to ads.

Other businesses—software development, for example—typically don’t trigger the same reaction. It’s a given that those folks are in it precisely to make something of value that they can then sell for big bucks before moving on to their next big idea.

But the arts, including comestibles, are different.

Part of this, and perhaps the biggest part, is that people who gravitate toward start-ups, small businesses, and “discovered” gems of limited availability find value and personal satisfaction in helping people who are just like us, except that they had the vision and the drive to do the hard work of getting the thing off the ground.

Supporting them feels like you’re personally contributing to the success of something that you value. However ephemeral that connection might be, it’s lost the moment the entity gets sucked up into the borg.

There’s no logic to any of this. But then, logic isn’t where this kind of brand affinity lives; emotion is.

ELLE Fails to Un-ring Bell, DJ Action Sticks

Posted in Agreements, Articles, Branding, Civil Procedure, Contracts, Dilution, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB

elleQuestion for the day, how common is the given name Elle? I’m really not sure, I don’t believe I’ve ever personally known anyone with that name, and Mongabay doesn’t even include Elle in its listing of girl’s first names, but it does rank Ella (210), Elena (412), Ellie (1198), Elly (2802), and Ellamae (3514) among the top female first names in America.

Is Elle really less popular than Ellamae in America? What, no parents inspired by the likes of Elle MacPherson? Elle King? Elle Fanning? No doubt, as a surname, Elle is pretty rare, it appears, but I’d expect to see Elle on the listing of first names somewhere above Ellemae, wouldn’t you?

Enter fashion designer Elle Sasson, opposed by Elle Magazine at the TTAB of the USPTO for more than two years now. Last week, Elle Sasson won her bid to have a federal district court in New York hear her complaint that she has done nothing wrong in using and attempting to federally-register ELLE SASSON as a trademark for clothing, and that ELLE Magazine is wrong to assert claims of trademark infringement and dilution allegedly in violation of the ELLE trademark.

Meanwhile, the TTAB opposition is suspended, pending the outcome of the district court action.

Sending a cease and desist letter alleging trademark infringement and/or dilution will typically trigger the recipient’s right and ability to remove the cloud of uncertainty surrounding its use, by bringing a declaratory judgment (DJ) action to have a federal court decide it once and for all.

This declaratory judgment step often guarantees an actual lawsuit will go forward and that the allegations in the cease and desist letter will be litigated by the parties in court because the sender of the cease and desist letter will frequently prove it is serious by answering and then counterclaiming for trademark infringement and related relief. We’ll wait and see if ELLE does.

But sometimes, the party sending the letter, says in effect, “not so fast,” or “just kidding,” and tries to dismiss the DJ action by arguing there is no present, imminent dispute that requires the court’s immediate intervention. The ruling from last week rejects ELLE Magazine’s contention that the existing dispute is really limited to the right to register and belongs at the TTAB:

“The plaintiffs [including Elle Sasson] have a concrete business interest in determining whether their current and future use of ELLE SASSON exposes them to liability. [ELLE Magazine] has claimed infringement and dilution. Each time the plaintiff’s use their allegedly infringing mark, they increase their exposure to potential damages. Delaying consideration of these claims pending the outcome of the TTAB proceeding ‘undercuts the purpose of declaratory relief’ by forcing the plaintiffs ‘either to abandon use of trademarks’ they have been using in commerce ‘or to persist in piling up potential damages.’ Entering judgment will settle the infringement and dilution claims and thereby relieve the plaintiffs from the uncertainty looming over their fashion business.”

If ELLE really wanted to “un-ring the bell,” or “break the wrist and walk away” from its previous allegations regarding Elle Sasson’s allegedly infringing and diluting use, ELLE needed to moot the district court dispute over the questioned use by unequivocally removing the threat of suit based on Elle Sasson’s current conduct.

Stay tuned for ELLE Magazine’s next move, we’ll see whether it counterclaims for trademark infringement and dilution, or whether it is able to work something out with Ms. Sasson.

Apple’s Quest for the “Ownable” Mark

Posted in Articles, Marketing, Social Networking, Squirrelly Thoughts, Technology, Trademarks

No company’s branding strategy is studied more meticulously than Apple, Inc.’s — and of late, Apple has taken a turn for the descriptive with its various operating systems.

Every company wants its brands to be distinctive — and the arbitrary APPLE mark is among the most well-known. But its new operating system naming strategy has relied on descriptive (if not generic) wording.

From a naming standpoint, everything started out well with the Macintosh Operating System — or Mac OS (first coined in 1996) for its various desktop and portable computers, Macintosh and “Mac” already being famous trademarks. Then, when iPhone OS became “iOS” in 2010, it took the “iDevice” naming convention from the iMac, iBook, iPod, iPhone, and iPad and brought it to software. But Apple didn’t use this name without conflict — in fact, it licenses the iOS trademark from Cisco.

From there, Apple has continued to enter new markets — including smartwatches (with the Apple Watch) and set-top streaming devices (with the Apple TV). With them, new operating systems followed, this time named simply “watchOS” and “tvOS.”

Screen Shot 2016-04-22 at 7.25.35 AM

Perhaps these descriptive names were intended to ward off conflict with any other Silicon Valley brand owners, but Apple has put a different spin on this in public. Phil Schiller, senior vice president of worldwide marketing at Apple, said the following in a Q&A last year (bolding added for emphasis):

Gruber: watchOS, with a lower-case “w”. Are you trying to kill me?


Schiller: [laughs] It’s, um… I think it works really well. I think it’s nice, it’s ownable, it’s special

I think, you’ll see. Give us time, we’ve been through many fun naming things. This is an easy one. There have been many fun naming things through the years — some very emotional, some very easy — and most of the time, when all’s said and done, you look back years later, people say “Yeah, you guys were right, it all made sense together.”

So I think we’re doing the right thing.

It’s not clear whether Schiller is referring to the use of a lower-case first letter or the entire mark, but the question still stands: is “watchOS” truly an ownable mark? No, or at least not yet.

Apple has a Supplemental Register registration for WATCHOS, which is the “junior” register for marks that are capable of trademark significance, but are merely descriptive at the time of registration. Apple’s also filed two pending applications for the same mark on the Principal Register (in classes 9 and 42), but each just received office actions earlier this week refusing registration on grounds of mere descriptiveness.

It’s clear WATCH OS is descriptive wording — it’s arguably even generic in the context of smartwatch operating systems. To overcome these refusals, Apple would either need to settle for the Supplemental Register again or prove to the Trademark Office that, just a year since its first use, “WATCHOS” has acquired secondary meaning as a brand name to the public.

Apple, in short, has yet to really prove that watchOS is truly “ownable.” We’ll see if Apple is able to put its enormous weight and brand equity behind WATCHOS and obtain Principal Register registrations. For the rest of us, it’s important to remember what’s ownable is not necessarily available, and what’s available is not necessarily ownable.


Adblock, Generic for Ad Blocking?

Posted in Almost Advice, Branding, Genericide, Infringement, Mixed Bag of Nuts, SoapBox

AdBlock Plus doesn’t seem to think so. Though they apparently also do think so (more on that below). Adblock Plus was successful in registering the ADBLOCK PLUS mark. Now they’re using that registration to issue take down notices to people using Adblock in their name. That left me scratching my head. It all sounds rather generic to me. Of course, many people will just acquiesce because, really, Adblock? It’s probably cheaper to rebrand to Ad Blocker Ultimate from AdBlock Ultimate, as the people who were issued the take down notice in the story linked above did. Court and petitions to cancel a mark take time. I’m not sure why Adblock Plus doesn’t spend 30 minutes brainstorming something a little more creative. I’m sure it will cost them a whole lot of money to try to create any real trademark rights here. My gut tells me AdBlocker Ultimate would have been successful if they had decided it was worth it to fight.

If this was likely to cause confusion:

AdBlock Ultimateis this sufficient to avoid confusion:

Ad Blocker Ultimate

That got me wondering how much generic use of “ad block,” “adblock,” “adblocking,” and similar combinations were out there. Guess what, there is quite a bit. I even came across this interview with the communications and operations manager at Adblock Plus from a couple of weeks ago. Not only is the topic of conversation “the future of ad blocking,” but he actually refers to their product as “an ad blocker” around the 1:40 mark. If you’re still listening after that, a little after the 2:00 mark he says there are “about 200 other ad blockers out there.” It sounds to me as though he thinks “ad blocker” is the generic term for the product they offer. I actually stopped paying attention to how many times he uses “ad blocker” and “ad blocking.”

Oh, and guess what? Not only are they “a free ad blocker . . . that blocks ALL annoying ads . . . ” it’s also “the most popular ad blocker ever” according to their product page on Google Chrome.

Adblock blocks ads

If you happen to be their trademark lawyer, you may want to give them a call. You may also want to have them spend 30 minutes brainstorming an alternative generic term for their product if they hope to keep those trademark rights.

I’ll be checking up on this from time to time. I figure that at some point there will be someone else with enough interest in using the term adblock, or just upset enough that they are being told not to use the term, that we may see a petition to cancel. After all, there are 200 some ad blockers out there according Adblock Plus. If not, I’d be curious to know what alternative generic term they get to stick. Anybody have a good one?




Yet Another Trademark Based on My?

Posted in Advertising, Articles, Branding, Marketing, Trademarks

MYMellowYellowLove the new bold look of the Mello Yello can, and it’s hard to miss the prominent abbreviation to MY, along with the trademark assertion: This is My World.

Actually, as we have written before, there are more than a few operating within the world of MY, and that’s not limited to our writing about pillows and other such talk.

Yet, it looks like Coca-Cola was able to secure the stylized depiction of the MY abbreviation as a trademark for soft drinks, and the federal registration should issue any day now:

MYmelloyelloMy questions: Why no standard character trademark application for just the word MY too, or is Coca-Cola trying to avoid conflict with another MY in their soda space with a different style?

And, for our marketing types: Would you promote MY as an acronym or initialism, if you were Coca-Cola? And, would you eventually shed or diminish the originating words Mello Yello?

Seems to be a mixed message here: Coca-Cola appears to describe its mark as an initialism to the USPTO with “the letters ‘M’ and ‘Y’ in a stacked, stylized form,” but the message to consumers shown above in the billboard ad appears to invite seeing and reading the letters as an acronym and the word MY, meaning “of or belonging to” the speaker or writer.

Uber: Confusing the steering wheel for the car.

Posted in Advertising, Branding, Guest Bloggers, Marketing

-Randall Hull, The Br@nd Ranch®

There is an old branding adage: A logo is no more a brand than a steering wheel is a car. Yes, both are important components, but they are not the thing itself.

So, when I heard Uber, the ride-hailing service, was “rebranding” earlier this year I thought they would invest in the experience of interacting with and using their service. But it seems they left that in the trunk.

Their “rebranding” effort was driven by an in-house team with Uber co-founder and CEO Travis Kalanick personally steering the redesign. He attempted to explain the new look in a blog post justifying the months spent on researching local cultures, scenery and architecture in an effort to develop different pallets to decorate around the app. The company even created an Uber Brand Experience web site.

The response has been quite negative, as noted here, including criticism of the CEO for expending a significant amount of time on a corporate identity exercise — more than two-and-a-half years according to Wired Magazine. (http://www.wired.com/2016/02/the-inside-story-behind-ubers-colorful-redesign/)

Here is the before and after:


Say what you will about the elements of the new look, a design critique is not my point here. My point is this — let’s not confuse corporate identity systems or redesigns or “realignments” — or whatever a company decides to call the exercise — with branding, or rebranding, as in this case.

That is not branding.

As Marty Neumeier said in his excellent book The Brand Gap, “A brand is a person’s gut feeling about a product, service, or company…It’s a PERSON’S GUT FEELING, because in the end the brand is defined by individuals, not by companies, markets, or the so-called general public. Each person creates his or her own version of it.” Your brand is the aggregate of every experience your customers have with your product, service or company. That is where the rubber meets the road.

Amazon founder, Jeff Bezos, was quoted as saying: “Your brand is what people say about you when you are not in the room.” This is in sync with Neumeier’s statement “A brand is not what YOU say it is. It’s what THEY say it is.”

And what is the foundation of a brand? Trust. Trust should always be the goal. No product, service or company will ever succeed at communicating value — fundamental to a successful brand — without establishing trust first. Neumeier succinctly states, “Trust comes from meeting and beating customer expectations.”

No amount of “tailored colors and patterns, illustrations, and photos” from an internal team, even with the most clever designers or CEO at the wheel, will achieve this. The Uber brand was created and will continue to be redefined by its customers’ trust in the organization based on their experiences. And, these experiences are determined by every interaction with Uber, its employees, and, most of all, its drivers.

This is where Uber swerved. They were distracted by the sparkly hubcaps of a new corporate identity and took their eye off their customers’ experience. It would have been a far better investment in their brand to have pointed their high beams at the litany of incidents and complaints from drivers and customers rather than a multi-year ‘reupholstering’ project.

Examples of the problems can be found here, here, here, and here.

This doesn’t signal the end of the road for Uber, but it is a substantial s-turn they will have to negotiate. Do that and Uber will be steering in the right direction. Then a trustworthy brand will follow without a trailer hitch.