Collaborations in Creativity & the Law

A Disclaimer for Disclaimers at the USPTO

Posted in Goodwill, Loss of Rights, Trademarks, USPTO

You know that feeling when you’ve nearly crossed the finish line? You have done the work, put in the time, and the only step left is to run through the tape.

There can be similar moments with trademark applications, too. Admittedly, it may not be as exciting for other people, but I certainly enjoy it. But one situation frequently arises where there is just one small thing to take care of. The attorney (or owner) will get a call or an e-mail from the Examining Attorney with a brief introduction and then, “Everything appears to be in order with the application, we just need you to enter a disclaimer of the term _______.”

That’s it! Just need to say “Okay” and your mark will be published and, if no third-party objects, you’re on the fast track to having a shiny new trademark registration.

After successfully navigating the application process, you may just want to say “Okay” so you can finally run through that tape. But before you do, make sure you understand the fine print.

Under Section 6 of the Lanham Act, the Trademark Office may require a disclaimer of any “unregistrable component” of an otherwise registrable mark. The disclaimer will appear on the Certificate of Registration. For example, if you’ve registered the mark BOONDOGGLE RESTAURANT for restaurant services, disclaiming RESTAURANT, the Certificate will state “No claim is made to the exclusive right to use ‘RESTAURANT’, apart from the mark as shown.” As a result, the owner makes a statement of public record that this portion of the mark is merely descriptive.

This can make it difficult to enforce rights in trademark against third-party marks who share that disclaimed term. If you attempt to enforce your trademark against a third-party, they’ll be able to quickly determine if you have disclaimed any portion of the mark. If you have, that may provide the third-party with a reasonable basis to kindly ask that you check the sturdiness of that sand over there.

While it is not impossible, there must be some other element of the mark that is similar to your mark. For example, Purina Dog Food (owned by Nestle S.A.)  successfully opposed registration of the mark WAGGIN’ STRIPS (disclaiming STRIPS) based upon their prior rights in the mark BEGGIN’ STRIPS (disclaiming STRIPS). In addition to sharing the disclaimed term STRIPS, the marks also shared a similar structure and similar sound and therefore the Board found a likelihood of confusion. (decision available here).

Disclaimer practice makes sense for our Boondoggle Restaurant. The term RESTAURANT has no source identifying function in relation to restaurant services; it is generic. In these situations, agreeing to the disclaimer is a simple and easy .

However, disclaimers are also required for descriptive terms. And, as we’ve discussed, there is a fine line dividing descriptive wording from suggestive wording. The determination is also very subjective. While a term may be descriptive to one Examining Attorney, a different Examining Attorney might consider the term suggestive without a second thought. Like all people, Examining Attorneys are not infallible. The Examining Attorney might misunderstand your goods or services, could be having an off day, or maybe they have a heightened opinion of what qualifies as a descriptive term. Regardless, once you enter that disclaimer, it is there in the public record and can’t be swept under the rug.

Accordingly, the next time you receive a disclaimer request, take a second before you run through the tape. Ask yourself whether the term really is descriptive. Would you be comfortable with your competitors using the term? Why did you choose it? Is there a reasonable basis to assert that the term is suggestive?

Rather than take the easy way out, it may be worthwhile to invest in the time to prepare a response to the office action, arguing against the disclaimer. While it may add some extra cost on the front end, failing to explore this option can harm the strength of your trademark, which you may regret down the road.

Blurred Rights

Posted in Audio, Copyrights, Infringement, Law Suits, Mixed Bag of Nuts

You may, like me and hundreds of others, have had the “Blurred Lines” verses: “I know you want it, You’re a good girl, You’re far from plastic, Talk about getting blasted, I hate these blurred lines,” stuck in your head. And, who could forget the new word “twerk” with Robin Thicke’s performance with Miley Cyrus at the award show.

thickecyrusThis song is at the heart of a lawsuit brought by Robin Thicke and songwriter Pharrell Williams against Marvin Gaye’s children. Pharrell and Thicke wanted a court to declare that they had not infringed on the Gaye children’s copyright for the written music. The jury disagreed, returning a verdict awarding Gaye’s children $7.36 million in damages based on their rights in “Got to Give it Up.”

The Gaye children have filed an injunction to prevent future sales unless they attribute the writing to their father and provide them with compensation. In turn, Pharrell Williams and Robin Thicke want to file post-trial motions and possible appeals. The jury declined, however, to find Thicke and his ex-wife had infringed on the Gaye’s children’s copyright with their song “After the Dance.”

Only time will tell if Robin Thicke and Pharrell Williams can twerk their way out of the jury’s copyright infringement ruling.

Is the TTAB falling?

Posted in Almost Advice

A commonly used forum to resolve trademark registration issues, which also commonly resulted in negotiated settlements over the use of mark, may no longer be so common. Today, the United States Supreme Court issued its heavily anticipated opinion in the B&B Hardware v. Hargis Industries case, which involved the issue of whether TTAB decisions on likelihood of confusion should have preclusive effect on a subsequent district court action. The Supreme Court held that a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion were met. Issue preclusion was not limited to those situations in which the same issue was before two courts. Rather, where a single issue was before a court and an administrative agency, preclusion also often applied. The 8th Circuit’s primary objection to issue preclusion was that the TTAB considered different factors. However, the Court held that the same likelihood of confusion standard applied to both registration and infringement. It did not matter that registration and infringement were governed by different statutory provisions. Neither did it matter that that TTAB and the 8th Circuit used different factors to assess likelihood of confusion. The Supreme Court found that the factors were not fundamentally different. Likelihood of confusion for purposes of registration was the same standard as likelihood of confusion for purposes of infringement. However, the Supreme Court also found that if the TTAB did not consider the marketplace usage of the parties’ marks, the TTAB decision would have no preclusive effect in a later suit where actual usage in the marketplace was the main issue.

The practical effect of this decision is that it will likely increase the burden on the district court docket. The TTAB has held on several occasions that because certain presumptions apply to unrestricted registrations, the marketplace reality given little, if any, probative value in the Board’s analysis of the likelihood of confusion. Accordingly, if a plaintiff’s case is stronger with the presumptions, it will begin the action at the TTAB. If the marketplace reality benefits the plaintiff, it will begin the action in district court. Likewise, if a defendant believes the marketplace reality benefits its defense, it will seek to suspend the TTAB proceeding instituted by the plaintiff in favor of a district court action.

Before instituting a cause of action against another party, trademark owners will have to engage in some pre-litigation planning to position the case in the most beneficial forum.

The Big Dance Around Trademark Madness

Posted in Advertising, Famous Marks, Guest Bloggers, Infringement, Marketing, Sight, Social Media, Social Networking, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

Last week, the Chicago Sun Times profiled Loeb & Loeb attorney Douglas Masters, the NCAA’s outside counsel in charge of trademark enforcement during March Madness. Licensing the official sponsorships is big business, and enforcement demands require Masters to send out hundreds of cease-and-desist letters to both accidental infringers and sneaky businesses trying to skirt around expensive trademark licenses. No doubt some of the enforcement demands are probably questionable – just like Steve noted during the Super Bowl, it’s fair to wonder if it’s really necessary to invent code words to invite customers to watch March Madness games with you. Some do:

1marchbballtournamentAnd some don’t:

2blockpartyWhere the choice gets more interesting is where an official sponsor and a direct competitor overlap in their desire to capture audience attention during March Madness. Official sponsors pay the NCAA a pretty penny for a piece of the Madness while competitors attempt to dance around the “official” marks. Based on Twitter posts, can you pick out the official sponsors versus their competitors in the categories below?

Mobile Phone Service

3att 4verizon

Online Search

5google 6bing

Luxury Cars

7lexus 8infiniti

Fast Food

9burgerking 10mcdonalds


11allstate 12libertymutual

Rental Cars

13hertz 14enterprise

Home Improvement Stores

15homedepot 16lowes

Domestic Cars

17chrysler 18buick


19lg 20vizio

Did anything about these posts tip you off? Want to know how you did? Here is a list of official sponsors, for those interested in keeping score:


Marketers, what do you think of the Twitter posts? Which posts were the most creative? If you were an official sponsor, would you be more direct about your sponsorship? Without looking on Twitter, any guess as to what other March event some competitors chose to officially sponsor instead?

Trademark attorneys, would you think about sending any of these competitors a cease-and-desist letter?

Actually Resisting the Temptation to Tout Function and Hopefully Own a Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Non-Traditional Trademarks, Patents, Product Configurations, Product Packaging, Sight, Technology, Trademarks, TTAB, USPTO

Continuing our ramp up toward the launch of our Strategies for Owning Your Product Designs webinar next week, I’ve been thinking a lot about the Morton-Norwich factors — the common analysis for determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public domain (i.e., free for anyone to copy):

  1. the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  2. advertising by the applicant that touts the utilitarian advantages of the design;
  3. facts pertaining to the availability of alternative designs; and
  4. facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

TMEP 1202.02(a)(v); In re Becton, Dickinson & Co., 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982).

Today, I’ll limit my comments to the first two factors. If you want more on the third and fourth factors, go ahead and click the links to the TMEP discussions on those points.

Just last week, our friend John Welch over at the TTABlog, shared some thoughtful insights about the first Morton-Norwich factor, relating to trademark functionality determinations when evidence of utility patents are involved. Bottom line, when they are, it is not impossible, but a tough road ahead, given what the Supreme Court has said about the functionality doctrine:

“The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. Sections 154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).”

Qualitex Co. v. Jacobson Prods Co., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995).

Our marketing and public relations friends would do well to focus on the second Morton-Norwich factor, because when this evidence exists, good luck convincing the USPTO that it shouldn’t be the death knell to the assertion of exclusive rights in a non-traditional trademark. But, what if such evidence does not exist, shouldn’t that help to disprove functionality?

We are currently handling a product design trademark appeal at the TTAB, and you might be interested to know that the Examining Attorney who issued the registration refusal seems to believe that marketers don’t fall into the trap of touting utilitarian advantages any longer:

“Given the long-standing existence of this Morton-Norwich factor, and any competent trademark attorney’s knowledge of it, it would be surprising to actually find such advertising in this day and age.” (emphasis added)

As you can sense, the Examining Attorney wasn’t impressed by our point that the Applicant has no such advertising — but, should each factor only be relevant if it supports a functionality finding? We think not, each of the doors (factors) should swing both ways.

Actually, we recognize that there are more than a few marketing types out there (especially those who aim to please their engineering colleagues) who have not yet mastered our teaching on this subject over the past six years:

Do you actually think that it would be surprising to find such advertising in this day and age?

If not, does it actually follow that the advertiser’s trademark counsel is not competent? Or, might it suggest they actually aren’t communicating together in harmony?

The Lazarus Award

Posted in Branding

LazarusIt’s the end of March which can mean only one thing:  March Madness!  For many sports fans, this is easily the “most wonderful time of the year” –Christmas, Halloween, New Year’s, Thanksgiving, Fourth of July–all rolled into one.  There’s drama that doesn’t involve an intoxicated relative, excitement superior to detonating small, legal explosives, and gratefulness that often exceeds the feigned appreciation for a large and overly indulgent meal.  March Madness, like many annual or other periodic events (think Olympics) is also a time of revival.  Personalities that have slipped from our collective consciousness suddenly find new life as advertising personalities, guest stars, or documentary subjects.

This March Madness, I’m giving my first inauguaral Lazarus award to the one, the only, Christian Laettner.  Laettner’s primary–if not only–claim to fame is The Shot.  (Video here.)  After the shot, Laettner went on to a marginally successful NBA career, while racking up a good deal of “badwill” along the way.  (My favorite is the “loser…, loser…., winner” story).  Since the late 90’s, Laettner has been largely an after thought (or a “no thought”) in an otherwise saturated sports media marketplace.

But all that has changed in 2015.  For reasons still not apparent (perhaps he needs the cash), Laettner is making a public resurgence.  First, there was the ESPN Films 30 for 30: I Hate Christian Laettner, which, despite its title, actually engenders some respect or at least understanding for one of sports’ most famous villains.  Then there are the dryly hilarious “AT&T March Madness Legends” commercials starring Laettner, Shaquille O’Neal, Dr. J, and Clyde Drexler, all of which make Laettner appear funny and likable (which he may very well be).  This exposure seems to have Laettner’s stock rising.

March Madness is an opportunity for upsets, Cinderella stories, and unexpected surprises.  From a branding perspective, I think Christian Laettner has satisfied all three this March Madness season.  So congratulations to Christian Laettner on this momentous award!

March Madness For INNOVATION

Posted in Advertising, Branding, Food, Marketing, Trademark Bullying, Trademarks

Following a nice evening out chatting with Kevin O’Keefe, it’s time for my favorite weekend of all – the NCAA tournament.

Now this post isn’t necessarily about basketball, but rather rivalries. In particular, rivalries between the state of Michigan and the state of North Carolina. Michigan v Duke, Michigan State v. North Carolina…there’s plenty of rivalry there.

Within the last week, Michigan-based brewery Bell’s Brewery, which brews one of my favorite transported ales – the Bell’s Two Hearted Ale, has challenged the name of North Carolina-based brewery Innovation Brewing, which brews about 500 barrels a year.

Anything striking a chord for trademark issues yet?  Any idea why Bell’s might be challenging a company like Innovation Brewing?

Well because, unbeknownst to me likely because I have only ever purchased Bell’s off of a tap menu, apparently Bell’s has an unregistered tagline “bottling innovation since 1985″ – a tagline that I couldn’t find use of in a very cursory search of its websites and labels.

Bell’s has faced some considerable consumer scrutiny over this challenge, even being labeled a trademark “bully.”  North Carolina loyalists are pretty upset that Michigan-based Bell’s would challenge this.

What do you think?  Is it madness? Do you have any innovative strategies to combat this issue?

No opinion on this?  Well, who do you have winning it all for the NCAA basketball tournament?




Yea or Neigh: Does “walmart.horse” Dilute the WALMART mark?

Posted in Advertising, Branding, Copyrights, Dilution, Fair Use, Famous Marks, Food, Infringement, Social Media, Squirrelly Thoughts, Trademarks

For every serious-minded, informative website out there (I submit for your consideration this august blog) there are countless others that lean more towards the absurd. The website “walmart.horse” is squarely in the latter column. But can something so lighthearted also constitute trademark infringement?

According to Ars Technica, a cartoonist named Jeph Jacques (author of the webcomic Questionable Content) decided to register the website walmart.horse in February 2015. The site is essentially the most basic of Tumblr blogs, and “does what it says on the tin”: you get a picture of a horse layered atop a Walmart storefront, and not much else. Jacques says he registered the domain name along with a variety of other “ridiculous” domain names.


If a website address ending in “.horse” sounds about as plausible as a 555- telephone number, worry not: “.horse” is among a laundry list of new “top-level domains” that have recently been rolled out to supplement the traditional .com, .org, and .net top-level domains (known as the original “generic” top-level domains, or gTLDs).

Jacques styles the website as “postmodern Dadaism.” We’ll be fine with calling it “goofy.” And the long reign of the enigmatic twitter handle “horse ebooks“ suggests there’s something undeniably entertaining about an equine non sequitur. But Wal-Mart Stores, Inc. has styled the website as something else – infringement upon its WALMART trademark.

Wal-Mart purportedly sent a rather generic demand letter to Jacques, which Jacques posted on his own website. The letter utilizes the proverbial kitchen sink of trademark infringement: Wal-Mart claims that walmart.horse “suggests Walmart’s sponsorship or endorsement of your website” and “constitutes trademark infringement and dilution of Walmart’s trademark rights and unfair competition.”

It seems Walmart’s case with respect to confusion as to “sponsorship or endorsement” — a traditional trademark infringement standard under the Lanham Act — is rather weak. Would consumers attribute this website to an avant garde Walmart ad campaign? Possibly, but not “likely,” in my view. And Walmart doesn’t put a great deal of emphasis on this approach either — the letter focuses primarily on “dilution.”

But what is “dilution”? According to the Federal Trademark Dilution Act:

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

Owners of well-known marks typically turn to dilution where a purported infringer is using a similar mark, but only for unrelated or disparate goods and services. A dilution claim gives famous brand owners a longer reach than they might otherwise have under a traditional “likelihood of confusion” infringement analysis.

Under “dilution by blurring,” the owners of well-known marks typically turn to dilution where a third party is using a mark for goods or services that may be completely different or unrelated to the famous mark’s associated goods and services. Under “dilution by tarnishment,” the third party associates the famous mark with inappropriate or unflattering subject matter.

Walmart’s demand letter accuses Jacques of both forms of dilution: walmart.horse “weakens the ability of the Walmart mark and domain name to identify a single source” and “tarnishes the goodwill and reputation of Walmart’s products, services, and trademarks.

But note the language of the statute: dilution only occurs when the purportedly dilutive mark is used in commerce, which generally refers to the sale of goods and services.

So what is walmart.horse selling? Well, nothing. Some cases have blurred the edges of this definition, but it’s tough sledding to say that Jacques is using a mark “in commerce” and thereby diluting the WALMART mark. And Jacques’ stated intent is to display the site for its own sake as an “obvious parody.” He is also wise enough to utilize public domain images to avoid any copyright infringement concerns. This is indeed parody — or, if you’re feeling adventurous, an art piece. It likely qualifies as nominative fair use, particularly given its noncommercial purpose.

The walmart.horse saga also provides a lesson on the utility of the “form” demand letter, like Walmart’s. While a boilerplate infringement letter does the job in some cases, they can backfire. Artists and creatives are often armed with experience in the bounds of trademark and copyright law. And web-savvy parties may elect to post the form letter online, taking the grievance directly to the court of public opinion. That’s what Jacques did, and the press (armed to the hilt with horse puns) has roundly sided with him. This may be thanks to his creative response to Walmart’s letter, which contained this parting shot:

If you have any requests for other animals you would like to see added to the image on the website, I would happily comply!

We’ll see if Walmart takes up the offer.

Forget Millennials: The real test market for Big Data monetization is Gen Z

Posted in Branding, Guest Bloggers, Marketing, Mixed Bag of Nuts, Technology

- Jason Voiovich, Vice President, Marketing, Logic PD

We trade data for access all the time.

Facebook, LinkedIn, Google – you name it, if you use these free services, you are explicitly granting them permission to aggregate and disaggregate your data at will. Sure, there are “privacy” settings, but few people actually actively manage them.   In essence, we are in an economic exchange in which we trade items of value (our data for the use of a service) largely unconsciously.

But it’s not working.

Today, most organizations are simply wasting their time with “Big Data”. No one is monetizing data effectively because their engagement models rely on passive and uneducated consumers.

That must stop.

In order for us to move beyond this arrangement and truly monetize Big Data, we need to transition to conscious models of economic trade at the consumer level.   Consumers simply aren’t savvy economic participants in the equation, and that ignorance is preventing wider progress.

International mobile carrier Telefonica might just have an answer. And it will start with our kids.

At the recent Mobile World Congress, Telefonica explained that they’ve noticed something interesting in the behavior of “Generation Z” (of which my two sons are members). The real cost of the connected world for these consumers isn’t the hardware, which is increasingly becoming a leased commodity, but rather the cost of the data each month. Gen Z’ers live in perpetual fear of running over the data limits on their phone plans. And when they do, the costs jump tremendously; putting them in a real bind either with their parents (if they’re under age) or with their own limited budgets (they’re all under 25, depending on how you measure).

In this case, necessity could be the mother of monetization.

The proposition is pretty simple: What if we were willing to trade brand engagement for additional data. In practical terms, that could mean relief on a data plan restriction for a certain amount of interaction with a sponsoring brand. Think of it as a new ad model. Instead of showing a banner ad (no matter how well targeted it may be), a retailer could incentivize a mobile shopper (who are disproportionately Gen Z) by giving them free data for the next 5 minutes in exchange for continuing to shop, or 30 minutes after a successful purchase.

When you think about it, it makes sense.

This “advertising model” is a much more tangible and conscious exchange of value than the use of “free” services, “paying for eyeballs” with easily-ignored banner advertising, or irritating advertising interrupters in front of desired content.

We’re not there yet, and we don’t fully understand all of the privacy and intellectual property considerations, but we need to aggressively test new data monetization models that deliver what I call conscious value. It’s not only good for engagement with a brand, but it is just as important for increasing engagement with the data, training a new generation of savvy, informed consumers who value (and can receive value) for their data assets.

In a few years, we will all need to learn these skills from our Gen Z colleagues.

Strategies for Owning Your Product Designs

Posted in Mixed Bag of Nuts

We are putting together a pretty special webinar you might want to consider experiencing: Strategies for Owning Product Designs. The live version will be aired Tuesday March 31st at 3 PM CST, sponsored by Minnesota Continuing Legal Education.

I’ll be joined by legendary designer Bob Worrell, founder of the Worrell design firm, Derek Mathers, Worrell’s business development manager (and guest blogger on Duets), and my partner Jeff Stone at Winthrop & Weinstine (another Duets guest blogger) who has shared his thoughts about the power of design patents before, herehere and here.

I’m looking forward to sharing some thoughts and strategies about how to own product designs forever, long after design patent protection expires, so we’ll be talking about the key role that marketing types play in realizing the goal of owning product design and trade dress: Calling Non-Traditional Trademarks By Name.

This promises to be a lively 90 minute discussion, to sign up, here is the link, we hope to have you join us in a couple weeks.