Collaborations in Creativity & the Law

The House That Solitude Built

Posted in Agreements, Trademarks

Ever tried to search for directions on your so-called “smart” phone by the name of your intended destination?   What if it directed you to the museum you searched, but unwittingly not the museum you intended to visit…in the same area?  As if there were not enough things to be afraid of in New Jersey like Snookis or bridge closures, that could very well happen to you in the borough of High Bridge.

This is the historic Solitude House in High Bridge, New Jersey.


This is also a historic house in Hampton, New Jersey referred to as Solitude House and operated by Union Forge Heritage Association (“UFHA”).  UFHA owns a federal trademark registration for SOLITUDE HOUSE MUSEUM for “museums.”  Their Facebook page identifies the house as Solitude Heritage Museum.  More on that page in a minute.

As I probably don’t have to tell you, they are not the same house.

Hampton, NJ and High Bridge, NJ are 4.9 miles apart.

The borough filed a trademark application for SOLITUDE HOUSE for services listed as “historic house and museum” claiming a first use date of December 31, 1776. I’m guessing that it wasn’t offering services as a historic house and as a museum as of that first use date, December 31, 1776, nor was it a use in interstate commerce since that requirement comes from the Commerce Clause in the Constitution, which was not ratified in New Jersey until 1787. But I digress.

Prior to filing the application, the borough petitioned to cancel UFHA’s registration through the Trademark Trial & Appeal Board on what appears to be a likelihood of confusion claim and possibly a void ab initio claim regarding UFHA’s right to register the mark, although not plead as such.

Apparently UFHA leased the Solitude House for High Bridge (the first one up there) and operated it as a museum, but their leasing deal ended in 2012 and an agreement to renew was not reached. If the lease agreement did not address ownership rights in any trademarks related to the property, generally the tenant would have all rights in a mark that they created and indicated the tenant as the source of the services. So there’s a tip here to make sure that even lease agreements properly establish ownership of trademark rights.

Back to the Facebook page, UFHA posted the following:


“There has not been a Solitude House Museum before or since” – that language implies that they have abandoned the trademark without intention to resume use, which would result in cancellation of the mark.

So, what can you take away from the Solitude House trademark issue? If you are working on a lease where naming rights of a property may ever be an issue, or there’s a name already associated with the property, you should consider adding trademark language to the lease agreement providing for which party would own the trademark. If you’re not working on a lease, this issue might give you some pause about doing a clearance search with an attorney before using a mark. And at the very least the Solitude House might make you consider searching by address and writing down your directions so there’s no chance of “re-routing” you to the wrong place.

Honey Badger Don’t Care, but the Owner of the Trademark Rights Do Care.

Posted in Articles, Branding, Food, Infringement, Law Suits, Mixed Bag of Nuts, Social Media, Trademarks, USPTO

We truly live in an amazing time, where nearly any person with access to a computer can obtain a nearly infinite amount of knowledge, create and distribute ideas and works of art to the entire world. Also, there are lots of cat videos and angry rants.

YouTube is perhaps the most well-known and effective means of sharing content with the world. According to YouTube, there are more than 1 billion unique monthly users watching over 6 billion hours of video per month. Every minute, 100 hours are uploaded to YouTube.

In spite of the sheer size of competition, some videos just have that special something that causes them to go viral. Examples include David After Dentist, Charlie Bit My Finger!, and of course, the Honey Badger (slightly NSFW due to some occasional mild language):

In case you’ve never seen the video (and your employer blocks access to YouTube – smart for productivity, bad for morale…), the video consists of a clip from a nature documentary regarding the honey badger. The appeal of the video is the narrator, “Randall,” a character who is sarcastic, snarky, excitable  – basically, the complete opposite of what you would expect from a nature documentary narrator: calm demeanor, scientific knowledge, and a British accent.

Although the honey badger don’t care about a lot of things, be they bee stings or cobra venom, the creator of the video (Christopher Gordon) does care about at least one thing: trademark infringement. Gordon saw the success of the video and wisely sought to monetize it. He created an online store and registered his HONEY BADGER DON’T CARE mark in connection with clothing, audio books and computer game software, mugs, ornaments and plush dolls, and has a pending application to register the mark in connection with stickers and book series publications.

As with most internet sensations, Gordon isn’t the only person attempting to cash in on the popularity of the video. It’s easy to print a catch phrase on a search and, as a result, a lot of internet companies have been selling “Honey Badger Don’t Care” shirts and products. Gordon has relied on his trademark registrations to send out cease and desist letters and, just recently, filed a lawsuit against online retailers LOL Shirts and Tanga. Although the shirts are still viewable, the sites appear to have taken down the option to sell them.

Although Gordon appears to have had some success in enforcing his rights based upon the goods identified in his registrations, he may also be discovering the limits of his own rights. Gordon sent a cease and desist letter to the company Accoutrements, who sells the Honey Badger breath mints shown below:


Accoutrements responded late last month by filing a declaratory judgment action. Regardless of how many times viewers watch his YouTube videos, trademark rights are still based upon use. Trademark law recognizes that third-parties can use even identical trademarks so long as the goods or services are sufficiently unrelated (think Delta airlines, faucets, and dental insurance). In fact, a handful of third-parties were able to obtain federal registrations for HONEY BADGER-based trademarks for other goods, including: HONEY BADGER for wine and other alcoholic beverages (except beer), HONEY BADGER RACING for decals, HONEYBADGER for signal jammers, and HONEY BADGER for barbecue sauces. Sadly though, the lawyer who applied to register HONEY BADGER AT LAW abandoned his application to register the mark in connection with legal services.

Gordon no doubt feels like he “owns” the Honey Badger Don’t Care catchphrase because these companies and individuals are exploiting the popularity his ‘honey badger’ video. It seems likely that the only reason these companies have chosen the name “honey badger” is because of the widespread success of Gordon’s video. The video vaulted the honey badger into our common consciousness. However, just because a use of a mark may cause consumers to remember another mark used on different goods does not create a likelihood of confusion for trademark infringement purposes. Consequently, Gordon may have success with his lawsuit against the clothing retailers, but he may have more difficulty in the declaratory judgment action with the mint company. To be completely honest , I’m not sure either company is making enough money off these mints and t-shirts to justify anything other than an out-of-court settlement of the claims.

Before selling any products, business owners should conduct a basic knockout clearance search – even if they do not plan to register the mark. This is especially true if they have picked a name or mark based upon a popular internet video or meme. The honey badger lawsuits show that there is a market for licensed goods based at least in-part on popular internet videos. And where there’s a way to make money, there’s a chance that someone already has registered or common law trademark rights. It’s better to conduct some clearance and know any potential concerns before you invest time and money into a product. The last thing you want coming after you is a honey badger, especially a honey badger at law.

Silicon Valley x Fashion District = Blurred Lines

Posted in Advertising, Agreements, Branding, Copyrights, Fashion, Infringement, Marketing, Patents, Product Configurations, Technology, Trademarks

Growing up in the 80s, it’s amazing how both fashion and technology have evolved since Scrunchies and Commodore 64s – although a quite separate evolution. I can’t recall a fashionable pager (really, go try to find one), or a chic mp3 player (I had an Archos Jukebox, look at that brick). That all changed once Apple focused on form as much as function when it released the iPod.

People love fashion because it is an extension or reflection of their personality, and a part of their personal brand. People love tech gadgets because they are also extensions of themselves, allowing people to work more efficiently, connect globally, and learn about themselves and their environment by processing information more quickly. But with the exception of a case for these technological tethers that reflects our personal brand, little has been done to the devices to make these devices “fashionable.”  Sure some corners have been rounded, it might be sleek, and maybe there is a great user interface with some clever icons, but not much else reflects the user’s personality.

With the recent advent of wearable tech, naturally a new opportunity for interweaving design and technology has emerged.  Are they electronic devices or are they jewelry?

This meshing of design and technology hit the runway earlier this month at New York Fashion Week and also with Apple’s introduction of its Apple Watch product.  Several designers over the past year have announced collaborations with tech companies to make new wearable tech gizmos more fashion friendly:

  • Opening Ceremony announced a collaboration with Intel for a bracelet called the MICA (which apparently stands for “My Intelligent Communication Accessory”)
  • Diane von Furstenburg has been experimenting with designs for Google Glass frames
  • Ralph Lauren debuted a smart shirt at tennis’ US Open, held in New York during Fashion Week, which takes biometric data for athletes

For a gadget nerd like me, it’s comforting that the fashion community generally has viewed this as, well, “nerdy” and “dorky.” Good to know that geek thankfully is still not quite chic.  In light of the lucrative design patent wins from Apple and Lululemon’s aggressive assertion of its design patent rights, the fashion industry should be on notice that design patents can help protect their inventive designs against substantially similar ones from their competitors. Where some of these new wearable tech products are collaborations with tech companies, it is critical that these joint development projects have underlying agreements clearly outlining ownership rights in the wearable tech.  When I asked my Magic 8-Ball whether we would be seeing any patent cases involving fashion brands about these wearable tech devices, it said “you may rely on it, yes” and I agree.

So to our branding gurus, there’s clearly a lot of collaboration going on between fashion brands and tech companies, and campaigns to bring public awareness to that collaboration. Do you think the consumer will buy the product because of the fashion brand alone, or will they need some indicia of source of the underlying technology like the Tory Burch / FitBit collaboration? Or, from the other perspective, does wearable tech need a fashion brand with a following to help sell it?

Are you buying wearable tech?


Personal Brand: Beware of what Facebook is doing

Posted in Guest Bloggers, Mixed Bag of Nuts, Social Media, Social Networking, Technology

- Aaron Keller, Managing Principal, Capsule

There was a time, back in the day, when you could just “Google” yourself and that was the best way to assess the value of your personal brand. Simple quantifiable way to see how many mentions you had on Google’s interwebs (the reference is intentional). And, you could dig deeper into each link to see what others were saying about you.

Then, we entered an era of social media and the digital landscape shifted, even for the brilliant minds at Google. Managing your personal reputation now included not allowing old high school friends to upload and tag photos you believed were forgotten in albums (yes, the arcane way of storing embarrassing photos from childhood). And, while Facebook is one of the largest, you also needed to be aware of and perhaps even managing your reputation in LinkedIN, Twitter, Instagram, Vine and perhaps Pinterest (just to get started).

It has become a bit overwhelming so you question, “why should I care?” Well, unless you’re a billionaire and old enough to give a rats asterisk about your reputation in the digital universe, it matters (think owner of LA basketball team). It matters because your reputation helps get you a job, income and food on the table. It matters because you can spend decades being true to your values and then find someone has attached something false to your name. Decades of living by certain standards can be undone in a simple mention in the digital universe.

Then the small things, people and brands who sit facing backwards on your coattails and use your reputation to build their own brand. This can be as simple as a person referencing how well they know you in order to get a job with an ex-colleague of yours. And, it can apparently show up in the world of social media. Here’s a recent example brought to my attention by a gentleman (Scott Petinga) considering a class action suit against a gigantic brand in social media.

Are you sure you LIKE something? When you see someone’s name come up (see the image below) as Liking a particular brand, it may surprise you that they may NOT have actually clicked LIKE as it clearly indicates. I was first made aware of this tricky method by Facebook by Scott Petinga. So, I started to look for it and asked my wife if she found brands claiming I LIKED them, but seemed a bit odd based on her view of my reputation (Personal Brand).

Here’s the first. Cub Foods. I have nothing against Cub Foods, but our firm, helped rebrand Byerly’s, hence I haven’t found a need to LIKE Cub Foods. Certainly not a big ding on my personal brand, but it is a shady method to influence my friends with a false statement. And, it makes me wonder, how many times does my name come up as LIKING something I have not and what other brands is my name attached to in the Facebook universe?

This has led to a request, if you’re a friend of mine on FB, please tell me if you see my name attached to a brand you wouldn’t expect. Send it my way. And, I suggest you do the same in your personal network to see what Facebook is up to with this shady method.

And, if it makes you angry enough, contact Scott Petinga and get yourself on his class action lawsuit.

Thank you for reading and if your reputation is important to you, start looking into this behavior.

(Subway) Eat Flesh, An Effective Parody?

Posted in Articles, Branding, Dilution, Famous Marks, Fashion, First Amendment, Guest Bloggers, Infringement, Law Suits, Trademarks


This past weekend one of my sons said, “Dad, I have a good blog topic for you.” After he explained, it was clear, yes, son you do! So, he sent me the photo to the left. It is one that he recently snapped at a place that sells Halloween costumes.


As an aside, I love it when family members, friends, colleagues, our wonderful guest bloggers, and you dear readers, send potential blog ideas and topics! So, please keep them coming!

Anyway, my son’s photo reminded me of a similar t-shirt and I now remember seeing it worn by some folks during the Minnesota State Fair a few weeks ago. Since I captured no photos at the time, I had forgotten about it until now. As it turns out, you can buy the shirt I saw online.

The Etsy site where it is being sold describes the above shirt to the right this way:

“This t-shirt reads Zombies Eat Flesh and is shaped like a very famous sub logo. This decal measures approximately 11 x 13 inches and is great for all you zombie lovers!”

So, I’m left wondering why hasn’t Subway jumped on this zombie with both boots? After all, we don’t only have a famous mark targeted by this parody, but a very famous mark, thanks Etsy.

And, Subway ought to have some free time on its hands now that the FOOTLONG trademark debacle is behind it, unless it is still working on removing those millions of false TM notices.

Or, perhaps Subway just hasn’t gotten around to Etsy yet, as another online seller has indicated his Eat Fresh parody shirts are: “NO LONGER FOR SALE DUE TO THE MAN.”

I’m thinking that whoever created and is using the stylized ZOMBIES EAT FLESH trademark has zero chance of successfully registering it (no surprise, no application has been filed, to date), I just can’t see the USPTO allowing it, can you?

TTAB cases involving a discussion of parody — in the context of likelihood of confusion – include at least the following:

  • Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that “likelihood of confusion will usually trump any First Amendment concerns”);
  • Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that “parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks”); and
  • Columbia Pictures Indus., Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-shirts, likely to cause confusion, noting that the “right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another”).

As if that isn’t enough, couldn’t you see this well-settled TTAB precedent being relied on by the USPTO during ex parte examination or by the TTAB during an inter partes proceeding?

  • When present, the fame of a mark is “a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods.” Recot , 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that “a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark” and that “the fame of a registered or previously used mark can never support a junior party”); and
  • If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009).

But, if Subway were to actually bring a trademark infringement and/or trademark dilution action in federal district court, would that be a walk in the park with this zombie, or the cemetery?

I’m thinking that the federal district court takes a much closer look at the parody defense and pays more attention to First Amendment concerns. Do you agree that the zombie has a better than zero chance of successfully defending on parody grounds?

If so, doesn’t this example help make the point, again, about the difference between the right to use and the right to register? They aren’t necessarily coextensive rights are they?

Shouldn’t a federal district court who is asked to decide likelihood of confusion and likelihood of dilution — with injunctive relief, damages, and other monetary relief hanging in the balance (instead of just the right to register) – have the authority and obligation to consider these issues fresh, without having its hands tied by a earlier TTAB decision affirming a registration refusal or granting an opposition to register on likelihood of confusion grounds? There is simply more at the stake when the right to use is challenged and monetary relief is sought, it seems to me.

Moreover, I can’t believe that the TTAB wants the pressure of having its decisions also determine liability for trademark infringement and trademark dilution claims in the federal district courts.

So, let’s hope the U.S. Supreme Court gets it right and recognizes the difference between the right to register and the right to use, in the upcoming B & B Hardware case!

Please join me and the renown Bill Barber of the Pirkey Barber firm discuss these important issues at the Midwest IP Institute in Minneapolis on Thursday.

Claims of Copying a Girl’s Best Friend

Posted in Mixed Bag of Nuts

If you thought this would be about diamonds you are wrong. It is about chocolate!

My favorite candy REESE’S Peanut Butter Cup is at the heart of Hershey Co.’s (“Hershey”) recently filed suit against LBB Imports LLC (“LBB”). In other Hershey news, check out Steve Baird’s blog post here. I guess it is not just me because there have been over 7 billion (yes, billion!) in sales of REESE’S products during the last five years. Hershey has design trademarks for the well-known orange-colored background covering the entirety of the packaging for candy and chips for baking with peanut butter. (See Us. Reg. No. 2,256,226), as well as for the shaping of the candy (U.S. Reg. Nos. 4,082,233 and 3,492,642).

Hershey alleges that LBB’s TOFFEE CRISP products infringed its trademark, constituted false designation of origin and unfair competition, and trademark dilution. What do you think?

Hershey is also suing LBB for additional products too. They include: YORKIE (alleged to infringe on the YORK® trademark), MALTESERS (alleged to infringe on the MALSTER® trademark), CADBURY (alleged to infringe on CADBURY®), and KIT KAT (alleged to infringe on KITKAT® trademark and trade dress).

The CADBURY egg has been around since 1855 and Hershey owns the exclusive license to use the famous registered mark in the United States. LBB is alleged to also be selling a product with the name Cadbury.

Finally, there are allegations of copyright infringement and unfair competition related to the kid favorite KitKat®. What do you think?

We will have to wait and see if Hershey prevails in the chocolate wars.


To speak or not to speak about a data breach

Posted in Almost Advice

I recently posted about some companies making the decision to not announce when a data security breach has occurred, or at least they would think twice before announcing. According to a couple crisis communication experts, that delay in announcing could harm the business in more ways than just increasing the chance of legal liability.

In connection with the latest data breach involving Dairy Queen, Jon Austin, a crisis communications specialist, opined that remaining silent about a breach is the wrong approach. Austin said that a mishandled response to a data breach can have a corrosive effect on the relationship with customers.

Even if the data breach incident is not fatal, the message you want to send as a business to your customers is that you will protect them. Afterall, the customers trusted the business with their information and honored the business with his/her patronage, so the business should step up and make sure the customer is taken care of. Jim Lukaszewski, a crisis consultant, and frequent guest blogger here, said a data breach incident is an opportunity to strengthen relationships with customers.

Given the fallout that can occur from a data breach incident, companies should have a prepared plan for a data breach. A written information security plan will help maintain order when the disorder of a data breach occurs. Companies should also train their employees on data security and periodically run through a data breach response drill so that the business is prepared in the event an incident occurs.

A Powerful New Trademark for Apple?

Posted in Non-Traditional Trademarks, Product Configurations, Trademarks, USPTO

All eyes were on Apple on Tuesday, September 9th as Apple unveiled a new line of products. The new line includes the iPhone 6 as well as the long awaited, expected, and rumored Apple watch (which, after years of speculation, will not be branded as an iWatch).

I had expected Apple to have applied to register the APPLE WATCH mark, or at least APPLE in connection with watches. But based on a quick search of the USPTO database, they haven’t.  However, just a few weeks ago, Apple did apply to register the following claimed trademarks:


Both applications identify the goods as “Adapters for use with computers, computer peripherals, consumer electronics, portable and handheld digital electronic devices, digital media players, handheld computers, tablet computers, mobile phones, electronic book readers, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) devices.” Or, as most of us likely refer to them: “chargers.”

The application for the top mark (the photograph), describes the mark as “a cube having four sides with rounded corners, a flat front and back surface, a connector port on the flat back surface, and electrical prongs on the flat front surface.” The only difference between the top and bottom applications is that the top claims the color white as a feature of the mark, while the bottom makes no claim as to color.

We’ve discussed Apple’s previous applications for trade dress applications here and here. The U.S. Trademark Office has not yet examined the application, but in order to obtain a registration, Apple will need to prove that its claimed mark is 1) non-functional, and 2) has acquired distinctiveness.  For item #2, Apple claims use of the mark back to 2008. Under the Lanham Act, 5 years of use is normally sufficient to establish acquired distinctiveness. So Apple’s main hurdle will be proving that the claimed mark is non-functional. The Board relies on a four factor test to determine whether a claimed mark is functional:

(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.

Whether a mark is functional is a fact intensive inquiry that goes well beyond the average reader’s attention span for a blog post. What I do know is that the claimed mark is probably about as compact as a USB power adapter could be. For packaging purposes, the cube shape is probably helpful. And the location of the electrical prongs and the USB connector port are likely placed in the most accessible locations.  On top of that, the advertising at the Apple Store touts the adapter’s “Ultra compact Design.”

Of course, competitors could use an alternative design, like a triangle. or a cylinder. The edges could be sharp rather than rounded, you know, to keep the thieves at bay (that might be functional though, so….).

Given that Apple includes a free charger as part of each of its new products, you wonder what their goal is in obtaining a trademark registration for this claimed mark. Are they hoping to prevent off-brand chargers like this USB charger? Or this charger that resembles the Macbook chargers? We’re more likely to find out Apple’s goal if it can successfully register either of these marks. Unfortunately, we’re probably going to have to wait a while.

Anybody got a watch?


Will Chick-fil-A, uh Chicken Out?

Posted in Almost Advice, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Social Media, Social Networking, Trademark Bullying, Trademarks, TTAB, USPTO

Just so you know, this is not the post I planned to write today. Hat tip to you, Bo!

It has been exactly one year since Bo Muller-Moore — the “Eat More Kale” guy from Vermont — submitted a comprehensive 71-page response to the registration refusal based on “Eat Mor Chikin” issued by the USPTO on March 27, 2012, after a dubious Letter of Protest was filed by Chick-fil-A and surprisingly granted by the USPTO on December 22, 2011.

Given my interest and coverage of this story (here, here, here, here, here, here, and here), and my meaty devotion to our dear readers, I’ve been periodically checking in on the status of Mr. Moore’s EAT MORE KALE application, anxiously awaiting the USPTO’s response to Moore’s thorough missive. So my plan was to write today about how the USPTO has laid a real egg that it continues to sit on – taking no action at all for an entire year, making me want to raise this question again (albeit in a different light): Is the USPTO acting like a (surrogate) trademark bully?

That is all unnecessary now, since the USPTO just yesterday appears to have approved Mr. Moore’s EAT MORE KALE application for publication, opening it up for third party challenge:

“Status: Approved by the examining attorney for publication but has not yet published for opposition. Although rare, withdrawal of approval prior to publication may occur after final review. The opposition period begins on the date of publication.”

Given it took an entire year to handle this hot potato at the USPTO, it’s hard to imagine a “rare” withdrawal of approval will occur at this point, but with this case, I suppose anything is possible.

A better question, it seems to me is: Does Chick-fil-A have the stomach to fight in public over this one, or will the social media shame-wagon cause it to chicken out (again)?

Chick-fil-A’s objection to Moore’s Eat More Kale tagline is not new, going all the way back to 2006, according to the New York Times, but public encouragement for Moore’s defiance dates back to at least 2011, around the time when the New York Times covered the story. Moore’s Kickstarter funding project for a documentary to expose Chick-fil-A’s enforcement as trademark bullying has raised almost $90,000.00 to date.

How much more is likely to be raised if Chick-fil-A files a formal Notice of Opposition?

As much as I’d like to continue to write about and eventually see a full-length documentary on this dispute, if I were Chick-fil-A, I’d let it go, without even a cluck — Eat More Kale that is – and leave Bo to fund a much shorter film instead.

What would you do if you were Chick-fil-A, besides not start this mess in the first place?

To our PR friends, how would you advise Chick-fil-A, now that it appears the opposition window at the USPTO will be open soon?

And, please don’t recycle this previous Chick-fil-A statement: “We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.”

Yes, Chick-fil-A, you have enforceable rights in EAT MOR CHIKIN, but you don’t need to pursue EAT MORE KALE to maintain rights to EAT MOR CHIKIN. Yes, that is a period.

UPDATE: October 14, 2014 is the currently scheduled date of publication for opposition, so stay tuned.

How Many Hours of Energy Do You Need to Protect a Brand?

Posted in Branding, Fair Use, Famous Marks, Guest Bloggers, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Product Packaging, Sight, Trademark Bullying, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

The reason Bhargava has won is that he plays tough. Sitting in that cemetery are a dozen or so neon copycats with names like 6-Hour Power and 8-Hour Energy. Each has been sued, bullied or kicked off the market by Living Essentials’ lawyers. In front of each are little placards with a skull and crossbones drawn in felt-tip pen. Bhargava points at the gravestone of one of his late competitors and says with a chuckle, “Rest in peace.”

— Clare O’Connor, The Mystery Monk Making Billions with 5-Hour Energy, Forbes.com (February 8, 2012)

5-Hour Energy is a monster* behemoth in the energy shot market it created in 2004. According to Forbes, retail sales for 5-Hour Energy hit $1 Billion in 2012, with advertising spending reaching almost $200 Million. Its market share is approximately 90%; its closest competitor’s share is about 3%. As CEO Manoj Bhargava puts it, 5-Hour Energy is “killing it.”

Last month, 5-Hour Energy appears to have put the final nail in the coffin of one of its would-be competitors, a persistent copycat extraordinaire named Jeffery Diehl. Operating through a few different corporate entities such as N2G Distributing, Inc. and Alpha Performance Labs, Diehl sold energy shots by the names of 6 Hour Energy Shot, Nitro2Go Instant Energy, and Extreme Monster** Energy Shot. Depicted below is a comparison of 5-Hour Energy’s bottle on the left and one of Diehl’s bottles on the right:

In 2008, 5-Hour Energy sued Diehl in federal court in Michigan and quickly won a preliminary injunction, immediately barring Diehl from selling any more of his products under confusingly similar names or in confusingly similar packaging while a complete trial on the merits played out. Of course, this didn’t stop Diehl from changing the name and changing the packaging, and each time he did, 5-Hour Energy added another product to its complaint. Three and half years later, after much procedural wrangling and a trial on the merits, Diehl was found liable for $1.75 Million in damages for trademark infringement and unfair advertising in connection with various iterations of his copycat product. The image below is from one page of the verdict form from the jury; the circled products represent infringing products:

In addition to monetary damages, the court ordered Diehl to stop selling infringing products. A few months later, through its own investigation, 5-Hour Energy discovered that Diehl was still selling copycat products online, albeit under a new corporate entity (his other corporate entities filed bankruptcy, of course). So 5-Hour Energy dragged Diehl back into court and the court was not happy: “[Diehl’s actions] are the actions of an individual trying to hide from and avoid his obligations under this Court’s order.” Diehl was held in contempt of court and ordered to immediately stop selling infringing products or face a $1,000 a day fine. Diehl stopped.

Now, this is America after all, and even crafty contempt-ing copycats have a right to appeal. So of course Diehl appealed (after losing his motion for a new trial); his view – the evidence didn’t show a likelihood of confusion! This is what the appellate court found:

• The jury could see that Diehl’s products used similar marks, despite minute differences in the words or images;

• The jury could listen to survey evidence and attacks on that evidence and determine that 5-Hour Energy was a strong brand and robust mark;

• The jury could recognize that Diehl was selling essentially identical products: two-ounce energy shots, often at convenience stores, near cash registers, where purchases are made impulsively;

• The jury could consider even a single instance of actual confusion as increasing the likelihood of confusion;

• The jury could disregard Diehl’s testimony that he only wanted to compete with 5-Hour Energy fairly in the free market; and

• The jury could infer that Diehl was laying claim to a mark when he testified that he just wanted to own the term ‘6 Hour Energy Shot’ the same way that the owner of 5-Hour Energy owns 5-Hour Energy, thus contradicting Diehl’s claim to a fair use defense.

Diehl also wanted to object to the verdict as inconsistent – one of the bottles was not circled! But the appellate court dismissed this objection because it must be brought when the jury is still assembled, so that the jury can resolve the inconsistency, if any.

Diehl tried another approach – the evidence was unfair and improper! For example, Diehl was upset that he had been denied access to 5-Hour Energy’s secret formula, which he said would show that his probably similar formula could produce more hours of energy – 6 or 7 or 14, as claimed – thus making his marks descriptive. Diehl was also upset that the jury learned about his copycat product, the Extreme Monster Energy Shot (photo below). Diehl further complained that the jury didn’t get to read an opinion from another court where Diehl had sued a competitor over similar trade dress AND LOST, because, Diehl claimed, when he lost he learned that you could get around trade dress laws with just a few little changes, and this showed he wasn’t intentionally infringing 5-Hour Energy’s trade dress with his little changes. Finally, Diehl complained that although he was able to show that 5-Hour Energy was litigious (i.e. a trademark bully), he didn’t get to present enough evidence on that point. The appellate court disagreed that any of these issues mattered.

Diehl struck out on a few other contentions as well, bringing his appeal at the Sixth Circuit, and six years of litigation, to an end. Those contentions, and more details about the case, can be found in the court’s opinion, here.

As for where exactly 5-Hour Energy and its lawyers get the energy for these types of cases, my money is on a secret 6-Year Litigation formula!

*Author’s Note: Poor choice of words.

**Author’s Note: Diehl, apparently, didn’t think so.