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Collaborations in Creativity & the Law

A $10 Billion Idea, without a Patent, is just an Idea

Posted in Copyrights, Idea Protection, Infringement, Law Suits, Loss of Rights, Patents, Technology

Have you ever seen an ad for something and thought to yourself, “Hey, I had that idea years ago!” Some people take that thought a step further. One Florida man claims to have invented the iPhone in 1992, and is suing Apple to the tune of over $10 billion.

Thomas Ross filed a patent application for an “Electronic Reading Device” having a backlit LCD screen in 1992. Below are some images from Ross’s original filing, as presented in his Complaint against Apple.

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The application was ultimately abandoned in 1995 for failure to pay required fees. Ross therefore does not hold a patent on his invention. A patent application alone, without a resulting issued patent, does not itself grant any actionable rights. Even if Apple did copy the disclosed design in Ross’s patent application, he would not have a cause of action for patent infringement based on his abandoned application.

Since Ross cannot sue for patent infringement, he instead appears to hang his case entirely on copyright infringement. In 2014, Ross registered the drawings and text from his abandoned patent application for copyright protection. Importantly, copyright protection attaches to a work when it is initially “fixed” or written. Therefore, any copyright rights that Ross holds in the drawings and text originated when he initially wrote them in 1992.

However, copyright and patent are two very different animals. Copyright protects creative works, such as literary, musical, dramatic, pictoral, graphic, and sculptural works. Copyright protection is not available for ideas, facts, or utilitarian aspects of an item. Ross’s copyright rights cannot protect the workings of an iPhone-like device itself. Copyright is not a substitute for a failure to obtain patent protection.

While Ross may have a valid copyright in the shape and other creative physical aspects of his Electronic Reading Device, an allegation of copyright infringement requires proof of actual copying.   That is, a plaintiff must show that the defendant actually copied the plaintiff’s copyrighted work, which may be shown by access to the plaintiff’s work and similarity between the works. This is required because copyright law does not protect against independent creation. If two people separately create the same glass vase or write the same poem, entirely independent of one another, they may both hold a copyright for the work. Ross does not appear to provide any evidence toward proving that Apple actually copied his works.

Based on the facts presented in Ross’s Complaint, he is unlikely to succeed in the copyright allegations.  The text of Ross’s 1992 patent application reveals what was likely an innovative design. He describes the device “greatly improve[ing] ready access to reading material without the traditional inconvenience of bulk associated with accessibility of large amounts of printed text, and bundled in a light, compact and easily portable device that would additionally function as a note-book (optionally), calendar, clock, timer, calculator, factsimile [sic] devices, cellular phone, [and] message handler.” Surely an innovative concept in 1992. Unfortunately, an idea itself, no matter how revolutionary, is not protectable intellectual property. Ross’s failure to obtain patent protection for his invention has led to a lack of enforceable rights.

 

Here, Have a BREXIT

Posted in International, USPTO

The British are leaving!  The British are leaving!  Many people on all sides of “the pond” last week watched the Brits’ vote to leave the European Union with interest, and were shocked when they actually voted to cut ties with the EU.  The vote was often referred to by the doomsday name BREXIT (cue terrifying music).  It’s like the Bennifer of political events.  If you don’t know much about the backstory leading up to the vote, John Oliver’s commentary on it is worth watching.

BREXIT not only had an immediate impact on stock markets and the political parties of Britain, but it is likely to have a lasting impact on the UK economy and on IP rights in Europe.  Currently, applicants seeking trademark protection in Europe can file a trademark application designating the entire EU for protection through the European Union Intellectual Property Office (EUIPO).  Patent applicants can seek patent protection in Europe through the European Patent Office, but then currently have to go through a national phrase process where the application is then examined in the individual countries.  The EU was set to begin issuing European Unified Patents, much like the trademarks, but with the UK’s exit from the EU, many applicants may not seek to use this new system when it will not cover one of the major European countries.  IP attorneys will be keeping a watchful eye on changes in this area and how it may affect their clients’ protection and filing strategy in the region.

Naturally, when events like this take over the news cycle with a catchy name or slogan, the U.S. Trademark Office (USPTO) sees a spike in filings involving the name.  It takes 5-7 days before new applications are available in the USPTO’s search system, but currently there are three filings for BREXIT.  They were all filed on June 24, 2016.

  • A man in Chicago filed an intent-to-use application for BREXIT for “clothing, including t-shirts and hats”;
  • Quicksilver Scientific also filed an intent-to-use application for BREXIT for dietary and nutritional supplements; and
  • Samuel Adams’ parent company, Boston Beer Corporation, filed an intent-to-use application for BREXIT for “hard cider” but not for beer.

A Founding Father hawking a hard cider under the name BREXIT?  I’d try one.

A Favorite New York Landmark Deemed a Famous Trademark

Posted in Famous Marks, Trademarks

It is not easy to establish fame for purposes of showing a likelihood of dilution by blurring.  Owner of the Empire State Building marks rose to the challenge in a recent decision by the Trademark Trial and Appeal Board (“the Board”).  ESRT Empire State Building, LLC v. Michael Lang, Opposition No. 91204122 (June 17, 2015) [not precedential].

Others have tried and lost.  See Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q.   Omega SA v. Alpha Phi Omega, Opposition Nos. 91197504 and 91197505 (Mar. 31, 2016) (finding that Omega had failed to show fame prior to any established, continuous use of mark with the specific goods or services in the application or registration, but allowed Omega to amend its opposition to show this evidence if it could); Virgin Enterprises Limited v. Steven E. Moore, Opposition No. 91192733 (August 31, 2012) (telling Richard Branson that his VIRGIN mark was not famous because his company failed to provide sufficient evidence or a survey supporting fame).

Specifically, in the Empire State Buildinjhgg proceedings the applicant was seeking to register the mark below for various beers, ales, extracts for making beer, alcohol-free beers and other related goods.

Not surprisingly, the ESRT Empire State Building, L.L.C. (“ESRT”) opposed the application on the grounds of dilution of its famous registrations for the EMPIRE STATE BUILDING mark with respect to “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,411,972), and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,413,667).  Further, ESRT owned the registration for the design mark below in connection with “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,429,297),  and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,430,828).

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In finding fame, the Board explained that testimony and evidence established that “[f]or 40 years, the Empire State Building was the tallest building in the world, and presently is the fifth tallest building in the United States.”  As an aside, the taller other buildings include:

Focusing on pop culture, the Board noted that the “Empire State Building has been featured in hundreds of motion pictures and television shows, including King Kong, An Affair to Remember, and Sleepless and Seattle.”  For all of you Gossip Girl fans, you may recall Blair failing to meet Chuck, with his flower bouquet, waiting for her on the top of the Empire State Building (unbeknownst to him Blair is delayed by her maid giving birth).    I digress. The Board went on to list other evidence showing the Empire State Building’s fame.  It also did not hurt that the applicant admitted   (as he had to) that the Empire State Building is famous.  Accordingly, the building owner’s opposition was sustained and the applicant could not register its mark for its beer, ale and other related items.

nyy_1200x630 Last year, another New York trademark owner, the New York Yankees, was able to establish fame for its marks including THE HOUSE THAT RUTH BUILT® and Top Hat Design Marks (including the one depicted below).  See New York Yankees P’ship v.  IET Prods.  & Servs., Inc., 114 U.S.P.Q.2d  1497  (T.T.A.B.  2015) [Precedential].
Not surprisingly, the applicant conceded that the Yankee’s marks were famous, but argued that they referred to the stadium that has been demolished not the goods associated with the marks.  The Board did not buy this argument.

Marks associated with New York landmarks may have a better shot of achieving the fame needed to support a dilution claim.  Do you think a design mark related to the One World Observatory Tower below  would be able to achieve similar fame as a mark for dilution purposes in the future?

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Lights, Camera…Now Take Action

Posted in Fair Use, Guest Bloggers, Idea Protection, Infringement, Marketing, Mixed Bag of Nuts, Squirrelly Thoughts, Technology, Television

– Jason Sprenger – President, Game Changer Communications

Imagine for a moment you’re back in the year 1963…the time of Mad Men, the beginning of Beatlemania, the year of the “I Have a Dream” speech.  Who’s the most trusted man in America?  You might be surprised that it wasn’t Martin Luther King Jr., or even the remarkably popular President John F. Kennedy.  It was Walter Cronkite, the legendary CBS news anchor.  And since Cronkite, who are the others deemed to be the most synonymous with trust among Americans?  None other than Tom Brokaw and Jon Stewart.

A while later, in my final semester of college, I did a honors capstone project on levels of trust in various media over time.  I tried to determine whether or not certain world events such as 9/11 could cause spikes in trust/favor among media, and whether those trends were unique to certain kinds of media.  My research produced results suggesting a strong correlation between higher levels of trust and visual media – specifically television.  It also indicated massive spikes of trust in broadcast media in times of national and global crisis – times when people were emotional and vulnerable, and needed reassurance and leadership.

These are just a couple of examples that suggest video has always had an incredible impact on individuals, and on our collective society.  We place a high level of trust in the people who talk to us and tell us how it really is on screen.  We celebrate the people who entertain and educate us through the movies, television and other visual arts and disciplines.  We remember vividly the experiences we’ve had and shared through visual media.  We treasure video memories of our families, because nothing quite takes you back in time like seeing and hearing scenes from the past.

Lately, through content marketing, organizations everywhere have begun to harness and leverage the power of video.  Consider these statistics (source: Hubspot and www.insivia.com):

  • When video is included in email, click-through rates increase 200-300%
  • Simply having video on a landing page can increase conversion by 80%
  • YouTube reports mobile video consumption increases 100% every year
  • After watching a video, 64% of users are more likely to buy a product online
  • Real estate listing using video receive 403% more inquiries than those without
  • One minute of video has been estimated to be equivalent to 1.8 million words
  • Enjoyment of video ads increases purchase intent by 97% and brand association by 139%

Clearly, video works.  So what do we do about it?  First, we find ways to integrate it into our operations at all levels.  Everyone from rank and file employees to executives to outside stakeholders is using and responding to video, so why not use the medium to our advantage?  Second, we get smart about the laws around ownership of video, the nuances of using and borrowing video and other items.  Lack of knowledge and certainty in these areas will hold us back from using video in the ways we could.  Third, we encourage open and frank discussions about visual communication in business and in society.  We owe it to ourselves to make sure that we’re continuing to use this still-evolving medium in the most efficient, ethical way we can.

With the changes in technology, media channels, concepts like virtual and augmented reality, etc., video will surely grow and evolve in the years to come.  It will only become a more central component of our lives, and our organizations.  It’s up to us to embrace this trend, because those of us who figure it out and do it well are bound to come out ahead.

One Trademark Certainty in Uncertain Times

Posted in Almost Advice, Articles, Loss of Rights, Trademarks, USPTO

Watching the morning news for even a few minutes can leave one struck by how we truly live in uncertain times. I suppose every generation has too, but is it more striking at this moment?

There are plenty of examples to draw upon to evidence the many uncertainties in our world, spanning extreme weather, politics, financial markets, safety, legal decisions, among others.

The field of trademark law is no stranger to uncertainty either. You will recall we wrote about Yes, No, and the Ever Confusing Maybe earlier this year, following our seventh anniversary.

The trademark clearance process can be particularly difficult to navigate, given the ever increasing crowdedness of the marketplace, our rapidly shrinking world, and the ease of trademark filings.

Necessary and appropriate preliminary and comprehensive trademark clearance searches represent imperfect snap shots of the trademark legal landscape at a particular point in time.

What many fail to appreciate is how quickly an open window of trademark availability promptly can be closed by the simple third party filing of a conflicting intent-to-use trademark application.

A best practice to keep in mind during the trademark clearance process is the importance of promptly filing an appropriate intent-to-use trademark application immediately after receiving the results of a successful clearance opinion; doing so maximizes the value of the investment in the search and minimizes the risk of intervening and conflicting third party trademark rights.

While we can’t be certain that others are thinking along the same branding and trademark lines as our clients at roughly the same time, we can be certain that priority determines trademark rights, and a day can make the difference, sadly I’ve seen it happen.

Perhaps the silver lining in the kind of trademark uncertainty we face as marketing and trademark types is that we’re not talking life and death, we’re talking about going back to the drawing board.

And, sometimes going back to the drawing board even more than a few times can yield a much better and more effective name anyway.

Do you have any scars to show for your trademark clearance activities?

Have you ever been burned, not taking seriously the certainty of how time is of the essence when it comes to trademark priority?

Should a Brand Change Its Name for a Little While?

Posted in Branding, Guest Bloggers, Infringement, Marketing, Trademarks

Debbie Laskey, MBA

In May, Anheuser-Busch made news when it announced that it would change the name of its most famous brand from Budweiser to America. So, from late-May to November, in every liquor store, convenience store, gas station kiosk, discount warehouse, and supermarket, people will be saying something strange: “I’ll take a six-pack of America.”

According to Money Magazine, “All 12-ounce cans and bottles of Budweiser will feature the word “America” on their labels, instead of Budweiser, in the brand’s distinctive cursive font. The temporary label swap, which will be in effect from May 23 through the presidential election in November, is meant to inspire drinkers to celebrate America and Budweiser’s shared values of freedom and authenticity. The new cans and bottles will also feature lyrics from “The Star Spangled Banner” and “America the Beautiful.” A picture of the Statue of Liberty will appear on Budweiser’s 16 and 25 ounce cans as well as its 16-oz. bottles.”

The name and packaging changes should not come as such a surprise. Jorn Socquet, U.S. Marketing Vice President of parent company Anheuser-Busch InBev, explained that the company is simply implementing its summer marketing campaign, which will feature the Olympics, the Fourth of July celebrations, the Copa America soccer tournament that will be played in the United States, and the presidential campaign season. A fact not readily shared, though, is that beer with “America” labels will not be available outside the U.S.

Will there be negative consequences from the name change? Will people think the beer’s taste will change? Remember the New Coke fiasco. Will people think it sounds weird to go into a bar and order a bottle of America? Will the temporary name change create a wave of patriotism to accompany the interest in the presidential campaign season? Certainly, hot dogs, hamburgers, apple pie and bottles featuring “America” labels will create great Instagram posts on July Fourth.

Of course, some Americans may have missed reading about the name change in Adweek, CNN Money, The Atlantic, USA Today, or Fast Company Design. And they may have missed hearing about it on TV or radio news broadcasts. Worse, they may order a Bud and not even notice the new name and other slight differences in the packaging.

Which brings us back to the key question: If your brand changes its name for a limited time, does the new name better capture your brand promise? Does the new name better attract your core audience? Does the new name better reflect a new audience? Above all, what do you want to accomplish with your name change? And from a legal standpoint, is the new name registered as a new trademark? What happens if there is a trademark infringement, since your brand will be reverting back to its original name at some point in the near future? Do you have answers to these questions? They’re only the tip of the name change iceberg.

While this name change generated media buzz, let’s not forget that the presidential campaign season will just become more heated during the hot summer months. Perhaps, the limited time name should have been “Vote in November” rather than “America.” Let’s just hope voters don’t walk into the polls in November carrying bottles of America!

Service Trade Dress?

Posted in Mixed Bag of Nuts

When most people of think of trade dress protection they primarily think of a good. Generally, protecting a product’s configuration, which can never be inherently distinctive, or a product’s packaging, which can be inherently distinctive. Rarely, does trade dress for services come to mind, but trade dress protection for services is alive and well. More often than not, trade dress protection for services involves the interior of a retail establishment like a restaurant. But more and varying type of trade dress protection for services exists. Recently, Franksih Enterprises, Inc. registered the exterior design of its monster truck for “entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions.” Uniforms can also qualify for trade dress protection like in the case of the Chippendales cuffs and bowtie. The point being that so long as it is capable of indicating source, many forms of trade dress for services can qualify for protection.

A Faster, Sleeker Milk Jug

Posted in Food, Marketing, Non-Traditional Trademarks, Product Configurations, Taste

Another for the file of newly-registered product configuration marks: acquired distinctiveness, sold by the gallon.


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According to 2014 numbers released by the U.S. Department of Agriculture, Americans drink 37 percent less milk than they did in 1970. Whole milk consumption has plummeted by 78 percent during the same period. The dairy industry has spent countless millions on advertising, and don’t be surprised if you see the MILK LIFE campaign featured prominently in the upcoming Olympics (sadly, the “Got Milk” campaign was discontinued in 2014).

For its part, it looks as though HP Hood LLC decided to shake up the humble gallon-sized milk bottle, and it recently obtained a registration for the configuration shown below.

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Named the “LIGHTBLOCK Bottle,” the design actually made its debut in 1997, and, as the name suggests, the primary function of the bottle is to block light “to protect against off flavors and vitamin depletion.” But Hood also made some changes to differentiate its design from the typical milk bottle, and filed an application for the configuration in June 2014.

The application identifies “Dairy products, namely, fluid milk” — I probably shouldn’t even ask if there are other types besides “fluid”? The mark description is also a doozy:

The mark consists of the three-dimensional configuration of the size and shape of a plastic jug-type one gallon container for milk products, having four vertical sides of equal width and a rounded, rather than pyramidal top. The vertical panels are proportionally taller than in commonly used one gallon milk containers. The overall dimensions of the container are approximately 6 1/4 inches wide by 6 1/4 inches deep by 10 inches high. The jug-handle of the container is placed at the middle of one side rather than at a corner. There are four horizontal ribs indented in the two side panels which are adjacent and perpendicular to the handle side. There is one vertical rib indented into each corner of the container where the vertical panels are joined. There are two horizontal ribs indented in the back panel below the handle.

It’s highly uncommon to see actual measurements of the product configuration within a mark description, as brand owners generally like to make subtle changes in their overall packaging while maintaining the distinctive features of the design. Given the standardized gallon size for the bottle, this may be less of a concern for Hood.

Thanks in part, perhaps, to a correctly-tailored mark description and a specific drawing (with prodigious use of the dotted lines to indicate what is not claimed as part of the trademark), Hood avoided a functionality refusal for the specific features identified in the mark.

The main objection for Hood to overcome was a non-distinctive trademark refusal, and Hood’s claim of over five years’ use of the mark was insufficient. Hood overcame this refusal with a simple, concise declaration containing sales figures (in the hundreds of millions of bottles). Hood also included a “comparison chart” showing the differences between its bottle design and its competitors — specifically, a “rounded top (not pyramidal),” a handle centered on the side, and “horizontal and vertical ribs.”

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So, what do you think? Is it worth the cost of registration? Would this milk jug catch your eye in the dairy section?

A Lesson In Reusing Historic Brand Names #TBT

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

-Mark Prus, Principal, NameFlash Name Development

The music streaming service Rhapsody just announced that they are rebranding themselves as Napster, a brand they acquired in 2011. Is bringing back this historic brand name a good idea?

Let me go on record as saying I’m a huge fan of leveraging existing brand equity in historic brand names. However, you must do this with extreme care because existing brand equity always includes baggage.

Here is an example of good baggage and bad baggage. At the North American International Auto Show in 2012, Chrysler/Fiat unveiled the 2013 Dodge Dart. This was not the first time Dodge returned to a historic nameplate rather than introduce a new name. A few years before Dodge reintroduced its muscle car as Dodge Challenger.

The new Dodge Dart was a great car. It used the mechanical platform of a vehicle by Alfa Romeo, a Fiat-owned brand in Europe. This Dart was loaded with technology and attention to detail that is not normally found in a compact car. The Dodge Challenger was also an excellent car.

But bringing back the Dodge Dart name was a poor choice, while reusing Dodge Challenger was a great choice. The existing brand equity on the name “Dodge Dart” was horrible. The existing brand equity on the name “Dodge Challenger” was perfect.

Did Chrysler/Fiat actually do any research on the equity present in the historic names? I doubt it. You can understand this if you ask a few friends 3 important things they recall about Dart and ask the same questions about Challenger:

  1. Who owned the car?
  2. What was their ownership experience like?
  3. What is their lasting memory of the car?

The answers you are likely to get are as follows:

Who owned the car?

Dart = my grandmother; Challenger = my crazy, risk-taking uncle

Ownership experience?

Dart = she drove it to church on Sunday; Challenger = he drag raced it on the street

Lasting memory?

Dart = car rusted away in the driveway; Challenger = coolest car ever

As a result you will see why Chrysler/Fiat recycled Challenger as a muscle-car name. But you will be shaking your head over why Dart was the name for the new Chrysler/Fiat compact car.

Many who owned an original Challenger still regret the day they sold it. Many who owned an original Dart still regret the day they bought it. Sometimes it is far better to create a new name rather than to use an old one with baggage like that!

So it is no surprise that the new Dodge Dart has already been discontinued.

Napster? Have they done the necessary research to understand that brand name’s baggage? I certainly hope so…otherwise the name Rhapsody will be a fond memory of people who used to work at the music streaming service as Napster gets discontinued.

Look-For Advertising Sans the Clunky Words

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

We’ve written before on the subject of non-traditional trademarks and how look-for advertising can be quite helpful in not only educating consumers that a color or other design feature should stand out in their mind as performing the helpful role of a trademark, but in convincing the USPTO too.

Earlier this month the USPTO granted a fairly broad non-traditional federal trademark registration to Q.E.P. (owner of the NUPLA tool brand) to help protect the brand equity in the black stripe appearing on the handle of its tools, one example shown below:
NuplaHandleStripe

What is especially interesting about the issued trademark registration is that the claimed mark is not limited to a black stripe on a yellow handle (even though some of the evidence to support a showing of acquired distinctiveness focused on the black color of the stripe), but it reads to cover any contrasting colored stripe on any color of tool handle, as the drawing shown below and this description of the mark reveals:

NuplaDrawing

“The mark consists of a 3-dimensional configuration of a tool handle having longitudinally extending stripe of a color which contrasts with the principal color of the tool handle. In the drawing the dotted lines are illustrative of an exemplary of tool handle and are not part of the mark and serve only to show the position or placement of the mark on the tool handle.”

I’m thinking the Examining Attorney at the USPTO was persuaded as to the claimed showing of acquired distinctiveness, in large part, by the use of the reinforcing GET THE STRIPE tagline:

NuplaGettheStripeLogo

What do you think, does a brand owner need to use the clunky words “look-for” to gain the benefit of this kind of advertising, or would that be putting form over substance?

And, do you think the apparent protection of a contrasting stripe of any color is overbroad here?