Duets Blog : Creativity and the Law: DuetsBlog

Whenever I return from a trip from California, I am always surprised at the number of people who ask whether I visited the palace of hamburgers known as In-N-Out. I’m not much of a burger fan, so my trips to that establishment are rare. I try, however, never to miss a trip to El Pollo Loco, one of my favorite restaurants on the planet.

At this point in my life, part of my love of El Pollo Loco stems from its rarity – I only get to have it when I visit my family and friends on the West Coast, and absence does indeed make the heart grow fonder. Imagine my surprise and delight then, when I learned that El Pollo Loco is learning to expand to Minnesota. I learned about this last week, when El Pollo Loco sued a local Minneapolis restaurant purportedly operating as El Pollo Loco De Los Santos. The lawsuit alleges that the latter restaurant continues to use the term “Loco” in its name even though El Pollo Loco requested that El Pollo Loco De Los Santos cease use of the term, or any other mark confusingly similar, in 2008.

El Pollo Loco, which translates to “the crazy chicken,” currently operates in California, Nevada, Texas, Utah and Illinois. El Pollo Loco De Los Santos denies that it has used the word “Loco” in its name since 2008. According to an article in the Minneapolis/St. Paul Business Journal, however, the old name still existed on El Pollo Loco De Los Santos’ website and phone company listings when Pollo Loco filed suit.

The Trademark Manual of Examining Procedure requires that “non-English wording that comprises an unregistrable component of a mark is subject to disclaimer.” El Pollo Loco owns nine live registrations incorporating EL POLLO LOCO, all of which disclaim “pollo.” Therefore, it would seem that if El Pollo Loco De Los Santos is in fact no longer using “Loco” in connection with its name, then the parties can get down to another type of important business, namely making more yummy Mexican food available to the good people of the Twin Cities.

Stay tuned, we'll let you know if we hear anything about this case.

In the meantime, fellow Twin Citians, have you ever heard of El Pollo Loco? If you have, do you think that the Minneapolis restaurant El Pollo Loco De Los Santos/El Pollo De Los Santos is confusingly similar to El Pollo Loco?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

As I was reading US magazine last weekend, I saw that Jennifer Aniston (my favorite “Friend”) launched her first perfume last month. She describes it as a combination of the ocean, sea air, blooming jasmine and tropical oils. I might have to try it. Our guest blogger Mark Prus recently discussed the perfume in his post “Wary of Trademark Infringement?” He informed us that Jennifer Aniston had to change her perfume name “Lolavie,” because she was concerned about potential infringement with Marc Jacob’s perfume “Lola.” Opting for an eponymous perfume she renamed it “Jennifer Aniston.”

Jennifer Aniston’s nemesis Angelina Jolie was involved in a perfume name dispute. Angelina Jolie brought an action on behalf of her at that time infant daughter Shiloh Nouvel Jolie-Pitt (Jennifer’s ex-husband Brad Pitt’s daughter). Specifically, Angelina Jolie sought to prevent perfumer Symine Salimpour from launching the perfume “Shiloh.” Ms. Salimpour had registered the trademark “SHILOH” for perfumes a month after Shiloh Nouvel Jolie-Pitt was born. After battling for thirteen months, Angelina Jolie finally dropped the legal challenge to the application to trademark the name.

Other perfumer stars have registered their names as trademarks for perfume. In order to do so, the law generally requires a showing of “secondary meaning.” This means that the public has come to recognize the personal name as a symbol that identifies and distinguishes the goods of only one seller (i.e., Levi Strauss). Jennifer Lopez was able to establish a “secondary meaning” when she registered her name: “Jennifer Lopez” as a trademark for perfume. In addition, she registered the trademarks: “Live Jennifer Lopez” and “Still Jennifer Lopez.” Despite renaming her perfume, Jennifer Aniston has not yet registered her name as a trademark. She should have read Mark Prus’s blog and follow in the steps of savvy business person Jennifer Lopez.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Now that kids are back to school and summer is coming to a close, this billboard advertisement has disappeared from I-94 just outside of downtown Minneapolis. Before it vanished from the roadside, however, I thought to capture it to tell a little trademark tale here, one from years past, but one that remains relevant, important, and applicable to trademark claims involving the color black. 

As we have discussed before, a single color can function as a trademark and be the basis of exclusive ownership, so long as it is not functional and has acquired distinctiveness for the goods in question. As it turns out, however, and as the billboard reminds me, due to some unique attributes of the color black, it is a tricky one to own as a trademark.

The tale begins back in 1988, after accumulating 25 years of use and allegedly "substantially exclusive" use in commerce, Mercury-Brunswick commenced efforts to register, own and exclude others from using the color black on the surface of internal combustion engines for boats.

As can tend to be the case when claiming exclusive rights in single colors or other non-traditional trademark rights, others within the industry who are paying close attention to what goes on at the Trademark Office come to life and consider getting in the way of these efforts. 

British Seagull Ltd. did just that and filed an opposition lasting six years, ending with and resulting in the final rejection of Mercury-Brunswick's claimed trademark rights in black, based on the functionality doctrine. You might be wondering, how on earth is the color black functional when applied to the entire surface of internal combustion engines for boats? 

The longer answer can be found in two decisions: The decision of the Trademark Trial and Appeal Board (TTAB) in British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), and the decision of the Court of Appeals for the Federal Circuit (CAFC), affirming the TTAB's registration refusal, in Brunswick Corporation v. British Seagull Limited, 35 F.3d 1527 (1994).

The shorter answer is "competitive need" as found in this excerpt from the TTAB's decision: 

[A]lthough the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The evidence shows that people who buy outboard motors for boats like the colors of the motors to be harmonious with the colors of their vessels, and that they also find it desirable under some circumstances to reduce the perception of the size of the motors in proportion to the boats.

And the CAFC's affirmance, here:

Turning to the present case, the Board determined that "black, when applied to [Mercury's] outboard marine engines, is de jure functional because of competitive need." British Seagull, 28 USPQ2d at 1199. The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board's legal reasoning and no clear error in its factual findings

So, it's important to keep in mind this notion of competitive need when a business desires to own exclusive trademark rights in a color, and it is equally important to keep in mind as a defense when such rights are being asserted against your client's use of a color. 

And, when it comes to asserting or refuting a claim of exclusive trademark rights in the color black, it is well worth exploring competitive need by asking whether black's unique attributes of color compatibility and/or visual perception have any application to your facts, since those facts already have been found to support a successful functionality defense.

On a related note, I recently came across King Innovation's announcement of being "granted" a trademark in black underground waterproof electrical connectors. Of course, I'm left wondering whether color compatibility and/or visual perception might impact this claim of rights. I'm also hoping they aren't referring to this little guy right here, since the application to register this claimed mark was abandoned last year and appears to be deader than a doornail, following a functionality refusal:

 Oh, what do you know, here is another application, filed a year later, that matured to registration and  issued just months ago. Proof that persistence pays dividends!

Last, as I recall Dan's post entitled I See Black Labels, I'm left wondering what social science data might exist to support a functionality defense, if one was inclined to require such a defense.

Can you think of other unique attributes to the color black that might establish a successful functionality defense to a trademark claim in black?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

What a difference a year makes.  Last year, I wrote about the .CM top-level domain as a potentially popular typographical variant of the ubiquitous .COM.  In that post, I mentioned that it did not appear that widespread commercialization of .CO was in the works.

Well, .CO domains are available and out there.  Go get them.  Now!

• Email This
• Print
• Comments
• Trackbacks
• Share Link

By way of update to a previous post, some are still occasionally hitting the jackpot on generic domain names.  At the recently concluded DomainFest auction, Tshirts.com sold for $1.2 million, and Quotes.com sold in the extended online auction last week for $1.15 million.  Granted, these sales are an order of magnitude less than Fund.com that once upon a time sold for just under $10 million, but in a sluggish economy, a seven-figure domain name sale is fairly rich. 

This week, DomainName.com goes up for auction (I am not making this up), apparently along with the entirety of the accredited registrar business found at that website, making it difficult to determine the FMV of the domain itself.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

  Marketing maven, strategist, visionary, and best-selling author Seth Godin spent a day at Pantages Theater in Minneapolis last Thursday, providing much food for thought among not only the attending crowd, but those following the dialogue on Twitter too.

The sushi and cupcake lunch Seth selected, and that we enjoyed, on the roof of neighboring Seven, was pretty nice too.

Days before his appearance in Minneapolis, Seth had blogged about how he was moving on since Linchpin, his life's work, would be his final book published in the traditional way.

Spending the entire day in the third row, on the aisle, at Pantages, I found Seth to be engaging, insightul, charming, witty, gentle, real, and quite humble. Well worth the price of admission.

If you weren't able to make it, or if you didn't take notes, this Twitter stream will probably do the job: #SethGodinMPLS.

By the way, here is what Seth had to say about the Minneapolis airport just today: Don't forget about color.

Finally, here are links to some of my prior posts relating to Seth Godin, in case you missed them:

1. Seth Godin on Subtlety: The Trademark Perspective
2. More Godin on Trademark? The Sequel
3. Seth Godin on Trademark?
4. Just Verb It? A Legal Perspective on Using Brands as Verbs: Part I
5. Dr. No and the Parade of Horribles (DuetsBlog inaugural post).

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Last month I came across this enormous, larger than life, banner advertisement hanging from the exterior of a casino on our way to the backwoods of Wisconsin.

Of course, this promotional piece took me back to my early childhood and called to mind my long lost enormous collection of Matchbox brand Hot Wheels toy cars and racetrack, but it appears there is no connection with the miniature toy vehicle maker -- the winning prize was not a toy replica, but a genuine 2011 Ford Mustang.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Last month, the United States Court of Appeals for the Ninth Circuit issued an opinion in the case of Toyota Motor Sales, U.S.A. v. Tabari that asked whether the domain names buy-a-lexus.com and buyorleaselexus.com used in connection with automobile brokerage services infringed Toyota's trademark rights in LEXUS. 

Conventional legal wisdom is that only the owner of a trademark has a right to use its trademark in a domain name in connection with related goods or services.  The back-of-the-envelope legal calculus is not difficult:  the domain names incorporate LEXUS in its entirety, and they are used in connection with auto brokerage services--services that are closely related to automobiles.  There is only one catch:  the brokers legally deal in genuine LEXUS vehicles.  Astute readers will recognize this fact as raising the issue of nominative fair use. 

The Court articulated its nominative fair use test this way:

In cases where a nominative fair use defense is raised, we ask whether (1) the product was "readily identifiable" without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.

While correct, I prefer how Steve has articulated the nominative fair use defense, which is established when:

1. The product cannot be readily identified without using the trademark;
2. Only so much of the trademark is used as is necessary for the identification; and
3. No sponsorship or endorsement of the trademark owner is suggested by the use.

I bring this up, because the Court's analysis began "by asking whether the Tabari's use of the mark was 'necessary' to describe their business."  In my initial read, I thought that the Court was beginning with the second element of the test, keying off of the word "necessary," but this is a restatement of the first element, which addresses the issue of necessity in using the mark.  The second element, while using the word "necessary," really addresses the scope of the use.

The Court recognized that it was not necessary in an absolute philosophical sense for the Tabaris to use buy-a-lexus.com or buyorleaselexus.com; it observed that they could have just as easily used autobroker.com or fastimports.com (Fast Imports being the Tabaris' d/b/a).  But here's the clincher:  "One way or the other, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that's nearly impossible to do without mentioning Lexus, . . . be it via domain name, metatag, radio jingle, telephone solicitation or blimp."  (It is fair to characterize this last quip as dicta.)

Lawyers and fans of legal minutiae can read after the jump for one other legal issue raised by this case that has me puzzled.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

Welcome to another edition of AlphaWatch (the next one in our queue), where we explore the reach of single-letter trademarks, this time focusing on the letter Q and the single-letter branding cues it might suggest to consumers:

Are you able to name the un-truncated version of this single-letter mark and brand?

My daughter could. The answer is below the jump.

• Email This
• Print
• Comments
• Trackbacks
• Share Link