DuetsBlog

Collaborations in Creativity & the Law

All-Star Tips To Avoid Infringement Litigation

Posted in Agreements, Branding, Counterfeits, Famous Marks, Fashion, Infringement, International, Trademarks, USPTO

Shoes are always in the news. From a fashion standpoint, Nike has made headlines this week, with a re-release of the Classic Cortez running shoe (aka, the Forrest Gump shoe) along with the second edition of the LeBronald Palmer.  And yes, the LeBronald Palmer is exactly what it sounds like, LeBron James creating a shoe inspired by Arnold Palmer. Or possibly by an Arnold Palmer that kept James refreshed during his stay in Miami.  But for those of us who like our News of Shoes to have a legal bent, Converse is there to help.

In October of last year, Converse laced up an impressive number of lawsuits against more than 30 different retailers and manufacturers, including big names like Ralph Lauren, Wal-Mart, H&M and others. We discussed Converse’s use of International Trade Commission proceedings as part of this offensive back in October. Since that time Converse has been slowly reaching out-of-court settlements with the parties, including Ralph Lauren, H&M (subscription required), Tory Burch, and others.

In an ideal world though, a company doesn’t need to file thirty lawsuits against its competitors in order to protect its brand. While the Converse example is a bit trickier because it involved protection of the trade dress of the All-Star shoe, here are three steps brand owners can take to help minimize the potential for infringement and counterfeits of their goods:

  1. Conduct a domestic trademark portfolio audit. Are all of your important trademarks protected in connection with all of the important goods? If you have well-known product lines, do you have registrations for these trademarks as well as the overall brand? If not, file new applications with the U.S. Patent and Trademark Office. It is possible others have developed, or could develop, legitimate and enforceable rights in confusingly similar marks.
  2. Record your U.S. registrations with the U.S. Customs and Protection Bureau. The cost is relatively cheap and the benefit can be substantial, especially if your products are susceptible to counterfeits (apparel, jewelry, and electronics in particular). If you have products manufactured abroad, you can provide this information and the Customs officials can identify questionable shipments at the ports – before they are distributed in the U.S.
  3. Conduct an international trademark audit. Do you sell your products overseas? Do you have registrations in these countries? Alternatively, if your products are manufactured overseas, do you have any protection in these countries? By protecting your trademarks in these countries, you can help prevent unauthorized products from leaving (or entering) these countries, too.

These three steps can’t prevent infringing products or counterfeits from ever entering the U.S. or other countries. Yet they can minimize the chances of a problem arising. In the unfortunate situation that the issue does arise, these actions will provide you with an expanded toolbox to address the issue with evidentiary presumptions in your favor and expanded remedies. In short, they’ll help you get off on the right foot.

The NORTH STAR Guides One to Trademark Issues

Posted in Trademarks, USPTO

Minnesota is known as the North Star State – L’Étoile du Nord.  The state of hipsters, unique dining experiences, bitter cold winters, gorgeous summer nights, and fantastic craft brewers also has an impressive craft cocktail scene.  One of its stars has been Johnny Michaels, formerly barman at La Belle Vie, a restaurant that is consistently recognized by the James Beard Foundation as one of the top in the nation.  Johnny filed a trademark application for NORTH STAR COCKTAILS for “alcoholic cocktail mixes”, which based on his website appear to be pre-mixed alcoholic beverages featuring rum, bourbon, rye whiskey, and tequila drinks.  For the moment, let’s set aside the fact that the the filed mark does not match with the example below.

Northstarcocktails

Incidentally, Johnny also wrote a bartending book of the same name, but note the difference in spacing.

NorthStarBook

Johnny’s trademark application for NORTH STAR COCKTAILS has been refused registration based on a likelihood of confusion with a registration for NORTHSTAR for “wine” by Ste. Michelle Wine Estates in Washington State.

NorthstarWine

This same registration was used to refuse registration of the following mark for “beer”:

NorthstarLight

Schell’s, however, filed an application for STAR OF THE NORTH for beer, which was approved and is registered.

This goes back again to the concept that we have previously discussed at least here about the USPTO’s practice to consider beer, wine, and distilled spirits to be related enough that consumers are likely to be confused as to source if similar marks are used on, for instance, beer by one company and distilled spirits by another.

In responding to the refusal, the applicant argued that the goods are unrelated, attempted to amend the mark to add “BY JOHNNY MICHAELS” (you generally cannot amend a mark after filing unless the amendment does not constitute a material alteration of the mark), and argued that the marks were different because of this additional wording.  The attorney also amended the identification of goods as follows: “pre-mixed alcoholic cocktail beverages, excluding beer and wine, derived exclusively from Johnny Michaels’s Copyright-Protected cocktail recipes, the content thereof limited to recipes combining distilled spirits with non-alcoholic additives.”  Much of this amendment unnecessarily limits the scope of the trademark protection to his recipes – diminishing the enforcement value of the trademark.  The Trademark Office has maintained the refusal arguing, essentially, that the cocktail mixes, even if they aren’t sold as including wine, may potentially be combined with wine, for example like a sangria.

Now back to the issue about the mark being different than on the labeling, Johnny also filed a new application for NORTH STAR COCKTAILS BY JOHNNY MICHAELS for “Alcoholic beverages, namely, digestifs; Alcoholic cocktail mixes.”  In maintaining the refusal of the prior application, the examining attorney stated that the refusal would be made with this mark as well, since the mark wholly incorporates the NORTHSTAR mark.  The only other mark on beer, wine and distilled spirits is STAR OF THE NORTH for beer by Schell’s.  Given the broad goods description, it looks like the Trademark Office will likely refuse registration yet again for this newly filed mark.

We have also discussed the right to use versus the right to register, where given particular branding decisions, other indications of source near the mark, and differences in channels of trade or consumers, the likelihood of consumers confusing the goods in use may differ from a determination of a likelihood of consumer confusion within the Trademark Office.   A review of one’s right to use necessarily considers other factors than what is generally before the Trademark Office when making a determination on the right to register.  It’s possible that the winery and Johnny Michaels could come to some agreement regarding use of the mark that reduces likelihood of confusion, and where the winery allows Johnny’s registration to co-exist with its registration.

Practically speaking, I am wondering if any of you think that consumers encountering the North Star Cocktails bottle and the Northstar wine would be confused into believing that the two were related or emanated from the same source.

Do you think the Northstar Light application should have been refused too, especially where “light” in the industry generally, if not always, refers to beer?

Does it matter at all if wine drinkers are a certain class of consumer, where bourbon or tequila mixed drinks may be consumed by a totally different class of consumer?  Their labels certainly seem to attract different consumers.  I’m pretty sure I would never mix any of his cocktails with wine.

Trademarks That Violate Public Policy

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association:

PTODay

John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham Act, that pesky provision of the federal trademark statute that bars registration of certain types of marks that violate public policy, including any trademark that “[c]onsists of or comprises immoral . . . or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .”

The “scandalous” prong of Section 2(a) has barred registration of vulgar marks like 1-800-JACK-OFF, MOMSBANGTEENS, SEX ROD, and BULLSHIT, to name a few.

The “may disparage” prong of Section 2(a) has been invoked to refuse registration of racially-slurring marks like THE SLANTS, HEEB, and SQUAW, and to revoke registration of the R-Word, as disparaging to Native Americans, because it was found to be improperly issued.

No doubt, there are critics of Section 2(a) that question the constitutionality of these statutory bars to registration — I’m alright withholding registration and use of ® — the federal registration symbol — next to those words, because doing so doesn’t prevent their commercial use.

I’m looking forward to hearing Ron Coleman’s perspective on Section 2(a), as counsel for The Slants, a case currently on appeal to the Court of Appeals for the Federal Circuit, and Jesse Witten, as counsel for Amanda Blackhorse and other Native American petitioners who prevailed against the Washington R*dskins last June.

Ron has provided a preview of his thoughts on his Likelihood of Confusion blog, in a three-part series scandalously titled “Indian givers” (parts 1, 2, and 3), suggesting the USPTO assumed this role in ordering the cancellation of the R-Word trademarks of the NFL professional football franchise located in the nation’s capital.

From my perspective, scandal aside, the title of Ron’s series is a misnomer, since the evidence of record in Harjo and Blackhorse showed that the R-Word was improperly granted registration in the first place, so I’m thinking, it looks far more like a windfall to the team than a taking.

In any event, sympathy for the team and other Section 2(a) losers is also unwarranted given the law for some seventy-five years: “The field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.”

Do you think that the registration prohibitions of Section 2(a) will withstand constitutional scrutiny? The Justice Department intends to see to it.

Super Mario in a 3D Printed World

Posted in Guest Bloggers, Mixed Bag of Nuts, Technology

- Derek Mathers, Business Development Manager, Worrell

Mario

 

 

 

 

 

 

 

 

 

 

We are at the brink of a very interesting paradigm shift in economic and legal history, where the fabrication of physical objects is becoming as democratized and accessible as computer processing. Decreases in the price of digital fabrication (3D printing) along with improvements in the mechanical capabilities and materials for the application have shown exponential adoption for personal and commercial purposes.

How do manufacturers feel about this? Nintendo is scared. The Tokyo-based company is currently opposed to the 3D printing of their characters, fearing that it would disrupt their physical sales, displacing their retail partners. However, some suggest that 3D printing may offer new possibilities for Nintendo to profit from the printing of their characters, at fraction of the cost of their current channels.

In this new model, it’s conceivable for Nintendo to recognize a staggering increase in profit from selling files of its characters, rather than physical products, completely negating the need for tooling, production, logistics, etc. In this arrangement a Super Mario action figure could be purchased via a secure product-streaming platform, hosted by Nintendo. From the customers’ perspective, he/she receives near-instant access to a customizable, manufactured-like product without a trip to a local retailer or Amazon.

Computer

 

 

 

 

 

 

 

 

This sounds like a wonderful future, but it’s not without its risks. As a parallel, it may be helpful to look at the growth 3D printing less like that of standard 2D printing, and more like the music industry of the last 20 years. If you recall, artists and studios lost billions as barriers to “music fabrication” were reduced from capital-intensive investments and expensive studio equipment to a laptop computer. On top of that we saw a cataclysmic wave of piracy that nearly engulfed the industry.

Then the business model changed. Digital music services such as Spotify and Soundcloud now provide on-demand access at a reasonable price point, while simultaneously eliminating piracy.

Exposed to same pressures, the key for the world of physical products is likely to be a similar ecosystem, where digital services provide verified, high-quality 3D files for home and commercial printing.

Taking a Jaunt Down Product Naming Lane

Posted in Articles, Branding, Technology, Trademarks

We’ve made a lot of friends in the naming community over the last six years, special congrats to one of them, Anth Shore over at Operative Words, whose work in naming Jaunt was recently featured in a New York Times article called: The Weird Science of Naming New Products.

It is a fascinating inside look at the art and science of naming, definitely worth reading, enjoy!

Here are some of Anth’s previous guest posts here on DuetsBlog, thanks Anth for sharing your wisdom:

Love the word Jaunt, do you think it will be verbed?

Hope You Didn’t Get A Longchamp Bag For Valentine’s Day

Posted in Counterfeits, Famous Marks, Fashion, Infringement, Law Suits, Trademarks

Now I do not mean to tell you that you should return an authentic Longchamp bag from the shops in Paris or the famous bags sold in boutiques stateside.

longchampBut, if your sweetheart bought you a bag from Bed Bath & Beyond (“BBB”) you may have a bag manufactured in China by Capelli New York or another entity. The week before Valentine’s Day, S.A.S. Jean Cassegrain located in my favorite city in the world—Paris—filed suit along with its stateside counterpart Longchamp USA, Inc. against BBB and two other entities. The Longchamp makers alleged that BBB has knocked off its famous bag. The Longchamp makers claim the style 1623 products (example shown here) have become distinctive and acquired secondary meaning allowing it trademark protection.

Handbags have long been a fertile ground for trademark protection. For example, Chanel, Coach and Burberry have trademarks for marks associated with their distinctive purses and accessories.

burberry chanel

The Kelly bag named after Princess Grace Kelly was all the rage in the Thirties. The bag shot up in popularity when the iconic picture where she attempted to cover her baby bump with the Hermės Kelly Bag hit the papers.

In the lawsuit filed last week, the Longchamp makers brought additional claims against BBB including patent infringement claim, false designation of origin, and common law competition. BBB and the others will serve their answer in a couple of weeks.

Crafting an Effective Fair Use Defense

Posted in Advertising, Dilution, Fair Use, Famous Marks, Food, Infringement, Marketing, Trademarks

The beer industry is rife with trademark legal issues. We’ve discussed quite a few here, including disputes over brewery names, attempts to register as a trademark the design of a beer glass, or the longstanding issue of whether all alcoholic products are related for likelihood of confusion purposes.

Because of the importance of the beer industry in the trademark world, I am required to purchase and sample the numerous offerings of the local breweries here in Minnesota and Wisconsin. Last weekend, while on one of these work-related trips, something caught my eye at the store:

Craft Singles

These “singles” – also known as “bombers” – are 22 ounce bottles that are popular among smaller breweries.

For those who grew up in households of organic and unprocessed foods, the refrigerator plays off of the classic cheese slices shown below:

Kraft-American-Singles-x-600

Funny, I don’t remember my parents making me “grilled cheese product sandwiches,” but apparently, that’s what they were.

The use appears to be a parody of the Craft Singles brand. While parody isn’t a defense to trademark, it is another way of saying that there is no likelihood of confusion. We’ve discussed other potential parodies here, such as the Subway parody of ZOMBIES eat flesh, Verizon’s parody of the De Beers shadow commercials, and others.

The analysis for a parody is largely the same as any other product: is the use of the mark likely to create confusion or mistake as to the source, sponsorship, or some other connection with the owner of the other mark. Although the marks are essentially identical, the goods appear unrelated. I am unaware of any evidence that consumers are apt to presume that beer and cheese, sorry, cheese product, emanate from the same source. Well, other than beer cheese soup as a “complementary use. ”

What do you think, effective parody? Cause for Kraft’s concern? Or do you just really want a beer and a grilled cheese right now?

BRANDING FOR STARTUPS

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

- Mark Prus, Principal, NameFlash

I’m often hired for name development by entrepreneurs who are starting a business. However, many founders take the “do-it-yourself” approach to name development. Sometimes that works for them, but all too often they make a horrible mistake that is easily preventable.

My basis for this conclusion?

Here are a few of the names chosen by startup companies last year (data from CrunchBase.com):

  • Zairge
  • Xwerks
  • Synthorx

I defy you to guess what the business is selling. Go ahead…try…I’ll wait. Can’t do it? I’m not surprised. You won’t get a clue from the name, and unless you already know about these companies you are taking a wild guess.

I’m not picking on these companies for their names because there are many others with similarly confusing names. For the record, Zairge (zairge.com) is a mobile property management system that simplifies and accelerates productivity for the owner, employee and guest. Xwerks (xwerks.com) offers elite nutrition for elite athletes. Synthorx (synthorx.com) is a biotechnology company using synthetic biology to synthesize solutions.

While I have no information about how the names for these companies were developed, I strongly suspect they may have fallen into the “.com conundrum.” Many startup companies I work with insist on having a one word name with one or two syllables that has a .com website available. That virtually guarantees the use of nonsensical clusters of letters that result in a name without relevance. Letting the availability of a .com domain drive your name selection is a huge branding mistake.

Consider these names of these other startup companies from CrunchBase.com:

  • Beep
  • Shout
  • Swish

These three have nice, short, memorable names. They are common words that are easy to pronounce, read and spell. Beep is a startup that sells a device that facilitates synchronized music in every room. Shout builds marketplaces for passionate people. Swish offers mobile payment solutions. In each of these cases, the company has chosen a relevant name that builds a brand around the benefits that their product offers. But because they chose a common word they don’t have the “exact word” .com address.

So which is better: Having a simple, easy-to-pronounce name that has meaning, or having a name that gets you a one word .com address? My 25+ years of branding experience tells me that a name that has meaning is infinitely more important than a name chosen because you can get a single word .com address.

You can ALWAYS get a .com address that makes sense. The websites for Beep, Shout and Swish are: are www.thisisbeep.com, http://useshout.com, and http://swishme.com. The companies have found a clever way to get a meaningful name AND a relevant website.

You can do the same. Add “my” or “the” to the front of your name or add “online” or “world” to the end of it. If you need other ideas give me a shout and I’ll help.

But please don’t pick a name that looks like a random selection from alphabet soup just because you can get a .com domain. You will only create confusion and that is never a good thing.

Samsung Boards Brandverbing Bandwagon

Posted in Advertising, Articles, Branding, Genericide, Loss of Rights, Marketing, Technology, Trademarks, USPTO

Samsung appears to be the most recent brand to board the brandverbing bandwagon with its Galaxy Note 4 advertising campaign, asking the critical question: Do You Note?

SamsungDoYouNote

Samsung has federally-registered in the U.S. the trademark GALAXY NOTE for smart phones, mobile phones, and tablet computers — note the absence of a disclaimer of NOTE, meaning that term is believed to be distinctive, not descriptive or generic for the goods (at least for now):

GalaxyNoteAnd, Samsung’s DO YOU NOTE? trademark application publishes for opposition tomorrow.

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

Get to the Chopper: A Service Mark on a Helicopter?

Posted in Advertising, Branding, Marketing, Non-Traditional Trademarks, Product Configurations, Television, Trademarks, USPTO

When a business uses its trademark in connection with an ordinary billboard advertisement, should it try to register the billboard as another trademark unto itself?  I venture that nearly every trademark attorney would say no.  But what if the billboard was a helicopter?

MedLegal Network, out of Santa Monica, California, promotes personal injury and worker’s compensation legal services for Spanish-speaking consumers under the mark GRUPO MEDLEGAL, and also uses a Lion Design.   To advertise its services, MedLegal has sponsored traffic helicopters for Spanish-language television stations.   (I am reminded of the Sklar Brothers’ classic stand-up routine on “Chopper Four.”) They also feature these helicopters in television advertisements, as shown in two separate YouTube videos.

They’ve  already registered the MEDLEGAL word mark and have a pending application for a Lion Design, so what’s next?  Well, look no further than Application Serial No. 86/489,863, for” general business networking services” and “providing attorney referrals,” among other services.

According to the application, “The mark consists of the words GRUPO MEDLEGAL and a stylized depiction of a lion as placed on a helicopter.”   As the dotted lines indicate, no claim is made “to the specific shape of the helicopter.”

Add another to the file of non-traditional trademarks.  But is it registrable?  In order to register this mark for services, MedLegal must provide a specimen must “show[s] an association between the mark and the services for which registration is sought.”  Showing off the mark itself is not enough — the specimen needs some additional material referencing or describing the services.  Here, MedLegal provided four specimens — two screenshots of the aforementioned YouTube videos, and two shots of the helicopter itself, with MedLegal’s phone number displayed on the fuselage.

Is this an adequate specimen?  The videos themselves do appear connect the actual helicopter to MedLegal’s services (at least to a non-Spanish speaker).  And I’ve seen the USPTO accept far worse specimens.  But I wouldn’t be surprised to see this application receive an Office Action from a perplexed Examining Attorney.

I’m also left to wonder: what’s the benefit of this registration?  This is a very specific, and therefore narrow, mark.  A registration provides some protection for the GRUPO MEDLEGAL word mark, but is not nearly as effective as a standard character mark.  It will likely only prevent others from using wording similar to GRUPO MEDLEGAL and a Lion’s head design…on a helicopter.  And MedLegal is now obligated to continue to run advertisements featuring the helicopter in this configuration to support its use of the mark in future maintenance filings.

In essence, MedLegal isn’t much better off with this registration compared to the registrations they own now.  Their current Lion Design application, should it mature to registration, would be enough to go after a confusingly-similar mark, whether it was on a helicopter, a billboard, or a space ship.

The inimitable John Welch frequently asks on the TTABlog, “WYHA?” (Would You Have Appealed?).   After reviewing this mark, I’m left to wonder: Would You Have Applied?