Collaborations in Creativity & the Law

Sorry, Apple, Assignment of ITU Applications Isn’t MAGIC

Posted in Advertising, Branding, International

Another installment of Apple surveillance: it appears the tech giant has enlisted a shell company to file trademark applications for its newest products. Problem is, they might be stuck there.

On October 27, Apple will hold a press event at its Cupertino, California headquarters, presumably to introduce new Macintosh computers. One rumored feature of the new MacBook Pro line of laptop computers is a touchscreen strip running along the top of the keyboard, which can change based on the application currently running.


Apple fans, ever eager to find the latest scoop on new products, have done their homework. Brian Conroy, an Irish trademark agent and solicitor, uncovered various foreign filings for the mark MAGIC TOOLBAR on his website, “The Trademark Ninja.” But the application for each application is a company named “Presto Apps America LLC,” and not Apple.

This includes a U.S. application in Class 9 identifying “Computers; computer hardware; computer software; computer peripheral devices; computer display screens and keyboards; electronic interfaces for use with computers” and claiming intent-to-use in U.S. commerce and priority based on a foreign application (in the combined jurisdiction of Belgium, the Netherlands, and Luxembourg – BeNeLux).

Conroy concludes this is a masquerade:

The [sic] applied for the Global protection THE DAY before the last day they could, and have applied to Non-Paris Convention countries at the start of this month.

By my calculations, just the outlay for this trademark application comes to €16,000

NOW. Because Apple already has trademarks for

  • Magic Keyboard
  • Magic Mouse
  • Magic Slate
  • Magic Trackpad

They would almost certainly be able to stop any other company applying for the trademark ‘Magic Toolbar’, on the basis it’s similar to their existing trademarks and likely to cause confusion.

So, another company would have to be 100% certified insane to spend €16,000 in outlay for a trademark application that someone with the clout of Apple was almost certain to be able to object to and defeat. And that’s the main reason that I’m putting my neck on the line and saying that ‘Presto Apps America LLC’ is actually Apple.

This may well be Apple trying to be clever, and conceal its new feature’s brand name – but what happens if it unveils the MAGIC TOOLBAR? Presumably, the cat is out of the bag, and Apple will want to assign the application to Apple, Inc. This may be more difficult than it seems – unlike trademark registrations, which are relatively straightforward to assign, intent-to-use trademark applications must be assigned “to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing,” according to TMEP § 501.01(a):

In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b),  the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c)   or a statement of use under 15 U.S.C. §1051(d),  except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing.  Section 10 of the Trademark Act, 15 U.S.C. §1060; 37 C.F.R. §3.16.

This rule is made to prevent “horse trading” in ITU applications, such as applications filed merely to block a competitors mark or applications meant merely as “placeholders.” If an assignment does not meet these requirements, the trademark application – or any resulting registration – can be cancelled.

In other words, Apple would need to show Apple, Inc. acquired not just the trademark, but also the entire “business” of Presto Apps America LLC. It’s not immediately clear that there is any business associated with Presto Apps America. It is far more likely scenario that Presto Apps America is just meant to be the sort of “placeholder” this rule is designed to work against.

If the MAGIC TOOLBAR turns out to be real, I’ll be interested to see how Apple approaches the issue of ownership for these trademark applications.

To Search or Not to Search

Posted in Mixed Bag of Nuts

Inditex – the parent company of fashion giant Zara – sued a small New York-based brand over the use of the mark Zara Terez (“ZT”). Zara Terez was launched in 2008 by friends Zara Terez Tisch and Amanda Schabes. The complaint alleged that “ZT’s trademark is likely to create, and has created, confusion in the marketplace as to the affiliation between the parties and is likely to dilute, and has diluted, the Zara trademarks.” ZT filed a trademark application with the United States Patent and Trademark Office, but the application was refused registration based on Inditex’s prior registrations for ZARA.

Although not alleged in the complaint, one has to assume that ZT did not conduct even a preliminary search of the USPTO’s online database prior to filing the application for ZARA TEREZ. Rather, the owners of ZT poured about 7 years to money and effort in promoting and building goodwill in their brand. This aspect of rebranding is often over shadowed by the actual costs of having to change signage, reprint letterhead, etc., which in Zara Terez’s case may have been manageable. But the cost to re-educate consumers about a brand can be much more involved, and is a cost that could have been avoided with even a basic search of the United States Patent and Trademark Office.

A Handy List of Star Wars References that Might Get You Sued

Posted in Almost Advice, Dilution, Fair Use, Famous Marks, Infringement, Trademarks

With its purchase of Lucasfilms and the Star Wars franchise, Disney did not wait long to begin exploiting the works. Episode VII: The Force Awakens was released on Dec. 18, 2015 and grossed more than $2 billion at the box office. At the risk of stating the obvious, that’s a lot of money. More is on the way as the new Star Wars Rogue One is set for a December 16, 2016 release date and Episode VIII is (currently) scheduled for a December 15, 2017 release.

Even before Disney’s purchase, Lucasfilm was known to be very active with enforcement of its trademark rights in order to maintain the value of its various brands. Disney appears to be continuing this approach, as confirmed by a recent lawsuit filed by Lucasfilms against a lightsaber school. October 14, Lucasfilm sued Michael Brown, the owner and operator of New York Jedi Lightsaber Academy. The Lightsaber Academy is (probably) exactly what you think it is, a dojo for individuals to learn and perfect their lightsaber skills. The website offers a class schedule,  information or instructor certification, and t-shirts available for sale. The page also uses variations of the Rebel logo throughout the website, as shown in the website screenshot below:

Lightsaber Academy


Lucasfilms’ complaint (available here) alleges trademark infringement, false designation of origin, trademark dilution, cybersquatting, and related claims under state law. The defendant’s likely defense will be to claim that this is merely a “fair use” of the term lightsaber. However, in order to be a fair use the plaintiff’s mark must have a descriptive, non-trademark meaning and the defendant must be using the mark in the descriptive sense. While a “lightsaber” may have descriptive meaning within the “Star Wars” universe, it does not have any descriptive meaning in the “real world” (Merrian Webster online agrees). In fact, Lucasfilms has owned a registration for the LIGHTSABER trademark in connection with a “toy sword” since October 23, 1979.

If you’re surprised to learn that using “lightsaber” can get you sued, you’re probably not the only one. You may also be surprised to learn that this isn’t the only “word” from the Star Wars lexicon that could land you in a Great (Legal) Pit of Carkoon (you know, the pit from Return of the Jedi). Lucasfilms even has a registration for a mark somewhat similar to the LIGHTSABER ACADEMY, namely, JEDI TRAINING ACADEMY. In an effort to help avoid use of a Lucasfilm registered trademark, this mark, along with a number of other surprising trademarks owned and registered by Lucasfilm, are included in this handy list below:

  1. THE FORCE (link)
  2. DROIDS (link)
  3. JEDI (link)
  5. ROGUE LEADER (link)
  6. BOUNTY HUNTER (link)
  7. STARFIGHTER (link), X-WING (link), TINY DEATH STAR (link), and other vehicles
  8. EPISODE 1 (link)
  9. The names of numerous characters (Yoda, Princess Leia, Darth Vader, C-3PO, R2, D2, etc. – even the popularly maligned JAR JAR BINKS)
  10. Types of creatures (Tusken Raider, Ewok, Wookie, etc.

Please note that this is not a complete list. There are numerous other characters, items, and other words in the Star Wars lexicon that Lucasfilms may not want you to use. To be fair, its important for Lucasfilms to protect most of these marks, as it is far too easy for third-parties to capitalize on the significant investment and success of the Star Wars franchise. However, one other trademark that I could quibble with are the registrations for the MAY THE FOURTH BE WITH YOU (link) and MAY THE 4TH BE WITH YOU (link). In case you are unaware, this phrase is used as part of the originally un-official “Star Wars Day” on May 4th.  However Lucasfilms may have registered the mark as “defensive” measure, intended to prevent others from obtaining rights in the mark, as I am unaware of any enforcement actions taken by Lucasfilms.  For the sake of the fans, let’s hope it stays that way.


The Key Qualities that Companies That Succeed Have in Common

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

– Jason Sprenger – President, Game Changer Communications

Last month, my firm (Game Changer Communications) celebrated its four-year anniversary.  As I often do at times like that, I reflected on a lot of things about my business – successes, challenges, key milestones and more.  This particular anniversary also got me thinking about the qualities I most value in a client.  Over 4+ years, what are the characteristics of a company that make them most likely to succeed in administering and executing a PR program – or succeeding and thriving in general?  The more I thought about it, the more parallels I saw between these traits’ impact on success in PR and success in general across the business, whether it’s intellectual property law, or lead generation, or finance, or pretty much anything else.  And the more I realized that companies with these qualities in place are the ones best positioned for short and long-term success.  So I think they’re worth submitting here for your consideration, and to encourage you to look for them as you enter into your business relationships.

Here are some of the most essential qualities I identified:

  • Clear, crisp value statements. The companies who succeed are often the ones who can most clearly and succinctly explain who they are, what they do and what makes them stand out from the rest.  But then they take it to the next level too, tying that back to the wants and needs of their customers and proving to them why they truly need them.  This of course pertains to a company’s products and/or services, but it also relates to culture; it’s one thing to be the best, it’s another to assert that to the marketplace in a way that resonates with your stakeholders and comes across as confident yet not arrogant.
  • An openness to new ideas and ways of thinking. As so many wise people have said, the only constant in our world is change.  I’ve seen many a chief executive, a marketing team and/or a company be so set in their course that they don’t listen to a word I say, or they discount their team, or they ignore trends in the marketplace that affect their business and their stakeholders.  It’s led me to believe that the abilities to listen well and adapt are as essential to success as anything.  Whether or not my clients ultimately act upon the counsel I offer, I always appreciate when they’re at least willing to listen and take my perspective into account.
  • Good financial management. You’d be shocked how many times in four years I’ve not been paid on time, or not been paid at all.  Beyond the obvious considerations of ethics, decency and making ends meet, these sorts of actions make an outside partner question their worth to the organization that’s hired them.  Even more, cash flow and/or other financial issues often compound, pitting vendors against one another and ultimately creeping into everyday work.  We’re always at our best when we’re focused as much as possible on the work we’re doing, and not these kinds of things.
  • A human element. People make buying decisions on emotion and relationships.  As such, the more a company, product or service can be humanized – or have the message being delivered by actual people with actual faces – the more likely it is to stick and thrive.  The more charismatic, genuine people who can act as spokespeople, the better.

I’d love to hear your thoughts on other qualities that lead to productive, mutually beneficial vendor relationships – and that make for successful businesses.  Thanks as always for reading and participating!

Houston (College of Law) Has a Problem

Posted in Agreements, Articles, Branding, Civil Procedure, Goodwill, Infringement, International, Law Suits, Loss of Rights, Marketing, Trademark Bullying, Trademarks


A trademark problem, that is, as reported by the Texas Tribune on Friday of last week.

Lest you be fooled by the above reference to Houston College of Law being established in 1923, the name has only been around since June of 2016.

In fact, when South Texas College of Law rebranded to Houston College of Law in June, the University of Houston Law Center jumped into federal court with both boots and within five days of the announcement, seeking a preliminary injunction, to temporarily stop the use while the case proceeds through the court system to an eventual trial.

Last Friday the federal district court granted University of Houston Law Center’s request for a preliminary injunction, in a detailed 42-page decision, holding:

There is a substantial likelihood of success on the merits of UH’s trademark infringement claim under the Lanham Act: at least two of UH’s marks, “UNIVERSITY OF HOUSTON” and “UNIVERSITY OF HOUSTON LAW CENTER,” are eligible for protection; UH is the senior user of these marks; and there is a likelihood of confusion between UH’s marks (both individually and collectively) and Defendant’s use of “HOUSTON COLLEGE OF LAW.”

And, herein lies the problem for South Texas College of Law: Does it really make sense to litigate for a year or more to try and convince the court there really is no likelihood of confusion, after it already has ruled that University of Houston Law Center has established a “substantial likelihood of success on the merits” of its trademark claim?

South Texas College of Law appears to believe so, and is prepared for another lengthy legal fight, so stay tuned for more as this case proceeds.

The court has scheduled a hearing for Wednesday to determine a “feasible timeline” for South Texas College of law to comply with the injunction, and to determine whether the University of Houston Law Center will need to post a bond, and if so, in what amount, in case it is later determined that the grant of the injunction was not warranted.

As a marketing type or brand manager, suppose you faced this kind of problem, after running into a legal brick wall and being ordered to cease using the chosen new brand name, under what circumstances would you fight in the court system for a year or more for the legal right to hopefully change the court’s mind so you can change your brand name once again?

Is this why many trademark disputes resolve by way of settlement after the grant or denial of a preliminary injunction?


Above the Law covers the story, here.

Trademark satire is no joke to the City of Atlanta

Posted in Fair Use, Mixed Bag of Nuts, Social Media, Squirrelly Thoughts

Check out this City of Atlanta Facebook page.  The funny thing is that it’s not run by the City of Atlanta.  Although the posts are titled “City of Atlanta” and use the City’s official seal, the page consists of satirical humor composed by Ben Palmer, an Atlanta resident.  Although the first post was only a couple weeks ago, the page is quickly growing in popularity, with over 27,000 likes as of today.  For example, see the most recent post by the “City of Atlanta” about building another football stadium:

Atlanta Facebook Satire Photo1

Here are a couple other examples:

“We have invested 90 million dollars in a trolley system that will allow citizens to travel 10 whole blocks in a total of 3 hours.”

“Our homicide investigation unit has relocated to the inside of Kroger, next to the sample lady. Please be mindful of this as you do your grocery shopping.”

Two days ago, the actual City of Atlanta informed Ben Palmer that it did not find his page very funny.  More specifically, the City sent a demand letter to Mr. Palmer, informing him that the City had requested Facebook to remove any use of the City’s seal.  The City’s seal is a federally registered trademark (Reg. No. 3089604):

City of Atlanta Seal

The Facebook page uses a modified version of the seal, with the addition of a stylish top hat and a monocle:


The City’s demand letter stated:

“The owner of the satirical City Facebook page was not authorized to use the City’s trademark. We are working with Facebook to remove the City Seal and any other information on the Facebook page that might confuse or mislead the public into believing that the page or its contents represent the positions, policies or practices of Atlanta City Government.”

Mr. Palmer responded with some more tongue-in-cheek satire on the Facebook page, referring to his commonly invoked criticism of the city trolley:

“If you make a satirical Facebook page mocking the city of Atlanta, you will be charged with a serious crime that is punishable up to 3-5 years in prison or be force[d] to ride the trolley.”

In the two days since the City’s demand letter, Mr. Palmer has continued to use the City’s seal.  If the City decides to file an infringement lawsuit, it will raise interesting questions regarding satirical or parodying uses of trademarks.

In some courts, trademark parody or satire is not a defense per se to trademark infringement, but rather something to consider in the likelihood-of-confusion analysis.  For example, one court held that a trademark parody of baseball cards did not infringe because the effect was “to amuse rather than confuse,” and no one would mistake the Major League Baseball Player’s Association (MLBPA) “as anything other than the targets,” not the origin, of the parody cards.  Cardtoons, L.C. v. Major League Baseball Players’ Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). Another court has stated that “[t]he strength and recognizability of the mark may make it easier for the audience to realize that the use is a parody and a joke on the qualities embodied” in the trademark. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002).  See also, for example, MasterCard Int’l Inc. v. Nader 2000 Primary Comm., No. 00 Civ. 6068, 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004) (concluding that Ralph Nader’s “priceless” political ads did not infringe MasterCard’s trademarks).

Other courts apply a parody/satire distinction similar to the fair use analysis in copyright cases (see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–78 (1994)), under which courts may hold that parodies are less likely to infringe a trademark than satires.  Some commentators have criticized the creep of the Campbell copyright fair use test into trademark case law, stating that “reliance on Campbell to aid trademark infringement analysis tends to obscure the ultimate issue in any infringement case: the likelihood of confusion.”  Bruce P. Keller & Rebecca Tushnet, Even More Parodic than the Real Thing: Parody Lawsuits Revisited, 94 Trademark Rep. 979-1016 (2004).  Keller and Tushnet further explain:

“[T]he parody/satire divide is unhelpful in addressing the central question in trademark infringement cases: whether the defendant’s use is likely to cause confusion among a substantial number of consumers. If a joke is recognizable as a joke, consumers are unlikely to be confused, and whether the butt of the joke is society at large, or the trademark owner in particular, ought not to matter at all.”

Here, it appears that Mr. Palmer’s Facebook page could have elements of both parody (modifying the City’s seal by adding a top hot and a monocle) and satire (making humorous criticisms of the City through the posts), which could lead to an interesting analysis if a lawsuit arises.  Stay tuned to see how this situation develops.


The Note 7 – Taking Samsung Down in Flames?

Posted in Branding, Mixed Bag of Nuts

I own a Samsung phone. Thankfully not a Note 7. My prior phone was a Samsung as well. Will my next one be a Samsung?

Samsung Fire

It’s safe to say that the Note 7 situation has been pretty disastrous. On the way back from a wedding last month, I heard an announcement made that hadn’t been made on my way out just a few days earlier. Each time passengers were boarding a flight, the gate attendants would announce that the FAA required all Note 7’s to be powered down throughout the entire flight. It’s never good when your product is suddenly singled out as being potentially unsafe for commercial flight. Samsung’s stock price promptly dropped a bit further.

The recalls were underway and replacements making their way into consumers hands. Then one of those replacements burst into flames on a plane in Louisville as the phone’s owner was powering it down. Then more stories about the replacements catching fire. Now Samsung has permanently halted production of one of its flagship phones and is working to provide either full refunds or a partial refund and a different Samsung phone.

Now it’s important to say that, of the over million Note 7 phones that have made it into consumers hands, there have been fewer than 100 fires to my knowledge. That’s not insignificant, but it is a very small percentage (on the flip side, the phone has only been out since August). And ethically, Samsung is doing the right thing. They aren’t throwing in behind Takata, Volkswagen, and General Motors in recent years.

Regardless there’s a huge cost. Not only are there roughly 2.5 million of these phones already made that will be going in the trash (hopefully they’ll be recycling as much of each phone as possible), but the brand is sure to take a hit as well. That hit is beyond just the reputational damage of selling a phone that catches fire and the incompetence (perceived or real) of issuing a replacement that catches fire.

Here are a few thoughts on why this is such a huge problem for Samsung even though they are doing their best to make things right:

Remember Blackberry?

Blackberry went from being a top seller to essentially nothing in the span of a few years. There’s no room to rest on your lead. The cell phone industry is notoriously cutthroat and fickle. Everything happens fast and there is not much time to recover. Going into this Samsung had the largest global market share of any smartphone company for the last three years running. That might help soften the blow, but big trees fall hard. Blackberry is a case in point.

Botched Recall.

Consumers of cutting edge tech products usually expect a few bugs and are willing to ride things out while the kinks are worked through. Spontaneous combustion usually isn’t one of the bugs you expect, but Samsung did the right thing and recalled the phones to fix the issue. A recall may be an inconvenience, but done quickly and efficiently, it may actually build credibility.

The problem is, they didn’t fix the issue. Their customers went the trouble of dealing with the recall, saving data, perhaps going without a phone for a few days, only to find the replacement was potentially just as problematic as the original.

There are obvious pressures to get the issue solved quickly, but you lose a great deal of credibility and goodwill when you say you’ve fixed the problem when you haven’t. The problem with the replacements may be the same distinct from the original problem, but that doesn’t matter when the symptom is a fireball you most likely don’t want. To the public, it looks like you were careless.


The Note 7 operates on the Android system, as do a plethora of other phones. iPhone owners purchase Apple operating system and the seamless connection to their other Apple products along with the iPhone itself. They may be more willing to wait for a solution, take an less recent upgrade, or wait for the next iPhone product release. When it comes to phones, Samsung doesn’t have that same sort of economic moat . That brings me to the next point:

Immediate Availability of Other Flagships.

Any number of flagship phones are available right now and operating the Android system. Google just announced its new Pixel phone, for one. There’s no need to wait around or take that slightly older upgrade unless you just absolutely love Samsung products, hardware, layout, etc. Just check out the competition.

Nature of the Flagships.

The R & D budget tends to focus on the flagships. The flagship phones get pretty drastic overhauls every couple of years and innovations are incorporated every year, kind of like the car industry in the 50’s and 60’s where you could tell a model year by the back up lights. The designs and innovations that make it into this year’s flagship flow down through the company’s other series in the following years.

This is a particular problem for Samsung as it appears that they can’t reproduce the problem and aren’t sure exactly why the Note 7 offers the unexpected bonus feature of also being a portable fire source. This has the potential to dam, or at least slow, that flow of intellectual property into Samsung’s other offerings. If some suspect features were already incorporated into other designs, it may halt the production of that series.

That’s more bad news because the reputational harm may not be limited to the here and now. Some of next year’s customers may choose a competitor, not for fear of their phone catching fire or a lack of faith in Samsung, but because those other phones might not get the planned upgrade, might be missing certain features that others offer, or might not be out at all.

Phone Cycles.

Most people hold onto their phones for a couple of years before upgrading unless they have to have the latest or happen to drop their current phone in a puddle. These phones cost hundreds of dollars and Samsung may be missing out on a large segment of the current cycle. The flagships tend to be the real money makers too, so by pulling the flagship they’re really taking an economic hit this cycle.

Moreover, most smartphone users seem to either go for the hottest new thing or stick with brand they know and are comfortable with. They are not particularly loyal (iPhone excepted), but we are creatures of habit. Those purchasers that Samsung loses this cycle may, or may not come back next cycle. If they’re happy with whatever device they purchase, they may just buy the upgraded version next time around rather than return to Samsung. This is a huge opportunity for Motorola, Sony, Huawei, LG, Apple, etc.


I like Samsung products, and I understand that the pressures to innovate in the smartphone industry are exceedingly high. I don’t think Samsung was particularly careless, just that they pushed a little past the limit of their technology. But maybe the limit is really only clear in hindsight.

I’ve always considered my options when buying a new phone, and I will when I purchase a new one next year. I’ll consider Samsung like I have in the past. It just might be the best brand next year. I know all smartphone manufacturers will be taking second looks at their products, but I’m fairly certain Samsung will be taking fourth and fifth looks at theirs. Samsung will still be around in a year, no doubt. But they may not be at the top, and their future may be a little more questionable.

Four T’s at Four: What Breweries Need to Know About Their IP Before They Consider an Exit

Posted in Almost Advice, Branding, Idea Protection, Marketing, Non-Traditional Trademarks, Taste, Trademarks

“Forties at 4” was a time-honored Friday tradition among my engineering classmates in college.  After our last class, several of them would purchase Miller (if we could find it in a 40 oz) or Old English or some other malt liquor that provided the most bang for the buck.  Cracking one open always signaled the beginning of the weekend.

With the growing number of brewery acquisitions, not to mention yesterday’s approved merger of the two largest brewing companies in the world, many breweries may be thinking about the beginning of their weekend – an exit strategy.

An acquisition of a brewery can provide significant marketing, production, and sales resources otherwise unavailable to the brewer.  They can expand a brewery’s brand availability and marketshare.  They can free the founders up to return back to whatever brought them to start that home brewery in the basement without worrying as much about the day-to-day operations.  I often hear from brewers that they love what they do, but “it’s starting to feel like work, and I didn’t anticipate feeling like that.”

2015 saw 19 acquisitions of craft breweries worth $13 billion, and there’s no doubt that number will be even higher in 2016.  When valuing companies for craft brewery acquisitions, besides their balance sheets, there is a clear emphasis on the strength of the brand and making sure the brewery’s intellectual property is in order.  Every brewery has essentially the same equipment, the same assets, and the same costs.  It’s the brand and the quality of the beer that can push it ahead of similarly positioned breweries, attracting an acquirer.

When it comes to most breweries’ intellectual property, there are Four T’s that breweries, or any craft beverage manufacturer for that matter, should be thinking about to best position themselves for a strong valuation in an acquisition when the time is right.

  1. Trademarks are clear – Have you conducted a proper clearance search of your brewery name, your flagship brews, and any specialty brew names?  Before releasing any new beer, search at least the U.S. Trademark Office Records, the internet, and beer resources such as Untappd or BeerAdvocate to see whether the mark is available.
  2.  Trademark registrations for at least your brewery name and your flagship brews.  Have you filed federal trademark applications to protect your brands nationwide, even if your sales territory has been more limited?  Are you enforcing the scope of your trademark rights in your brands to continue to keep your rights broad?
  3.  Trade dress – Maybe it’s a consistent theme in your product packaging.  Or the unique way you serve a flight of beer in your taproom.  Distinctive trade dress can complement a creative set of trademarks, and can be protectable itself.
  4.  And, most importantly, Taste.  “Quality” has been a strong focus of brewer’s guild and Brewer’s Association presentations over the past few years.  Consistently brewing high quality beer is important for your brand.  Are you taking the necessary and appropriate precautions to ensure that your beer recipes remain trade secrets?  Have you made sure in any employment agreement with a brewer that the brewery owns the recipes?  Are you investing in the proper equipment and necessary training for your staff to ensure high quality beer production?

Some breweries decide to forego the expense of properly protecting the brand initially, making it potentially less attractive for an acquirer and without as big a payoff when they may be ready to make this transition.

Lawsuit Involving IP Protection for a Lamp

Posted in Articles, Civil Procedure, Copyrights, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Trademarks

Last week a federal lawsuit was filed in Minnesota by Blu Dot to protect alleged intellectual property rights in the floor lamp shown on the left below. The accused “strikingly and confusingly similar” floor lamp shown on the right below is sold by Canadian Rove Concepts:


So, what type of intellectual property do you suppose is being asserted here?

The “strikingly similar” allegation is a hint that copyright infringement is being alleged, although Blu Dot admits it hasn’t yet obtained a copyright registration, which used to be considered a predicate to the court having jurisdiction over a copyright claim. Instead Blu Dot filed for copyright registration only the week before filing suit in Minnesota federal district court.

Given that delay, what is clear about Blu Dot’s copyright claim is that waiting to seek copyright registration will cost it any hope of obtaining statutory damages or attorneys fees against Rove Concepts, even if it has a copyright and even if it was infringed. What remains unclear is whether Blu Dot actually has a copyright and whether it will be able to obtain the necessary registration to sustain a copyright infringement cause of action.

Copyright registration and protection is denied to useful articles such as lamps, unless an original sculptural work of authorship can be identified separately from, or exist independently of, the utilitarian aspects of the article. So stay tuned, as it is certainly debatable whether copyright is a proper form of intellectual property protection for this particular floor lamp.

The “confusingly similar” allegation by Blu Dot is a further hint that non-traditional trademark infringement is being alleged here too. This won’t be an easy claim to pursue for Blu Dot either, since it will have to prove its design is “non-functional” (as it is not federally-registered as a non-traditional trademark product configuration) and it will have to establish acquired distinctiveness in its claimed trade dress elements (before addressing likelihood of confusion):

  • three legs that descend from a single base leg of the same width and depth;
  • each of the three legs pivots horizontally away from the center before angling down to the floor;
  • a portion of upper limb of each leg is stacked on top of each other making the legs different heights;
  • the legs angle out to form a tripod-like base; and
  • smooth fabric-covered shade.

A year and half ago we wrote about an interesting chandelier configuration trademark application — despite more than five years of use, registration on the Principal Register was refused as a non-distinctive product design, so the applicant amended to the Supplemental Register. It will be interesting to see what kind of evidence Blu Dot is able to establish in support of acquired distinctiveness, as five years of exclusive use won’t be enough.

Probably what is most surprising about Blu Dot’s federal complaint is that it alleges no ownership of or infringement of any design patents. Design patent protection seems ideally suited for this very kind of useful product, and it is not at all cost prohibitive to obtain.

Finally, back to Blu Dot’s non-traditional trademark infringement claim again, to the extent copyright is applicable, the Supreme Court’s Dastar case may very well knock out any trademark or unfair competition protection sought by Blu Dot. As the Chief Judge of the United States District Court for the District of Minnesota recently noted in Bruce Munro and Bruce Munro Studio v. Lucy Activewear, Inc. et al:

Courts, however, are “‘careful to caution against misuse or over-extension’ of trademark and related protections into areas traditionally occupied by patent or copyright.” [quoting Dastar] Copyright and patent laws are meant to protect against copying the originality and creativity of another, for a certain time and under certain guidelines, while the Lanham Act and trademark law serve a distinct purpose. * * * The Lanham Act “‘does not protect the content of a creative work on artistic expression’ because an ‘artist’s right in an abstract design or other creative work’ is protected by copyright law.” * * * [E]xtending trademark protection to a particular style of artistic expression would improperly extend trademark law into the area of copyright protection.” * * * Thus, the Court will dismiss with prejudice the trademark and trade dress claims to the extent they are based on Munro’s style and the elements of Munro’s artistic works.

So, how do you come down on the lamp case — is Blu Dot going to face red lights on its copyright and trademark claims? Will it end up wishing it had a design patent to assert against Rove Concepts?

Intellectual Property for President 2016

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



The 2016 Presidential election season has produced moments of strife, humor, shock, and even a little magic.  Most importantly, however, this election season has also provided us with plenty of IP fodder.

First, there was a fortuitous discussion of Trump’s brand strength.

Next, we looked at a slew of fresh campaign logos beaming with hope and long-term strategies.  Of course, most of those bumper stickers were not meant to be.

We saw some less than stellar campaign slogans come and go.

We saw a Clinton trademark conundrum arising from an obscure Lanham Act provision.

And there was even a misguided trademark application for a surname.  (Interestingly, John Oliver’s DRUMPF trademark application is currently under rejection for referring to the living individual, Donald Trump, without his consent.  The PTO even cited links to various news articles discussing John Oliver’s DRUMPF campaign.)

Throughout the campaigns, there were multiple copyright infringement claims against various candidates.  Frequently, musicians object to use of their songs at campaign events or in campaign ads.  Public performance of a musical work, without permission, constitutes copyright infringement.  Moreover, use of a particular musician’s work without permission can lead to a false endorsement claim.  Several candidates, and primarily GOP candidates, have faced such allegations, including Ted Cruz, Mike Huckabee, and Donald Trump, to name a few.

Other copyright infringement allegations have been directed toward the Trump campaign as well.  Earlier this year, a wildlife photographer sued the campaign for the  unauthorized use of an award-winning photo of a bald eagle.  More recently, a photograph of a bowl of candy was subject to a Digital Millennium Copyright Act takedown notice from the photographer after Donald Trump, Jr. used it in a tweet.  In what appears to be the latest campaign copyright challenge, the City of Phoenix, Arizona, issued a cease and desist letter to the Trump campaign for its unauthorized images of Phoenix uniformed police officers in a campaign ad.  Phoenix objected to the ad on the basis of false endorsement, rights of publicity, and copyright in the officers’ uniforms.

Some candidates have also made news this campaign season for enforcing their IP rights.  At least Trump, Clinton, Sanders, and Carson spent time policing infringement of their trademarks on unauthorized merchandise.

And now to the relief of many, and perhaps the immense trepidation of some, this presidential campaign season is quickly drawing to a close.  It has been nothing if not entertaining–with respect to IP issues, that is.