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Collaborations in Creativity & the Law

Amazon’s Latest Trademark Battle: A Race Against “Chime”

Posted in Infringement, Law Suits, Marketing, Technology, Trademarks

Last month, Amazon Web Services (“AWS”) announced a new application, Amazon Chime, for online meetings, including video and voice conferencing, chat, and screen sharing. Amazon Chime will compete against a crowd of other well-established products with similar services, such as GoToMeeting, Cisco WebEx, and Skype.

Just two weeks after Amazon Chime was announced, on February 22, AWS was sued by CafeX Communications for common law trademark infringement. CafeX’s complaint asserted the marks CHIME and CAFEX CHIME, based on its CafeX Chime online conferencing application. CafeX Chime, which offers video and voice conferencing, chat, and document sharing, was launched in February 2016. It won the “Best Of Enterprise Connect” award at the 2016 Enterprise Connect trade show in March 2016.

CafeX brought a motion for a preliminary injunction, arguing a likelihood of success based in part on the parties’ “virtually identical” marks and “identical” products and services. CafeX also argued that AWS was aware of CafeX’s “CHIME” mark and adopted the Amazon Chime mark in bad faith. Regarding irreparable harm, CafeX repeatedly referred to the upcoming 2017 Enterprise Connect trade show in Orlando next week (March 27-29), at which CafeX Chime is the defending “best of” award winner, and at which both parties will be presenting their respective “Chime” products at booths facing each other, a mere 30 feet apart–see the exhibit map below:Exhibitor Booth Map

AWS’s opposing brief argues that CafeX is unlikely to succeed on the merits based on several arguments, including for example: (1) CafeX has not made use in commerce of its asserted marks; (2) CafeX has no protectable trademarks as “Chime” is descriptive for business communication services; (3) the marks are dissimilar based on the “prominent use of [defendant’s] well-known [Amazon] house brand”; (4) there are some differences in the parties’ products; and (5) AWS obtained an Eveready survey that found 0% confusion.  (Note that CafeX vigorously disputes the validity and methodology of AWS’s survey in its reply brief.)

AWS also disputes CafeX’s bad faith argument, stating that although an Amazon employee visited the CafeX Chime booth at the 2016 Enterprise Connect trade show, that employee “had nothing to do with naming Amazon Chime and had never worked on the Amazon Chime team” and that “to the best of Amazon’s knowledge, CafeX was never mentioned by anyone on the Amazon Chime product or branding team” until this litigation. However, AWS concedes that a trademark clearance search was conducted, and then seems to imply that AWS was aware of the CAFEX CHIME mark.

Regarding the balance of equities between the parties (a factor in whether a preliminary injunction is appropriate), AWS stresses that it would be forced to spend hundreds of thousands of dollars and months of time to rebrand its product, reprogram its application, revise websites and marketing materials, and reshoot promotional videos, and that it would be practically impossible to reverse such a re-branding if AWS later prevailed at trial.

What do you think?  Stay tuned for updates on this contentious and high-stakes dispute.  The motion hearing is scheduled for tomorrow, March 24.

Help! Someone Copied My Stuff!

Posted in Copyrights, Fair Use, Infringement

CR Poster

At some point in this digital age, almost every individual or business in the creative space will discover that somebody has copied them. You may see it yourself, or you may get the stomach-dropping “Doesn’t this look an awful lot like…..” e-mail from a friend. It might be that potential client who said your design “was nice, but wasn’t for us.” It could be a big company with a new shirt/container/advertisement with a strikingly similar photograph. It could be a blog post that . . ., well, you get the idea. When you discover that someone copied something that you created, there are a lot of questions and it’s rarely as simple as “someone copied my stuff!” So here are a few things to consider as you decide on next steps.

First, does your work qualify for copyright protection? Any one who creates an original, creative work of authorship has a valid copyright interest as soon as the work is fixed in a tangible medium of expression. The bar for what is “creative enough” to qualify is low. Very low. Even the mere selection, arrangement, and display of facts in a graph or a telephone book may qualify as a creative work of authorship.  However, there are some limitations. Copyright law only protects the expression of an idea, not the idea itself. So while a cookbook focused on chicken sandwiches would be protected, the underlying recipe (and sandwich) is not. Also, words and short phrases like book or movie tittles are not protected by copyright. But yes, the image you grabbed from a Google image search through likely is.

However, as long as you meet have a modicum of creativity, and as long as you didn’t copy someone else’s expression, you likely have a valid copyright. This is true even if you haven’t registered your copyright with the Copyright Office. However, a registration (or pending application to register) is generally a prerequisite for bringing a lawsuit, and can open up additional types of relief if the infringement occurred after the registration of the copyright.

Second, are you the owner of the work? Generally, the author is the owner, unless ownership has been transferred. For businesses, if an employee created the work within the scope of their employment, then the employer is likely the author. The work for hire doctrine can be tricky, so it is best to drill down and confirm ownership before asserting any claim of infringement. If you’re not the author, you may be able to contact the former employee, contractor, etc. and obtain an assignment of the copyright interest.

Third, is the “infringer” really infringing? Copyright law only protects the expression of a work, not the idea of a work. The James Bond franchise has a number of valuable copyright protected works: books, movies, characters, etc. While there are broad rights associated with the franchise, the copyright does not give the owner the ability to claim rights in the idea of a British secret agent. The tough part is locating the fine line between idea and expression. There also a question of  whether the “infringer” is making a legitimate “fair use” of the copyright work. Is the copy part of a social commentary on a relevant issue or topic, like gender stereotypes? Could creation of an online repository of shared links, images, and articles a la Pinterest qualify as a fair use? These are important questions to consider when deciding whether to pursue any further action.

Finally, what are your options? You could start with a short email or phone call. Third-parties may not realize something is protected. The “infringer” may happily stop selling/posting/distributing the copied work. An attorney can assist, providing you with talking points, ghost writing a letter, or if you prefer contact the alleged infringer directly. If the copy is on the internet, there is likely a method for you to request that the website/app/hosting service remove access to the infringing work through a Notice of Claimed Infringement. YouTube, Facebook, eBay, and others all have online submission forms. Be aware, however, making wholly unreasonable claims of infringement could lead to the alleged infringer turning the tables.  Of course, a lawsuit is an (expensive) option but as noted above, a registration or pending application is necessary to bring  a lawsuit. If the work has value (economic or personal), you should consider applying to register the copyright to at least expand your response options, and your potential recovery.

Creative individuals and companies put a lot of time, effort, and money to create something that is valuable to them. When you discover that someone took a shortcut at your expensive, it can be personally offensive and you want to make it stop, now. The law provides an avenue for relief, but unfortunately it often may not provide you with the scope of protection you thought you had. So if you or a client runs across a copycat, hit the pause button. Someone may have “copied your stuff,” but they may not have committed copyright infringement.

Don’t Get TRUMPed By a First-Filer

Posted in Almost Advice, Branding, Infringement, Loss of Rights, Trademarks

Reading over this story on Donald Trump’s decades of headaches (and conveniently-timed successes) with the TRUMP trademark and the Chinese Trademark Office, I was reminded, as I always am, of the importance of filing federal trademark applications.

The examination process for Trump’s marks in China, and the Chinese trademark enforcement regime generally, is rather opaque to U.S. practitioners. There is still a clear lesson to draw from his decades long attempt to register his TRUMP mark. Filling first matters. Even on this side of the Pacific Ocean.

I believe he's about to say "Filing first matters!"

I believe he’s about to say “Filing first matters!”

A common distinction when comparing U.S. trademark law to international jurisdictions concerns priority to use a trademark. Many trademark offices abroad give priority of use to the party “first to file” a given mark with the trademark office. In contrast, U.S. law generally favors the party “first to use” a given trademark. Because common law trademark rights accrue automatically upon use, a federal trademark application does not supersede a first-to-user.

The above is black letter “Trademarks 101” type information. But it’s actually not always the case, thanks to intent to use applications. These applications, which can be filed without any use of the corresponding mark in commerce, essentially turn the “first to use” doctrine on its head. Even if a party is the first to use, it will not have priority over a third party with an earlier filed intent to use trademark application. Consider the following examples:

  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. B begins using the same trademark on August 1 of the same year. A will have priority to use the TASTY SNACKERS trademark over B as the “first to use.”
  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. B files a trademark application for the same trademark on August 1 of the same year. Even though B is now the “first to file,” A will still have priority to use the TASTY SNACKERS trademark over B as the “first to use.” (We’ll assume A uses the mark in all 50 states, to avoid a concurrent use analysis)

So far so good, right? But see what happens when we throw an intent-to-use application in the mix:

  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. One month earlier, B filed a trademark application for the same trademark on June 1. B begins using the TASTY SNACKERS trademark on August 1 of the same year. Here, A is still the “first to use,” but if B obtains registration of the TASTY SNACKERS mark, B will effectively enjoy priority to use the trademark in the U.S. as the “first to file.”

In order to establish its “first to use” priority for the TASTY SNACKERS mark, A would have to (i) oppose B’s application, or (ii) petition to cancel B’s subsequent registration, if A misses the opposition window. And there’s a worst-case scenario – if, somehow, B’s registration is not challenged for five years after registration, B can make his registration “incontestable,” and thereby preclude a petition for cancellation on grounds of priority. Essentially, headaches follow for the first user, if that first user is not also first to file a federal trademark application.

Trademark practitioners will agree that “first to use” is as American as apple pie and baseball. But even in the U.S., it’s hard to overstate the value of a timely-filed corresponding trademark application – ideally, an ITU application as soon as there are concrete plans to use the trademark. Otherwise, a first-filer in the U.S. can make a first-user rather “SAD!”

Pass the…Creative Work

Posted in Advertising, Agreements, Copyrights, Famous Marks, Genericide, Idea Protection, Infringement, Law Suits

I laughed when I saw yesterday’s Adweek article about Heinz adopting Don Draper’s “Pass the Heinz” pitch from the hit show “Mad Men.”  Given the lackluster creativity observed from the Super Bowl ads, have we actually reached a point where a creative says “hey remember that Mad Men episode? let’s just do that!” and the client agrees?  I hope not, and I have to believe that that isn’t what happened here.

According to the Adweek article, the fictitious Sterling Cooper Draper Pryce is given credit for the work alongside DAVID The Agency – an international agency with offices in Miami, Brazil and Argentina.

Their logo reminds me of someone – how about you?

DAVID

Setting aside the strong possibility that this agency (or at least members of it) created the work featured in the Mad Men episode, this real life fact pattern reads like an Intellectual Property law school exam.  What risks does Heinz have in adopting this work?  Who authored the creative work and who may own the copyright in the creative work?  Is DAVID’s use of the print ads an infringement of that copyright?  Could the creators and writers of Mad Men use the Heinz trademark in this matter without their permission?

The story here is “tantalizingly incomplete,” if I may borrow Draper’s words from the clip.  Assuming this was executed with some forethought, there are likely one or more agreements involved.   The creatives behind the ad campaign featured in Mad Men may have assigned the work to the owners of Mad Men as a “work made for hire.”  Someone from Heinz or DAVID The Agency may have obtained permission from the copyright owners of Mad Men to then use the work.  There might even be a product placement agreement with Heinz that would later allow Heinz to use the Sterling Cooper campaign later in real life, and maybe even give Heinz the right to select the agency that creates the Sterling Cooper campaign.

Taking this outside of the fictitious context, what about the fact that this agency essentially stole the pitch from Sterling Cooper?  Most agencies would rightfully have an issue with another agency using their pitch.  Does this have any negative effect on the industry?

From a brand perspective, what do you think about Heinz adopting this “50-year-old campaign” from Mad Men?   And, for the agency, is there any benefit to them for just tipping in Don Draper’s shot from the 3-point arc?  Of course I wasn’t going to make it through this whole post on the eve of the best sports weekend of the year without throwing in a March Madness reference – especially with my team in both the men’s and women’s brackets this year.  GO MARQUETTE!

 

April Madness, the NCAA’s One Month Buffer?

Posted in Articles, Branding, Dilution, Famous Marks, Infringement, Law Suits, Marketing, Trademarks

We write a lot here about the scope and strength of trademark rights and how that determination is often intertwined to making intelligent likelihood of confusion determinations.

Does “April Madness” fall within the NCAA’s scope of trademark rights for “March Madness“?

Likelihood of confusion? Is “March Madness” a famous mark deserving protection from dilution?

How about “Final 3”? Does that fall within the NCAA’s scope of trademark rights in “Final 4”?

These are some of the questions that will be answered in NCAA v. Kizzang LLC, filed by the NCAA in Indiana federal district court last week, a PDF of the complaint is here.

Yesterday we wrote about a 1929 decision determining that the letter “C” fell within the scope of rights of a trademark containing the letter “B”.

Now, the NCAA is asking for a mark containing the month “April” to fall within the scope of rights in a mark containing the month “March.”

Doesn’t this remind you a little bit of our prior discussions of Adidas and its “one stripe buffer” — enjoying protection of its three stripe design against two and four stripes?

Hat tip to Dan.

My USPQ 1 Round Up: “Confusion in Letters”

Posted in Articles, Branding, Trademarks, TTAB, USPTO

USPQ1

The United States Patents Quarterly has been a resource used by intellectual property lawyers for a very long time. Most of the decisions published in USPQ are patent decisions, but there are a large number of trademark decisions too, especially those decided by the USPTO and TTAB.

As the image above reveals, an admittedly weathered set of USPQ books adorns my bookshelf, beginning with Volume 1, published in 1929. Apparently, Bloomberg L.P. purchased BNA (the Bureau of National Affairs, publisher of USPQ) for about $1 billion, back in 2011.

Given my love and nostalgia for these tattered books, and the trademark history stored inside, my plan from time to time, is to bring to life some of the old decisions housed in these books, by telling a trademark story, so this is the first post in a series called: “My USPQ _ Round Up.” The blank indicates the USPQ volume the story is drawn from.

Sinclair Refining Company v. Robert Hickman Blackburn

(Cancellation No. 1766) USPQ 1, at 263 (1929).

“Confusion in Letters”

On April 29, 1929, the First Assistant Commissioner of Patents affirmed a likelihood of confusion decision of the Examiner of Interferences that sustained a petition to cancel U.S. Reg. No. 240,100 (which had issued in 1928). The canceled registration covered the letter “B” inside a diamond positioned above the words “Diamond B Motor Oils” for lubricating oils and greases.

Sinclair, the successful petitioner asserted prior rights in U.S. Reg. No. 146,872 (issued in 1921), for the trademark “Diamond C” continuously used since at least as early as 1919 and “probably since 1917” for lubricating oil, according to Sinclair’s evidence.

The evidence also apparently showed that the registrant “was at one time a distributor of the petitioner’s goods,” permitting “a fair presumption that the registrant was, when he adopted his mark, entirely familiar with the petitioner’s mark and goods. Under these conditions if there is doubt it must be resolved against the newcomer in accordance with the usual rule.”

In defense, the registrant took no testimony, but argued that diamond shapes are a common part of trademarks, so the difference between the letters “B” and “C” should be “sufficient to establish that it is unlikely there will be confusion in trade.” Nevertheless, Sinclair prevailed:

“While the main contentions of the registrant may be accepted as correct yet the trade marks must be considered as a whole and when this is done it is thought their similarities outweigh their differences. There are some letters of the alphabet, such as B, C, D, E, P, T, etc., which are recognized as sounding alike. Confusion in using such letters in connection with messages over the telephone is a matter of common knowledge.”

“It is thought there would be confusion even in customers orally calling for the particular goods if both parties to this proceeding were using their respective marks in the same market upon the same class of goods. It is held the registrant has approached too near the petitioner’s trade mark.”

What stands out to me about this decision are a few things. In terms of procedure, nowadays, this would be a TTAB decision, probably much longer and more detailed, ruling on a trademark petition to cancel in the first instance. I’m not old enough to have experienced the so-called Examiner of Interferences or the First Assistant Commissioner of Patents, thank you very much.

In terms of substance, comparing each mark in its entirety still applies along with the notion of weighing similarities and differences, as does the concept of favoring the prior registrant and responding accordingly when the newcomer is perceived to come too close.

Phonetic similarity was important to the conclusion of confusing similarity between “Diamond B” and “Diamond C” — especially, given the closeness of the goods in question. I’m a bit skeptical though that the following quote would make or break a case today: “There are some letters of the alphabet, such as B, C, D, E, P, T, etc., which are recognized as sounding alike.” You never know though, it might be worth filing away for when a suitable use arises in the future.

Last, while neither “intent” nor “intent to deceive” were mentioned in the decision, and these factors continue to be relevant in likelihood of confusion analyses, I’m left believing that registrant’s previous relationship as petitioner’s distributor probably colored the evidence here.

Do you believe the case would be decided the same today? How would you grade it, B or C? What strikes you about this gem from Volume 1 of USPQ?

Celebrity Trademark Battle: “The Kitchen”

Posted in Genericide, Infringement, Mixed Bag of Nuts, Trademarks

World-famous chef Wolfgang Puck recently became embroiled in a trademark battle with Elon Musk’s brother, Kimbal Musk, a venture capitalist and entrepreneur who owns The Kitchen Cafe, a family of restaurants in Boulder, Fort Collins, Denver, Glendale, and Chicago. Puck has opened new restaurants with the names “The Kitchen by Wolfgang Puck” and “The Kitchen Counter by Wolfgang Puck.”

Musk’s company The Kitchen Cafe, LLC (“TKC”) filed a trademark infringement suit in Illinois federal court against Wolfgang Puck Licensing LLC (“Puck”). TKC’s complaint alleged Puck’s restaurant names infringed TKC’s common law trademark “THE KITCHEN.” Puck filed a motion to dismiss and also filed a separate declaratory judgment suit in federal court in the Northern District of Illinois.

In the declaratory judgment complaint, Puck argued that “the phrase ‘the Kitchen’ is fundamentally incapable of protection as a standalone trademark or service mark or as an element of a trademark or service mark because it is generic, or, at best, merely descriptive of such services, and that TKC’s assertion is legally untenable and factually absurd.”

Puck further argued that TKC has not acquired distinctiveness in “THE KITCHEN” as there are “hundreds of other restaurants which use ‘kitchen’ in their names.” Puck emphasized several such examples in the Chicago area, including the Lyfe Kitchen restaurant, which is a block and a half from TKC, the Travelle Kitchen, which is two blocks away, and the One North Kitchen & Bar, which is nine blocks away.

I think it will be a rocky road ahead for TKC to show that the claimed “THE KITCHEN” mark is protectable. Even if it makes it past the genericness hurdle, at the very least it’s descriptive, and it will be difficult to show acquired distinctiveness for several reasons, including the multiple “Kitchen” restaurants in close proximity. What do you think?

Out of curiosity, I also looked around the USPTO for registrations with the word “KITCHEN” that identify restaurant services. It appears the USPTO routinely requires a disclaimer of “KITCHEN” as an unregistrable portion of marks in Class 43 for restaurant services, such as RED RIVER KITCHEN, LIVING KITCHEN, and SECRET KITCHEN. One recent Office Action for the mark SOUTHWEST KITCHEN required a disclaimer of “KITCHEN” and specifically concluded that the word “KITCHEN” is generic for restaurant services. The same conclusion was reached by another Office Action for the mark WOODBERRY KITCHEN.

 

Stripe Three, Adidas Called a Trademark Bully

Posted in Agreements, Articles, Branding, Infringement, Law Suits, Non-Traditional Trademarks, Sight, Trademark Bullying, Trademarks

Trademark bullying allegations are in the news again.

Not only is Forever 21 calling Adidas a trademark bully for asserting rights in the three stripe design mark, it is asking a federal court to say it has not done anything wrong and award it fees:

“Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 has decided that enough is enough. Forever 21 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”

This is not their first rodeo together, see here and here. It isn’t our first rodeo discussing Adidas either, see here, here, here, and here.

For more on the subject of trademark bullying, please consider attending another Strafford live webinar a week from today, March 14 at noon CST, details here.

First three who comment earn a free ticket to attend, we hope you join us.

UPDATE: Looks like there is going to be a fight about where the trademark fight actually goes forward, as KOIN6 reports, here.

The Worst Top Ten List of Traits Ever

Posted in Articles, Branding, Marketing

TraitstoAvoid

Do you wish you could have been a fly on the wall of the meeting that produced this top ten list, or more likely bottom ten list? Even for five minutes? I’m thinking it must have gotten old fast.

Hopefully there was another counteracting list too with far more inspiring attributes. While it’s important to understand negative traits, dwelling on the negative doesn’t seem likely to inspire growth or creativity. Nor does it seem likely to reinforce any of Covey’s habits of effectiveness.

Over the past weekend I was staying in a hotel out of town, and my room happened to be on the same floor as a series of conference rooms.

Minding my own business at the end of the day, as I was passing by the empty rooms, I happened upon the above whiteboard, so I couldn’t resist capturing it to share here.

What kind of conversation and meeting would you guess produced the above list?

Have you ever met a person who possessed all of the listed traits?

Have you ever experienced a brand with any of the traits above?