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Octane Fitness Clarified the Standard for Attorney’s Fee Award, but Has Really Anything Changed?

Posted in Articles, Infringement, Trademarks

It’s no secret, lawsuits can be expensive. That’s why parties frequently consider the availability of recovering attorney’s fees when deciding whether to pursue (or defend) a lawsuit. While attorney’s fees have been available in trademark infringement lawsuits for many years, the standard for granting awards of such fees has shifted in light of recent Supreme Court precedent. Just this week, Whole Foods learned that, at least in one Washington court, not much actually changed.

Whole Foods Market, Inc. (“Whole Foods”) is a national grocery store chain specializing in organic foods. Eat Right produces organic foods under the EAT RIGHT mark. Whole Foods even sold Eat Right’s products for nearly a decade. The relationship soured, however, when Whole Foods began a promotion in 2009 called “Eat Right America” that encouraged consumers to (you guessed it) eat right.

Eat Right reached out to Whole Foods and graciously offered to sell its brand. After three years of not taking any action, Eat Right demanded that Whole Foods stop using the “Eat Right America” phrase. Eat Right took another year to file a lawsuit. On May 14, 2015, the District Court of Washington granted Whole Foods’ Motion for Summary Judgment, ruling that the affirmative defenses of laches and acquiescence barred Eat Right’s claims.

Whole Foods filed a Motion for attorney’s fees on July 6, bringing us back to where we started.

The Lanham Act grants courts discretion to award attorney’s fees in “exceptional” cases. 15 U.S.C. § 1117(a)(3). However, “exceptional” has carried different meaning from circuit to circuit. The ambiguity was partially intentional, allowing courts to truly exercise their discretion in whether a party should be required to pay the fees of the other.

Many circuits required “willful infringement” or “bad faith” conduct on the part of the losing party before awarding fees. The conduct could involve the parties’ legal position, such as pursuing “objectively baseless” claims or defenses. The conduct could involve “vexatious litigation conduct.”

However, in Octane Fitness v. Icon Health & Fitness, the Supreme Court rejected these heightened standards. 134 S.Ct. 1749 (2014). The court found that the meaning of “exceptional” was not subject to any formula, but instead simply means that the case “stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.”

Although Octane Fitness interpreted a provision of the Patent Act, the language is identical and courts frequently rely on interpretation of the Patent Act to interpret provisions of the Lanham Act. The Third Circuit applied Octane Fitness to trademark claims in Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014).

Here, the court acknowledged the shift in standards under Octane Fitness:

Although the Lanham Act may not require subjective bad faith, a defendant seeking attorney’s fees under the Lanham Act must demonstrate, at minimum, that ‘the plaintiff has no reasonable or legal basis to believe in success on the merits.’

The court then concluded that Eat Right’s claims “were not groundless, unreasonable, or vexatious . . . or pursued in bad faith.” Accordingly, it denied Whole Foods’ motion for attorney’s fees.

While the court retains wide discretion to award attorney’s fees, the reasoning appears to disregard the Supreme Court’s ruling in Octane Fitness. The Supreme Court rejected the requirement of bad faith. Instead, it required only that the strength of the claims “stand out.” While there isn’t a clear way to quantify these with numbers, “standing out” certainly seems to be a lower threshold than “groundless” or “unreasonable.”

A number of practitioners (myself included) believed that Octane Fitness would make attorney’s fees more available to prevailing plaintiffs and defendants. The language of the Octane Fitness certainly enables this. However, it appears old habits die hard, and it may take some time for  courts to kick the old habit of requiring “bad faith.”

Beme, or BeHBO / BeShowtime / BePayPerView?

Posted in Advertising, Audio, Branding, Copyrights, Fair Use, Marketing, Social Media, Social Networking

It has been a tumultuous year for copyright owners. The old cliche is “if you love something, set it free,” but it seems plenty of third parties are happy to take on that task when it comes to copyrighted content.

Now that mainstream smartphones allow anyone to capture high definition video, mobile apps in particular have been fertile ground for uploading and sharing infringing content. The Mayweather-Pacquiao fight in May may have smashed revenue records, but it also exposed novel methods for pirating digital content.

And even-newer apps are never far away. Earlier this month, filmmaker and popular YouTube video creator Casey Neistat released his new mobile app, “Beme” (pronounced “beam,” but also a play on “be me”). Pitched as “the simplest and most authentic way to share your experience on video,” the app takes a new approach to sharing in the same vein as Snapchat. It allows users to share video without touching a button – just by holding or blocking the iPhone’s proximity sensor near the earpiece. The app takes a four-second video and then immediately posts it on Beme’s network for followers (and strangers) to access. Once viewed, the videos disappear from a user’s timeline.

Beme may give pause to copyright owners given recent history. Consider the plight of Periscope, the live-streaming app owned by Twitter that launched in March 2015 to enormous fanfare. During the aforementioned Mayweather-Pacquiao fight, Periscope was the app du jour for watching unauthorized streams of the pay-per-view fight. It was as simple as streaming a TV screen to millions online. Periscope also became known as a popular platform for watching the latest Game of Thrones episode, much to the consternation of HBO. Twitter quickly found it did not have the adequate measures in place to police all those live streams on such a novel platform.

Is Beme the next Periscope? It’s clear that Periscope is a different breed of app – it allows a user to “stream” video live for an indefinite period of time, and videos remain accessible to the public for up to 24 hours after broadcast. Periscope also allows viewing across various mobile platforms.

As for Beme, it certainly isn’t built with the intent of sharing copyrighted content. As discussed in this video, Beme videos are limited to four seconds, and they play in relatively low quality compared to traditional HD video. The app is iPhone-only, with no Android app or web access as of yet. But there are some features that may facilitate, rather than hinder, piracy. Users can stitch an indefinite amount of four-second videos together to create a longer series of videos — and, unlike Periscope, Beme videos aren’t accessible via a public link, so infringing content could go undiscovered.

Is Beme the next frontier for copyright owners? In essence, the app’s novelty makes it difficult to predict whether it will be a platform for pirated content – that’s up to the users. In the meantime, content owners would do well to remain vigilant. And to Beme’s credit, it has deployed some measures to control the content shared through its app. Despite being a fledgling app and company, Beme wisely deployed a robust Terms of Use and DMCA Policy on its website right as the app launched. Beme doesn’t yet have a “report” button in its app, and so the sole recourse for content owners is to send a DMCA notice to Beme under the Digital Millenium Copyright Act, or DMCA.

Beme's DMCA Policy

Beme’s DMCA Policy

Time will tell whether Beme’s listed contact is inundated with DMCA notices as the platform develops. If nothing else, Beme serves as a valuable case study: copyright owners must police an ever-growing library of content-sharing platforms, and mobile app developers should ensure the proper policies are in place – such as terms of use, privacy policies, and DMCA policies – to police infringing activities by users, however remote the possibility may seem.

Effective Enforcement Strategies – Letters of Protest

Posted in Almost Advice

A letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. The letter is filed with the Director of Trademarks and if the Director is persuaded by the evidence, the letter will be accepted and the evidence forwarded to the examining attorney. Only the evidence is forwarded to the examining attorney. Accordingly, it is important to keep any legal argument in a letter of protest to a minimum. This also has the effect of keeping costs down with respect to the preparation of the letter of protest. If the examining attorney finds the evidence persuasive and issues an registration refusal based on the evidence, it can be a cost effective tool to keep the principal register clear of a concerning mark.

Are Trademark Bullies Bringing Plausible Claims?

Posted in Civil Procedure, Copyrights, Fair Use, Guest Bloggers, Infringement, Law Suits, Loss of Rights, Mixed Bag of Nuts, Patents, Trademark Bullying, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

Intellectual property enforcement continues to make news, and new solutions to curb abusive enforcement – i.e. trademark bullying, patent trolling, and copyright trolling – are being proposed regularly. Central to these solutions is the idea of a “fast-lane” that kicks bad claims to the curb before the bullied or trolled party has incurred significant legal costs.   For example, in copyright infringement cases, a motion for judgment on the pleadings may succeed very early in the process if fair use is obvious. The ability to end frivolous litigation early is critical to a balanced intellectual property system.

Although I haven’t seen it discussed much, one possible means for putting an early end to frivolous trademark litigation is for the bullied party to pursue dismissal on the grounds that the trademark bully has not met the required pleading standard of “plausibility” set forth in Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007) and extended in Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937 (2009). (For the non-lawyers reading DuetsBlog, “pleading standard” refers to the threshold content that is required in a complaint so that a plaintiff can have access to the court). My opinion is that claims that deserve the trademark bullying label are not likely to meet the Supreme Court’s pleading standard and, therefore, should be dismissible. Early dismissal of bad trademark claims, if more routinely sought and granted, could provide bullied parties with relatively quick and cost-efficient relief and could be another tool in the toolkit for practitioners faced with responding to abusive intellectual property enforcement.

First, a quick summary of the change in pleading standards. From 1957 to 2007, civil litigants followed the “mere notice” pleading standard of Conley v. Gibson, 355 U.S. 41 (1957), wherein the Court held that a complaint need only state a “conceivable” set of facts to support its legal claims. That all changed in 2007, when, in Bell Atlantic Corp. v. Twombly, the Court replaced that standard with a stricter “plausibility” standard: a complaint “must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Because the Twombly case involved a specific set of facts involving allegations of anti-competitive behavior, the courts were confused about whether Twombly’s rule should be extended to all civil litigation. So, in 2009, in Ashcroft v. Iqbal, the Supreme Court confirmed that the new, stricter pleading standard of “plausibility” applied to all civil litigation.

According to the Supreme Court, in order to state a claim that is “plausible on its face,” a plaintiff must string together facts that amount to more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements.” Legal conclusions can provide the framework for a complaint, but are insufficient on their own because legal conclusions are not entitled to an assumption of truth. Asking for plausible grounds “calls for enough fact to raise a reasonable expectation that discovery will reveal evidence” of unlawful conduct.

So, do trademark bullies bring plausible claims? In my view, no. And I think this view is often echoed in the media coverage of trademark bullying cases, where we see the sentiment expressed time and time again that “there’s no way anybody is confused about X and Y.” Those of us following this issue can all remember Vermont Governor Peter Shumlin’s public message to Chick-fil-A: “If you think that Vermonter’s don’t understand the difference between kale and a chicken sandwich, we invite you to Vermont and we’ll give you a lesson about the difference between kale and a chicken. There are some very distinct features . . . ” This seems to me to be a layman’s way of saying that Chick-fil-A’s claim of trademark infringement was just not plausible on its face.

Like Chick-fil-A in the Eat More Kale dispute, trademark bullies regularly and aggressively claim likelihood of confusion without actually alleging enough factual matter to make that claim plausible, rather than merely conceivable. Trademark bullies often claim a likelihood of confusion based entirely on the similarity of the marks, while ignoring the other elements necessary to establish trademark infringement – strength of the mark, relatedness of the goods, overlapping trade channels, bad faith intent, etc. In doing so, trademark bullies might show a conceivable claim – the marks are the same, so conceivably there could be confusion – but they lack the extra stuff necessary after Twombly to get over the hurdle of plausibility. In other words, the claim isn’t plausible because despite similarities in the marks, the mark is so weak or the goods so unrelated that there is not “a reasonable expectation that discovery will reveal evidence” of trademark infringement. I think if more of the bad trademark claims we see were actually held up to this standard, more of these claims would fail.

Moreover, courts have ample discretion to decide whether a claim is plausible, and thereby to decide whether to subject a bullied party to the burden of discovery. In Iqbal, the Supreme Court held that “[u]ltimately, determining plausibility is a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Courts can look at the success or failure of prior trademark claims and rely on their own common sense about whether there really is any unlawful conduct that will be discovered. This might be a difficult subjective decision, but judges should not shy away from that responsibility.

As a matter of public policy, upholding the plausibility standard is important. Comments from the public, as part of the USPTO’s investigation into trademark litigation tactics in 2011, revealed the following views:

Aggressive tactics used by overreachers presents a problem for the entire intellectual property community by threatening legitimate activities and clogging the legal system with invalid claims.

[D]iscovery and deposition processes were too costly for many small businesses and provided a means for a party to thwart progress in a case and to drain resources from an adversary. . . .

[S]mall companies and individuals are placed in a difficult position where surrender of valid trademarks that are being lawfully used is the only rational financially-feasible option available.

It seems to me that one way to reduce the impact of frivolous trademark litigation is to demand that trademark plaintiffs actually meet the plausibility standard set forth in Twombly. Trademark practitioners should challenge trademark bullies under Twombly and expose the implausibility of claims made by trademark bullies.

“Symmetrically Arranged” Buttons: A Patent Win for Nintendo

Posted in Infringement, Law Suits, Mixed Bag of Nuts, Patents, Technology, USPTO

Nintendo has been making headlines recently.  The gaming industry is in mourning over the unfortunate passing of Nintendo CEO Satoru Iwata last week.  Iwata was instrumental in the success of the Nintendo Wii, among other Nintendo creations, and was known for his accessibility to fans.

Nintendo was in the news again this week for a patent litigation victory.  The gaming company was sued by Quintal Research Group for alleged patent infringement.  Quintal argued several Nintendo products, including the Nintendo DS and Game Boy Advance, infringe Quintal’s patent.

Quintal’s patent, which expired in 2011, relates to handheld computing devices, and particularly to “a portable handheld communication device for rapid retrieval of computerized information.”  The Quintal patent describes a handheld device with a display screen and ergonomically placed finger controls, including thumb controls “symmetrically arranged” on either side of the display screen.

Some drawings from the Quintal patent depicting the handheld device:

The “symmetrically arranged” thumb controls are the two side buttons, each labeled 166 on Fig. 19A.

 

Certainly, Nintendo’s handheld devices also have a display screen and ergonomically placed finger controls.

This chart was referenced in the judge's Order.  Game Boy Advance and Game Boy Dual Screen (a.k.a. Nintendo DS)

This chart was referenced in the judge’s Order to show examples of the accused devices: Game Boy Advance and Game Boy Dual Screen (a.k.a. Nintendo DS)

 

The district court judge granted Nintendo’s motion for summary judgment, finding the Nintendo devices do not infringe the Quintal patent.  According to the judge’s ruling, the case turned on the definition of “symmetrically arranged,” as that term is used in the Quintal patent claims.

In order to argue that Nintendo infringed the Quintal patent, Quintal had to show that Nintendo’s devices meet every element of the Quintal patent claims.  The claims require thumb controls “symmetrically arranged” on each side of the display screen.  Quintal argued that “symmetrically arranged” refers merely to placement or location of the controls on the device—that they are equidistant from the screen.  Nintendo, however, argued that “symmetrically arranged” thumb controls means thumb controls that are mirror images of one another, having the same size and shape.  The judge agreed with Nintendo’s definition.

As shown in the images above, the thumb controls (numbers 166) of the Quintal device are indeed depicted as symmetrically sized and shaped.  In stark contrast, thumb controls on either side of the screen of the Nintendo devices are not at all mirror images (the cross-shaped button is different in size and shape from the opposing A and B buttons on the Game Boy Advance, for example).  Therefore, Quintal could not show that Nintendo’s devices meet every element of the Quintal patent claims.

The case serves as an important reminder of the sometimes contrasting processes of (1) obtaining a patent and (2) enforcing a patent.  Narrow claim limitations added to overcome patent office rejections may render the claims so narrow that competitors can easily overcome them in later litigation.  During the process of obtaining its patent, Quintal added the “symmetrically arranged” language to its claims for the purpose of overcoming a prior art rejection in the patent office.  Quintal’s device was patentable because the buttons were “symmetrically arranged.”  Ultimately, it was that same language that defeated Quintal’s infringement contentions.

Tory Burch Protects Her Brand

Posted in Counterfeits, Famous Marks, Fashion, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

The barrage of counterfeit jewelry products bearing the “Isis Cross” will cease! After more than two years of battling with counterfeiters, Tory Burch, LLC and its subsidiary (“Tory Burch”) secured a $41 million judgment and permanent injunction against jewelry company Lin & J International, Inc. and its owners (“Lin & J”).   The judge found that Lin & J’s counterfeiting and trademark infringement were willful. Thus, the judgment includes an award of attorney’s fees.

The counterfeiters’ website has been taken down and redirected to Tory Burch’s official website. The website also educates by providing information about counterfeiting:

Photo Credit: Tory Burch Website

Photo Credit: Tory Burch Website

Tory Burch’s iconic “TT” symbol is set forth below.

Photo Credit: Tory Burch Website

Yes, I confess I bought a pair of patent leather ballet flats.

Photo Credit: Tory Burch Website

Photo Credit: Tory Burch Website

I know they are real (not just because of the hefty price tag), because I bought them from an official Tory Burch store in the Meatpacking District in New York City.

Lin & J sold jewelry with an “Isis Cross” design (see below) prior to the judgment.

isiscross

Photo Credit: Observer/News

In the lawsuit, Lin & J tried to paint Tory Burch as the infringer of its Isis Cross design and trademark by bringing a counterclaim alleging unfair trade practices, defamation, trademark infringement and others. Lin & J even sought injunctive relief against Tory Burch.

Tory Burch has a history of vigorously defending her trademark and brand. For example, she has brought lawsuits against other alleged counterfeiters, including Wona Trading Inc., Jewelry House Corp. and Glizlane Boutique.

You might recall the newly minted billionaire Ms. Burch was embroiled in a different type of lawsuit against her ex-husband and former business partner Chris Burch, which DuetsBlog has previously posted about.

The lawsuit involved allegations by Mr. Burch that Tory was tortiously interfering with his business C. Wonder (not sure I like the name) and breaching a contract with him. In response, Tory alleged that her ex-husband had, among other things, violated his fiduciary duty to the Tory Burch company. Although he was forced off the board, Chris Burch still owned a 28.3% stake interest in the company when they divorced. She even called C. Wonder a “knockoff brand.” The battling exes ultimately settled their dispute.

Chris had a nice C. Wonder store in the Time Warner Building at Columbus Circle in the Upper West Side of New York City. Unfortunately for Mr. Burch, C. Wonder closed all of its stores earlier this year.

Med-tech is on its way home: What that means for lawyers and creatives, Part 2

Posted in Branding, Guest Bloggers, Idea Protection, Marketing, Mixed Bag of Nuts, Technology

Jason Voiovich, VP, Marketing, Analytics & Research Services, Logic PD

*This is part 2 of a two-part series on the legal impact of traditional medical devices finding their way to home use. Yesterday, we looked at the broad macro trend of traditional medical technology finding its way into the hands of the average patient. Today, we’ll explore the branding implications of this trend.

Before we go too far in today’s discussion, we need to get one thing straight: Today’s med-tech product isn’t really a product at all.

Oh sure, there’s some sort of sensing or treatment delivery “device”, but when that device is actually just a collection of sensors that were in your smartphone or smartwatch anyway, is it really a “separate” device? What I’m getting at is that we need to broaden our thinking about today’s med-tech device in order to get our hands around the branding challenges.

Today’s med-tech “device” (if we want to keep calling it that) is actually the combination of three separate but interconnected parts:

  1. The “device” itself, with all the caveats noted above
  2. The interactive service provided (often experienced via a subscription, but also delivered on-demand)
  3. The aggregated data generated from all devices in the field (yep, you guessed it, “Big” data)

There are plenty of ways to define a brand, but I tend to like the simplest one best: A brand is a promise. When you think about it that way, it begs three important questions that will help us unpack the challenge here: To whom are you making the promise? What exactly are you promising to do? And what benefit will that person (or persons) receive?

Three components of a modern med-tech device. Three important branding questions. Let’s go!

Table

Of course, this is just skimming the surface of the branding and legal strategy you’ll need to have in place as you work in this brave new world. We haven’t even talked about privacy, security and notifications (the core of HIPAA protections). We also haven’t explored all of the new stakeholders in this value chain, especially the provider and payer networks.

But we don’t need all of the details in order to start thinking about the implications of this trend now.

Take it from me: We see a lot of cool stuff in the product development pipeline at Logic PD. We work with the med-tech companies coming up with these ideas, and without divulging anything confidential, it is pretty cool stuff. It will absolutely improve people’s lives.

But if we botch the launch with off-the-mark creative strategies and weak branding, these products will struggle to reach the market. Simply adapting the “clinical” brand to reach a “home” audience will not work. The devices themselves might be less complex than their hospital-bound cousins, but their branding strategy is far more challenging.

The new product pipeline is typically 12-24 months, and the device-makers have already started. As branding and trademark folks, that means we’ve got time, but not much of it.

Med-tech is on its way home: What that means for lawyers and creatives, Part 1

Posted in Branding, Copyrights, Guest Bloggers, Idea Protection, Marketing, Patents, Technology, Trademarks

Jason Voiovich, VP, Marketing, Analytics & Research Services, Logic PD

*This is part 1 of a two-part series on the impact of traditional medical devices finding their way to home use. In this post, Jason will introduce the topic and discuss implications for the four types of intellectual property. In the next post, he will explore in more depth the evolving branding and trademark landscape for these devices.

We’ve had medical devices in our homes for many years.

From portable electronics (ear thermometers) to simple diagnostics (pregnancy hormone tests), the general American public is no stranger to med-tech. For those with chronic medical conditions, blood glucose meters and CPAP machines are a common sight in the home.

But all of those devices are just the rain before the flood.

As medical care decentralizes, the average person is being asked to take control of more and more of his or her own healthcare. Health Savings Accounts (HSAs) and other High-Deductible Health Plans are partly to blame, but also important is the advancement in connectivity technology for these devices. Linking these diagnostic and therapeutic devices to the Internet means many more tests and treatments can be conducted in the comfort of your own home, yet still under the watch of a trained nurse or physician. Patients generally enjoy more control over their care experience, and it often lowers costs to boot.

Common examples coming to a CVS shelf near you include: Ultrasonic skin treatments, cardiac diagnostics, screening for common conditions (strep throat, ear infections, etc.), and human waste analysis – just to name a few. (I won’t go into detail on the last one. Suffice to say, it involves a “smart toilet”).

At Logic PD, our analysis of the mid-tier med-tech market shows a significant shift toward devices designed for use by individuals without as much training as your average clinician, with as many as 30% of those companies designing devices that have the potential to be used in a home setting. In other words, it’s really coming. Soon.

The implications are simple, but profound:

  • Usability: The less training the user has, the easier the devices need to be to use. Those devices designed for hospital-trained clinicians will likely need an overhaul.
  • Durability and reliability: If you’ve ever had kids, you understand this one.
  • Mobility: These devices tend to be smaller and more portable, meaning they often require battery power. Smaller size and the need for lots of battery power are not friends.
  • Connectivity: The true potential of these devices are their ability to connect to the Internet and share their data with your health care provider or electronic medical record. You’ve heard of the “Internet of Things”, right? Think of this as the Internet of Medical Things. And they’ll all be connected through your smart phone or home Wi-Fi network.

The average med-tech product developer will really struggle with this. They’re good at packing in more features to sell more products, but the opposite is needed here – these devices actually need fewer features, and they must be much easier to use by the untrained person. But detailing the engineering challenges is a topic for a different time.

Legal and creative types reading this post are much more interested in the Intellectual Property implications of the coming flood of home-use med-tech. I’ll invite the smarter legal folk reading this to sound off with their own take on this trend, but let me throw a little chum in the water to get us started (Get it, chum, sharks, lawyers? Get it? … You guys are no fun.)

Patents:

So obvious, I’ll start here first. Many Silicon Valley startups are inventing new devices to attack this market (and hence the need for fresh patents), but most mid-tier device makers are leveraging their existing patent portfolios to reach the home market. I love patents, but I’m not sure this is the most important piece of IP to think about here.

Trade Secrets:

Think data. These new devices generate a lot of it. It may not mean much for each individual device, but in aggregate, they represent the ability to analyze results in new and profitable ways. More specifically, what you learn from those devices isn’t necessarily something you want to publish for the world to see. Ergo: Trade Secrets.

Copyrights:

This may not seem as obvious, but think about the need to communicate – effectively – with large numbers of new customers who have never picked up a legitimate medical device. While new industrial designs could certainly qualify as patents, the communication materials and strategies should be protected by copyright because those materials will be critical to home-user adoption of this technology.

Trademarks:

Now we’re talking! Actually, we’ll talk more about that in tomorrow’s post, but it comes down to this: Branding efforts for many of these devices were conceived and executed with a very different (clinical) target audience in mind. One could argue that the “doctor-sounding” trademarks might convey higher credibility, but that’s only going to work for early adopters. To really get to meaningful volumes, product managers and product marketers are going to have to get creative.

Luckily, we like that part of our job.

Will Starbucks Be a Closer at the USPTO?

Posted in Advertising, Articles, Branding, Famous Marks, Food, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, USPTO

We’ll soon see whether coffee truly goes hand in hand with closers, at least in one famous brand owner’s quest for registration of a non-verbal, non-traditional color trademark at the USPTO. I’ve been noticing Starbucks focus on green straws lately, with the door signage shown below, offering a pretty creative use of “look-for advertising” without using those clunky words:

StarbucksGreenStrawSo, my search of filings at the USPTO was expected to find at least one supporting a claim of ownership to it, but what I found instead is a brewing battle over the green dot on a white cup:

Original December 3, 2012 Drawing for U.S. App. Ser. No. 85792872

Original December 3, 2012 Drawing for U.S. App. Ser. No. 85792872

Original December 3, 2012 Specimen for U.S. App. Ser. No. 85792872

Original December 3, 2012 Specimen for U.S. App. Ser. No. 85792872

Two months ago the USPTO issued a final refusal, maintaining previously issued grounds for refusal, including “the refusals related to the specimen and drawing not matching, the failure to function refusal based on the color mark being nondistinctive, the failure to function as a mark due to nondistinctive background design, and the claims of acquired distinctiveness being insufficient are all made final.”

According to the Examining Attorney: “As an initial matter, it is important to point out that the main issue in this application is whether the mark as shown in the specimens matches the drawing. The applicant has applied for a solid green circle background carrier that is centrally placed on a white beverage cup. The dotted lines on the drawing indicate placement of the mark on an actual cup. The examining attorney’s position is that the only acceptable specimen is an actual white cup with a clearly identifiable green circle background carrier centrally placed in the center of the cup. As discussed below, the specimens submitted by the applicant do not match the drawing.”

And, she goes on: “A claim of acquired distinctiveness under Section 2(f) cannot overcome the matching issue. Nor can any amount of evidence.”

Amended Drawing on October 13, 2015, for U.S. App. Serial No. 85792872

Amended Drawing on October 13, 2015, for U.S. App. Serial No. 85792872

The refusals were maintained despite the amendment to the drawing to add dotted lines, as shown to the right, and despite the amendment to the description of goods, which now reads: “The mark consists of a green circle placed centrally on the front exterior side of a white cup shape. The colors green and white are claimed as elements of the mark. The portions of the drawing represented by dotted lines are not claimed as elements of the mark.

Will Starbucks put this cup of coffee down, not file a Request for Reconsideration by the November 18, 2015 deadline, and fail to close on this application at the USPTO, or will it attempt to best the 200 page Office Action response it filed back in February?

Or, does this new Starbucks application filed just last week provide any insight?

But, what I really want to know is when will we see a non-traditional trademark application to protect the green straw?

 

The Love and Hate State.

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

Aaron Keller, Managing Principal, Capsule

Love and hate are only emotional states, but we’re swimming in murky waters today. In response to a massacre in South Carolina the politicians are fighting to remove the “rebel” flag as an icon. Then, we see a movement here in the Minneapolis community to remove the name John C Calhoun from a lake area. Why stop there, why don’t we dig up his grave and put his head on a spike outside the Calhoun Beach Club? Okay, maybe that’s going too far. Or perhaps the discussion about changing the name of a lake was already too far. Hate has continued to be a theme when it comes to the subject of slavery, the south and racial discrimination.

At the same time, we’ve lowered ourselves into the love pool of gay marriage with the supreme court decision. The love of two individuals can be bonded with a legal piece of paper giving them rights as a couple beyond those of individuals. Love is an interesting word, diametrically opposed to the word above, yet clearly defining an emotion.

Now to a shift of gears and the connection between emotion and symbols. The rainbow has been re appropriated to mean love in the GLBT community. And, the southern symbol of freedom and the right to fight for a belief system (though moronic and wrong) was re appropriated from this flag, the original secession flag of South Carolina. See more at the previous post by Brent Lorentz. Let’s remember none of these flags killed people, though people died below them on battle fields. And, the rainbow doesn’t create love it is just a rainbow. Yet, both insight love and hate, taking people to emotional extremes. Consider the visceral reaction you have to the Swastika, but yet read here all the wonderful meaning associated with it 5,000 years before Hitler re appropriated it to a holocaust.

Now, consider a young man of 29 years old coming out of graduate school at the University of Minnesota with the idea of starting a “design firm” with a design partner, Brian Adducci. All the big roles and financial rewards are going to those kids heading to Wall Street and the financial industry. And, this wide-eyed MBA is starting a firm to design symbols for clients, and his snarky MBA friends ask “you can get paid to do that?”

Well, here we are after writing two books working with clients like Patagonia, 3M, Target, Quirky, SmartWool, Byerly’s and many others. We are in the business of giving brands emotion. We are in the business of designing the symbols which pull people toward brands. We are in the business of designing the very intangible assets driving substantial quantities of value on Wall Street.

And, we love it.