Collaborations in Creativity & the Law

Creative Acronyms Refused Sometimes…Or CARS

Posted in Advertising, Almost Advice, Branding, Marketing, Product Packaging, Trademarks, TTAB, USPTO

Today’s offices treat acronyms like linguistic yoga (TOTALLY).

ICYMI, they’re popular also in texts, tweets, and other “thumb-talking” activities.  LOL.  SMH.

Legislators are having fun with them lately too, for example the Personal Rights in Names Can Endure Act (PRINCE Act),  the Uniting and Strengthening America by Providing Appropriate Tools Required to Intercept and Obstruct Terrorism Act (USA PATRIOT Act), the Brewers Excise and Economic Relief Act (BEER Act), the Jumpstarting Our Business Sector Act  (JOBS Act), the Value Our Time Elections Act (VOTE Act), and last but not least the Accountability and Congressional Responsibility On Naming Your Motions Act (ACRONYM Act).  If you find these as amusing as I do, check out more of them in this article.

Acronyms are often abbreviations formed from the first initials of the words of a descriptive phrase.  Nevertheless, acronyms may be registerable unless  (1) “the wording it stands for is merely descriptive of the goods or services” and (2) it “is readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents.”  TMEP 1209.03.  An acronym will be considered “substantially synonymous” if it is an acronym for specific wording, the specific wording is merely descriptive of applicant’s goods or services, and the relevant consumer viewing the mark in connection with those goods or services will recognize it as an acronym of the descriptive wording.  Id.   So two important considerations that affect registerability of an acronym are the listing of the goods or services and the perception of the mark created by product packaging and/or marketing material relative to these goods or services.

A recent TTAB decision illustrates this concern.  The Trademark Trial and Appeal Board recently affirmed a refusal of CARS for “Computer software used for capturing road data and determining safe curve speeds for automobiles; Computer hardware used for capturing telemetry and road data” and “Software as a service featuring software for capturing road data and determining safe curve speeds for automobiles” on the basis that the mark is merely descriptive of the listed goods and services.  The specimen filed with this use-based application showed CARS as being an acronym for “Curve Advisory Reporting System.”  Given the use of the synonymous “automobiles” in this goods and services description, as well as the use on the specimen, the examiner found the mark to be descriptive and the Board agreed.  Perhaps if the application did not include “automobiles” in the description and the example of use provided with the application did not so directly tie the meaning of the acronym to the listed goods and services, this may have been allowed.

With the popularity of acronyms, marketing teams working together with their legal friends can develop a suitable strategy for the application for the mark and the mark’s use that can help guide an acronym towards federal protection.

Tiffany Prevails!

Posted in Advertising, Branding, Infringement, Mixed Bag of Nuts, Trademarks

The title is not a reference to a win by me, but rather my namesake Tiffany and Company’s big win in the Southern District of New York.

Tiffany and Company was awarded nearly $16 million against Costco Wholesale Corp. (“Costco”). You may recall I blogged about this lawsuit which was filed on Valentine’s Day in 2013. See the post here.

The Reader’s Digest version of the case is that Tiffany and Company sued Costco for selling engagement rings infringing on its famous TIFFANY® trademark. The picture below is an engagement ring from the Tiffany and Company website.
Tiffany Ring










A federal jury with predominantly men (5 to 3 — so you cannot say it was Tiffany and Company groupies protecting their favorite store) awarded Tiffany and Company $7.5 million in damages, including statutory damages, because the conduct was willful (Costco knew they were infringing). Then, in Phase 2 of the trial, the jury slapped Costco with an $8.25 million award for punitive damages.

Not surprisingly, Costco was unhappy with the verdict and damages awarded. It plans to appeal to the Second Circuit. Will Tiffany and Company be able to retain the awarded damages and substantial punitive damages on appeal? Only time will tell.

Sonic v. Supersonic Coffee v. AKA Coffee: Bullied to a better brand?

Posted in Branding, Dilution, Famous Marks, Trademark Bullying, Trademarks, TTAB

A specialty coffee roastery in San Francisco, Supersonic Coffee, has decided to rebrand to the name AKA Coffee, as reported yesterday.  The impetus for the rebrand was an opposition at the Trademark Trial and Appeal Board (TTAB) by the national fast-food chain Sonic, against Supersonic Coffee’s trademark application for the word mark SUPERSONIC.  This trademark application (Serial No. 86382164) sought registration of the mark SUPERSONIC for various coffee-related goods, such as “beverages made of coffee; beverages with a coffee base; coffee … roasted coffee beans,” etc.

Sonic filed its Notice of Opposition at the TTAB last year against Supersonic’s trademark application, alleging that registration should be refused under Trademark Act Section 2(d) based on a likelihood of confusion with Sonic’s registered marks, including: SUPERSONIC® for hamburgers and burritos; and various SONIC® word and design marks for drive-in restaurant services, hamburgers, onion rings, french fried potatoes, hot dogs, candy, and soft drinks.

The Notice of Opposition also asserted a likelihood of confusion with Sonic’s marks SONIC WAVE® for drinking water; SONIC SPLASH® for flavored waters and soft drinks; SONIC SUNRISE® for orange based fruit juice; SONIC CHILLERS® for candied ice milk confections; and SONIC BOOM® for energy drinks.

Sonic also alleged that its registered marks are famous, and that registration of the SUPERSONIC mark should be refused under Trademark Act Section 43(c) because the use of that mark would be likely to dilute Sonic’s famous marks.

Supersonic Coffee never filed an answer to the Notice of Opposition.  Therefore, in January of this year, the TTAB entered a default judgment against Supersonic Coffee and refused registration of the applied-for SUPERSONIC mark.

Now, Supersonic Coffee made the decision to rebrand to a new name:  AKA Coffee.  The press release by the formerly-named Supersonic Coffee, announcing the rebranding, seemed to suggest that it was bullied into the name change, characterizing its situation as a:

David vs. Goliath fight between a small business and a multi-billion-dollar company, where a small upstart is forced to close or change names … this time it’s happening in the specialty coffee industry.

On the other hand, Supersonic never filed an Answer to the opposition, and its own press release also explains that Supersonic hired “one of the top IP firms in the country” (which appears to be Kilpatrick Townsend & Stockton LLP, based on the attorney information in the trademark application and in the TTAB records for the opposition).

Rather than a case of bullying, perhaps this is a case where the startup applicant simply realized that it had unintentionally selected a mark that infringed on some major registered brands, and that it was unlikely to succeed in an expensive TTAB opposition proceeding.  Moreover, perhaps this case of “bullying” resulted in some mutually-beneficial rebranding to a more appealing and creative mark (at least in my opinion).  As the press release explains:

The AKA name is playful, personal, and embraces the moments when we enjoy a cup of coffee, whether it is a quick break or a meditative pause. Call it what you will, to us it is AKA Coffee.

The AKA Coffee website also explains:

Enjoying coffee is a personal affair, from the beans you brew to the cup you choose. Whether a quick break or a meditative pause, we’d like to make those moments more delicious. Call it what you will, to us it’s AKA Coffee.

Although the new AKA Coffee website is not yet operational, a preview of the rebranded AKA Coffee designs, products, and merchandise may be viewed in this news posting.  In my view, the rebranded AKA Coffee name and designs are more memorable and creative than the previous “Supersonic” name, which was based on the ambiguous tagline: “We are Supersonic. We’re on a mission to make awesome coffee that breaks barriers.”

I think the AKA Coffee rebranding is a big improvement.  What do you think?  Which brand do you like better?

Ready for the New TTAB Rule Changes?

Posted in Agreements, Articles, Branding, Marketing, Trademarks, TTAB

To the extent you haven’t yet had a chance to fully digest the significant rule changes about to go into effect in all pending TTAB (Trademark Trial and Appeal Board) cases at the USPTO (United States Patent and Trademark Office) on January 14, 2017, now is your chance to hear how they will impact your cases and learn strategies for mastering them.

Strafford is reconvening a familiar threesome, including yours truly, to provide valuable insights and a dynamic discussion of these important rule changes, in a webinar scheduled for November 9, 2016. Here are the details on the program and how to register for it. And, as always here, the first three to post a comment below will enjoy free attendance.

Basically, you’ll learn how to do this on the TTAB gridiron:





I’m very fortunate to be presenting again with two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Quarles & Brady’s D.C. Office.

Seems just like yesterday, but do you remember the TTAB rule changes we discussed nearly a decade ago, in this 2007 Strafford webinar?

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.