DuetsBlog

Collaborations in Creativity & the Law

Not a Soccer Fan But SHEBELIEVES

Posted in International, Marketing, Social Media, Television, Trademarks

Although I’m an avid sports fan, I rarely watch soccer and quite frankly I also rarely watch women’s professional sports.  I have some very logical reasons for my avoidance of soccer (in what other sport does the clock tick up and “extra minutes” are then magically tacked onto the end, no matter the score) and women’s professional sports (have you tried to watch an Azarenka tennis match?).

But on Sunday night, I found myself on the couch in the final minutes of the Women’s World Cup match holding onto a belief that they would win.   Oh no there it was again… “I Believe That We Will Win” stuck right back into my head where it thankfully had vanished since last summer’s Men’s World Cup hoopla.  Around this time last year, Tim and I wrote a couple posts on the trademark issues surrounding the I BELIEVE and the chant (see here and here).  We probably could have written even a few more.  There were a couple colleges fighting among each other, as well as many filings incorporating I BELIEVE and I BELIEVE THAT WE WILL WIN by individuals and companies seeking to use the mark.  So what about the Women’s World Cup?  They went with…#SHEBELIEVES.

SHEBELIEVES

In the often egocentric world of sports (no examples needed), it was interesting to see the US Women’s team on a global stage stand behind the outward slogan  “She Believes” to advance the goals and dreams of other women and young girls.   The team encouraged social media posts with the hashtag #SHEBELIEVES with women posting photos and tweets about their goals and dreams.

Even with all the attention to this, there are no trademark filings for SHE BELIEVES or #SHEBELIEVES.  Now as I write this post, it is the Monday after the Women’s Cup Final, and so maybe something was filed today, but the Women’s World Cup has been going on for weeks.  And no filings.  Nothing from the US Soccer organization, nothing from a Jane Doe down the street.  Nothing?  To the extent any filing even incorporates SHE BELIEVES, the only one is for AND AS SHE BELIEVES, SO IT IS FOR HER for various clothing by Girl Power, Inc. registered over six years ago.  Pretty surprising to see that nothing was filed in the last month – especially with growing popularity for soccer in the US and the women’s team’s success.

Can you imagine what a world this would be if every young girl or woman had a chorus of fans, family, friends, sponsors, and mentors cheering “SHE BELIEVES…”?   I think we would find a lot more women scoring hat tricks in life.

How would you capitalize on SHE BELIEVES?  Do you think it has some staying power?  Would you have sought trademark protection for this?

 

Absolut Apologies, Comparisons, Truncations

Posted in Advertising, Articles, Branding, Fair Use, False Advertising, Food, Marketing, Trademarks, Truncation

It has been a while since a billboard campaign has caught my interest and attention, but the currently running Absolut Goes Dark ads are an exception worth noting:

AbsolutJack

AbsolutJohnnie

AbsolutJim

Isn’t it interesting — at least in this context — how the simple references to Jack, Johnnie, and Jim, draw an obvious comparison to the distilled spirits brands Jack Daniels, Johnnie Walker, and Jim Beam? We’ve discussed here before similar fair comparative advertisements — in the context of Vodka brands no less — and brand leader references.

Although the JIM BEAM brand has been federally-registered a very long time, it doesn’t appear the brand has sought protection for the truncated version of its name, JIM.

Same story with JOHNNIE, but not so with Mr. Daniel — he seems to know more than Jack about protecting trademark truncations, having obtained a federal registration for JACK standing alone, more than a decade ago, and he recently used this specimen to keep it active:

JackAd

Swedish Absolut is not only on a first name basis with these well-known distilled spirit brands, but it also appears to know how to own federally-registered rights in the shape of its bottle:

AbsolutBottleNow, if Absolut were to truncate its name, should it target a low calorie version that allows drinkers to target their Abs? Look what one finds when searching for Abs Vodka . . . .

Will Your Brand Celebrate American Independence?

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

By Debbie Laskey, MBA

In the United States, July is the month when we celebrate Independence, specifically on the Fourth of July. While many retail stores promote “Independence Day” sales that last more than just one day, we can all recall automobile sales advertised on TV and radio called “Independence Day Sales” but start in June and last well into July

The reason behind this advertising strategy can be explained by a simple fact. Businesses want to capitalize on the buzz of the moment. In the case of June and July in the United States, that buzz is Independence Day.

Consider the following well-known brands. During June and July, they are uniquely positioned to take advantage of the “America” or “American” portion of their brand names for a myriad of advertising and promotional opportunities – check them out to see what they do differently this time of year to build brand awareness:

* American Airlines

* American Apparel

* American Broadcasting Company

* American Eagle Outfitters

* American Express

* American Greetings Corp.

* Bank of America

* TravelCenters of America

If your brand had “America” or “American” in its name, what would you do during June and July to capitalize on Independence Day or the entire month of July? Certainly, product or service discounts are an option, or maybe, the launch of a new product or service, or perhaps, the implementation of a new loyalty or referral program. But whatever announcement your business makes, you would definitely have an audience.

Another spin on this topic is if a portion of your brand name is tied to a national park, national monument, theme park, hotel, resort, etc. There is no doubt that your brand has a head start on brand awareness if the name of your business were Mt. Rushmore Cement Company or Yellowstone Coffee or Liberty Music. In all of these scenarios, the first goal of all marketing campaigns has been achieved. There is immediate brand interest during June and July.

It’s important, though, that you don’t get so caught up in the buzz of the moment that you lose sight of the core strengths of your brand. Your competitive positioning and overall brand promise should stay front and center – always, no matter what unique advertising opportunity presents itself.

So, will your brand celebrate American independence?

Counterclaims for Cancellation Are Like Yoga Pants for Your Infringement Defense

Posted in Advertising, Fair Use, Fashion, Infringement, Law Suits, Loss of Rights, Trademarks, USPTO

Here’s one piece of advice you’ll hear from just about any trademark attorney: apply to federally register your marks as soon as financially possible. It is a very important step to take in order to protect your brand. A federal registration provides nationwide rights over any third-party that begins use of a confusingly similar mark after you file the application. This, along with other reasons, is why it is much easier to prevent or stop third-parties from using infringing a registered mark than it is for an unregistered mark. However, a registration is not a guarantee of success against third-parties, which is something a small entrepreneur may find out as its lawsuit against Skechers moves forward.

Terri Kelly is an entrepreneur who sells her own flip-flops at http://terrikelly.com/. She advertises her wares with the slogan YOGA PANTS FOR YOUR FEET®, as shown from her website below:

ypforfeet website

As you might guess, that “little r” is very important to this story. Ms. Kelly applied to register the YOGA PANTS FOR YOUR FEET mark on May 23, 2014. It ultimately registered on May 5, 2015. Why does this matter so much? Because sometime in early 2015, Sketchers began promoting sales of its footwear identifying them as being “like yoga pants for your feet.” After a cease and desist letter went un-ceased and un-desisted (that’s a legal term, I think), Ms. Kelly filed a complaint against Skechers on May 13, 2015.

Ms. Kelly seems to have a pretty strong claim. Skechers has used the entirety of Kelly’s mark for highly related footwear products. It also appears clear from publicly available Skechers began using the mark only after Kelly filed its trademark application. Accordingly, that registration provides presumptions of validity, ownership, and priority of the YOGA PANTS FOR YOUR FEET. But what if the registration is invalid?

A registration is vulnerable to cancellation on a number of grounds for the first five years of registration: First, if the third-party actually used the mark before you, it may be able to cancel the mark based on priority. Second, the party may be able to cancel the mark claiming that the mark is merely descriptive and never should have registered. Third, an application may be void if the mark was not in use at the time of the application (for use-based application). And fourth, if the applicant commits fraud upon the Trademark Office (submits materially false statements with the intent to deceive the Trademark Office).

As you might have guessed, Skechers has asserted all of these grounds in its counterclaim for cancellation of Kelly’s registration. Skechers also asserted a claim of fair use, meaning that it is making legitimate use of the words in order to describe their products.

There is a thin and subjective line between suggestive trademarks and merely descriptive trademarks. While Skechers is correct in that “YOGA PANTS FOR YOUR FEET” has some descriptive significance, I’m not convinced that it is merely descriptive as a whole. The individual words may be, but that doesn’t render the entire mark as merely descriptive. A number of well-known marks consist of descriptive components. If the shoe was on the other foot, I would think Skechers would agree. After all, Skechers is the company owns the following applications and registrations:

  • 50% SHOE. 50% SOCK. 100% COMFORTABLE
  • SOCK-FIT
  • RUN HARD. LAND SOFT.
  • ALL AROUND COMFORT
  • RELAXED LIVING
  • ENERGIZE EVERY STEP
  • SHAPE-UPS
  • TONE-UPS

Kelly’s YOGA PANTS FOR YOUR FEET is at least as suggestive as all of these marks. I have to think that Skechers would take similar action against a competitor for using these same slogans. Also interesting was Skechers initial public response, which accused Kelly of “attempt[ing] to trade on Skechers’ long track record of success.”

We’ll have to wait and see what facts the parties come forward with to support and defend the claims of invalidity. In the event that the registration is considered invalid, it will be unfortunate. Many small businesses and entrepreneurs recognize the importance of protecting their brands, and invest the time and money to obtain a registration. The fact that you have a registration means little if the registration could be cancelled by a defendant. Unfortunately, parties often don’t find this out until after they’ve been harmed by another third-party’s infringement.

Here are three tips to consider when applying for a trademark to decrease the risk you’ll find yourself in this situation:

  • If you or your client has any inkling that the mark is merely descriptive, consider picking a new one. It is better to change the mark before you invest more money.
  • Make sure you can support your filing basis of the application. If you file on an intent-to-use basis, have documentation that shows your efforts and intention to sell the products or services identified in the application. If the application is based on use, make sure you’ve made a bona fide use in commerce of the mark.
  • If you ever see any issue regarding use in commerce (or if the Trademark Office refuses your specimen of use), don’t just try to find a way around it. If the specimen is refused, it may mean you haven’t made actual use in commerce. If this is the case, you can amend the application to an intent to use basis to possibly address the issue.

While these steps can’t guarantee that your registration will be valid, they can help you prevent some easily avoidable (but often overlooked) mistakes.

That Google Image Search Could Result in Trouble

Posted in Almost Advice, Branding, Copyrights, Fair Use, Marketing, Mixed Bag of Nuts, Social Media, Social Networking, Technology

One aspect commonly associated with building and maintaining a business is the company website. Establishing an online presence can be an important tool for connecting with customers. While website creation can be a delightful distraction for some and perhaps a frustrating obligation for others, platforms such as WordPress and Squarespace make it relatively simple for company owners to design and run their own websites. A business may choose to broaden its online presence even further with social media networking and blogging. On any of these platforms, businesses may wish to incorporate images into the design. Unfortunately, the Internet’s open atmosphere renders unknowing copyright infringement an easy trap.

Despite the ease of downloading images from a Google image search, businesses must be especially careful in using images found from other sources. Images on the Internet, just like photographs and artworks, are subject to copyrights. The owner of the image generally has the right to prevent others from making or distributing copies, including digital copies. Even if the image appears in a Google or other images search, it is usually not freely available to download a copy or paste it on a different website. Of course, there are exceptions:

  • Options such as Creative Commons allow image owners to make their images available to others for limited uses and for free or for nominal licensing fees. This can be a great source for finding usable images.
  • Fair use is a legal defense to copyright infringement, which provides that copyrighted material may be used for such purposes as criticism and comment. The doctrine is limited, and typically does not apply where the alleged infringer is using the material for commercial purposes.

Aside from these exceptions, use of an image found on the Internet, without the owner’s permission, typically infringes the owner’s copyright. Since the passage of the Digital Millennium Copyright Act (DMCA), image owners have a useful tool at their disposal for addressing infringing copies. The DMCA provides for “takedown notices,” which a copyright owner may submit to an Internet service provider, requesting that the infringing copy be removed. (See one attorney’s account of her own experience submitting a DMCA takedown notice to Google.) In other cases, a copyright owner may choose to send a cease and desist letter, or in some cases even a demand for licensing fees, leading to what some refer to as copyright bullying.

The intersection of copyright law and the Internet is often difficult to define. For this very reason, many argue for a relaxing of copyright laws with respect to online content. However, for at least the time being, an awareness of the potential copyright issues may in some cases help prevent them.

“Of All Time”

Posted in Branding, Marketing, Mixed Bag of Nuts, Social Media, Squirrelly Thoughts, Trademarks

Those three words are pretty bold, especially when we’ve only been around just over 6 years:

“‘Of all time’ is used to make a comparison, stating that something is the best throughout the ages.”

We’re pleased to report that DuetsBlog continues to be recognized as one of the top twenty-five intellectual property law blogs “of all time” — or, we might way, “throughout the ages.”

Hat tip to the Copyright Litigation Blog:

“Justia’s Blawgsearch Ranks the “Most Popular” intellectual property law blogs.  Out of 461 intellectual property law blogs listed in total by Justia, here are the top 25 of “all time.”  Visiting each one shows you just how alive thinking is in patent, trademark, copyright and related fields and how the blogosphere opened up this field of interest to public scrutiny and healthy debate.”

And another hat tip, to our friend Ron Coleman over at his Likelihood of Confusion blog.

We’re honored, as the graduating-kindergartner among the bunch, to be included in such impressive and adult company of lawyers . . . .

We’re not too shabby when it comes to rankings in the branding world either (top thirty “at the moment”) . . . . and no worries, we have no intention of resting on our laurels.

¿Por Que, JUANITO FÚTBOL?

Posted in Advertising, Branding, Fair Use, Famous Marks, Fashion, Infringement, Social Media, Trademarks, TTAB, USPTO

In the fall of 2012, an upstart freshman quarterback at Texas A&M named Johnny Manziel earned the moniker “Johnny Football” during an incredible season, leading the Aggies to a number of huge wins. Yet after three years, a Heisman Trophy, and a shaky rookie season in the NFL, Manziel has yet to secure a trademark registration for JOHNNY FOOTBALL. It’s a lesson for anyone who begins widespread use of a trademark: get an application filed ASAP.

A recent ESPN article discussed Manziel’s progress leading up to his sophomore year in pro football. Manziel laments his role as a “distraction” on the Cleveland Browns in 2014 and says he will no longer do his “money sign” gesture on the field. It also contained this intriguing note:

A company called Already LLC, headquartered in Fort Worth, Texas, recently transferred trademarks it owns — Johnny Baseball, Johnny Basketball, Johnny Sports, Johnny Golf and Johnny Soccer — to Manziel. Manziel is still in the process of securing Johnny Football.

This seemed hard to believe, at first. Even Wikipedia claims that the JOHNNY FOOTBALL nickname “is a registered trademark.” But for perhaps the first time in history, Wikipedia has this one wrong.

Manziel, filing jointly with an entity named “JMAN2 Enterprises, LLC,” applied to register the JOHNNY FOOTBALL trademark for a variety of apparel and entertainment services on February 2, 2013. The problem? An individual named Shannan Young had already applied to register the mark JUANITO FÚTBOL one month earlier on January 3, 2013. “Juanito,” of course, is the Spanish “diminutive” for Juan, which is roughly equivalent to “John” for an English-language name. In essence, Young beat Johnny Football to the PTO register for JOHNNY FOOTBALL.

The real kicker (no pun intended) is that old college rivalries appear to be behind the application. Take a look at Young’s specimen for the JUANITO FÚTBOL mark. Notice anything?

Screen Shot 2015-06-26 at 7.38.17 AM

That’s a logo for Texas Tech University on the product wrapped in the trademark. Texas Tech, of course, is an in-state (and former conference) rival of Texas A&M, Manziel’s alma mater. Also, it is unexplained why this was an acceptable specimen of use — the application identified “Hats; Jerseys; Sweatshirts; T-shirts” and the product shown appears to be some kind of cup. But the juanitofutbol.com site remains live and active, and continues to sell apparel products bearing the mark.

We recently noted the importance of policing use of trademarks and watching for potentially-infringing marks. The ongoing saga of Johnny Manziel emphasizes the importance of filing for trademark applications as soon as they are in widespread use — before a foe can swoop in and block registration of your mark.

As a result of Young’s quick actions, Manziel’s application was eventually suspended for nearly two years while Young’s senior application moved through to registration. Manziel’s application finally received an office action in January 2015 citing JUANITO FÚTBOL as grounds to refuse registration.

It appears that, eventually, Manziel was able to acquire Young’s registration – an assignment from Young to Manziel’s JMAN2 Enterprises entity was recorded earlier this month (though it appears to have actually taken place in April 2014). An office action response should make quick work to point this out and, finally, allow JOHNNY FOOTBALL to proceed to registration. But, perhaps, Manziel could have saved some of his calling-card money had he capitalized sooner on his nickname.

 

Update on Battle Over the Navajo Mark

Posted in Dilution, Fair Use, Famous Marks, Fashion, Genericide, Infringement, Law Suits, Trademarks

In a surprising move last week, Urban Outfitters and its subsidiaries (collectively “Urban Outfitters”) moved to withdraw their motion for partial summary judgment on the secondary liability claims being brought against them by the Navajo Nation (“the Nation”). You might recall that I informed you about the lawsuit and a pending summary judgment motion brought by the Nation in a post last month. The motion to withdraw had to be brought because the Nation refused to consent to Urban Outfitters’ voluntary withdrawal of the partial summary judgment motion.

The Nation is alleging that Urban Outfitters are liable for secondary liability for providing the premises, facilities and instrumentalities for infringement by third parties. Urban Outfitters’ actions in seeking to withdraw the motion do not mean that they believe the Nation will prevail on this claim. Rather, Urban Outfitters merely believes that there is now a fact issue that would preclude the court from granting the motion. Specifically, Urban Outfitters had initially brought the motion because the Nation had fully released them from liability with regard to products, sold by ONE 3 TWO, Inc., d/b/a OBEY clothing (“OBEY”). The Nation had not identified any other alleged third-party infringers at the time. However, in its opposition papers, the Nation identified New Name Inc., as a company that it alleged was distributing infringing products. Further, the Nation contended that Urban Outfitters are liable as principals for the infringing acts of their third party marketing affiliates (e.g., aiding and abetting these affiliates in purchasing the keyword “Navajo” and using the mark in ads and websites).

There will likely be more updates as the New Mexico District Court handling this case had 30 pending motions in the case as of June 18, 2015. Indeed, only last week, counsel for Urban Outfitters argued that its usage of the “Navajo” mark was fair use. Urban Outfitters’ own well-known house mark was what was drawing customers in, not the much smaller font “Navajo” that merely described the product being sold under the Urban Outfitters brand. There would be no confusion in the marketplace—consumers would know that the source was Urban Outfitters not the Nation.

No Coke, Pepsi. No Infringement, Summary Judgment?

Posted in Infringement, Keyword Ads, Law Suits

2015 was the 40th anniversary for the NBC comedy series, Saturday Night Live (SNL). After 40 years, a television show is bound to have a cultural impact. And one of the series’ most well known sketches involves Olympia Restaurant, where customers keep asking for Coke, but are repeatedly told, “No Coke, Pepsi.”

It is doubtful even the most ardent lovers of SNL would have expected that the show would have an impact on trademark jurisprudence. Yet in Multi Time Mach., Inc. v. Amazon. com the Ninth Circuit is considering whether to adopt a “No Coke, Pepsi” rule in the context of online shopping.

The case involves a trademark infringement claim brought by a watch manufacturer. The district court granted summary judgment for Amazon.com, finding that there was no likelihood of confusion as a matter of law. 926 F. Supp. 2d 1130 (C.D. Cal. 2013). The oral argument before the Ninth Circuit can be viewed here, with an audio only version available here.

The Ninth Circuit follows the Sleekcraft factors in determining whether a plaintiff has established a likelihood of confusion. However, in cases of internet advertising, and in particular, use of trademarks as a search term, the Ninth Circuit utilizes a modified approach first adopted in Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011). In that decision, the Ninth Circuit added a new factor for internet advertising, namely, “the appearance of the advertisements and their surrounding context on search engine results.”

The plaintiff argued that Amazon’s display of search results created a likelihood of confusion as to whether the watches displayed as a result were somehow connected with Multi-Time Machine (MTM). Amazon did not carry MTM watches. Yet when entering a search, Amazon’s results did not say “no matches found.” Instead, Amazon uses an algorithm which displays products that internet users may be likely to purchase based on past consumer behavior (i.e., they searched for MTM and later purchased a Casio watch). The search results were not labeled as “sponsored ads” or “other items you might like.” However, each of the results clearly identified the model and brand of each product.

The plaintiff argued that this was insufficient. Instead, it reasoned that Amazon should have stated “No MTM, Casio, Luminox, etc.” Because the MTM brand still appeared in the search engine form at the top of the page, MTM claimed that there was a factual dispute as to whether an internet user might mistakenly assume that the results were sub-brands of MTM, or were connected in some other way to MTM.

In response, Amazon contended that under Ninth Circuit precedent, the relevant consumer was a “reasonably prudent consumer accustomed to shopping online.” Toyota Motor Sales, U.S.A., Inc. v Tabari, 610 F3d 1171 (9th Cir 2010). Each search result clearly identified the manufacturer of the watch and, as a result, internet shoppers could not reasonably assume a connection with MTM merely because it appeared in the search bar.

Amazon could have its search screen state whether a user’s search returned any exact results. But from a practical perspective, what would this look like? If I search for Take 5 on Amazon, must amazon inform me that it does not sell Take 5 candy bars, even if I’m actually looking for a Dave Brubeck vinyl? And what if Amazon actually had the MTM watch, should it have been required to display only MTM watches? Or, what if a consumer is actually using the mark as comparative advertising, similar to walking into retail store and asking whether they have something like a Calvin Klein jacket?

The degree of care and reasonable expectations of internet shoppers continues to evolve. In my own internet shopping, I’m easily able to discern between Amazon search results which include competitors’ products. But maybe I’m more discerning than others in my online shopping. No decision has been issued in the case, though, so MTM will just have to wait and see whether the Ninth Circuit’s response will be “No Remand, Affirmed.”