Collaborations in Creativity & the Law

Can a Google Search Save Your Company $5 Million?

Posted in Articles, False Advertising, Infringement

It sounds like a scam, but I swear, there is some truth to this headline. Just ask Hasbro, Inc., the owner of the Littlest Pet Shop line of toy animal figurines. If you have never seen one before, below is an example of two of the pets:

LPS - Harris Faulkner That’s Benson Delwyler, who appears to be a dog, and Harris Faulkner, who is apparently a hamster. These are just two of the over 3,000 uniquely named pets that comprise the Littlest Pet Shop Collection. I even purchased a few of these as gifts for my nieces. I couldn’t tell you which ones though. I believe one was a turtle, but I certainly don’t remember their names; I doubt I even read the name at the time.

At least one person did pay attention to the name: Harris Faulkner, a Fox News journalist. How unhappy was she? Enough to file a federal lawsuit on Monday, August 31 seeking $5 million in damages. Ms. Faulkner claims that Hasbro’s use of her exact name amounts to false endorsement under the Lanham Act and violates her right of publicity (Complaint available here).

In addition to the use of her exact name, Ms. Faulkner alleges that

elements of the Harris Faulkner Hamster Doll also bear a physical resemblance to Faulkner’s traditional professional appearance, in particular tone of its complexion, the shape of its eyes, and the design of its eye makeup.

Ms. Faulkner claims that Hasbro’s actions are particularly damaging. First, she claims that Hasbro’s “portrayal of Faulkner as a rodent is demeaning and insulting.” Second, she notes that she does not endorse any products because “doing so would be a breach of journalistic ethics, would directly harm her professional credibility, and would be in violation of her contractual obligations to her employer.” Finally, she is particularly troubled that the toy is labeled as a “choking hazard” for young children.

But is there any merit to Faulkner’s legal claims? Section 43(a) of the Lanham Act protects the names of celebrities in a manner similar to trademarks. Liability may arise if the plaintiff can establish that the defendant’s use would cause consumers to mistakenly believe that the plaintiff has endorsed or approved the defendant’s goods.

Ms. Faulkner alleges vaguely in the complaint that she has “seen evidence of actual consumer confusion” already. If such evidence exists, it would obviously be very helpful. I have my doubts, however. Looking at the market for Hasbro’s toys, it seems unlikely that parents/adults would purchase any of the toys based on the name, other than whether their child already owns that pet. Children requesting or purchasing the toys seem unlikely to have any awareness of the names of cable news anchors.

Also, by Ms. Faulkner’s own admission, journalists don’t normally endorse products. This is different from sports figures, actors, and other public figures that regularly use their name and image to endorse and advertise products. Even defendant’s customers did recognize the name, they may be unlikely to mistakenly conclude that Faulkner endorsed the product because there is no natural tendency to associate journalists with product endorsement.

Unlike false endorsement claims, a right of publicity claim does not require any false statements or implications. Instead, the defendant’s use must merely be sufficient for consumers to identify the plaintiff from the defendant’s use. Although the name is identical, there is also no other indicia that suggests that the name is a reference to Ms. Faulkner, the journalist. The toy doesn’t come with a microphone, camera, or notepad. While the complaint attempts to manufacture this indicia by referencing the complexion, eyes, and makeup of the toy, it seems like a stretch since all of the Littlest Pet Shop toys appear to have the same eyes and makeup.

Regardless of the merits of Ms. Faulkner’s claims, Hasbro is going to spend an appreciable sum either to settle or fight this dispute. This is unfortunate because Hasbro could have avoided the issue with some simple trademark clearance searches. Conducting a legal clearance search is always a best practice. However, if there are simply too many product lines to have an attorney involved for each one, the marketing department should at least have a standard practice of a brief Google search to identify other companies, individuals, or products. A five second search would have revealed that “Harris Faulkner” is the name of a news anchor and television host for a national cable news network.

Even worse, I doubt Hasbro cares much about the name of the hamster, anyway. Perhaps Hasbro was using “Harris” as a clever way to sound like “Hairy.” And maybe someone on Hasbro’s marketing team was a big fan of the novel As I Lay Dying. But it is likely that the toy would sell just as well with any other name.

Luckily for Hasbro, this appears to be a unique situation. As of the publication date of this article, no “Whiskers Ryan” or “Meow Meow Milkone” has come forward with their own lawsuit. And as far as my childhood favorites go, I think any claims by the heirs of Leonardo da Vinci and Michelangelo would be time barred by now.

Very Superstitious

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

- Mark Prus, Principal, NameFlash

“Very superstitious, writings on the wall, Very superstitious, ladders bout’ to fall.”

“When you believe in things that you don’t understand, then you suffer. Superstition ain’t the way.”

- Stevie Wonder lyrics for Superstition

With all due respect to Mr. Wonder, when it comes to branding, superstition may actually be the way in certain cases. Allow me to explain.

About 20 million Americans suffer from paraskevidekatriaphobia, or fear of Friday the Thirteenth. Before you scoff at this phobia, recognize that the American economy loses an estimated $800 to $900 million from reduced economic activity every Friday the Thirteenth (according to the Stress Management Center and Phobia Institute of North Carolina). People who suffer from the fear of Friday the Thirteenth stay home or cancel trips on that day.

Is there any wonder why many buildings in the United States have no thirteenth floor? Would you brand something with the number 13? There is a brand of apparel called Lucky 13, but I think they are trying to negate the bad karma of 13 with the word “lucky.”

Or maybe you have heard of hexakosioihexekontahexaphobia (fear of the number 666 aka “the mark of the beast”)? The folks at Zillow.com examined real estate sale of homes with “666” in the list price, and found that those houses sold for 3.2% less than other similar homes. However, that phobia did not stop the makers of 666 Cough and Cold Products from branding their products with it (I guess for when you have the devil of a cold?).



Blue box











The number 7 is thought to be a lucky number, and some brands have embraced it. For example, Boots calls its skin care line No7 because the number seven was, at one time, used to denote perfection.

No 7








“7 for all mankind” is a high fashion denim clothier whose jeans (nicknamed “sevens”) have “…graced the bodies of notable female celebrities that include Emma Stone, Kim Kardashian, Jennifer Lawrence, Kristen Stewart, Jessica Alba, and Kate Bosworth” according to their website. There are many more examples of “7” brands.

Sometimes marketers can make a major error in branding if they are not aware of the superstitions of their target consumers. For example, if you are selling a product in an area of the US where there are significant numbers of Chinese-Americans, you may be aware of the “lucky” connotations of using the number “8,” which is pronounced “bā” in Mandarin and sounds very similar to the Mandarin word for “prosper” or “wealth.” However, you should probably avoid use of the number “4” which is considered unlucky because it is pronounced similarly to a word that means “death.” As proof, Zillow.com calculates that in areas where the Chinese population is great than ten percent, homes with a “4” in the list price garner sales prices that are 1% lower versus the estimated sales price, while having an “8” in the list price translates to an increase of 1.5% versus the estimated sales price.

Does superstition matter? Apparently it does to some people. And if those people happen to be in your target market, then you should probably pay attention to it!

It’s DangeRuss, So DangeRuss

Posted in Advertising

Russell Wilson (whose twitter handle is @DangeRussWilson) recently courted controversy with some comments made in an August 26 Rolling Stone article:

Another venture is slightly less altruistic. Wilson is an investor in Reliant Recovery Water, a $3-per-bottle concoction with nanobubbles and electrolytes that purportedly helps people recover quickly from workouts and, according to Wilson, injury. He mentions a teammate whose knee healed miraculously, and then he shares his own testimonial.

“I banged my head during the Packers game in the playoffs, and the next day I was fine,” says Wilson. “It was the water.”

Rodgers offers a hasty interjection. “Well, we’re not saying we have real medical proof.”

But Wilson shakes his head, energized by the subject. He speaks with an evangelist’s zeal.

“I know it works.” His eyes brighten. “Soon you’re going to be able to order it straight from Amazon.”

After facing some scrutiny, Wilson largely doubled down on his comments through Twitter over the next several days, “clarifying” that he didn’t mean to suggest that his magic water cured his concussion, but instead merely prevented his concussion.  Enter Russell Wilson, snake oil salesman.  In the grand tradition of Ponce de Leon and Bobby Boucher, we finally have our dihydrogen monoxide pitchman for the new millennium!

“But wait!” you say.  “This isn’t just water!  It’s got nanobubbles and electrolytes!”  I’ve previously ranted on the nonsense of electrolyte advertising.  As for “nanobubbles,” while the concept potentially has very important applications, the only thing oral consumption of bubbles is likely to cause — “nano” or otherwise — is belching, bloating, and flatulence.

Wilson’s comments are more dangerous than other baloney advertising claims because they make explicit health claims.  And the Federal Trade Commission, among others, require strong scientific support for any such claims.  In addition to federal laws and regulations, unsupported health claims also likely run afoul of state deceptive advertising laws.  By continuing to make these comments, Wilson is exposing himself and his company to possible legal claims.

The comment by Wilson’s agent in the quote above indicates that the agent, who is presumably a lawyer, is at least aware of the risk.  However, it’s questionable whether his passing comment about the absence of medical evidence would immunize Wilson and his company from lawsuits based on “testimonials” or claims where the disclaimer was not included.  Additionally, even if Wilson can dodge lawsuits, he should be judged harshly for his comments in the Court of Public Opinion.  He’s either a fraud or a fool, and in either case, it’s not his place to be be spouting off about health effects of any beverages, let alone one in which he has a financial stake.

International Trademark Registrations

Posted in Almost Advice

A little known fact is that U.S.-based applicants can file a Madrid application that relies on either a registration on the Principal or Supplemental register.  A Madrid application significantly lowers the costs of foreign trademark filings by centralizing the application process. The ability to support a Madrid application with a Supplemental Registration can change the strategy for responding to a merely descriptiveness registration refusal. It may be the better option to secure the earliest filing date in foreign countries while waiting to acquire distinctiveness in the United States. And the International Registration, which issues from the Madrid application, is subject to a central attack (i.e., an attack on the Supplemental Registration) for only five years from the registration date. Accordingly, at about the same time the U.S. mark is acquiring distinctiveness, the foreign registrations are becoming safe from a central attack.

No MN State Fair Photos, Pretty Please?

Posted in Articles, Copyrights, Fair Use, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Trademarks

NoPhotosWell, it is opening day at the 2015 Minnesota State Fair, it was a great day, perfect weather, thank you very much!

Happy to see that Lulu’s Public House is going strong, she appears to have some new food items this year, and they look amazing — a Minnesota Wild Rice Benedict Muffin and a Mac & Cheese Cupcake! Can’t wait to try them.

We’re not sure what happened to the lawsuit, the trademark infringement suit that was filed last year by Lulu’s Market & Deli from St. Paul, anyone know?

As you know, from following this blog over the past more than six years, intellectual property issues abound at the State Fair, so I couldn’t resist defying the signage at one vendor in the West End, and snapping the above shot to make a point.

Having said that, as a courtesy, I respectfully cropped out the yard and exterior sculptures that I presume the sign was intended to address — such things can, of course, be subject to both design patent protection and copyright protection, and even non-traditional trademark protection, assuming the configuration and/or trade dress is non-functional and distinctive.

Trade secrets would not apply since these sculptures are on public display. I’m thinking the vendor probably is focused on copyright, if so, the sign doesn’t constitute a valid copyright notice, but most probably get the point. Please is present perhaps in recognition of fair use?

The ultimate point here is, everyone is thinking about intellectual property these days, but few understand it, that’s why we’re here, so thank you for spending time with us.

Tastes Like Chicken, Not a Copyright

Posted in Advertising, Branding, Copyrights, False Advertising, Food, Infringement, Marketing, Taste, Trademarks, USPTO

A common refrain: “There must be a way to protect this idea, either by trademark or copyright.” Regrettably, in many instances, the answer is “none of the above.” Take, for example, the humble chicken sandwich.

Late last week, a three-judge panel at the Court of Appeals for the First Circuit upheld a granted motion to dismiss with a holding worthy of a double take: “the district court properly determined that a chicken sandwich is not eligible for copyright protection.”


The plaintiff, Norberto Colón Lorenzana, was a former employee of South American Restaurant Corporation (“SARCO”), a franchisee of Church’s Chicken in Puerto Rico. During his employment as a manager, Lorenzana came up with “the concept for a new chicken sandwich that could be included on Church’s menu.” As alleged in Lorenzana’s complaint, the concept was a hit, and SARCO/Church’s began offering the new sandwich – dubbed the “Pechu Sandwich.” SARCO eventually obtained a federal trademark registration for the mark PECHUSANDWICH in 2006, though SARCO did not file a five-year declaration under Section 8, and so the registration was cancelled in 2013.

Lorenzana’s relationship with SARCO and Church’s soured from there, and Lorenzana brought suit in the District of Puerto Rico, alleging that SARCO “received economic benefits from plaintiff’s creation” without compensating him, and that SARCO “intentionally, willfully, fraudulently, and maliciously procured the registration of Plaintiff’s creation in the Patent and Trademark Office without his consent and proper compensation” — essentially a claim for fraud on the PTO. Lorenzana sought “no less than $10,000,000.00 as damages.” (You can read the full complaint here)

SARCO quickly moved to dismiss Lorenzana’s complaint, asserting that it did not state sufficient facts to allege fraud on the PTO. Ruling on the motion, the District Court for the District of Puerto Rico agreed and dismissed the claim. The court then generously read in a claim for copyright infringement (the complaint made no specific reference to copyright protection or the Copyright Act), but summarily dismissed that claim as well, holding “Neither plaintiff’s idea for the chicken sandwich recipe or the name ‘Pechu Sandwich’ is subject to copyright protection.”

Lorenzana appealed to the First Circuit, which unsurprisingly affirmed the District Court. As a quick refresher, according to Section 102 of the Copyright Act, there are eight categories of creative works eligible for copyright protection:

(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

Those categories make no room for recipes, which are functional directions to achieve a result rather than a creative work. Therefore, the First Circuit concluded that “[a] recipe — or any instructions — listing the combination of chicken, lettuce, tomato, cheese, and mayonnaise on a bun to create a sandwich is quite plainly not a copyrightable work.”

From there, the First Circuit turned “to the meat of [the] allegations” (pun presumably intended) and held that Lorenzana failed to sufficiently allege “that any false statement exists” that would constitute fraud on the PTO. So while the name PECHUSANDWICH is certainly eligible for trademark protection as evidenced by the registration, Lorenzana did not sufficiently allege factual grounds for fraud. Lorenzana did not claim ownership of or priority to the PECHUSANDWICH mark, presumably because SARCO, not Lorenzana, was the party to actually use the mark in commerce.

While Lorenzana is left uncompensated for his sandwich, we at least have the comfort of knowing that chicken sandwiches remain above the copyright infringement fray.

Do EU principles of free movement trump trade mark rights or vice versa?

Posted in Branding, Fair Use, Guest Bloggers, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Patents, Trademarks

Lauren Millward, Solicitor, Browne Jacobson LLP

In recent times trade mark law in the UK has developed to comply with the fundamental principles of the EU including the free movement of goods and services within the EU. The decision of the Court of Appeal in the UK in Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd is important in this respect and relates to parallel importing of pharmaceutical products within the EU.

Speciality European Pharma (SEP) sold a drug (tropsium chloride) in the UK, under an exclusive licence. The drug was sold under the trade mark REGURIN in the UK, CERIS in France and URIVESC in Germany.

Doncaster, a parallel importer of pharmaceutical drugs had, for many years, imported CERIS from France but over-stickered the box with the name of the drugs’ active ingredient, tropsium chloride.

Shortly after expiry of the patent in the drug, generics manufacturers entered the market in the UK. Doncaster, as a parallel importer, could not compete on price with those generics manufacturers and instead began importing the drugs CERIS from France and URIVESC from Germany into the UK and re-branding those drugs with the UK trade mark REGURIN.

SEP argued that Doncaster’s rebranding in these circumstances infringed SEP’s trade mark in the REGURIN mark.

The Trade Mark Directive deals with exhaustion of the rights of the trade mark owner at Article 7, however it doesn’t precisely apply in this case as it relates to the use of a trade mark where goods have been put on the market in the EU under that mark. The drug in these circumstances had been put on the market under the CERIS and URIVESC marks respectively but the claim related to use of the REGERIN mark.

The court therefore looked outside of the provisions of the Trade Mark Directive at the Treaty on the Functioning of the EU. In particular, Article 34 prohibits between Member States quantitative restrictions on imports and all measures having equivalent effect. There is an exception to this in Article 36 where prohibitions or restrictions on imports are justified on grounds of the protection of industrial and commercial property (such as trade marks). Such prohibitions or restrictions must not however constitute a means of arbitrary discrimination or a disguised restriction on trade.

The judge considered that the enforcement of a National trade mark having territorial effect in one Member State could be a measure having the effect of a prohibition on imports, however, enforcement of that trade mark would not be prevented by Article 34 where that enforcement is justified for the protection of that trade mark. The principle of free movement of goods must therefore be balanced against the protection of the relevant trade mark.

By having in place different trade marks for the same product in different Member States the court held that there was an unjustified “artificial partitioning of the market” by the trade mark owner constituting a disguised restriction on trade.

Although Article 7 didn’t apply in these circumstances, the court considered that the case law under that Article concerning re-packaging of products was relevant. The cases of Bristol-Myers Squibb v Paranova and Boehringer II in particular held that where a parallel importer re-packages goods, the following conditions must be satisfied to prevent infringement:

  1. The repacking must be objectively necessary to avoid market partitioning;
  2. The condition of the product must not be effected;
  3. The manufacturer and the importer must be clearly identified;
  4. The reputation of the mark and its owner must not be damaged; and
  5. The importer must give notice to the trade mark owner.

The court considered in particular whether the re-branding of the product from CERIS and URIVESC was objectively necessary to avoid market partitioning. Overturning the first instance decision, it was held that it was objectively necessary. Doncaster was effectively excluded from a proportion of the market where the brand REGERIN was prescribed, rather than the generic version. Although that was a small proportion of the overall market (the majority of the prescriptions were made under the generic name), that proportion was a substantial part and therefore the enforcement of the trade mark REGERIN by SEP was unlawful partitioning of the market.

This decision makes it difficult for trade mark owners to benefit from the strong brand built up under a trade mark during patent-protection. It was held that it was unreasonable to expect Doncaster to create its own brand and to compete with the trade mark owner, particularly considering the high costs of marketing and Doncaster’s lack of control as a parallel importer over its own supply chain (meaning that it is unlikely that doctors would rely on Doncaster’s brand). Re-branding to the REGURIN brand was therefore necessary in these circumstances to allow for effective access to the market.

Although each case will turn on its facts considering, this decision is in favour of parallel importers in the EU and suggests that, in the majority cases, the principles of free movement of goods will prevail over the rights of a trade mark owner.


Retail Store Branding With a Weak Dollar

Posted in Advertising, Almost Advice, Articles, Branding, Marketing, Trademarks

It costs dollars to create a brand. It costs dollars to protect a brand. And, it probably costs more dollars to protect an inherently weak brand and mark over a strong one. So, choose wisely.

The resulting point of weak and narrow trademark rights was driven home on our drive home from a Canadian fishing trip last month, as we passed through International Falls, Minnesota:

DollarIntlFallsA pair of dollar stores, also known as “extreme value” retailers, can be seen competing side by side, with fairly boring names, sorry Dollar General and Family Dollar. Apparently, Dollar Tree is just across town. But, no Dollar Depot or Super Dollar there, at least yet.

It left me wondering, is there insufficient margin in this segment to warrant even a modicum of creativity, or might there be some hope out there for marketers to see dollar signs in their eyes?

When the generic name for the services being offered (dollar store) has the word DOLLAR in it, do marketing types really need or want to have DOLLAR constitute half the retailer’s brand name? Perhaps minimal creativity communicates low prices, part of the brand promise?

Well, if you’re guilty of being a slave to the almighty dollar, maybe DOLLAR DAZE won’t leave you a day late or dollar short, thanks to the alliteration and double meaning, assuming you can tolerate sound-alike Dollar Days. Better yet, and dollar for dollar, my money is on DOLLARAMA?

Yet, not to be undersold on prices or creativity, Jack’s 99 Cent Store — More Than Just a Dollar Store, appears to have a personality that is anything but boring in the heart of New York City.

It is interesting to note that neither of the original trademark registrations for the oldies (DOLLAR GENERAL and FAMILY DOLLAR) contain disclaimers of the word DOLLAR, so dollars to doughnuts, over the last forty plus years, the dollar store segment was recognized as a generic category.

You can bet your bottom dollar that Dollar Tree did not disclaim “dollar” in 1993, but it did as early as 1998, as did Dollar Fare, Dollar Side, and Mighty Dollar in 2005, and Dollar Smart and Super Dollar — both in 2009, Cheaper By The Dollar a year later, Dollar Max in 2011, and Country Dollar in 2012, but most recently, Dollar House had to disclaim the word “dollar” from its USPTO intent-to-use application, leaving me to wonder what’s left in the house? Same with Dollar Station, begging the similar question of what is left when the Dollar has left the Station?

You’re wondering what the $64 Question is, right? How about, does this crowded field of DOLLAR brand names for dollar stores confirm yet another meaning to the phrase weak dollar?

Or, to ask the question slightly differently, would you pay top dollar for any of these DOLLAR brand names, or would you start from scratch with something fresh? Hello, Ollie’s Bargain Outlet.

Personal Branding with the Right to be Forgotten

Posted in Branding, International, Mixed Bag of Nuts, Search Engines, Social Media, Social Networking

Everyone has a brand.  Through every interaction and impression we leave in the minds of others, each of us builds on our own personal brand.  In the Internet age, and particularly with the advent of social media, our personal brands are more definable than ever.  Googling anyone but the most stalwart off-the-grid enthusiast will usually provide at least a small window into the individual’s life.  For this very reason, countless articles have been written about how to protect or modify one’s personal brand online.  However, we can’t always control what others write about us, and online content has an unfortunate tendency to linger.

The “Right to be Forgotten” refers to a right that emerged in Europe after a European Court of Justice ruling.  The court held that individuals have a right to have certain information about them removed from Google’s (or another search engine’s) search results.  In Europe, a private person can fill out a form to request information that “appear[s] to be inadequate, irrelevant or no longer relevant or excessive . . . in the light of the time . . . elapsed” be removed from search results.  As it currently exists in the European Union, the Right to be Forgotten does not provide for removal of the original content.  It merely creates a pathway for removing the content from online search results, rendering it virtually inaccessible.  To date, Google has received close to one million requests.

Recently, a ruling from a French court required Google to remove search results not only from its European search sites, such as google.fr, but from all of its sites worldwide, including the American site, google.com.  The particular case related to a European citizen’s request to remove online content related to an old criminal conviction.  Citing censorship concerns, Google stated that it would not comply with the ruling.  (Interestingly, in a meta-gaming twist, Google has now also been ordered to remove links to news articles discussing Google’s refusal to remove the original links from its worldwide sites.)

Censorship and privacy aside for the moment, the Right to be Forgotten has major implications for personal branding.  The core concept allows an individual to choose which events, posts, and opinions from the past will follow her.  Consider the Oklahoma University students who were expelled after a video of their racist chant was posted online.  As those students grow into adulthood and perhaps begin families and careers, articles about their misguided act will still be floating around the Web.  No matter how they may grow and change, their personal brands will be tarnished for life if those articles continue to surface in a Google search.  Providing those students the right to someday, as adults when the story is no longer “relevant,” remove such articles from search results, would give back a substantial power of personal branding.

Individuals born today will have their entire lives documented online—their newborn photos, their embarrassing toddler moments, their unbridled teenage angst—and without the Right to be Forgotten or something similar, that documentation will forever affect the individuals’ personal brands.

The Right to be Forgotten does not currently exist in the United States, but as we can see, European courts or other entities may seek to expand its reach to the U.S.  While we watch Google struggle with the law abroad and debate potential privacy versus censorship concerns here in the States, perhaps we should also consider the right to control one’s personal brand.

Louisiana Fish Fry Ltd. Couldn’t Jump Out of Frying Pan

Posted in Food, Law Suits, Mixed Bag of Nuts, Trademarks, TTAB

As I was looking at a photo of the fish my nephew caught this weekend, I wondered if my brother and my sister-in-law would be inviting me to a fish fry.

nephewIndeed, a fish fry was on my mind after having just read the Federal Circuit’s recent decision. In that case, Louisiana Fish Fry Products, Ltd. (“the Company”) sought to overturn the Trademark Trial and Appeal Board’s (“Board”) refusal to register the mark:


The Company sought to use the mark with various sauces, marinade and Cayenne pepper. I am getting hungry just reading this as these are all good fish toppings.

In appealing, the Company argued that “FISH FRY” and “PRODUCTS” were not generic and had acquired distinctiveness. As an aside, a generic trademark is synonymous for a class of product that is commonly used. For example, aspirin, thermos, yo-yo and escalator, have been declared generic by United States courts.

The Federal Circuit disagreed with the Company. Instead, the Federal Circuit found that a disclaimer was needed for “FISH FRY PRODUCTS” and it had not acquired distinctiveness.

The Federal Circuit found that there was substantial evidence supporting the Board’s determination that the company had failed to show that “FISH FRY PRODUCTS” had acquired distinctiveness. To establish distinctiveness, the Company would have had to show that “in the minds of the public, the primary significance of a product feature or term is to identify the source of the product, rather than the product itself.” The Federal Circuit found that it had not done so. Because of the failure to provide substantial evidence of distinctiveness, the Federal Circuit did not reach the issue of genericness.

You may ask what would have been needed to establish acquired distinctiveness. In the Fish Fry majority opinion, the Federal Circuit relied on a prior decision involving the accessible luxury product manufacturer Coach Services Inc. (“the Coach Store”). (Yes, I must admit I still own a now-battered small black Coach purse that I bought many years ago). In that decision, the applicant Triumph used the COACH Mark with its books and software that helped people prepare for standardized tests. The Coach Store argued that there was no evidence that Triumph’s descriptive COACH marks had acquired distinctiveness. The Board had found that the COACH Mark was merely descriptive of Triumph’s educational materials because it immediately conveyed to purchasers the purpose of the materials. In other words, they coached people on how to succeed on the standardized tests. However, the mark could be registered because it had acquired distinctiveness based on: (1) Triumph being the largest publisher of these types of materials; (2) impressive advertising expenditures and revenues over a number of years; and (3) Triumph’s promotion of the COACH Mark with its books since at least 1989.

Although agreeing on the outcome of the case, Judge Pauline Newman disagreed on the basis for the decision. In her well-reasoned concurrence, Judge Newman explained that “[g]eneric terms and common descriptive names cannot acquire trademark status, and evidence purporting to show acquired distinctiveness of secondary meaning is irrelevant.” She further explained that “[w]hen a term is the common descriptive or generic name of the goods, evidence of secondary meaning cannot change the result.” Generic terms by default are not capable of indicating a unique source. Because “Fish Fry Products” is a generic and common descriptive name for these products, Judge Newman concluded that registration of the application was properly denied by the Board.

Whose analysis (the majority or Judge Newman) do you find more persuasive? Is anyone else hoping to be invited to a fish fry this weekend?