Collaborations in Creativity & the Law

The NFL’s Super Bowl Trademark Nonsense

Posted in Advertising, Articles, Fair Use, First Amendment, Infringement, Marketing, SoapBox, Television, Trademark Bullying, Trademarks

It’s that time of year again. Time to tiptoe around and avoid use of or make any reference to the Super Bowl. Whoops. Anyway, we’ve discussed this phenomenon before:

Advertisers — fearful of NFL legal action — strain and contort to avoid the two words that could make out a nominative fair use of the Super Bowl trademark, opting instead for pairs of other code words like “Super Sunday,” the “Big Game,” “Super Party,” or “Superb Owl” coverage.

Welcome to the advent of “Bowl Viewing Parties,” not Super ones, but Lavo and Tao ones:

Please, would someone just lawyer up, and call it the Super Bowl, while calling the NFL’s bluff?

Brave New World

Posted in Advertising, Famous Marks

Tiffany & Co. made some waves over the past several weeks when it featured a same sex couple in its “Will You?” engagement campaign.  Tiffany is the first “famous” brands to take this path, and they are undoubtedly hoping this campaign will pay high dividends after disappointing holiday sales.

Personally, I applaud Tiffany for taking a bold step in the advertising world.  Although, as the Wall Street Journal noted, the legalization of gay marriage in numerous states has created new opportunities for wedding related goods to be sold.  While somewhat ground breaking, this campaign was certainly sensible from an economic standpoint.

The question that it raises for me is whether we will shortly see more mainstream advertising catering to gay and lesbian consumers.  Of course, such advertising has taken place in publications catering to the LGBT community, but perhaps its time that such advertising start taking place in more of our everyday channels.  Regular print publications and television commercial could all start providing more inclusive campaigns.  Indeed, while the Tiffany ad seems to be garnering the most attention, there was a nice bit of publicity generated for a DirecTV Sunday Ticket ad which “apparently” featured a gay couple.  I say “apparently,” because you’d miss it if you weren’t paying attention.

I’m sure there are those out there that think catering explicitly to same sex couples and/or members of the LGBT community risks alienating more “conservative” consumers.  Admittedly, I think this could be an unfortunate problem that is difficult to quantify in advance.  But seriously, if the NFL and Sunday Ticket are comfortable with the idea, how bad could that downside really be.  I think advertisers need to be prepared to make that leap if they’re not already there.

We Prefer A More Subtle, Delicate Approach

Posted in Advertising, Almost Advice, Articles, Branding, Guest Bloggers, Look-For Ads, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, SoapBox, Squirrelly Thoughts, Trademarks

For those of you who have been with us since the beginning of this wonderful collaboration of legal and marketing types, known as DuetsBlog, you also know we have a mascot dubbed Duey — he’s depicted in the squirrel graphic at the top of this page. Here is his story, as told by Aaron Keller on behalf of his creative team at Capsule, who brought Duey to life.

Unsurprisingly, Duey is all about protecting his nuts and the nuts of those he cares deeply about, especially those of the clients he steadfastly protects. We have embraced the graphic as a nice metaphor of what we’re best at, but we’ve only told the complete story once before, as Duey is a relatively shy little guy, and actually we prefer to see the subtlety of the graphic communicate a metaphor instead of hitting our gifted readers over the head with a coarse tagline.

More to that delicate point, spending the week in Las Vegas — the city that knows no such thing as subtlety and proud home of the SHOT Show 2015 — has unearthed lots of blog fodder, so here’s the first we’ll share:

The harshly worded tagline reminds me of a topic we have talked about more than a few times here: The art of subtlety as compared to “hitting the consumer over the head” with an idea.

Subtlety is more often rewarded in the world of predicting the existence and scope of trademark rights, that’s one reason we favor suggestive over descriptive trademarks, and we have reminded marketing types to avoid the D-word at all cost.

Perhaps the one time when subtlety should be discarded is when you’re operating in the world of non-traditional trademarks, given the benefits of using overt “look-for” advertising.

By the way Duey, is coming up on his sixth birthday March 5th, right on the heels of his golden birthday celebration last year, any ideas on what he might enjoy doing this year?

Tacking: It’s Not Just for Judges Anymore

Posted in Infringement, Law Suits, Trademarks

The U.S. Supreme Court doesn’t frequently take on trademark cases, so yesterday’s release of its decision in Hana Financial, Inc. v. Hana Bank should have been pretty exciting (available here). We discussed the case back in June when the Court granted certiorari,  in a tone that may have suggested that the case didn’t involve the most thrilling of issues. In Hana, the Supreme Court was tasked with deciding if the issue of trademark tacking constitutes a question of law or a question of fact. Grab your popcorn.

While some may confuse the names, nobody is likely to confuse the Hana Bank Headquarters building (Image courtesy of Hana Financial Group, licensed via Wikimedia Commons)

The admittedly rare doctrine of “tacking” affects how the issue of priority is determined. Trademark rights are a bit like musical chairs: first person to sit gets the chair (except for intent-to-use applications, which are more like calling “shotgun” in your parents’ car, but you get the picture). Generally, the first person to use the mark gets priority over any subsequent, junior users.

Hana Financial first used its HANA FINANCIAL GROUP mark in the U.S. in 1994, it would normally have priority over Hana Bank, who began using the mark HANA BANK in the U.S. 2002.  However, Hana Bank had been using HANA WORLD CENTER since 2000, and HANA OVERSEAS KOREAN CLUB since 1994, all in the U.S. The company had been using the name Hana Bank in Korea (and in Korean) since 1991, but because trademark rights are territorial in nature, such use did not establish rights in the U.S.

The proposed jury instruction cited in the Supreme Court’s decision succinctly summarizes the legal standard for tacking:

A party may claim priority in a mark based on the first use date of a similar but technically distinct mark where the previously used mark is the legal equivalent of the mark in question or indistinguishable therefrom such that consumers consider both as the same mark. This is called ‘tacking.’ The marks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked.

In crib-note form, tacking is allowed where the marks are the legal equivalents of the other and create the same, continuing commercial impression.

The jury concluded that Hana Bank could tack its use of HANA BANK, HANA WORLD CENTER, and HANA OVERSEAS KOREAN CLUB all back to 1994, establishing priority over Hana Financial Group.  The Ninth Circuit affirmed.  It noted that other courts could reach a different conclusion on the same facts, but that because the Ninth Circuit treats the issue as a question of fact, it was bound by the jury’s determination.

The Supreme Court quickly dismissed most of Hana Financial’s arguments simply by comparing tacking to the other issues that we task juries with deciding. Juries frequently apply law to fact in all types of criminal and civil cases. In fact, the Court reasoned, the issue of tacking falls uniquely within the scope of a jury’s knowledge. The Court concluded that “[a]pplication of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys  falls comfortably within the ken of a jury.” Accordingly, in a brief 7 and 1/2 page decision, the Court resolved a 24-year circuit split.

Many commentators (ourselves included) wondered whether the Supreme Court would take the opportunity to resolve the related circuit split of whether the overall question of a likelihood of confusion is a question of fact or a question of law. The Court made no mention of the issue. However, it is hard to argue the Court’s reasoning does not apply with equal force to at least most of the factors considered in the likelihood of confusion analysis. The similarity of the marks, the relatedness of the goods, the likelihood of expansion, and the majority of the other factors all, in some way, are dependent upon how an ordinary consumer would see the marks and the goods. If the lower courts interpret the Hana decision as being persuasive for this issue too, then perhaps the Hana decision is more interesting than it first seems.

And if you’re still not sold, make sure to come back for the Supreme Court’s sequel, B&B Hardware: the Board Strikes Back (with res judicata). It’ll be a good one.

Free Speech: Paris Mayor Off-Message by Threatening Fox News Suit

Posted in First Amendment, Mixed Bag of Nuts, Television

The scene of the Charlie Hebdo attacks in Paris ten days later.

I returned from Paris on Tuesday after a short vacation.  As a bit of a news junky, it was admittedly an exciting time to be there.  When I arrived on Friday, we headed straight for the scene of the attack on journalists at the offices of Charlie Hebdo.  Just a short while earlier, Secretary John Kerry had laid a wreath there and the area was bustling with people curious to see the place where terrorists murdered 12, simultaneously attacking the values of free speech and free expression.

We were struck by the artistic expressions of grief and sorrow.  This particular display down a small street from the main memorial area was particularly gripping:

An artist’s memorial to the victims of the attack on Charlie Hebdo in Paris near the main memorial to the 12 slain by terrorists earlier this month.

The resounding worldwide reaction to the murders, undertaken to avenge cartoons that the terrorists said had mocked Islam, was a celebration and reaffirmation of the societal value of free speech and free expression.

Upholding these values necessarily means taking the bad with the good, even when sensible judgment counsels otherwise.

The mayor of Paris on Tuesday said she intended to sue Fox News after Fox had run news reports that parts of France and England were deemed “no-go zones” that were off limits to non-Muslims.  Last weekend, Fox News issued a series of apologies for its erroneous reporting on the purported “no-go zones.”  In its original reporting, Fox and its talking-heads erroneously reported that areas of Paris and other parts of France and Europe were off-limits to non-Muslims and dominated by Sharia law.

The shoddy journalism and down-right inaccuracies aside, Paris Mayor Anne Hidalgo would be wise to realize that Fox’s error in this instance isn’t worthy of a lawsuit.  It’s an example of taking the bad with the good, even if her Parisian sense of good judgment—reeling and recovering from this month’s attacks—counsels otherwise.  Or in other words, a suit wouldn’t be wise even where, as Mayor Hidalgo puts it, the “image of Paris has been prejudiced and the honor of Paris has been prejudiced.”

Media law experts like Professor Jane Kirtley of the University of Minnesota, who spoke to Reuters after Mayor Hidalgo announced her intent to explore legal action against Fox News, have decried the threat of suit primarily because Paris likely has no cause of action.  Professor Kirtley told Reuters, “[t]his is an example of someone from another country not recognizing the force of the First Amendment, which allows criticism of governmental entities.”

As media writers have started to observe, including Erik Wemple at the Washington Post, the irony of the mayor’s threatened suit is painfully lost on her following the worldwide refrains of “Je suis Charlie.”

Moreover, the chances of enforcing a judgment against Fox News—even a judgment obtained under the laws of a presumably more lenient and less-press-friendly jurisdiction like France—are not favorable to Mayor Hidalgo.

In 2010, President Obama signed the SPEECH Act (Securing the Protection of our Enduring and Established Constitutional Heritage Act).  As other commentators have been picking up on since yesterday, the Act makes a host of foreign libel judgments unenforceable in U.S. Courts.

I took a look at the provision of the Act that would likely apply in this case, located at 28 U.S.C. Sec. 4102.  The federal statute includes two exceptions to the general rule that a foreign defamation judgment isn’t enforceable in a U.S. court.  Either of those exceptions presents steep, steep burdens for Mayor Hidalgo.

To enforce the foreign judgment against Fox News, Mayor Hidalgo would have the burden of proving that either the foreign court “provided at least as much protection for freedom of speech and press” as the First Amendment, or that Fox News “would have been found liable for defamation by a domestic court applying the first amendment….”

A U.S. Court wouldn’t likely entertain such a suit.  The Chicago Tribune has a great (if old, it’s from 1997) summary of the City of Chicago’s attempt, back in the 1920s, to sue the Chicago Tribune for libel against the city.  Bottom line:  the suit didn’t work and an attempt by Paris to sue Fox News probably wouldn’t survive a motion to dismiss, either.

Paris is covered in tributes to the victims of the January 7 terrorist attack.

Mayor Hidalgo would be wise to leave the lambasting to the likes of the John Stewarts of the world and let news consumers demerit Fox News for this error.  Then we’d have one fewer opportunity to be distracted from the real issue at hand, which is, the celebration and reaffirmation of free expression and free speech that cannot be silenced by senseless terrorism.

The Odds and Evens of Q’s: Trademarks in the Car Industry

Posted in Branding, Famous Marks, Mixed Bag of Nuts, Patents, Sight, Trademarks

Last week was the North American International Auto Show in Detroit, one of the top trade shows in the automotive industry. The highlight of the show for car buffs was the new Ford GT, which I will try not to drool too much over its beauty and power. You can see below and hear for yourself.

If you have been reading at all about the industry, you may be aware of a perceived pivot by car manufacturers towards a collaborative approach among brands in developing and implementing new technology. First, there was Tesla’s claim to make its patents open source with Musk’s “All Our Patents Are Belong To You” blog post. Then Toyota at the Consumer Electronic Show offered to release its fuel cell patents in a similar manner.

But what we haven’t seen in awhile is a fight among car manufacturers over badges. This week CAR Magazine brought me just that – Audi and Fiat are fighting with one another over the Q2 and Q4 model names. As Aaron Keller pointed out in a post last year, sometimes it can be a little difficult to distinguish between two vehicles when their badges are removed.

German manufacturer Audi sells a line of Q-branded crossover vehicles including the Q3, Q5, Q7 (the Q7 starting around $48,300). Typically, in car badging, the smaller the number, the smaller the car relative to its fleet siblings. Other examples of this are the BMW 3-series, 5-series, 7-series; the Audi A4, A6, A8; and the Volvo S40, S60, S80. Of course the use of the Q badges is always with the four-ring logo, and an example of that use is shown here:

As consumers favor smaller utility vehicles over larger ones, brands have started to introduce smaller-numbered vehicles (for example, the BMW 1-series) to denote relative size in the fleet. So with that in mind, Audi wished to fill out its fleet with new, smaller concepts under the Q2 and Q4 badges.

Unfortunately for Audi, here Italian car manufacturer Fiat already has the Q2 registered as well as filings for the Q4 (including the stylized version shown below).

But Fiat’s own use of its Q-series marks poses questions…The Q2 and Q4 marks are used by different divisions of Fiat, which some may not recognize as actually being owned under the same umbrella. Q2 and Q4 have been used on Alfa Romeo hatchbacks such as the Alfa Romeo 159 sedan (about a $35,000 car when originally sold).

And Q4 is used on at least two models by Fiat-owned Maserati – the Ghibli S Q4 and the Quattroporte S Q4 ($106,900 base price)

For Fiat, its Qs distinguish not between sizes of vehicles but drivetrains – much like QUATTRO indicates an all-wheel drive vehicle in the Audi fleet. The Q2 designates a front wheel drivetrain, while the Q4 designates an all-wheel drivetrain.

But current use of Q-series badges is not limited to a German auto manufacturer and an Italian one. There’s also the Q- line of sedans (Q40, Q50, Q70, etc.) from Infiniti, a division of Japanese automaker Nissan.

Do you think there is a likelihood of confusion among consumers for an Audi Q2 and Q4 in its crossover fleet in view of Fiat’s use?


Owning the Visual Identity of a Generic Word

Posted in Almost Advice, Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademark Bullying, Trademarks

Unless you have created a highly stylized, distinctive, graphic representation of a generic designation, perhaps something like the Miller Lite script, don’t bother trying to own or enforce it:


Most likely, you’ll end up regretting the decision to enforce, when the court of public opinion weighs in, after the social media shame-wagon flogs it as another example of trademark bullying.

Lagunitas Brewing filed this complaint in federal district court for trademark infringement against Sierra Nevada’s Hop Hunter IPA, because the generic acronym IPA (standing for India Pale Ale) appeared in black all capital letters (perhaps the lowest common denominator for stylization):










Lagunitas claimed: “This proposed design uses all capital, large, bold, black ‘IPA’ lettering in a font selection that is remarkably similar to the iconic Lagunitas design and, indeed, is the central and most prominent feature of the new Sierra Nevada design, emulating the iconic Lagunitas family of IPA trademarks. . . . ”

The thing is, Lagunitas probably has the potential for a very, very narrow trademark right in its stylization of the IPA graphic, but I’d hardly call Sierra Nevada’s version “remarkably similar” — moreover, I’d suggest that near identity and probably other similar trade dress elements would be needed to have a plausible likelihood of confusion claim.

Lagunitas seems to have forgotten how it explained in far more detail — in paragraph 16 of its complaint — the claimed distinctiveness of its graphic representation of the generic IPA acronym on product packaging:

“The unique ‘IPA’ lettering used in the Lagunitas ‘IPA’ Family of Trademarks has a distinctive serif font, distinctive kerning (or letter spacing), between the ‘P’ and the ‘A’, slightly aged or weathered look, with uneven areas on each of the letters, and the elimination of any periods between the letters. These elements together are unique to the iconic design of the Lagunitas IPA. The overall effect of these factors (the all-capital, large, bold, black serif lettering style, and the placement with respect to other wording and design elements) creates a unique, iconic design that is associated with and signifies Lagunitas and its associated reputation for excellence in the craft brew industry and among consumers.”

Assuming for the moment that Lagunitas has a narrow trademark right in its graphic representation of the generic IPA acronym, the problem remains, all the claimed elements aren’t present in the Sierra Nevada Hop Hunter IPA package design.

Probably the most unique aspects of the visual identity (the “slightly aged or weathered look, with uneven areas on each of the letters”) are not present in the Sierra Nevada design, putting aside the fact that the HOP HUNTER trademark obliterates at least a quarter of the IPA lettering.

It’s kind of like complaining about the use of the words “Eat More Kale” when the words are spelled correctly without dripping black “Eat Mor Chikin” ink from cows with poor grammar and penmanship, or perhaps it’s also like targeting a monochrome red shoe when the non-traditional red color trademark covers only the red sole portion of the shoe as a contrasting color.

Let’s face it, Lagunitas is another painful reminder to brand owners that selecting appropriate trademark enforcement targets is no less important when narrow as opposed to strong trademark rights are claimed. Yes, the Lagunitas overreach reminds me of the ill-advised enforcement targets pursued by both Chic-fil-A and Christian Louboutin.

Having said all that, we remain hopeful this all ends well for Lagunitas.  Hopefully the wisdom of the Lagunitas’ apology and the almost immediate withdrawal of the lawsuit permits the brand to get back to business and avoid years worth of legal fees and further media flogging.

Legal types, would you have brought the Lagunitas’ trademark infringement claim?

Marketing types, how would you grade the Lagunitas’ apology in terms of content and timing?

Claim What’s Yours

Posted in Mixed Bag of Nuts

How do you claim your trademark? There is no requirement that a company use one of the trademark designations in connection with their trademark, but it is a good practice to get into. Using either the “TM” or “Circle R” puts others on actual notice of your rights. The “TM” should be used before the mark is federally registered. Once the mark is registered, it should be replaced with the “Circle R.” There is no need to use a trademark designation every time the mark is used. However, it should be used on the first prominent use of the mark so that others will recognize the designation and associate it with the mark.

BLACKHAWK Down: Registration Refused Based on Relatedness of Wine & Beer

Posted in Squirrelly Thoughts, Trademarks, TTAB, USPTO

While the Minnesota state legislature ponders whether consumers should be able to purchase liquor on Sundays within the state, the U.S. Trademark Trial and Appeal Board (TTAB) has once again concluded that consumers are likely to be confused that beer sold under one mark comes from the same source as wine (or another liquor) sold under a similar mark.  While these TTAB decisions are positive for those who already have their trademark registered, it’s problematic for potential applicants on either side of the debate seeking to protect their mark in this industry.

I have griped before about the USPTO’s firm stance on the relatedness of beer to wine and other liquors – a troubling trend that I think should be adjusted.  In my experience, when a registration is refused on this basis, the Examining Attorney will cite prior case law; evidence supporting that beer, wine and liquor are sold at the same retail outlets; evidence showing that breweries have used wine or bourbon barrels to age their beer; and third party registrations claiming both beer and wine.  I question whether consumers would believe that a craft beer under one mark emanates from the same source as wine sold under a similar mark such that the consumer would be confused as to the source.  I’d like to see someone present some current survey evidence that either supports or dispels this notion based on actual consumer perceptions.  I also don’t see this issue as being much different than how the USPTO has treated apparel items.  Despite apparel items like hats being sold in the same retail outlets as other apparel products like shirts, and some registrations covering both hats and shirts, similar marks for different apparel goods are often both able to co-exist on the Register without issue.    Can’t even the most dejected of Vikings fans distinguish between source for SKOL vodka and a SKOL STOUT beer?  I think so.

And as an NPR blog post this month suggests, craft  breweries may run out of available names even among themselves, and then throw in the context of the USPTO’s position on the relatedness of beer and wine?   Troubles may brew.

In the appeal decided this month, In re Sonoma Estate Vintners, LLC, the Applicant’s mark for BLACKHAWK in class 33 for wine was refused registration based on an alleged likelihood of confusion in view of the registered mark BLACK HAWK STOUT in class 32 for “malt beverages, namely, beer, ales, and stout” owned by Mendocino Brewing Company, Inc.  While copies of the bottle labels are shown below, note that the applied for mark does not include the bird as part of the mark.




The hawks used on both labels are certainly troublesome here, but not considered as part of the refusal.  In supporting the refusal, the Examining Attorney relied only on 15 registrations of marks that were registered for both beer and wine to show relatedness of the goods.  In response, the Applicant raised an interesting argument – many of the cited registrations never obtained a COLA label approval certificate from the TTB, which is required for federal regulation.  Interstate commerce sales of alcohol require federal approval of the label, and this regulated interstate use is needed in order to obtain the trademark registration.  Here, none of the cited third party registrations ever received COLA labels for both wine and beers.

It’s important to note that this isn’t the end of the road for breweries, vineyards, and distilleries when it comes to rights in a trademark.  Among other tactics, the Applicant can always reach out to the Registrant to obtain a coexistence agreement with the Registrant that would allow registration of Applicant’s marks.  Refusal to register also does not necessarily mean that the Applicant is unable to use the mark, since enforceable rights in the US begin upon use of the mark.  Moreover, if the applicant had applied for BLACKHAWK WINERY, they would have had a better chance for obtaining the registration over BLACK HAWK STOUT.

Do you think consumers are likely to confuse beer sold by a craft brewery under one mark from wine sold under a vineyard’s mark?  Was the TTAB’s decision here correct?