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Collaborations in Creativity & the Law

Single-Letter Trademark Battles: Who Gets the W for “W”?

Posted in Advertising, AlphaWatch, Articles, Branding, Fair Use, Infringement, Social Media, Trademark Bullying, Trademarks, TTAB, USPTO

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot.

This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot of businesses lay claim to the letter “W” in one form or another.  A quick check of the Patent and Trademark Office database yields no fewer than 1,092 applications or registrations for the letter “W” (or, in some cases “WS” where the letters are intertwined).  Of those, there are 919 live registrations for “W.”

The latest chapter in the saga of our alphabet’s 23rd letter sets an app developer on a collision course with two of Major League Baseball’s most iconic franchises.   Evolution Finance, Inc. applied to register the stylized W mark shown below, featuring a sans-serif “W” on a rounded square with a green gradient.  It uses the mark in connection with WalletHub, a “personal finance social network.”

The WalletHub application claims the colors green and white and identifies, among other services,  “creating an on-line community for users seeking financial information” that allows users to “compare financial products” and “engage in . . . social networking services in the field of personal finance.”  After amending the identification of services in response to an Office Action, the mark was published in October 2012.  Smooth sailing, right?

Enter the Chicago Cubs and the Washington Nationals.  The two ballclubs lay claim to the letter “W” as part of their team heritage.  For the Cubs, a blue “W” (for “Win”) flies on a white flag atop the Wrigley Field scoreboard when the Cubs are victorious, ostensibly so commuters riding the “L” train on the north side of Chicago can see whether their team won.   The Nationals, as we have previously detailed, use a loopy, cursive “W” as their primary logo, and also lay claim to a variety of more basic, sans-serif “W” marks as vintage or throwback logos.  Interestingly, it doesn’t appear that the Nationals are currently selling any “throwback” caps on their official store’s website — they all bear the cursive “W.”

The Cubs’ “W” Flag

In the opposition, the Cubs cited its registration for the W mark in standard characters for “fabric flags,” and the Nationals cited its registration for a stylized W mark that identifies “clothing, namely, caps.”  Of course, the clubs’ notice of opposition claims additional common-law services, “including but not limited to, baseball games and exhibits services and a variety of goods as services.”  We’re left to assume the “variety of goods and services” most closely overlaps with WalletHub’s offerings.

The Nationals’ Registration for the W (Stylized) Mark

A brief disclosure: I am deeply and irretrievably biased as a lifelong Chicago Cubs fan.  In college, I was among the many who draped that very white-and-blue “W” flag in my apartment.  But given their travails into free agency during that time, I would be hesitant to seek financial information from the Cubs, except for the price of a bleacher seat this season.  (as much as $66 for a Saturday in June, if you were curious).

The opposition has been fairly dormant since its filing in early 2013.  The last filing on record is an extension of time from December 2014, containing a lengthy report on the back-and-forth(-and-back-and-forth) settlement discussions among the parties.

Things must have turned south since then.   WalletHub turned to the court of public opinion last month and penned a blog post entitled “Major League Bullies: Teams Seek Hypocritical Trademark Ruling.”

WalletHub considers the pending opposition to be “frivolous corporate bullying” and “pure hypocrisy” given the myriad of coexisting trademark applications and registrations that identify the letter “W.”  WalletHub then takes a swipe at the Cubs, quipping that “very few people would associate the Cubs with W’s these days.” Ouch.

In a way, you can understand where the ballclubs are coming from — sports teams are among the nation’s most iconic brands.  And remember those 919 live registrations for the letter “W”?  It turns out that only four of those are for the “W” mark in standard characters — among them, the Chicago Cubs.   A standard character registration conceivably encompasses every possible stylization of the letter.  The Cubs also seem to be very cognizant of the importance of trademark rights — as the blog Uni-Watch has noted, they may be the only professional sports team to embroider the ® symbol onto the logo of its on-field jerseys.

So where will this one come out? Who gets the “W”?  It seems the WalletHub application is more than just a letter – its background shape and color gradient form a stylization onto themselves separate from the letter.  This gives WalletHub’s mark features that distinguish it from a standard-character “W.”  When combined with the difference between the identified services, WalletHub has a fighting chance — if it can stomach an opposition.  Otherwise, here’s hoping for an amicable settlement — after all, it’s just two “U”s put together.  What harm can it do?

Deck Stacked Against HOUSE OF CARDS

Posted in Television, Trademarks, USPTO

No spoilers here, I promise.  Like many Americans since it was released on Friday, I’ve been binge-watching Season 3 of House of Cards.  If you haven’t watched the program, available only on Netflix, it’s a riveting drama of political intrigue with stellar acting featuring Kevin Spacey and Robin Wright.  The promise of another House of Cards season certainly makes wintry February in Minnesota more palatable.  And if you need more than 13 episodes a year, there’s a British version (which much like history precedes the American reign).  You know something’s become a cultural phenomenon when Sesame Street even parodies it. 

frankunderwoodDB

Given the celebrity monsoon of trademark filings for various slogans, nicknames, and important marks for singers, professional athletes, and actors on a slew of goods and services, I was surprised that a trademark search yesterday revealed hardly any filings for “Frank Underwood,” “Underwood 2016,” and most surprisingly HOUSE OF CARDS.  It’s clearly an incredibly valuable brand for Netflix, changing the course of the company from just an internet Blockbuster to a blockbuster maker.

There’s even a recent third party registration for a House Of Cards wine.

But, as for the popular program, no registrations.  Not for entertainment, not for apparel, nothing.

There’s a pending application for the mark covering the program but it looks like someone is standing in the way of Frank Underwood obtaining of a trademark registration.  As Frank would say, “It only takes 10 seconds to crush a man’s ambitions.”  Here’s the specimen:

DBHouseOfCardsNetflix

The U.S. Trademark Office has refused registration of Netflix’s HOUSE OF CARDS on the basis of a previously registered trademark for HOUSE OF CARDS.  To this, Netflix might say, in the words of Frank’s wife Claire, “you don’t want to make an enemy out of me.” The Netflix show’s application, filed by MRC II Distribution Company L.P., is for:

  • entertainment in the nature of ongoing television programs in the field of drama;
  • entertainment services, namely, an ongoing series featuring drama provided through Internet transmission and streaming services;
  • entertainment, namely, a continuing dramatic television show broadcast over Internet websites and streaming services.”

The prior HOUSE OF CARDS registration owned by Douglas and David Weischadle is for some seemingly overlapping services which include:

  • entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows;
  • entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media.

In use, it appears to be for radio, podcast and video programs relating to poker.  But the registration has broad applicability to the services applied for under the application for the Netflix program, even though its services are tailored to drama or dramatic performances.

No response has been filed to the refusal from late December, and the owners of the Netflix registration have six months to respond.

While the publicly available U.S. Trademark Office records certainly don’t tell the whole story, and perhaps there’s been some scheming and behind-closed-door negotiations,  it is remarkable that the trademark application for Netflix’s powerhouse HOUSE OF CARDS series (produced by David Fincher and starring Kevin Spacey) was filed just 6 months ago, even though the program debuted in February 2013.  The filing was also made just weeks after the Weischadles filed their Section 8 Declaration of Use, to maintain the registration.

We can certainly speculate like political talking heads on This Week or Meet the Press.  Was it a savvy move to wait?  Who might prevail? What’s their next move? Are we headed for a protracted debate?

But if you don’t want to opine on that, who’s your favorite character and what’s one of your favorite HoC quotes?   I really like Jackie Sharp, and although there are many one-liners that I really like from the show, one of my favorites (without a season 3 spoiler, so this is from season 2) is “generosity is its own form of power.”  Share your favorites in the comments below.

Thoughts on the New Mitchell|Hamline Law School

Posted in Branding, Famous Marks, Guest Bloggers, Mixed Bag of Nuts, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

Naming is a tricky business with important marketing and trademark considerations.  Recently, two Minnesota law schools, William Mitchell College of Law and Hamline Law School, took up this daunting task when they decided to merge into Mitchell|Hamline.

On February 13, 2015, William Mitchell Dean Eric Janus announced the newly named law school, with the following statement:

. . . The combined school will be named Mitchell|Hamline School of Law and will be located primarily on William Mitchell’s existing campus in Saint Paul. Mitchell|Hamline School of Law will be an autonomous, non-profit institution governed by an independent board of trustees, with a strong, visible and long-lasting affiliation to Hamline University.

According to Janus, the new law school will benefit students by giving them access to three nationally-ranked programs – alternative dispute resolution (Hamline), clinical education (William Mitchell College of Law), and health law (Hamline) – and more enrollment options than any other law school in the country, in part, due to the new online hybrid enrollment option pioneered by William Mitchell College of Law.  It will also create opportunities for dual degrees and give law students access to more robust university facilities, like an athletic center.

As an alumnus of William Mitchell College of Law, all of this sounds like good strategy under the circumstances facing law schools today.  Nationally, for several years now, law school enrollment has been in steep decline; and, here in the Twin Cities, the presence of four law schools just seems redundant.  (For out-of-towners, the law schools at the University of Minnesota and the University of Saint Thomas are the other two in Minnesota).  In such a tight marketplace, it became increasingly obvious that two schools with complementary offerings in close geographic proximity should not compete for the same students.  Furthermore, both schools have important historic and contemporary alumni, and the merger will create a new network of 18,000 alumni between the schools.

As a brand enthusiast, though, I have some apprehension about the new name.  In particular two things standout: the vertical bar between Mitchell|Hamline and the brick-red coloring for Hamline. (If you initially thought the coloring was for a hyperlink, you weren’t the only one!)  If, as school officials have indicated, the merger is a true combination of schools, why the visual barrier – the equivalent of a punctuation wall –  between Mitchell on the one side and Hamline, on the other.  Why the distinct coloring for Hamline?

I think these elements hinder the presentation of a new, unified brand.  And I think naming experts would agree.  Take for instance, the general advice of Laurel Sutton in her Fast Company article, “What’s in a Name? The Ability to Make or Break a Merger:

“A [merger] is a chance to re-evaluate and redefine two brands that may be on their way down. Everyone loves a comeback, and it’s an opportunity to either build a new brand or build upon existing, if slightly tarnished, brand equity. Think of it as repurposing and upcycling for capitalism, taking old brands and making them brand new again. But this whole process of evaluation is often delicate, because it means dealing with the very marrow of what makes a brand: its culture and people—and ultimately making a value judgment on what to retain and what to reject.”

To me, the vertical bar and the coloring suggest an incomplete evaluation of what to retain and what to reject.  They risk creating that the perception that the two schools don’t want to completely unite.  I would remove both.

As a trademark attorney, I have additional concerns.  Trademarks benefit from a long, established history of widespread use, and the new Mitchell|Hamline name eliminates that, unless tacking is available. Tacking – the ability to attach the history of an old mark to a new mark for legal purposes – is available when a new mark is the legal equivalent of the old mark.  As Tim blogged about last month, the U.S. Supreme Court recently unanimously affirmed a lower court’s decision that tacking applied between the marks Hana Bank, Hana World Center, and Hana Overseas Korean Club.  For Mitchell|Hamline, tacking would be unlikely because the new name is so different from either earlier mark.

This would not likely be true if, for example, the merger had resulted in the name “William Mitchell College of Law at Hamline University.” In that instance, both the Hamline University brand and the truncated William Mitchell brand would continue, and both are protected incontestable registered trademarks.  For a trademark attorney, this would be preferable to the possible abandonment of the mark William Mitchell.

Why didn’t the two schools go this route?  One explanation might be the economics of the deal.  According to the Star Tribune, Mitchell|Hamline is a financially independent entity from Hamline University.  Another related reason might be the perception that one brand had more equity than the other.  As Ms. Sutton suggests:

“Quite naturally, companies want to keep the name of the mightier brand. . . . Sometimes, it’s the acquisition that has better brand recognition. . . . More often, it’s the acquirer who bestows their name, perhaps to signify that they’re the victor.”

So what’s Mitchell|Hamline to do?  In addition to dropping the vertical bar and coloring, one strategy might be to immediately, at least in some contexts, further truncate the name to “Mitchell,” the nickname already in use for William Mitchell.  For the past four years, the truncated name Mitchell was used in a very successful fundraising campaign branded “If Not For Mitchell,” where more than $25 million was raised to support scholarships, faculty, and innovation.  In a bit of irony, this “new” truncated Mitchell nickname would have a date of first use earlier than Mitchell|Hamline (which isn’t in use yet and won’t be until the ABA approves the merger).  Whether this nickname would create an opportunity for tacking is a more difficult conclusion to reach, but not an unreasonable one.

What do DuetsBlog readers think of the new name?  How would you advise these two schools, or others that might be contemplating a similar merger?

 

Will #TheDress Impact Color Trademarks?

Posted in Articles, Fashion, International, Non-Traditional Trademarks, Sight, Social Media, Television, Trademarks

#TheDress phenomenon is about to shape the future of color trademarks and trade dress rights.

You may recall, we have written a great deal on the subject of non-traditional trademark protection of colors, especially during the Christian Louboutin red-soled shoe trademark lessons, but more recently we wrote about the legal implications of color selections in branding strategy.

Enter #TheDress . . . .

No one could have foreseen the next viral sensation before last Thursday, and to the extent you’ve been in the dark on this one until now, meet #TheDress that has dominated the press, or most recently provided the most credible threat of “breaking the internet“:

TheDress

BuzzFeed picked up the Tumblr post by “swiked” and promoted it through its widespread distribution channels, and the rest is internet history.

There are basically two camps in this worldwide online debate, one will “say yes to the dress,” perceiving it to be black and blue, while the other will only say yes to the obviously white and gold dress that they see; amazingly both camps are viewing the exact same image.

So, how can that be? According to NBC’s Today Show:

“It’s a perception issue. It’s the way the brain processes information that comes in,” eye surgeon Paul Dougherty told TODAY. “Everyone’s brain is different, so even though it’s the same stimulus coming in, which it is, everyone processes the information differently.”

Others have further explanations for the neuropsychology behind #TheDress phenomenon. Forbes had an interesting guest post from Steven Pinker, professor in Harvard University’s Department of Psychology, that provides a very detailed explanation of why the image of #TheDress provoked the different perceptions:

“Back to the human perceiver. Brains are so good at color constancy that they often succeed even when looking at a photograph of a scene rather than the scene itself. That is, the brain often compensates for color casts in a photo and allows us to see the colors of the objects in the photograph as they would be in the world. But only up to a point – sometimes the same atypical conditions that fooled the camera (such as mixed lighting and unusual materials) can fool the brain, too. The blue-dress photo is one of these marginal cases. Some viewers see the scene as the camera apparently did, interpret the dress as if it were bathed in a bluish light from the shade, and see its colors as white and gold. Others glean enough information from the image to correctly see the dress as illuminated by a brilliant warm light, and hence see the light-bluish portions as deep blue. By the same calculation, a dark yellow patch on the retina (if it came from a surface bathed in bright warm light) would have to be a dark neutral, to wit, black.”

In addition, CNN quoted Dr. Julia Haller, the ophthalmologist-in-chief at Wills Eye Hospital in Philadelphia, as explaining our perception of color this way:

“Ninety-nine percent of the time, we’ll see the same colors. But the picture of this dress seems to have tints that hit the sweet spot that’s confusing to a lot of people.”

Perhaps most interesting, but the least scientific, CBS New York reported one possible explanation of why you might fall into one camp or another:

“Another theory is more philosophical in nature – if you see black and blue, you are dealing with stress in your life, while if you see white and gold, everything is fine.”

You can only imagine what my family did with that theory over the weekend. The stress theory continued to emerge throughout our discussions in my home over the weekend. We comically treated #TheDress image as a modern sort of mood ring deserving repeated measurement, depending on the changing emotional circumstances during any given moment.

My wife and one son, almost exclusively and proudly see white/gold, my daughter and two other sons, accused of consistently having a darker mood, saw only black/blue. What about me? I continue to see white/gold about 50/50 with black/blue.

Perhaps a few hours on a psychiatrist’s sofa would shed some meaningful light on my chameleon like perception? Or perhaps it simply suggests a keen ability to see both sides of an issue, at least until a client picks the right answer. I’m going with the latter explanation.

So, back to the science of color, what does all this say about color trademarks? Since consumer perception controls trademark determinations, will brand owners be inclined to attempt replicating #TheDress phenomenon in their trade dress, packaging, and color marks? Is it even possible?

No doubt, #TheDress is a good reminder that we all perceive color uniquely, so knowing the range of possible perceptions among the relevant population is critical to understanding one’s scope of rights in a single color trademark or color-combination trade dress.

Indeed, assuming a brand owner can replicate the phenomenon, after #TheDress is there such thing as a Single Color Trademark any longer?

What do you think? Will #TheDress phenomenon impact trademark rights in color marks? How?

All-Star Tips To Avoid Infringement Litigation

Posted in Agreements, Branding, Counterfeits, Famous Marks, Fashion, Infringement, International, Trademarks, USPTO

Shoes are always in the news. From a fashion standpoint, Nike has made headlines this week, with a re-release of the Classic Cortez running shoe (aka, the Forrest Gump shoe) along with the second edition of the LeBronald Palmer.  And yes, the LeBronald Palmer is exactly what it sounds like, LeBron James creating a shoe inspired by Arnold Palmer. Or possibly by an Arnold Palmer that kept James refreshed during his stay in Miami.  But for those of us who like our News of Shoes to have a legal bent, Converse is there to help.

In October of last year, Converse laced up an impressive number of lawsuits against more than 30 different retailers and manufacturers, including big names like Ralph Lauren, Wal-Mart, H&M and others. We discussed Converse’s use of International Trade Commission proceedings as part of this offensive back in October. Since that time Converse has been slowly reaching out-of-court settlements with the parties, including Ralph Lauren, H&M (subscription required), Tory Burch, and others.

In an ideal world though, a company doesn’t need to file thirty lawsuits against its competitors in order to protect its brand. While the Converse example is a bit trickier because it involved protection of the trade dress of the All-Star shoe, here are three steps brand owners can take to help minimize the potential for infringement and counterfeits of their goods:

  1. Conduct a domestic trademark portfolio audit. Are all of your important trademarks protected in connection with all of the important goods? If you have well-known product lines, do you have registrations for these trademarks as well as the overall brand? If not, file new applications with the U.S. Patent and Trademark Office. It is possible others have developed, or could develop, legitimate and enforceable rights in confusingly similar marks.
  2. Record your U.S. registrations with the U.S. Customs and Protection Bureau. The cost is relatively cheap and the benefit can be substantial, especially if your products are susceptible to counterfeits (apparel, jewelry, and electronics in particular). If you have products manufactured abroad, you can provide this information and the Customs officials can identify questionable shipments at the ports – before they are distributed in the U.S.
  3. Conduct an international trademark audit. Do you sell your products overseas? Do you have registrations in these countries? Alternatively, if your products are manufactured overseas, do you have any protection in these countries? By protecting your trademarks in these countries, you can help prevent unauthorized products from leaving (or entering) these countries, too.

These three steps can’t prevent infringing products or counterfeits from ever entering the U.S. or other countries. Yet they can minimize the chances of a problem arising. In the unfortunate situation that the issue does arise, these actions will provide you with an expanded toolbox to address the issue with evidentiary presumptions in your favor and expanded remedies. In short, they’ll help you get off on the right foot.

The NORTH STAR Guides One to Trademark Issues

Posted in Trademarks, USPTO

Minnesota is known as the North Star State – L’Étoile du Nord.  The state of hipsters, unique dining experiences, bitter cold winters, gorgeous summer nights, and fantastic craft brewers also has an impressive craft cocktail scene.  One of its stars has been Johnny Michaels, formerly barman at La Belle Vie, a restaurant that is consistently recognized by the James Beard Foundation as one of the top in the nation.  Johnny filed a trademark application for NORTH STAR COCKTAILS for “alcoholic cocktail mixes”, which based on his website appear to be pre-mixed alcoholic beverages featuring rum, bourbon, rye whiskey, and tequila drinks.  For the moment, let’s set aside the fact that the the filed mark does not match with the example below.

Northstarcocktails

Incidentally, Johnny also wrote a bartending book of the same name, but note the difference in spacing.

NorthStarBook

Johnny’s trademark application for NORTH STAR COCKTAILS has been refused registration based on a likelihood of confusion with a registration for NORTHSTAR for “wine” by Ste. Michelle Wine Estates in Washington State.

NorthstarWine

This same registration was used to refuse registration of the following mark for “beer”:

NorthstarLight

Schell’s, however, filed an application for STAR OF THE NORTH for beer, which was approved and is registered.

This goes back again to the concept that we have previously discussed at least here about the USPTO’s practice to consider beer, wine, and distilled spirits to be related enough that consumers are likely to be confused as to source if similar marks are used on, for instance, beer by one company and distilled spirits by another.

In responding to the refusal, the applicant argued that the goods are unrelated, attempted to amend the mark to add “BY JOHNNY MICHAELS” (you generally cannot amend a mark after filing unless the amendment does not constitute a material alteration of the mark), and argued that the marks were different because of this additional wording.  The attorney also amended the identification of goods as follows: “pre-mixed alcoholic cocktail beverages, excluding beer and wine, derived exclusively from Johnny Michaels’s Copyright-Protected cocktail recipes, the content thereof limited to recipes combining distilled spirits with non-alcoholic additives.”  Much of this amendment unnecessarily limits the scope of the trademark protection to his recipes – diminishing the enforcement value of the trademark.  The Trademark Office has maintained the refusal arguing, essentially, that the cocktail mixes, even if they aren’t sold as including wine, may potentially be combined with wine, for example like a sangria.

Now back to the issue about the mark being different than on the labeling, Johnny also filed a new application for NORTH STAR COCKTAILS BY JOHNNY MICHAELS for “Alcoholic beverages, namely, digestifs; Alcoholic cocktail mixes.”  In maintaining the refusal of the prior application, the examining attorney stated that the refusal would be made with this mark as well, since the mark wholly incorporates the NORTHSTAR mark.  The only other mark on beer, wine and distilled spirits is STAR OF THE NORTH for beer by Schell’s.  Given the broad goods description, it looks like the Trademark Office will likely refuse registration yet again for this newly filed mark.

We have also discussed the right to use versus the right to register, where given particular branding decisions, other indications of source near the mark, and differences in channels of trade or consumers, the likelihood of consumers confusing the goods in use may differ from a determination of a likelihood of consumer confusion within the Trademark Office.   A review of one’s right to use necessarily considers other factors than what is generally before the Trademark Office when making a determination on the right to register.  It’s possible that the winery and Johnny Michaels could come to some agreement regarding use of the mark that reduces likelihood of confusion, and where the winery allows Johnny’s registration to co-exist with its registration.

Practically speaking, I am wondering if any of you think that consumers encountering the North Star Cocktails bottle and the Northstar wine would be confused into believing that the two were related or emanated from the same source.

Do you think the Northstar Light application should have been refused too, especially where “light” in the industry generally, if not always, refers to beer?

Does it matter at all if wine drinkers are a certain class of consumer, where bourbon or tequila mixed drinks may be consumed by a totally different class of consumer?  Their labels certainly seem to attract different consumers.  I’m pretty sure I would never mix any of his cocktails with wine.

Trademarks That Violate Public Policy

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association:

PTODay

John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham Act, that pesky provision of the federal trademark statute that bars registration of certain types of marks that violate public policy, including any trademark that “[c]onsists of or comprises immoral . . . or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .”

The “scandalous” prong of Section 2(a) has barred registration of vulgar marks like 1-800-JACK-OFF, MOMSBANGTEENS, SEX ROD, and BULLSHIT, to name a few.

The “may disparage” prong of Section 2(a) has been invoked to refuse registration of racially-slurring marks like THE SLANTS, HEEB, and SQUAW, and to revoke registration of the R-Word, as disparaging to Native Americans, because it was found to be improperly issued.

No doubt, there are critics of Section 2(a) that question the constitutionality of these statutory bars to registration — I’m alright withholding registration and use of ® — the federal registration symbol — next to those words, because doing so doesn’t prevent their commercial use.

I’m looking forward to hearing Ron Coleman’s perspective on Section 2(a), as counsel for The Slants, a case currently on appeal to the Court of Appeals for the Federal Circuit, and Jesse Witten, as counsel for Amanda Blackhorse and other Native American petitioners who prevailed against the Washington R*dskins last June.

Ron has provided a preview of his thoughts on his Likelihood of Confusion blog, in a three-part series scandalously titled “Indian givers” (parts 1, 2, and 3), suggesting the USPTO assumed this role in ordering the cancellation of the R-Word trademarks of the NFL professional football franchise located in the nation’s capital.

From my perspective, scandal aside, the title of Ron’s series is a misnomer, since the evidence of record in Harjo and Blackhorse showed that the R-Word was improperly granted registration in the first place, so I’m thinking, it looks far more like a windfall to the team than a taking.

In any event, sympathy for the team and other Section 2(a) losers is also unwarranted given the law for some seventy-five years: “The field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.”

Do you think that the registration prohibitions of Section 2(a) will withstand constitutional scrutiny? The Justice Department intends to see to it.

Super Mario in a 3D Printed World

Posted in Guest Bloggers, Mixed Bag of Nuts, Technology

- Derek Mathers, Business Development Manager, Worrell

Mario

 

 

 

 

 

 

 

 

 

 

We are at the brink of a very interesting paradigm shift in economic and legal history, where the fabrication of physical objects is becoming as democratized and accessible as computer processing. Decreases in the price of digital fabrication (3D printing) along with improvements in the mechanical capabilities and materials for the application have shown exponential adoption for personal and commercial purposes.

How do manufacturers feel about this? Nintendo is scared. The Tokyo-based company is currently opposed to the 3D printing of their characters, fearing that it would disrupt their physical sales, displacing their retail partners. However, some suggest that 3D printing may offer new possibilities for Nintendo to profit from the printing of their characters, at fraction of the cost of their current channels.

In this new model, it’s conceivable for Nintendo to recognize a staggering increase in profit from selling files of its characters, rather than physical products, completely negating the need for tooling, production, logistics, etc. In this arrangement a Super Mario action figure could be purchased via a secure product-streaming platform, hosted by Nintendo. From the customers’ perspective, he/she receives near-instant access to a customizable, manufactured-like product without a trip to a local retailer or Amazon.

Computer

 

 

 

 

 

 

 

 

This sounds like a wonderful future, but it’s not without its risks. As a parallel, it may be helpful to look at the growth 3D printing less like that of standard 2D printing, and more like the music industry of the last 20 years. If you recall, artists and studios lost billions as barriers to “music fabrication” were reduced from capital-intensive investments and expensive studio equipment to a laptop computer. On top of that we saw a cataclysmic wave of piracy that nearly engulfed the industry.

Then the business model changed. Digital music services such as Spotify and Soundcloud now provide on-demand access at a reasonable price point, while simultaneously eliminating piracy.

Exposed to same pressures, the key for the world of physical products is likely to be a similar ecosystem, where digital services provide verified, high-quality 3D files for home and commercial printing.

Taking a Jaunt Down Product Naming Lane

Posted in Articles, Branding, Technology, Trademarks

We’ve made a lot of friends in the naming community over the last six years, special congrats to one of them, Anth Shore over at Operative Words, whose work in naming Jaunt was recently featured in a New York Times article called: The Weird Science of Naming New Products.

It is a fascinating inside look at the art and science of naming, definitely worth reading, enjoy!

Here are some of Anth’s previous guest posts here on DuetsBlog, thanks Anth for sharing your wisdom:

Love the word Jaunt, do you think it will be verbed?

Hope You Didn’t Get A Longchamp Bag For Valentine’s Day

Posted in Counterfeits, Famous Marks, Fashion, Infringement, Law Suits, Trademarks

Now I do not mean to tell you that you should return an authentic Longchamp bag from the shops in Paris or the famous bags sold in boutiques stateside.

longchampBut, if your sweetheart bought you a bag from Bed Bath & Beyond (“BBB”) you may have a bag manufactured in China by Capelli New York or another entity. The week before Valentine’s Day, S.A.S. Jean Cassegrain located in my favorite city in the world—Paris—filed suit along with its stateside counterpart Longchamp USA, Inc. against BBB and two other entities. The Longchamp makers alleged that BBB has knocked off its famous bag. The Longchamp makers claim the style 1623 products (example shown here) have become distinctive and acquired secondary meaning allowing it trademark protection.

Handbags have long been a fertile ground for trademark protection. For example, Chanel, Coach and Burberry have trademarks for marks associated with their distinctive purses and accessories.

burberry chanel

The Kelly bag named after Princess Grace Kelly was all the rage in the Thirties. The bag shot up in popularity when the iconic picture where she attempted to cover her baby bump with the Hermės Kelly Bag hit the papers.

In the lawsuit filed last week, the Longchamp makers brought additional claims against BBB including patent infringement claim, false designation of origin, and common law competition. BBB and the others will serve their answer in a couple of weeks.