DuetsBlog

Collaborations in Creativity & the Law

Chartreuse Color Trademark on the Loose

Posted in Advertising, Articles, Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

We’ve written a lot about single color trademarks here over the years. Weems, the owner of the Flexilla brand has unleashed its federally-registered chartreuse-colored non-traditional trademark for “compressed air hoses” against Plews for selling air hoses with a “bright florescent green color” — a color that Plews claims online “reduces chances of tripping while on a job site.

Weems owns a non-traditional trademark registration on the Principal Register for chartreuse in connection with “compressed air hoses” — but, it recently abandoned a single color trademark application for electrical power extension cords, and it hasn’t yet obtained a registration on the Principal Register for chartreuse in connection with garden variety hoses (i.e., garden hoses):

FlexillaHose

Weems owns a pair of Supplemental Registrations for the chartreuse color (one having a black stripe, the other having a green stripe) in connection with watering hoses and garden hoses, but two months ago its attempt to achieve Principal Registration for chartreuse in connection with those goods and others was refused by the USPTO (Weems has until April 2017 to respond to the failure to function as a trademark and lack of distinctiveness refusals).

More thoughts on this case tomorrow, but in the meantime, do you think Plews tripped into this trademark dispute, or does it likely have a plan and a valid defense?

Hat tip to Jason for flagging the Weems v. Plews trademark complaint for us, currently pending in the Northern District of Iowa.

Santa Goes to the Trademark Office

Posted in Advertising, Branding, Contracts, Fashion, Marketing, Social Media, Trademarks

fashion-santa-paul-mason-yorkdale-mall-fb

This is Fashion Santa.

Or at least it was until recently. Fashion Santa is a role that originated with model, Paul Mason and Toronto’s Yorkdale Mall in 2014. He promoted the mall and a successful charitable giving campaign. Mason continued as Fashion Santa during the 2015 holiday season, and became somewhat of a social media sensation.  But this year, Yorkdale Mall has apparently traded in for a younger model.

Meet the 2016 Fashion Santa: Adam Martin.

fashion-santa

It seems the relationship between original Santa Mason and the Yorkdale Mall declined due to a disagreement over intellectual property rights. Both parties claim to own the trademark rights to FASHION SANTA.  Yorkdale filed a trademark application in the Canadian Patent Office for FASHION SANTA on December 8, 2015.  On April 21, 2016, Yorkdale filed a U.S. trademark application claiming priority to their Canadian filing date.  A few weeks after Yorkdale’s first filing, Mason filed an application for FASHION SANTA in Canada on December 21, 2015, and an application in the U.S. on December 22, 2015.

Both parties claim November 2014 as the date of first use on their Canadian applications. Presumably, they are referring to the same use, but the applications are for different categories of goods/services.  Yorkdale filed its mark in both countries for advertising services and charitable fundraising services, while Mason filed his marks for use with a variety of goods, as well as modeling services and charitable fundraising. With both parties claiming ownership of the same mark stemming from the same use, registration and rights in this case may come down to contractual language governing the parties’ relationship. Hopefully they can reach an agreement, and Fashion Santa doesn’t end up in fashion litigation.

The Unfortunate Renaming of U.S. Cellular Field

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

I grew up with the White Sox playing in Comiskey Park, then after they tore that down, New Comiskey Park. In 2003 that changed to U.S. Cellular Field. Now, it’s undergoing another name change – Guaranteed Rate Field. Now I don’t think that Guaranteed Rate is any better or worse than U.S. Cellular. Rather it’s the logo that accompanies that change that’s unfortunate.

Guaranteed Rate Field

The Sox will have the misfortune of playing under a logo that includes a red downward pointing arrow. Perhaps that wouldn’t sting so much if the Sox were good. But, they finished in the bottom third of the American League last year. And next year they’ll better their record under a giant red downward pointing arrow.

The Sox tried to offer a compromise. They suggested changing the arrow in the logo into home plate. In my opinion, that’s a pretty ingenious solution. Just for stadium, Guaranteed Rate could subtly change the logo in a way that’s fun and reflects the connection to baseball. The change would be small and the Sox wouldn’t have to play with a reminder that they’re not doing so well lately. Sox fans appreciate and enjoy the shift. But Guaranteed Rate didn’t go for it. And it’s understandable. They paid a lot of money to show their logo and they want the public to see their actual logo, not one used only in one place.

Moral of the story? If you’re a professional sports team, try to get the right to approve logos used on the stadium.

Trademark Scam Results in More than $600,000 in Refunds in New Zealand

Posted in USPTO

The records of applications and registrations at the U.S. Patent and Trademark Office are publicly available, allowing individuals and companies to evaluate the registered trademark rights of third-parties. Unfortunately, these same records are also accessible by individuals for more sinister purposes, including sending “invoices” to applicants that appear to be official requests for required payments. While these scams have been occurring throughout the world for a number of years, New Zealand recently scored a significant win in the fight against these scams.

While most attorneys advise clients of the likelihood of receiving these notices, it does not prevent some unrepresented applicants from mistakenly making a payment. Thankfully, governments have begun to fight back against these scams. Over the last year, New Zealand has sought to obtain refunds from TM Publisher, an entity that sent misleading notices to companies in New Zealand. The company requested a payment of $1,600 NZ in order to “publish” an applicant’s trademark. Over the last six months, the New Zealand government identified and refunded more than $600,000 NZ from TM Publisher. While this is a large sum, TM Publisher is just one example of many scams, suggesting the number of payments could be even greater.

To provide some context in the U.S., it is common for applicants and registrants to receive misleading notices regarding publication, renewal, and other services. Some solicitations offer to publish your trademark in an international database, such as the Trademark Patent Publications solicitation, but doing so provides no benefit to the trademark owner. Other solicitations offer “renewal” services, which may or may not result in the actual renewal of your registration with the relevant authority. Most solicitations are printed to appear to be official, government notices. Some of the solicitations, like this notice, come from misleadingly named companies, like the “Patent and Trademark Office” in New York.

In the U.S., there have been criminal charges brought against individuals running at least one similar scam. The first indictment issued in October of 2015 and two more individuals were charged earlier in July 2016. The charges include bank fraud, mail fraud, and money laundering.

Notwithstanding these minor successes, there are still significant numbers of misleading notices sent to represented and unrepresented applicants and registrants. If you receive any notice regarding your trademark application or registration in the mail or in your e-mail, consult with your attorney. Although the Trademark Office has recently begun reminding owners of renewal deadlines, the Trademark Office does not request payment in these notices (especially through a wire to a bank account in the Czech Republic). If you don’t have an attorney, you can consult the USPTO’s information page regarding these invoices here or contact the Trademark Assistance Center.

Just Wait Until the USPTO Lays Its Hands on These Single and Dual Color TM Applications

Posted in Articles, Branding, FDA Approval, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, Sight, Trademarks, USPTO
Glove4

Chou #1

Glove1

Digitcare

Glove3

Chou #2

Glove2

Chou #3

Glove5

Chou #4

Glove6

Avent Green

 

 

 

 

 

 

 

Back in 2009, we wrote about what was then Kimberly Clark’s pair of single color purple trademark registrations in connection with “gloves for medical and surgical uses” and “disposable nitrile gloves for general use,” now owned by Avent and sold under the HALYARD brand:

HalyardPurpleNitrile

Those registrations are still big deals since they both exist on the Principal Register (as opposed to the Supplemental Register), and as far as I can see, no other medical examination glove colors have been able to withstand the reliable USPTO probing to attain Principal Registration status.

As the above six hand drawings reveal, growing numbers in the medical examination glove world have raised their hands at the USPTO to gain federal registration of a single color or a contrasting pair of colors (one appearing on the inside and the other on the outside).

Let’s wait and see what happens to the six pending applications for the drawings shown above (Chou #1, Digitcare, Chou #2, Chou #3, Chou #4, and Avent Green) after the USPTO rolls up its sleeves, and begins a different kind of hands-on examination. We’ll follow the drama as it unfolds.

From where I’m sitting, it seems doubtful that any will pass the vigorous Principal Register examination, but there are also serious questions as to whether survival of the appropriate Supplemental Register probing is warranted either, as explored more deeply further below.

In addition to #1-4 above, Chou also has a blue/white — outside/inside color combination mark and the inverse of those same colors — both on their way to the Supplemental Register.

Ascend Eagle also has a few hands in the color trademark pot for medical examination gloves, orange is registered on the Supplemental Register (tangerine never made it), but this peach and this red one are both suspended for consideration on the Supplemental Register.

Colur World has a suspended pink single color application too, apparently now attempting Principal Registration, since it already has a Supplemental Registration for pink medical gloves.

While, Xela has secured single color copper and single color magenta trademark registrations — both have landed on the Supplemental Register stretcher too; as did this individual’s single color application for gold colored medical gloves.

With all this focus on gaining Supplemental Registrations in the medical examination glove field, you’d think the USPTO’s probing on the question of functionality has been, perhaps a bit soft.

Turns out, the Digitcare trademark application for an outer-white/inner-black medical exam glove contains an enlightening bit of information that could shine like a flashlight on the question of functionality:

  • “Contrasting Black and White ApexPro identifies conformance to infection control protocols”
  • “High contrast perma-white exterior for improved visibility with infectious fluids”

If so, what kind of future does that signal for this otherwise nearly identical Supplemental Registration, interestingly assigned from Chou to Digitcare, a few years back.

Show of hands, how many see the functionality scalpel removing even the Supplemental Registration option to one or more of the above six pending color applications, given the revelations in the Digitcare file history?

It Is Not “Easy Like Sunday Morning” To Use Commodore As A Trademark

Posted in Fair Use, Law Suits, Trademarks

The band’s song “Easy” does not reflect Commodores’ founder Thomas McClary’s court battle to use the trademark “COMMODORES founder Thomas McClary” for his solo career.  As I dug further into the meaning of the song, it is actually about the relief of ending a really difficult relationship.  I guess it fits that the relationship, or rather trademark dispute, between the owner of the COMMODORES trademark and the band’s founder Thomas McClary is ending (at least for now) with a permanent injunction against the latter’s use of the above trademark.

Last week, a United States District Court judge in Florida ruled on a Motion for Clarification Regarding Fair Use Under the Permanent Injunction and for Order to Show Cause Why Defendants Should Not Be Held in Civil Contempt filed by the trademark owner.  The judge began his opinion with “Where words fail music speaks” attributed to Hans Christian Anderson’s “What the Moon Saw,” in What the Moon Saw and Other Tales (1866).  The judge explained that “[h]owever, words have certainly not failed the parties to this lingering trademark dispute involving the Commodores.”

The Florida judge rejected the nominative fair use (“NFU”) defense raised by Mr. McClary.  In doing so, the judge looked at the NFU test factors:  “(1) Plaintiff’s product or service [i.e., singing] is not readily identifiable without the use of the trademark; (2) Defendants’ used only so much of the mark as it is reasonably necessary to identify the plaintiff’s product or service, and (3) the user of the mark does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.”  The third factor was determinative.  The judge found that there was an improper suggestion of sponsorship or endorsement by the Commodores.

The judge looked at other cases and the important factor for his decision turned on the fact that the accused marks preceded the accurate reference that he was the founder and the accused marks were more prominent than other words contained in the band name.  The judge explained that Mr. McClary could use the following marks:  “Thomas McClary formerly of the Commodores” or “Thomas McClary original founding member of the Commodores” and be considered NFU.

As a Commodores fan, I was glad that Mr. McClary and his band were, at least, not found to be in civil contempt or in other words in violation of the injunction.

Who’s the PATRÓN Anyway?

Posted in Articles, Branding, Famous Marks, Food, Infringement, Marketing, Trademarks, USPTO

PATRÓN (meaning “boss” or “landlord” in Spanish) is a pretty famous brand name of tequila (federally-registered since 1993), and don’t forget this gem from the archives:

SilverPatron In my experience, PATRÓN is often requested by name when ordering margaritas, so when visiting this cozy spot, I instantly wondered about the need for permission or a license:

ElPatronICTable

Especially since EL merely means THE, and since PATRÓN tequila bottles adorn the place:

PatronBottles

Turns out, there are other restaurant brand names sharing the PATRÓN term, already coexisting on the Principal Register (here, here, and here)

What does this say about the scope of rights associated with the PATRÓN tequila brand when it comes to third parties providing restaurant and bar services, especially those that serve tequila?

Seems like PATRÓN hasn’t been too “bossy” when it comes to trademark enforcement in the restaurant arena, what do you think?

Had you heard of Dropbox in 2009?

Posted in Infringement, Law Suits, USPTO

The popular cloud storage system Dropbox recently won summary judgment against Thru, Inc.’s claim of trademark infringement.

Dropbox.com

Thru operates a secure file sharing system called Thru Dropbox.  See the screenshot from their website below.

Thru website

Dropbox filed a trademark application to register the DROPBOX mark in 2009, but was hit with a flurry of oppositions by other companies such as Officeware, the owner of the FilesAnywhere service, Yousendit, Inc. (which has changed its name to Hightail), and others.  Dropbox was ultimately successful on those oppositions and obtained its trademark registration for DROPBOX in 2014.  Thru did not file an opposition to Dropbox’s 2009 trademark application.

Last year, Dropbox filed a lawsuit against Thru, seeking declaratory relief that its use and registration of the DROPBOX trademark does not infringe upon Thru’s purported trademark rights.  Thru counterclaimed for trademark infringement, alleging that it had priority to the DROPBOX mark based on use as early as May 2004, and that Dropbox did not start using its DROPBOX mark until 2008.  Later in proceedings, Dropbox moved for summary judgment on Thru’s counterclaim.  Dropbox argued that Thru’s claim was barred by the doctrine of laches because Thru unreasonably delayed in making its claim and this delay prejudiced Dropbox.

The summary judgment decision, issued on Tuesday by Judge Edward Chen of the Northern District of California, agreed that Thru’s trademark infringement claim was barred by the doctrine of laches.  More specifically, the court held that Thru’s delay was unreasonable and prejudiced Dropbox because:

Thru purposefully delayed bringing suit in an attempt to increase its leverage over Dropbox and thus the value of its claims. . . . If a trial resulted in a determination that Thru owned superior rights to the “dropbox” trademark, the costs to Dropbox would be massively greater today than they would have been years ago, because of Dropbox’s continued investment in its brand.

The court further explained that:

[A] delay of this sort is precisely what laches is designed to guard against; Thru cannot simply “sleep on [its] rights,” allowing multiple other parties to expend significant resources litigating over rights that Thru believes it owns, only to belatedly pursue the victorious party.

In response to Dropbox’s laches defense, Thru argued that its delay was not unreasonable because Thru wasn’t aware of the Dropbox business in 2009; rather, Thru contended it had not heard of Dropbox until the summer of 2011 (at which point Dropbox had 40 million users).  The court disagreed, finding that Thru’s limitations period began in June 2009, at which point Dropbox had 1 million users and had been widely covered by the media.  The court concluded that Thru’s contention that it wasn’t aware of Dropbox in 2009 was “simply not credible,” based in part on emails among high-ranking Thru officers in June 2009 discussing Dropbox and deposition testimony regarding those emails.

Back in 2009, while I was still in school, I recall the growing popularity and name recognition of the Dropbox program among friends and other students, to backup documents and share files with each other.  What do you think?  Had you heard of Dropbox back in 2009?

“Just Say No” to Rejection of Marijuana Trademarks

Posted in Almost Advice, Branding, Trademarks

Overshadowed by that yuuuge, shocking, {insert adjective for your feelings here} win was the legalization of recreational marijuana in three more states – California, Massachusetts and Nevada – in conflict with federal law.  This comes at a time when there have been a number of successive decisions (here, here) affirming refusals of trademark rights for marijuana-related products and services based on federal prohibition of marijuana.

Although I follow the TTAB’s reasoning on affirming these rejections that if federal law prohibits the good or activity, then it cannot grant a federal trademark registration for a mark used on those goods or services, the Trademark Office has previously registered marks known to be used in connection with goods or services that may involve federal crimes.

We allow trademark registrations for marks known to be used for brothels.  See, for instance, BUNNY RANCH and MUSTANG RANCH, registered for among other goods and services “escort services.”

Online gambling was deemed under the Unlawful Internet Gambling Act of 2006, yet the Trademark Office has registered marks involving online gambling services. See, for instance, LUCKY NORTH, CASINO YOUR WAY!, BETDAQ, and others.

We allow registrations for marks, on their face, related to the cannabis industry and many for business services or educational services related to the industry.  Here are some examples of registered marks:

  • CANNSTANDARD for “Chemical preparations for testing the potency of cannabis and of food products made with cannabis”
  • GANJAPRENEUR for “providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp”
  • THE ORIGINAL AMSTERDAM and Design for among other goods and services, “herbs for smoking”

Given the number of states legalizing marijuana, I do not believe that this issue will persist much longer.  But in the interim, what can companies, and the attorneys advising them, consider doing when facing these refusals?

1) File for a obscure description of the goods or services, and be smart about your online presence.  In the TTAB decisions, some cutely used “herbs” in their description, but their web presence or their specimen clearly showed use of the mark involving predominately the sale of marijuana.

2) File an intent-to-use based application and keep it active until the law is changed at the federal level. If you do this, and you avoid any online use that may prevent the mark from being refused as discussed above, you can keep extending your application while preserving your earliest filing date for a period of three years as long as the necessary extensions are filed.

3) If the company is based overseas, obtain a registration in a foreign country and then use 44(E) as the basis for registration in the United States.  That’s how The Original Amsterdam filing, as well as several filings for online gambling services, appears to have circumvented the issue because they do not have to show use of the mark in order to obtain a registration.  Several of these affirmed refusals rely on the specimen of use, which is not a required filing for these marks until 6 years after registration.

 

ADD A ZERO v. ADIZERO

Posted in Mixed Bag of Nuts

The long running trademark dispute between Adidas and a church in Illinois just had a decision handed down by a federal appeals court. Adidas thought it could outrun a church in Zion Illinois, but it appears that they miscalculated the church’s endurance.

In 2009, Adidas applied to register the ADIZERO mark for athletic apparel. Unfortunately for them, this church had registered the ADD A ZERO mark for apparel as part of fundraising drive in 2005, selling apparel and encouraging people to “add a zero” to their donations. That registration blocked the Adidas application. Adidas then challenged the registration seeking to cancel it on multiple grounds, including a lack of interstate sales.

The TTAB found in favor of Adidas, saying that the sale of two hats to a parishioner living in Wisconsin was insufficient interstate commerce, and cancelled the church’s registration. The church then appealed to the Federal Circuit.

Adidas argued for a de minimis exception, claiming that the sale of two hats was insufficient interstate activity to trigger the commerce clause and what congress could regulate. Unfortunately for Adidas, the commerce clause is broad. In Wickard v. Filburn, the Supreme Court ruled that the commerce clause covered growing wheat for purely personal use. Either Adidas didn’t realize, or they thought, along with many people, that Wickard went to far. Unfortunately for Adidas, the Federal Circuit didn’t agree.

The Federal Circuit ruled that the sale of those two hats comfortably fit into the “use in commerce” requirement that the Lanham Act puts forward. That makes sense, seeing as the Federal Circuit has to follow precedent, and two hats sold across state lines seems to be interstate commerce, especially if wheat grown to feed your own livestock is covered under interstate commerce. Unfortunately for Adidas, the case was remanded for decision on other grounds not decided at the TTAB. So, if they were planning to challenge Wickard, or at least distinguish it, they’re going to have to fight for a while longer.

The ADIZERO application was filed in 2009. I’m assuming Adidas wasn’t expecting to lose at the Federal Circuit 7 years later. I’m also assuming they didn’t think the Church would pursue it this long. They could be pursuing ADIZERO to point of trying to overturn Wickard at the Supreme Court. However, I’m thinking that if they continue, they’re looking to create a de minimis exception, and that’s probably more important to them than ADIZERO. After all, any mark they use will fall under interstate commerce, so they don’t have to worry about a de minimis exception. It would create a path to get rid of a lot of inconvenient prior registrations, however, like ADD A ZERO.