Collaborations in Creativity & the Law

The Hashtag / Trademark Paradox: #Trending, but #Proprietary?

Posted in Advertising, Branding, Famous Marks, First Amendment, Infringement, Marketing, Social Media, Social Networking

As the hustle and bustle of the INTA 2016 Annual Meeting drew to a close yesterday, I reflected on the session “#HASHTAGS #EverythingYouNeedToKnow” from Tuesday. It seems trademark protection may not (yet) fit comfortably into the hashtag world.

DuetsBlog previously provided a helpful tutorial on the nuts and bolts of hashtags and how they function, particularly on the sites Twitter and Instagram. As James Mahoney alludes in his post, hashtags serve a collaborative purpose – they organize ideas, topics, and events, effectively creating “threads” of discussions on a medium that is otherwise a stream of consciousness. As brand owners grow in presence on social media, a question has arisen whether certain hashtags may become trademarks – and thus allow brand owners to stop others using those hashtags.

The U.S. Patent & Trademark Office now provides explicit guidance on the standard for registration of hashtags:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.

Most of the foreign jurisdictions discussed at the INTA session articulate a similar standard. Essentially, I see this standard to mean a hashtag mark must itself function as a trademark, and not just “contain” a trademark or house brand. If you’re familiar with hashtags, this might lead to some head scratching.

Consider how the appearance changes when a brand name is used as a hashtag. Applebee’s® gives all the information straight away, thanks in part to use of the registration symbol – it tells others that this is a brand name. But #applebees doesn’t readily convey as much information (and in fact here omits the apostrophe, because for some time hashtags were often “broken” by punctuation or numbering).

Among the social media savvy, the hashtag symbol itself is weighted with its own meaning – a hashtag is a self-contained invitation to be used by third parties on social media, much like an invitation to search for a term on a search engine. It invites users to see what’s already been posted containing that hashtag, and to contribute their own content. Consider the more natural functions of hashtags, such as charity events like today’s #RedNoseDay, which is trending this morning on Twitter. The very idea is to encourage unsolicited and unpoliced third party usage.

This is anathema to many trademark owners, who of course wish to (and are required to) establish control over use of their brand names. And there certainly can be exceptions for hashtags that zealously function as trademarks, and that consumers recognize as brand names unto themselves. Even then, brand owners must be prepared for rampant third-party use of a hashtag mark, and understand that nominative fair use is far more likely to apply in the hashtag context.

Twitter announced some new changes to its 140-character message limit, and will now no longer count username mentions, links, and photos toward the limit. So, we know nothing is set in stone when it comes to Twitter. So I would not be surprised should there come a day when some tweaks here and there make hashtags more trademark-friendly.


Second Circuit Weighs in on Nominative Fair Use

Posted in Fair Use

The federal courts of appeals have split as to how to apply the doctrine of nominative fair use in trademark infringement cases. Last week, the Second Circuit endorsed the nominative fair use factors used by the Ninth and Third Circuits. At the same time, however, the court rejected the manner in which the Ninth and Third Circuits evaluate these factors, instead adopting a third approach.

The decision is Int’l Info. Sys. Security Cert. Consortium Inc. v. Sec. Univ. LLC, No. 14-3456 (2d Cir. May 18, 2016) (decision available here). The plaintiff ISC developed a certification for information security professionals, marketed as the CISSP certification program. A party who passes the program can identify itself as CISSP certified.

The defendant, Security University, passed the program and therefore was able to identify itself with the CISSP certification mark. However, Security University chose to advertise itself as “Master CISSP” and “CISSP Master.” ISC objected to Security University’s use, arguing that it incorrectly suggested that the defendant had obtained some higher level of certification. As the lawsuit suggests, Security University declined to comply with ISC’s request.

For the casual trademark fan, it is worth noting that trademark law has two general types of “fair use.” Classic fair use, or descriptive fair use, has been recognized for a longer time. If a trademark consists of a descriptive word, consumers and competitors are free to use that mark in its original, descriptive meaning. The second category of nominative fair use is more recent. The doctrine provides that if a person is using a mark to identify the products of the trademark owner, then it is not an infringement (for more background, click here and here).

Not all circuit courts have adopted the nominative fair use doctrine. Those that have don’t agree on how to apply it. The Third Circuit considers nominative fair use to be an affirmative defense to a trademark infringement claim. Under Ninth Circuit case law, a court is required to identify whether the claim of infringement involves nominative fair use. If not, the traditional likelihood of confusion factors apply. If the complained of use does qualify as “nominative fair use,” then the likelihood of confusion factors are replaced by a different set of factors.

The Second Circuit rejected both of these approaches. In rejecting the Third Circuit’s view, it concluded that Congress did not intend for there to be an affirmative defense of nominative fair use because Congress chose not to include it with the other enumerated affirmative defenses. In rejecting the Ninth Circuit’s approach, the Second Circuit recognized that many of the likelihood of confusion factors are “a bad fit” to evaluate nominative fair use. Yet the Second Circuit saw “no reason” to replace the traditional test. Instead, the Second Circuit held that a court should consider the traditional likelihood of confusion factors, the Ninth Circuit’s nominative fair use factors, and the Third Circuit’s nominative fair use factors.

Instead of providing clarification regarding application of the nominative fair use doctrine, the Second Circuit’s decision seems to add another layer of disagreement. If the parties to the lawsuit aren’t already sick of litigation, perhaps the district court can provide some clarification on remand.

INTA Meet the Bloggers XII — Photo Gallery

Posted in Articles, Branding, Marketing, Mixed Bag of Nuts, Trademarks

Meet the Bloggers XIIadjacent to the INTA (International Trademark Association) meeting in Orlando — was a grand success, here is some of the visual evidence to prove the point:

Erik Pelton, Marc Randazza, Ron Coleman, Pamela Chestek, John Welch, Steve Baird, Marty Schwimmer

Left to Right Hosts/Sponsors: Erik Pelton, Marc Randazza, Ron Coleman, Pamela Chestek, John Welch, Steve Baird, Marty Schwimmer

John Welch

John Welch in the Winner’s Circle

Wes Anderson a Flanax Winner

Wes Anderson a Flanax Winner










Joel MacMull, Steve Baird, Ron Coleman

Joel MacMull, Steve Baird, Ron Coleman

Tiffany Blofield, Ron Coleman, Erik Pelton

Tiffany Blofield, Ron Coleman, Erik Pelton

Barb Grahn, Ted Davis, Lisa Dunner

Barb Grahn, Ted Davis, Lisa Dunner


Marc Randazza, Ron Coleman, Joel MacMull

Steve Baird and Marc Randazza

Steve Baird and Marc Randazza

Steve Baird and Ron Coleman

Steve Baird and Ron Coleman

More to come, stay tuned, if you have other photos you’d like to share here, please let me know!

The Price of Fame

Posted in Copyrights, Guest Bloggers, Trademarks

–James Mahoney, Razor’s Edge Communications

Mother was a dyed-in-the-wool Boston Bruins fan who knew as much about the local game as any sportscaster. She didn’t quote stats, but she sure knew team and player histories, strengths, weaknesses, strategy and game tactics. And into her nineties, she still called penalties and off-side like a pro.

So it wasn’t surprising that granddaughter Deena, who worked the elite bah at the Gahden (that’s “bar at the Garden” for those who don’t speak Boston), saw a chance to make Mom’s day by getting Bobby Orr to sign a birthday card for Mom’s 80th.

Being artistic, Deena created a card that combined No. 4’s picture with a voice bubble saying, “Happy Birthday!”

Now Mr. Orr is one of the truly gracious sports heroes and a consummate gentleman, so of course, he agreed to autograph birthday cheer for an old fan. However, he paused a moment when he saw the card, then asked where Deena got it.

“I made it,” she smiled.

“You know,” Orr replied amiably, “I could sue you over this.” Then he smiled and signed the card. But the message was delivered, and my niece learned a lesson about trademark and copyright.

I was reminded of this recently on a visit to a local restaurant. They have a fun sense of humor, and some of their custom decoration includes doctored images of local luminaries from both sides of the law “interacting” with a signature menu item. You can even buy some of the graphics on quality t-shirts.

Since they’ve been in business for awhile now, I suspect that either they’ve secured the necessary rights, or the celebs aren’t aware of the use of their image. I’m betting on the latter. I’m also betting that the celebs won’t be as accommodating as Bobby Orr was about the birthday card.

One thing is certain, though. If they haven’t properly licensed the images, the restaurant may eventually learn first-hand the price of fame.

For Trademark Demand Letters, Every Letter Counts

Posted in Food, Marketing, Squirrelly Thoughts, Taste, Trademark Bullying, Trademarks

It has not been a great week for oatmeal.

The Quaker Oats Company (a subsidiary of food and beverage giant PepsiCo), on the heels of a recall for its Quaker Quinoa Granola Bars, has also made a rather embarrassing gaffe on the trademark enforcement front. And unfortunately, demand letters are far more difficult to recall.Screen Shot 2016-05-20 at 8.02.49 AM

Evidently, an in-house trademark attorney at Quaker Oats recently discovered a Christmas tree farm in Visalia, California using the (rather odd) name “Quaker Oats Christmas Tree Farm.” The attorney sent a somewhat perfunctory template demand letter to the farm, citing Quaker Oats’ various registrations for the QUAKER trademark:

It was therefore quite a surprise to discover that you are operating a business under the name “Quaker Oats Christmas Tree Farm.” Your use of our trademark is likely to mislead consumers into believing that your business is associated with the Quaker Oats Company. It is also likely to weaken our very strong trademark. In light of the foregoing, we hereby demand that you immediately stop all use of the “Quaker Oats” name. [. . .] While we would like to settle this matter amicably, we will take all steps which are necessary and appropriate to protect our name.

Seems reasonable enough. Diligent enforcement is, after all, an essential facet of a robust trademark portfolio. But there are two problems here: first, the farm in question is owned and operated by people of the Quaker faith. And second, the farm’s actual name is the Quaker Oaks Christmas Tree Farm, a “sustainable agriculture and environmental education center in the Kaweah Delta of California.”


And as tends to occur when big companies send flimsy demand letters, things went public fairly quickly. The Religious Society of Friends (Quakers) in Irvine, California soon posted the letter, along with its truly entertaining response (which you should read in full at the link):

My breakfast this morning—rolled oats by the way—was interrupted by the arrival of your letter via FedEx, which was delivered to us despite the fact that you have misspelled our company name which is Quaker OAKS Christmas Tree Farm. Our farm was so named because religious services were held outdoors on this farm under a great oak tree until about ten years ago when we were able to move into our new Meetinghouse on another corner of our farm.

Our business is 100% owned and operated by Quakers. I suspect that your firm employs considerably fewer, if any, Quakers. We trace our Quaker ancestors back 320 years and they were mostly farmers, but I don’t know how many of them grew oats for your company. My guess is that you may be selling far more Lutheran oats, Methodist oats, or maybe atheist oats. Could your company be guilty of product source misrepresentation?

When it comes to enforcement, I’m quite certain Quaker Oats has a lot on its plate (pardon the pun), but here’s another reminder to wield the power of a demand letter with caution, and to always double-check the details of a potential infringer’s use.

Be a Service “to Others”

Posted in Almost Advice, Idea Protection, Trademarks, TTAB, USPTO

It’s rare that we focus on descriptions of goods or services here, but one of the most common reasons that a trademark for a brewery or winery is refused registration at the Trademark Office comes down to the description of services.  “Brewery services” and “winery services” are popular descriptions often used by new entities or producers who are in the planning stages.   The Trademark Office generally will only question the services once a specimen has been provided that does not clearly link the mark to brewing or making wine for others, rather than just for its own beer or wine.  The “brewery services” description was actually deleted from the Trademark Office’s Acceptable ID Manual in 2013, and replaced with “beer making and brewing services [for others]” as an acceptable description.  Certainly there are contract brewers and custom crush production facilities that make beer or wine for other breweries.  From what I heard at the Craft Brewers Conference earlier this month, we may begin seeing a trend towards consolidated production facilities.

When this refusal is made, the applicant who’s only making beer and wine for their own labels often finds themselves in a Catch-22:  they may be stuck with the services shown on the submitted specimen or at least what was available as of the filing date of the specimen.  Clever and creative amendments to the description of services can help salvage such applications from the perils of these requirements.

To determine what constitutes a “service,” the Trademark Office has established the following criteria:

(1) it must be a real activity;

(2) it must be performed to the order of, or for the benefit of, someone other than the applicant; and

(3) it must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

Another “service” often mentioned in applications of late involves a claim for “social networking services” where the applicant has provided a screenshot of their Facebook(R) page or a Twitter(R) feed to show use.   In a recent TTAB decision involving the florist FTD, the Board determined that merely using a social networking page as advertising for its own benefit and therefore does not amount to providing “social networking” services for others.   In a significant update to the Trademark Manual of Examining Procedure in April 2016, the Trademark Office added at TMEP 1301.04(h)(iv)(C):

Some applicants may mistakenly mischaracterize their services as “social networking” because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for “online social-networking services” and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social-networking services since it does not demonstrate that the applicant is providing these services.

Value is most often found in the performance of services for the benefit of another, and that’s true for trademarks, too.

Feyoncé . . . he put a ring on it

Posted in Copyrights, Infringement, Law Suits, Mixed Bag of Nuts

Beyoncé recently filed suit against a company for trademark infringement based on their use of the term “Feyoncé” on apparel.  They’ve even got this nice mug:


It seems pretty clear what they’re going for here. There are a couple of trademark applications pending for FEYONCE and FEYONCE’. Interestingly enough, both have been issued preliminary refusals based on a likelihood of confusion with the registered trademark BEYONCE’, along with a few other issues in the application. Seeing as the applicant is not the first to have applied to register FEYONCE, I’m assuming it’s safe to say he probably won’t be successful.

There seems to be something of a movement in the music industry where artists file trademark applications for song titles, album titles, and phrases in songs. Taylor Swift filed a number of applications for BLANK SPACE (only one of them linked) for example. I’m not sure when this started but it seems like a reaction to decreasing album sales and other revenue sources. Copyright just isn’t providing as much as it used to. By locking up trademark registrations for titles and lines from songs, the artist secures a revenue source through merchandising and can exclude others from that space. The proliferation of sites like Etsy make it easy for people to start up small business and reach people across the nation. That changes the landscape of the “knock off” merchandise game, if that’s what Feyoncé is.

Of course, merchandising is nothing new. The New Kids On The Block famously sued over use of their names in a newspaper poll because of its perceived encroachment on their merchandising efforts. But the revenue shift in the music industry has created a push to find new ways to protect intellectual property, including filing trademark applications for just about every song title an artist releases.

It’s not that difficult to print up a few t-shirts and offer them on your website to secure use in commerce for the mark. It gets a little more onerous once you try to cover many different types of goods. But if your as big as Beyoncé, I’d say it shouldn’t be too difficult to prove you’re a famous mark and enjoy some extra protections.

Madonna Not Scandalous for Wine Anymore

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

The headline might be considered old news to some, but since intellectual property attorneys from around the world will be descending upon Minneapolis for the remainder of the week, and since I’ll be speaking tomorrow at the American Intellectual Property Law Association Spring Meeting at the Minneapolis Hilton, on the history and public policy behind denying the federal registration of scandalous trademarks, it just seems like news all over again.


Did you know that the first reported Court of Appeals decision on the trademark registration prohibition against scandalous matter interpreted Section 5(a) of the 1905 Trademark Act, predecessor to the current version of the law, Section 2(a) of the Lanham Act?

In Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938), a divided panel of the Court of Customs and Patent Appeals in Washington D.C., affirmed the Commissioner’s decision that had affirmed the USPTO Examining Attorney’s refusal to register MADONNA as a trademark for wine, as comprising scandalous matter under federal trademark law.

The majority held that “among all English-speaking peoples, the word ‘Madonna’ is generally understood to refer to the Virgin Mary or to a pictorial representation of the Virgin Mary.” And, while “Madonna” is not per se scandalous, it was in the context of wine trademarks circa 1938:

“We can readily understand that many who are accustomed to the use of wine as a beverage, remembering the use of it as a beverage in Biblical times, would not be shocked at the use of the word ‘Madonna’ or a representation of the Virgin Mary as a trade-mark upon wine used for beverage purposes; but we also believe that there are many wine users who, knowing that the excessive use of wine is a great evil and not uncommon, would be shocked by such use of said mark upon wine, especially in view of the fact that such mark would probably be displayed among other places, in barrooms.”

“In our opinion, to commercialize the name of, or a representation of, the Virgin Mary as a trade-mark is of very doubtful propriety, and we feel certain that its use upon wine for beverage purposes would be shocking to the sense of propriety of nearly all who do not use wine as a beverage, and also to many who do so use it; therefore, we think such use of the word ‘Madonna’ would be scandalous and its registration prohibited under said trade-mark act.”

That viewpoint and decision finding scandal with the use of MADONNA as a trademark for wine was reaffirmed decades later in 1959, when a German company tried and failed to convince the Trademark Trial and Appeal Board (TTAB) that the result should be any different under the prohibition against registration of scandalous matter under Section 2(a) of the Lanham Act. P.J. Valckenberg, GmbH, 122 U.S.P.Q. 334 (TTAB 1959).

But something must have happened between 1959 and 2008, when a persistent Valckenberg tried again and again, until finally no scandalous refusal was lodged by the USPTO, finally allowing MADONNA to become federally-registered for wine in 2008:

MadonnaWineI’m thinking another meaning of MADONNA began to emerge — circa 1979 –that altered and distracted from the previous and exclusive reference to the Virgin Mary relied upon by decision makers in the prior cases mentioned above, maybe this:


Keep in mind that the relevant public for purposes of determining whether the mark in question violates the “scandalous” language of Section 2(a) is the general public. And, to support a refusal on the ground that a mark is scandalous, the USPTO’s assigned examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. In re Mavety Media, 33 F.3d 1371-72, 31 USPQ2d 1925-26 (Fed. Cir. 1994); TMEP 1203.01.

In other words, the times they are a changing, and if an edgy brand owner waits long enough, what was once considered scandalous matter might later be considered in vogue (pun intended), making it available subject matter for federal trademark registration, i.e., Madonna Wine.

And, now that the word MADONNA apparently lacks any commercial edginess, it appears Ms. Ciccone is migrating to a more truncated version with fewer vowels: MDNA.

What’s next, perhaps even more truncation to a single letter, can you say AlphaWatch?

America’s Most Watered-Down Beer (Name)?

Posted in Advertising, Articles, Branding, Goodwill, Loss of Rights, Marketing, Social Media, Trademarks, USPTO

BudweiserAmericaCansLast week the Twittersphere was chirping loudly and negatively in response to reports that Belgian-owned Inbev would be replacing the Budweiser brand name with “America” on beer cans, as shown above. No bow-tie can shape in this campaign, but the logo is to be on the can’s back.

Headlines like these, suggesting a permanent change probably fueled the negative reaction to the news, but a closer read would reveal that the contemplated “re-brand” would be temporary, only lasting through this year’s Presidential election in November:

When brand owners decide to announce a re-brand, name change, or new logo, they realize there will be no shortage of critics, so in most cases there is a strong business reason for the change. Either something is not working or an opportunity is being missed.

I’m thinking both may apply here. Market share is being lost to the surge of craft brew interest, and with all the election year political hype, Inbev’s approach of taking Budweiser’s typical patriotic branding to a new level, is gaining lots of free media attention in a busy news cycle.

Let’s face it, Inbev would never permanently trade in one of the most valuable beer brands for what is probably the most watered-down name (from a trademark perspective) for a beer in the United States, namely America. It’s just not very unique or own-able, as this sample of third party trademark registrations illustrates:

Actually, this isn’t the first time Anheuser-Busch has thought about aligning itself with the AMERICA name. More than ten years ago it tried to federally-register AMERICA’S BEER for beer, but gave up five years later after a persistent geographically-descriptive refusal blocked it.

Keeping in mind that trademarks are “use it or lose it” rights, Inbev no doubt has at least a few trademark types behind the scenes managing this campaign to avoid trademark abandonment problems that would open the door to ownership of the Budweiser name by another.

I’m looking forward to purchasing a case later this month when AMERICA becomes available on store shelves. I’ll particularly enjoy checking out all the content on the can (including possible non-traditional trademarks), and if nothing else, keep it as a collector’s item, and perhaps a prop for some great upcoming trademark storytelling opportunities.

Finally, let’s wait and see whether InBev’s temporary replacement of THE KING OF BEERS with E PLURIBUS UNUM, as part of the America campaign, will draw any fire from a woman in Wisconsin who owns a federal trademark registration for E PLURIBUS CEREVISIA UNUM for beer, or whether that registration is safe to ignore as abandoned, dead-wood on the Principal Register (it’s in the grace period until August).

Marketing types and trademark types, what is your perspective on Inbev’s America campaign and the Twittersphere’s  negative reaction to it?

UPDATE: Check out my discussion of this topic on WCCO Radio’s News and Views With Roshini Rajkumar, here, which aired Sunday May 15 at 12:20 PM CST.

New Protections for Trade Secrets

Posted in Idea Protection, Law Suits, Loss of Rights, Mixed Bag of Nuts


On Wednesday afternoon this week, President Obama signed the Defend Trade Secrets Act (DTSA) into law.  The Act passed unanimously in the Senate and nearly so in the House.  The President has been a proponent of the Act and was expected to sign it.  But despite such otherwise unheard of bipartisan backing, the DTSA faced a lot of opposition from other sources.

Prior to this Act, trade secrets have been governed in the United States primarily by state law.  While the Economic Espionage Act provided for criminal penalties for trade secrets misappropriation, civil remedies were confined to state actions.   That is, if a victim of trade secrets misappropriation wanted to sue the misappropriator—such as a former employee—the suit would have to be brought in state court, and under state law.  This has been a primary difference between trade secret protections and other forms of IP protection, including copyright, trademark, and patent, and was considered by many to be a weakness of trade secret law.  While most states have adopted some version of the Uniform Trade Secrets Act in an effort to bring uniformity to trade secret enforcement, there are nonetheless state differences that can lead to potentially different outcomes depending on where a suit is filed.

The new DTSA amends the existing Economic Espionage Act to provide for a federal civil remedy for trade secrets misappropriation.  The victim of misappropriation will now have the ability to sue in federal court, and under federal law.

The DTSA had sweeping support in Congress and was championed by companies like DuPont, Corning, General Electric, Eli Lilly, and others.  Supporters of the Act argue for the need for uniformity among trade secret laws and for the need to access federal courts.  Support for the new law also seemed to revolve around a need for preventing cyber espionage and foreign spies.

However, despite the overwhelming Congressional support for the new law, opposition came from several law professors, among others.  Opponents to the law argued that the law would not fulfill its purported purpose of preventing foreign spies.  Opponents also point to the fact that the DTSA does not expressly preempt state law, and thus will convolute existing trade secrets law by adding an additional layer of case law.

secret-300x237The new law also has a robust ex parte seizure provision that will allow plaintiffs to have defendants’ assets seized where “necessary to prevent the propagation or dissemination of he trade secret.”  The seizure provision is stringent in that plaintiffs must make certain showings before obtaining a seizure order, but the provision does not place limits on the type or quantity of assets that may be seized.  This provision is an anomaly in trade secrets law.  No state trade secrets act allows for such seizure of assets.  Proponents of the DTSA argue that the seizure provision will help protect against further loss of secrecy after a trade secret misappropriation and will provide for a fast and effective remedy.  Senate Judiciary Committee Chairman Goodlatte described a dramatic hypothetical where “a thief sneaks into a facility, steals a trade secret and is headed to the airport to fly to China and sell it.”  Opponents of the Act, however, argue that the seizure provision is not limited to such narrow plots, and instead, the provision will create hardship for businesses and lead to unnecessary litigation.

For better or worse, the DTSA was signed into law this week.  Opponents and proponents will now need to work together to implement the new provisions in a way to best protect against all types of trade secret misappropriation.