DuetsBlog

Collaborations in Creativity & the Law

“Pardon Me, PORTON,” says PATRON, “But We Heard You”

Posted in Famous Marks, Trademarks, TTAB

Pisco is a light-colored brandy traditionally produced in portions of Peru and Chile.  One brand that offers this product in the United States is PISCO PORTÓN (the later word meaning “gate” in Spanish).

duetsblog_piscoporton

Pisco Porton has a number of registrations including PORTÓN, PISCO PORTON, and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO.

The owners of PATRON challenged these registrations, first petitioning to cancel PORTÓN in 2014.  The owners surprisingly didn’t attempt to cancel PISCO PORTON and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO at the same time, but waited until August 2016 to petition to cancel these – despite these being registered before PORTÓN.

Duetsblog_patron

In deciding to cancel the mark, the TTAB went through the typical analysis of the “likelihood of confusion” factors:   the goods “distilled spirits” were identical in both registrations; pisco and tequila are offered in similar retail environments to the same or similar mark; the marks were similar in sight & sound; and the PATRON mark has developed some fame.  The decision here to cancel the PORTÓN mark is not surprising, especially to those of us following trends in this industry.

However, the Board’s decision includes a few points that breweries, wineries, and distilleries ought to consider in their brand management.  First, the Board did not find that PATRON’s claims were barred by laches based on PATRON’s about 2+ year delay following registration before filing the cancellation proceeding.  Companies should be mindful of the potential impact of delay on enforcing a registration against a third party under this theory known as laches.  Second, the Board went into a relatively lengthy discussion on the admissibility of an article  that included quotes from Pisco Porton’s General Manager and Master Distiller made during an interview in London.  He was quoted as saying “sometimes people get PORTÓN confused with PATRON Tequila, which can be a good thing for us” and “[the] names might be similar.”  Since these quotes were from an interview in the UK, the Board found them to be not probative because they did not necessarily reflect sentiments about US consumer confusion.  However, this is an important point for breweries, wineries, and distilleries – as well as any marketer of any good – to consider the implications of public statements, comments made to journalists, or social media posts that may negatively affect their rights in a particular mark.

Now we will have to see how this decision impacts the protection for the remaining PISCO PORTON registrations.   Do you think that the decision will also result in the cancellation of the other PISCO PORTON registrations?

 

When Less is More

Posted in Advertising, AlphaWatch, Articles, Branding, Food, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, Trademarks, Truncation

Love the simplicity and honesty of this sign, captured on vacation, in a cozy crepe spot (had to get out of my chair and walk across the dining room to read the smaller print, well worth the steps):

LessisMore

As Seth recently noted, there can be room for improvement when it comes to making signs (we have too), and he further notes, depending on your approach, it is possible and can be best to have more and less (although not of the same things).

As a late and gentle kick-off for the New Year, and after a long weekend of some pretty amazing NFL football games, here are a few additional thoughts about more and less (no particular order):

Less Single Letter Brands, Especially When it Comes to Equis:

MaxDosEquis

(Photo Credit and Hat Tip to Maxwell)

More Showing, Less Telling:

Especially With Effective Non-Verbal Brand Signals:

StarbucksSirenLogo

“Show, don’t tell . . . . the value of design.”

More Naming of Distinctive Product Design Features:

LexusSpindleGrille

Less Unnecessary Touting of Function Over Form

 More Creative Signs That Move Us to Be Better and Engage More

Less Pavlov in Your Hands, Especially During Meals:

Calypso

More Creative Wifi Passwords:

CalypsoWifi

(Calypso Grill Photo Credits and Hat Tip to Maxwell)

Here’s to all of us having more amazing collaborations, connections, and relationships in 2017.

ORAL B Wireless Floss?

Posted in Advertising, Dilution, False Advertising, Famous Marks

I recently purchased a post-holiday present (for myself) – Apple’s AirPods, wireless headphones designed to integrate with Apple’s various products, including the iPhone 7 (which, helpfully, discarded the headphone jack in the name of “courage.”

The earbuds themselves are quite tiny, and likely quite easy to lose, so they come in a case with a flip-up lid, designed to store and charge the earbuds – and many commentators have noticed its similarity to a pack of floss:

Screen Shot 2017-01-13 at 5.57.01 AM

One intrepid Etsy seller certainly agreed – and, in the spirit of theft prevention, “RyanFlosss” offered a sticker for sale on Etsy to disguise the headphones as nothing more than a dental hygiene product.

qnirzqgi30rsv5oylkfh

Proctor & Gamble, owner of rights in the ORAL B trademark, certainly found this design to be quite familiar and issued a takedown notice on Etsy to remove the product.  While it may seem farcical – or downright bully-ish – for a company to attack a sticker designed for electronics, the Lanham Act makes no such distinction. So long as there is the possibility consumers might perceive some affiliation with P&G, or even dilution of the ORAL B or GLIDE trademarks, then these sorts of products can nonetheless fall within the purview of trademark infringement.

The Etsy seller, for his part, took the notice in stride, and ultimately revised his product to look slightly less similar to P&G’s brand of floss. A sticker of your very own can be had for $5 — but, sadly, the listing notes that AirPods are “not included.”

 

The Chargers leave San Diego, but will they leave the brand too?

Posted in Branding, Goodwill, Social Media, Trademarks, USPTO

According to recent reports, the Chargers will announce this week that they are leaving sunny San Diego for also sunny Los Angeles. Over a short two year span, Los Angeles will have gone from zero NFL teams to two NFL teams, as the Rams moved from St. Louis to Los Angeles just last year. However unlike the Rams, the change may extend beyond zip codes, as the team is also reportedly considering a full rebrand of the team. This will mean crowds of sad San Diegans, a number of discarded powder blue jerseys, and a lot of wasted governmental filing fees paid to the U.S. Patent and Trademark Office.

Yes, each time a sports team moves cities, a number of people rush to file trademark applications. Perhaps they have a great idea for a team name and want to be the person that named the team. More likely, however, is that there is a hope they can “get in first” and force the team to buy the application from them. Back in September when the Oakland Raiders publicly considered  moving, there were no less than six applications filed for the LAS VEGAS RAIDERS mark over a 48 hour period.

Unfortunately for those applicants (and others with similar plans), the applications are likely dead in the water.  Unlike some countries where trademark rights are given out on a “first to file” basis, in the U.S. trademark rights are created through use of the mark in commerce. This requirement was relaxed slightly to allow for “intent to use” applications, where a party can file an application based upon its intent to use the trademark in commerce, even if they haven’t begun use yet.

However, when Congress created the new rules, there was concern that persons may abuse the system by applying for trademarks for the sole purpose of selling them to third-parties for increased sums. In order to prevent this from happening, the law requires that an applicant have a “bona fide” intent to use the trademark in commerce. Even if an applicant obtains a registration, that registration may be vulnerable to cancellation if the applicant did not have a bona fide intent to use the mark as of the filing date.

As you might imagine, trying to claim rights  to the LA BOLTS mark to sell to the Chargers organization is not likely to qualify as a bona fide intent to use. This is particularly true if the application seeks protection in connection for “professional football team exhibition services.”

So if you’re considering capitalizing on the Chargers move to LA by filing a new trademark application, please reconsider. If you instead just want the glory of naming the newest NFL team, take to Twitter instead. If it worked for the RRS Boaty McBoatFace, it could work for you, too.

 

 

 

What’s in a name? Registration obtained for “Johnny Hockey”

Posted in Branding, Mixed Bag of Nuts, Trademarks, USPTO

Applying for a federal trademark registration for a name or nickname can be tricky business.  For example, the registration of a mark is prohibited if it is “primarily merely a surname,” meaning that the primary significance of the mark to the public is a surname (such as “Johnson”), unless there is a showing of acquired distinctiveness. See TMEP §§ 1211, 1211.01-.02.  By contrast, registration of marks that identify a particular person (without a surname being the primary significance), such as a nickname or signature, is less restricted.  However, such a registration cannot be obtained by third parties without permission–the identified person must consent to the registration.  See TMEP §§ 813, 1206; Lanham Act § 2(c).  Such consent is required even if the applied-for mark does not clearly use a person’s full name–rather, consent is required “if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used,” which can extend to first names, shortened names, stage names, nicknames, pseudonyms, and even initials.  See TMEP § 1206.01.

For example, in the case In re Sauer,27 USPQ2d 1073 (TTAB 1993), the Board held that registration of a mark BO BALL, used for a sports ball, was barred under Lanham Act § 2(c) without consent to register, because BO is a name that would be associated with the well-known professional athlete Bo Jackson.  As another example, in the case In re Hoefflin, 97 USPQ2d 1174 (TTAB 2010), the Board held that the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT were barred under Section 2(c) without consent to register, because they created a direct association with President Barack Obama.

Last year, the professional hockey player Johnny Gaudreau, who plays for the NHL’s Calgary Flames, obtained a trademark registration for his nickname “Johnny Hockey.”  This trademark registration (Reg. No. 4992448) protects the standard character mark “JOHNNY HOCKEY” for various goods in International Class 25, including several types of clothing, footwear, and headgear.  The application sailed safely to registration without any obstacles, as Johnny Gaudreau provided his consent.  The consent was clearly indicated as required by TMEP § 813, through a statement in the application and a consent agreement that was made of record.

At only age 23, the rising NHL star Johnny Gaudreau made a great business move by obtaining a trademark registration for his well-known nickname–by doing so early, he stands to gain significant revenue throughout his hopefully long career through, for example, clothing lines bearing that mark and lucrative endorsement deals with sponsors to license that mark for merchandise. This type of trademark registration is relatively common among professional sports athletes and celebrities–another recent example is NFL player Johnny Manziel, who filed a trademark application for “Johnny Football.”  Although that application (Serial No. 85839336) hasn’t reached registration yet, Manziel was able to leverage the application alone to negotiate a higher percentage of royalties on sales of gear bearing that nickname.

Second Circuit Agrees: Louis Vuitton Can’t Take a Joke

Posted in Branding, Copyrights, Dilution, Fair Use, Famous Marks, Fashion, First Amendment, Infringement, Law Suits, Trademark Bullying

If you’re still looking for holiday gift for that special someone, the Second Circuit has your back. Fresh off the docket, the Second Circuit gave its blessing to My Other Bag’s line of parody canvas tote bags. For additional background, you can read our discussion of the District Court’s grant of summary judgment to the defendant here. However, here’s the short version: My Other Bag (“MOB”) sells canvas tote bags that cost about $30 – $60. The line of bags is a parody of the “My Other Car Is a … [BMW, Mercedes, etc.]” bumper stickers and states on one side of the bag “My Other Bag…” with a cartoonish drawing of a luxury handbag on the other side (see example below). Louis Vuitton sued, claiming the bag infringed and diluted its trademarks and also infringed its copyright in the bag design. The District Court granted summary judgment to MOB and Louis Vuitton appealed to the Second Circuit.

MOB Image

 

If Louis Vuitton hoped for a more friendly reception at the Second Circuit, the oral arguments might have been a wake up call. During the oral argument, one member of the three judge panel told told Louis Vuitton’s counsel “This is a joke. I understand you don’t get the joke. But it’s a joke.” Although statements during oral argument don’t consistently predict how a court may rule, that is not the case here. On December 22, the Second Circuit issued a summary order affirming the District Court’s grant of summary judgment on all of Louis Vuitton’s claims. Perhaps this will be the end of the road for Louis Vuitton and MOB, or maybe Louis Vuitton will seek to continue the appeal. The more interesting aspect will be to see whether Louis Vuitton adjusts its aggressive approach to trademark enforcement in light of the loss.

 

Outrageously Suggestive?

Posted in Advertising, Articles, Branding, Marketing, Trademarks, USPTO

InterstateBattery

An oil change and tire rotation over the holiday yielded a little free time for me in our local Goodyear dealer’s waiting room, and it left me wondering about the Outrageously Dependable tagline of Interstate Batteries, so I captured the above image to tell a little blogworthy — if not blimpworthy — trademark story.

My question was whether the Outrageously Dependable tagline is federally-registered on the Principal Register, and if so, whether acquired distinctiveness was required to achieve this status, since Outrageously Good Coffee was recently refused registration, as it “merely describes, in a laudatory manner, a feature of the coffee—how good the coffee is.”

Turns out Outrageously Dependable is registered on the Principal Register without a showing under Section 2(f) — no acquired distinctiveness needed, so it is apparently considered inherently distinctive and suggestive of a desirable quality of the goods, not merely descriptive.

For some reason, Outrageously Dependable, does not merely describe, in a laudatory manner a feature of the batteries– how good or dependable they are, instead it is creative enough to suggest this without connecting all the leads and wires for the consumer.

Ponder that through the end of the year, and let us know whether you agree.

The Vegas Golden Knights – Trademark Denied

Posted in Branding, Marketing, Trademarks, USPTO

Another update for you on the new Las Vegas NHL team. In my previous posts on this interesting saga (here and here), I discussed the team’s unique marketing and trademark strategy leading up to the announcement last month of the team’s name–the Vegas Golden Knights–particularly the secrecy of the name among three options (Silver Knights, Desert Knights, or Golden Knights).

Just a couple weeks after announcing the name, the team received some bad news regarding its pending trademark applications. The team had submitted applications for the marks VEGAS GOLDEN KNIGHTS (Serial No. 87147236 for various clothing goods and No. 87147239 for entertainment services, namely “professional ice hockey exhibitions”) and LAS VEGAS GOLDEN KNIGHTS (Serial Nos. 87147265 and 87147269 for the same goods and services). The USPTO issued initial Office Actions refusing registration of all four marks.

You may view the Office Action refusals here (goods application) and here (services application) for the VEGAS GOLDEN KNIGHTS applications. (The refusals for the LAS VEGAS GOLDEN KNIGHTS applications are nearly identical). The basis for each refusal is a likelihood of confusion with the registered mark GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE (& Design), Reg. No. 3188463.

(Sidenote: In two of the refusals–the ones for the entertainment services–the Office Action also cites Reg. Nos. 4325030 and 4325031, for SYRACUSE SILVER KNIGHTS and a Design mark with the same text, which is most likely a clerical error, as the rest of the Office Action indicates the refusal is based only on Reg. No. 3188463. Perhaps this error is due to the same Examining Attorney also working on the refusal for the SILVER KNIGHTS applications–see Serial Nos. 87147273 and 87147242).

In the refusal, the Examining Attorney makes some strong points regarding a likelihood of confusion. The words in the marks are highly similar, as they each use the identical words GOLDEN KNIGHTS, which appear to be the dominant portions of each mark. The similarity becomes more significant when considering the Examining Attorney’s conclusion that the word VEGAS is not protectable as it is primarily geographical descriptive, and therefore “VEGAS” must be disclaimed.

The Examining Attorney also concluded that the similarities in goods/services support a likelihood of confusion, as I outline below:

  • Vegas goods (Serial No. 87147236): “Clothing, namely, bandanas, beach cover-ups, belts, body suits, boxer shorts, caps, cloth bibs, coats, dresses, footwear, ear muffs, gloves, hats, headbands, hosiery, housecoats, jackets, jerseys, leggings, leotards, mittens, nightshirts, pajamas, pants, rain coats, rain wear, robes, scarves, shirts, shorts, skirts, socks, suits, sun visors, suspenders, sweaters, sweatpants, sweatshirts, swimsuits, swim trunks, t-shirts, ties, toques, underwear, vests, warm-up suits and wristbands”
  • Saint Rose goods (Reg. No. 3188463): “Clothing, namely shirts, t-shirts, jackets, shorts, pants, caps, hats, baseball hats, sweatshirts, and golf shirts”
  • Vegas services (Serial No. 87147239): “entertainment services, namely, professional ice hockey exhibitions
  • Saint Rose services (Reg. No. 3188463): “entertainment services in the form of intercollegiate sports exhibitions

Note that this is only an initial Office Action, and the team now has an opportunity to submit a formal response with legal arguments as to why the refusal should be withdrawn. The NHL has stated that it will not reconsider the team’s name, that these refusals are a “routine matter,” and that it will formally respond to the Office Actions by the deadline of June 7, 2017. NHL Commissioner Bill Daly stated that registration should be allowed in part because “there is no overlap” as to the sports for which the marks are used. However, identical goods/services are not required, especially where the marks are highly similar–rather the goods/services must merely be sufficiently related such that consumer confusion is likely.

If the USPTO is not persuaded by the response to the Office Action, it would then issue a Final Office Action that refuses registration of the marks. At that point, the next step would be to file a Request for Reconsideration and/or file a notice of appeal to the Trademark Trial and Appeal Board (TTAB).  What do you think?  Any other thoughts on overcoming these likelihood-of-confusion refusals? Stay tuned for further updates.

 

Donald Trump is on to Something

Posted in Advertising, Almost Advice, Branding, Copyrights, Dilution, Infringement, Law Suits, Marketing, Social Media, Trademarks

Some credit Donald Trump’s win to his savvy social media presence, including tweeting.  He reached millions of voters and caught the nation’s attention with his tweets.  The courts are now recognizing this phenomenon.

In a recent trademark dispute between a DJ and a rapper over the trademark “LOGIC,” the Sixth Circuit recently criticized a district court decision for being “incomplete and at times flawed,” because it failed to properly consider Facebook likes and other social media as proof of marketing.  The Court explained that “[p]romotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies.”  President Elect Trump would agree with this statement.

Specifically, the case involved a suit brought by DJ Lee Jason Kibler who performs under and owns the federally registered trademark “DJ LOGIC.”  See Kibler, dba DJ Logic, v. Hall, et. al, No. 15-2516 (6th Cir. Dec., 13, 2016). The DJ sued rapper Robert Bryson Hall, III (aka Logic”) for federal trademark infringement, federal trademark dilution, breach of the Michigan Consumer Protection Act and unfair competition.  In essence, the DJ thought the rapper’s use of the trademark would confuse fans, improperly trade on his good name and dilute his brand.  Last week, the Sixth Circuit granted summary judgment in favor of the rapper thereby shutting down the DJ’s lawsuit.  In assessing the likelihood of confusion, the Sixth Circuit examined eight factors courts routinely examine:  “1) the strength of the plaintiff’s mark; 2) relatedness of the products; 3) similarity of the marks; 4) evidence of actual confusion; 5) plaintiff’s marketing channels; 6) likely degree of purchaser care; 7) defendant’s intent in selecting the mark; and 8) the probability that the product lines will expand.”

The Sixth Circuit found that although the DJ had shown that DJ LOGIC was moderately strong conceptually, he had not offered evidence of the mark’s commercial strength.  Significantly, the DJ failed to provide survey evidence.  The Sixth Circuit pointed out the flaws in the district court’s analysis described above with respect to this factor.  Although the tweets and Facebook popularity should be considered, the DJ had failed to provide evidence of widespread recognition.  The district court’s analysis was incomplete because it concentrated only on “low album sales, current lack of a recording contract and inability ever to secure a recording contract with a major label.”  The Sixth Circuit explained that “[a]lbum sales and even recording contracts are less critical markers of success than before because of widespread internet use.”

Anyone heard of a guy named Justin Bieber who was discovered on YouTube?  Who hasn’t downloaded music from the iTunes store?  In fact, I am not even sure if my niece and nephew even own a physical album like the ones I purchased growing up.  Despite the district court ignoring this evidence, the DJ failed to provide the Sixth Circuit with enough evidence to persuade it that the DJ LOGIC mark was commercially strong.

The Sixth Circuit agreed that the relatedness of the products factor was neutral.  The products (e.g., DJ services and rapping) were somewhat related, but not directly competitive.  Only the rapper used his vocals.

The third factor weighed in favor of the rapper because when you examine “DJ LOGIC” as a whole DJ is the prominent feature.  As for the fourth factor of actual confusion, the DJ was favored only slightly with his ten instances of actual confusion.  These “ten instances paled in comparison to [the rapper’s] 170,000 album sales and his popularity on YouTube, Facebook and Twitter.

The fifth factor—marketing channels—was neutral even though the district court had underestimated the impact of widespread internet use.   The Sixth Circuit explained that there was “minimal evidence that the parties’ advertising methods or targeted customers substantially overlapped beyond shared use of congested Websites like Facebook and iTunes.”

 

The district court rightfully disregarded the likely degree of purchaser care.   Further, the district court properly found the intent factor to be neutral as there was no reason to believe he knew about the DJ before choosing his “LOGIC” mark.  Finally, the district court also found the likelihood of expansion to be neutral.  There was no proof that the DJ was going to become a rapper or vice versa.

 

This decision shows that social media needs to be considered in trademark disputes (and many other cases) and litigants need to come with proof to prevail.

The End of Bland Names?

Posted in Advertising, Almost Advice, Branding, Guest Bloggers, Marketing, Trademarks

-Mark Prus, Principal, NameFlash Name Development

Publicis Groupe, the holding company of worldwide marketing agencies, has been restructuring over the past year. In March they announced a major restructuring of their media arm Publicis Media that broke apart longtime media agency ZenithOptimedia. Zenith now operates as a standalone agency, while Optimedia joined forces with Blue 449 to form Optimedia | Blue 449. Publicis has now decided to drop the Optimedia name in favor of Blue 449 on a global basis. The six remaining Optimedia offices and Match Media in Australia will all take the Blue 449 name.
Blue 449

Does this signify a landmark change in naming? Dropping Optimedia and Match Media eliminates two more descriptive names in favor of a more creative arbitrary name. I can only hope that others follow this trend!

OK, as a professional name developer I’m biased, but names like Optimedia are not that hard to generate. Take two key words like “optimal” and “media” and slam them together. How hard is that? But developing names that are arbitrary or coined takes more work (and therefore companies tend to hire name developers for assistance!).

Avoiding generic or descriptive names also makes a lot of sense from a trademark standpoint. I’m not a trademark attorney so please do not consider this to be legal advice. However, Steve Baird, who is a trademark attorney, developed this chart with Minnesota Continuing Legal Education to help explain the role the “Spectrum of Distinctiveness” plays in getting a trademark. You might recall this blog post of Steve’s from the deep archives, here.

arrow name

In general, names on the left-hand side of the spectrum are not immediately eligible for trademark protection, if ever – and, never, if generic. This is because neither generic nor descriptive names are considered to be inherently distinctive and trademark law only provides legal protection to names that are or have become distinctive. In other words, in order to immediately get a trademark the name must be creative or out of the ordinary (inherently distinctive).

There is a complicated loophole for once purely descriptive brand names (immediately descriptive, laudatory, surname, geographic, etc.) that can prove that over time they have become distinctive to the relevant public. This loophole is associated with some significant limbo though and requires that you prove that your descriptive name has acquired “secondary meaning” over time. However, this proof is difficult especially if you are just starting to use the name.

That is why I generally recommend to my clients that they avoid generic or descriptive names and instead select suggestive, arbitrary, or coined/fanciful (created) names. Names on the right-hand side of the spectrum will be easier to trademark and will result in stronger brands over time. In the end, a strong brand name that can be legally protected is the goal of most naming projects!