Collaborations in Creativity & the Law


Posted in Mixed Bag of Nuts

As a huge fan of gangster movies, I was intrigued by a recently filed lawsuit in California. Although I am familiar with actor Frank Sivero’s work in “The Godfather: Part II” and in “Goodfellas” (left side of photo below), I am not familiar with the accused “Louie” character on the Simpsons (right side of photo below).

Mr. Sivero sued Fox Television Studios, Inc. alleging that the Louie character constituted infringement of his right of publicity, misappropriation of his ideas, interference with prospective economic advantage and unjust enrichment. The right of publicity, also called “personality rights,” is a property right to control the commercial use of a person’s name, image, likeness, or persona.

The complaint contends that Mr. Sivero lived next door to the writers of the Simpsons in an apartment complex. They saw each other almost daily. During these encounters, Sivero states that he discussed the character he was creating to play in the “Goodfellas” movie. Sivero based the “Frankie Carbone” character on himself. As gangster movie buffs know, “Goodfellas” was nominated for six Academy awards. Joe Pesci won a best supporting actor award for his portrayal of “Tommy DeVito.” The character “Louie” is known as a “wise guy” and is part of the Springfield Mafia.

The Simpsons writers are known for modeling characters after real life people or real life characters from other shows or movies. For example, the Simpsons’ character “Moe the Bartender’s” voice is based on the real life voice of acting legend Al Pacino’s voice. Likewise, Simpsons’ character “Dr. Julius Hibbert” is based on Bill Cosby’s character “Dr. Cliff Huxtable” on the popular “Cosby Show.” Further, character Mayor Quimby is based on President John F. Kennedy from his days in Camelot. Finally, Ranier Wolfcastle the agitated action hero movie star is based on Arnold Schwarzenegger.

Will this case go to trial or will there be a settlement offer by Fox that Mr. Sivero cannot refuse?


Posted in Almost Advice, Trademark Bullying, TTAB

Think an undefended opposition proceeding is a slam dunk, then you better think again.  In Emminence, LLC v. Lisa Kelly, Opposition No. 91205286 (October 8, 2014), the Trademark Trial and Appeal Board dismissed an opposition proceeding even though the defendant did not offer any evidence or even a trial brief in support of her case. Even though Ms. Kelly clearly demonstrated her intention to not defend herself in the opposition proceeding, the Board found that the plaintiff failed to offer sufficient evidence of the relatedness of the goods, so the opposition was dismissed.

If a plaintiff fails to prosecute an opposition proceeding, a defendant can move for a directed verdict at the close of the plaintiffs testimony period. However, no similar motion exists for a plaintiff against a defendant that chooses not to defend itself.

In one sense, the lack of a motion could be a useful strategy against a trademark bully. The party that is bullied can choose as a strategy to not engage the bully in the proceeding and allow the Board to do the bullied party’s bidding. Giving up control like this may not be ideal, but is a cheap strategy.

However, the likelihood of using such a strategy is low and should not justify the absence of a motion for a directed verdict for a plaintiff in an opposition proceeding. The more likely situation is a defendant that has no interest in defending its right to a registration, yet unjustifiably increases the cost of litigation to the plaintiff by not defending itself after filing a bare bones answer.

Does Your Business Have a Chief Branding Officer?

Posted in Branding, Goodwill, Guest Bloggers, Marketing, Mixed Bag of Nuts

- Debbie Laskey, MBA

Who owns the brand in your business? If your business is top heavy with numerous members in the C-Suite, this may be a difficult question to answer if you don’t have a Chief Marketing Officer. Your Chief Sales Officer may claim ownership, or your Chief Information Officer may claim ownership. Perhaps, your Chief Legal Officer may claim ownership. If you don’t have a large number of people in your C-Suite, your Chief Executive Officer may be the face of your brand and simultaneously leads your messaging.

But no matter who owns the brand in your business, there are three key responsibilities for the person in this role.

First, make sure that all brand tools are consistent. This means that all your digital assets including your main website, your blog, and all your social media accounts reflect the same look and feel; and make sure all your printed collateral also reflects the same look and feel (brochures, newsletters, flyers, annual reports, etc.). Make sure they all provide the same description about your company and brand, feature the same logo and/or tagline, and include the same color palette. For example, you would look twice and not trust a site with a purple Coca-Cola – those iconic red and white colors are as famous as the product they represent.

Second, make sure your brand has a defined voice. If you provide professional services, for example, legal or financial services, you may use formal language that matches your industry. But if you sell consumer products, your ads and emails may be full of informal lingo or slang. Think detailed emails versus brief texts. Also, depending on your industry, there may be appropriate words that would be considered essential to include in your brand messaging. For example, professional sports have terminology that is important in their branding – football ads can easily integrate “touchdowns” and “hail Mary’s,” and baseball ads can easily integrate “home runs” and “shut outs.”

Third, create brand advocates. As the owner of your brand, you want to welcome employees into the branding process so that they understand their importance in sharing your brand story with the world. Since all employees are brand advocates, take the time to educate employees about your brand’s strengths during the onboarding phase and also re-train on a regular basis. Make the training fun and always have a smile on your face.

What do you do as your brand’s owner? Please chime in.

When is a Flavor/Taste Trademark Possible?

Posted in Articles, Food, Infringement, Law Suits, Non-Traditional Trademarks, Sight, Taste, Trademarks, TTAB, USPTO

Are your intellectual taste buds craving more discussion of non-traditional trademarks? It’s not every day we have the opportunity to write about a restaurant’s claimed trademark protection for the flavor or taste of certain food dishes and a restaurant’s claimed trade dress in the chef’s unique plating or visual presentation or appearance of certain food dishes, including the delicious-looking baked ziti to the left.

Last week Professor Eric Goldman wrote an interesting Forbes article about an unusual federal trademark infringement case from Texas involving those very unlikely non-traditional trademark claims. In that case, United States District Judge Gregg Costa dismissed both the taste trademark claim and the plating trade dress claim before the plaintiff even had a chance to be seated much less order an appetizer.

Although Judge Costa called the taste trademark claim “half baked” well into the third course of his decision, the first few lines should have tipped the reader off to his skepticism of the claims:

“Intellectual property plays a prominent and growing role in our Information Age economy.  High-stakes litigation over software patents, for example, is increasingly common in federal dockets.  In this case, though, the plaintiff seeks intellectual property protection for something quite traditional: the meal one might order at a neighborhood pizzeria.  New York Pizzeria, Inc. contends that the flavor of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to protection under the trademark laws.”

The plaintiff was denied the opportunity to try and prove taste infringement because its complaint failed to identify a valid taste trademark given the “insurmountable” functionality hurdle:

“The functionality doctrine is a significant hurdle for any party seeking to protect a flavor as a trademark. In In re N.V. Organon, for example, the Trademark Trial and Appeal Board (TTAB) denied a pharmaceutical company a trademark in the orange flavor of its pills on functionality grounds. Because medicine generally has ‘a disagreeable taste,’ flavoring ‘performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade.’

If the hurdle is high for trademarks when it comes to the flavor of medicine, it is far higher—and possibly insurmountable—in the case of food. People eat, of course, to prevent hunger. But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.”

Sound familiar? It reminds me of our taste infringement blog post from a few years back, where I wrote:

“Of course, there is a reason for the lack of or scarcity of taste trademarks. Any product intended for human consumption is unlikely a candidate for taste trademark protection given the functionality doctrine. So, Coca-Cola can’t stop another from selling a beverage that has the same taste as Coca-Cola, just because it tastes the same, unless of course, the maker of the competitive beverage hired away key Coke employees who unlawfully revealed the closely guarded secret formula. That is how trade secret litigation happens, not “taste infringement” litigation.”

And, even longer ago than that, I answered the very question posed in the title of this blog post:

“I have suggested before that taste is only available as a possible non-traditional trademark when it is applied to a product not meant for human consumption (e.g., flavored ear rests on eyeglasses and flavored ballpoint pen caps). Foods, beverages, and other oral products that are meant to be consumed or placed in the mouth and have a pleasing taste most likely are to be disqualified from enjoying trademark protection in the taste or flavor, based on the functionality doctrine.”

Although the taste trademark claim was “half baked,” Judge Costa thought the plaintiff’s trade dress plating claim deserved a closer look.

“[T]here may be some rare circumstances in which the plating of food can be given trade dress protection. When plating is either inherently distinctive or has acquired a secondary meaning, when it serves no functional purpose, and when there is a likelihood of consumer confusion, it may be possible to prove an infringement claim. It is conceivable that certain well-known “signature dishes” could meet this very high standard.”

Nevertheless, Judge Costa dismissed the trade dress plating claim too, since the plaintiff failed to articulate the specific elements of its claimed trade dress in the visual presentation of certain food dishes.

Given all that, what do you make of U.S. Trademark Registration No. 1,623,869, registered more than twenty years ago, back in 1990.

The registered non-traditional configuration mark mentions flavors and is described this way:


So, is the claimed combination of flavors actually protected by this federal trademark registration?

Or, does it merely protect the appearance, given the below drawing of the registered non-verbal mark?

And, given the color claim, detailed below:



Or, does the registration perhaps protect both taste and appearance?

Unlikely, but if so, it is the only federally-registered taste/flavor trademark I’ve seen (and not tasted) before.

What do you think?

Aggie-ravating Trademark Issues with College Mascots

Posted in Infringement

Colleges serve an important role in American society, providing education, experience and leadership to each new generation. Also, sports. And did I mention SPORTS? Regardless of the reason (cable?), college sports have become a huge business over the last 25 years, with NCAA schools having a reported annual value of $8 billion (without including revenue generated for private companies). That number may not be accurate, but given the number of Division 1 school football and basketball programs, price of tickets, number of games, broadcast rights, merchandise, etc., I don’t think that’s an exaggerated number. And with revenue like that, it isn’t surprising that universities rely on trademark law to protect their brands.

Earlier this week, Oklahoma State University (OSU) filed a lawsuit against New Mexico State University (NMSU) over NMSU’s renewed use of its retro cowboy logo. The two logos are shown side by side below:

Hard to argue that those aren’t similar. OSU claims use of its mascot all the way back to the 1920s. NMSU claims use of their logo back to 1960s. However in 2005, NMSU moved toward a more modern logo. However, NMSU’s recent decision to sell merchandise featuring the old logo apparently sparked the lawsuit. On its website, NMSU has a document chronicling the history of its logo in which it admits that it “initially” paid royalties to OSU for use of the logo. There is no explanation of when these royalties ceased.

Of course, fans of the University of Wyoming might be a bit confused too. As it turns out, Wyoming has a similar logo that it uses, shown below:

Apparently OSU also objected to Wyoming’s use, but they reached a concurrent use agreement in 1993.  Based on the reported terms of the agreement, OSU concluded that so long as the respective logos appear in each school’s respective colors and with some text located on the clothing, that the two schools could avoid any confusion (oh, and don’t forget the royalties…). The NMSU design is already in NMSU’s colors, so perhaps OSU is just taking a really expensive route to get NMSU to add some text to the design. Or it could be the royalties. I’ll let you decide.

The dispute highlights an interesting aspect of trademark law. Regardless of the type of products involved or the amount of money on each side, the question ultimately comes down to consumer perception and whether consumers are likely to be confused. Sports teams, especially college teams, frequently use identical names for their mascots and teams. For example, the name “cowboys” is used by both, you guessed it, OSU and Wyoming (Also, another football team that you may heard of down in Dallas…). As far as Aggies go, you’ve got NMSU, Delaware Valley College, North Carolina AT&T, Texas A&M, UC Davis, and Utah State. I don’t know all of them, but this Wikipedia article lists 76 different Eagles, 46 Tigers, 39 Bulldogs, and 33 Panthers. In short, consumers are accustomed to relying on indicia other than merely the name (and likely the logo) to determine the source or sponsorship of the goods, such as the colors, school name, acronyms, etc.

But if you’re looking for unique college mascots, you’ve got the Fighting Okra of Delta State University in Mississippi, the Geoducks of Evergreen State College (it’s a type of mollusk, apparently), the Scotsdale Community College  Fightin’ Artichokes, or the St. Louis University Billikens. You never hear about any trademark disputes over mollusks or artichokes, do you?

But back to our friendly cowboys. The lawsuit seems a bit surprising. After all, the parties apparently had a forty year agreement and working relationship. Or, if “initially” paying royalties only meant a few years (5, 10?), NMSU used the logo the remainder of the 40 years without objection by OSU. The agreement with Wyoming also weakens OSU’s claim, but probably not enough to preclude a successful claim. I’d be highly surprised if the dispute lasts very long, as it seems to be ripe for settlement. Even in the billion dollar industry of college athletics, settlement is often the most efficient means of settling trademark disputes, especially if you both have pistols.


How would a corporation run a country?

Posted in Advertising, Guest Bloggers, Mixed Bag of Nuts, Search Engines, Technology

- Aaron Keller, Managing Principal, Capsule

In a recent meeting, someone dropped a forecast on the table stating that Google was on track, in five years, to become the world’s first trillion dollar company (currently they are $382 B). This is built on a virtual monopoly in the area of online advertising and now growing into a variety of other technologies and platforms. But, most important this is a company build on advertising media.

What do I do with that bit of information? Why do I care? Why would anyone care if Google is getting larger and larger and larger. Is it a good thing? Is it bad? Sergey and Larry seem to be good guys.

Well, I don’t have answers to those questions, but I do have a thought to further the conversation.

When you elevate your perspective to see all the brands in the world, and the businesses where they reside, it changes your perspective. Brands as large as Google, Apple and a longer list of others are designed to serve stakeholders (customers, partners, investors, etc). This isn’t too dissimilar to a government entity. Here are some similarities between a corporation and a government.

>> Both serve diverse audiences and need to keep people happy, active, and safe from harm.

>> Both have incoming revenue (taxes) and outgoing expenses (services).

>> Both have a team that leads and some structure to organize the social hierarchy.

>> Both have a reputation to build and protect with all stakeholders

Now, the corporation may have a mission to conquer and a government may have a mission that closer resembles the need to protect and keep safe. And, governments provide services people don’t want to pay for, but need to in order to have social order. Corporations do this as well, but many at the discretion of the leadership team.

This all leads back to the headline.

What would happen if Apple or Google purchased a small country? Just to be clear, here’s a handful of countries Apple could buy with their profits of $37 billion: Trinidad and Tobago, Paraguay, Honduras, Jamaica, Albania, Iceland, Cyprus and many others all over the world.

How would Apple design a country? What would a Google country look like? Would these captains of industry be better at running a medium size country than many of the horrid dictators we see in the world today?

What do you think?

Lessons from Improv Class for the Law Firm

Posted in Mixed Bag of Nuts

This month, the greater downtown Minneapolis community is welcoming the Brave New Workshop Student Union to the neighborhood.  Until just a few weeks ago, the improvisational comedy school convened classes at the Brave New Workshop’s original home on Hennepin Avenue in the Uptown neighborhood.  The Minneapolis-St. Paul Business Journal has a piece up about the school’s move downtown to some spacious digs across Hennepin Avenue from the Brave New Workshop’s downtown theater (I highly recommend a show there – their sketch comedy stuff or improv – the next time you’re in Minneapolis).

This fall, I signed up for the Student Union’s Everday 1 improv classes. So far, I have to say it’s been money well spent – each Wednesday I walk in somewhat tired after a long day and walk out feeling energized from laughing for the better part of two hours.  I lucked out and slotted into a class with some truly funny people.  My cohort and I are just over half way through with our weekly sessions.  With the Student Union’s move downtown, I thought it would be a nice time to reflect on some of the lessons from improv class that are transferrable to the workplace.  Yes, even a law firm.  Here are three that stick out from the first few weeks of class:

  1. Live the “yes, and” ethos.  The central tenet to doing improv is living and practicing the so-called “yes, and” mantra.  Because nothing is scripted or planned in advance, improv scenes are literally evolving as the audience sees and hears them.  How do scenes build and not flop?  The foundation is saying “yes, and . . .” to whatever your scene partners throw your way.  That’s “yes, and . . .,” and not, “yes, and?”  You don’t ask questions.  You wholly and unequivocally accept what’s given and build from there.  “No,” or questions stop the flow.  It’s been striking to see how the power of “yes” can help build collaboration, trust, and enjoyment.  I imagine practicing “yes, and” with peers at work would yield similar results.  How often do you catching yourself saying “no” at work?  Next time try yes, and…
  2. Shut up.  Walking into a room full of self-selecting improv class students can be a bit overwhelming.  Chances are, no matter how much these people profess to be shy or express a desire to be in the class because they want to get outside themselves, each of them is just waiting for the moment they get to light up the room with laughs.  And do it again.  And again.   I believe there’s a parallel to the meetings here at the law firm full of type-As who all have something to say.  Sometimes you have to shut up, hold back, and let others shine in the moment.  It takes self-control.  In improv class, they say you should serve your scene and your scene partners before you serve your own self-interest.  That idea can go a long way in the workplace, too.
  3. Don’t Self-Edit – Be Declarative.  What would it be like if we all said what we meant and meant what we said?  Oh, yeah, we Minnesotans would be living in New York.  Ha.   I kid.  One of the exercises we did in class last week was one where we let our inner-monologues outside of our heads, filter-free (to the extent that’s possible).  We’ve also worked on making direct statements that seem to roll off the tongue with slightly less inhibition.  When we say what we are thinking and say them in forceful, direct ways, we save ourselves from our typical communication foibles.  This would be great in the workplace, no?

Gibson Guitar Facing 15 Trademark Opposers

Posted in Articles, Audio, Genericide, Loss of Rights, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, TTAB, USPTO

A brand owner’s non-traditional trademark application will sometimes gain the critical attention of multiple direct competitors. Gibson Guitar’s unlucky number is apparently fifteen.

Last Thursday, Gibson’s guitar configuration application shown to the right and below was opposed by far more competitors than it has strings on the above ebony Gibson ES-339 Studio Electric Guitar:

  • U.S. Music Corporation
  • ESP Shibuya Enterprises, Inc.
  • Cordoba Music Group, Inc.
  • Collings Guitars, Inc.
  • Ed Roman Enterprises, Inc.
  • Armadillo Enterprises, Inc.
  • Schecter Guitar Research, Inc.
  • Westheimer Corporation
  • Peavey Electronics Corporation
  • Warwick GmbH & Co. Music Equipment KG
  • James Trussart Guitars, Inc.
  • JS Technologies, Inc.
  • Premier Builders Guild, LLC
  • Sadowsky Guitars, Ltd.
  • John Hornby Skewes & Co., Ltd.

The opposers contend that the shape of the guitar is either generic or lacking in distinctiveness as a result of the “rampant” use of identical or substantially similar designs by a multitude of third parties over the past half a century. They name names, decade by decade.

So, stay tuned as we follow this interesting trademark chord, anxiously awaiting to hear whether Gibson is able to play something more than a classic blues riff, perhaps on something like this 15 string bad boy:

It appears that the opposers have spent some time doing their homework; if even half of what they say can be proven, they’ll be strumming Gibson’s pain with their fingers, and killing the trademark application (not so) softly.

UPDATE: It appears we have officially reached the point where I can’t keep track of all our content, I’m reminded that Dan Kelly had a great post from 2010 dealing with the guitar head issue, enjoy:


Amy, Whatcha Wanna Do (About this TM)?

Posted in Articles, Branding, Infringement, Law Suits, Marketing, Trademarks, TTAB, USPTO

As we start to think about welcoming in the weekend, why don’t we all hum this Pure Prairie League tune, while viewing this image and reading this very brief blog post:

As this image (that I snapped this morning) shows, the skyway in downtown Minneapolis is sporting a relatively new snack shop called Amy’s. I’m not sure whether it is related to this one, only a block away. The branding and signage appears pretty different, but who knows?

I’m also not sure whether either of them are related to the pair of Amy’s that have suspended their present dispute at the TTAB of the USPTO, in order to have the federal district court in Austin, Texas decide not only the right to register, but the right to use. Sound familiar?

Anyway, within the last several days, the federal court in Austin, Texas, ruled that a trial will be necessary to decide the disputed issues of fact regarding whether likelihood of confusion exists as between the different Amy’s.

So, it’s probably fair to say, the dispute will be going “for a while, maybe longer.”

If my name is Amy, and I’m wanting to start a small business, and I’m seeing this trademark mess, I’m falling out of love pretty quickly with my personal name as my business name!

If your name is Amy, what you wanna do?