In the wake of Jon Stewart and Stephen Colbert leaving their respective shows on Comedy Central for newer pastures, John Oliver has emerged as a new beacon of political humor and satire.  If you haven’t watched his show, and especially if you considered the former two as having an obvious political slant, you should check out Last Week Tonight on HBO.  His shots get fired everywhere.

On this week’s, John Oliver took a shot at the patent system, particularly patent trolls:

I don’t know who looks worse out of Oliver’s segment – trolls or trial lawyers.  Or maybe Mark Cuban since he never seems to ask about patents.  Until this segment, I didn’t take note of how often Shark Tank uses the lack of a patent as a reason for rejecting a business idea, but I digress.

As Oliver’s comments make clear, there certainly is room for improvement to correct the litigation flaws created by so-called “patent trolls” – a hotly discussed topic lately in many business, law offices, blogs, and legislatures.

Much of the discussion of the “patent troll” surrounds how exactly a “patent troll” is defined.  Some refer to patent trolls as “non-practicing entities,” and others to “patent assertion entities.”  These sound in the media like lazy, menacing, evil, money-grubbing corporate shells waiting for their crossing fee from under the bridge – and surely there are some of those.  But that “patent troll” definition can also appear as an independent inventor who doesn’t make, use, or sell his invention.  Maybe that inventor’s idea was stolen by another company that now makes, uses, or sells it.  Before filing a lawsuit, he may set up a corporate entity to hold the asset to help protect him from personal liability or fund the litigation.  Patent litigation is expensive and shouldn’t that right be afforded to everyone?  Otherwise wouldn’t the Apples and the Samsungs be the only ones skating in the rocket docket of Marshall, TX?  We need to think very carefully about how we define “patent troll” before we try to make it unjustly hard for so-called trolls to litigate.

The major “troll” examples identified in Oliver’s segment – a patent that underlies the technology in every Android app and patents for copying – are technology that has become so woven in the fabric of our everyday lives that targeting people for making, using and selling a patented invention seems to the general public as utterly ludicrous.  And I don’t blame them.  In the trademark realm, we don’t allow the enforcement of trademark rights where the mark has become generic and therefore lacking in its ability to identify source.  Aside from defenses of laches or prosecution history estoppel, patent law doesn’t have a similar provision that protects such generally known ways of doing something from being asserted against others for making, using or selling the patented product.  But does it need something like the concept of genericide?

One way of resolving the issue may be to take from the model of trademark law – the Declaration of Use filed at the 6th anniversary of registration and then with the renewal every 10 years after the registration date.   This Declaration of Use requires a statement that use is continuing and providing a specimen showing use (and of course, a fee).  Patent law has maintenance payments that are required only for utility patents at 3.5 years, 7.5 years, and 11.5 years from grant of the patent.  But aside from payment of the fee, nothing else is required.  Maybe instead of a declaration of use, it may need a declaration of relevancy – and maybe that relevancy term is dependent upon the industry.

The patent law currently provides a 20-year term of an exclusive right to make, use, or sell the patented invention, in exchange for an enabling public disclosure of the invention to the public.  The whole purpose behind the system is for the public to gain possession of an inventive idea and replicate it or re-purpose it.  But 20 years in some industries, like the rapidly advancing software industry, may be too long of a term of protection.  Maybe we need shorter terms for software patents, much like we have a shortened term for design patents (14 years from issuance).

We must think very carefully about how we define “patent troll” and how we treat them.  We also need to find a delicate balance in avoiding seemingly frivolous lawsuits and protecting inventors’ rights.

How might Oliver treat the similar subject of trademark bullying?

— Jessica Gutierrez Alm, Attorney

 

googleLast week, Google announced its new “Patent Purchase Promotion.”  Under this program, for a two-week period, companies and individuals will have an opportunity to offer their patents to Google for purchase for a price determined by the patent owners themselves.  The program is set to run from May 8th through May 22nd of this year.  After the offer period ends, Google will review the offers and choose whether to accept any by June 26th.  Google promises that they will only accept or reject offers at the prices set by the patent owners.

Google is calling its new program an “experiment” and claims that its goal is to “remove friction from the patent marketplace.”  Allen Lo, Google’s deputy general counsel for patents said in the announcement on Google’s blog:

The usual patent marketplace can sometimes be challenging, especially for smaller participants who sometimes end up working with patent trolls. Then bad things happen, like lawsuits, lots of wasted effort, and generally bad karma. Rarely does this provide any meaningful benefit to the original patent owner. 

And so in an apparent effort to generate good karma, Google is purporting to buy patents in order to keep them out of the hands of patent trolls.  But what then does Google intend to do with all these newly acquired patents that it so gallantly saved from the trolls?

A patent troll, also known as a non-practicing entity, is typically defined as a company that collects patents and uses them to obtain licensing fees, while not actually practicing the invention itself.  In some cases, the licensing fees may be subject to unfair terms, and the troll may demand licensing fees from companies who only practice something tangentially related to the patent, hoping the companies will simply pay up to avoid litigation.

While Google holds itself out as strongly against the traditional patent system, it continues to amass an enormous patent portfolio for itself.  In 2014, Google earned the 8th-highest number of patents from the U.S. Patent and Trademark Office, for a total of 2,566 U.S. patents.  When Google purchased Motorola in 2011, discussions focused on the valuable patent portfolio Google obtained in the deal.  In recent years since the Patent and Trademark Office instituted a “fast track” program by which applicants can pay fees in order to have their patents cut in line and be examined more quickly, Google has utilized the program extensively in order to push its patents through the system.  In 2014 for example, Google obtained 875 patents through the fast track program.

Despite Google’s long history of lobbying for patent reform and even pledging many of its software patents as open-source, it has been accused of patent trolling in the past.  So is this new program just another way to obtain more intellectual property, disguised as good karma and a contribution to patent reform?  Google has not placed any restrictions on the types of patents that may be submitted for consideration, and the patent mogul expressly states that it will retain the right to license out the patents it purchases through the program.  Perhaps Google really is just trying to clear the way for patent reform.  In any event, it will be interesting to see where Google’s “experiment” leads.

– Draeke Weseman, Weseman Law Office, PLLC

Intellectual property enforcement continues to make news, and new solutions to curb abusive enforcement – i.e. trademark bullying, patent trolling, and copyright trolling – are being proposed regularly. Central to these solutions is the idea of a “fast-lane” that kicks bad claims to the curb before the bullied or trolled party has incurred significant legal costs.   For example, in copyright infringement cases, a motion for judgment on the pleadings may succeed very early in the process if fair use is obvious. The ability to end frivolous litigation early is critical to a balanced intellectual property system.

Although I haven’t seen it discussed much, one possible means for putting an early end to frivolous trademark litigation is for the bullied party to pursue dismissal on the grounds that the trademark bully has not met the required pleading standard of “plausibility” set forth in Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007) and extended in Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937 (2009). (For the non-lawyers reading DuetsBlog, “pleading standard” refers to the threshold content that is required in a complaint so that a plaintiff can have access to the court). My opinion is that claims that deserve the trademark bullying label are not likely to meet the Supreme Court’s pleading standard and, therefore, should be dismissible. Early dismissal of bad trademark claims, if more routinely sought and granted, could provide bullied parties with relatively quick and cost-efficient relief and could be another tool in the toolkit for practitioners faced with responding to abusive intellectual property enforcement.

First, a quick summary of the change in pleading standards. From 1957 to 2007, civil litigants followed the “mere notice” pleading standard of Conley v. Gibson, 355 U.S. 41 (1957), wherein the Court held that a complaint need only state a “conceivable” set of facts to support its legal claims. That all changed in 2007, when, in Bell Atlantic Corp. v. Twombly, the Court replaced that standard with a stricter “plausibility” standard: a complaint “must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Because the Twombly case involved a specific set of facts involving allegations of anti-competitive behavior, the courts were confused about whether Twombly’s rule should be extended to all civil litigation. So, in 2009, in Ashcroft v. Iqbal, the Supreme Court confirmed that the new, stricter pleading standard of “plausibility” applied to all civil litigation.

According to the Supreme Court, in order to state a claim that is “plausible on its face,” a plaintiff must string together facts that amount to more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements.” Legal conclusions can provide the framework for a complaint, but are insufficient on their own because legal conclusions are not entitled to an assumption of truth. Asking for plausible grounds “calls for enough fact to raise a reasonable expectation that discovery will reveal evidence” of unlawful conduct.

So, do trademark bullies bring plausible claims? In my view, no. And I think this view is often echoed in the media coverage of trademark bullying cases, where we see the sentiment expressed time and time again that “there’s no way anybody is confused about X and Y.” Those of us following this issue can all remember Vermont Governor Peter Shumlin’s public message to Chick-fil-A: “If you think that Vermonter’s don’t understand the difference between kale and a chicken sandwich, we invite you to Vermont and we’ll give you a lesson about the difference between kale and a chicken. There are some very distinct features . . . ” This seems to me to be a layman’s way of saying that Chick-fil-A’s claim of trademark infringement was just not plausible on its face.

Like Chick-fil-A in the Eat More Kale dispute, trademark bullies regularly and aggressively claim likelihood of confusion without actually alleging enough factual matter to make that claim plausible, rather than merely conceivable. Trademark bullies often claim a likelihood of confusion based entirely on the similarity of the marks, while ignoring the other elements necessary to establish trademark infringement – strength of the mark, relatedness of the goods, overlapping trade channels, bad faith intent, etc. In doing so, trademark bullies might show a conceivable claim – the marks are the same, so conceivably there could be confusion – but they lack the extra stuff necessary after Twombly to get over the hurdle of plausibility. In other words, the claim isn’t plausible because despite similarities in the marks, the mark is so weak or the goods so unrelated that there is not “a reasonable expectation that discovery will reveal evidence” of trademark infringement. I think if more of the bad trademark claims we see were actually held up to this standard, more of these claims would fail.

Moreover, courts have ample discretion to decide whether a claim is plausible, and thereby to decide whether to subject a bullied party to the burden of discovery. In Iqbal, the Supreme Court held that “[u]ltimately, determining plausibility is a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Courts can look at the success or failure of prior trademark claims and rely on their own common sense about whether there really is any unlawful conduct that will be discovered. This might be a difficult subjective decision, but judges should not shy away from that responsibility.

As a matter of public policy, upholding the plausibility standard is important. Comments from the public, as part of the USPTO’s investigation into trademark litigation tactics in 2011, revealed the following views:

Aggressive tactics used by overreachers presents a problem for the entire intellectual property community by threatening legitimate activities and clogging the legal system with invalid claims.

[D]iscovery and deposition processes were too costly for many small businesses and provided a means for a party to thwart progress in a case and to drain resources from an adversary. . . .

[S]mall companies and individuals are placed in a difficult position where surrender of valid trademarks that are being lawfully used is the only rational financially-feasible option available.

It seems to me that one way to reduce the impact of frivolous trademark litigation is to demand that trademark plaintiffs actually meet the plausibility standard set forth in Twombly. Trademark practitioners should challenge trademark bullies under Twombly and expose the implausibility of claims made by trademark bullies.

Nearly everyone in the IP community is talking about the hilarious viral Velcro music video released last week. Hat tip to Patently-O, Martha, and Brett. The “behind the scenes” video is here.

We’ve spoken before about nervous trademark types, behind the scenes doing their level best, and taking steps to try to avoid unwanted genericide of the trademarks they are charged to protect:

“Nervous, I say, because these types of advertisements frequently are designed to help prevent unwanted genericide of a trademark. The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.”

Velcro has been on our Genericide Watch list, and Wikipedia notes it is a trademark frequently used as a generic term. So, hats off to Velcro for letting their attorneys’ hairs down on this one.

And congrats to Penn Holderness and the rest of the WalkWest creative team, for helping give the impression in the Velcro video that at least some nervous lawyers can still have a sense of humor.

Julie Barry, Director of Global Brand, Velcro Companies, explained the Velcro video in this way:

“We’re here in North Carolina, shooting our ‘We are the World’ video which is an educational video explaining to folks details about the Velcro brand trademark and why it’s important that people refer to the mechanical fastener as ‘hook and loop.'”

Actors posing as lawyers, flanked by real Velcro lawyers, appear agitated at times, imploring listeners to not say Velcro, but instead “hook and loop,” or “our trademark will get killed,” “we’ll lose our circle ®,” and “our trademark goes away.” At the same time, Velcro is fully admitting the “First World” melodramatic nature of this worst case scenario and unfortunate situation.

Maybe it’s just me, but I’ve never heard of a “hook and loop” fastener before now, so the video certainly accomplished that bit of education. I’d be surprised, however, if the video moves folks to embrace the stiff and clunky six syllable “hook and loop fastener” generic phrase, over Velcro.

Perhaps what follows is one small example of where I’ve captured “at least some of the sparks” spinning from my mind’s eye, so please bear with me, but as I watched and listened to the Velcro video more times than I’d like to admit (kind of an addictive musical hook), the rapid repetition of “hook and loop” triggered thoughts of “hook and ladder,” then “chutes and ladders,” and how ladders can lead up to rewards while chutes can take you for a ride straight to the bottom:

Given those stark alternatives, given how a brand that deteriorates to the point that its primary meaning is perceived to be more generic than it is perceived a brand (is not a brand at all, under the law), and given a trademark owner’s understandable desire to try and influence and build up the primary brand meaning among the relevant consuming public, it’s worth asking whether the humorous Velcro video helps to move that critical needle. In other words, does it act as a ladder?

We’ve cautioned before that a brand designed to launch an entirely new category must also spend valuable time and effort in creating and donating to the public, an acceptable generic term that the public easily can embrace, so when the applicable patents expire and exclusivity is lost, the trademark doesn’t travel straight down the chute to genericness:

Brand owners launching a new category of product or service do well to design a simple generic category name too.”

“Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.”

Is “hook and loop” going to get the job done? Will it help prevent a death by a thousand cuts?

“Hook and loop” is certainly more of a ladder, even a rescue “hook and ladder,” than the extreme generic identification of goods found in the first Velcro trademark application from 1957:

“NOTION-NAMELY, A SYNTHETIC MATERIAL SOLD IN RIBBON, SHEET, OR PIECE GOODS FORM, SAID MATERIAL HAVING COMPLEMENTAL PARTS WHICH ADHERE TO EACH OTHER WHEN PRESSED TOGETHER AND ADAPTED FOR USE AS A CLOSURE, FASTENER, OR BUTTON FOR CLOSING GARMENTS, CURTAINS, OR THE LIKE”

And, unlike Rollerblade who seriously delayed in donating a bite-size generic category term to the general public (“in-line skates”), Velcro seems to have been fully invested in “hook and loop” going all the way back to at least as early as 1975. Query whether the entry of the “hook and loop fastener” phrase closely tracks the lapsing of the patents (as the video mentions) “forty years ago.” If so, perhaps it still came twenty years too late?

Either way, I’m seriously wondering whether Velcro’s tongue-in-cheek reference to a “scratchy and hairy fastener” might be more easily and readily embraced by today’s general public as the generic alternative to genuine Velcro branded products.

I’m also left thinking that the video begs the question of who is the intended audience. In other words, who are the “folks” that Velcro would like to reach with this creative video?

I’ve always thought of Velcro as more of a B2B brand, but in researching this post, I see that I’ve missed some of their general consumer products, like general purpose straps, general purpose plastic bagschildren’s toy blocks, adhesive cementmedical splints, and hair rollers, for example.

Contractual efforts are probably the most effective way of controlling how the Velcro trademark is used by those who purchase authentic product from Velcro and incorporate Velcro fasteners into their own consumer products. And, when it comes to competitors who might be inclined to misuse the Velcro trademark, the cease and desist letter, and/or lawsuit is probably most effective.

So, perhaps the general public is the intended audience of this educational effort. If so, I’m not sure the effort anticipated how many in the general public don’t like to be told what to say and do.

Moreover, let’s face it, the video’s referenced “trademark laws being broken,” aren’t being broken by the general public speaking about the brand or a competitor’s alternatives to the brand. Nor are they being broken by the media who reports and writes about all kinds of things and happens to use “velcro” in lower case and in a generic sense.

I do seriously hope the video will strike the right chord with these important audiences, as they will have a significant impact on whether the brand is able to climb the ladder of distinctiveness and fame or slides down the chute to genericness.

For those still with me and wondering, while I’ve questioned the seriousness of the risk for genericide when intentional and controlled brand-verbing is involved (and the 9th Circuit’s recent decision affirming the survival of the Google trademark appears to validate the difficulty of bringing a trademark all the way to the ground zero), the Velcro mark seems different, as the generic uses don’t involve verbing, they go straight to nouning and naming what the product is, by the way, a far more efficient name for a “hook and loop” or “scratchy and hairy” fastener.

Which of the present options are most likely to roll off the tongues of those who matter?

-Martha Engel, Attorney

My home state of Minnesota prides itself primarily on three things:  our ability to withstand our winters, our 10,000 lakes, and our dearly beloved Prince.  While we take a beating when it comes to our sports teams, all of his purple life we had Prince.  Just like you might do for your neighbors, he opened his Paisley Park doors to any one of us to come hang out and dance until the wee hours of the morning.  Minnesotans kept a respectful distance from him and honored his desire for privacy, even though Paisley Park borders a well-traveled highway in the western suburbs.  Maybe it was just that we all knew we weren’t cool enough to talk to him, but honestly what would you even try talk to him about?!?   After I moved out of the state for college, Prince was often a symbolic rock when I was feeling a little homesick.   When my freshman year roommate decorated her side of the room with dozens of photos of my two least favorite things (Brett Favre in a Packers uniform and Dave Matthews) to mark her territory, I blared Prince from my side of the room.   When the Vikings “set a new mark for futility” and lost the NFC to the Packers, Chappelle’s True Hollywood Story skit about Prince aired.  My Wisconsin-born friends suddenly found being from ‘Sota to not be so pitiful.  “Where is Lake Minnetonka?”   “Did he really have parties like that?”  “Wait, he still does?!”

Prince’s death last week rocked Minnesota pretty hard.   That cool, funky vibe that emanated from his small 5’2″ frame felt noticeably absent in Minneapolis over the weekend.   His aura made you want him to drop some insane, sexy, humorous, wise, out of this world one-liner on you (pay attention heirs, I hope a desk calendar compilation of these is forthcoming).  As much as the world may have been surprised by stories coming out of Minnesota about our state’s relationship with him, I was equally surprised by the extent of all of the Prince tributes worldwide.   As the video from the SNL 40th anniversary party makes clear, even the cool people at the lunch table thought he was too cool for them.  When you grow up thinking of him as your neighbor who floats on purple smoke, threw great parties, and oh also happened to be a musical genius, I never really noticed the true extent of his international stardom.

While he was known for his privacy, he also was known to be strict about his copyrights in his works – probably even more so than Kanye West.  But…he did not have a will,  which means the ownership of his copyrights in his works will certainly be called into question.  The copyright term for an individual’s work is “the author’s life plus an additional 70 years.”   Assuming that he owns them personally, rather than as an asset of some corporate entity, that would give his heirs ownership rights in these works for another 70 years.  The ownership of the copyrights in his songs, and what “heirs” get to lay claim to them, is certainly going to be a hotly contested battle.

And then there are the trademark rights for a guy who once was only referred to by a symbol or The Artist Formerly Known As Prince.  Even before it was confirmed by a judge yesterday that Prince had no will, his trademark filings gave subtle hints that maybe his affairs were not fully in order.   All of the applications that I found appear to be owned by Paisley Park Enterprises.  The maintenance filing for his registration for PRINCE (registered after his Love Symbol period) for “entertainment services, namely, live musical and vocal performances by an individual” was not filed when due in 2004, so that registration was cancelled.  It was refiled in 2005 by a different firm, and again the maintenance filing was not timely filed and so that registration was cancelled in 2013.  It was refiled in October 2014 by yet another firm and just scheduled to publish two days ago.  Meanwhile, his iconic “Love Symbol” is handled by yet another firm — that seems to have even handled simple recent filings in paper filings, which is a rather unusual practice in the last few years due to a preference for electronic filings by the USPTO.  It makes you wonder what actually was going on behind the scenes here.

With one more verse to the Prince IP story, I need another piece of your ear.  You see not only was Prince a musical genius, he was also an inventor of this keyboard design and had a design patent for this, which expired a few years ago.

princeWho will end up owning Prince’s IP rights – and controlling his legacy – remains to be seen, but as I just overheard someone say while I  finished drafting this post “the people of Minnesota should own it.”

 

 

ShawBarrellThis isn’t the first time we’ve written about brand owners who shoot themselves in the foot with their advertising. And, I’m sure it won’t be the last.

As we’ve discussed before, touting the function of a product design feature can kill any hope of owning non-traditional trademark protection in that feature.

The latest example from the Trademark Trial and Appeal Board (TTAB) relates to a claimed mark consisting of “a three-dimensional configuration of external helical fluting around a gun barrel.

Here, the TTAB seized on the brand owner’s website content touting function in this way:

“[T]he unique appearance of our Helical Fluting provides the discriminating shooter with a barrel that not only looks great but is up to thirty percent more rigid than a similar barrel with Straight Fluting. Helical fluting provides additional surface area for improved cooling, improved barrel harmonics, and helps counteract rotational torque, giving the shooter greater shot consistency.”

While there was much discussion and debate about whether the Applicant’s utility patent actually disclosed the claimed trademark feature (when present, no trademark protection is possible), there was much discussion and debate about the presence of an arguably controlling design patent (normally considered totally consistent with non-traditional trademark protection), and there was much discussion and debate about the existence of other competing designs in the marketplace, from my perspective, it’s hard to explain away the Applicant’s own advertising:

“Applicant’s website clearly touts the utilitarian advantages of its rifle barrel configuration design (‘Helical fluting provides additional surface area for improved cooling, improved barrel harmonics, and helps counter act rotational torque, giving the shooter greater shot consistency.’).”

“Applicant specifically claims on its website that its ‘patented helical fluting’ provides an improvement of ‘up to thirty percent rigidity versus straight fluting.’ Thus, while Applicant mentions a ‘unique appearance’ to the fluting in the same passage on its website, it also clearly claims the same specific utilitarian advantages identified in the patent, i.e., more rigid, lighter, improved cooling, etc.”

In the end, the TTAB pointed both barrels at Applicant’s trademark claim, finding functionality, and affirming the USPTO Examining Attorney’s refusal to register the claimed “external helical fluting around a gun barrel” trademark:

“[B]ased on all of the record evidence, we find Applicant’s proposed rifle barrel configuration mark is principally dictated by utilitarian concerns. With respect to the Morton-Norwich factors in particular, Applicant owns a utility patent demonstrating and claiming the utilitarian purposes of its fluted design; Applicant extols these same virtues in its advertisements; and Applicant’s design is considered superior to other barrel fluting designs. With these findings and viewing the record in its entirety, we conclude the proposed rifle barrel configuration mark comprises matter that, as a whole, ‘is essential to the use or purpose of the article or … affects the cost or quality of the article,’ as contemplated by Inwood, and thus is functional and not registrable on that basis.”

So, pointing to a “unique appearance” or saying it “looks great” won’t save the day, when what follows is fatal in terms of functionality. This fatal flaw is a bit reminiscent of the Bawls energy drink example we wrote about a while back, where the collection of bumps on the bottle not only “looks cool,” but is also there to provide a “non-slip-grip.”

It is also reminiscent of Toyota’s front “spindle” grille, self-explained as a “dashing visual feature,” but then also like this: “Its trapezoid-like shape assists the flow of air into the engine room.

The gun barrel case serves as another good reminder of the importance of having your favorite trademark type review ad copy and website content before going live.

Bottom line, if you want to forever own a design feature as a trademark, treat it like one.

-Wes Anderson, Attorney

Strolling around the Mall of America last weekend, I was surprised not only by the rather low weekend crowds (everyone must have retreated to their respective lake cabin) but also the brand-new store for Swedish outdoor brand Fjällräven. What with my highly-attenuated Swedish ancestry, I couldn’t help but stop in.

The company’s perhaps best known for its Kånken backpacks – small and prominently-branded, you have almost certainly seen one regardless of where you’re located. They’re also have a line of excellent outdoor products, in the vein of The North Face and Columbia, like the Skogsö jacket.

Processed with VSCOcam with c1 preset
Photograph courtesy of MSPMag.com (http://mspmag.com/Blogs/Alishops/June-2015/Valkommen-to-Minnesota,-Fjallraven/)

What I couldn’t help but notice was Fjällräven’s prominent and frequent use of the Swedish language’s additional three letters – Å, Ä, and Ö. Perhaps you noticed the last paragraph was littered with them. It’s not only because of the Swedish words that litter the catalog (Fjällräven means “Arctic Fox”), but also a marketing technique to emphasize the outdoorsy Swedish-ness of the brand–and accompanying European import prices. So what do these letters have to do with U.S. trademarks? Well, these three letters are right at home in Göteborg, but do they have any place at the United States Patent & Trademark Office, the keeper of English-language marks?

We frequently recommend that trademark owners register their bread-and-butter word marks in a form known as “Standard Characters” — essentially, a format that claims trademark protection for the wording only, without any typeface style or other design elements. This requires entering the words into the PTO’s trademark application, which then converts the text into regular old Times New Roman. This provides the broadest possible protection for a word mark, as it allows the owner to prove up use regardless of the font or design elements that accompany the mark in actual marketplace use.

So if your brand’s logo changes from year to year (I’m looking at you, Facebook), a standard-character registration will do the trick.

But what about foreign words with a wider range of characters at their disposal? Are these nonetheless “standard” and acceptable by the PTO? It turns out that just about any Latin character you’ve accidentially pasted into a Word document is also probably acceptable in a standard-character trademark application. The Trademark Manual of Examining Procedure states that the PTO has its very own “Standard Character Set,” available here, that lists each of the letters and symbols a trademark applicant may use in a standard-character drawing. This includes the three additional Swedish letters as well as many known favorites like Æ, œ, and Ø.

Many applicants, however, (perhaps intentionally) substitute foreign-language characters with its more mundane A-Z analog (for example, MUNCHEN instead of MÜNCHEN or SMORGASBORD instead of SMÖRGÅSBORD). This isn’t necessarily a problem for the trademark applicant but it can raise confusion as to whether the mark is an “Americanized” version of a foreign word or is trying to use the word itself. Luckily, the PTO has provided a way for foreign marks to remain faithful to their true spelling while retaining the broad protection of a standard character registration. Skål!

It is State Fair time again in Minnesota, so let’s examine the Tilt-a-Whirl brand.

The brand originated in Minnesota almost 90 years ago, after the amusement park ride was invented by Herbert Sellner of Faribault, Minnesota. Since 2011 the Tilt-a-Whirl brand and trademark has been owned by J&S Rides, d/b/a Larson International out of Plainview, Texas.

The first federal trademark registration for the Tilt-a-Whirl mark issued December 14, 1926, covering “merry-go-round or carrousel” in Int’l Class 28 (generally covering games and sporting goods), which sounds a little tame and perhaps even a bit misdescriptive, since the ride is well-known to cause nausea.

The second federal trademark registration for the Tilt-a-Whirl mark issued on December 5, 1995, covering more broadly “carnival and amusement park rides” in Int’l Class 22. This strikes me as an odd classification for this expensive piece of equipment, since Int’l Class 22 covers such unrelated and eclectic products as:

“Alpaca hair, bailing twine, bungee cords, clotheslines, down feathers, hammocks, laundry bags, plastic twist ties, human hair for stuffing and padding purposes, tents, unfitted spa covers, vehicle rescue apparatus, namely, rope cables used to affix between vehicles to pull a jammed or stuck door of one of the vehicles, and waterproof bags, namely, wet bags for temporary storage of wet and/or soiled cloth diapers.”

Perhaps it was incorrectly classified in Int’l Class 22, less for what the Tilt-a-Whirl is and does, and more for what you might need before or after experiencing a ride on one. I experienced my last ride a couple of years ago, so my daughter has been since, and is on her own this go round.

Here’s an interesting question to ponder: Why no coverage for Tilt-A-Whirl entertainment services? The registrations only cover the product, a very expensive piece of manufactured equipment, costing more than $300,000. So, the consumers of the Tilt-a-Whirl branded product are those who operate amusement parks and rides, not those who buy tickets to ride on them.

It seems to me that to create service mark rights in Int’l Class 41 under the Tilt-a-Whirl brand for “entertainment in the nature of an amusement park ride,” the brand owner would have to operate the equipment itself to provide the entertainment service, or at least license another to do so.

To the extent the brand owner thought this one through, I’m thinking the risk of controlling independent carnival operators as trademark licensees and the resulting potential liability for any operational mishaps far outweighs the additional benefit of owning technical service mark rights in the Tilt-a-Whirl brand and mark. But, what do you think?