Duets Blog : Creativity and the Law: DuetsBlog

Putting aside, for now, the unsettled question of who currently owns the iPad trademark, and Dan's perspective on Apple's trademark clearance strategies, from last week, look at what our finely-tuned e-mail spam filter just snagged:

It is a similar story to my previous Free Dell XPS Laptop Spam Scam? blog post from last December. Here, however, the Apple, iPad, and the (possible) iPad configuration trademarks, are the newest form of brand bait for what appears to be an ongoing type of spam e-mail scam. They're fast. It only took about two weeks after Apple's announcement of the iPad for these folks to bait their electronic hook with the newest branding lure.

By the way, how is it that these folks can make the free offer before Apple's iPad tablet is even available to the public? As of today, Apple still has a notify me page, if you'd like to "be among the first to receive iPad." So, doesn't the present unavailability of the iPad add to the misleading nature of the above advertisement because it seeks "testers" for this "new" product?

What do you think, misleading advertising, fair use of Apple's intellectual property?

This story also appears related to the topic covered in my previous Is Wal-Mart Giving Away Free $1,000 Gift Cards? blog post too.

What do these unsolicited e-mail programs have in common? Well, besides the fact that they all appear to originate from Canada (for reasons unknown to me), they use well-known, if not famous brands to attract attention online and convince you to supply them with your e-mail address. Really, would anyone pay even an ounce of attention to any of these e-mail spam solicitations without the unauthorized use of these popular brand names and images?

In an apparent attempt to avoid misleading anyone and confusion, of course, as was the case with the Free Dell XPS offer and the Wal-Mart $1,000 Gift Card offer, the Apple iPad ad offers a purported disclaimer:

The advertisers in this email are not affiliated with any of the above brands.

This is a third party advertisement sent to you by the list owner. If you no longer wish to receive email from this advertiser, please write Reward Group 191 7 West 4th Avenue, Suite 279 Vancouver, B.C. VJ6-1M7 or visit our email removal site by click here.

If you do not wish to receive correspondence from the list manager you will need to follow the unsubscribe instructions provide by the list manager on how to remove you from their list.

Who are the advertisers? Who is the list owner? It says the advertisers are not affiliated with any of the brands, so does that mean the list owner is? Does this disclaimer do the job with claims relating to likelihood of confusion as to source, affiliation, sponsorship, and approval?

Even in the unlikely event it does, what about claims for initial interest confusion? Where is the disclaimer for that additional type of unlawful trademark confusion? And, since there is a reasonable claim of trademark fame for many of these brands, is it even possible to have a disclaimer that avoids a state or federal dilution claim concerning a famous mark?

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Can you spot the genuine iPad?

Back in July, I blogged about my then-discovery that Apple did not own the federal trademark registration for iPhone.  Needless to say, when I heard about Apple's new iPad product, I just had to see if they were out in front in securing trademark rights to this name.  They're not, at least not in the U.S.  As you may have read in the Wall Street Journal here and here, Fujitsu owns a pending U.S. trademark application for IPAD for use in connection with "hand-held computing device for wireless networking in a retail environment."  Fujitsu claims first use of the mark in January 2002. 

Apple?  Well, it appears that Apple is using a proxy (itself a subject for a whole separate discussion) by the name of IP Application Development to secure registered rights to the IPAD trademark.  That application claims priority to a July 2009 application filed in Trinidad and Tobago.  (Trinidad and Tobago?  Another discussion topic.)

Let's see:  Marks are identical, goods are highly similar, if not identical, and priority of January 2002 versus July 2009.  Slam dunk, right?  "No contest," you say?  Apple, pick again?

NOT SO FAST!  No, this may get interesting.  You see, Fujitsu's application to register IPAD lapsed and was declared abandoned, only to be revived in June 2009 -- a mere month before Apple's first apparent claim to rights.  This makes for a much closer race.  Further, Apple (not IP Application Development) has filed extensions of time to oppose Fujitsu's IPAD trademark application--extensions that will expire on February 28.  We should know Apple's next move within a month's time.

My assessment?  Unlike horseshoes and hand grenades, closer does not count for much here.  Priority is priority, and Apple is likely to face a difficult time surmounting some eight years of common law rights that appear to belong to Fujitsu, even if it could somehow bring down Fujitsu's application, which doesn't look promising.  (Trademark geeks see here for reason.)

Combined with the iPhone kerfuffle, I am now really wondering what Apple's trademark clearance process and discussions are like.  Selling iPods and iPhones is like printing money, so maybe Apple believes that it can just buy its way through all of these thickets.  Even so, wouldn't you want the purchase complete before the product unveiling? 

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If you've been paying attention on the trademark litigation front, you may have heard that The North Face recently brought a lawsuit against a freshman at the University of Missouri, Jimmy Winkelman, who has been selling clothing under the name The South Butt.  Aside from the obvious trademark question of whether the consuming public is, as Jimmy's attorney stated, "insightful enough to know the difference between a face and a butt," there are a couple other issues (unrelated to each other) that piqued my curiosity. 

First, it appears that The North Face has included a claim for trademark dilution.  For the uninitiated, trademark dilution is a different claim which, unlike a general claim for infringement, does not require consumer confusion.  Rather, it requires the diminishing of a "famous" mark's ability to serve as an indicator of source through "tarnishing" or "blurring." A classic example of tarnishment is the case of Moseley v. V Secret Catalogue, Inc., where Victoria's Secret sued an individual, named Victor Moseley, who was operating an adult store under the name Victor's Little Secret.  The theory was that even if the consuming public would not be confused by Victor's Little Secret, it damaged Victoria's Secret because it essentially cheapened their trademark.  So too here.  Even if people can tell the difference between a face and a butt, the damage may still exist because The South Face will case people to associate The North Face with a butt.  Notably, successful claims for dilution are rare, frequently because the "famous mark" hurdle is difficult to clear and "blurring" and "tarnishing" are difficult concepts for a court to address.  To me, it's uncertain whether The North Face can meet the "famous" requirement and whether dilution could be shown.  I'd like to see how the dilution claim would play out, but I doubt we will get that chance.

Second, I can see this case turning into an absolute nightmare for The North Face from a public relations standpoint.  Apparently, little Jimmy is a college freshman who started The South Butt to help pay for school.  This has all the makings of a classic David versus Goliath story where the public perception will end up being that The North Face is just a giant greedy corporation that can't take a joke and wants to beat up on a little guy.  (The last I heard, The South Butt's revenue was hovering around $5000.)  While I'm not particularly knowledgeable about The North Face's target demographic, it seems like this wouldn't play well with a lot of them.  This brings us to a teaching point:  While diligence is important in protecting your brand, so is thoughtful contemplation about your enforcement actions.  It's important to weigh the risks of doing nothing (which can sometimes be very substantial), with the risks of engaging in very public litigation with a sympathetic adversary.  Here, I think The North Face could have taken a more thoughtful approach than suing a poor college freshman named Jimmy right in the midst of the holiday shopping season.

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You may recall the Gatorade v. Powerade false advertising lawsuit filed by a Pepsico entity (Stokely-Van Camp, Inc.) against rival The Coca-Cola Company back in April, discussed here (with a copy of the complaint).

You also may recall how G scored an F in the courtroom, back in August, losing a hotly contested motion for preliminary injunctive relief, discussed here.

So, I guess it was only a matter of time before G decided the case wasn't worth breaking a sweat over any longer.

Interestingly, the Stipulation and Order ending the case, has the owner of the Gatorade brand dismissing with prejudice (meaning they can never be reasserted) all claims it had asserted in the lawsuit against Powerade brand owner Coca-Cola. 

It shows Coca-Cola only dismissing with prejudice its affirmative defenses and counterclaim, "insofar as they specifically address [Gatorade's] marketing, labeling, advertising and/or promotional claims concerning the inclusion of calcium and/or magnesium in Gatorade Endurance Formula." All other defenses and claims asserted by Coca-Cola were dismissed without prejudice (meaning they are not barred from being reasserted in the future).

Given this unequal treatment in the settlement, it would appear that Gatorade was more anxious to end the case than Powerade.

Recalling that Gatorade and Powerade battled in court over advertising claims back in 2006, any predictions on how long until these two sports drink brand rivals slug it out again in court?

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Are you shopping for a trademark? Stores spend lots of money branding their names. Accordingly, many register their store names as trademarks.   Over Thanksgiving while shopping in Turkey,  I saw the store front sign Inci®.

I thought it was unique because you do not often see the ® on a store front sign. For example, you do not see bloomingdale’s® or Neiman Marcus®.  Although I am not quite to the shopping level of Isla Fisher’s character in the movie “Confessions of a Shopaholic,” I still have never seen the Inci® store anywhere in the United States, or even on the streets of Paris or London. 

When I returned to the United States, I checked the United States Patent and Trademark Office (USPTO for short) website and found that there is an abandoned trademark for Inci in the United Statesand two live trademarks for Yeni Inci

and Inci Fatih.

According to the USPTO website, “Inci” means pearl. Although I cannot fully understand the Turkish registration website, I was able to determine that the same trademarks are owned by the same entities in the United States and Turkey. The registrations are for clothing. It is unclear, however, if this trademark owner is associated with the Inci® store that I saw in the Turkish mall.

Could the owner of the Turkish store Inci® receive protection in the United States even if it did not have a valid  registration? Possibly. The “famous marks” doctrine could provide such protection. This doctrine was born in my favorite city Paris. Article 6bis of the Paris Convention for Protection of Intellectual Property protects marks within a nation where it is well-known even though it is not actually used or registered in that nation  So, if Inci® can show that it is well-known in the United States it may receive additional protection. 

The courts are far from uniform in applying the “famous marks” doctrine. A New York court ruled in favor of Cutabaco, the company producing the favorite cigar of Cuban President Fidel Castro.  The court held that Cutabaco had a legally protectable right to COHIBA because the Cuban brand was well known among United States premium cigar smokers before the American company General Cigar resumed use of the COHIBA trademark. Accordingly, the court granted Cutabaco an injunction prohibiting General Cigar from continuing to sell cigars under the COHIBA trademark and cancelled General Cigar’s COHIBA. On the other hand, the Second Circuit refused to recognize the doctrine in connection with the famous Bukhara restaurant of New Deli. The Second Circuit explained that Congress had not incorporated the doctrine into Federal Trademark law so it would not recognize the doctrine.  

Whether Inci® or other such European stores would receive protection in the United States without registered trademarks will depend upon how famous the stores are and what court they land in. With the international nature of the economy, this is a topic that the Supreme Court will likely take up in the years to come.

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What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int'l Class 12:

And, as you may recall from Dan's I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

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Schering-Plough Healthcare, owner of the MiraLAX brand -- the top-selling OTC oral laxative ($360 Million in OTC sales since launching in February 2007) -- has pulled out all of the available stops and then some, in a pre-Thanksgiving Day federal district court action brought in the District of Delaware, asserting a variety of intellectual property and unfair competition claims under both federal and state law. Bloomberg.com's report on the case from yesterday is here. In addition, here is a link to the Complaint, with Exhibits A, B, and C.

As is typical when the manufacturer of a national brand wants to stop what it perceives as unfair retail store brand competition, Schering-Plough brought suit not against either of its retail customers Kroger or CVS -- despite both being mentioned in the complaint -- instead, it sued Perrigo the private label manufacturer who provided the competitive products bearing those retailers' well-known, if not famous store brand names.

Perrigo says it is "the world's largest manufacturer of OTC pharmaceutical products for the store brand market." Here is how Perrigo describes its business model:

The Perrigo Company manufactures products that compare to national brand products such as Tylenol^®, Advil^® or ONE-A-DAY^®. For example, Tylenol^® has acetaminophen as an active ingredient and is available in a store's analgesic (pain relief) section. Store brand acetaminophen is located right next to the national brand acetaminophen, offering the same active ingredient (acetaminophen) and the same relief.

Store brands and national brand products are both manufactured to meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand products are sold by retail stores under their own labels and compete with nationally advertised brands. All Perrigo products meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand OTC and nutritional products have saved consumers many millions of dollars in health-care costs over the past six years.

Although the national brand owner's strategy of not suing its retail customer directly may be attractive from a business relations perspective, unless the case is promptly resolved on an amicable basis, it will be hard to avoid having representatives of Kroger, CVS, and other retail customers of Schering-Plough, put on the "hot seat" in discovery depositions to determine who created, controlled, and/or approved the "look and feel" of the store brand packaging. It remains to be seen how this strategy will play out here for Schering-Plough.

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A couple of hours ago Kare 11 News in Minneapolis reported "Lions Tap wins settlement with McDonalds."

Absolutely no details about the settlement were provided, so it's hard to understand how Kare 11 is able to pronounce this as a "win" for Lion's Tap over McDonalds, although it certainly plays into the seductive David and Goliath theme of the case. The attorney for Lion's Tap apparently is quoted as saying the parties reached a "mutually beneficial amicable resolution," and Kare 11 further reports that McDonalds did not "immediately return a phone message seeking a comment" today.

Perhaps even more troubling than the unsupported "win" characterization, is the repeated failure of the traditional media covering this story to get the facts straight -- facts easily discernible by reading the federal court complaint that is so often recited in the stories, but apparently very few actually have undertaken to read it. In case you're interested, here is another link to the actual complaint.

As we have documented before on DuetsBlog, Lion's Tap did not register the "Who's Your Patty" slogan until after McDonalds began use and only days before filing suit against McDonalds, and it did not register -- even in Minnesota -- four years ago, as repeatedly and incorrectly reported ad nauseam by the media.

In fairness, although local CBS affiliate WCCO also republished the significant error on the timing of Lion's Tap's Minnesota registration of the "Who's Your Patty" slogan, at least it didn't assume the settlement to be a "win" for the Tap: "Lion's Tap Settles With McD's Over Catchphrase."

Our coverage of this case is here (9/3/09), here (9/8/09), here (9/21/09), and here (10/17/09).

In case we have not heard the last word on this case, stay tuned, and we'll let you know more as we know more about this Lion's Tap "win" and "mutually beneficial" resolution.

UPDATE: Is the Star Tribune reading DuetsBlog? It appears so. A Google search shows the Star Tribune's original story title on the settlement was: "Lion's Tap wins trademark suit against McDonald's," but now the story is titled: "Lion's Tap settles trademark suit against McDonald's," with no mention of the Minnesota State registration.

Now we just need to get USAToday, NPR, Newstin, Daylife, and NewsSpider, on the bandwagon.

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A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M's permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M's trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

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Last week, a group calling themselves The Yes Men apparently perpetrated an elaborate hoax to usurp the corporate persona of the United States Chamber of Commerce, to the point of publishing a fake website and holding a press conference at the National Press Club, posing as the Chamber itself.   (Image of genuine website here.)

As reported at Betanews (and elsewhere), representatives of the real U.S. Chamber of Commerce became aware of the hoax in time to actually interrupt the faux press conference, under the auspicies of which the pranksters were announcing an about-face in the Chamber's previously-stated positions on climate policy.  As of this writing, the Betanews article has a six minute video of the press conference as it is interrupted by a genuine representative of the Chamber.  It is interesting to see how close the hoax came to actually duping real members of the press.  (Of those in attendance, apparently four actual reporters were naive to the hoax, and they reported for the Washington Post, Reuters, and Greenwire.  Some of those attending were allegedly plants.)

On Monday, the U.S. Chamber of Commerce sued The Yes Men for a host of trademark-related torts, including trademark infringement, unfair competition, trademark dilution, false advertising, and cyberpiracy.  (PDF of complaint here.)  They even worked in an allegation of counterfeiting.  (Had I drafted the complaint, I would have used the word "counterfeit" as often as possible.)  While I reserve judgment as facts develop, the information publicly available now suggests that the Chamber has a strong case.  The Yes Men seem to be leaning towards some sort of a free speech defense.  The complaint suggests that The Yes Men perpetrated the hoax in an effort to publicize their new movie.  Whether this is the case, or whether this was an actual effort to deceive people, I don't see much traction for a free speech defense, which requires at a minimum that the speech in question not be misleading.  This should be a fun case to watch!

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VS.

Remarkably, this is not a new promotion for World Wrestling Entertainment.  No, a few outlets reported last week that WWE has opposed The American Wine Foundation's application to register the trademark SOMMELIER SMACKDOWN for use in connection with "Entertainment services, namely, conducting contests in the field of food and wine pairing; Entertainment services, namely, wine and food tastings at which attendants taste food and wine pairings to determine which wine expert better pairs food and wines."  For those pop-culturally challenged among you (as I sometimes am), WWE owns several registrations for SMACKDOWN for use in connection with entertainment services, namely, wrestling events. 

As reported at SFGate, a spokesman for WWE claims that WWE coined the term "smackdown."  That's a big claim, and one easily exploded by reviewing the voluminous evidence produced by the Trademark Office in the course of WWE's prosecution of an early application for SMACKDOWN demonstrating widespread use of the term in connection with sports that predates WWE's first use of the term (1999) and its claimed date of coining (1998, by Dwayne Johnson, a.k.a, "The Rock").  WWE dodged the descriptiveness issue by arguing in the alternative that it had acquired trademark distinctiveness in SMACKDOWN as applied to its entertainment services.

This promises to be an interesting case, as there appear to be factors that favor both sides.  For WWE, the SMACKDOWN mark appears fairly strong, despite its descriptive roots.  For the Wine Foundation, I suspect that it will be able to make a good case that its entertainment services appeal to an entirely different consumer market than WWE's entertainment services.  (WWE has also argued that the Wine Foundation's mark dilutes its SMACKDOWN mark--an issue that also may have legs.)  For the time being, we'll watch to see if this match goes more than one round. 

*LET'S GET READY TO RUMBLE® is a registered trademark of Ready to Rumble, LLC.

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This billboard ad has appeared in various locations around the Twin Cities for some time now. 

Each time I saw it, I wondered whether it would be the last, given how vigilant 3M is in protecting its various trademarks and other intellectual property. This time, I had a camera handy to capture it.

Now it's time for some questions.

Is there any question that this Accountemps billboard advertisement prominently features a Post-It brand note?

After all, 3M owns a non-traditional single-color trademark and federal trademark registration for the color canary yellow "used over the entire surface" of "stationery notes containing adhesive on one side for attachment to surfaces." In case you're wondering, at least one dictionary defines "canary yellow" as "a light yellow." Other 3M trademark registrations related to the Post-It brand refer more broadly to "yellow," and are not limited to "canary yellow," here, here, here.

This billboard ad appears to be yet another example of a well-known, if not famous, non-traditional trademark being used in another's advertising, not for comparison purposes, but as a prop to help sell goods or services totally unrelated to those of the non-traditional trademark owner. Is the use necessary? Is it appropriate? Should it be considered a fair use, if made without permission? Why didn't Accountemps make the stationery note prop appear in a color that is not trademarked?

Is the use likely to cause confusion, keeping in mind that actionable confusion is not limited solely to confusion about origin or source, but also protects consumers against likely confusion about affiliation, connection, association, sponsorship, or approval?

Is the look of 3M's Post-It note a famous trademark? If so, it is entitled to dilution protection too. Section 43(c) of the Lanham Act protects against "dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." If everyone started to depict a Post-It note in their ads would that tend to blur the distinctiveness of 3M's trademark or strenghten the brand? I'm thinking that trademark types and marketing types might have different takes on this question.

As you may recall, we previously have discussed the implications of using another's non-traditional trademark in advertising: Levi's Double Arcuate Design trademark and the shape of a Corvette from the 1960s.

So what do you think, does Accountemps need 3M's permission for this billboard advertisement?

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The Minneapolis Star Tribune finally reported on the Who's Your Patty? trademark infringement lawsuit filed in August by self-proclaimed "David" (Lion's Tap) against "Goliath" (McDonald's), here. Our previous coverage is here, here, and here.

The Star Tribune reports that McDonald's has not yet answered the complaint filed by Lion's Tap. That's true, but all that means is that Lion's Tap filed, but has not yet formally served the complaint on McDonald's. Had the complaint been formally served on McDonald's, as the rules require before an obligation to answer arises, then McDonald's would have twenty days in which to respond. So, the parties continue to negotiate for an amicable settlement. 

No doubt, "David" would prefer not to have to formally serve the complaint because that is when the federal court's machinery starts to turn and more significant money begins to be spent in pursuing the case. Of course, Lion's Tap will need to formally serve the complaint on McDonald's within 120 days of filing the complaint or risk the suit being dismissed, so, just before year end. We previously have discussed the strategy of filing, but not immediately serving federal court complaints, here.

The Star Tribune story also reports: "The Lion's Tap says it has been using the phrase for at least four years and has had it trademarked in Minnesota. It also has a federal trademark application submitted." The use of past tense "had" appears to repeat the same incorrect fact that most of the media ran with when the story originally broke, namely, that Lion's Tap had registered Who's Your Patty? as a trademark slogan before McDonald's began use of the same slogan, implying McDonald's knowingly "stole" something of Lion's Tap.

As you may recall, we already pointed out how nearly all the media outlets got this critical fact wrong, as Lion's Tap did not register until ten days before it filed suit against McDonald's, and well after McDonald's posted billboards bearing the slogan. All the Hamburglar references don't stick to McDonald's if it knew nothing about Lion's Tap's discrete prior use of the Who's Your Patty? slogan, an entirely plausible scenario, as we have already discussed, here.

Most interesting, at least to me, are the scores of reader comments to the Star Tribune story, here.

For the time being, they reveal that, for just about every enthusiastic Lion's Tap fan who loves to support the small fry and is cheering on "David" there is a pretty harsh critic of Lion's Tap, some even taking pot shots at the quality of its food. Indeed, it appears a substantial number would endorse Jason Voiovich's caution: "Here's the problem, instead of coming off as the victim (which you could argue Lion's Tap is), they come off as another coffee-in-the-crotch, show-me-the-money, lawsuit-happy opportunist." So, you might say that PR can cut both ways.

The comments also understandably reveal more confusion between Lion's Tap and Lyon's Pub than between David's and Goliath's respective uses of Who's Your Patty?

Also, I learned from the comments about another reportedly great burger joint that appears to be worth the extra drive: Hopper's Bar in Waconia. I'll make sure to let you know how that goes. So, beware, PR efforts can unintentionally inform even loyal patrons of competitive alternatives too!

More on the legal claims, after the jump, in case you're interested.

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Have you ever seen a bottle with a top that resembles this image?  Do you associate it with a single source?  Do you associate it with a particular product?  If so, which source or product?  Would you think that the product pictured below comes from the same source?

    How about this one? 

These are the basic facts in a lawsuit brought last month by Maker's Mark Distillery against Jose Cuervo International and related entities.  Maker's Mark owns a federal trademark registration (more than one, actually) on its wax seal for use in connection with whiskey.  Jose Cuervo sells the bottles pictured above as part of its Jose Cuervo Reserva de la Familia line of tequilas.  While news outlets reported this new case last month, and indeed a new case was filed then, these two parties have been in litigation since 2003 on the same issues.  In the 2003 suit, the Cuervo parties have counterclaimed to cancel the Maker's Mark trademark registration, in part on the basis that the wax seal is functional. The parties are currently briefing a motion for summary judgment brought by the Cuervo parties, so there may be a disposition within the next several months.

It is not presently clear to me how the two lawsuits are related.  In any event, these suits, if tried to published decisions, will add a helpful data point to the body of non-traditional trademark law.  We'll keep you posted.

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The inquiring minds at TechDirt have unearthed a spat between Apple and Woolworths (the supermarket chain in New Zealand and Australia) due to the latter’s adoption of a curly-cue-letter-W-shaped mark, shown below:

Putting aside dilution issues, the central question would appear to be whether confusion is possible, let alone likely, given that Woolworths is a grocery store where people purchase…groceries, including apples (both green and red!) and Apple sells computers, phones and addictive little music devices. Many of the folks leaving comments to the article answered this question in the negative.

But there’s a larger issue lurking beneath the surface of this spat—specifically, the fact that Woolworths is seeking registration of its mark in connection with electronics and other goods that are related and may in fact compete with Apple’s electronic devices. New Zealand and Australia, like the United States, are “first to use” countries, meaning that purveyors of goods and services may assert rights in their trademarks and service marks upon first use and accrue common law rights from that time, which in this case may well provide Apple with priority and victory over Woolworths in New Zealand and Australia (provided, of course, that consumers are likely to confuse the two marks for electronics and related goods and services). 

In contrast, if New Zealand or Australia were “first to file” countries, Apple would be facing a tougher battle. “First to file” countries—including much of the European Union, China, Japan and India—allow the earliest filer to obtain a registration of a given mark. These countries likewise often allow registrants to claim the entirety of goods and services in any given class, making challenges for U.S. companies even more time-consuming and costly.

Regardless of the filing system at issue, it is important for U.S. companies to consider foreign businesses and their trademarks in their overall strategy in investing in and protecting their brands.

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As you'll see, I'm no equestrian (nor equine expert for that matter), but given the non-verbal logos shown above, are you able to tell what company operates a fleet of these semi tractor-trailers?

Does the color of the horse help? Horse breed? The direction it is facing? How about its pose?

Some possible considerations and the answer below the jump.

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As promised, here are some additional thoughts (beyond the very frank and practical non-legal advice already shared by Jason Voiovich) about Lion's Tap's trademark infringement case against McDonald's over the "Who's Your Patty?" slogan.

Here's the multi-million dollar question: What did McDonald's know and when did they know it? Those are questions likely to get a lot of attention in this case.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline from a drive by the single restaurant location? Not according to the exterior signage shown above.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by checking for state or federal trademark registrations? No, Lion's Tap didn't register in Minnesota or attempt to federally-register the tagline until a week before filing suit, well after McDonald's had launched its "Who's Your Patty?" campaign.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by conducting appropriate internet searches? Recognizing that most comprehensive trademark searches will examine the internet, here is where it might get interesting.

Just for you, I did a little poking around, and despite the fact that the current Lion's Tap website prominently displays the "Who's Your Patty?" tagline, The Wayback Machine (having archived updated content on Lion's Tap's website for these dates: November 5, 2005, December 27, 2005, June 26, 2006, January 26, 2007, January 27, 2007, December 1, 2007, and February 1, 2008), does not appear to show or document any use of the "Who's Your Patty?" tagline as late as February 1, 2008, the last time the site apparently was crawled by The Wayback Machine. Interestingly, those archived pages show other Lion's Tap taglines in use, such as: "Any Fresher and it Might Get Slapped," "Sponsoring the Napkin Industry Since 1977," "Yes, They Really Do Exist. Come See One for Yourself," and "Lions and Burgers and Fries, Oh My! "

So, where was the "Who's Your Patty?" tagline being used by Lion's Tap prior to McDonald's adoption and use of the "Who's Your Patty?" slogan? Was it being used in a way that McDonald's could have found it, using reasonable precaution and diligence?

You might be interested to know that my most recent visit to the Tap -- after the complaint was filed -- revealed surprisingly minimal use of the "Who's Your Patty? tagline within the restaurant interior (and none on the exterior of the restaurant). It wasn't on wall-board menus or the on-table menus, nor on any interior signage, at least that I saw. It did appear on one wall-mounted t-shirt with a price tag on it, and one of the servers was wearing a t-shirt bearing the "Who's Your Patty?" tagline.

Let's not forget that Lion's Tap is also claiming a "famous" mark in the "Who's Your Patty?" tagline, at least "famous" in Minnesota. What do you think, does this amount of use qualify for fame?

Stay tuned, as we continue to follow this very interesting case.

As a tangentially-related side note, ironically, Patty Wood, a real estate agent from Deer Park, Texas, appears to have beaten both Lion's Tap and McDonald's to the punch in registering the internet domain whosyourpatty.com.

UPDATE: Here.

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Luxo AS, a Norwegian light manufacturer and distributor, has sued Disney and Pixar et. al. asserting various trademark-related claims arising from Disney's and Pixar's use of the LUXO trademark.  In an always interesting case of trademark law/branding meets fair use, Luxo has alleged that Disney/Pixar's use of "Luxo Jr." to identify the "hopping lamp," which has been the corporate mascot of Pixar since 1986, has crossed into the realm of forbidden behavior.

Although Pixar has been using the mascot since 1986, according to the complaint, it was only recently that infringing goods or services were being sold under the allegedly infringing mark.  Specifically, Disney/Pixar is now selling a limited edition DVD copy of Up packaged with a working "Luxo Jr." collectible desk lamp.   Additionally, they are using Luxo Jr. to draw in visitors at Disney's Hollywood Studios.

This case raises some interesting trademark related questions: (1) Has Luxo relinquished some of its rights by not previously attempting to stop Pixar's use of the "hopping lamp?"  (2) Why didn't Luxo take action earlier? (3) Absent Disney/Pixar's expansion of its use to selling lamps, would Luxo have had a viable infringement case?

If I had to venture a guess, I would say that Luxo didn't really have a problem with Disney/Pixar's use until it got a little too real with the lamp sales.  Arguably, the animations enhanced the popularity of Luxo's products and lead to increased lamp sales.  Luxo apparently didn't have a problem until Disney/Pixar tried to monetize some of that popularity itself by packaging a lamp with a DVD.

Moreover, the viability of an infringement claim would have likely required an examination of the often cited, yet often elusive "fair use" analysis.    As demonstrated by the Spa'am muppet case, infringement isn't clear cut when someone is using your mark to say something besides "buy my goods." 

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Taglines and advertising slogans can be wonderful branding and marketing tools, but I'm thinking (not Arby's, by the way) that McDonald's is probably not thinkin' that its (likely) famous I'm lovin' it tagline accurately describes its taste for the federal trademark infringement lawsuit that Twin Cities-based Lion's Tap recently slapped on McDonald's for its whopper of an advertising campaign -- promoting its new Angus Third Pounders -- served up with the clever and simple play-on-words advertising slogan and question: Who's Your Patty?

No doubt, McDonald's likely will not make a run for the border, instead, it likely will instruct its team of lawyers to think outside the bun in designing a successful legal defense and response strategy, in the hope of not hearing the court say to Lion's Tap in the end, have it your way. 

For your reading pleasure, here is a pdf copy of the complaint filed last Friday in Minnesota federal district court. As you will see from the Minnesota State Who's Your Patty? Certificate of Registration (attached to the filed complaint), Lion's Tap waited to register its claimed mark in Minnesota until August 18, 2009, ten days before filing suit. As a result, Lion's Tap clearly did not register the tagline "four years ago," or back in 2005 (the year it claims to have commenced use), as incorrectly reported ad nauseam, here, here, here, here, here, here, here, here, and here. Well, at least a couple of the media outlets covering the story avoided the mistake, and got the registration date right.

So, why is the date of registration significant? If McDonald's didn't know about Lion's Tap's use before rolling out its own use of "Who's Your Patty?" -- an entirely plausible scenario, since the mark was not registered, even in Minnesota, until well after and apparently in response to McDonald's already commenced use -- it starts to look like a much different case for Lion's Tap (more un-Hamburglar-like), for reasons I'll explain later.

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I think Steve once remarked something to the effect that the Internet is employment security for trademark attorneys.  Road tripping is too.  On one such recent occasion, my wife remarked on the similarity of Culver's blue oval signage to Ford's famous blue oval. 

Obviously, there is no issue here from a trademark infringement standpoint.  Culver's is clearly in the fast food business, and Ford is an automotive company.  No, the intrigue for me was how I started seeing blue ovals everywhere!  First was Carrier:

Then I noticed the Nasonex logo on a note on my desk from a promotional notepad:

Then the one that put me over the edge, the one that has now made me believe that there is a proverbial vast right-wing marketing conspiracy to toy subliminally with my latent positive associations with blue ovals:  Malt-o-Meal.

As if this were not enough, Brad, reading over my shoulder, suggested I take a look at American Idol:

Yikes!  What's more, Brad pointed out that Ford is a major sponsor of American Idol!

Joking aside, isn't it kind of interesting that of these examples, several use a light line to help outline the oval?  From a design standpoint, it seems to enhance the overall shape and clarity of the designs that use it.  I have a secret hope that there is some James Burke-esque "Connections" link in the depths of humanity's art history that might explain the blue oval phenomenon.  I wonder how many marketing surveys exist that show positive associations with blue ovals?  Is this just a case of sensitivity on my part to the phenomenon, or could I find similar phenomena with, say, green triangles?

While you lose sleep (or not) over these questions, feel free to pass the time running Internet searches for the words "blue oval" to see which of these blue ovals might claim to be the blue oval.  (Hints here here here here here and here.)

UPDATE:  The hits keep coming:

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Let's talk turf today, two kinds. OK, maybe three.

First, with Target Field looking more and more like the long-anticipated brand new outdoor home ballpark for the Minnesota Twins, all Twins fans and the local media can think or talk about this week is the new real bluegrass blend turf being installed now (as I type this blog post, in fact, see live webcam here), as it was just transported from Graff's Turf Farms in Fort Morgan, Colorado.

Second, most are looking forward to saying goodbye to the artificial turf of the 27-year old Hubert H. Humphrey Metrodome, and have been counting down the final days for some time.

Last, and most importantly for the purposes of this blog, let's talk about the importance of legal turf.

Selecting the legal turf or forum where a trademark dispute or battle is fought in federal court is often a very strategic decision. Litigants not infrequently end up battling over where the dispute will be decided, long before even getting to the substance of their dispute. Certain aspects of the federal trademark laws are interpreted differently around the country, which can lead to what lawyers call "forum shopping," basically, making forum selections based on where the plaintiff believes his or her case will most likely receive a favorable judgment. Indeed, most companies who file trademark lawsuits would prefer to file them close to home (unless forum shopping benefits dictate otherwise), in their own backyard, for that perceived home field advantage, and, because the out-of-state defendant typically ends up needing to hire two sets of lawyers to defend, their usual trademark counsel and local counsel too.

The general legal rule is that the first to file a trademark lawsuit is the one who gets to select the turf where the battle will be decided. There are exceptions to this general rule, perhaps we'll explore those another time. For now, however, suffice it to say, being the first to file, often creates some helpful advantage or at least some leverage to bring the matter to a more favorable amicable resolution. The first-to-file plaintiff is able to make his or her settlement demand, with the comfort of knowing that -- if it is not accepted -- he or she already has secured the place for the dispute to go forward. If it happens to be a place where the defendant does not want to litigate, for one reason or another, this can facilitate perhaps better settlement terms for the first-to-file plaintiff.

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I, like most women, want a present in a little blue box from Tiffany & Company (a/k/a Tiffany & Co.) This is not just because the company bears my name (I only wish I were an owner of the company), but because Tiffany & Co.’s exquisite jewelry is associated with the fabulous blue box.  Tiffany & Co. has been around for over 170 years. The mystique of Tiffany & Co. was enhanced by the movie “Breakfast at Tiffany’s” starring the beloved Audrey Hepburn. To protect this long-established brand and trademark that epitomizes luxury and attentive customer service, Tiffany & Co. took to the courts to obtain protection from Internet sales of counterfeits.  

eBay has become a hotbed for counterfeit sales of many high-end products. To assess the impact of this practice, Tiffany & Co. embarked on two buying programs where it bought products that had been represented to be authentic Tiffany & Co. merchandise on eBay. The overwhelming majority of these purchases, as much as seventy-five percent, were fakes. 

To combat this trademark infringement and dilution, Tiffany & Co. sued eBay in 2004 alleging that eBay had facilitated and allowed these fake or counterfeit items to be sold on its website (bringing six causes of action, including various trademark infringement, dilution and false advertising claims under the Lanham Act). Last month, a New York District Court found that Tiffany & Co.—not eBay—was responsible for protecting its brand and trademark on the auction site. In other words, eBay is not responsible for keeping its users from selling fake jewelry with the Tiffany & Co. name. eBay is only required to take appropriate action when it receives notice of the infringement, presumably from Tiffany & Co. Not surprisingly, Tiffany & Co. has appealed this decision to the United States Court of Appeals for the Second Circuit. 

Does this decision ignore an important tenet of the Lanham Act—that it is supposed to protect consumers and trademark owners? Should eBay and other sites such as Amazon.com have independent obligations not to contribute to trademark infringement (i.e., policing their websites)? 

Several other high-end companies have sued eBay in Europe and have fared much better than Tiffany & Co. did in the United States.   A French judge ordered eBay to pay 40 million euros (in light of the current low value of the United States dollar, this would translate to $63.2 million) to LVMH Moёt Hennessy Louis Vuitton over charges of selling fakes. Similarly, the German courts held that eBay must employ preventative measures against the sale of fake Rolex watches.  Unless the Second Circuit overturns the New York District Court’s decision, consumers and trademark owners will receive more protection in Europe than in the United States. Should American courts be more friendly to trademark owners?

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              VS.         

Almost four months ago now, I blogged about the filing of the Gatorade v. Powerade false advertising and trademark dilution lawsuit, here. At the time, some called Gatorade's false advertising claims "dubious" and others chided Gatorade for biting Powerade's bait to file suit.

Advertising Age has now reported about the recent court ruling addressing Gatorade's request for an emergency preliminary injunction, here. For those of you who have been looking for a copy of the court's interesting 54-page decision, it is available, here.

As you will see, the Court's opening paragraph telegraphed its critical view of Gatorade's claims:

This is a case about an advertising battle between two major consumer products companies over one company's comparison of its beverage to human sweat. That company advertises its beverage by promoting its inclusion of certain electrolytes contained in sweat, and its competitor wants it to stop.

In short, G got an F in the courtroom. First, G failed to prove that any of the challenged statements were false or establish it was entitled to the requested emergency injunctive relief while the case works its way toward trial. Second, U.S. District Judge John G. Koeltl also found "frivolous" certain of G's arguments relating to alleged irreparable harm. Last, G appeared to frustrate the Court by ignoring it made similar advertising statements about its own Gatorade Endurance Formula product, as late as a week before filing suit against Powerade. The "pot calling the kettle black" never plays well in the courtroom. I wonder who is doing the sweating now.

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Three guesses as to who just filed a federal trademark infringement action in Minnesota -- one that also alleges "dilution" of a "famous" mark beginning with the word LIBERTY.

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Advertising Age reports of the brand new false advertising lawsuit: Gatorade v. Powerade.

Daily Bread reports on the lawsuit too, here.

For those of you who have been looking for a copy of the complaint, it is finally available, here (pages 1-7), here (pages 8-14), here (pages 15-18), and here (pages 19-22).

More later, but for now the complaint has six counts, including: (1) Federal false and misleading advertising; (2) Federal trademark dilution; (3) Unfair competition under NY State Law; (4) Trademark Dilution under NY State Law; (5) Deceptive Acts & Practices under NY State Law; and (6) Common Law Unfair Competition.

Probably the most interesting claim will be the trademark dilution claims that allege tarnishment, disparagement, and a denigration of the famous GATORADE trademark and trade dress. These claims are reminiscent of the claims brought in the successful John Deere v. Yardman lawsuit from 1994, where the court enjoined an advertisement that put into motion and cast the famous running stag logo in an unfavorable light.

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How strong is your brand? The answer may depend on who you ask.

To a marketer, brand strength might be considered inversely proportional to the number and kinds of products it appears on, with the strongest of brands pointing to a single product.
Dan Kelly previously alluded to the marketing concern of “overbranding” here and here.

Al and Laura Ries raise the same concern; overbranding breaks several of their 22 Immutable Laws of Branding:

No. 1: “The Law of Expansion: The power of a brand is inversely proportional to its scope.”

No. 2: “The Law of Contraction: A brand becomes stronger when you narrow its focus.”

No. 10: “The Law of Extensions: The easiest way to destroy a brand is to put its name on everything.”

No. 22: “The Law of Singularity: The most important aspect of a brand is its single-mindedness.”

So, following this learned marketing guidance, a well-recognized pinnacle of brand strength might be the ROLEX® brand for watches; a world famous brand that appears to have resisted the temptation of straying beyond time-keeping devices.

Perhaps at the other extreme, embracing each and every brand extension temptation, in apparent conflict with those “immutable” laws of branding, is VIRGIN®, the brand conceived by Sir Richard Branson and applied to virtually every product and service known to man, from sound recordings to air transportation services, to comic books, to cell phones, to soft drinks, to banking services, to shampoo, to insurance services, to clothing, to playing cards, and on and on.

What might surprise even experienced marketing gurus is that the ROLEX® and VIRGIN® brands both can enjoy great legal strength, meaning each casts a long and wide shadow that may be useful in enforcement actions against a wide variety of diverse and non-competitive goods and services. The impressive legal strength of each may exist, however, for different reasons.

ROLEX® enjoys great legal strength because it consists of a truly famous coined mark that is not only inherently strong and distinctive, but commercially strong and distinctive too. This well-recognized fame protects ROLEX® from dilution and non-competitive uses, even when there is no likelihood of confusion. While the VIRGIN® brand doesn’t necessarily share the same inherent qualities, it nevertheless enjoys broad and strong legal rights too. Why? Because, contrary to the “immutable” branding “laws” identified above, trademark law actually rewards brand owners with broader and greater exclusive rights when the brand is applied on more and more goods and services, because likelihood of confusion is more easily shown.

Moral of the story: If you have a truly famous brand you can enjoy rights of great magnitude, and even prevent dilution of the distinctiveness of the brand, without regard to how many different goods or services are sold under your brand. Without fame, however, your best bet for broad and strong trademark rights is to use the brand on as many goods and services as possible.

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There is an interesting phenomenon in the blogging world in which readers who can post comments on a blog vie to be the first one to comment on a new post.  On some of the larger blogs, this results in several entries at the head of the comments, all of which contain nothing more than the word "first."  Only one of these comments is ever correct for a given post, and I've never seen any commenters vie for second. 

Observing this phenomenon recently, I was reminded of a similar phenomenon in the banking industry.  How many "First" banks are there?  Hard to say, but there are more than 450 registered trademarks in the United States using some form of the word or number "first" for use in connection with banking services.  The oldest of these is a stylized logo for the ordinal "1st," claiming use back to 1903.  The registration is currently owned by JPMorgan Chase.  By comparision, I can find only eight registered marks using "Second" for banking services, and most of these belong to the same entity. 

In this context, I've always thought that Fifth Third Bank had a particularly memorable brand, if for no other reason that it really makes a person wonder about what happened to the first four "Third Banks."  Fifth Third is apparently so named as it is the product of a merger between Third National Bank and Fifth National Bank. 

As an aside, try an Internet search for the words "first bank" and note various domain names that come up:  firstbanks.com, firstbank.com, firstbankks.com, and efirstbank.com, among many others.  The third of these is a clever play on the fact that it is located in Kansas. 

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I admit it—I have been watching too much TV in this last, incredibly slow, trimester of pregnancy, while my husband and I await the arrival of our bundle of joy.  During one such evening, a commercial came on that started with a floating red umbrella and music, soon joined by Catherine Zeta Jones walking down a street.  My immediate thought was what an odd choice for a Travelers Insurance representative, given her ties to numerous large advertising campaigns.  The 15-second commercial includes no dialogue or use of words on the screen until the very end, where it turns out to be a commercial for Elizabeth Arden (notably, the company I would immediately connect with the red door).

The red umbrella is an icon and has been for decades.  I mean, don’t we all wonder: “aren’t we better off under the umbrella?”  The company claims the red umbrella was first used in 1870 when it appeared in a newspaper advertisement and formalized as a legal trademark in 1959.  Of course, Travelers also owns numerous federal trademark registrations for the umbrella, including a registration for the red umbrella logo with a claimed date of first use of 1961. To prove dilution, all that is required is that use of a “famous” mark by a third party causes the dilution of the “distinctive quality” of the mark.  Thus, even though insurance services and cosmetics are unrelated, Elizabeth Arden’s use arguably dilutes the iconic red umbrella.  As much as I love Elizabeth Arden’s products, perhaps they should stick with the red door.

If pregnancy brain can make the immediate connection between the red umbrella and Travelers Insurance, I would say most people in the country would make the same connection, particularly given Travelers' recent advertisements.

It seems to me the Travelers' red umbrella is the type of famous mark the Federal Trademark Dilution Act was meant to protect.

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Do you recognize this trademark? 

How about this one?  

Any guesses about what sources these represent?  The first is a trademark for Victorinox AG.  The second is a trademark for Wenger NA, Inc.  Do either of these remind you of anything else?  How about a Swiss Army knife? 

I clearly remember receiving my first Swiss Army knife as a boy.  A couple of years ago, I was shopping for a new briefcase.  I saw one with the Wenger logo, and it caught my eye.  A tag on the bag bearing the mark read, "WENGER:  Maker of the Genuine Swiss Army Knife."  I had a positive association with the Swiss Army brand from my youth, so I bought the bag.  The strap broke within the first year of use, which did not make a favorable impression on me.  Subsequently, I began seeing the Wenger and Victorinox marks elsewhere -- luggage, watches, flashlights, shoes, clothes.  Coupled with my briefcase experience, the sheer ubiquity of these marks on goods further and further afield of knives makes me think that Swiss Army products are not very high quality products. 

It could very well be that my lousy briefcase strap was an anomaly, but it could also be that the quality of Swiss Army branded goods are not particularly high.  The point is that consumers will associate their experiences with actual goods and services with particular brands and trademarks, and maybe related brands and trademarks. 

A history of the Wenger and Victorinox companies can be found here. 

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