Duets Blog : Creativity and the Law: DuetsBlog

Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about.

When it comes to Mr. Godin's trademark advice, however, I'm not feeling it, sorry (that wasn't an apology either). Some of it is, well, lacking an indispensable quality. Even when it is accompanied by this witty disclaimer: "I'm not a lawyer. I don't even play one on TV. If you rely on my legal advice, you're getting exactly what you paid for."

The problem is, sometimes you end up getting much less than you anticipated and actually end up much worse off, when you follow down even a "free" path based on misunderstandings and misconceptions, at least as they relate to one's legal rights.

I'll never forget one evening watching Geraldo Live during the O.J. trial, more than fifteen years ago, as a young trademark lawyer. There was quite a stir about some trademark applications Mr. Simpson had filed for O.J. Simpson, Juice, and O.J., around the time of O.J. Simpson being charged with the murder of Nicole Simpson. I recall one of Simpson's defense lawyers, the brilliant constitutional lawyer Alan Dershowitz, rebuffing criticism about the trademark filings, unwittingly contending that Simpson never intended to use or benefit from those applications, he simply filed them to make sure no one else could. My jaw dropped when I heard this, because it provided a legal basis to immediately invalidate each one of the applications. In addition, had anyone followed this defensive "legal advice," their trademark filings would have been wasted money and considered invalid and void ab initio, since U.S. trademark law requires that an applicant must have a bona fide intention to use the mark on each and every good and service listed in the application.

Back to Godin on Trademark*, and even more recently, a couple of months ago Seth Godin wrote about how to protect your ideas in the digital age:

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client 'owns'. News flash: trademark law is designed to make it clear who makes a good or a service. It's a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol.

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

For the garden variety and non-famous trademark, the scope of rights is defined by whether or not there is a Likelihood of Confusion.

With respect to what trademark law was designed for, and while I don't consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

I'm not saying Seth Godin's opinions about trademarks are Out of Bounds, I'm simply saying some of them are out of date.

With a little luck, and assuming I can get in enough time in front of my Stuart Smalley mirror between now and next week, I'll explore another misconception or misgiving it appears Mr. Godin has about the registration of trademarks:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

So, stay tuned.

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More on single color trademarks today. Eighteen months ago, Wolf Appliance obtained a federal trademark registration in connection with "a red knob or knobs" of "domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills."

Wolf put its registration to the test a couple of weeks ago in a federal trademark infringement action, venued in the Western District of Wisconsin, in which it asked the court for immediate injunctive relief to stop arch-rival Viking Range from offering a Red Knob Kit as an accessory for its competing high-end residential cooking ranges (typically equipped with standard black knobs).

Here is a pdf of the decision, granting Wolf's request for a preliminary injunction. The Wisconsin State Journal reported on the decision. Last December, ApplianceAdvisor.com shared a rather cynical view of Wolf's single color claim of exclusivity when the lawsuit was first filed.

So, how did Wolf pull it off? Well, here's the short answer:

1. Before bringing the lawsuit, Wolf obtained a federal trademark registration for the knobs, entitling it to a presumption of validity when the time came to enforce exclusive rights;
2. To demonstrate secondary meaning in its red knobs, Wolf made good use of "look for advertising" on its website: "Choose black knobs, or let everyone know it's a Wolf with our distinctive red knobs;" in catalogs: "Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature"; and in advertising: touting the red knobs as "distinctive" and an "exclusive Wolf feature";
3. Viking apparently stopped selling a range with red knobs back in 1993, and since 2000, Wolf had made "substantially exclusive" use of red knobs on domestic cooking ranges; and
4. Greatly assisting its secondary meaning claim to the red knobs, Wolf enjoyed the benefit of significant media attention and stories, specifically mentioning Wolf's "distinctive," "iconic," "classic," "recognizable," "status symbol," "trademark," and "signature" red knobs.

Trademark types, doesn't the court's recognition and reliance on this very helpful media attention evidence make you want to collaborate with your favorite PR type the next time your client is pursuing a single color trademark or some other form of non-traditional trademark rights?

With respect to the question of likelihood of confusion, the Court was moved that there could be initial interest confusion through this hypothetical scenario:

"Suppose a potential range customer is at a dinner party and the hostess tells the potential customer how much the hostess enjoys her range. The range happens to be a Wolf range with red knobs. Several weeks or months later, when the potential customer enters a retail store to browse ranges, he or she sees a stainless steel Viking range displayed with red knobs that looks similar to the red-knob range he or she has seen in the past. There are no other ranges displayed with red knobs. The customer does not remember the brand of the hostess' range, but the customer knows that Viking is a well-known manufacturer in the high-end range market. The red knobs look familiar, so the customer thinks this is the range to which the hostess spoke so highly. . . . Such a situation could qualify as 'initial interest' confusion, because defendant would be reaping the benefit of the goodwill that the plaintiff has developed in its mark."

Are you concerned? Do you find this hypothetical scenario plausible?

What remains to be seen is whether the case continues to conclusion for the entry of a permanent injunction after a full trial. While it is true that the grant or denial of a preliminary injunction often results in an amicable settlement of the lawsuit, this case may not end that way.

Even though Viking lost the first round in this bout, it has brought a counterclaim to cancel the red knob trademark registration issued by the U.S. Trademark Office in 2008. Moreover, if Viking determines that it has a commercial and competitive need to offer the Red Knob Kit, it would be rather easy to resume distribution of the kits at a later time, provided it is able to either invalidate the registration or win on the ultimate issue of whether there is a likelihood of confusion in the marketplace for residential cooking ranges. 

To the extent Viking Range decides to continue its defense and counterclaim to invalidate Wolf's red knob registration, I predict that discovery will vigorously probe functionality as a possible basis for invalidation. A win on functionality would be complete, it would knock out the registration, and make it unnecessary to even consider the likelihood of confusion question of infringement.

In case you're wondering about scope, it would appear that both commercial ovens and toy ovens having red knobs are outside the scope of Wolf's registered trademark.

Stay tuned for more on this interesting case.

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Recently, a new Verizon commercial caught my eye.  Perhaps you've seen it:

This immediately reminded me of a circa 1993 (has it really been that long?) De Beers commercial (seen here).  Apparently, this is one of at least two Verizon commercials intended to "spoof" some of the classic, well-known commercials from our past.  My immediate reaction, to these commercials was to start brainstorming all of the conceivable bases on which Verizon might be liable given the similarity of its commercials to clearly recognizable commercials from the past.  Under the right factual circumstances, I could see all sorts of claims for unfair competition, trademark infringement, copyright infringement, misappropriation, etc. (not saying those facts exist here).    

AdFreak, a blog which I just recently became aware, described these commercials as "parody."  However, I seriously question whether these commercials would be able to successfully meet the legal requirements for a parody fair use defense.  The fair use defense is a relatively difficult defense to establish, particularly where the "parody" is being used for commercial benefit.  

Moreover, parodies are generally understood by the law to be a criticism of something represented by the underlying material, not merely a clever transformative use.  Compare the above Verizon "spoof" to this, where the use is plainly intended to comment on De Beers alleged enabling of the "conflict diamond" trade.  Or compare it to this "vicious" (WARNING: GRAPHIC AND DISTURBING CONTENT) parody of "overwrought De Beers jewelry commercials."  Each of these uses is categorically different from Verizon's use here.  So, I hope Verizon had something else in its bag of tricks besides the "parody" argument before running these commercials.   

Ultimately, the moral is that its important to always recognize the danger in "borrowing" someone else's marketing concept or intellectual property, no matter how limited or transformative the use.  Additionally, its important to recognize the fair use defense is not always the best shield to protect yourself, particularly if you're involved in commercial advertising.

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We're not talking the foamed footwear Crocs® that Randall Hull wrote about in his What a Croc! post from a couple of weeks ago. Instead, we're talking slow cookers -- on this snow-capped Valentine's Day in the Twin Cities.

Every once in a while a stroll down the grocery store aisle leaves me surprised when I spot a federal registration symbol next to a word that I thought was a generic term for the goods or services in question. Today was such a day, when I noticed Sunbeam's Crock-Pot® The Original Slow Cooker appliance on the store shelf. Apparently I'm not alone in my surprise at the trademark status, given Wikipedia's acknowledgment that Crock-Pot is a trademark "often used generically in the USA" -- and Slo-Cooker is a trademark "often used generically in the UK."

It appears the Crock-Pot® trademark was originally registered back in 1972, and a couple of years ago federally-registered protection for the trademark was extended into a number of different classes of goods at the U.S. Trademark Office for a variety of different products, including food, and some cooking accessories. Last June, this logo was federally registered by Sunbeam, but it specifically disclaimed any exclusive rights in the descriptive phrase "The Original Slow Cooker":

I'm left wondering whether this is like the Rollerblade example, where it took the owner of the Rollerblade brand an entire decade to battle genericide by developing a commercially acceptable generic term (in-line skates) to couple with the brand.

Here are a few questions for marketing types to ponder and discuss: If you're Sunbeam, owner of the federally-registered Crock-Pot® trademark, do you care if retailers and your direct competitors call their competing products a Crock-Pot too? What about Search Engines selling Crock-Pot as a keyword, do you care about that? If so, how much do you care? Is it important enough to spend dollars on stopping these kinds of actions?

Just so no one is left out, here, for you trademark types out there, what steps would you take to avoid having the Crock-Pot® trademark invalidated on genericness grounds?

Same drill for the Bundt® trademark that Dan wrote about prior to the holidays.

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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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Frequently brand owners find themselves in the position of wanting or needing to explain the thinking behind their name, mark, and/or brand. Sometimes the explanations appear publicly on product packaging, websites, catalogs, brochures, advertising, and frequently in press releases, or perhaps in statements to reporters, especially when trademark litigation concerning the brand is involved. Such explanations about the brand's meaning also can be found in consultant's naming briefs that are easily discovered during litigation, and, if the brand story is told there in a way that "describes" instead of "suggests," the D-word may be used against a brand owner during trademark litigation to severely weaken if not invalidate the underlying trademark. 

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning. For a rather witty account of Firefly Digital's trademark fight with Google, see Ron Coleman's Gadget Goes Gonzo post from a few days ago.

Engaging in a trademark battle with Google is tough enough, but Firefly Digital certainly didn't help itself by the following explanation of the meaning behind its claimed GADGET and WEBSITE GADGET trademarks:

“They embody our passion, our vision and our values,” Spears said. “They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.”

Putting aside what Nancy Friedman might call another misguided use of the meaningless P-word, for Firefly Digital to utter the D-word and admit that its trademarks "are descriptive of our products on many levels," is an admission unlikely to go unnoticed by Google and likely to haunt Firefly Digital for some time.

The problem with "describing" the meaning behind a brand name is that it undermines a claim of inherent distinctiveness and puts the brand owner in the position of having to prove distinctiveness. It also complicates the issue of priority since trademark rights aren't acquired upon first use with merely descriptive marks, as they are with those types of marks falling on the suggestive side of the line along the important Spectrum of Distinctiveness.

This common marketing pitfall is reminiscent of another I previously blogged about: Staying on the Right Side of the Line: Suggestive v. Descriptive.

So, what ever you do, don't "describe" the brand and what it means, instead, explain and weave stories around all that it "suggests" or might convey through the exercise of one's imagination.

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We've had a little rash of graphic design comedic parody lately.

The first example is the notoriously funny The South Butt and its tagline "Never Stop Relaxing". Of course, this is an obvious knockoff of leading outdoor clothier The North Face and its "Never Stop Exploring" call to action. From a legal perspective, of course, this is a bit problematic - especially when The South Butt began selling apparel. (Until then, a fun mockery might have earned them a nasty letter, but not a full-on lawsuit).

However, whether The North Face likes it or not, it is a victim of its own popularity. While the company was still a niche brand, focusing on only seasoned outdoorspeople, no one cared. But once it crossed over into high fashion (and became the must-have in every 13-year-old girl's wardrobe), a backlash was inevitable. The same thing happened to Abercrombie and Fitch (remember the raucously funny MadTV sketches)?

From a marketing perspective, The North Face should be content to let this go. Yes, it's irritating, and yes, legally it's an affront. But making too big of a deal of the situation likely will backfire.

Here's another example that should not be taken lying down.

If I were the Humane Society of the United States, I would be preparing my lawsuit at this moment. Say what you will about the politics of the HSUS (suffice to say, it is not just about finding homes for adorable puppies), HumaneWatch is making a visual affront to the organization and its ability to distinguish itself in the market. In short, the competing organization is using HSUS intellectual property (the logo) to bolster its own low standing, confusing people into paying attention.

Whatever side of the political/moral/business issue you might be on, this has to be stopped.

Related Links:

http://www.thesouthbutt.com/

http://www.humanewatch.org/

—Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column

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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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It's not every day you get a chance to use that phrase in a headline. But, what may become known as the "The Cayman Kerfuffle", presents the perfect opportunity.

Would a reasonable person find these confusingly similar?

$51,000 Blue Cayman                                                      $30 Blue Cayman

Let's see, one is a sleek, pricey, well-engineered, high performance sports car that is available in a variety of colors, the other is a stubby, inexpensive, molded plastic clog-like sandal that is also available in a variety of colors. Hmmm.

Even though the Porsche vs. Crocs dust up was discussed widely in November 2009, the seeming inanity still grinds on my nerves. So I can't resist another airing.

If you missed the coverage, here is the kerfuffle catalyst from the Crocs, Inc. Form 10-Q:

"On May 11, 2009, Crocs Europe B.V. received a letter from Dr. Ing. H.c.F. Porsche AG ("Porsche") claiming that the Company's use of the "Cayman" shoe model designator infringes upon their Community Trademark Registration of the mark "CAYMAN" in class 25. Porsche is requesting that Crocs Europe B.V. immediately cease and desist use of the Cayman mark and pay Porsche's attorney's fees in conjunction with the issuance of the notice letter. On July 30, 2009 the Company was served with notice of an injunction against Crocs Europe BV's use of the Cayman mark in Germany. The Company intends to vigorously defend itself against these claims."

Granted, Porsche has a registered trademark for "Cayman" in several international classes including 025, which does encompass footwear, and sells a line of Porsche Design shoes, although, apparently, not under the Cayman label.

I might understand Porsche being embarrassed by the possible association with the popular foam resin clogs spotted on the feet of celeb-kinder in Hollywood, South Beach, and other trendy locales. But infringement? Seriously? Shouldn't Porsche be more embarrassed for making this an issue? Likelihood of confusion is doubtful, unless Porsche dramatically changes its fashion strategy.

Realistically, few people will confuse Crocs Cayman clogs for a Porsche Cayman sports car or one of their designer driving shoes. Fewer still will think they originate from Porsche. Should they, a quick check of the Crocs logo on the shoe itself would correct any incertitude.

Several thoughts arise: Since the Crocs Cayman line was available commercially as early as 2004, five years before the registration issue date of April 2009 for Porsche, does Crocs have prior rights? Should International Truck Intellectual Property Company, owner of the Cayman trademark in International Class 012, which includes sports cars, seek redress from Porsche for infringement? Should Lacoste file an amicus brief since they have an oblique interest? After all, a Cayman is a type of alligator, and should Porsche prevail -- I don't see how, but lets pretend – based on their interpretation of infringement and confusion, the Lacoste logo, shown below, would be a likely next target.

Stay with me on this. It is probable that people driving Porsche Caymans could also be wearing Lacoste clothing, so confusion of origin is surely immanent. Hey, is that a Cayman polo shirt you're wearing?

On the subject of confusion, perhaps the Cayman Islands should pursue Porsche and Crocs for infringement. It is likely to find both products on the Islands, even at the same time and place, and wouldn't the Cayman Islands have prior rights, if we follow the labyrinthic logic in this argument? Toss in people wearing Lacoste fashions, and since most can't tell a Cayman from a run of the pond alligator, it could start a whole reptilian-brand confusion-fest and who knows where that would lead!

This could become a Trademark Infringement Smackdown with, say, Crocodile Dundee headlining. Although, come to think of it, this has certain "The Real Housewives of Intellectual Property" (surely an oxymoron) qualities to it and could spawn a new reality series on Bravo. The notion is no more ridiculous than the Porsche accusation -- and indubitably more entertaining. 

OK, my tongue is tired of being in my cheek.

The old maxim "just because you can, doesn't mean you should" seems apropos. The ill will engendered by overly aggressive enforcement, where likelihood of harm is not apparent, is damaging to a brand, even one as famous and resilient as Porsche. It will likely appear to consumers as needless bullying. That perception can cost far more to rectify than any possible impact of the perceived infringement.

Who's the likely winner in this spat? Certainly not Porsche. Crocs stands to gain from the publicity generated by this action. It is not exactly the way a company wants to gain visibility, but as a creative guy managing brands, I'd take what I get and spin it into branding silk – at the expense of Porsche, of course.

Randall Hull, The Br@nd Ranch®

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Similar to the Hostess Brands, Inc. predicament, recently posted by Dan Kelly, Goodwill Industries International, Inc. (www.goodwill.org), the well-known and respected non-profit, didn't own the one domain you would expect -- Goodwill.com.

The domain went up for auction this past December after the original owner, a Japanese staffing company named Goodwill Group, Inc., changed its name and allowed Goodwill.com to expire. 

Instead of seizing the opportunity to own and control this element of their brand by simply buying it at auction, Goodwill Industries gambled, in my opinion, by trying to stop the auction. Ultimately, they lost their request as well as the domain. Their next act was to sue the owner of Goodwill.com for trademark infringement and violation of anti-cybersquatting protection act, amongst other claims.

As reported by Domain Name Wire, this month the case was dismissed without prejudice and the Goodwill.com domain finally went to Goodwill Industries. Although this resolution is good for Goodwill, not owning Goodwill.com earlier denied them the domain during the key December donation period, and, potentially, could have proven a very expensive and lengthy process to resolve.

Since monitoring a domain is relatively uncomplicated, it is puzzling why Goodwill industries would allow Goodwill.com to get away so easily. As a brand manager, I am surprised Goodwill wasn't more vigilant or diligent in pursuing and protecting something so apparently associated with their trademark and their brand.

The goodwill (pun intended) a domain name inures to a brand cannot be overemphasized. One of the more important aspects of branding is presence. On the worldwide stage of the Internet, domains perform a leading role in brand proliferation. 

A domain dispute and the associated confusion, as in this case, was unnecessary, considering resolution could have been reached without extraordinary effort and without hunting for legal remedy.

—Randall Hull, The Br@nd Ranch® 

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Jacket maker Weatherproof Garment Company took advantage of a GQ-style photo of the President standing in front of the picturesque Great Wall of China.

The White House was not pleased.

Smack in the middle of Times Square in New York - one of the busiest and most-watched intersections on Earth - stood a larger-than-life billboard featuring President Obama, in a Weatherproof jacket, in front of the Great Wall of China.

Now wait. Don't we see the image of the President just about everywhere? Your local newspaper doesn't need White House permission to feature the Pres on page 1, do they?

Of course not. But that's different.

News organizations (even bloggers) can use the image or likeness of political figures - with a few exceptions - in editorial content. That can include all manner of news reports, commentary, and even political cartoons. It's a sort of "fair use" interpretation and falls into the freedom of speech / freedom of the press continuum.

Clearly, that's not what Weatherproof was doing.

The headline "A leader in style" is clever, yes (borrowing "style points" from the unarguably GQ-ish President), but could hardly be seen as political commentary. Whatever Weatherproof may have tried to claim, the company is hoping to sell jackets. Plain and simple.

At least, that's how the White House interpreted it.

Last week, White House counsel Kendall Burman and Weatherproof spokesman Allen Cohen had a "cordial conversation" in which Mr. Burman reminded Mr. Cohen that public figures have a right to protect their likeness for commercial purposes. Needless to say, Weatherproof agreed to take down the billboards at the earliest possible time.

That said, it will be two weeks before the logistics line up to make that happen. Two weeks of continued visibility. Two weeks of continued buzz. All told, it will turn out to be a pretty good return on advertising investment.

Methinks Weatherproof knew exactly what it was doing when it flirted with the edge of the law.

This is gorilla advertising of the first order.

Yes, two billboards in Times Square aren't the equivalent of stuffing flyers under windshield wipers at your local supermarket, but it's still pretty darned creative. With a modest investment, and a cheap license fee from the Associated Press for the photo of the President in China, Weatherproof was able to generate disproportionate attention for their little campaign.

I have to admit, I took a look-see at the Weatherproof website. I need a new coat, and the one in the ad looks pretty good. Frankly, I never would have considered it otherwise. We'll have to see what the ad does for sales on a larger scale, but my guess is the net-net will be positive.

But aren't there any risks in this type of strategy?

Yes, certainly.

The President may engender good feelings for many people, and many people may view him as a style/trend leader, but those warm fuzzies are not universal. Does the Weatherproof brouhaha actually dissuade right-leaning buyers from the brand?

Perhaps.

But my guess is that Weatherproof understands its buyer demographics pretty well.

Was the campaign risky?  Yes. But did it pay off? I think 'yes' as well.

—Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column

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A lot can be learned from the easily searched trademark registrations existing on the United States Patent and Trademark Office's online database. For example, Examining Attorneys at the USPTO will refuse registration based on prior confusingly similar registered marks, so responsible trademark owners will conduct the necessary searching and due diligence prior to adoption and first use. In addition, because searching the USPTO's database can yield readily available evidence on a number of substantive issues important to trademark types and brand owners, third-party trademark registrations are a very tempting tool to use to try to prove a point.

As frustrating as it can be to trademark types and the brand owners they represent, third-party registrations cannot be used as legal precedent to try and compel a certain result. Such attempts easily are rebuffed at the USPTO since each application must be decided on its own merits and one Examining Attorney is not bound by the "mistakes" that may have been made by other Examining Attorneys at the USPTO. As a result, although consistency is a goal at the USPTO, it can be rather elusive at times. Having said that, third-party trademark registration evidence can have evidentiary value, if used properly, and the valid and acceptable use of third-party registration evidence has grown over time.

Third-party registrations have been considered relevant and probative in establishing a number of different and important trademark issues, including at least:

1. The likely meaning of a mark to consumers. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976). 
2. That goods or services are of a type that consumers may believe emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
3. The likely meaning of a mark to consumers, i.e., whether it is merely descriptive or suggestive. Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983).
4. That a mark is relatively weak and that consumers will rely on other matter to distinguish between marks. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (CAFC 2005).
5. The existence of a relevant industry practice. Stuart Spector Designs, Ltd. et al. v. Fender Musical Instrument Corporation, 2009 WL 804142 (TTAB March 25, 2009) (finding the third-party registrations for guitar body designs supported the applicant's position that the USPTO recognizes guitar body designs as capable of indicating source and the industry's practice of registering guitar body designs); In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) (finding industry practice to use key head design as source indicator).

A couple of days ago I posted about a trademark specimen case, one where I was hoping the TTAB would expand the valid use of third-party registration evidence, but unfortunately, the TTAB did not acknowledge or address the third-party trademark registration evidence that was submitted (along with the specimens of use supporting those standard character word-only trademark registrations). Perhaps someone else can benefit from these thoughts in arguing for additional expanded use of third-party registrations in their trademark registration cases.

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An in-depth focus on arguably the most important trademark issue to brand owners and their trademark counsel. The seminar will focus on the many faces of trademark confusion, with a special focus on initial interest confusion, reverse confusion, survey evidence, and post-sale confusion theories.

Promises to be a good program, we hope you join us, special guests Ron Coleman and Nancy Friedman will be in town, and Paul Mussell from Wells Fargo, see here for the link on the Minnesota Continuing Legal Education website. See here for a pdf of the brochure, please check it out.

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When brands and trademarks are at risk of being infringed, swift and immediate protective action is required, given the inherently reputational nature of the resulting damage. That is why the law typically presumes the necessary "irreparable damage" when issuing immediate injunctive relief, once a plaintiff is able to show, among other things, that it is likely to win its trademark infringement claim. Without "irreparable harm or damage" there can be no court's injunction because the simple payment of money will right the wrong.

But, what about outside the context of trademark infringement and court ordered injunctions, in the world of contracts, for example, when a sponsor no longer wants to be associated with a celebrity endorser that has become damaging to the sponsor's reputation? Is the same degree of immediacy required to erase all public signs of the relationship? Perhaps it depends on whether the damage rises to the level of irreparable damage or harm. If so, then perhaps no amount of money will be or should be spared to pull the ads immediately and stop the reputational bleeding.

One might ask how this dynamic has played out between Accenture and Tiger Woods.

After the New Year, and about three weeks after Accenture announced it had ended its relationship with Tiger Woods, I noticed a multitude of Accenture ads in three different airports (Minneapolis, Dallas, and Phoenix), all featuring guess who? Tiger.

My first thought was genuine surprise to see them, given it had been three weeks, and further given that Accenture was so promptly out of the gate as the first sponsor to publicly sever its ties with Tiger. Indeed, two weeks after Tiger's reputational scandal broke in the news, Accenture announced Tiger "is no longer the right representative" for Accenture's advertising, and it was reported the company would "immediately transition" to a new advertising campaign. Some experts even cautioned that Accenture's Tiger billboards and airport advertising "need to be replaced quickly" for obvious reasons, as they now "damage" Accenture's brand and reputation.

So, how damaging to the Accenture brand is the lingering association with Tiger and the smirks that seem to follow given the now rather awkward branding messages that Accenture had adopted as part of the Tiger relationship? If you read Accenture's words from December 13, how quickly they were announced, and how others have praised Accenture for taking this swift and necessary action, the damage sounds quite serious, perhaps even irreparable, but isn't talk cheap? Or at least, more inexpensive than actions? 

For example, I'm certain the cost of scrubbing a website and purging corporate headquarters of any sign that Accenture still knows "what it takes to be a tiger" is far less than the cost of purging all airports of any trace of the Accenture/Tiger endorsement arrangement. In any event, it would have been more than mildly interesting to be part of the dialogue that must have quantified the cost of implementing the directive for an "immediate" transition from Tiger, and the alternative quantifications of slower transition plans, and the one that the company eventually settled upon.

Do you agree that the greater the damage to Accenture, the more "immediate" the transition would have been, i.e., days, not weeks or months?

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Reuters reported last week that Conagra Foods, maker of Swiss Miss hot cocoa, has sued Dean Foods over its use of the term “Swiss” in connection with teas. Specifically, the suit takes issue with Dean Foods’ new design mark for its Swiss Premium Teas, which incorporates a white font for the term “SWISS” and  a picture of snow-capped mountains on a blue background, which Conagra argues are similar to its SWISS MISS marks, which also incorporate the same features.

Here are the marks on their product packaging:   

                                                                               

Dean Foods could try to argue that its use of snow-capped mountains is descriptive for SWISS – after all, what small child isn’t aware after her first trip to the Magic Kingdom that the snow-capped Matterhorn is one of the natural jewels of the Swiss Alps? As for the lettering, however, Dean Foods may have to get more creative to argue that its font style and background are commonly used to evoke Swiss-themed products.   My extremely unscientific search of Google Images revealed that the term “Swiss,” as used in connection with food products, is most often used in white and red, no doubt evoking the country’s recognizable coat of arms:

Further, as courts are directed to evaluate composite trademarks for infringement as unitary marks – that is, fonts, pictures, words, and other elements together, as they are seen by the consumer – Dean may not get much mileage out of its use of the arguably descriptive snow-capped mountains.

What do you think?

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Same drill as yesterday. Another email spam scam? More trademark fair use abuse?

Is it just me, or is the branded email spam coming out of the virtual woodwork, or what?

It appears that spam email -- complete with fully branded solicitations -- is becoming more and more aggressive, both from legal and technology perspectives.

We have a pretty aggressive email spam filter, but this one, like the one I blogged about yesterday, slide right through our screen, just like butter.

From the legal and trademark perspective, don't these advertisers pay attention to the limitations of the nominative fair use defense?

With respect to the purported disclaimer, if you were to scroll all the way down to the bottom of your computer screen, before you hit the CLICK HERE icon, you'd find it is virtually identical to the one from yesterday, only the mailing address has changed:

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 list owner, please write Gift Sponsors 7B-871 Victoria Street North, Suite #105, Kitchener, Ontario N2b 3S4 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.

Now, at least one website suggests that Wal-Mart is the one actually behind these kind of free gift card offers, here, but I find that really, really hard to believe.

What do you think? What do you know?

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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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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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Earlier this week the Legal Satyricon and a number of newspapers in the Southeast reported on the University of Alabama’s loss of part of its trademark infringement suit against former licensee Daniel Moore, an artist who has created original paintings featuring the UA’s athletes for over 30 years. UA argued that it has protectable trademark rights in the unregistered trade dress of the UA football uniforms – namely the colors crimson and white; UA’s trademark rights in its registered marks for CRIMSON TIDE were not at issue. Mr. Moore argued the defenses of “artistic expression,” first amendment, and fair use.

As I’ve written previously, athletic licensing is a serious money-maker for universities, and Mr. Moore purportedly earns in the low millions for his art, so there is much for UA to gain by bringing Mr. Moore back into their licensing fold. But, a cursory review of the court’s opinion, which points to case after case wherein university athletic departments, athletic event organizers, and individual athletes have sued artists on trademark theories, shows that such suits are seldom successful. Putting aside the difficulty of proving strong rights in the trade dress of the colors crimson and white (I can think of one institution in particular that may claim arguably stronger rights in the color crimson) and the on-the-face-of-the-dispute lack of plausible likelihood of consumer confusion, the basic issue here is whether artists such as Mr. Moore are using purported trademark rights in a trademark sense – that is, to identify themselves as the source of the purported trademark rights.

As readers of this blog are aware, a trademark is any symbol, word, device, etc. used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. The doctrine of classic fair use, which allows third parties to use a mark when it does so in good faith, to describe its goods and services in a manner that is not as a trademark, recognizes that if purported trademark owners could limit the use of their marks too even non-source-identifying uses, our ability to refer to goods, services, and their sources would be severely limited for no justifiable purpose. As if the application of this doctrine to the facts of this case spoke for itself, the court spent no more than seven sentences finding that Mr. Moore’s use of the Crimson Tide’s colors was a fair one.

Notably, the court found in favor of Mr. Moore to the extent he depicts the Crimson Tide in his artwork and prints, but enjoined his use of those same images on merchandise, such as coffee mugs, t-shirts and the like. What makes the use of the red-and-white in paintings a fair use, but not mugs?  While the court did not parse out its reasons for these findings, it is likely because consumers are more likely to view such goods – as opposed to $25,000 original oil paintings – as affiliated with UA, which probably makes a tidy sum selling Crimson Tide merchandise to its fans.

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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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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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My job sometimes is rescuing attorneys, often from themselves. Perhaps the quintessential illustration is a comment made by a corporate general counsel recently, whose organization was responsible for a number of victims, including fatalities. Her opening line to me was, “We’re not the empathy department in this company.” However, the reason she was talking to me was that the organization was about to be inundated with lawsuits from survivors, additional victims not yet known, and the unintended negative visibility that generally accompanies these situations, especially when your organization is considered a perpetrator.

Clearly, the adversarial system works in the courtroom—a rigorously controlled process and environment. Outside the courtroom, the adversarial attitude quickly brands one as cold, arrogant, callous, and anti-victim.

One of my clients is among the largest losers in an intellectual property lawsuit involving copyright infringement. For some 25 years, this firm distributed (via the most convenient mechanism available) copies of a small, highly focused financial advisory newsletter to all of its agents, associates, and franchises. At the end of 25 years, the author of the newsletter decided to sue for infringement. When I heard about the case, my first question to the client’s legal department was, “What’s your plan to settle this case?”

I received two immediate responses: “We’re not interested in settling” and “We have a good defense.” “What,” I asked, “could possibly be a defense that passes the straight face test?” The lawyers’ response was that the individuals involved, “waited too long to file a lawsuit.” “They knew all along what this client was doing with the materials.” My response was, “Even as a non-attorney, my guess is they have you dead to rights. Try to get them paid today. It’s only going to get worse if you wait.” The answer was something along the lines of a trial being inevitable.

The lawyer was prophetic and, of course, the trial was worse and sillier than one can possibly imagine. The jury threw the book at my client. The verdict was never appealed even though there was some bluster at the time that, obviously, such a huge jury award would be appealed.

The lesson for all attorneys is getting clearer by the day: Even though our system is adversarial at its root, as the number of cases getting to trial decreases, more and more forces are pushing for settlement. Increasingly, the answer is to find and hire lawyers who are comfortable being empathetic. Being empathetic is the opposite of being adversarial. Empathy means doing things that matter, where actions speak far louder than words. The concept of empathy is often described as “putting yourself in someone’s shoes.” If that other person is a victim, you’ll be causing yourself and your argument, as well as your attempts to settle, extraordinary damage. Better to step back and look at what the “victim” needs that you can provide, promptly, as a means of settlement and resolution.

Ninety-nine cases out of 100 filed will be settled, arbitrated, negotiated, dropped, or dismissed. Having your day in court is getting to be a pretty rare event.

Oh, and did I mention learning how to apologize? We’ll save that for another blog post.

-- James E. Lukaszewski, The Lukaszewski Group Inc.
 

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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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Last week, the Minneapolis/St. Paul Business Journal reported that Coach filed a complaint in New York against Minneapolis-based Target Corporation, alleging infringement of two of its handbag designs.  Coach claims Target’s new designs are too similar to two of its bags, including the Ergo and Signature Patchwork bags:

Target is not alone.  Coach also filed a lawsuit against Brown Shoe Co., Inc., parent company of Naturalizer, in June, 2009, accusing the company of copying the Ergo Pleated bag. 

Lookalikes have long been an issue in the fashion world.   While counterfeits are illegal, the rules are much less clear in the world of lookalikes and can come down to just how similar a design is to an "original."  What is clear is that designers and manufacturers in the fashion world are becoming more and more aggressive in protecting their designs.  A few more recent examples include:

Gucci filed suit against Guess earlier this year for trademark infringement for use of the “g” logo on handbags. 

Alexander McQueen recently accused Steve Madden Ltd. of trade dress infringement over a designer bootie. 

Deckers Outdoor Corp. (Ugg) filed a lawsuit against in California against numerous defendants alleging infringement of its Classic Cardy boot. 

Finally, the tables have turned in one recent lawsuit.  Louis Vuitton, known for avidly protecting its designs, has recently become familiar with the other side of case.  New Balance Athletic Shoe Inc. accused Louis Vuitton of trademark infringement, alleging Louis Vuitton copied one of its popular shoe designs.  

As noted on Stylelist, the New Balance sneaker (top) retails for around $75, while the Louis Vuitton sneaker will run you around $590 (bottom).  

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Trademark Infringement is a sticky subject online. Our first blog talked about Twitter and trademark infringement and today I want to address trademark infringement in relation to affiliate marketing. 

Affiliate Marketing is a process that rewards a blog or website for every customer that is brought to the company (the affiliate) that blog or website is promoting. The goal of the affiliate marketer is to bring visitors to the affiliate’s website in efforts to sell the affiliate’s products or services. Affiliate marketers will try numerous things in efforts to market these products or services in efforts to make money. In the past there have been lawsuits brought against marketers like this due to improper claims they were making about a product or service, who endorsed it, and if it worked. 

In August, a complaint like this was filed against not only the affiliate marketers but the affiliate as well. The claim is that the affiliate should be monitoring any and every marketing vehicle and message that is used in relation to its product.

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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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Clients and friends have enjoyed passing yesterday's Dilbert cartoon on to me, just for fun (I think).

So, for those of you who weren't sure we could take not only a lawyer joke, but a "trademark infringement lawyer" joke, read on:

Having said that, I think we already demonstrated our ability to self-deprecate with the best of them, by adopting our favorite cartoon labeling the "trademark attorney" as "the most basic figure," here.

OK, show of hands, how many of you have left the world of patents for trademarks?

For a post that points out the confusion between patents and trademarks, see Techdirt.

One more show of hands, how many of you are billing by the hour?

I have no more questions.

Likelihood of Confusion, weighs in on the subject, here.

For perhaps the most detailed and cat-like analysis of the subject, see IPKat, here.

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When it comes to scope of rights and trademark enforcement, as a trademark type, it's hard not to admire Adidas' success in preventing the use of two, three, and four stripes, when its long-standing federally-registered design mark consists of three stripes.

At least in the U.S., Adidas appears to have gained a one stripe buffer on either side of its powerful three stripe iconic symbol, so advocates for Adidas might say 2, 3, or 4 stripes, and you're out (of luck anyway).

(For some great coverage on Adidas' recent trademark enforcement activities, check out Seattle Trademark Lawyer).

How can it be then (within the hospitality industry), that no analogous buffer exists between 4&5, Motel 6, Big 7 Motel, Bel-Air Motel 7, Big 7 Motel (Chula Vista, California), Big 7 Motel (Valdosta, Georgia), Magnificent Seven, Seven Days, Super 8, and National 9 Inn, with them all happily coexisting (apparently) without any likelihood of confusion?

(Also, how can it be that Super 8 (apparently) doesn't control the Super8Inn.com domain?)

Perhaps it all comes down to what your trademark strength and likelihood of confusion analysis happens to count, stripes or numbers . . . .

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A brief study in how the Lion's Tap could have had its burger and eaten it too.

I have to say, in the interest of full disclosure, I have an irrational love for the Lion's Tap.

Ever since I worked in Eden Prairie back in the 1990s, I've been hooked. Fast forward the better part of a decade, put our family a cool 35 miles away in Shoreview, and we still find ourselves driving nearly an hour on special occasions to grab a burger.

That's part of what made me so damn mad when I saw McDonald's latest billboards. Who's your patty? For Angus burgers? You've got to be kidding. Lion's Tap is "my" patty, thank you very much! They've had the slogan on their tastefully tacky t-shirts for over four years.

I thought about it though. I know Lion's Tap. But my guess is that only a small smattering of people do (perhaps 3-4% of the Twin Cities population if you were to survey). Who are they going to think came up with the slogan? And if they walked into Lion's Tap tomorrow, who would you think was ripping off whom? That's right. You guessed it.

It bugged me. I was a bit upset. I was ready to come to my restaurant's defense.

Until they sued.

You can read more here, but the fact of the matter is that Lion's Tap decided to run to the courts to remedy what is calls a trademark infringement case.

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. Just read some of the news stories and read some of the comments to see what I mean, here, here, and here.

Ick.

Let's explore what Lion's Tap "could have" done differently, and how it might have panned out.

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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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With less than 6 months to go until the 21st Winter Olympic Games in Vancouver, trade mark enforcement activities are beginning to heat up.

In January, People for the Ethical Treatment of Animals (PETA) launched its global campaign against the Canadian seal hunt with a version of the Vancouver 2010 Inukshuk logo clubbing a seal in a pool of blood above blood-soaked Olympic rings. PETA is also selling t-shirts, mugs, buttons and stickers displaying this logo, thus capitalizing on its use of the Olympic marks.

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC), has publicly stated that it has no jurisdiction in this matter on the grounds that with PETA based in the United States, it is the US Olympic Committee's (USOC) responsibility to enforce the International Olympic Committee's rights in its trade marks.

The USOC duly complained about PETA's use of the phrase "Vancouver 2010" and the image of the Olympic rings on its products. In response, PETA publicly took the position that its use was protected as fair use, being an obvious parody. "Absent ... confusion, and in the context of a critical and parodic use of the images, there is no trade mark infringement." And there the matter appears to have ended, for now.

In June, 2009, PETA pushed the matter further with the launch of its website www.OlympicShame2010.com, which portrays the Vancouver Olympic mascots Miga, Quatchi and Sumi as bloodthirsty seal killers. 

PETA is clearly targeting the Vancouver Olympics in an attempt to put pressure on the Canadian government to end the Canadian seal hunt. Thus far, VANOC has declined to attempt to enforce its rights under Canadian intellectual property law, and the question remains, could it?

Intended to combat ambush marketing, the Olympic and Paralympic Marks Act (the OPMA) prohibits any person from adopting or using in connection with a business, as a trade mark or otherwise, an Olympic or Paralympic mark as set out in the Act. The OPMA provides for certain exceptions, including use for the purposes of criticism or parody. The Olympic rings, Inukshuk composite design, and the phrase "Vancouver 2010" are all Olympic marks for the purposes of the OPMA.

The Canadian Trade-marks Act also provides a mechanism to protect "official marks", which are uniquely Canadian. Entities that are "public authorities" such as VANOC and the Canadian Olympic Committee have the ability to request that public notice be given of their use and adoption. Once published in the Canadian Trade-marks Journal, official marks cannot be adopted by others in connection with a business, as trade marks or otherwise. Official marks, unlike regular trade marks, need not be associated with specific wares and services to be published and subsequently enforced. Once an official mark is published it does not need to be renewed and is virtually unexpungeable. Official marks accordingly possess far greater protection than any other kind of trade mark. The Inukshuk design, Olympic rings design, and Olympic mascot designs are all official marks owned by VANOC. 

With this statutory firepower at their disposal, could VANOC stop PETA's display of the Olympic marks?

PETA's "parody" defence could possibly be successful against any cause of action based on the OPMA, since the OPMA provides that use of an Olympic mark for the purposes of criticism or parody relating to Olympic Games is not a "use in connection with a business" (although one questions whether their "parody" qualifies as "parody relating to the Olympic or Paralympic Games"). 

Unlike the OPMA, there is no parody defence under the Canadian Trade-marks Act. However, to be successful, VANOC would have to prove that PETA's activities constitute adoption of the marks "in connection with a business" and that there is a sufficient Canadian nexus to PETA's activities for Canadian law to even apply. These are significant hurdles, and thus far, it appears that VANOC is reluctant to give PETA the publicity that a lawsuit would generate - no action has been commenced. 

An additional cause of action for VANOC could be copyright infringement based on PETA's use of the mascot designs. While PETA may view its use as fair use due to parody, there are a number of court cases holding that parody is not a defense to an infringement of intellectual property rights in Canada.

—Megan Langley Grainger, Bereskin & Parr LLP

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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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Recently, I stopped in a neighborhood coffee shop for an iced coffee. It was a fabulous little coffee shop in a neighborhood I don’t frequent and whose name I won’t mention. Anyway, while perusing the menu, I noticed they offered a blended coffee drink under the name Frappuccino.  Noting the teenager behind the counter, I did not feel it would be beneficial to provide a trademark tutorial or a warning as to how Starbucks would react to this use of its arguably famous trademark for identical goods. 

Sipping my delicious frozen beverage, I could not help thinking it would be a good blog topic to discuss the importance of trademark policing and enforcement.   Obviously, this is not always an easy task and these types of uses are especially difficult to detect.  In fact, Starbucks has been very active in protecting its trademark rights, even against small, mom-and-pop coffee shops which it discovers are using a similar name or logo mark such as Conga Coffee & Tea (similarly shaped green logo mark).  However, identifying an infringing name of a shop is one thing, but identifying an infringing menu item is a far more difficult task. 

Companies spend a lot of time and money developing brand names for products and services and many companies have hundreds of branded products in their portfolios.   An important part of branding is protecting those brands and companies need to determine how to best monitor their marks.  Employing a watch service is always a good idea for major brands and/or a company name.  However, the cost of a watch service is by the mark and can quickly add up if a company has numerous brands to protect.  Thus, a few suggestions as to steps a company can take to protect its marks include:

1. Apply for federal trademark registration whenever possible;
2. Proper and consistent use of the ® ™ symbols in connection with each and every brand;
3. Undertake periodic Internet searches for potentially infringing uses;
4. Create champions for your brand - highly loyal customers, distributors, retailers, and other partners, who will bring potential infringements to your attention;
5. Internal education for employees to keep their eyes open and listen with an open ear when others bring potential infringements to light; and
6. If you become aware of a potential infringement, take action sooner rather than later by sending a formal letter.  You may want to consider hiring a trademark attorney to send the letter; investing in a well written cease and desist letter will often pay off by putting an end to the infringement. 

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As promised earlier this week, in my post entitled "Without Words, But Not Speechless: More On Non-Verbal Logos That Can Stand Alone," here is my effort to identify, from a legal perspective, some of the pros and cons of non-verbal logos and other trademark styles. 

But, before addressing the legal implications, it is worth noting that a number of our insightful readers and commenters already have helped articulate a variety of pros and cons from a business and marketing perspective, here. By my count, there appears to be consensus on at least two important points: (1) Having an iconic stand-alone non-verbal logo or wordless trademark symbol is highly desirable, especially for truly international brands; but (2) be prepared to spend a lot of time, effort, and significant resources to achieve one.

In addition, at least one designer has written that having a logo without words "can be a big branding pain," for a variety of reasons. She identifies three basic logo styles: (1) Text logos; (2) symbol logos; and (3) combination logos. Examples of text logos would be the Coca-Cola script, the Yahoo! stylized word, and the Google stylized word, all three illustrated in my earlier post. The highly stylized Ebay logo is another good example of a text logo. On the other hand, the Shell logo, McDonald's Golden Arches, and the Nike Swoosh, are all good examples of symbol logos. In addition, here is a message board collecting a number of other possible candidates for symbol logos that are capable of standing lone -- without words -- yet, they still have a lot to say to consumers. Many of them, in fact, were mentioned by commenters to my prior post.  

Anyway, the designer referenced above contends that for a variety of reasons, combination logos often make the most sense. According to her, a combination logo "combines both a symbol and the company name. The symbol and text can be integrated together, side by side, or with one located above the other."

Generally, from a trademark owner and legal perspective, I prefer the combination logo too, but not the "integrated" type, instead the "side by side" type or the "one above the other" type. The Mercedes-Benz combination logo shown below nicely illustrates the "one above the other" type of combination logo:

Why do I generally prefer this type of trademark logo format and style?

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This unsolicited e-mail communication from the Caribbean Island of Nevis got trapped in our spam filter, but I thought I'd remove the link and bring it out under a short leash for some legal training and discussion:

Trademark fair use, you ask?

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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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Before the emergence of the Internet, there were two major conventional ways of doing intellectual property consumer surveys — mall intercept surveys and telephone surveys.   Mall intercepts work best for branded, consumer products where there is a visual element to be tested. They are moderately expensive and require some incentive. Telephone interviews are good for brand names, genericness studies or other types of research where the respondent does not need to view a visual. Most telephone research requires no incentives.

The Internet, in theory, combines the best of both worlds. Internet surveys not only permit the asking of verbal questions and recording verbatim answers, they also permit transmission of visual images such as products, labels, logos and packaging. Internet technology also permits sound transmission. Transmission costs are minimal with an e-mail blast of 5,000 names costing about $800 or $160 per thousand. (Typical mall costs are $30-$40 per interview). Unfortunately, there is no telephone book for e-mail addresses, and in order to use this medium you have to hook into a vendor that has large opt-in consumer panel data bases. By using opt-in panels, you will bypass all the SPAM filers and anti-SPAM on-line watchdogs. Moreover, you have an instant, real-time tabulation process.

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Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names "Geek Patrol," "Geek Squad," and "Geek Squad Patrol". Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit B (DomainTools.com print out), Exhibit C (Tollfreeda.com print out), and Exhibit D (Superpages.com print out).

For those of you interested in great entrepreneurial stories, Robert Stephens founded Geek Squad while a student at the University of Minnesota, riding his bicycle around Minneapolis to make computer house calls. The stylish collection of branded Beetles permitted Stephens to cover much more ground when making house calls or office calls. I actually had the pleasure of meeting Robert Stephens and toured his humble first office located above Moose & Sadie's cafe and coffeehouse blocks from downtown Minneapolis. He gave me and my wife what are now vintage Geek Squad t-shirts, obviously we should have had them autographed at the time!

My early and initial observations of the Geek Squad trademark Complaint are below the jump.

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Brand managers and marketers often wonder about the risks and consequences of not enforcing or protecting their trademarks from infringement. A shooting target formed by a series of concentric circles is the best graphic I have found to illustrate the legal answer to their frequent question.

Judging from the robust criticism Twitter has received about its lax or laissez-faire approach to trademark enforcement, the Twitter folks have never seen (or perhaps they have chosen to ignore) the shooting target graphic illustration. Distilling these criticisms to their essence, basically there are more than a few folks out there asking Twitter: "What are you doing?"

The irony of this is hard not to find amusing, given how Twitter explains its reason for existence this way: "Twitter is a service for friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?" For Twitter, only time will tell how "simple" the trademark enforcement "question" is for itself to answer.

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Last month, Eddie Van Halen's company, ELVH, Inc., filed a lawsuit against Nike for copyright infringement.  The complaint alleges the above-depicted model of Nike's Dunk Low shoes infringe his copyright in the red, white and black striped Frankenstein guitar design.  The lawsuit is seeking not only profits from Nike’s sale of the shoes and damages, but also the destruction and impoundment of all shoes in question.  Nike issued a statement denying the charges. 

The real kicker in this case?  Eddie Van Halen recently introduced his own line of tennis shoes, EVH, incorporating the same Frankenstein design.   Interestingly, as one online news magazine pointed out, the EVH shoes bare a striking resemblance to the Classic Chuck Taylor tennis shoe by Converse, a subsidiary of Nike.  My advice to Eddie would be to Jump from this train while he still can. 

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I don't recall what I was doing in January of 2007, but I apparently missed the news that Cisco had sued Apple over Apple's then-newly announced iPhone product.  I actually stumbled upon this accidentally when I recently searched for federal trademark registrations for IPHONE and found only one, and it belongs to Cisco.  (PDF here.)  Your eyes are not deceiving you:  since 1999, IPHONE has been a federally registered trademark for use in connection with "computer hardware and software for providing integrated telephone communication with computerized global information networks," and Cisco is the current owner of this registration.  No joke.  Look here. 

This raises dozens of questions in my mind, of which I will present only a few. 

Q1.  Did Apple conduct a trademark search prior to rolling out the iPhone?

Q2.  If so, what was the legal and business thought at Apple about Cisco's IPHONE trademark registration?

Q3.  What should a company like Cisco do when a junior user adops an identical trademark for use on identical goods, and the junior user's product is wildly successful?

My suggested answers are after the jump.

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My business partner just finished building his deck. In addition to the bureaucratic ordeal, that is obtaining permitting, he decided to go the extra frustrating mile and install composite deck boards versus treated wood. Fair enough. There was just one little wrinkle: Normal deck screws will "mushroom" on you unless they are pre-drilled, or worse, split the board entirely. If you're not careful, you can go through a few boards before you figure it out. And the boards are (not surprisingly) much more expensive.

To solve the problem, builders are instructed to use special screws.SplitStop™ screws seem to be the preferred choice - they have the patents (5,516,248, 5199,839, if you're curious) - although others "claim" to work just as well. A simple Google search returns no less than 10 competing brands, all making a seemingly fair case that their screw is the right screw for the job. But none of them have the SplitStop patent, and numerous articles by independent reviewers bemoan the confusion in the marketplace.

In addition to the "patent" confusion, throw in a dose of "trademark" confusion, and you have a veritable IP mess. Titan Metal Werks (who owns the SplitStop name and patents) also markets the DeckEase™ product. Compare that to TrapEase™ (marketed by competitor FastenMaster).

And therein lies the question: What is Titan to do? Are the others infringing? Perhaps. Are they causing confusion in the market? Certainly. Is the confusion hurting the reputation of the Titan brands? Probably. Will Titan be able to get them to stop? Doubtful.

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If your business depends upon your name, you should obtain a trademark for your name and register it as a domain name. Andre Agassi must be glad he did so. A judge in the United States District of Nevada recently issued a preliminary injunction banning three web sites from using Andre Agassi’s trademarked name in their web addresses. 

The Anticybersquatting Consumer Protection Act (“the Act”) protects trademark owners against cybersquatters as well as providing protection against the unauthorized registration of personal names as domain names.  This includes prohibiting the unauthorized registration of a domain name that is the same as or confusingly similar to the name of another living person, if done with intent to profit from the domain name by selling it for financial gain to such person or a third party. 

Aside from the Act, there are common law rights to a personal name. Not surprisingly, a court found “Risky Business,” “Top Gun,” Oprah couch jumping superstar “Tom Cruise” to have common law rights in his name. However, Jerry Falwell did not fare so well. His name was found not to have common law rights.  Similarly, the headline “Sting Stung Online” touted the first famous celebrity to suffer a defeat under the Act in 2000. Front man for the rock band the Police, and superstar solo act, Sting (also known as Gordon Sumner) was unable to prevail against Michael Urvan’s registration and use of Sting.com. under the Act. The World Intellectual Property Organization for Arbitration found that “Sting” was a common dictionary name and Mr. Urvan was not using the domain in bad faith. Significantly, Sting had not registered his name as a trademark. 

If your name is your business, and you are not as famous as Tom Cruise, it might be best to register your name as a trademark and register the domain name, as Andre Agassi did. 

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Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen. 

But what about when a branded prop dominates the ad or the identifiable trademark is another's product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another's commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz' ads, continue reading after the jump.

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The overlap of virtual reality and intellectual property is a relatively recent phenomenon. The advent of virtual worlds, such as Second Life, has created increased opportunities for legitimate marketing and branding, as well as, increased opportunities for infringement. Second Life even has its own bar association for those interested in virtual legal practice.

If you noticed the dates from the links above, you'll see that I'm not the first blogger to address some of these topics. Indeed, questions about intellectual property in virtual worlds have been percolating for years. However, recently a real-world lawsuit was initiated over virtual-world infringement. Taser International, Inc. has sued Second Life's creator, Linden Research Inc, alleging that Linden is selling virtual weaponry that infringes its rights. Among the interesting issues likely to arise in this suit will be vicarious and contributory trademark infringement and whether or not the use of a trademark in a virtual world constitutes a “use in commerce” which is necessary for trademark infringement. It will be interesting to see how traditional trademark principles are actually applied in the virtual environment.

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There is no question that attempting to own "hot" or versions of "hot" appears to have great value and importance in the marketing world. So, how many original, unique, and memorable ways are there to communicate spicy "hot" anyway?

As to memorable, perhaps painfully memorable, Paris Hilton apparently sells designer clothes under her "That's Hot" brand, and judging from her pending federal trademark filings, she still has an intention of expanding her "That's Hot" brand to cell phones and alcoholic beverages, among other items, but apparently not buffalo chicken wing sauce or potato chips, thankfully.

Otherwise, it really might distract from a recent pair of trademark food fights in Minneapolis, both involving chips claiming to be "hot" too. You may recall the "Red Hot" Chip Fight between Barrel O'Fun and Old Vienna discussed here, that was quickly bagged here.

So, here are the current contenders in the most recent "Blazin' Hot" trademark food fight:

   Vs.   

A copy of the Buffalo Wild Wings trademark infringement complaint against P&G and Pringles is here.

The most interesting aspect of the complaint, from a trademark strategy perspective, is the fact that Buffalo Wild Wings did not bring a claim for infringement of a federally-registered trademark (Section 32 of the Lanham Act). Instead, it only relies on Section 43 of the Lanham Act (designed to protect unregistered trademarks) and a pair of Minnesota state law causes of action, even though it refers to owning some federal trademark and service mark registrations for and containing the term BLAZIN'. Perhaps Buffalo Wild Wings is attempting to insulate them from attack or challenge by P&G, since none is five years old yet or incontestable. Stay tuned to learn whether P&G turns up the heat on this dispute and counterclaims for cancellation anyway.

Now, as to the "original and unique" point raised above, it is worth asking, who else appears to have a stake in "Blazin" hot trademarks for food products? Uh, let's just say, more than a few . . . .

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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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As you may recall, three weeks ago, I posted about what appeared to be the makings of a "Red, Hot, Chip Fight" between Old Vienna and Barrel O'Fun Snack Foods, over Barrel O'Fun's use of "Red Hot Ripple" and other elements of trade dress claimed by Old Vienna (see here for my prior post and a side-by-side comparison of the potato chip bags).

As you may also recall, I invited you to "stay tuned" to "see how this fight progresses."

Folks, this one didn't even last the first round, almost as soon as the opening bell sounded, the case was voluntarily dismissed by Barrel O'Fun before Old Vienna's answer was due.  Here is a copy of the Order of Dismissal.

I'm guessing the parties worked something out to their "mutual satisfaction" -- if anyone knows for sure, ring the bell, please.

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What is it about some advertising campaigns that make them magnets for imitation?

For example, the Got Milk? imitators appear to be endless in numbers, but that is the subject of another post for another day. 

For today, with respect to a different imitation magnet: There must be an endless number of creative and original ways to market a series of home and self defense videotapes, I suspect. Even relying on fear as an underlying theme to sell these videotapes, there must be only a few less than infinity still possible.

So, why the need to borrow from a famous ad campaign here -- one I won't mention until after the jump below?

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In July 2008, Thoip, the owner of the “Mr. Men” and “Little Miss” characters from the early 1980s, sued Disney for creating its own line of “Little Miss” t-shirts featuring the leading ladies of Disney—Daisy Duck, Tinkerbell and Snow White's Evil Queen. Thoip’s line of Mr. Men and Little Miss characters include Little Miss Bossy, Mr. Messy, Little Miss Splendid and, my personal favorite, Mr. Noisy (who wears outrageous shoes and is incapable of speaking below a shout). Thoip’s Misters and Misses are characterized by their short, stick-like arms and legs that support ample bodies, simple and colorful drawings, and images that evoke the very essence of their being (hence, Mr. Noisy wears decoratively loud shoes, and Mr. Messy is a great, big scribbled mess of a guy).

A few weeks ago, Disney filed counterclaims against Thoip seeking, among other things, declaratory relief to prevent Thoip from “hindering competition by monopolizing commonplace, generic and descriptive terms for their own exclusive use.” Notably, at the time of this post, Thoip owns only one federal registration, a design mark for “Mr. Men Little Miss,” for books. Although Thoip owns a number of pending federal applications for its characters, at present Thoip must (one assumes) rely on its common law rights from use of the marks in the United States. 

This case underscores the importance of seeking federal registration whenever possible, both for inherently distinctive marks (those that are arbitrary, coined or suggestive of the goods and services offered under the mark) and for marks that may be considered descriptive.  Upon using a mark continuously for five years, a registration may become “incontestable,” a status that accords the registration a number of benefits, including the benefit of effectively short circuiting the ability of challengers to assert that a mark is descriptive.  

However the case turns out, I'd like to take this opportunity to put in a plug for a Little Miss Lawyer t-shirt—I can guarantee a market for that.

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Minneapolis is the chosen venue for a brand new legal food fight, one involving potato chips.

Putting aside for the moment that the proper test of trademark infringement is not based on a side by side comparison of products (unless, of course, they are encountered that way in the real world, as opposed to the court room) because consumers are believed to have imperfect recollections of the details of brands and marks, what do you think about the allegation of likely confusion between the two packages shown below?

Ding, ding, ding. Ladies and gentlemen, in the white bag, standing in the right corner, sporting the Old Vienna® brand, and the federally-registered Red Hot Riplets® mark (disclaiming only the term “Hot”), is the fighter claiming infringement. In the red-brick bag, standing in the left corner, sporting the Engine Co. 51 brand, and the words Red Hot Ripple, is the “fire” fighter claiming it has done nothing wrong, and feels so strongly, it wants to prove so in court.

To read the spicy cease and desist letters from Old Vienna® that triggered the lawsuit, see here.

To read a copy of the federal complaint filed in court by Barrel O’Fun Snack Foods, see here.

To see how this fight progresses, stay tuned here on DuetsBlog.

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Ok, ok, I get it. My last blog post, The Paradox of Brand Protection, was way too long. Just so you know, I do recognize that we live in a sound bite world, but sometimes the educator and storyteller tangled in my DNA get the worst of me, at least when it comes to brevity.

Brevity is a gift. The federal Court of Appeals judge I worked for in Washington, D.C., years ago, had this gift, among many others. He used to describe those who “go on and on” as having no “terminal facilities.” Those of us who worked for him eagerly awaited the meaningful pearls of wisdom he gifted from time to time.

Brevity is memorable. Out of all the words strangers have uttered to me during my life, I have never lost one brief line from a man (a man I couldn’t pick out of a line-up today, by the way) at the public swimming pool some thirty-five years ago: “You’re going to have in-grown toe nails some day.” He was right, and I have never forgotten those exact words.

Brevity is effective. The GOOGLE® home page is a model of brevity. The ALTAVISTA® landing page has migrated in this direction too. Author and master-blogger Seth Godin makes “every word count” a new art form. His blog posts are models of brevity.

Brevity is hard work. It takes significant time, effort, and knowledge to properly distill complex thoughts and ideas into brief, digestible, and meaningful points. This hard work, however, pays dividends in giving the lasting and important gifts of being memorable and effective.

Brevity can have issues. Sometimes it misleads people into believing things are simple, when it is far from the truth. Other times it creates arguments much later about lacking notices or informed consent. So, while brevity is valuable in engaging attention, any further necessary information should be filled in later, as appropriate.

In the trademark world, brevity has issues too. Perhaps most importantly, brevity is more difficult to own, making it much more valuable when you can. Many different companies might vie to boil down their names to the very same acronym. The same is true for top level domains with a limited number of characters. If you haven’t heard before, there is extraordinary value associated with two character top level domains. Quite simply, the shorter the designation, the more interest and competition there is to use and own it.  

For all of these reasons, and probably more, it seems everyone these days wants to truncate their brand. American Express® is AMEX® (never mind that it isn’t the only one), Federal Express® is FEDEX®. Gatorade® is truncating to G (more about that controversial move later). Even law firms, frequently strangers to brevity, are on the bandwagon too. In case you hadn’t noticed, there is currently no shortage of law firms attempting to truncate their multiple alphabet soup names to a single surname. As you might imagine, this can and does lead to trademark fights, even between law firms.

Food for Thought: Will McDonald's® ever attempt to truncate its famous 71 letter mark? Click here to see their trademark registration.  Repeating it in this post clearly would violate my new quest for brevity.

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