Duets Blog : Creativity and the Law: DuetsBlog

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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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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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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A couple of months ago I blogged about Branding Exclamations!

Before that I blogged about Increasingly Intense Ellipsis Branding . . . .

Now, it appears I must revisit the subject of punctuation mark branding given Cadbury Adams' new Mega Mystery Stride brand gum, prominently featuring a question mark logo on the packaging where the S logo normally appears.

The mystery apparently surrounds the presently undisclosed flavor of the gum. The unknown flavor appears to be part of Stride's claimed Ridiculously Long Lasting Gum, not to be confused, of course, with Wrigley's Curiously Strong mints and gum (Altoids).

Anyway, my daughter brought a pack of the ? gum home and said, "Daddy, you should blog about this," so now you know the inspiration for my curiously strong or ridiculously long attention to this subject.

I fully expected to find a pending trademark application filed by Cadbury Adams for the "?" symbol, given its ridiculously flavorful interest in single letter chewing gum brands. To my surprise, however, I found none, at least yet.

As you might have imagined, I did find some "?" trademarks of others, as shown below. Do you recognize any of them? Each "?" image is linked to the corresponding trademark record at the U.S. Trademark Office.

Turns out, there is a ? trademark battle heating up too. Not in the world of confections, but rather in the world of fashion. Just days ago, Guess IP Holder L.P., owner of the famous Guess brand, filed a Trademark Opposition against one of the above Question Mark logos, guess which one?

It asserted ownership of these federally-registered trademarks:

But not any of these, for some reason:

To find out, click here for a link to a copy of the Notice of Opposition.

Any more questions?

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

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

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

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

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

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

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

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For Mead Johnson, the maker of Enfamil, $13.5 million is a small price to pay to halt the slide towards store brand formula.

Some companies just have a knack for rubbing the federal courts the wrong way.

Case in point: Baby formula brand Enfamil and its maker, Mead Johnson Nutrition.

Last week, a federal court ruled Mead Johnson must pay $13.5 million in damages to its store-brand rival PBM Products for misleading advertising.  At issue was a series of comparative advertisements illustrating Enfamil's implicit claim that its product contains "a specific set of ingredients" that its competitor does not have.  Those deficiencies - so the ads imply - would lead to poor eye and brain development.

Yikes.

It should go without saying (even for the non-jury-selection specialist) that allowing a suit to go to jury when the claims involve lying to new mothers about their baby's health is more than just bone-headed.

And that's not the first time Mead Johnson's ruffled PBM's feathers.  AdAge details a history of squabbles over misleading advertising involving the baby formula giant.  You can read all about it here.

The whole situation begs the question: If Mead Johnson keeps losing in court, why does it keep pushing the limits with its advertising? 

The judge in the most recent case remarked that Mead Johnson engaged in this campaign under pressure from lagging sales.  Apparently, the generic "store brands" were gaining ground (recession-driven, no doubt), and Mead Johnson felt it needed to up the ante to halt the decline.

Perhaps the better question is: Does the strategy work?

I decided to do a little math to try to find out. 

It's been almost a decade since I've been an active baby formula buyer, but I remember how expensive the dry stuff could get.  Boy, things haven't changed.  For my experiment, I chose the Enfamil Lipil Milk-Based Infant Formula with Iron, powdered, in the 12.9 oz can.  Very similar to what my wife and I used to buy.  The average price per container was $14.99.  Some more, some less.  Cheaper if you buy it in bulk.  You get the idea.

In the industry, baby formula is lovingly referred to as "liquid gold".  At a 40 percent profit margin, it's easy to see why.  Obviously, the liquid (and therefore more-quickly perishable) versions sport a lower margin.  Powder margins are higher.  But just for fun, let's stick with the conservative 40 percent number for our calculations.

So, using quick "street math", we can deduce that Mead Johnson makes $6.00 per 12.9 oz. can of formula.

Now let's divide the settlement amount (the original $13.5 million plus perhaps an additional $1 million in legal fees for a total of $14.5 million) by the average profit per can of $6.00.  Of course, that assumes Mead Johnson sells nothing else, but you get the idea.  When you do that, you get just over 2.4 million.

2.4 million is the number of additional cans of formula the company would need to sell to break even from the settlement.

Does that seem difficult?

I don't think so.

Mead Johnson controls about 50 percent of the market for baby formula, or better than a $1.4 billion market in the US each year.  That's over 90 million cans of formula each year.  An extra 2.4 million cans?  Not so tough.

So we come back to the first question.  Does the misleading advertising make business sense?  If the judge's comments are accurate, Mead Johnson was likely more concerned with preventing the loss of the sales for those 2.4 million cans.  Is pushing the boundaries of advertising law worth the brand positioning risk in this case?

Put another way: Will mothers look at a court ruling (essentially saying the company was wrong, and its formula is no better than a generic) or will they believe the powerful pathos advertising appeals imploring them to look after the child's health?

Tough questions all.

But sadly, I think the math answers them.

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

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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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Viking fans will recall the famous Purple People Eaters from the late 1960s through the late 1970s. The nickname arose for the defensive line of the Vikings from their purple jerseys and the popular Sheb Wooley song bearing that name. Although they went to four Super Bowls (unfortunately, not taking home a Super Bowl ring), the Purple People Eaters did not receive the astronomical, multi-million dollar, contracts received by the Pro Bowl players today. Accordingly, the retired players rely upon the use of their names, images, and likenesses on paraphernalia, sports bars, and other businesses to make money.

To protect their valuable trademarks in their names, images and likenesses, Purple People Eater Jim Marshall, along with five other retired National Football League (“NFL”) players, filed a class action lawsuit against the NFL to recover for their injuries as a result of the NFL’s unauthorized use of their identities to promote the NFL, sell NFL-related products and otherwise generate revenue for the NFL.  They have brought claims for false endorsement under the Lanham Act and various state law claims. The lawsuit was filed in the United States District Court for the District of Minnesota.

Their Amended Complaint alleges that “by commercializing the names, images and likenesses of its players, both active and retired, the NFL has become one of the largest entertainment conglomerates on the planet, raking in an estimated $6.9 billion in 2008 alone.” In contrast, the “now-retired NFL players, as a group, suffer severe physical maladies and disabilities as a result of the sacrifices they made to make the NFL what it is today.”  One example identified in the Amended Complaint was that safety Toby Wright sought to use his name, likeness and identity as an NFL player to promote two businesses, one a sports bar and the other a training facility. In response, the NFL informed him that he would have to pay the NFL $100,000 to use his own identity. Because he did not have the funds, the safety was effectively “blocked” from using his own identity. 

Only time will tell if Minnesota Supreme Court Justice Alan Page, who is also a Purple People Eater, will join the class action and whether the Purple People Eater Jim Marshall and the other retired players can beat the NFL off the football field.

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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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The makers of Red Bull have taken on companies who are importing and distributing unauthorized gray market Red Bull Energy Drink products across the United States.  

The company brought a suit recently in New York alleging that the bootleg Red Bull Energy Drinks that were only authorized to be sold in other countries were also being diverted into the United States. Red Bull claims that the distribution of such products causes or is likely to cause purchaser or consumer confusion, mistake and/or deception to the detriment of Red Bull and consumers. As I discussed last week in “Should ‘Bootleg’ Toys Be Shut Down?,” trademark owners can obtain relief from the courts if the “gray market” goods are “materially different” than those sold by the trademark owner.  

Red Bull alleges that the “material differences” between its products and those being distributed by the New York company include:  unfamiliar spelling or language on the cans, different local distributor contact information, a lack of required United States federal and state nutritional information, unfamiliar ingredients identified on the cans, lack of deposit information, different units of measurement, lack of batch coding, lack of expiration dates, and lack of rigorous quality control standards. 

This is not the first time that Red Bull has taken action against distributors of gray market goods. In 2006, Red Bull sued a Georgia company for its bootleg distribution of Red Bull products. In April of this year, Red Bull obtained a verdict for twenty-one million dollars against the company and also obtained a permanent injunction against the company prohibiting it from further trademark infringement and trademark dilution. Red Bull is likely hoping for a similar resolution in the New York case.

To say that the Red Bull brand is valuable is an understatement. Red Bull is currently the leader in the energy drink category. In 2008, over 1.3 billion units of the Red Bull Energy Drink were sold in the United States. Red Bull promotes the U.S. Red Bull Energy Drinks featuring its valuable trademarks in connection with numerous athletic events, music festivals, sponsorships, and sports competition (including motor sport) in the United States and around the world. 

The courts are not the only venue that Red Bull has sought to police its trademarks. In May of this year, Red Bull filed a 337 Complaint with the International Trade Commission (“ITC”) requesting that it commence an investigation of entities that are selling and distributing imported gray market energy drink products in the United States which are materially different than Red Bull’s energy drinks. The ITC agreed to start an investigation into the matter. Accordingly, Red Bull may obtain government assistance in policing and protecting its Red Bull brand and trademark. The ITC may be bombarded with similar complaints because gray market bootlegging occurs across numerous markets for many types of products, not just energy drinks and toys.

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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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It depends. “Gray market” goods are those goods that are sold outside of the brand owner’s authorized distribution channels. Although a trademark owner may consider them “bootleg,” “gray market” goods are actually legally acquired abroad and then imported into the United States without the trademark owner’s consent. These actions do not legally infringe the trademark under the Lanham Act unless the “gray goods” undermine the owner’s goodwill or leave the consumer in a state of “legal confusion.”   If the "gray market" goods are "materially different" from the trademark owner's goods, then courts have found "legal confusion." 

The Cabbage Patch Kids dolls were at the heart of a dispute in the case entitled, Original Appalachian Artworks v. Granada Electronics, 816 F.2d 68 (2d Cir. 1987). A Spanish importer/distributor sold Spanish Kids dolls in the United States.  The Second Circuit found that the Spanish-language birth certificates, adoption papers and instructions for the Spanish Kids dolls were “materially different” from those same English-language documents for the Cabbage Patch Kids dolls.  It was likely that the consumer would be confused. Accordingly, the Cabbage Patch Kids trademark owner obtained a permanent injunction prohibiting the Spanish importer/distributor from selling the Spanish Kids dolls in the United States.

With the increasing global nature of our economy, “gray market” infringement claims will likely increase in the years to come. Courts have found “material differences” in products based on labels, packaging, structural strength of parts, product composition and storage of material. If a product fails to contain English warning labels or English operator owners’ manuals, courts will likely find these to be “material differences” warranting protection. 

“Material differences” do not have to be physical. Services provided with product and warranties (or lack thereof) can be found to be a “material difference” from the trademark owner’s product. Further, a trademark owner’s superior internal quality control procedures can be a “material difference.” There are many ways that a trademark owner can assert that there is a “material difference” in its product so that it can obtain protection from “gray goods” being dumped into the United States to unfairly compete with the trademark owner’s products.

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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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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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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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Trademark types: As promised, here are some of my more detailed thoughts and perspectives (at least for the time being) on the most significant trademark case of the year: In re Bose.

Thanks to Thomson Reuters for asking me to share them with their readers. I look forward to some great dialogue on the likely implications resulting from this long-anticipated trademark fraud decision.

Marketing types: An adversary's ability to cancel your company's trademark registration for fraud just got much more difficult with this important Bose decision. Basically, fraud means fraud again.

Instead of your adversary only needing to prove that you should have known that a material statement made to the Trademark Office actually was false at the time you made it (as was the law applied by the U.S. Trademark Office for the last six years), now, simple negligence is no longer enough to establish trademark fraud, instead, an actual intent-to-deceive the Trademark Office must be proven.

Having said that, despite this revived more difficult-to-prove fraud standard, it is as important as ever to treat the statements or representations you make to the Trademark Office as seriously as ever, and with the utmost solemnity, making sure you truly understand what you are signing so you can actually affirm the truth of those statements and representations.

It probably goes without saying that the apparent simplicity of the electronic trademark forms can be quite deceiving. So, there are no stupid questions when it comes to your understanding before signing electronic form documents that are submitted to the Trademark Office.

UPDATE: ExecSense Webinar on the Bose Decision, now available for purchase. Just so you know, all royalties due to me are being donated to The Ronald McDonald House Charity.

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This summer has seen popular icons pass away such as Michael Jackson and Farrah Fawcett as we have discussed in earlier blog posts. With the recent passing of “Dirty Dancing” star Patrick Swayze last week, I am reminded of his famous saying “Nobody Puts Baby in a Corner” :

Two years ago this famous saying was embroiled in a trademark suit. Lions Gate Entertainment Inc. owned a trademark for the famous saying in connection with its merchandising surrounding the iconic film. It sued fifteen clothing companies, including a Denver company called Real Baby for selling baby clothes with the trademark, including onesies. The parties settled the case before the merits were reached.  

Other movie quotes, or adaptations of quotes, have been registered as trademarks. One of the best known movie quotes was uttered by Clark Gable in the Oscar winning “Gone With the Wind.” The trademark “Simply Scarlett Frankly My Dear You Look Divan” was registered in connection with clothing, likely in an effort to capitalize on the success of the movie. However, this trademark was ultimately cancelled because the registrant failed to file appropriate documentation (in legal jargon Declaration of Continued Use under Section 8).  

Other famous Patrick Swayze movie lines have not been registered for trademarks yet; such as his “ditto” response to Demi Moore’s “I love you” in the movie “Ghost” or “Pain don’t hurt” that he uttered in “Roadhouse.”   Who knows if these lines will ever become registered trademarks.

As discussed above, movie studios such as Lions Gate Entertainment Inc. sometimes register trademarks for famous movie lines. But, if you can beat the studio to the punch and register a famous movie quote (or adaptation of a quote such as the above one for “Gone With The Wind”) in connection with a product, you might hit the marketing jack pot.   

Unfortunately, there will be no more such iconic phrases from Patrick Swayze.

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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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Back in May, I wrote a piece entitled "Re-Branding Madness in Washington" Overlooks Obvious: The Washington Redskins," discussing the trademark cancellation action that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), and calling for the football team to "hire a branding guru to engage in some serious and successful re-branding."

Well, the 2009 football season is now upon us, and it appears my re-branding call has fallen on deaf ears, at least for now.

Yesterday the Washington Post "reported" the case may be heard by the U.S. Supreme Court.

What I found most interesting about the brief 197 word story in the Washington Post is that the "reporter" used the word "activist" three times and "group" twice, to describe the distinguished Native American leaders I know, without referring to them as individuals or even as being Native American (without the "activist" pejorative), leading me to wonder what yard-line his seats might be located at in FedEx Field.

For what it's worth, at least the Associated Press, ABC News, NBC Sports, ESPN, Yahoo News, WTOP.com, WUSA9.com, New York Times, New York Post, Miami Herald, San Francisco Chronicle, Seattle Times, Sports Illustrated, The Washington Times, and CBS News, have all managed to report the story without employing the highly-charged and politically-loaded term "activist," instead neutrally referring to the petitioners as "Native Americans" and "American Indians," who are offended by the team name.

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Heiress Paris Hilton starred in the “reality” television show The Simple Life with her BFF Nicole Richie from 2003 to 2007. In connection with the hit show, Paris Hilton delivered her famous catch phrase “That’s Hot.” Always the entrepreneur, Ms. Hilton trademarked her famous catch phrase in connection with beverages fit for an heiress—champagne and prosecco.  She has not yet obtained a trademark for "That's Hot" in connection with buffalo chicken wing sauce or potato chips, as Steve Baird noted in his blog post about the saucy trademark chip fight.

Catch phrases are expressions that are usually popularized through repeated use by a real person or fictional character. It is a hotbed for trademark registrations. Donald Trump tried to register as a trademark his famous “You’re Fired” catch phrase from his hit show The Apprentice. But, he later abandoned the registration applications.

Ms. Hilton sued America’s largest greeting card company Hallmark Cards over the use of her name and photo along with her registered trademark, “That’s Hot,” in connection with a parody card, “Paris’s First Day as a Waitress.” The Ninth Circuit recently refused to dismiss Ms. Hilton’s claim. The Ninth Circuit rejected Hallmark Cards’ argument that its depiction of the heiress was protected speech as a matter of law. Hallmark Cards defended its Paris Hilton card stating that a number of its new humor greeting cards are parodies of popular celebrities and politicians.

Hallmark Cards may want to go back in time and design cards with characters from certain old television shows that would be appreciated by those who grew up before iPods and Facebook. Although Flo from Alice’s famous catch phrase “Kiss My Grits” used to be trademarked in connection with aprons and potato chips, these trademarks have since been abandoned. Similarly, Hallmark Cards could design a card with JJ from the television show Good Times and his famous catch phrase “Dy-no-mite” to describe a person celebrating a birthday. Alternatively, Hallmark Cards could look to the movies and construct a card picturing the Governor of California Arnold Schwarzenegger with his famous catch phrase “Hasta La Vista Baby” from the Terminator 2: Judgment Day movie that is currently not trademarked.

Catch phrases often emblazon t-shirts, mugs, and other products—already having consumer recognition. But, businesses should beware that many famous catch phrases (and even not so famous ones) are trademarked and using them could open them up to a trademark infringement lawsuit.

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

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

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

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

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

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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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Today is a really, really big day for trademark types.

As many of us have been saying for a couple of years now, trademark fraud (i.e., fraud on the U.S. Trademark Office) continues to be one of the hottest issues facing trademark owners and the attorneys who represent them. Perhaps after today, not so much, but who really knows, we'll see.

For those not already plugged into the issue of trademark fraud, most mark the 2003 decision of the Trademark Trial and Appeal Board (TTAB) in Medinol v. Neuro Vasx, as the starting point for a much lower, and easier to prove, standard of fraud.

After Medinol, if a trademark owner knew or "should have known" it made a material false statement to the Trademark Office, the entire resulting trademark registration was subject to cancellation at any time. Since then, and following the reasoning in Medinol, the TTAB issued numerous decisions granting opposition or cancellation of trademark applications and registrations on fraud grounds, causing trademark owners and their attorneys great concern with what many have called a strict liability standard, not one based upon an actual "intent to deceive" the U.S. Trademark Office. Most of these cases have fallen into the "overinclusive" goods and services category of fraud cases -- basically, cases having sworn statements that the applied-for mark is currently in use in connection with all of the listed goods and services, when in fact, something less than all the goods or services are actually in use with the mark.

For those interested on the development of the trademark fraud issue, here is a pdf of my slides for a talk I gave in January 2008, at LAIPLA's Washington in the West continuing education conference.

As some of you may recall, during several of my talks over the last two years, I have figuratively flashed a yellow light and cautioned that the CAFC -- the TTAB's primary reviewing court --  has not been heard on the subject of trademark fraud for quite some time, and it has not been clear to me that the CAFC actually would endorse the TTAB's easier to prove fraud standard in the Medinol line of cases. Today the CAFC weighed in on the subject.

Earlier today, the United States Court of Appeals for the Federal Circuit (CAFC) decided In re Bose, a long-anticipated decision on what it takes to establish fraud before the U.S. Trademark Office. In doing so, the CAFC flashed a red light, indicating the TTAB had read "too broadly" prior CAFC precedent that had mentioned the words "should have known," and it specifically reaffirmed "that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO," and it further redirected the TTAB: "Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim."

So, after today, trademark fraud still exists, and it can be proven, provided it is "proven to the hilt," with "clear and convincing evidence," leaving "no room for speculation, inference or surmise," and so long as "any doubt must be resolved against the charging party." Basically, "deception must be willful to constitute fraud." [Here is a link to a pdf of the CAFC's Bose decision].

Hat tip to John Welch of the TTABlog for alerting his followers of the CAFC's decision published first thing in the morning today.

My more detailed perspectives about the CAFC's Bose decision will follow later.

Also, stay tuned, because we continue to await the CAFC's fraud decision that it is currently reviewing in Grand Canyon West Ranch, LLC v. Hualapai Tribe.

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v.              

                        (Medline Sterillium Rub)                                          (3M Avagard Surgical Scrub)

In a very recent false advertising lawsuit, Medline Industries is all lathered up, alleging that 3M Company is playing dirty in the surgical hand antiseptic marketplace by making false and misleading statements in advertising about 3M's Avagard brand surgical scrub and Medline's competing Sterillium Rub brand surgical hand antiseptic.

Here is a copy of the complaint filed in U.S. District Court for the Northern District of Ohio. As you will see, Medline alleges that 3M has made the following false and/or misleading statements of fact in advertising, in violation of Section 43(a)(1)(B) of the Lanham Act:

1. Sterillium Rub lacks approvals and/or benefits that it should have;
2. Sterillium Rub is of a lesser standard, quality, or grade than what it is;
3. Sterillium Rub does not meet FDA scrub test criteria;
4. Sterillium Rub does not meet AORN recommendations;
5. Sterillium Rub does not meet persistency requirements of the FDA;
6. Sterillium Rub cannot meet FDA criteria for persistency or cumulative activity; and
7. Avagard is the only waterless, brushless hand antiseptic that meets FDA persistency requirements. 

Paragraph 31 of Medline's false advertising complaint appears to be the most personally and potentially infectious:

During deposition testimony given in the related litigation styled GoJo Industries, Inc. v. 3M Company, United States District Court for the Northern District of Ohio, Eastern Division, Case No. 5:09-cv-1251-DDD, [the] Regulatory Affairs Manager in the Infection Prevention Division of 3M, admitted that statements contained in the marketing literature disseminated by 3M in which 3M compares Avagard to other surgical antiseptic hand scrub products, including Sterillium Rub, misrepresented the FDA scrub test criteria for surgical antiseptic hand scrubs. [She] confirmed this deposition testimony in her testimony before the Court at the preliminary injunction hearing during which the Court characterized her efforts to explain this testimony away as not at all persuasive (citations omitted).

Not only has Medline sued 3M for this alleged unlawful conduct, but it also has taken its claims directly to health care professionals and the surgical hand antiseptic marketplace, commencing a comparative advertising campaign of its own. Presumably, 3M will be closely scrubbing each of the literal and implied claims set forth in this advertising brochure distributed by Medline and BODE Chemie GmbH & Co.

So, stay tuned for developments concerning this interesting federal false advertising case.

Hopefully, we'll eventually be able to learn who comes to court with clean hands. 

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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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              VS.         

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

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

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

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

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

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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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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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I will assume that by now you have heard of the Crunch Berries lawsuit that was dismissed about a month ago in federal district court in California.  If not, you should read this post about it at the blog Lowering the Bar.  (The update is also quite humorous.)  The brief summary is that an individual filed a class action lawsuit against Pepsico, parent of Quaker Oats Company, under California's "Unfair Competition Law," among others, asserting, in essence, that Cap'n Crunch's Crunch Berries fraudulently or deceptively suggests that it contains real fruit, which it does not. 

On the serious side, this is only the most recent in a line of cases brought by the same group of attorneys who are apparently looking to strike it rich in tobacco-esque style litigation targeting a number of products that were the subject of an April 2007 study by the Prevention Institute titled, "Where's the Fruit?"  (H/T On Point.)  The gist of the argument is that the products mislead customers by suggesting that the products are more healthful than they really are. 

Under U.S. trademark law, a trademark can be refused registration if it deceptively misdescribes the goods for which it is registered, but CRUNCH BERRIES, FROOT LOOPS, BERRY BERRY KIX, FRUITY CHEERIOS, and JUICY FRUIT are all federally registered trademarks, and all were found by the Prevention Institute's report to contain no fruit.  It had not really occurred to me until I considered the Crunch Berries case, but the line between suggestion and deception in a trademark is not necessarily easy to draw:  a mark that is suggestive to one consumer may be deceptive to another.  While all of the above marks seem to fall on the suggestive side of the line to me, these fruit suits show that some think otherwise.  In today's sometimes absurd litigation environment, the line between suggestion and deception is one that marketers and brand managers cannot ignore. 

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On Monday, Karen blogged about her favorite 80’s trademark, the Guess Jeans logo. Many of you will also remember the famous Brooke Shields Ad where she uttered “Do you know what comes between me and my Calvins? Nothing.”  Jeans are big money in the United States with a market of approximately $51.75 billion in 2008 (according to the 3B Bharat Book Bureau website). Popular Jeans are often distinguished by their back pocket and such designs are often trademarked. 

Levi Strauss & Co. (“Levi”) often sues competitors for infringing their famous trademark of the back pocket design that they have been using for over one hundred and thirty years.

Unfortunately for Levi Strauss & Co., a California jury did not find the back pocket of Abercrombie & Fitch’s Ruehl brand jeans to infringe on Levi’s trademark. The jury did not find the two back pockets to be confusingly similar. District Court Judge White apparently agreed and denied Levi’s motion for a judgment as a matter of law that would overturn the jury’s verdict. This defeat will likely not stop Levi from aggressively suing other jean manufacturers to protect its trademark as it has in the past (filing lawsuits against Polo Ralph Lauren, Japanese companies Sugarcane, Samurai and Studio D’Artisian to name a few).

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Re-branding occurs all the time.

Re-branding occurs in business. Remember when Bell Atlantic became Verizon? Andersen Consulting became Accenture? How about when Philip Morris became Altria?  

Re-branding occurs in politics too. Just days ago, Judson Berger discussed a kind of "re-branding madness" consuming Washington, D.C. right now: "Terrorist attack is out. -- 'man caused disaster' is in." Our friends at Catchword Branding had a lot of fun with the political re-branding of Swine Flu.

Re-branding even occurs in the world of professional sports. Remember when the NBA franchise Washington Bullets became the Washington Wizards in 1997 out of concern that the Bullets name of some twenty-three years (1974-1997) had acquired "violent overtones".  How about the recent re-branding from the Seattle Supersonics to the Oklahoma City Thunder? Even the NFL has decided to recognize Cincinnati Bengal Chad Johnson's re-branding to Ocho Cinco.

Re-branding changes, according to Wikipedia, are "usually in an attempt to distance [the brand] from certain negative connotations of the previous branding." So, given the widespread meaning and understanding of "redskin" as "offensive slang" and that it is "used as a disparaging term for a Native American," given the pain the term has caused, and given that the team's helmets sport a Native American profile and not a certain variety of spud on them, why won't the Washington Redskins get on the re-branding bandwagon in our nation's capital? After all, even one of the attorneys at the same law firm hired by the team apparently has spoken out, read about the details here.

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Gripe sites have been around for almost as long as the Internet itself, and they tend to be difficult to shut down.  Conventional wisdom among brand owners is to send a threatening letter and play the odds that the (likely) individual with an axe to grind will not want to get sued by a corporation. 

There are two problems with that strategy.  First is the possibility that the letter will draw more attention to what is likely a sparsely visited site, or the person or entity running the gripe site will actually sue first, as Mike Morgan has done against Goldman Sachs.  Second, and by far the larger problem, is the failure to assess the root causes of the gripe site.  For many retailers, the roots can often be traced to a bad customer experience.  With Goldman, the issue seems to be more that Mr. Morgan is just looking for a place to vent.  Sometimes, the griper is just off the deep end.

As a usually disinterested observer, I find mild entertainment value in how clever the gripers can sometimes be with their domain names, like NoDaddy.com.  There is even enough gall and vinegar to fuel sites devoted to griping wholesale, like this one and this one (warning, these may be offensive).  Interestingly, I have yet to run across any sort of praise sites, like cokerocks.com.  Do any exist?

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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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Jennifer Bjorhus of the Star Tribune continues her close coverage of the Polaroid bankruptcy saga. For prior Polaroid posts, see here and here. In her latest report, here, the Court appointed receiver in the Polaroid bankruptcy, Doug Kelley, is quoted as saying "It will take an intellectual property genius to tell us whether the rights go along [with a sale]."

Bjorhus reports that 'Polaroid failed to obtain copyrights to the work it meticulously collected over the years by lending photographers film and equipment in exchange for a few sample works in return." Presumably what she means is that there are no copyright "registrations" covering the works in question, since copyright exists automatically upon the creation of "an original work of authorhip," once the work is "fixed in a tangible medium of expression."

Apparently the $10,000 fee that was paid to Sotheby's to assess the value of the art did not consider the question of whether Polaroid owns the underlying unregistered copyrights in any of the original artwork.

Although it may be beneath the perspective of the requested "genius," the resource below the jump might be a place to start.

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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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It appeared Polaroid had a new owner as of last Thursday, but not Patriarch Partners who we posted about before here, so it now appears, it's not over until its over. The latest is here.

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

Daily Bread reports on the lawsuit too, here.

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

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

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

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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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Remember what you were doing back in September 2006? 

Keyword ad trademark infringement lawsuits were being filed left and right (that hasn't changed much). The hot issue at the time: Does the sale (by a search engine) or purchase (by the competitor of a brand owner) of another's trademark -- as a search engine keyword -- constitute "use in commerce," a necessary element of a successful trademark infringement lawsuit?

Search engines and other defendants were hoping that the technical "no use" defense would permit a short-circuiting of these growing number of lawsuits. In fact, this hope was fueled on September 28, 2006 when Google had just prevailed in dismissing such a lawsuit brought by Rescuecom.

A federal district court in New York had dismissed the Rescuecom suit, saying that the sale of Rescuecom's trademark as part of Google's AdWords program did not constitute a "use in commerce," so there was no need to even consider the question of likely consumer confusion. For the next few years, other courts followed suit (mostly in NY) and similarly short-circuited and dismissed such claims.

As of last Friday, two and a half years after Google's initial win, and a full year after oral arguments were made to the Second Circuit Court of Appeals, Rescuecom may be singing, "We're back!"

In reversing the September 2006 dismissal, the Second Circuit Court of Appeals found sufficient trademark "use" for the case to proceed, relying on Rescuecom's allegation that "Google displays, offers, and sells Rescuecom's mark to Google's advertising customers when selling its advertising services. In addition, Google encourages the purchase of Rescuecom's mark through its Keyword Suggestion Tool." As such, the Rescuecom case will proceed and is sent back to the federal district court in New York to determine "whether Google's actual practice is in fact benign or confusing."

The Trademark Blog provides a helpful link through Scribd to obtain a copy of the court's 15-page decision (including the 19-page Appendix) here.

Professor Eric Goldman's detailed analysis can be found at his Technology & Marketing Blog by clicking here. 

You might remember my keyword advertising post on DuetsBlog from a couple of weeks ago here.

Bottom line: It appears that this latest ruling will pave the way for decisions that actually rule on the critical likelihood of confusion question.

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"Buy low, sell high. Fear? That's the other guy's problem."

Can you name the origin of that quote?

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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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They got it right in 1918. The Supreme Court pronounced that although facts themselves cannot be copyrighted, a company can sue when a competitor copies time-sensitive information or breaking news. Déjà vu in 2009—the Associated Press (AP) was again allowed to pursue its claim. Although this time it is in a new venue: the Internet. A federal judge in New York allowed the AP to sue two companies who took AP articles with "hot news" and deviously removed the reference to AP and sold them to its own customers. Unfortunately, AP's trademark claim did not fare so well. The court dismissed that claim because a mere reference or description of the AP brand name did not cause confusion that the AP was affiliated with the defendant companies' "hot news." You win some, you lose some.

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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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I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins. Being able to own and enjoy exclusive rights on "day one"—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything. Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed). On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all. So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.

As the opening paragraph suggests, trademarks are not all created equal. Inherently distinctive trademarks are the obvious target, the gold standard, for brand names because they are always recognized and rewarded with immediate legal rights. Courts view these marks as sufficiently creative and unique to presume they function as trademarks, believing without proof they automatically identify, distinguish, and indicate source. Inherently distinctive word mark examples include KODAK for film (coined trademark), APPLE for computer (arbitrary mark), and COPPERTONE for suntan oil (suggestive mark). Descriptive marks, on the other hand, while capable of being owned and acquiring distinctiveness, are not inherently distinctive. In fact, they are inherently lacking in creativity, so those who pick (not create) these designations must live with the uncertainty of when, if ever, exclusive rights attach. Owning them takes longer, is more expensive, and is more difficult. This is because the law refuses to presume a trademark function with the use of descriptive terms. Nor does the law reward those who choose to "hit the consumer over the head" with such a blunt device (would-be trademark); one that immediately and overtly describes something about the product. As a consequence, picking (not creating) a descriptive mark, brings a state of limbo for an unspecified period of time, where there can be little or no control of destiny. These folks typically have to hope others voluntarily steer clear until after acquired distinctiveness is achieved. For example, the CALIFORNIA PIZZA KITCHEN mark was used for six years before those words were owned as a federally registered mark. A lot can happen in six years to get in the way of obtaining exclusivity. Generic terms, even worse than descriptive ones, apparently "hit the consumer over the head" so badly with the obvious connection to the goods that they are incapable of being trademarks—they cannot be owned, they are simply part of the public domain, free for all to use. Examples include LITE for beer and BRICK OVEN for pizza—both name entire product categories, they don't identify, distinguish, or indicate source. There is simply nothing creative about them.

So, if "hitting the consumer over the head" is not a rewarded activity for branding professionals, where is the other half of the lesson, the promised paradox piece? Actually, there is a time and place for everything and being blunt, direct, and overt is not always a mistake for marketers. At times, bluntness and overtness is not only rewarded, but an important component for legal success. The key is knowing and understanding those circumstances where "hitting the consumer over the head" is appropriate, beyond repeated purse-snatching or shoplifting episodes, of course. This is where the paradox comes into play.

As you may recall, we previously blogged about some types of non-traditional trademarks here. Non-traditional trademark formats extend far beyond words and logos, encompassing any other subject matter that may be perceived by one or more of the five senses, provided they still identify, distinguish, and indicate source. Color, product configuration, product packaging, uniforms, restaurant interiors, building exteriors, sound, touch, scent, and taste, all have potential. What we haven't explained before about many types of non-traditional marks is that the law can be quite skeptical of them, and as a consequence, proof that they actually function as trademarks can be helpful in easing the skepticism. When such proof is required, the target, or the gold standard, is being able to point to "look for advertising"—consumer communications where one directly informs of an intention to treat non-traditional subject matter as a trademark. So, "hitting the consumer over the head" with this blunt and overt "look for" advertising can be necessary and important, if not critical. Because the Trademark Office or a court might be highly skeptical of a claimed trademark in the polka dot background of a product label, it may want to see evidence that the claimed trademark owner was blunt in stating its intentions on packaging and in advertising, "Look for the Polka Dot Label, as a sign of high quality milk from XYZ Company." Perhaps the mark is the container itself, so "Look for the unusual shape of our milk container to be sure you are getting high quality milk from XYZ Company" is needed. These very overt kinds of marketing statements are a common element of many successful efforts to protect various non-traditional, yet visual trademarks. Most such statements are boring, pedestrian, and not very creative. They seem to distract from other important messages to convey. One good exception is the "What Can Brown Do For You?" tagline, used by UPS, to reinforce a more creative form of "look for" advertising to acquire exclusive rights in the color brown for the various services it provides.

As non-traditional trademarks proliferate, the brand new challenge of creativity will be in developing the legal equivalents of "look for" advertising when marks touching the other non-visual senses are involved. Using the admittedly clunky "look for" phrase won't even work when something other than a consumers eyes need to experience the claimed mark. The challenge there will be in coming up with creative and engaging ways to be overt about the intention of having consumers experience the subject matter in question as a trademark.

So, when creating and building new brands, consider whether being blunt and overt or subtle and suggestive, is the right course of action, to achieve your desired result.

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Andy Rooney from CBS’ Sixty Minutes made famous, “Have you ever wondered?” The more basic threshold questions should have been, “Did you even notice?” and “Does anyone even care?” Mr. Rooney had a knack for making us take notice, perhaps after the fact, because we never cared to wonder, at least, before he asked in the first place. In the raging world of keyword advertising, all three burning questions are itching for answers, so here goes, in reverse order.

First, almost everyone cares about online keyword advertising today. In fact, the GEICO® caveman may be the only one that doesn’t, but GEICO corporate certainly does, given the large keyword trademark infringement lawsuit it had against Google®, discussed here. Keyword advertising is big business ($21.1 billion in 2007, click here for FTC report) for the search engines that sell the advertising (i.e., Google®, Yahoo!®, MSN®, ASK®, AOL®, Lycos®, and AltaVista®, among others). Given this, the FTC certainly cares and has even issued alerts on the subject. Domainers also care a great deal, as do others with more traditional business models that pay for preferred listing of their keyword ads. For proof that Utah seems to care the most about keyword ad regulation, click here. Last, but certainly not least, trademark owners care a lot about keyword advertising, especially when competitors purchase keywords that match or mimic their valuable trademarks. (For a detailed catalog and analysis of trademark litigation showing how much litigants and the courts care about keyword advertising, check out the Search Engines links on The Trademark Blog and Professor Eric Goldman’s Technology & Marketing Blog.) 

Second, as to the “did you even notice” question, it is a frightening statistic, but even as late as 2002, the FTC was warning search engines a “Consumers Union national survey found that 60% of Internet users had no idea that certain search engines were paid fees to list some sites more prominently than others in their search results.” This caused the FTC to recommend that search engines “clearly and conspicuously” disclose when paid-for placements appear among unbiased search results to avoid the potential for “consumer deception.” Even now, there still must be an appreciable number of reasonable consumers who have never noticed the subtle search engine phrases like “Sponsored Links,” and don’t know what they are, much less appreciate that certain search results obtain priority and top-line status because an advertiser has paid for it. What consumers actually notice and understand about the appearance of a search engine’s results-page will be critical in deciding “likelihood of confusion” in future keyword trademark cases. 

Finally, taking the first question last, “have you ever wondered” why your favorite search engine uses a phrase like “Sponsored Links” or a similar one, instead of more certain phrases like “Paid Advertisements” or “Paid Advertising Results”? If not, I’m predicting much attention will be given by litigants and the courts to search engine use of these discrete “sponsor”-type “notice” phrases. After all, if lawyers must prominently display the blunt “Advertising Material” phrase when soliciting certain people (“Sponsored Reading Material” simply won’t cut it), why is it that search engines are able to freely use seemingly ambiguous phrases like, “Sponsored Links” (Google® and AOL®), “Sponsored Sites” (MSN®), “Sponsor Results” (Yahoo!®), “Sponsored Results” (Ask® and Lycos®), and “Sponsored Matches” (AltaVista®)? They are ambiguous because they beg the question of “sponsored” by whom? Equally confusing is the fact that the federal trademark statute protects not only against “likelihood of confusion” as to source, but sponsorship too. As such, it is worth examining whether these curious “sponsor”-type “notice” phrases actually reduce confusion or magnify likely confusion as to sponsorship, at least. No doubt, a great deal of time and effort will be devoted to surveying how consumers understand these phrases, if it already hasn’t been done yet behind closed doors. 

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