How have we all been duped for so long?  According to the author of the Forbes article, its becaue Kobe is not protectected as a trademark or otherwise regulated by U.S. law; accordingly, restaurants and grocery stores can simply stick it on the label with no consequences.  With due respect to the author, I disagree.

Trademark law has a policy of avoiding “geographically misdescriptive” marks.  Such marks are not eligible for registration and potentially could give rise to a false advertising claim.  This whole fiasco calls to mind a case from the 1960′s where the a court considered whether or not a defendant could call its cheese “Roquefort” cheese even though the cheese did not come from the Community of Roquefort in France.  Granted, the Roquefort case involved slightly different legal issues, as the Community of Roquefort had registered a certification mark in the United States.  Certification marks typically mean that someone has confirmed that the product is genuine.  So, in the case of cheese, for example, the Roquefort mark certifies that the cheese actually comes from Roquefort, France.

Here, it does not appear that Kobe has not been registered as a certifiction mark in the U.S., and this is unsurprising given the fact that the genuine article does not seem to be sold in the U.S.  However, there are plenty of Kobe beef imitator marks that have been registered and would appear to be geographically misdescriptive of the goods provided.  I, for one, feel deceived.  How about you?

This raises an issue which occasionally arises in defense of intellectual property infringement claims, but has a sketchy history when used as an affirmative claim for relief: intellectual property misuse.  Patent misuse has a relatively well-developed history in United States law.  Trademark misuse, however, has generally lost ground as a basis for defending against trademark claims.  (See here.)  Ultimately, it appears that Mega Brands did a good job here of avoiding explicitly characterizing its claim as one for “trademark misuse,” since courts have recognized that its not an affirmative claim for relief.  Nonetheless, in my view, misuse of trademark is the functional basis for the antitrust claim in this case.

The interplay between intellectual property rights and antitrust law is always interesting because there is an inherent conflict.  Intellectual property rights are, in essence, legalized monopolies.  Accordingly, parties need to be make sure they are not carelessly exceeding the scope of those legalized monopolies, lest they get in trouble for unlawful monopolization.

As legend has it (or according to the United States Court of Appeals for the Seventh Circuit), the March Madness mark originated not with NCAA, but with the Illinois High School Association.  Since the 1940′s, IHSA had been using and licensing the mark in connection with the Illinois high school basketball tournament.  In 1982, when CBS began televising the NCAA tournament championship games, everybody’s favorite Brent (Musburger) used the the term to refer to these games.  The term caught on and became widely used in the media and by the public.  In 1993 or 1994, the NCAA began licensing the term for use on goods and services related to its tournament.

The first lawsuit relating to March Madness occurred in the 1990′s, when the IHSA sued a licensee of the NCAA over use of the mark.  The court there ultimately concluded that similar to a generic term, IHSA’s purported trademark had been appropriated by the public to refer to something other than the IHSA’s basketball tournament.  It had become a “dual-use” term which precluded the IHSA from asserting its rights against uses relating to the NCAA’s basketball tournament.  This illustrate a mark holder needing to protect its mark, or lose its rights:

A serious trademark holder is assiduous in endeavoring to convince dictionary editors, magazines and newspaper editors, journalists and columnists, judges, and other lexicographically influential persons to avoid using his trademark to denote anything other than the trademarked good or service.  These efforts sometimes succeed.  IHSA was not assiduous.

***

There is no magic in labels.  Let “March Madness” be called not a quasi-generic term, or a term on its way to becoming generic, but a dual-use term.  Whatever you call it, it’s a name that the public has affixed to something other than, as well as, the Illinois high school basketball tournament.  A trademark owner is not allowed to withdraw from the public domain a name that the public is using to denote someone else’s good or service, leaving that someone and his customers speechless.

Although basing its decision on principles similar to those involving generic marks.  The end result was substantially different.  The Court did not conclude that no one could own exclusive rights in “March Madness,” but essentially concluded that there were co-extensive rights.  Following the Seventh Circuit opinion, the IHSA and NCAA eventually worked together and formed an entity called March Madness Athletic Association, LLC.  MMAA has successfully asserted its rights in court on a number of different occasions.

So a question to all you trademark buffs out there:  Isn’t it a bit incongruous to the concept of “exclusive rights” to have distinct organizations claiming exclusive rights in an identical mark, but then agreeing to jointly exploit the mark regardless of any public confusion?

Recently, I heard a news report on the radio about the purported adverse health impacts of food dyes and wondered whether this might eventually be an additional burden to trademark rights in colors. (Examples of the arguments against food dyes are here, here, and here.) As you will note from the articles, this is certainly not a new debate. But this most recent report sparked my interest because it quoted a woman as saying (and I’m paraphrasing) that, “Food dyes should be banned because they create potential health risks with absolutely no benefit.” I generally have a strong, visceral and negative reaction to unequivocal statements of absolutes, so I thought about it a little bit.

If food dyes actually had “absolutely no benefit,” then they wouldn’t exist and/or be used. They do have a benefit, albeit not health related, in product differentiation and branding. Think soft drinks, cereals, cough syrups, etc. Now I’m not personally going to opine on whether this particular benefit outweighs the potential health risks, but I am going to raise the question as to whether it would be appropriate for the United States Patent and Trademark Office to consider these potential risks in allowing or refusing trademark registration.  The Lanham Act generally precludes the registration of offensive marks:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a)Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

There is, however, nothing in the statute that would expressly preclude registration of marks that pose potential adverse health consequences.  My initial reaction is that the evaluation of adverse health impacts is territory that we would prefer the USPTO avoid, but I’m interested in what everyone else thinks.  Do we want and can the USPTO make such determinations in allowing or refusing registration?

After Tebow’s miraculous (lucky) playoff win against the Pittsburgh Steelers, at least one person (and likely many more) arguably disagreed with me by questioning whether Tim Tebow was the next $10 million man.  To be sure, Tebow’s current ”buzz” stats are impressive, as set forth in the following quote from the article:

Mr. David’s colleagues at The Marketing Arm are responsible for the Davie-Brown Index, which measures celebrity popularity and buzzworthiness in several attributes. In the latest research, Mr. Tebow now ranks among the top 85 celebrities in the world in the Trendsetter attribute, on par with George Clooney, Rihanna, and Justin Timberlake. In Trust, he is in the top 75, along with Harrison Ford and Duke University basketball coach Mike Krzyzewski. And in terms of Influence, Mr. Tebow is now in the top 40 of 3,000 celebs in the DBI, on par Tom Hanks, Lady Gaga, Taylor Swift, Jennifer Aniston and Steven Spielberg.

There’s no debate that Tebow’s hot right now.  But does that mean companies should be lining up to throw money at him for endorsements?  I still say no.  SI.com put together a list of the top 50 sports earners for the year 2011.  Included in the $10-15 million dollar endorsement range are the following perennial sports superstars:  Peyton Manning, Tom Brady, Kobe Bryant, Kevin Garnett, Dwight Howard, Dwayne Wade, and Derek Jeter.  Checking in at substantially lower amounts are the perennial sports superstars Alex Rodriguez (who’s image has admittedly taken a hit), Albert Pujols (arguably one of the top ten greatest hitters of all time), and Eli Manning (who may very well get a bump after Sunday’s Super Bowl performance).  In my mind, these are sports stars who can be expected to be near the top of their respective leagues year-in and year-out.  Tebow-mania has shown absolutely no staying power and I think its madness to assume that he will be around long term at this point.

Perhaps I’m wrong and the temporary white hot heat would yield benefits to a company seeking his endorsement.  In the interest of full debate, I pose the following question:  Is it better to have an endorser that will burn out or slowly fade away?  Stated differently, when seeking a sports endorsement deal, would you prefer a long term partner or a quick sales booster?  My preference would be to build something that lasts.  What’s yours?

As a New York Times article recently reported, counterfeit merchandise is becoming an increasingly expensive problem for companies and consumers alike. We are entering an era where Counterfeit Clause no longer simply targets luxury items and entertainment media. Instead, “We live in an age where literally everything, from medicine to air bags to circuit boards, are being counterfeited.” 

One website, Havocscope.com, reports that counterfeit goods represent nearly $600 billion of sales per year. These goods include such harrowing items as medication (Oh my!) and airplane parts (Yikes!). This counterfeiting negatively impacts both consumers and companies alike. As consumers, we want to know that a trademarked product is safe and is backed by the company that we’ve come to know as the source of the product. As companies, maintaining the integrity of the information exchange with our customers is of paramount importance, as is avoiding the siphoning of sales. Counterfeiting hurts everyone except counterfeiters.

The sheer magnitude of the problem might make some brand owners wonder if a War On Counterfeiting is akin to the unwinnable War on Drugs. However, there are relatively inexpensive and practical steps that can help. First and foremost, “knowing is half the battle.”   Familiarity with and control of manufacturers, distributors, retailers, and anyone else in the supply chain is a critical first step in maintaining brand integrity. Second, depending on your product, there may be anti-counterfeiting measures that can assist in readily distinguishing between authenticate and counterfeit products. Such measures provide significant assistance in getting counterfeit products out of the market. 

As with all business decisions, there is a cost benefit analysis concerning the scope of your particular problem, if any, and the cost of a solution. However, it is critical that brand owners at least consider that implications of counterfeit products in today’s marketplace.      

For those of you who aren’t sports fans, Tim Tebow is the current quarterback for the Denver Broncos. By all objective statistical measures, Tim Tebow is AT BEST a slightly below average NFL quarterback. However, for reasons that are inexplicable, the Denver Broncos have won all but one game that Tebow has started this year with almost every single win occurring in dramatic fourth quarter comebacks. As noted by one esteemed author on the always entertaining sports/cultural commentary website, Grantland, Tim Tebow is the “most (curious, complicated, downright strange) polarizing athlete of our age;” his status as such likely being attributable to his outward (although not necessarily overbearing) Christian beliefs and his penchant for succeeding where rational analysis suggests that he should fail.

He’s spawned a new craze – Tebowing – which is similar to the flash in the pan that was known as “planking.” He’s developed a rabid fan base and an equally rabid anti-fan base. At this point, Tebow is white hot in the sports world and is probably the second biggest story of the NFL season behind the hated Green Bay Packers’ quest for a perfect season. So this raises the following question: In the world of personal branding, is Tebow the next Pet Rock or is Tebow the next Apple? The answer is, of course, yet to be written, but it would seem that Tebow is probably falling into the “fad” pile. 

According to Joel Best as reported in Discovery News, the anatomy of a fad consists of three essential parts: emerging (the fad starts small and is picked up by “early adopters”), surging (the fad quickly gains momentum as promoters rush to exploit the fad and more people see it) and purging (the “early adopters” tire of the fad and look for the next new thing, and the public gradually loses interest). It would seem that each of these is likely to apply to Tebow. The emerging phase with the early adopters likely arose from Tebow’s success as a college quarterback and the transfer to the Denver fan base. The surging and “quick momentum” is demonstrated by the mere existence of “Tebowing.” Finally, the purging phase is likely to occur when statistical probability catches up with Tebow and the remarkable winning ceases.

Given this, if I were promoting a product, I wouldn’t be buying into the Tebow brand long term.  

My wife and I were in Puerto Rico this past week for our one year wedding anniversary.   Please hold your applause. For those of you who’ve never been, the above photo is actually of Fort San Felipe del Morro taken from the adjacent Fort San Cristobal in Old San Juan.

Because I’m an attorney (and therefore naturally dull), I caught myself wondering what the trademark protection environment was like down in Puerto Rico. This spontaneous and somewhat bothersome brainwave was propagated as our tour bus drove past a Puma service station which flew a logo that I thought was strikingly similar to Puma clothing. 

As you’ll note, they actually don’t look that similar, but the damage had already been done and my brain began to whir.  I thought to myself, “Self, as a Commonwealth of the United States, is Puerto Rico subject to all federal laws, including trademark laws, or does it have its own framework for intellectual property protection?”

It turns out that Congress specifically directed that United States laws be applicable in Puerto Rico. See 48 U.S.C. §734. This would include the Lanham Act, which provides federal trademark protection in the United States. My inquiry, however, did not end there. I also wanted to know what protection, if any, Puerto Rico might provide in addition to the federal law. It actually turns out that it is relatively substantial.

While the point of this posting was primarily to brag about my trip to Puerto Rico, there is another point. One should always consider the various avenues of protection that might be available for intellectual property in your particular locality. Although it is not always the case, a state or territorial registration might provide added benefits that a federal registration alone cannot.

Apparently this commercial was a winner in a short film contest.

Despite the success of the commercial, Chevy has apparently been reviewing the "Chevy Runs Deep" campaign based on concerns that it doesn’t sufficiently "resonate" with consumers.  (See here and here.)  Personally, I love the "story" aspect of the campaign and the efforts to make people think of Chevy as something other than a way to get from point A to point B.  However, does this actually sell more product?  It seems that in a saturated market where competitors are constantly touting features, an ethereal approach such as Chevy’s has the strong potential to miss the mark. 

I think an emotional response is a good component to have in a branding campaign, but there’s a fine balance that needs to be attained between emotional response and actual information.  After all, if I’m going to be dropping tens-of-thousands of dollars on a vechile, I want to know what my money is getting me.  The commercial, while entertaining, doesn’t necessarily make me want to buy a Chevy.  So, if you were Chevy, where would you go from here?   

While I didn’t read the decision in its entirety, I understand that the judge essentially considered Arenas’s ex-fiance’s exploitation of her relationship with him as “fair use” of Arenas’s image. (Personally, I would suggest an argument could be made that it was just compensation for putting up with him.) The judge also rejected his claims that his image would be tarnished by citing to Arenas’s already seedy image. Those who are familiar with Arenas’s antics will recall that he was once suspended indefinitely for bringing guns into the locker room when he was a Washington Wizard. He also has a history of posting incredibly offensive tweets, as documented here. My personal favorites are:

good mornin twitter fam..i need me a slave to make me breakfast in the mornings..i guess yall might call them girlfriends…im hungry

#youknowyouugly if ur a SINGLE MOTHER…lmaoooooooo sorry but thats funny…Single mothers out there its a joke…I wanted to be the one with the best line.

This raises two observations. First, there apparently is a burgeoning niche practice for Basketball Wives related litigation. Chris Bosh has both sued and been sued. Dwight Howard has also been sued.   Second, while athletes need to recognize that they can become a personal brand, they can’t rely on branding law to prevent the world from learning they are a &%$!&.