Not surprisingly, Churchill Downs has every reason to keep the American public charmed by this two-day event; in 2010, Forbes named the Kentucky Derby one of the “World’s Top Sport Events,” raking in $67 million a year.  Of course, part of the way in which the Kentucky Derby retains its cache – and maintains its value – is by protecting its brand.  Churchill Downs currently owns 24 live and dead records for the KENTUCKY DERBY mark.

But the allure of the Kentucky Derby comes from more than just the KENTUCKY DERBY – and it benefits more than just Churchill Downs.  For example, there’s DERBY-PIE, a chocolate-and-walnut-tart concoction.  According to one source, the owner of the DERBY-PIE mark has fought off numerous parties who would infringe its mark, forcing other companies to alter their recipes slightly and/or use a different name (such as “Pegasus Pie”, a reference to the Pegasus Parade at the Kentucky Derby Festival and May Day Pie, in reference to the First Saturday in May, the day of the Kentucky Derby).  All in all, the Trademark Office lists 84 records containing the term DERBY, only 24 of which are owned by Churchill Downs.

While I probably won’t watch the Run for the Roses, I’ll wager that I, along with thousands of others, will enjoy what might be the most famous thing to come out of the Kentucky Derby – a mint julep.  Unlike some cocktails, like the DARK N’ STORMY, no one claims exclusive rights in the make-up of this drink.  And yet, if any one organization could, it might just be the Kentucky Derby, which sells over 120,000 of these cocktails every year.

You could start with these:

And add these:

Or maybe you prefer these:

And what about these?

And some of this for a hint of the tropics:

And then maybe you should add some of this, just to keep it from going brown:

Wait a second, you might be thinking, it’s just plain old fruit, so what’s with all of the brand names?

According to a fascinating series on citrus on the Smithsonian’s Design Decoded blog, one man’s generic commodity may be another man’s consumer packaged good, ready to be branded and marketed to the masses.  The blog explores how agribusiness and marketing have worked hand in hand to take items often considered to be interchangeable and transform them into products that consumers may ask for by name.  In the past, I’ve touched on how inventors of new products, including new, hybridized food products, such as the SweeTango and Zestar! apple varieties developed by the University of Minnesota, face challenges in obtaining intellectual property protection and

But the same issues go for “regular” varieties of fruits and vegetables – your Chiquita bananas, your Sunkist oranges, and the like.  It’s an interesting discussion – does a Cuties brand mandarin taste or peel better than a non-branded mandarin?  Are you more likely to buy a Dole brand pineapple than fruit from another, possibly no-name/non-branded source?

Update:
According to a fascinating series on citrus on the Smithsonian’s Design Decoded blog, one man’s generic commodity may be another man’s consumer packaged good, ready to be branded and marketed to the masses. The blog explores how agribusiness and marketing have worked hand in hand to take items often considered to be interchangeable and transform them into products that consumers may ask for by name. In the past, I’ve touched on how inventors of new products, including new, hybridized food products, such as the SweeTango and Zestar! apple varieties developed by the University of Minnesota, face challenges in obtaining intellectual property protection and avoiding use of descriptive marks.

Yet, whenever I travel abroad, I am reminded of how much one can actually “get away.”  One of  America’s biggest exports (for better or for worse) is its culture and its brands.  Both hotel snack bars and the corner stand selling fresh coconut water on the beach have signs for Coca-Cola (where even the cursive “C”s of the mark are admirably rendered in Thai).  I counted at least three Starbucks in Patong Beach alone.  And in addition to numerous signs for Wall’s (a UK-based ice cream brand), I found at least one Dairy Queen.  It’s a small world after all, perhaps unsurprisingly so.

But, there was one logo I was not expecting to see.

Look familiar?  Does this refresh your memory?

We’ve discussed the Obama campaign logos a few times before on the blog, here and here.  In these other instances, though, we discussed the use of plausibly confusingly similar logos in connection with related goods and services.  In contrast, the Serenity resort is using the logo in connection with hotel and restaurant services, which are arguably highly unrelated to the services offered by the Obama campaign.

What do you think of this use of the Obama logo, on these services, abroad?

And then there’s the clothes.  And the jewels.  And the hairstyles.  After years in a recession, it’s not so far-fetched to understand why audiences would want to spend a few hours lost in a world where characters not only get dressed for dinner (and have a fleet of servants to assist them) but get dressed for dinner in such amazing stuff.   The fashions of the show have “started a trend” towards fashions of the 19-teens, reports one blog, while several others comment that the clothes are “to die for.”

Given the fervor around the show and the apparent excitement among its viewers to live a bit of Downton Abbey in their own lives, it’s no surprise that some want to capitalize on the trend.  Websites have sprung up to report on how one can dress like the ladies of Downton, pointing readers to shops and websites where they can recreate some of Lady Mary’s (the eldest of the Downton daughters and the romantic lead) looks.

Unlike those websites that simply instruct viewers on how to emulate the fashions of Downton by locating third-party goods that evoke the Edwardian era, PBS was recently in hot water over trying to sell jewelry inspired by the show, due to the fact that PBS tied its jewelry line directly to the show.  The “Downton Abbey Collection,” recently pulled from PBS’s shopping website, featured brooches, earrings, cloches, and other finery that at least looked like it was of Edwardian vintage.  Surprisingly, it turned out that PBS did not have permission from the producers of the show to sell jewelry tied into the show.

Carnival Films, the maker of Downton Abbey, owns two pending applications for DOWNTON ABBEY, shown here and here, for, among other goods and services, jewelry.

A spokesperson for Carnival Films downplayed the issue, stating that “[t]here is no dispute, it was a mistake on PBS’s part [to identify the jewelry with the show’s character’s].”  Carnival’s request was framed as “part of an ongoing conversation with PBS. It isn’t a big issue. We didn’t want viewers to think this was the jewelry that the characters wore.”  No doubt about that – the characters of Downtown Abbey probably wouldn’t be caught dead in anything but genuine gems.

Since Susan’s post about the introduction of ICANN’s new program here, ICANN has been busy putting together a slew of information about how organizations can obtain a generic top level domain, including an exhaustive 349-page guide.  Here are some of the highlights:

• Any established public or private organization anywhere in the world can apply to create and operate a new generic Top-Level Domain (gTLD) registry.
• An applicant for a new gTLD is applying to create and operate a registry business supporting the Internet’s domain name system. This involves a number of significant responsibilities, as the operator of a new gTLD is running a piece of visible Internet infrastructure.
• Trademark owners cannot reserve their trademarks.  However, registries will be required to operate sunrise or intellectual property claims services for the protection of trademarks.
• Certain terms, other than private party trademarks, are off-limits.  These include “AFRINIC,” “RIPE,” “INVALID,” and “WHOIS.”
• No numbers or dashes – new gTLD’s must consist entirely of letters.
• Formal objections to an application – including objections based on trademarks – will begin two weeks after the close of the application window.

Find out more about the whole shebang here.

Regardless of what you may think about the movement – that it is democracy in action or just a bunch of people who need to “take a bath and get a job” – there is no doubt that the term “occupy” means more than just “to take up space.”  To say “occupy,” these days conjures up any of a number of images and meanings, from concepts as direct as “the 99 percent” to a funny-and-disturbing-all-at-the-same-time meme about a college cop casually aiming pepper spray at anything that crosses his path. 

Given the amount of ink that could be spilled on this subject, I’ll limit my post to one of the most notable trends (from a trademark perspective) at hand in connection with the movement: the explosion in trademark applications including the term “occupy.”  Since early October, 28 trademark applications have been filed that include the word “occupy”; of these, 21 are for clothing of some kind. Most notably, there are three pending applications for OCCUPY WALL STREET or OCCUPY WALL ST.

Notably, both Fer-Eng Investments and Occupy Wall Street applied for OCCUPY WALL STREET on October 24 and continue to hold live applications; the owner of the OCCUPY WALL ST. application, filed on October 18, has already abandoned the application, presumably at the behest of one of the other applicants.  Occupy Wall Street’s application serial number (85454550) is lower than that of Fer-Eng’s (85454831), reflecting Occupy Wall Street’s act of filing just a few hours ahead of Fer-Eng.

I can’t discuss these trademark applications without addressing the underlying implication of these filings – namely, that trademark registrations can be obtained only once the applied-for goods or services are offered for sale in commerce.  The attempt to protect and subsequently capitalize on the Occupy movement will undoubtedly leave a bad taste in the mouths of some protesters and a smirk on the lips of those who may equate a democratic protest with an “anarchic movement.”  Nevertheless, the rush to the Trademark Office makes one thing abundantly clear: words have value, in more ways than one.  And neither socio-political movements nor capitalist enterprises have a monopoly on that.

Now, a licensing company has agreed to pay $1.3 million to use the name Tavern on the Green for restaurants outside of metropolitan New York, under a deal approved by Tavern’s bankruptcy trustee.  Under the terms of an earlier settlement, “metropolitan New York” is defined as including New York state, Connecticut, New Jersey, and part of Pennsylvania.  The new licensing company, Tavern International, can license the name in connection with restaurants and products outside of this area and on products. 

The former operators of the restaurant had begun using the name on a line of salad dressings, but the judge never ruled on the former owners’ right to use the name in this capacity.  So, it remains to be seen whether “Tavern on the Green”-brand condiments, prepared foods and other items will hit the store shelves.  Should readers of this blog in California, Maine, Florida and all points in between come across such a product, please let us know. 

But what about designs that used to be part of national flags and, once upon a time symbolized a nation, but are no longer?  As the recent example of South Sudan shows, new boundaries – and nations – can emerge at any time, fundamentally changing the maps we use and the countries of which such nations used to be a part. 

While I am not aware of any adjudication of this issue in the United States – please let us know if you do – the European Union has dealt with this issue recently.  Specifically, the EU General Court rejected an attempt by Couture Tech Ltd. ("CTL") to register a trademark for the Soviet sickle and hammer for use in connection with a variety of goods and services in Classes 3, 14, 18, 23, 26 and 43.  These classes include personal care products and restaurant services, among many other goods and services. 

Under EU law, a trademark may not be registered if doing so would be contrary to public policy, and that this standard must take into account the views of the relevant public in the EU, even if the relevant public resides in only one Member State.  In particular, the court noted that both Hungary and Latvia ban the use of certain symbols such as the hammer and sickle as trademarks.

The applicant argued that the political connotation of the former USSR’s coat of arms had been diffused over time into something other than a political symbol.  However, although the boundaries of the Soviet Union disintegrated in 1991, the court found that these symbols continue to be viewed by a significant portion of the population in Hungary – namely those persons who lived during the existence of the USSR – as political symbols.  As such, the court refused registration of the mark.

Beyond the overt political connotation of an entwined hammer and sickle, the use of such a symbol strikes this author as a sure-fire way simply to confuse or offend one’s customers to the point of refusing to buy one’s product.  The applicant argued that it’s use of the hammer and sickle as a commercial trademark is "avant-garde."  While making commercial use of a symbol formerly used to advance a communist regime may indeed turn the original meaning of the symbol on its head, this author wonders how many consumers would give a mark such thought before decided whether or not to buy the product or service with which the product is used. 

What do you think of co-opting political symbols for commercial use?

Of course, there is a trademark lesson here. While John Montagu, being a nobleman and all, probably wasn’t interested in monetizing his system of placing meat and vegetables between pieces of bread to create a tasty and portable meal option, and while the unit of measurement that bears Nikolai Tesla’s name is neither a good nor a service, only some of the other inventors named in the slide shows have obtained trademark protection for their revolutionary goods, while many of the others have, perhaps unwittingly, allowed their names to become the generic for the goods at issue. One of the basic tenets of trademark usage is that a trademark should be used as an adjective to describe a noun – the generic term for the goods or services at issue. Trademarks should always be used as names for brands, not names for things. The cost of using a trademark as a noun, generically, is considerable – generic terms simply aren’t capable of obtaining trademark protection, as generic terms must be free for all to use.

For example, both Zamboni and Jacuzzi are registered trademarks for, among other goods, ice-resurfacing machines and whirlpool baths, respectively. This means that, when considering resurfacing the pond in your backyard, you should look into a Zamboni® ice-resurfacing machine. And when looking to re-outfit your bathroom, consider a Jacuzzi®-brand whirlpool bath.

Leotards, on the other hand, are just leotards. 

I know I’m missing something though because, over the past few years, cupcakes have become the food craze of all food crazes. Serious Eats reported that searches for cupcakes surpassed searches for bacon on Google. While I might want the cupcake trend to die, I am plainly in the minority of dessert-eaters in my view. Cupcakes strike many a sweet-tooth-fancy these days, and they are serious, serious business.  

Case in point: a few weeks ago, Sprinkles Cupcakes, Inc.—a bakery based in Beverly Hills that claims to be the first cupcake bakery in the world—sued Pink Sprinkles, LLC for trademark infringement and related causes of action. In addition to its location in Beverly Hills, which it opened in 2004, Sprinkles owns numerous locations around the country – including an outpost in New York—and is planning to open stores internationally; Sprinkles also owns a number of trademark registrations for its name and mark. Pink Sprinkles began operating in Connecticut “years after” Sprinkles. Pink Sprinkles advertises itself as “Fairfield’s first cupcake boutique in Brick Walk Promenade.” That’s a lot of firsts.

Readers of this blog know that one of the benefits of a federal trademark registration is that the registration provides nationwide priority dating back to the date of filing. Putting aside issues of proof and relying only on Sprinkles’ allegations, it would seem that Sprinkles would be the winner here. However, Sprinkles’ registrations and priority don’t mean that this case is a slam dunk.  Regardless of priority, Sprinkles will still need to support a likelihood of confusion between its use of its mark and Pink Sprinkles’ use of its mark. So the question is, is confusion likely? Take a look at the parties’ websites and judge for yourself.