DuetsBlog

Collaborations in Creativity & the Law

The Worst Top Ten List of Traits Ever

Posted in Articles, Branding, Marketing

TraitstoAvoid

Do you wish you could have been a fly on the wall of the meeting that produced this top ten list, or more likely bottom ten list? Even for five minutes? I’m thinking it must have gotten old fast.

Hopefully there was another counteracting list too with far more inspiring attributes. While it’s important to understand negative traits, dwelling on the negative doesn’t seem likely to inspire growth or creativity. Nor does it seem likely to reinforce any of Covey’s habits of effectiveness.

Over the past weekend I was staying in a hotel out of town, and my room happened to be on the same floor as a series of conference rooms.

Minding my own business at the end of the day, as I was passing by the empty rooms, I happened upon the above whiteboard, so I couldn’t resist capturing it to share here.

What kind of conversation and meeting would you guess produced the above list?

Have you ever met a person who possessed all of the listed traits?

Have you ever experienced a brand with any of the traits above?

Another Shot Across The Virtual Bow

Posted in Copyrights, Infringement, Law Suits, Trademarks

This post is a follow-up to my post a couple weeks ago regarding the Zenimax v. Oculus case.  As expected, Zenimax filed its motion for an injunction on February 23.  The motion itself pulls no punches.  It directly and angrily argues that Oculus’s entire business was built on Zenimax’s intellectual property.  At the same time, Zenimax also filed its motion to have judgment entered on the jury verdict, which as I mentioned in my earlier post is a first step in transforming the jury verdict into something that Zenimax can attempt to collect on.  Both documents provide interesting insights into the case.  Some highlights:

1.  While the requested injunction covers a lot of different things, the real nuclear component of the requested injunction is stated as follows:

Defendant Oculus is permanently enjoined, on a worldwide basis, from using, marketing, selling, distributing, modifying, servicing, copying, or offering for sale or license any products, in whole or in part, that utilize in any form or for any purpose any of the Copyrighted Materials, including but not limited to (i) system software for Oculus PC (including the Oculus PC SDK); (ii) system software for Oculus Mobile (including the Oculus Mobile SDK); (iii) Oculus integration with the Epic Games Unreal Engine; and (iv) Oculus integration with theUnity Technologies Unity Game Engine.

This is really the teeth of the injunction, as it would basically put Oculus’s entire business on hold.  It will also be the most difficult thing for Zenimax to obtain.  Perhaps realizing his, Zenimax requested a 20% royalty on all future sales for ten years in the event the Court did not believe an injunction should be issued.

2.  Zenimax is seeking prejudgment interest on a variety of different parts of the money judgment.  This interest is substantial.  According to Zenimax’s calculations, if judgment were entered today, the prejudgment interest should be approximately $78,797,000.  Post judgment interest would also accrue during the pendency of the appeal, although the post-judgment interest rate for federal court judgments currently sits at a paltry .83%.

3.  Zenimax is also requesting an award of its attorneys’ fees, which it estimates at $40,000,000.

Thus, as you can see, the financial and existential stakes for Oculus are only getting higher.

 

Hasbro thinks the Smell of Play-Doh Is a Trademark, will the USPTO Agree?

Posted in Fair Use, Non-Traditional Trademarks, USPTO

As we have discussed previously, trademark protection isn’t an exclusive club for words and pictures. Shapes, sounds, and even the tactile feel of a product can all qualify for trademark protection. And as a recent application from Hasbro shows, even the smell of a trademark might qualify for trademark protection.

The mark set forth in the application is technically the standard character mark “NON-VISUAL PLAY-DOH SCENT MARK.” After an amendment or a refiling though, Hasbro will provide a more detailed description of the mark. Hasbro did provide a miscellaneous statement that describes the scent in more detail as:

A unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.

Play Doh Fragrance

Scent marks are not unheard of, but can be difficult to successfully register. Legend has it that the first scent mark was registered in 1990, following an appeal to the Trademark Trial and Appeal Board. The mark was described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used for sewing thread and embroidery yarn (Reg. No. 1,639,128). In re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990).

Like other non-traditional trademarks, registration of a scent mark imposes additional hurdles. A scent mark cannot be inherently distinctive and therefore the Applicant must establish that the mark has acquired distinctiveness, as set forth in the Trademark Manual of Examining Procedure 1202.13. Also, the claimed mark cannot be functional. Accordingly, if the smell is the natural result of a manufacturing process or provides non-reputational related advantages over competitive products, then the mark is likely functional and non-registrable.

Other scent marks have been registered, but not many are on the Principal Register. One company owns a registration for a “bubble gum” scent mark for shoes and flip flops (don’t ask me why). Another entity owns a registration for a cherry scent for automobile lubricants.  There are many more scent marks that could not clear the acquired distinctiveness hurdle, but were not deemed functional so were eligible for registration on the Principal Register. This would include Verizon’s “flowery musk scent” for its retail stores or another company’s strawberry-scented toothbrushes.

Will Hasbro will be able to overcome the functionality hurdle? Presumably some of the ingredients are included in order to get the right consistency. However it seems less likely that the cherry and vanilla fragrances are necessary, so my best guess is that functionality won’t prevent registration. Acquired distinctiveness is the bigger hurdle for scent marks, but I can already imagine the smell of Play-Doh just by thinking about it. The mark certainly has recognition. However to be completely honest, I never noticed the “vanilla” or “cherry” overtones. But maybe my toy clay palate isn’t sufficiently advanced to pick up on those notes.

Congratulations to Howard University’s 2017 McGee National Civil Rights Moot Court Team

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

HowardMcGeeTeam

It’s not every year that participants in the William E. McGee National Civil Rights Moot Court Competition need to understand the various nuances of federal trademark law.

Yet, with the Lee v. Tam case pending before the U.S. Supreme Court, and Section 2(a) of the Lanham Act hanging in the balance, this was such a year for more than fifty competitors.

The weekend before last, yours truly had the distinct privilege of judging the final oral arguments in the McGee competition at the Mitchell Hamline School of Law in St. Paul, Minnesota. It was ever so humbling to be part of a very distinguished panel of would-be U.S. Supreme Court Justices, hearing the oral arguments and probing the Constitutional issues in the Tam case.

The very distinguished portion of the panel included: The Honorable Peter M. Reyes, Jr. of the Minnesota Court of Appeals, retired Minnesota Supreme Court Justice Esther Tomljanovich, Sharon Sandeen, Director of Mitchell Hamline School of Law’s Intellectual Property Institute, and Robert J. Gilbertson of the Greene Espel law firm.

The winning first place team hailed from Howard University (shown above), located in Washington, D.C., arguing in favor of the government’s position to uphold the Constitutionality of Section2(a). The second place finalist team came from the Illinois Institute of Technology’s Chicago-Kent College of Law, arguing in favor of Simon Tam’s challenge to strike down the disparagement clause of Section 2(a) on First Amendment and Void for Vagueness grounds.

The would-be Supreme Court Justices were not judging the merits of the case, instead we judged the teams based on the quality and organization of their oral arguments.

It was inspiring to witness such strong intellect, confidence, poise, grace, and decorum, from each of the finalists — there is no doubt in my mind, they will all make fine lawyers, and they should all be very proud of their performances and high achievement.

Learning after the event that only three of the four finalists had taken an intellectual property course before, made their mastery of the issues even more impressive, hearty congratulations!

Likelihood of Confusion at Its Most Blatant

Posted in Advertising, Branding, Food, Squirrelly Thoughts

Imagine my surprise and amusement to find a recent shipment of wine included a very interesting red blend. The bottle featured a name that would make any trademark lawyer do a double-take:

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That’s LIKELIHOOD OF CONFUSION wine, 2015 vintage (a good year for consumer confusion). Of course, the wine itself invites confusion, as indicated on the back label:

Likely to be confused with the boldest wine you’ve had, this dry red derives its riper fruit from Paso Robles’ heat, ensureing it suits heavy steak dishes. The stainless steel-aged Syrah and Petite Sirah conjure flavors that are anything but confusing: blackberry, black cherry, cocoa, clove, fig and leather.

Food (or drink) for thought on this Friday – real consumer confusion indicates trademark infringement, but that doesn’t mean consumer confusion is always marketing hot lava. Confusion – say, with more expensive products or services – can be touted in advertisements, or used as puffery. I’m willing to wager a savvy marketer, or someone acquainted with trademark headaches, came up with this name – and, of course, it’s registered. And no, I didn’t taste the leather.

Adidas v. Puma: Another three-stripe lawsuit

Posted in Branding, Famous Marks, Fashion, Infringement, Marketing

We’ve written on several occasions (for example, here, here, and here) about the aggressive policing by Adidas of its well-known “three-stripe” mark for shoes, including attempts to enforce its mark against other two-stripe or four-stripe designs (with some success).

Adidas is at it again, with a new lawsuit asserting trademark infringement based on Puma’s four-stripe design for a soccer cleat. The complaint was filed on Friday last week in the U.S. District Court, District of Oregon. Adidas also filed a motion for a preliminary injunction on the same day.

Puma is a competitor and longtime rival of Adidas. The two companies are headquartered within walking distance of each other, in the German town of Herzogenaurach. Adidas and Puma were founded decades ago by brothers Adi Dassler and Rudolph Dassler, respectively, which has led to fierce and sometimes bitter competition between the two companies over the years. In 2013, Forbes ranked the Adidas v. Puma rivalry as one of the greatest business rivalries of all time.

Below is Puma’s soccer cleat that is the subject of the infringement lawsuit filed by Adidas:

puma

And here is the three-stripe design on one of the Adidas soccer cleats:

adidas-puma

What do you think? Would consumers be likely to confuse the Puma shoe for an Adidas shoe? This dispute is in its early stages, as Adidas just filed its complaint last week, so it remains to be seen how Puma will respond. Stay tuned for further updates.

The Big Ten and the NCAA Tip Off for MARCH Marks

Posted in Dilution, Famous Marks, Goodwill, Infringement, Trademark Bullying, Trademarks, TTAB

You don’t have to be a sports fan to be aware of MARCH MADNESS, the name associated with the annual tournament to determine the college basketball national champion. The tournament is organized by the National Collegiate Athletics Association. The name MARCH MADNESS is derived from the fact that the tournament occurs almost exclusively in March. Conferences big and small from throughout the country participate in the tournament. But one of those conferences, the Big Ten Conference, is entering a legal battle with the NCAA over the scope of the NCAA’s rights in its MARCH MADNESS trademark.

The Big Ten wants to use the tagline MARCH IS ON! to promote, sponsor, organize, and broadcast its sporting events. It filed an intent-to-use application to register the mark with the U.S. Patent and Trademark Office (USPTO). The USPTO reviewed the application and determined that the mark was eligible for registration and published the application. Unfortunately for the Big Ten, the NCAA thinks that the Big Ten’s use MARCH IS ON! will harm the NCAA’s rights in MARCH MADNESS. On February 13, the NCAA filed a Notice of Opposition to the application (available here).

The Notice of Opposition doesn’t include much detail in support of the claimed harm. Instead, other than the claim of priority, the Notice of Opposition includes a conclusory allegation that the Big Ten’s proposed use “is likely to result in confusion, mistake, or deception with [the NC, or the goods and services marketed in connection with [the NCAA’s] MARCH MADNESS mark.” The Notice of Opposition does not even allege that the marks are similar or that the goods or services are related. In light of the narrow scope of authority, pleading requirements are pretty liberal at the Trademark Trial and Appeal Board (TTAB), but even the NCAA’s Notice of Opposition is pretty sparse on factual allegations, even for a TTAB pleading.

While establishing the services are related should be an easy layup, demonstrating that the marks are similar might be a big more challenging. After all, the only similarities in the marks consist of the shared term MARCH. There is no similarity of meaning (as you might have with MARCH INSANITY) or similarity in sound (MARCH MAYHEM). Sharing a single term can be sufficient to establish a likelihood of confusion in some circumstances, but confusion may be avoided if the shared term is descriptive of the services or weak in some other way. If the NCAA’s mark was BASKETBALL MADNESS, it would be difficult to claim that consumers would be confused with the Big Ten’s use of BASKETBALL IS ON!

While MARCH isn’t as weak as BASKETBALL, the term describes when the NCAA tournament occurs and when the Big Ten basketball tournament occurs. It seems like the claim may be an overreach by the NCAA. But who knows, perhaps this claim will be another of the many Cinderella stories associated with the NCAA. We’ll have to check back in the second half.

 

McCarthy Institute Trademark Seminar 2017

Posted in Advertising, Articles, Branding, Copyrights, Dilution, Famous Marks, First Amendment, Marketing, Trademarks, TTAB, USPTO

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One of the current challenges in trademark law addressed in Seattle last week at the Amazon Corporate Conference Center, host of the 2017 McCarthy Institute and Microsoft Corporation Symposium, is an issue we have discussed quite a bit here, namely Trademark Disparagement and the First Amendment. The panel to discuss this weighty topic included the following:

  • Marc Levy, Partner, Seed IP Law Group (moderator)
  • Tom McCarthy, Senior Professor, USF School of Law (author of the “multi-volume pre-eminent treatise on trademark law” called McCarthy on Trademarks and Unfair Competition)
  • Lorelei Ritchie, Administrative Trademark Judge, USPTO TTAB
  • Ron Coleman, Partner, Archer & Greiner
  • Makalika Naholowaa, Attorney, Corporate, External, & Legal Affairs, Microsoft
  • Stephen Coates, Senior Counsel, Amazon

To help set the table, as you may recall, oral argument occurred last month, and the Supreme Court is expected to decide the following trademark disparagement issue in the Lee v. Tam case involving The Slants mark within the next several months:

“Whether the disparagement provision of [Section 2(a) of] the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it ‘[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute’ is facially invalid under the Free Speech Clause of the First Amendment.”

As we have written before, the Supreme Court is being asked by our friend Ron Coleman, on behalf of Simon Tam, to declare unconstitutional the disparagement prong of Section 2(a) of the Lanham Act, as a violation of Mr. Tam’s Free Speech rights under the First Amendment.

Although Ron was able to convince an eager Court of Appeals for the Federal Circuit, I continue to believe the Supreme Court will conclude otherwise and uphold Section 2(a) as a reasonable limit on access to a government program rather than a restriction on speech, because the registration denial does not limit Mr. Tam’s ability to use The Slants mark in commerce, or otherwise engage in expression or debate on any subject he wishes.

Section 2(a) is a provision that has been in force and applied by the USPTO for more than 70-years under its Constitutional authority to regulate interstate commerce. And, most agree that if the disparagement prong of Section 2(a) falls, the scandalous and immoral prongs of Section 2(a) must fall too. Professor McCarthy noted that the government has conceded this very point in another parallel case involving the F-word (the dirty one from George Carlin’s seven dirty words, not this clean F-word) in the Brunetti case involving scandalous matter. Yet, keeping scandalous and immoral matter outside the contours of the United States trademark registration program has been part of federal law even longer, going all the way back to the 1905 Act, so there is a large mountain to climb in saying the Constitution has been violated as part of the federal government’s trademark registration program for more than 100 years.

One of the problems with Tam’s argument is it goes too far and would open the door to constitutional invalidation of a multitude of other content-based restrictions that further define the contours of the federal trademark registration program. In my humble opinion, the Law Professors Amicus Curiae brief filed on November 6, 2016, by Professor Christine Haight Farley of American University Washington College of Law and Professor Rebecca Tushnet of Georgetown University Law Center, make this and other points quite well.

Indeed, during the Symposium discussion on the constitutionality of Section 2(a), moderator Marc Levy noted that Tam has taken an “aggressive position” that the federal government’s trademark registry is essentially a “public forum” where no content restrictions are allowed.

On the other side of the argument, Stephen Coates provided examples of how some disparaging matter in the marketplace has been updated over time (like the visual depiction of the Aunt Jemima brand), or has simply gone away, like the Sambos restaurant chain. As I understand it, his contention is that we don’t need the Section 2(a) disparagement provision, since we should allow the market to decide what is unacceptable or not. He advanced the argument that using disparaging matter as a trademark won’t be successful in the marketplace in the end, but he didn’t address the pink elephant in the room, namely the continued use of the R-Word by the Washington NFL football franchise in the Nation’s capital.

Makalika Naholowaa, as a Board member of the National Native American Bar Association, countered quite effectively from my perspective that it is overly optimistic to conclude governmental regulation of disparagement is unnecessary in the context of the federal registration program. As to Tam’s re-appropriation argument that his intent is to change the meaning of The Slants, Naholowaa reported that all four bar associations of color believe that re-appropriation is not a good trade, and since society is not bending toward inclusion, we do need the government’s regulation of disparagement so they unanimously favor the Supreme Court upholding the disparagement provision of Section 2(a).

Administrative Law Judge Ritchie made some compelling points on Tam’s re-appropriation argument as well. She maintained that the USPTO decides each case on the evidence of record before the Examiner and the TTAB. And, unlike the Dykes on Bikes case, where substantial evidence was made of record to show the claimed mark non-disparaging at the time of registration, the same kind of evidence was not produced by Mr. Tam to overcome the disparagement refusal. In addition, she noted the USPTO can’t be in the business of considering the race or good intentions of an applicant since trademark rights can be assigned down the road to another not having the same race or intentions.

In the end, David Franklyn, Director of the McCarthy Institute and Professor at the University of San Francisco School of Law, with a roving mic Phil Donohue-style, asked for a show of hands on how members of the audience would vote as a Supreme Court justice, and our friend Marty Schwimmer of The Trademark Blog, tweeted his assessment of the headcount to be 55/45 in favor of upholding the constitutionality of Section 2(a).

Then, Franklyn polled those on the panel as to how they would vote as Supreme Court justices in the Tam case, resulting in a 3-2 reversal of the Federal Circuit’s decision by show of hands, with one understandable abstention by TTAB Administrative Judge Ritchie.

Professor McCarthy, Marc Levy, and Makalika Naholowaa were all in favor of upholding the constitutionality of Section 2(a). Ron Coleman (not surprisingly) and Stephen Coates would affirm the CAFC’s decision in Tam.

I’m with Professor McCarthy and the majority, how would you vote, and why?

Do I Need a Patent Prior Art Search?

Posted in Idea Protection, Patents, USPTO

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This is a common question among many new inventors. To be patentable, an invention must be novel and non-obvious in view of the “prior art.” Prior art includes prior filed patents, patent applications, and other public materials. A patententability search, or prior art search, can give the inventor an idea of what the prior art landscape looks like. If performed before filing an application in the Patent Office, a patentability search can provide an inventor with direction as to how to potentially overcome the prior art, or in some cases can even suggest that an invention may not be patentable. However, a search can be costly and does not provide a definite answer as to patentability. Inventors should keep some important considerations in mind when deciding if a search is right for their situation.

What does a prior art search cover?

A patent search can range in depth from a quick Google search to a professional, global search performed by a patent search company and reviewed by an attorney. The scope of a search may depend on the inventor’s knowledge of the field of invention, the breadth of the invention, and cost considerations.

Notably, a patent search can include not just patents and patent applications, but also non-patent literature, such as trade journals and research papers. Any type of public document—even a blog post—can be citable prior art against a patent application.

A comprehensive prior art search should search for not only the same invention, but similar inventions and inventions in other fields of endeavor.

Doesn’t the Patent Office perform a search?

Yes, but only after the application is written and filed. As part of the application process for seeking patent protection, the U.S. Patent Office will perform its own search and cite results as rendering the application anticipated (not novel) or obvious.

An independent patentability search can help an inventor make decisions before the application is written and filed.

What does a prior art search NOT cover?

This, generally, is the catch with any patent search.

First is an issue of dates in the slow-moving Patent Office. When a patent application is filed, it does not become publicly accessible (i.e., it won’t turn up in a prior art search) for 18 months. But, at any point during that 18-month period, another inventor might file a new application. The earlier application will be prior art to the later application, even though the earlier application was unpublished when the later application was filed. Thus, any search effectively has an 18-month “black hole” in which the patent applications most recently filed in the Patent Office are undiscoverable. Generally, this may only be a problem when inventions relate to cutting-edge improvements and new technologies.

Secondly, prior art searches are, by nature, subjective. Whether the search is performed via Google, on the USPTO website, or in a global patentability database, the search results are only as good as the particular search terms used. This can be problematic because, when the Patent Office performs its own search after the application is filed, the Office may find and cite references that were not necessarily discovered by the inventor’s earlier search.

Do I have to tell the Patent Office what I found?

Yes, inventors and their attorneys/agents have a duty to disclose to the Patent Office information that is “material to patentability” with respect to a patent application. In practice, this means that an inventor has a duty to disclose the art that results from a patentability search.

Can I do my own prior art search?

Of course. There are many resources to help guide inventors in performing prior art searches. However, for the reasons described above, any search has its limitations and it is still advisable to have a patent attorney or agent review the results.

It thus becomes clear that the decision to perform a prior art search requires consideration of many factors, and is unique to each situation.  A prior art search can help an inventor make key decisions before filing a patent application, but a favorable search is no guarantee of patentability.

 

Checking in on Sony’s “Lens-Style Camera” Application

Posted in Advertising, Branding, Non-Traditional Trademarks, Product Configurations, Trademarks

Way back in 2015, I blogged about an interesting non-traditional configuration mark application from Sony for its QX100 “Smartphone Attachable Lens-Style Camera” with the PTO.

Here we are nearly two years later, and Sony’s battle continues. As expected, the USPTO has refused registration of Sony’s mark on two main fronts: the functionality of the “cylinder” configuration in connection with “digital cameras” in Class 9, and the lack of acquired distinctiveness for a cylinder design. As of this writing, Sony recently responded to a final office action from the USPTO with a Request for Reconsideration on January 2, 2017. It seems an appeal before the Trademark Trial and Appeal Board is all but inevitable.

First, Sony has made liberal use of the “dotted line” in its amended drawings for the mark, essentially removing any claim of trademark protection for any control surface of the camera, and claiming only the cylindrical shape. Here is what the drawing looked like at the time Sony filed the application:

Screen Shot 2017-02-16 at 7.35.57 AM

…and compare that to the most-current amended drawing:

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Dotted lines are used in configuration trademark applications to claim functional or non-distinctive matter – in other words, they are useful to illustrate what the product configuration looks like, but the features themselves are not claimed as part of the trademark. And Sony made very clear in its Request for Reconsideration that “Applicant amended its drawing to remove everything except the cylindrical shape of the camera.” So there can be no doubt – Sony’s application is geared towards gaining a monopoly on cylinder-shaped digital cameras.

In the face of repeated functionality refusals, Sony’s latest substantive response gives short shrift to the issue:

The body of Applicant’s camera is a cylindrical shape.  The cylindrical casing must include, in addition to an optical zooming lens system, electronic circuitry and a battery in more limited space than a regular camera that has a rectangular body.  The cylindrical body makes designing the camera more difficult and more costly. Applicant’s design does not result from a comparatively simple or inexpensive method of manufacture that would support a finding of functionality. TMEP § 1202.02(a)(v)(D).

This addresses only one of the Morton-Norwich factors set forth for evaluating functionality – namely, whether the design is the result of a comparatively simple or cheaper method of manufacture. It does not address the other factors, including whether Sony promotes any of the utilitarian benefits of the design or whether there are utility patents for the product’s design. These factors were addressed earlier, and Sony did disclose several patent applications and registrations relating to the product, which could — depending on the patents’ claims — effectively preclude registration of the configuration mark on functionality grounds.

Also worthy of note – Sony’s Request for Reconsideration also included three years’ worth of sales numbers, and they indicate a precipitous drop in sales for the associated product from 2013 to 2015:

Screen Shot 2017-02-16 at 7.46.09 AM

While sales figures can be highly useful – indeed often all but probative – in the Section 2(f) context, what’s interesting here is the near-complete drop in sales of the associated product. This may still be enough to pass muster to show acquired distinctiveness in the design, but it may signal to the USPTO – or the Trademark Trial and Appeal Board – that Sony is not concerned about protecting the design of a specific, successful product, but rather the concept of a cylindrical shaped digital camera.

Will Sony pursue an appeal? It’s difficult to say for sure – looking on Sony’s website, you won’t find the QX100, or any other cylinder-shaped camera, listed for sale.