Collaborations in Creativity & the Law

Rise of the Game

Posted in Mixed Bag of Nuts

Video games have been an existing and growing component of popular culture for my entire life.  I literally cut my teeth on the Atari 2600 while I was still a toddler.  From there I spread into bowling alley arcades, Nintendo, PC Games, Playstation, Nintendo 64, Playstation 2, Playstation 3, and Playstation 4.  Over that time, the gaming industry grew in popularity, volume, and innovation.

Over the past several years and over the following few years, there have been and are likely to be significant new developments that are going to expand the gaming industry even further.  Simply put, its an exciting time to be alive for a “gamer.”  So called eSports appear to be gaining a significant foothold such that they will be regularly broadcast on TBS on Friday nights.  Vegas is “looking to video games” to bring in a new crowd of gamblers.  And it appears that hardware and software capabilities are almost finally to the point where VR games are something people will actually want to play.

The rise of the games is also an exciting time for the legal profession.  Each of these new avenues of gaming promise to provide new and interesting legal issues.  For example, top gaming talent is likely to end up working with agents similar to sports stars.  The gambling angle is likely to raise tricky legal issues regarding whether the games are “games of skill” or “games of chance.”  And one can only start to imagine the issues that will begin to arise in an entirely virtual world.  (“Virtual infringement,” anyone?)

Being both a gamer and an attorney, I’m excited for the possibilities, and I’d love to hear from any readers with thoughts on what they think the future may hold.

No Budding in Line Washington Redskins

Posted in Branding, Famous Marks, Marketing, Mixed Bag of Nuts, Trademarks

In a case with special significance to our DuetsBlog crew (our founder Steve Baird started the fight to cancel the THE REDSKINS trademark registrations in 1992 – see more about the Harjo case here) and significant to trademark practitioners and owners alike, the federal government is asking the United States Supreme Court to deny the Washington Redskins’ request to skip over the appellate court and go directly to its Court to have this dispute decided.  I will refer to the Washington Redskins as the “Team,” although unlike my good friend Craig, my team will always be the Vikings.

By way of background, the highly publicized Pro-Football Inc. v. Blackhorse, No. 15-1311, case was filed by the Team to avoid cancellation of its trademark registrations for THE REDSKINS mark.  Losing at the Eastern District of Virginia, the Team wants to skip the normal path of letting the Fourth Circuit hear the dispute, and instead asked the Supreme Court to hear the case directly.  The Team relied on the following arguments for this unusual request:

  1. The Court often grants certiorari before judgment to consider companion cases together (in this case it is the Tam case involving the Slants rock band);
  2. The Team’s case is an ideal companion to Tam and essential to resolve the constitutionality of the Lanham Act’s §2(a); and
  3.  The Team is better situated to challenge §2(a)’s constitutionality (in effect our lawyers are better or more well-funded and were relied upon by the Federal Circuit).

The government asserted that there was no valid reason to allow the Team to bud to the front of the line and skip over the Fourth Circuit.  In other words, there was no “reason to deviate from the [C]ourt’s usual practice of deferring any review until the court of appeals has issued its decision.”  The government slammed the Team stating that “Petitioner’s confidence in its own attorneys’ litigation skills provides no reason to take the extraordinary step of granting certiorari before judgment.”  Plus, Tam’s attorneys are really good attorneys themselves.

Not surprisingly, the Native Americans, who won at the district level, agreed with the government and added that if the Court did grant the Team’s petition it should only do so to answer the First Amendment questions, not the other challenges that they have asserted to THE REDSKINS registrations.

This Washington Redskins case and the Tam case have widespread interest because if the Supreme Court agrees with the Federal Circuit’s decision in Tam, then the provision in the 70 year old Lanham Act preventing the registration of disparaging trademarks will be found unconstitutional as violating the First Amendment.  There are wide-reaching implications for this decision.

With the death of Justice Scalia, there are only eight Justices currently on the high Court.  If there is a split decision, then the lower court’s decision stands.   I suppose I am putting the cart before the horse as the Supreme Court has not yet granted certiorari on the Tam or the Team’s case.  However, I would be shocked if the Court does not do so.  This issue is as exciting as the Super Bowl (at least for trademark attorneys).

LEAFS BY SNOOP May Be Blocked by Another Leaf Logo

Posted in Mixed Bag of Nuts

Snoop Dogg’s LEAVES BY SNOOP design mark application may be in trouble. The owners of the Toronto Maple Leafs filed a request for extension of time to oppose the mark with the Trademark Trial and Appeal Board, citing the need for more time to investigate potential claims.

Calvin Broadus, more popularly known as Snoop Dogg, filed two intent to use applications back in November. One for the LEAFS BY SNOOP word mark and another for LEAFS BY SNOOP with a design element. The Maple Leafs didn’t take issue with the word mark, but apparently think that the design mark may be a little too close to their own Maple Leaf logo.

LEAFS BY SNOOPleafs-logo

The marks clearly share some visual commonalities, though the inspiration behind the marks is quite distinct. The Maple Leafs logo draws from the teams history, including 13 veins in the top representing the number of Stanley Cup Championships the team has won, and a total of 17 veins on the leaf representing the year the team was founded, 1917. Snoop Dogg drew inspiration from the marijuana leaf, a substance that he very publicly promotes.

The LEAFS BY SNOOP applications don’t cover marijuana, of course. Both applications cover cigarette lighters. We’ve written before about marijuana branding and how some may be trying to stake their claims with registrations that cover other goods that the U.S.P.T.O. may find similar or complementary to marijuana. They hope that this will protect their territory if federal registration ever becomes a possibility. Marijuana has seen growing public acceptance in recent years, with a few states legalizing even recreational use. The federal government still sees it as an illegal narcotic and so federal trademark registration is out of the question for the marijuana industry, at least for registrations that cover marijuana.

It will be interesting to see how these marijuana related applications and registrations fare as they bump up against big established brands. The Maple Leafs marks are arguably famous marks. Though they may well have a registration that covers cigarette lights, they might not need it. If they decide to oppose the registration, I’m assuming they will be strongly considering tarnishment.

A Duel Over DUO Leaves Only Uno

Posted in Almost Advice, Food, Product Packaging, Trademarks, TTAB, USPTO

The never-ending battle at the Trademark Office over trademarks for beer and wine suffered another casualty last week, this time over the mark DUO.  Applicant Uinta Brewing Company filed a use-based application to register DUO for beer.  Fun fact:  the Utah-based brewery owns a trademark registration for TINDER for “beer.”

Uinta Brewing uses the DUO mark on product packaging for its 12-pk sampler containing two types of its beers shown below.



Uinta received an office action refusing registration, not for being merely descriptive, but rather based on a likelihood of confusion with U.S. Registration No. 2,255,914 for DUO for wine owned by Chilean wine company Alto de Casablanca, S.A.   Incidentally the mark was assigned to Alto de Casablanca from California-based winery, Franciscan Vineyards.  The Trademark Office asserted that the marks were identical and that “beer” and “wine” were sufficiently related such that consumer confusion was likely.

duowineUinta argued that “beer” and “wine” were not related, basing those arguments on the fact that such a small percentage of trademark registrations cover both beer and wine (about 70 registrations in total), the relative number of registrations for beer and wine (about 8,000 for beer and 18,000 for wine), and also about 10 pairs of registrations for identical or highly similar marks covering “beer” and “wine.”

However, the math was insufficient to overcome the refusal.  In total, the Office provided 11 websites of combination brewery/winery operations and 17 third-party registrations covering both beer and wine.  Uinta appealed this decision, and the Board affirmed the refusal.   This decision provides an interesting comparison with the Board’s decision in In re Reubens Brews LLC, which was decided after the Notice of Appeal was filed in the DUO matter.  As we have discussed here before, Applicant’s REUBENS BREWS & Design mark for beer overcame a refusal over a registration for a stylized RUBENS on wine.  Although not precedential, this decision offers important clues to help overcome similar refusals by distinguishing features between the marks and also responding to the Examining Attorney’s evidence by providing, in part, evidence of the number of breweries and wineries in the United States, not the number of registrations.

While the brewery could have argued the evidence in a similar way to Reubens Brews, these arguments may still not have been sufficient to overcome the refusal.  The more difficult issue with DUO is that the marks were identical as filed.

Can breweries and wineries avoid this issue?  Certainly.  One takeaway from this pair of cases is to consider filing for a mark that includes words or design elements that tie it more closely to beer or wine (as BREWS and the design did for the Applicant in Reubens Brews) or otherwise distinguishes it.  Here, although the packaging might need to be changed first before alleging use, filing for UINTA DUO may have at least overcome the Trademark Office’s concern with the wine’s registration, especially given that another’s registration for DIRIGIBLE DUO for wine co-exists with the DUO registration on identical goods.  Alternatively, properly drafted consent agreements between applicants and registrants can also be used to overcome these refusals.

KIND Taglines: About Owning Your Ad Copy?

Posted in Articles, Branding, Food, Marketing, Mixed Bag of Nuts, Trademarks, USPTO

First things first: Happy 4th of July, Dear Readers!

4thJulyFlagThat was a pretty honest, simple, genuine, transparent, straightforward, to the point, not belaboring at all, under any circumstances, my most sincere wishes to our dear readers, agree?

Now contrast the original well wishes with the elaborate description of them, the latter being anything but short and sweet. Kind of reminds me of Kind’s apparent branding strategy. From where I sit, it represents a fascinating juxtaposition of the simple and basic core brand name with the complex, wordy, highly informative (dare I say descriptive), and multiple taglines.

On the one hand, KIND, truly a model of brevity (in its name at least), has built an amazing brand and developed strong trademark rights in a simple, positive, pure, four letter word that easily can be shared and repeated without folks blushing:

KindBarFrontOn the other hand, it also has developed loads of federally-registered trademarks in wordy phrases that I imagine competitors might like to use too (assuming they could live up to them):

I don’t know about you, but the first tagline above is kind of a mouthful (of descriptiveness), and while the last two are somewhat smaller bites, they are still pretty descriptive, yet no descriptiveness refusals for any of them — the USPTO considered all of the above taglines, including the three I have highlighted here (first and the last two) to be inherently distinctive marks without the need for Kind to establish any kind of acquired distinctiveness.

Sometimes the more words in a tagline — even if descriptive and informative — translate into an inherently distinctive mark, perhaps explaining how the sixteen word tagline above satisfied the USPTO, without the Supplemental Register, and only requiring a disclaimer of the last nine words.

So, wordiness sometimes can help avoid a mere descriptiveness refusal, to create inherently distinctive trademark rights. It kind of reminds me of McDonald’s famous inherently distinctive and non-descriptive, yet descriptive 71 letter trademark mouthful:


Notwithstanding all this food for thought, as you may recall, wordiness in the written description of a non-verbal mark, may have a limiting effect on the scope of trademark rights.

So, back to Kind, you might wonder how it makes valid trademark use of so many lengthy taglines? Basically, it appears to make liberal use of them (in lower case style) on the cartons that hold the individual bars, where there is more room to spread out, and I know this because I buy them by the case, and I’ve probed some of Kind’s specimens of record at the USPTO too:


But, what Kind might want to watch carefully is the blending of its federally-registered tagline marks with its descriptive ad copy, as shown below, in the back side of the original bar shown above:


Recall, Gatorade? So, some kinder and gentler almost advice to Kind might be to keep its tagline trademarks separate from its descriptive ad copy. What do you think?

A $10 Billion Idea, without a Patent, is just an Idea

Posted in Copyrights, Idea Protection, Infringement, Law Suits, Loss of Rights, Patents, Technology

Have you ever seen an ad for something and thought to yourself, “Hey, I had that idea years ago!” Some people take that thought a step further. One Florida man claims to have invented the iPhone in 1992, and is suing Apple to the tune of over $10 billion.

Thomas Ross filed a patent application for an “Electronic Reading Device” having a backlit LCD screen in 1992. Below are some images from Ross’s original filing, as presented in his Complaint against Apple.



The application was ultimately abandoned in 1995 for failure to pay required fees. Ross therefore does not hold a patent on his invention. A patent application alone, without a resulting issued patent, does not itself grant any actionable rights. Even if Apple did copy the disclosed design in Ross’s patent application, he would not have a cause of action for patent infringement based on his abandoned application.

Since Ross cannot sue for patent infringement, he instead appears to hang his case entirely on copyright infringement. In 2014, Ross registered the drawings and text from his abandoned patent application for copyright protection. Importantly, copyright protection attaches to a work when it is initially “fixed” or written. Therefore, any copyright rights that Ross holds in the drawings and text originated when he initially wrote them in 1992.

However, copyright and patent are two very different animals. Copyright protects creative works, such as literary, musical, dramatic, pictoral, graphic, and sculptural works. Copyright protection is not available for ideas, facts, or utilitarian aspects of an item. Ross’s copyright rights cannot protect the workings of an iPhone-like device itself. Copyright is not a substitute for a failure to obtain patent protection.

While Ross may have a valid copyright in the shape and other creative physical aspects of his Electronic Reading Device, an allegation of copyright infringement requires proof of actual copying.   That is, a plaintiff must show that the defendant actually copied the plaintiff’s copyrighted work, which may be shown by access to the plaintiff’s work and similarity between the works. This is required because copyright law does not protect against independent creation. If two people separately create the same glass vase or write the same poem, entirely independent of one another, they may both hold a copyright for the work. Ross does not appear to provide any evidence toward proving that Apple actually copied his works.

Based on the facts presented in Ross’s Complaint, he is unlikely to succeed in the copyright allegations.  The text of Ross’s 1992 patent application reveals what was likely an innovative design. He describes the device “greatly improve[ing] ready access to reading material without the traditional inconvenience of bulk associated with accessibility of large amounts of printed text, and bundled in a light, compact and easily portable device that would additionally function as a note-book (optionally), calendar, clock, timer, calculator, factsimile [sic] devices, cellular phone, [and] message handler.” Surely an innovative concept in 1992. Unfortunately, an idea itself, no matter how revolutionary, is not protectable intellectual property. Ross’s failure to obtain patent protection for his invention has led to a lack of enforceable rights.


Here, Have a BREXIT

Posted in International, USPTO

The British are leaving!  The British are leaving!  Many people on all sides of “the pond” last week watched the Brits’ vote to leave the European Union with interest, and were shocked when they actually voted to cut ties with the EU.  The vote was often referred to by the doomsday name BREXIT (cue terrifying music).  It’s like the Bennifer of political events.  If you don’t know much about the backstory leading up to the vote, John Oliver’s commentary on it is worth watching.

BREXIT not only had an immediate impact on stock markets and the political parties of Britain, but it is likely to have a lasting impact on the UK economy and on IP rights in Europe.  Currently, applicants seeking trademark protection in Europe can file a trademark application designating the entire EU for protection through the European Union Intellectual Property Office (EUIPO).  Patent applicants can seek patent protection in Europe through the European Patent Office, but then currently have to go through a national phrase process where the application is then examined in the individual countries.  The EU was set to begin issuing European Unified Patents, much like the trademarks, but with the UK’s exit from the EU, many applicants may not seek to use this new system when it will not cover one of the major European countries.  IP attorneys will be keeping a watchful eye on changes in this area and how it may affect their clients’ protection and filing strategy in the region.

Naturally, when events like this take over the news cycle with a catchy name or slogan, the U.S. Trademark Office (USPTO) sees a spike in filings involving the name.  It takes 5-7 days before new applications are available in the USPTO’s search system, but currently there are three filings for BREXIT.  They were all filed on June 24, 2016.

  • A man in Chicago filed an intent-to-use application for BREXIT for “clothing, including t-shirts and hats”;
  • Quicksilver Scientific also filed an intent-to-use application for BREXIT for dietary and nutritional supplements; and
  • Samuel Adams’ parent company, Boston Beer Corporation, filed an intent-to-use application for BREXIT for “hard cider” but not for beer.

A Founding Father hawking a hard cider under the name BREXIT?  I’d try one.

A Favorite New York Landmark Deemed a Famous Trademark

Posted in Famous Marks, Trademarks

It is not easy to establish fame for purposes of showing a likelihood of dilution by blurring.  Owner of the Empire State Building marks rose to the challenge in a recent decision by the Trademark Trial and Appeal Board (“the Board”).  ESRT Empire State Building, LLC v. Michael Lang, Opposition No. 91204122 (June 17, 2015) [not precedential].

Others have tried and lost.  See Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q.   Omega SA v. Alpha Phi Omega, Opposition Nos. 91197504 and 91197505 (Mar. 31, 2016) (finding that Omega had failed to show fame prior to any established, continuous use of mark with the specific goods or services in the application or registration, but allowed Omega to amend its opposition to show this evidence if it could); Virgin Enterprises Limited v. Steven E. Moore, Opposition No. 91192733 (August 31, 2012) (telling Richard Branson that his VIRGIN mark was not famous because his company failed to provide sufficient evidence or a survey supporting fame).

Specifically, in the Empire State Buildinjhgg proceedings the applicant was seeking to register the mark below for various beers, ales, extracts for making beer, alcohol-free beers and other related goods.

Not surprisingly, the ESRT Empire State Building, L.L.C. (“ESRT”) opposed the application on the grounds of dilution of its famous registrations for the EMPIRE STATE BUILDING mark with respect to “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,411,972), and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,413,667).  Further, ESRT owned the registration for the design mark below in connection with “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,429,297),  and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,430,828).


In finding fame, the Board explained that testimony and evidence established that “[f]or 40 years, the Empire State Building was the tallest building in the world, and presently is the fifth tallest building in the United States.”  As an aside, the taller other buildings include:

Focusing on pop culture, the Board noted that the “Empire State Building has been featured in hundreds of motion pictures and television shows, including King Kong, An Affair to Remember, and Sleepless and Seattle.”  For all of you Gossip Girl fans, you may recall Blair failing to meet Chuck, with his flower bouquet, waiting for her on the top of the Empire State Building (unbeknownst to him Blair is delayed by her maid giving birth).    I digress. The Board went on to list other evidence showing the Empire State Building’s fame.  It also did not hurt that the applicant admitted   (as he had to) that the Empire State Building is famous.  Accordingly, the building owner’s opposition was sustained and the applicant could not register its mark for its beer, ale and other related items.

nyy_1200x630 Last year, another New York trademark owner, the New York Yankees, was able to establish fame for its marks including THE HOUSE THAT RUTH BUILT® and Top Hat Design Marks (including the one depicted below).  See New York Yankees P’ship v.  IET Prods.  & Servs., Inc., 114 U.S.P.Q.2d  1497  (T.T.A.B.  2015) [Precedential].
Not surprisingly, the applicant conceded that the Yankee’s marks were famous, but argued that they referred to the stadium that has been demolished not the goods associated with the marks.  The Board did not buy this argument.

Marks associated with New York landmarks may have a better shot of achieving the fame needed to support a dilution claim.  Do you think a design mark related to the One World Observatory Tower below  would be able to achieve similar fame as a mark for dilution purposes in the future?


Lights, Camera…Now Take Action

Posted in Fair Use, Guest Bloggers, Idea Protection, Infringement, Marketing, Mixed Bag of Nuts, Squirrelly Thoughts, Technology, Television

– Jason Sprenger – President, Game Changer Communications

Imagine for a moment you’re back in the year 1963…the time of Mad Men, the beginning of Beatlemania, the year of the “I Have a Dream” speech.  Who’s the most trusted man in America?  You might be surprised that it wasn’t Martin Luther King Jr., or even the remarkably popular President John F. Kennedy.  It was Walter Cronkite, the legendary CBS news anchor.  And since Cronkite, who are the others deemed to be the most synonymous with trust among Americans?  None other than Tom Brokaw and Jon Stewart.

A while later, in my final semester of college, I did a honors capstone project on levels of trust in various media over time.  I tried to determine whether or not certain world events such as 9/11 could cause spikes in trust/favor among media, and whether those trends were unique to certain kinds of media.  My research produced results suggesting a strong correlation between higher levels of trust and visual media – specifically television.  It also indicated massive spikes of trust in broadcast media in times of national and global crisis – times when people were emotional and vulnerable, and needed reassurance and leadership.

These are just a couple of examples that suggest video has always had an incredible impact on individuals, and on our collective society.  We place a high level of trust in the people who talk to us and tell us how it really is on screen.  We celebrate the people who entertain and educate us through the movies, television and other visual arts and disciplines.  We remember vividly the experiences we’ve had and shared through visual media.  We treasure video memories of our families, because nothing quite takes you back in time like seeing and hearing scenes from the past.

Lately, through content marketing, organizations everywhere have begun to harness and leverage the power of video.  Consider these statistics (source: Hubspot and www.insivia.com):

  • When video is included in email, click-through rates increase 200-300%
  • Simply having video on a landing page can increase conversion by 80%
  • YouTube reports mobile video consumption increases 100% every year
  • After watching a video, 64% of users are more likely to buy a product online
  • Real estate listing using video receive 403% more inquiries than those without
  • One minute of video has been estimated to be equivalent to 1.8 million words
  • Enjoyment of video ads increases purchase intent by 97% and brand association by 139%

Clearly, video works.  So what do we do about it?  First, we find ways to integrate it into our operations at all levels.  Everyone from rank and file employees to executives to outside stakeholders is using and responding to video, so why not use the medium to our advantage?  Second, we get smart about the laws around ownership of video, the nuances of using and borrowing video and other items.  Lack of knowledge and certainty in these areas will hold us back from using video in the ways we could.  Third, we encourage open and frank discussions about visual communication in business and in society.  We owe it to ourselves to make sure that we’re continuing to use this still-evolving medium in the most efficient, ethical way we can.

With the changes in technology, media channels, concepts like virtual and augmented reality, etc., video will surely grow and evolve in the years to come.  It will only become a more central component of our lives, and our organizations.  It’s up to us to embrace this trend, because those of us who figure it out and do it well are bound to come out ahead.

One Trademark Certainty in Uncertain Times

Posted in Almost Advice, Articles, Loss of Rights, Trademarks, USPTO

Watching the morning news for even a few minutes can leave one struck by how we truly live in uncertain times. I suppose every generation has too, but is it more striking at this moment?

There are plenty of examples to draw upon to evidence the many uncertainties in our world, spanning extreme weather, politics, financial markets, safety, legal decisions, among others.

The field of trademark law is no stranger to uncertainty either. You will recall we wrote about Yes, No, and the Ever Confusing Maybe earlier this year, following our seventh anniversary.

The trademark clearance process can be particularly difficult to navigate, given the ever increasing crowdedness of the marketplace, our rapidly shrinking world, and the ease of trademark filings.

Necessary and appropriate preliminary and comprehensive trademark clearance searches represent imperfect snap shots of the trademark legal landscape at a particular point in time.

What many fail to appreciate is how quickly an open window of trademark availability promptly can be closed by the simple third party filing of a conflicting intent-to-use trademark application.

A best practice to keep in mind during the trademark clearance process is the importance of promptly filing an appropriate intent-to-use trademark application immediately after receiving the results of a successful clearance opinion; doing so maximizes the value of the investment in the search and minimizes the risk of intervening and conflicting third party trademark rights.

While we can’t be certain that others are thinking along the same branding and trademark lines as our clients at roughly the same time, we can be certain that priority determines trademark rights, and a day can make the difference, sadly I’ve seen it happen.

Perhaps the silver lining in the kind of trademark uncertainty we face as marketing and trademark types is that we’re not talking life and death, we’re talking about going back to the drawing board.

And, sometimes going back to the drawing board even more than a few times can yield a much better and more effective name anyway.

Do you have any scars to show for your trademark clearance activities?

Have you ever been burned, not taking seriously the certainty of how time is of the essence when it comes to trademark priority?