DuetsBlog

Collaborations in Creativity & the Law

April Thanksgiving for Ron’s March Accolades

Posted in Articles, Branding, Famous Marks, Mixed Bag of Nuts, Technology, Trademarks

JustiaTopIPBlogs4-2-17

Imagine my surprise as I was scanning some recent posts from some of the leading IP blogs — multitasking while watching the Zags beat South Carolina on Saturday evening — to find my brand name in the title of Ron Coleman’s recent post on his famous Likelihood of Confusion blog:

Was this some kind of sick joke, the April Fools variety? After all, Ron can be a wise guy when sufficiently provoked. But, early April Fools jokes don’t pack the same punch in March — and after confirming Ron pressed publish on Friday March 31st, I began warming up to the possibility of it being a serious post, so then my mind turned to, did I say something stupid in that last Snapchat post? After all, I’ve never actually “snapped” before, only heard about it from my kids.

But, as I read on, I felt stunned and humbled by Ron’s numerous insights into what makes me tick (we’ve never discussed such things before), his generous encomium, and the multitude of magnanimous accolades he directed toward me and the “Best blogging bench in the biz.” Wow!

There are so many wonderful things that could be said about Ron, but two of the things I love most about Ron are his munificent and unstinting spirit. And yes, I consider Ron to be a kindred blogging spirit too. Notably though, Ron’s persistent generosity with his written and spoken words stands in stark contrast to the variety of petty jealousies and the overt cynicism that sadly can plague many in the legal profession. Ron has the self-confidence to freely spread words of love.

Some organizations exist that won’t circulate kudos-type emails to the masses because they might be too distracting, or more likely they might damage the fragile egos of those who feel uncomfortable/less than when others are recognized with well-deserved and appropriate praise.

Not Ron, anchors away with the ever-so-public praise! To be sure, Ron didn’t need to do what he did. But Ron knows that giving praise to others doesn’t diminish his standing as a professional.

In the end, all that Ron Coleman said about DuetsBlog and me, says much more about Ron.

HAVANA CLUB: The Rum’s Back on Ice

Posted in Agreements, Branding, Counterfeits, Famous Marks, Food, Law Suits, TTAB, USPTO

Last year, I blogged about the decades-long dispute for the HAVANA CLUB trademark in the United States. Nearly ten months later, well, its spirit lives on.

To briefly recap: in one corner, Empresa Cubana Exportadora, an arm of the Cuban government, owns a registration for the HAVANA CLUB trademark. In the other corner, Bacardi claims rights to the HAVANA CLUB trademark in the U.S. based on an acquisition from the “founding family” of HAVANA CLUB rum – who were exiled from Cuba in the 1960s. Bacardi has its own application for HAVANA CLUB for “rum and rum specialty drinks.” Examination of that application has been suspended since its filing in 1994 – while the parties duke out a cancellation action against the Cuban registration also dating back to Bill Clinton’s first term. That cancellation is itself suspended pending a civil action in federal court for the District of Columbia.

Cuba_US_Rum_Wars

Last year, it seemed the U.S. government put its thumb on the scale to end the dispute, by allowing the Trademark Office to renew the Cuban government’s registration. But, as is the recurring theme of the last few months: what the government giveth, the government can taketh away.

Lawmakers (on both sides of the aisle) from Florida are asking the Trump administration to revoke the license granted by the Office of Foreign Assets Control. This would effectively eliminate the Cuban government’s ability to maintain the HAVANA CLUB trademark in the United States. The lawmakers cite the Trump administration’s “Cuba policy review” for justification – essentially reinstating a particular sanction against Cuba lifted by the Obama administration.

In short? The chaos continues, though Bacardi notes “nothing has yet moved in court.” It seems a dispute that began when I was all of eight years old will still be on the TTAB’s docket well into my thirties.

Parrotheads Can Rejoice As Jimmy Buffett Prevails In Trademark Dispute

Posted in Advertising, Branding, Dilution, Famous Marks, Infringement, Law Suits, Marketing, Trademarks

Jimmy Buffett won a trademark dispute and precluded the applications for “Marijuanaville” marks from registering due to a likelihood of confusion with his famous MARGARITAVILLE® mark for clothing (including shirts and caps), nightclub services, and other goods and services. The Parrotheads, Jimmy Buffett fans, can rejoice in the win.

Margaritaville

The dispute involved pro se applicant Rachel Bevis who wanted to register for the mark “Marijuanaville” in connection with “T-Shirts, Hats, Sweat Shirts, sweat pants, Jackets, Socks,” in International Class 25 and “Drive-through retail store services featuring coffee and related goods; Retail apparel stores; Retail closing stores,” in International Class 35.

Mr. Buffett opposed the application on the basis of a likelihood of confusion between the applied for mark “Marijuanaville” and his well-known MARGARITAVILLE® registered mark. In determining whether there was a likelihood of confusion, the Board, as usual, applied the factors identified in the In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973).     

The Board first looked at the fame of the prior mark. This fame analysis (unlike with respect to dilution) does not require a showing of fame among every segment of the U.S. population.  Instead, the Board explained it was sufficient if a “significant portion of the relevant consuming public. . . recognizes the mark as a source indication.”

The famous singer/songwriter himself submitted a Declaration in support of the opposition. He explained that he released his fan favorite song “Margaritaville” in 1977 and has performed it at every concert since them.  The song was even inducted into the GRAMMY Hall of Fame. He opened a retail store named “Margaritaville” in 1985 in Key West. He coined the term for a “state of mind” and lifestyle embodied in his clothes. Mr. Buffett’s team put in other evidence too. The Board found that the MARGARITAVILLE® mark was famous for “clothing” for purposes of a likelihood of confusion analysis.

In assessing the second factor, the Board observed that the goods identified in the application were in part identical with Buffett’s registrations. Neither the registrations nor the application contained restrictions on the channels of trade or classes of purchasers. Accordingly, this factor weighs in favor of a finding of likelihood of confusion.

The Board next looked at the conditions of sale and presumed that the goods and services are marketed to all ordinary clothing purchasers at normal marketing channels (e.g. retail and on-line). Consumers may make impulse purchases of inexpensive shirts or hats.  This factor also favored a finding of a likelihood of confusion.

Because of the identical goods, the necessary degree of similarity between the marks declines.  Although the Board declined to consider the testimony from a linguistic expert, the Board did consider the evidentiary materials attached to the expert declaration. Further, the Board compared the marks and found that they were “single-term 14-letter marks comprised of five syllables, each commencing with the same letter string ‘mar-‘ and ending with the suffix “-ville.” In addition, both terms were associated with a similar “state of mind” caused by a substance (e.g. margarita or marijuana). This factor also favored Buffett’s claim of a likelihood of confusion.

The Board then went through the remaining factors finding them all to be in favor of finding a likelihood of confusion, except the following factors were neutral: (1) actual confusion and contemporaneous use (it was an intent-to-use applications); (2) variety of goods (only had found fame with respect to clothing and retail clothing stores).

The Board concluded that Jimmy Buffett’s company had proven its claim and that Ms. Bevis could not obtain a registration for “Marijuanaville.” The Parrotheads can toast with a margarita and sing “MARGARITAVILLE” in celebration.

The News is Fake, but the Trademarks are Real

Posted in Branding, Marketing, Trademarks

The trademark filings for new political slogans and catchphrases continue.

Over the last couple of months, Donald Trump has repeatedly accused various news sources of disseminating “fake news.”  As a result, 14 trademark applications have recently been filed for variations of FAKE NEWS.

The goods and services associated with these applications cover a wide range.  Film Roman, best known for animating The Simpsons, filed an application for FAKE NEWS in connection with entertainment programs featuring comedy.  There are multiple filings for board games and card games, at least one of which is apparently connected with the makers of Cards Against Humanity.  Other applications relate to clothing, computer games, online retail, silkscreen printing, photo sharing services, and even wine.

In a similar vein, ALTERNATIVE FACTS has 24 recent trademark filings.

While I don’t dispute that a Cards Against Humanity-style FAKE NEWS game would be great, these types of trademark filings bring up an important issue of timing.

The trademark application process can, and often does, last a year or more. While these FAKE NEWS applicants may ultimately obtain their marks, the social relevance of the slogan may be lost by then.  Will these potential marks have the same value in a year?  Surely our quotable President will have gifted us with dozens of new phases in a year’s time.  Even “Nasty Woman” and “Bad Hombre” aren’t as prevalent as they were a few months ago, and those phrases spurred a combined 27 trademark applications.

What do you think?  Are these potential trademarks worth their weight in filing fees?  What do some of our marketing-type readers think of these phrase-of-the-moment trademark applications? Would you risk building a brand on these?

Amazon’s Latest Trademark Battle: A Race Against “Chime”

Posted in Infringement, Law Suits, Marketing, Technology, Trademarks

Last month, Amazon Web Services (“AWS”) announced a new application, Amazon Chime, for online meetings, including video and voice conferencing, chat, and screen sharing. Amazon Chime will compete against a crowd of other well-established products with similar services, such as GoToMeeting, Cisco WebEx, and Skype.

Just two weeks after Amazon Chime was announced, on February 22, AWS was sued by CafeX Communications for common law trademark infringement. CafeX’s complaint asserted the marks CHIME and CAFEX CHIME, based on its CafeX Chime online conferencing application. CafeX Chime, which offers video and voice conferencing, chat, and document sharing, was launched in February 2016. It won the “Best Of Enterprise Connect” award at the 2016 Enterprise Connect trade show in March 2016.

CafeX brought a motion for a preliminary injunction, arguing a likelihood of success based in part on the parties’ “virtually identical” marks and “identical” products and services. CafeX also argued that AWS was aware of CafeX’s “CHIME” mark and adopted the Amazon Chime mark in bad faith. Regarding irreparable harm, CafeX repeatedly referred to the upcoming 2017 Enterprise Connect trade show in Orlando next week (March 27-29), at which CafeX Chime is the defending “best of” award winner, and at which both parties will be presenting their respective “Chime” products at booths facing each other, a mere 30 feet apart–see the exhibit map below:Exhibitor Booth Map

AWS’s opposing brief argues that CafeX is unlikely to succeed on the merits based on several arguments, including for example: (1) CafeX has not made use in commerce of its asserted marks; (2) CafeX has no protectable trademarks as “Chime” is descriptive for business communication services; (3) the marks are dissimilar based on the “prominent use of [defendant’s] well-known [Amazon] house brand”; (4) there are some differences in the parties’ products; and (5) AWS obtained an Eveready survey that found 0% confusion.  (Note that CafeX vigorously disputes the validity and methodology of AWS’s survey in its reply brief.)

AWS also disputes CafeX’s bad faith argument, stating that although an Amazon employee visited the CafeX Chime booth at the 2016 Enterprise Connect trade show, that employee “had nothing to do with naming Amazon Chime and had never worked on the Amazon Chime team” and that “to the best of Amazon’s knowledge, CafeX was never mentioned by anyone on the Amazon Chime product or branding team” until this litigation. However, AWS concedes that a trademark clearance search was conducted, and then seems to imply that AWS was aware of the CAFEX CHIME mark.

Regarding the balance of equities between the parties (a factor in whether a preliminary injunction is appropriate), AWS stresses that it would be forced to spend hundreds of thousands of dollars and months of time to rebrand its product, reprogram its application, revise websites and marketing materials, and reshoot promotional videos, and that it would be practically impossible to reverse such a re-branding if AWS later prevailed at trial.

What do you think?  Stay tuned for updates on this contentious and high-stakes dispute.  The motion hearing is scheduled for tomorrow, March 24.

Help! Someone Copied My Stuff!

Posted in Copyrights, Fair Use, Infringement

CR Poster

At some point in this digital age, almost every individual or business in the creative space will discover that somebody has copied them. You may see it yourself, or you may get the stomach-dropping “Doesn’t this look an awful lot like…..” e-mail from a friend. It might be that potential client who said your design “was nice, but wasn’t for us.” It could be a big company with a new shirt/container/advertisement with a strikingly similar photograph. It could be a blog post that . . ., well, you get the idea. When you discover that someone copied something that you created, there are a lot of questions and it’s rarely as simple as “someone copied my stuff!” So here are a few things to consider as you decide on next steps.

First, does your work qualify for copyright protection? Any one who creates an original, creative work of authorship has a valid copyright interest as soon as the work is fixed in a tangible medium of expression. The bar for what is “creative enough” to qualify is low. Very low. Even the mere selection, arrangement, and display of facts in a graph or a telephone book may qualify as a creative work of authorship.  However, there are some limitations. Copyright law only protects the expression of an idea, not the idea itself. So while a cookbook focused on chicken sandwiches would be protected, the underlying recipe (and sandwich) is not. Also, words and short phrases like book or movie tittles are not protected by copyright. But yes, the image you grabbed from a Google image search through likely is.

However, as long as you meet have a modicum of creativity, and as long as you didn’t copy someone else’s expression, you likely have a valid copyright. This is true even if you haven’t registered your copyright with the Copyright Office. However, a registration (or pending application to register) is generally a prerequisite for bringing a lawsuit, and can open up additional types of relief if the infringement occurred after the registration of the copyright.

Second, are you the owner of the work? Generally, the author is the owner, unless ownership has been transferred. For businesses, if an employee created the work within the scope of their employment, then the employer is likely the author. The work for hire doctrine can be tricky, so it is best to drill down and confirm ownership before asserting any claim of infringement. If you’re not the author, you may be able to contact the former employee, contractor, etc. and obtain an assignment of the copyright interest.

Third, is the “infringer” really infringing? Copyright law only protects the expression of a work, not the idea of a work. The James Bond franchise has a number of valuable copyright protected works: books, movies, characters, etc. While there are broad rights associated with the franchise, the copyright does not give the owner the ability to claim rights in the idea of a British secret agent. The tough part is locating the fine line between idea and expression. There also a question of  whether the “infringer” is making a legitimate “fair use” of the copyright work. Is the copy part of a social commentary on a relevant issue or topic, like gender stereotypes? Could creation of an online repository of shared links, images, and articles a la Pinterest qualify as a fair use? These are important questions to consider when deciding whether to pursue any further action.

Finally, what are your options? You could start with a short email or phone call. Third-parties may not realize something is protected. The “infringer” may happily stop selling/posting/distributing the copied work. An attorney can assist, providing you with talking points, ghost writing a letter, or if you prefer contact the alleged infringer directly. If the copy is on the internet, there is likely a method for you to request that the website/app/hosting service remove access to the infringing work through a Notice of Claimed Infringement. YouTube, Facebook, eBay, and others all have online submission forms. Be aware, however, making wholly unreasonable claims of infringement could lead to the alleged infringer turning the tables.  Of course, a lawsuit is an (expensive) option but as noted above, a registration or pending application is necessary to bring  a lawsuit. If the work has value (economic or personal), you should consider applying to register the copyright to at least expand your response options, and your potential recovery.

Creative individuals and companies put a lot of time, effort, and money to create something that is valuable to them. When you discover that someone took a shortcut at your expensive, it can be personally offensive and you want to make it stop, now. The law provides an avenue for relief, but unfortunately it often may not provide you with the scope of protection you thought you had. So if you or a client runs across a copycat, hit the pause button. Someone may have “copied your stuff,” but they may not have committed copyright infringement.

Don’t Get TRUMPed By a First-Filer

Posted in Almost Advice, Branding, Infringement, Loss of Rights, Trademarks

Reading over this story on Donald Trump’s decades of headaches (and conveniently-timed successes) with the TRUMP trademark and the Chinese Trademark Office, I was reminded, as I always am, of the importance of filing federal trademark applications.

The examination process for Trump’s marks in China, and the Chinese trademark enforcement regime generally, is rather opaque to U.S. practitioners. There is still a clear lesson to draw from his decades long attempt to register his TRUMP mark. Filling first matters. Even on this side of the Pacific Ocean.

I believe he's about to say "Filing first matters!"

I believe he’s about to say “Filing first matters!”

A common distinction when comparing U.S. trademark law to international jurisdictions concerns priority to use a trademark. Many trademark offices abroad give priority of use to the party “first to file” a given mark with the trademark office. In contrast, U.S. law generally favors the party “first to use” a given trademark. Because common law trademark rights accrue automatically upon use, a federal trademark application does not supersede a first-to-user.

The above is black letter “Trademarks 101” type information. But it’s actually not always the case, thanks to intent to use applications. These applications, which can be filed without any use of the corresponding mark in commerce, essentially turn the “first to use” doctrine on its head. Even if a party is the first to use, it will not have priority over a third party with an earlier filed intent to use trademark application. Consider the following examples:

  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. B begins using the same trademark on August 1 of the same year. A will have priority to use the TASTY SNACKERS trademark over B as the “first to use.”
  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. B files a trademark application for the same trademark on August 1 of the same year. Even though B is now the “first to file,” A will still have priority to use the TASTY SNACKERS trademark over B as the “first to use.” (We’ll assume A uses the mark in all 50 states, to avoid a concurrent use analysis)

So far so good, right? But see what happens when we throw an intent-to-use application in the mix:

  • A begins using the trademark TASTY SNACKERS for potato chips on July 1. One month earlier, B filed a trademark application for the same trademark on June 1. B begins using the TASTY SNACKERS trademark on August 1 of the same year. Here, A is still the “first to use,” but if B obtains registration of the TASTY SNACKERS mark, B will effectively enjoy priority to use the trademark in the U.S. as the “first to file.”

In order to establish its “first to use” priority for the TASTY SNACKERS mark, A would have to (i) oppose B’s application, or (ii) petition to cancel B’s subsequent registration, if A misses the opposition window. And there’s a worst-case scenario – if, somehow, B’s registration is not challenged for five years after registration, B can make his registration “incontestable,” and thereby preclude a petition for cancellation on grounds of priority. Essentially, headaches follow for the first user, if that first user is not also first to file a federal trademark application.

Trademark practitioners will agree that “first to use” is as American as apple pie and baseball. But even in the U.S., it’s hard to overstate the value of a timely-filed corresponding trademark application – ideally, an ITU application as soon as there are concrete plans to use the trademark. Otherwise, a first-filer in the U.S. can make a first-user rather “SAD!”

Pass the…Creative Work

Posted in Advertising, Agreements, Copyrights, Famous Marks, Genericide, Idea Protection, Infringement, Law Suits

I laughed when I saw yesterday’s Adweek article about Heinz adopting Don Draper’s “Pass the Heinz” pitch from the hit show “Mad Men.”  Given the lackluster creativity observed from the Super Bowl ads, have we actually reached a point where a creative says “hey remember that Mad Men episode? let’s just do that!” and the client agrees?  I hope not, and I have to believe that that isn’t what happened here.

According to the Adweek article, the fictitious Sterling Cooper Draper Pryce is given credit for the work alongside DAVID The Agency – an international agency with offices in Miami, Brazil and Argentina.

Their logo reminds me of someone – how about you?

DAVID

Setting aside the strong possibility that this agency (or at least members of it) created the work featured in the Mad Men episode, this real life fact pattern reads like an Intellectual Property law school exam.  What risks does Heinz have in adopting this work?  Who authored the creative work and who may own the copyright in the creative work?  Is DAVID’s use of the print ads an infringement of that copyright?  Could the creators and writers of Mad Men use the Heinz trademark in this matter without their permission?

The story here is “tantalizingly incomplete,” if I may borrow Draper’s words from the clip.  Assuming this was executed with some forethought, there are likely one or more agreements involved.   The creatives behind the ad campaign featured in Mad Men may have assigned the work to the owners of Mad Men as a “work made for hire.”  Someone from Heinz or DAVID The Agency may have obtained permission from the copyright owners of Mad Men to then use the work.  There might even be a product placement agreement with Heinz that would later allow Heinz to use the Sterling Cooper campaign later in real life, and maybe even give Heinz the right to select the agency that creates the Sterling Cooper campaign.

Taking this outside of the fictitious context, what about the fact that this agency essentially stole the pitch from Sterling Cooper?  Most agencies would rightfully have an issue with another agency using their pitch.  Does this have any negative effect on the industry?

From a brand perspective, what do you think about Heinz adopting this “50-year-old campaign” from Mad Men?   And, for the agency, is there any benefit to them for just tipping in Don Draper’s shot from the 3-point arc?  Of course I wasn’t going to make it through this whole post on the eve of the best sports weekend of the year without throwing in a March Madness reference – especially with my team in both the men’s and women’s brackets this year.  GO MARQUETTE!