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Collaborations in Creativity & the Law

ADD A ZERO v. ADIZERO

Posted in Mixed Bag of Nuts

The long running trademark dispute between Adidas and a church in Illinois just had a decision handed down by a federal appeals court. Adidas thought it could outrun a church in Zion Illinois, but it appears that they miscalculated the church’s endurance.

In 2009, Adidas applied to register the ADIZERO mark for athletic apparel. Unfortunately for them, this church had registered the ADD A ZERO mark for apparel as part of fundraising drive in 2005, selling apparel and encouraging people to “add a zero” to their donations. That registration blocked the Adidas application. Adidas then challenged the registration seeking to cancel it on multiple grounds, including a lack of interstate sales.

The TTAB found in favor of Adidas, saying that the sale of two hats to a parishioner living in Wisconsin was insufficient interstate commerce, and cancelled the church’s registration. The church then appealed to the Federal Circuit.

Adidas argued for a de minimis exception, claiming that the sale of two hats was insufficient interstate activity to trigger the commerce clause and what congress could regulate. Unfortunately for Adidas, the commerce clause is broad. In Wickard v. Filburn, the Supreme Court ruled that the commerce clause covered growing wheat for purely personal use. Either Adidas didn’t realize, or they thought, along with many people, that Wickard went to far. Unfortunately for Adidas, the Federal Circuit didn’t agree.

The Federal Circuit ruled that the sale of those two hats comfortably fit into the “use in commerce” requirement that the Lanham Act puts forward. That makes sense, seeing as the Federal Circuit has to follow precedent, and two hats sold across state lines seems to be interstate commerce, especially if wheat grown to feed your own livestock is covered under interstate commerce. Unfortunately for Adidas, the case was remanded for decision on other grounds not decided at the TTAB. So, if they were planning to challenge Wickard, or at least distinguish it, they’re going to have to fight for a while longer.

The ADIZERO application was filed in 2009. I’m assuming Adidas wasn’t expecting to lose at the Federal Circuit 7 years later. I’m also assuming they didn’t think the Church would pursue it this long. They could be pursuing ADIZERO to point of trying to overturn Wickard at the Supreme Court. However, I’m thinking that if they continue, they’re looking to create a de minimis exception, and that’s probably more important to them than ADIZERO. After all, any mark they use will fall under interstate commerce, so they don’t have to worry about a de minimis exception. It would create a path to get rid of a lot of inconvenient prior registrations, however, like ADD A ZERO.

 

The v. Any

Posted in Articles, Branding, Marketing, Mixed Bag of Nuts

When it is clear that you need to take responsibility for an obvious inconvenience, it is far better to own “the” inconvenience than apologize for “any” inconvenience, bravo RBC Plaza:

RBCPlazaEscalator

As legal types know full well, “any” leaves a wide open possibility of there actually being “none” — after all, “zero” is still a number.

You may recall my escalator irritation and related blog post from this past Labor Day, calling out an unnamed building in downtown Minneapolis.

The “any inconvenience” reference is more likely experienced as a non-apology apology.

What is your favorite or least favorite example of a non-apology apology made by a brand?

Does (Real) Life Imitate (Video Game) Art?

Posted in Mixed Bag of Nuts

The cause and effect relationship between art and culture has been a long-debated topic.  Does art depict what actually exists in our culture, or does the art dictate what exists.  It’s a classic chicken/egg debate.   And this ongoing debate occasionally rears its head in the video game space in the form of criticisms, and even lawsuits, suggesting that violence in video games begets violence in real life.  There are loud voices on either side of this debate.

Perhaps the most famous video game violence lawsuit came after the Columbine school shooting tragedy.  In that case survivors of a teacher that was shot and killed by Dylan Klebold and Eric Harris sued a bunch of media sources, including video game companies Acclaim Entertainment, Activision, Apogee Software, Atari, Capcom Entertainment, Eidos Interactive, ID Software, Nintendo, Sega, and Sony claiming that they were liable for having manufactured and supplied violent video games which included Mortal Kombat, Wolfenstien, Mech Warrior, Nightmare Creatures, Doom, Resident Evil, Final Fantasy, and Quake.  According to the Complaint, these games “made violence pleasurable and attractive and disconnected the violence from the natural consequences thereof, thereby causing Harris and Klebold to act out the violence… and trained them how to point and shoot a gun effectively without teaching either of them any of the constraints, responsibilities, or consequences necessary to inhibit such an extremely dangerous killing capacity.”  Interestingly, the lawsuit sought $5 billion in damages, while the families of the victims had reached a $2.5 million settlement with those responsible for providing the real life guns used.  The Court dismissed the claims after concluding, among other things, that “there is no basis for determining that violence would be considered the likely consequence of exposure to video games or movies” and “imposing liability would “burden these Defendants’ First Amendment rights to freedom of expression.”  See Sanders v. Acclaim Entertainment, Inc., 188 F. Supp. 2d 1264 (D. Colo. 2002).  The Sanders lawsuit was filed in 2001 and was actually the second lawsuit that accused video game manufacturers of being responsible for school shootings.  The first was filed in 1997 and related to the Heath School Shooting in Kentucky. Since those lawsuits, there have been other various legal skirmishes arising primarily from efforts to limit access to such games.  Those efforts have generally resulted in the laws being found unconstitutional.

There have been various studies over the years concluding that violence in video games or other media do not cause real world violence.  Erik Kain at Mother Jones has done a fairly exhaustive summary of the science.  However, as with a lot of issues in our society, science doesn’t necessarily end the debate.  Notably, according to the Kain article, President-elect Trump previously tweeted that “Video game violence & glorification must be stopped–it’s creating monsters!”  We can reasonably expect that video games will be part of the debate anytime people are looking for reasons behind an incomprehensible tragedy.  That may ultimately result in a misguided effort to regulate the gaming industry, but for now, the science and the courts are against this.

Is Your Intent-to-Use Trademark Application Vulnerable?

Posted in Fashion, TTAB, USPTO

A common misunderstanding about trademark law involves what is actually necessary in order to “own” a trademark. There are a number of requirements that many companies miss if the company doesn’t do its research or hire an attorney. In fact, a company can file an application to register a mark and obtain a registration, but then when a dispute arises, find out that its application will be cancelled for failure to comply with the necessary rules. The Trademark Trial and Appeal Board (“TTAB”) recently provided us all with a cautionary example of what can happen with respect to failing to follow the rules for certain types of applications.

In the United States, merely “filing” to register a trademark is insufficient, even if nobody else has rights in that mark. In order for a mark to be valid, the owner must have used the mark in commerce and, in order to obtain a federal registration, the mark must be used in interstate commerce. Nearly thirty years ago, the rules for obtaining a registration were modified slightly to allow applications to register marks based upon the intent to use a trademark in the future, instead of the previous rule requiring actual use in interstate commerce. This is commonly referred to as an Intent-to-Use (“ITU”) application.

In some ways, an ITU application allows a company to “reserve” rights in a trademark before it begins using the mark. A primary benefit of the ITU application is that it allows the Trademark Office to review the application before the applicant has invested significant money in packaging, marketing, and other items. If the Trademark Office rejects the application, the applicant may save money by avoiding the cost of rebranding the product or redeveloping marketing materials.

However, applicants without the advice of an attorney often don’t realize that, to be valid, an ITU application requires the applicant to have a “bona fide intention . . . to use a trademark in commerce” at the time the application was filed. 15 USC 1051(b). An applicant cannot just file an application because it has an idea for a trademark, or because the applicant thinks it would be a good name.

The applicant in The Trustees of the Bonnie Cashin Foundation v. Lake recently discovered this requirement the hard way. There the applicant applied to register the mark BONNIE CASHIN in connection with various handbags and clothing items. Bonnie Cashin (shown below) was a well known fashion designer.

Bonnie Cashin

Unfortunately for the applicant, the TTAB granted a Motion for Summary Judgment finding that the applicant lacked a bona fide intention to use the mark on the filing date of the application and denied registration of the application (decision available here).

So how do you prove that you have a bona fide intent to use a mark? Documentary evidence goes a long way, such as marketing plans, product development, contacting manufacturers or retailers, etc. can all help establish a bona fide intent to use. On the other hand, if there is no documentary evidence , then this can be sufficient to establish that the applicant lacked a bona fide intent to use, unless the applicant can identify other facts that demonstrate this bona fide intent.

However, the only steps the applicant had taken to use the mark in commerce consisted of (1) filing the trademark application; (2) writing a book about her relationship with Bonnie Cashin; (3) promoted and discussed her relationship with Ms. Cashin in the press; and (4) while an employee of the Bonnie Cashin Foundation, promoted and marketed the Foundation.

The TTAB rejected this evidence as insufficient. None of the evidence demonstrated commercial steps to use the mark in commerce in connection with handbags or clothing items. The book and accompanying also did not occur until 2016, more than 4 years after the filing date of the application. Although the TTAB will consider evidence that occurs after the filing date, here the gap in time was too long for the TTAB to consider it credible, notwithstanding the other deficiencies. The TTAB also determined that the applicant’s work on behalf of the Foundation was irrelevant as the actions were taken on behalf of the Foundation. Accordingly, the TTAB granted the opposition and refused registration of the application.

So if you are considering filing an application, or assisting a client with filing an application, take a moment before submitting to evaluate whether your client has a bona fide intent to use the trademark. Identify the facts that support this bona fide intent and confirm that, if necessary, there would be some documentary evidence to support these facts. Doing a little work up front can help you avoid losing your registration and avoid the time and cost of an opposition or cancellation proceeding.

Puttin’ on the “Ritts”: Political Speech and Fair Use

Posted in Mixed Bag of Nuts

Leaving aside the outcome of election day (and indeed I confess I wrote this before the polls closed), I couldn’t help but notice these ads in downtown Minneapolis:

IMG_0423

Look familiar? In various other contexts, this could easily raise the ire of trademark counsel. But the political context enjoys some special protection. Various cases have held that “artistic or political use” of a trademark do not violate the Lanham Act so long as the level of relevance to the underlying work is “above zero.” Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

Where the First Amendment and the Lanham Act intersect, the value of political speech takes precedence. So the sign gets to stay, even if you know nothing about Chris Ritts and his candidacy for Hennepin County judge — other than it leaves a buttery, flaky impression in your mind.

South Texas College of Law: A Rebranding Update

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

As Steve wrote about a few weeks ago, the South Texas College of Law changed its name in June to the Houston College of Law, with a newly designed brand, shown below.

new-Houston-College-of-Law-logo_193549

This rebranding effort sought to market the school’s urban location in Houston.  Since June, the school spent tens of thousands of dollars on a rebranding and marketing campaign, including billboards, banners, revising its website and social media, changing letterhead, etc. Unfortunately, soon after the announcement, the University of Houston filed a lawsuit in federal court, alleging that the new name infringed on the University of Houston Law Center name and design.  Both brands use the word “Houston” and use the colors red and white.

University-of-Houston-Law-Center_160621

The University of Houston argued in federal court that the public would likely confuse the two names and believe that the two schools were affiliated with each other.  As Steve discussed in his post, the federal court granted a preliminary injunction, holding there was a “substantial likelihood of success on the merits” of the University of Houston’s infringement case.

In response to this unfavorable preliminary-injunction decision, and after five months of litigation, the Houston College of Law recently agreed to select a new name in order to settle the lawsuit.  On Monday, it was announced that the Houston College of Law would rebrand back to its original name, with the addition of “Houston” at the end. The school also agreed to use the color blue, rather than red and white. The new name will be the South Texas College of Law Houston, with the design shown below.

southtexascollegeoflaw_houston

As of today’s post, the school’s website still uses the “Houston College of Law” name and brand–but there is a prominent announcement on the home page regarding the second name change.  The South Texas lawyers estimate this second rebranding will cost over $400,000, although the University of Houston disputes that figure.

A couple takeaways.  First, before embarking on a major rebranding effort, it is critical to undergo a comprehensive trademark search, both for registered and unregistered marks, particularly those in the same geographic area. It appears that South Texas did so in this case, but determined that its rebranded mark would not infringe on the University of Houston mark. Nevertheless, if a search reveals a mark with significant similarities, sometimes it is best to revise the proposed mark. Other times, it can be helpful in some cases to communicate with the owner of the similar mark, either formally or informally, to determine if there are objections (although such communication is not always advisable).  Dealing with objections beforehand can allow the parties to agree to modifications and avoid disputes.  This can save substantial time and money on multiple rebranding efforts and litigation, as seen in this case.

Second, I’m not sure that the second “Houston” re-brand is a significant improvement from the original “South Texas College of Law.”  The additional word could add some clunkiness to an already long name.  On the other hand, adding the word “Houston” seemed to be the major goal of the rebrand–reminding prospective students of the school’s urban location–so there could be some benefit.  What do you think?  Which of the three brands (original, first rebrand, or second rebrand) do you like the best?

 

Marmots and Mammuts Living in Harmony?

Posted in Advertising, Articles, Branding, Fashion, Infringement, Marketing, Trademarks

Taking a spin through REI for a jacket yesterday, I happened upon a Swiss outdoor clothing brand that is a new one to me, called Mammut:

MammutLogo

MammutPhoto

 

 

 

 

 

 

 

 

 

 

My favorable experience with Marmot outdoor clothing (at REI too) had me taking a second look (and searching for any connection with Marmot), given the close similarity in the names:

MarmotLogoMarmotPhoto

 

 

 

 

 

 

 

 

 

Despite the similarity in the brand names, it appears there is no connection between the clothing brands. As trademark types tend to say, they appear to peacefully co-exist in the marketplace.

Similarity for trademark purposes is governed by considering similarity as to sight, sound, and meaning. It seems pretty clear to me that there is similarity in sight and sound, but not meaning.

As to the sight and sound of the words themselves, the beginning, middle, and end are the same, the two-syllable cadence is the same, and the visual identity of the red-colored Marmot term can be viewed as Mammot, with a telescoping of the nearly-touching lower case “r” and the adjacent letter “m”. What do you think?

When it comes to meaning, however, it isn’t a close question, assuming the relevant public understands that mammut translates to mammoth, and further assuming consumers understand that a marmot looks like this (credit to Inklein), nothing like a woolly mammoth:

Marmot

Perhaps the focus on different meanings to help justify peaceful coexistence has been furthered by Mammot’s inclusion of the depiction of a mammoth as part of its visual brand identity.

On that point, it is interesting to note that Marmot has been federally-registered as a standard character word mark in connection with clothing items, for almost thirty years, with Marmot claiming first use in the U.S. all the way back to 1974.

On the other hand, while the Mammut visual identity complete with the mammoth logo shown above has been federally-registered in the U.S. for clothing items since 2000 (initially not based on use in commerce, but instead on a Swiss trademark registration), the word only Mammut standard character mark has only been registered for almost exactly five years — in fact, drum roll please, today is the last day a petition to cancel could be filed against the Mammut word-only trademark registration, at least on priority and likelihood of confusion grounds.

I’m thinking that the Mammut word-only trademark isn’t likely to become extinct, given the present timeline, but who knows, stay tuned, stranger things have happened.

To the extent you were advising Marmot would you be comfortable allowing the word-only registration to stand for Mammut without the mammoth logo to clarify the meaning?

Such a Nasty Trademark

Posted in Mixed Bag of Nuts, Social Media, Television, Trademarks, USPTO

After the last presidential debate, the Republican nominee’s “such a nasty woman” utterance led to somewhat of a rallying cry.  Within minutes, #Nastywoman was trending across social media, and streaming of Janet Jackson’s “Nasty” spiked 250% on Spotify.

While many debated the societal and political implications of the comment, a few enterprising individuals recognized a business opportunity instead.  On the day following the debate, two federal trademark applications were filed for the phrase.  Mike Lin filed an application for NASTY WOMAN for “on-line retail store services featuring clothing, posters, pillows, mugs, bags, and mobile electronics cases and covers.”  On the same day, Colin Al-Greene filed a trademark application for NASTY WOMEN 2016 for use in conjunction with t-shirts.

Since then, eight more applications for NASTY WOMAN, and one application for NASTY WOMEN VOTE, have been filed with the USPTO.  Five of the NASTY WOMAN applications were filed by the same applicant–A.V.W. Inc.–for various goods, including one for a NASTY WOMAN body spray.  Interestingly, all five applications were filed as “use in commerce” applications, rather than “intent to use” applications.

A “use in commerce” application under Section 1(a) of the Lanham Act is an application for a mark already in use in connection with the goods or services identified in the application.  This type of application allows the applicant to establish a priority date earlier than the application filing date for a mark already in use.  However, as stated in the Trademark Manual of Examining Procedure, the relied upon use must be “a bona fide use” of the mark “in the ordinary course of trade.”  That is, the goods must be “sold or transported in commerce.”

A “use in commerce” applicant must submit a specimen illustrating actual use of the mark in commerce.  In many cases, a specimen may be a photo of a product that was sold bearing the mark, or a tag, product label, or packaging, for example.  A specimen is not a mere mock-up of the applicant’s intended use.

Following are some of the specimens filed in connection with A.V.W. Inc.’s NASTY WOMAN marks.

mug

Application No. 87212614 for coffee mugs.

notebook

Application No. 87218567 for spiral-bound notebooks.

bag

Application No. 87218577 for backpacks, book bags, sports bags, bum bags, wallets and handbags.

At the very least, these will likely lead to ornamental refusals, as the marks appear as mere ornamentation across the goods, rather than designators of source.  As far as whether these specimens indicate a bona fide use in commerce, they look like hastily drawn mock-ups to me.  What do you think?  Is this enough for a bona fide use?

 

Cubs – The Brand

Posted in Mixed Bag of Nuts

As I write this, the Cubs are getting ready for game six of the World Series. It’s win or go home for the Cubs, who are undoubtedly hoping to force a game seven on Wednesday. They are undoubtedly hoping to win game seven as well.

For those that aren’t aware, the Cubs were last in the World Series in 1945. My grandfather, a die hard Cubs fan since childhood, recalled catching pieces of that series on WGN’s AM station while he was on a troop ship coming back from World War Two. That World Series was still segregated – Jackie Robinson broke the color barrier in 1947. The last time the Cubs actually won the World Series was in 1908. It’s been a long time.

The Cubs have been great fun to watch for the last two years. They’re a young team that clearly has a lot of fun, and have done well while having fun.

You would expect Cub’s fans to want a game seven, and hopefully a World Series win, more than the team itself. And most do. As I said above, it’s been a long time.

However, it turns out that quite a few Cubs fans actually wish (secretly I assume) that the Cubs don’t win on Wednesday (if they win tonight, that is). Why? It’s been a long time. So long, that they’re not sure what it will do to the team, the fans, the entire culture. It seems a form of Stockholm syndrome. Cub’s fans have lived losing. Most of them, for their entire life. Only a few are still around that remember that 1945 World Series (which they lost, I remind you). They have come to identify with their captors. And while they all want their freedom again, to bring home the Commissioner’s Trophy, some are not quite ready to leave the friendly confines of losing.

Losing has been an integral part of the Cubs’ brand. Growing up, if the Cubs won their first game, my friends would joke that it was the only time that season that they would have a winning record. If they lost the first and won the second, the joke was that it was the only time they’d be at .500. The lovable losers. The common refrain has always been “Next Year.” The curse has always been in the open. It’s something they’ve adopted as their own.

Billy Goat

For Cubs fans, loss is something of a communion, an affirmation of faith. Though instead of wine, they use something more like Malört. And just like Malört, it lets you know who your people are.

Malort Jersey

That’s my good friend Mario’s Malört jersey that he got Jeppson’s approval to use for his soccer team. He’s a die hard Cubs fan, a Malört enthusiast, and all around awesome guy.

MalortOur loyalty runs deep.

A brand and trademark are source identifiers. They are relied upon for a consistent experience and outcome. That quality and experience need not be high quality or good experience. For Cubs fans, the years have provided some variance in outcome, as all franchises do. The Cubs have done better some years than others, but the curse was always there to set things right. The experience for Cubs fans has been consistent. Next year. But you have your friends beside you. And the pride of saying you’re in the seats come foul weather, or eventually, fair.

Increase Recall of Your Message By…

Posted in Advertising, Almost Advice, Branding, Guest Bloggers, Look-For Ads, Marketing

-Mark Prus, Principal, NameFlash Name Development

Yes, I know the title of this post is incomplete. That is what this post is all about. Marketers know that “unfinished tasks” are the most memorable. Your brain seeks “cognitive closure” and so you will remember unfinished tasks until you complete them. This effect is called the Zeigarnik effect after Bluma Zeigarnik who studied this effect in the early 1900s.

puzzle piece

The first publication of the Zeigarnik effect in 1927 was based on Bluma’s observation of a waiter in the local beer garden who had an uncanny ability to remember the orders of multiple diners all the way through delivery of the meals. However, after the meal (once the waiter’s task was completed), the diners would cover up their plates and the waiter could not come close to recalling what the all the diners had ordered. Zeigarnik postulated that the waiter had extreme cognitive focus on the unfinished task that enhanced his recall, but once the meals were delivered that focus shifted elsewhere.

There are numerous studies validating this effect. My personal favorite is a recall test of advertising in which consumers watched a 30-minute TV show with ads for soft drinks, mouthwash and pain relievers (http://www.acrwebsite.org/search/view-conference-proceedings.aspx?Id=12042). In a crossover design, respondents sometimes saw ads that were full-length and sometimes saw ads that were clipped with the last 5 or 6 seconds missing. Researchers found that consumers remembered specific details about the unfinished ads significantly more than the finished ads in 3 different timeframes: immediately, 2 days later and 2 weeks later. Clearly lack of closure is a powerful tool in marketing!

So how can you use the Zeigarnik effect in your marketing? Well, you can’t just start showing ads that are clipped at the end and hope for the best.

One approach to leverage “the power of the incomplete” is to create “unfinished business” in the minds of your target market by igniting their curiosity. If your messaging causes a consumer to become curious about your product, it is likely that the person’s brain will view your messaging as an incomplete task that requires further investigation, which may lead to a Google search or click on your website. I discussed the science behind this approach in the first chapter of my branding book The Science of Branding: (www.amazon.com/Science-Branding-Proven-Better-Decisions-ebook/dp/B00TBOL6YA).

As an example, consider Buddha Balm Lip Balm. In my case, I was intrigued by the use of a key figure in Buddhism to sell something as trivial as lip balm. Buddha is recognized by Buddhists as an enlightened teacher who shares his insights to help others in their suffering. Turns out the lip balm is “designed to awaken the senses and promote awareness” and to “enhance lives and inspire positive emotional and physical well-being” so once I saw that connection I “completed the task” and was ready to move on. But I will remember Buddha Balm!

lip balm

Unfinished business is something that your brain hates, so leverage the Zeigarnik effect in your marketing to engage your consumers!

 

Mark Prus is a marketing consultant who offers a name development service NameFlashSM which is based on a strategic approach to name development.

www.nameflash.com