Collaborations in Creativity & the Law

Austin’s SXSW Festival Wins Trademark “Fight” with the Australian Labor Party

Posted in Articles, Branding, Fair Use, Famous Marks, Goodwill, Infringement, International

Austin, Texas is well-known for its food, music scene, and of course its University of Texas Longhorns. The exclamation point on Austin’s notoriety though is the annual South by Southwest (a.k.a. SXSW) festival. Since its first year in 1987, the festival has grown into one of the largest music festivals in the world and, in addition to music, includes conferences, roundtable discussions, and viewings in the world of film, media, technology, and anything “new.”



The SXSW has generated intense buzz, notoriety, and (most likely) economic benefits for the Austin area. Unsurprisingly, many other cities have attempted to create similar festivals of their own. Over the years it has requested changes to SVSX / Silicon Valley Sound eXperience in San Jose, California (changed to C2SV YxYY / Yes by Yes Yes in Brooklyn, New York (changed to Yes and Yes Yes), NX35 / North by 35 in Denton, Texas (changed to North by 35), and others.

Even the White House has gotten in on the action, hosting the first ever SXSL (South by South Lawn) event earlier this week on October 3. The White House’s event SXSL event was promoted in tandem with SXSW, though, so it appears no risk of infringement there.

In Australia, the Labor Party sought to create buzz with a proposed annual music festival in Canberra, which is apparently in the Southeast part of Australia. The Labor Party’s proposed name for the festival was, you guessed it, South by Southeast. According to TheMusic.com.au, SXSW’s Australia representative Phil Tripp had a “friendly conversation” regarding the proposed name. Tripp informed the media outlet that “We’re not angry, we’re cool with what’s going on [but] with trademarks, you have to assert your rights.”

Based on public reports, the exchange was friendly and resulted in a quick resolution with no letters, threats, or lawyers. The SXSW rep described the situation as a common occurrence, and was even friendly enough to imagine the innocent way in which the name was proposed:

What [Labor] did was, they looked at our event — everybody knows South By, so to speak — and they go, ‘Ooh, wouldn’t it be great if we could do something like South By Southeast?’ That’s where we are!” Instead of South By South By South, which would be much more original [laughs]

Okay, so he took a jab at the Labor Party’s imagination and creativity, but they kind of had it coming.

When dealing with issues of trademark infringement, there are times where a business to business contact works best. There are times when it is better for the communication to come directly from a lawyer. Even then, the content and tone of any of these communications can vary across a wide spectrum. In the end, SXSW’s approach to enforcement demonstrates again that there is no such thing as a “one size fits all” approach to trademark enforcement and that the strategy of how you say something is just as important as what you’re saying.

Nihilist Arby’s: We Have The Tweets

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Marketing, Social Media, Trademark Bullying, Trademarks

I recently came across this new piece of merchandise available for sale online:

Screen Shot 2016-10-05 at 6.28.49 AM

Look familiar? Those familiar with the restaurant chain Arby’s likely think so.

The shirt is a product of the parody Twitter account @nihilist_arbys, created by a former writer for The Daily Show. With occasional references to current events, Nihilist Arby’s darkly comedic tweets are chock-full of cynical missives on life and humanity, and they often close with “Eat Arby’s.”

With over 230,000 followers, the account’s creator, Brendan Kelly, has certainly struck a nerve. As reported by Adweek, the account may “prove to be instructive for millennial-minded [advertising] practitioners, and the tweets collectively paint a picture of how Kelly created a social-media sensation.” At one point last year, the account even obtained better engagement numbers than the actual Arby’s social media account.

But Twitter accounts are one thing, as the site is chock-full of fake accounts and parodies of overreaching brand engagement. But what about actual, physical merchandise? Does that also escape trademark infringement liability under the guise of parody?

The Fourth Circuit dealt with this question in Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, in which a pet products manufacturer using the mark CHEWY VUITTON successfully overcame a claim of trademark infringement based on a parody defense. According to the Fourth Circuit, parody is defined as “as simple form of entertainment conveyed by juxtaposing an irreverent representation of a trademark with the idealized image created by the mark’s owner.” To constitute a permissible parody, the Court said the allegedly infringing mark used must convey two messages – that it is both the original and it is not the original mark:

“A parody must convey two simultaneous — and contradictory — messages: that it is the original, but also that it is not the original and is instead a parody. This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus, [a] parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.” (internal quotations and citations omitted)

We can see these elements take form with Nihilist Arby’s merchandise, that is, the “hat” logo and font are almost immediately recognizable as referring to Arby’s. But in order to constitute a permissible parody, there must also be differentiation to “immediately convey” a joking and amusing message. As the only difference is the wording (i.e., “NOTHING” instead of “ARBY’S”) this may be up for debate.

The distinction might not quite be “immediate,” as to actually understand the parody at work, consumers may need to be familiar with the parody Twitter account as well. So while there may be some room for an infringement claim, I’ve previously suggested it’s often more beneficial to avoid the negative PR that may come along with actions perceived as “trademark bullying.”

We’ll see if the merchandise remains for sale, or if the restaurant chain decides to take any adverse action. In the meantime: Enjoy Arby’s.

The Anti-Advertising Ad Campaign

Posted in Advertising, Guest Bloggers, Marketing, Mixed Bag of Nuts

–James Mahoney, Razor’s Edge Communications

Recently, a group named Glimpse bought out two weeks’ worth of the ad space in London’s Clapham Common underground station and filled it with pictures of cats. You can read the details as reported by PRI.org here.

In a nutshell, though, the guy who founded Glimpse and launched the project, James Turner, said his intention was to “…imagine a world where public spaces were designed to make you feel good…rather than [advertise] the stuff you can buy in the shops.”

Hence, pictures of cats filling all the ad space on the platform, stairs and escalators (which apparently were working well, Steve Baird, unlike the infamous skyway’s escalators).

So, how did Glimpse fund their project? Why, by advertising on Kickstarter and getting 600 people to pony up about $30,000.

And what did the posters present? Why, awareness of “The Citizens [sic] Advertising Takeover Service”; promotion of the Cats Protection feline welfare charity; and a line-up that includes cats currently available for adoption.

Looks like it’s a hit, attracting tourists, foreign media, and selfie aficionados.

It’s a confirmation that a powerful, creative, on-target and well-executed idea gets results. In this case:

  • Revenue (initial funding from the Kickstarter target audience)
  • Response (people heading for Clapham Common just to see the ads)
  • Sales (cats adopted)
  • Memorable awareness (for Cats Protection, Clapham Common tube station, and likely Glimpse/The Citizens Advertising Takeover Service), and
  • Momentum (which Glimpse can choose to capitalize on or not with subsequent projects)

Not bad for an anti-advertising advertising campaign.

Supreme Court Benches Dan Snyder’s Team

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

Last week the U.S. Supreme Court agreed to hear Mr. Simon Tam’s arguments and review the Court of Appeals for the Federal Circuit’s majority decision striking as unconstitutional Lanham Act Section 2(a)’s bar against the federal registration of disparaging matter, so it will decide the following issue, once and for all:

“Whether the disparagement provision 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 you may recall, Tiffany previously wrote how Dan Snyder’s Washington D.C. NFL franchise asked to have its district court loss and appeal jump over the 4th Circuit Court of Appeals to go directly to the Supreme Court, if the Court were to decide to hear the Tam case.

As much stock as the team has put in the constitutional challenge to defend its several R-Word registrations, found offensive and disparaging to Native Americans, I suspect Mr. Snyder and his lawyers don’t relish the idea of sitting on the sidelines while Mr. Tam’s counsel argues the constitutional issue to the Court.

Earlier today the Supreme Court denied the team’s request, so Snyder’s team of lawyers will have to sit out for that important oral argument, although I suspect they’ll be one of many to submit a written amicus brief, as a “friend of the court.”

Why doesn’t Dan Snyder instead focus on being another kind of friend and get on the right side of history? And, doesn’t Mr. Snyder’s refusal to ever consider a name change, even after losing the registrations, actually undermine his Free Speech challenge?

As you know, my view is that Section 2(a) of the Lanham Act should be upheld as constitutional:

Stay tuned for more and let’s hope that Georgetown Law School Professor Rebecca Tushnet’s insights on the constitutionality of Section 2(a) carry the day at the Court.

Branding Tips from 5 Awesome Apps

Posted in Branding, Guest Bloggers, Marketing, Social Media, Social Networking

Debbie Laskey, MBA

Take a look at anyone’s smartphone or tablet and you’re bound to swipe through screen after screen of applications, or more commonly known as apps. Some apps are pre-programmed into the device, such as, calendar, maps, and stocks. And, of course, there are also apps for contacts, a camera, and social networks. But others are chosen by the device owner. Many marketers are curious as to why you chose the apps on your device, but more importantly for all marketers, what do popular and successful apps teach us about brand equity and branding? Here are some branding tips from my five favorite apps.


This app is useful because it allows the user to provide the URLs for countless blogs, and then each day, new posts for each blog are available for reading in one easy space. No more searching for each blog’s URL separately. No more searching through Twitter for each blog’s latest post. This is a one-stop app if you enjoy reading blog posts and follow more than a few bloggers.


How does your brand communicate your content? How often do you communicate with your audiences? Does your brand have a blog?


This app is memorable because it provides a daily piece of art with information about the specific piece of art, its artist, the time it was created, and where it is housed. The art spans all genres and time periods. Users are just as likely to see a piece of art by Jackson Pollack as a sculpture from the Acropolis. If you cannot visit a museum or gallery on a regular basis, you can get your art fix on your mobile device with this app.


Does your brand think of your customers and prospects as art lovers? This app reminds all marketers to create high quality images while simultaneously taking us on a daily museum visit without standing in line or having to deal with public transportation or parking. When you show visual content (photos and videos) to your audiences, how much time do you spend on making sure that the visual content is high quality? Continue Reading

For Wrigley Field Street Vendors, It’s Win or Go Home

Posted in Advertising, Branding, Counterfeits, Fair Use, Fashion, Marketing, Trademarks

The Chicago Cubs are rolling into the playoffs, putting the finishing touches on a historically dominant regular season with over 100 wins. Cubs fans (like me) even dare to dream that the century-plus long championship drought may finally come to an end this fall, if the team can carry its impressive form into the postseason.

Also coming to an end, if the Cubs have their way: the unauthorized T-shirt and merchandise sales outside Wrigley Field. The Cubs’ home ballpark is planted right in a bustling residential area, surrounded by bars and rooftop venues. The various street vendors lining the streets are a fixture of the gameday experience at Wrigley, if only because of their seemingly insurmountable numbers.


It seems fall is an important time for both the team and the Cubs’ trademark lawyers. the Cubs and Major League Baseball Properties, Inc. (the IP ownership arm of MLB) brought suit last week against a laundry list of parties alleged to be “deliberately free riding on the success of the Cubs and trading – without a license or permission – on the substantial goodwill associated with the Cubs’ trademark and trade dress. The Cubs allege rights not just in their various logos (and the letter W, as previously discussed here), but also in “the combination of their iconic blue-and-red color scheme and other indicia.”

The Cubs then allege various street vendors utilize the Cubs’ trademarks and associated trade dress on T-shirts sold “around and near Wrigley Field in Chicago, Illinois, and on the Internet.”  The (now-amended) Complaint can be found in full here. The Cubs’ complaint also seeks a non-specific court order “allowing them to work with law enforcement to seize counterfeit or trademark-infringing merchandise spotted for sale outside the ballpark,” according to the Chicago Tribune.

Taking a look at the shirts captured in the complaint, there are certainly examples where the Cubs have a legitimate grievance, and others that tend to strain credulity:

Screen Shot 2016-09-28 at 6.08.13 AM

An infringement case may well be open and shut as to those shirts with the “C” or “Cubbie Bear” logo, or even the “W” letter from the Cubs’ “win” flag. But those who have been to Wrigley Field might agree there are countless examples where vendors do not use any Cubs intellectual property, and allude to the team more creatively. The “WE ARE WORLD SERIOUS” shirt above would be a prime example of this – were it not for the “W” flags flanking either side of the shirt’s logo. Still, it’s hard to wonder what precisely the Cubs see as infringing in the “CENTRAL DIVISION 2016 CHAMPIONS CHICAGO” shirt in the bottom row. If anything, it might be a tailor-made case of nominative fair use.

The Cubs’ request to actively enforce its trademarks in the Wrigley Field area is certainly a novel one, and appears to be timed to seize upon the influx of interest (and cash) that surrounds playoff baseball. T-shirt vendors might find the “Friendly Confines” to be a bit less friendly in October, unless they have the means to defend a federal trademark infringement suit.

A new NHL team: The Las Vegas Silver (or Desert) (or Golden) Knights

Posted in Advertising, Branding, Marketing, Mixed Bag of Nuts, USPTO

Have you heard about the NHL’s newest, not-yet-fully-named hockey team, based in Las Vegas? Although the team’s inaugural season will not begin until October 2017, season tickets have already sold out. This exciting news was a big relief for the team, who faced some skepticism about market demand for a 31st NHL team, and because Las Vegas has not historically been a popular home base for professional sports teams. In fact, no professional sports team has ever been based in Las Vegas, with the temporary exception of the Utah Jazz, who played 11 games there in the 1983-84 season.

In early September, the team owner, Bill Foley, announced the team name… well, part of the team name. During a radio interview, Mr. Foley revealed that the name would be the Las Vegas “Something Knights.” Later, it was disclosed that the name would be one of three options:  The Las Vegas Silver Knights, Desert Knights, or Golden Knights. But the final announcement of the full team name will not take place until November. Mr. Foley assured future fans that the “name is definitely set,” but he “can’t tell you exactly what it is. That’s a secret.”

Last month, on August 23, the team filed intent-to-use (ITU) trademark applications (Lanham Act Section 1(b)) for the word marks Las Vegas Silver KnightsLas Vegas Desert Knights, and Las Vegas Golden Knights. One of the key requirements for seeking registration through an ITU application is a “bona fide intent” to use the mark in commerce. 15 U.S.C. § 1051(b)(1). The Federal Circuit has held that “bona fide intent” means that the “applicant’s intent must be demonstrable and more than a mere subjective belief,” and that the applicant must have a “firm” intent to actually use the mark in commerce and “not merely [an] intent to reserve a right in the mark.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015).

One might wonder whether there was a “bona fide intent” at the time of the ITU filings in August? Presumably the team intends to use only one of the three options as its team name. If the name had not yet been chosen at the time of filing, could there have been a “firm” intent to use each (or any) of the marks in commerce, rather than merely an “intent to reserve” the marks? Or perhaps as of August 23, the team had already firmly chosen which of the marks it would ultimately use (though keeping it secret), in which case the “bona fide intent” requirement could be met–at least for that one mark. The other two marks, if filed for the purpose of maintaining pre-announcement secrecy, would have a harder time passing the bona-fide intent requirement. Or perhaps some type of creative marketing strategy is underway, in which the other two names besides the chosen official team name are planned to be used in some other way. At this point, it’s all speculation. But speculation can make for interesting trademark questions.

What do you think? Any guesses as to which of the three names the team has chosen? Stay tuned for the big reveal in November.

How Would You Pronounce Infringement?

Posted in Advertising, Articles, Branding, Food, Marketing, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

Last week, we discussed Caribou Coffee’s billboard ad referencing transparency — this week another installment from Caribou’s current Minneapolis skyway billboard campaign:


That one made me think of this one, a post from a few months back about Kind nutritional bars and their Ingredients You Can See And Pronounce tagline and trademark:


Marketing types, if you were a brand manager for Kind, would you want to extend that feeling toward Caribou’s advertising use of: “INGREDIENTS — you can — ACTUALLY PRONOUNCE”?

Trademark types, what say you? Does the omission of the word SEE make a material difference? Does the addition of ACTUALLY make a material difference? Actually?

How significant would it be to you that Kind appears to have extended that feeling, directly or indirectly, by not opposing, to a salad dressing brand using Handcrafted With Ingredients You Can Pronounce?

Or, has the phrase “ingredients you can pronounce” just become too common any longer to have a meaningful scope of protection from a trademark perspective?

Last, as to the subject of trademark pronunciation, have you forgotten about these little gems from the archives?

Michigan v. M22: The Road Sign Trademark Battle

Posted in Branding, Law Suits, Marketing, Mixed Bag of Nuts, Trademarks, TTAB
By Larry Page. CC BY 2.0.

Posted on Flickr by Larry Page. License: CC BY 2.0.

If you’re ever driving north through Michigan, particularly during the autumn leaf season, I highly recommend taking the popular “scenic route,” that is, the route bordering the shore of Lake Michigan along the Leelanau Peninsula, following State Highway M-22.  Last year, Highway M-22 was voted into first place among a USA Today top-ten ranking of the “best scenic autumn drives” in the nation.  On such a drive, aside from the beautiful landscape of fall colors and the breathtaking views of Lake Michigan, you may notice the numerous “M22” route marker signs, such as the one pictured to the right.

One Michigan company, by the name of (you guessed it) M22, has capitalized quite successfully on the popularity of the M-22 route.  M22 sells a wide variety of merchandise bearing the M22 mark, such as clothing, hats, stickers, magnets, glassware, wine, and more.  M22 has been granted several federal trademark registrations, including an “M22” word mark and several M22 design marks.  The design marks are, unsurprisingly, quite similar to actual signs on State Highway M-22.  Pictured below is M22’s design mark under U.S. Registration No. 3992159.

U.S. Registration No. 3992159

U.S. Registration No. 3992159

Not everyone has been content with the success of the M22 business and the M22 trademark.  The State of Michigan decided to replace every single M-22 route marker sign (at a cost of roughly $325-350 per sign) with new “22” signs (without the “M”).  The change was reportedly made to combat theft (roughly 90 signs stolen in a 3-year period) due to the popularity of the M22 brand.

A few years ago, the Michigan Attorney General issued an opinion letter, stating that because the M-22 signs are in the public domain, the M22 design should not be subject to trademark protection. M22 disagreed, stating on its website that the Attorney General’s opinion was “incorrect and poorly researched.”  M22’s website provides an in-depth legal argument about the validity of its M22 trademarks, as well as counterarguments against the Michigan Attorney General’s opinion.  M22 argues that under Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (2003), a business may draw upon an image from the public domain, make it its own, and obtain trademark rights by selling goods or services bearing that image.  M22 also asserts that numerous trademarks incorporate public domain works, such as the Disney trademark SLEEPING BEAUTY, and other road-sign trademarks, such as US-1.  According to one search conducted by a trademark practitioner in 2012, nearly 800 federally registered trademarks depict stylized versions of road signs.

In 2013, after the opinion letter, the State of Michigan filed a Petition for Cancellation of the M22 design mark before the Trademark Trial and Appeal Board (TTAB), presenting numerous arguments, including: the M22 mark falsely suggests a connection to the State of Michigan; the mark is primarily geographically descriptive; the mark consists of an insignia of a State, specifically Michigan; and several other arguments.  This cancellation proceeding is still ongoing, after 58 docket entries spanning nearly three years.  Most recently, the TTAB issued an order last month denying Michigan’s motion for partial summary judgment.  Based on the trial schedule set forth in that order, the proceeding should conclude within the next year.

Aside from the TTAB proceeding, a new development recently arose in federal district court.  A few weeks ago, the State of Michigan filed a civil lawsuit against M22, asserting a new argument based on federal highway regulations.  Michigan argues that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited under the Manual on Uniform Traffic Control Devices (MUTCD).  More specifically, Michigan argues that the Federal Highway Administration promulgated a MUTCD standard under which any road signage designs (“traffic control devices”) required by the MUTCD on federally funded highways, including the M-22 signs, are in the public domain and “shall not be protected by patent, trademark, or copyright.”  The case is Michigan v. M22 LLC, No. 1:16-cv-01084 (W.D. Mich.).

This contentious trademark dispute between Michigan and M22 presents interesting questions, including the extent to which trademark protection may arise from “public domain” words and images, such as those found on state-issued road signs.  It also presents the question of whether a mark is geographically descriptive (i.e., consumers would likely associate the goods sold as originating from a geographic place described by the mark) merely because the mark has letters, numbers, or designs similar those on a road sign (see Trademark Act Section 2(e)(2)); and whether design marks originating from state-issued road signs present a false connection with that state (see Trademark Act Section 2(a)) or constitute the “insignia” of the state (see Trademark Act Section 2(b)).  Finally, the recent federal lawsuit raises new questions about the intersection of federal highway regulations and the registerability of marks related to highway signage.

Based on the significant number of trademarks related to road signs, the answers to these questions at the conclusion of the TTAB proceeding and the federal lawsuit could be significant for many trademark owners. Stay tuned for further updates on this dispute.

Trendy Shoemaker Cannot Slay the Fashion King

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

Plaintiff LVL XIII Brands Inc. (“LVL XIII”) must not have heard of the old saying:  “Never strike a king unless you are sure you shall kill him.”  The New York start-up sneaker company decided to take on fashion king Louis Vuitton over a metal plate attached to high-end men’s sneakers.  LVL XIII’s claims were dismissed last week on summary judgment in a 107 page opinion.

Hopefully, Plaintiff LVL XIII fared better last week with its presentation during New York Fashion Week show pictured above.  You may have heard of LVL XIII sneakers, because famous people such as Jason Derulo and Chris Brown have touted the sneakers on television and in magazines.

In the lawsuit, Plaintiff alleged that Louis Vuitton was engaged in trademark infringement and unfair competition by using its rectangular metal toe plate.  Examples of the toe plates at the heart of the dispute are depicted below.hjkyudu

The Court began its analysis of the motion for summary judgment by explaining that for a trademark to have protection, it must be “distinctive.”  An “inherently distinctive” trademark is one in which “intrinsic nature serves to identify a particular source.”  Plaintiff’s mark did not meet this standard.  Accordingly, the Court had to turn to whether the mark had “acquired distinctiveness” by achieving “secondary meaning” among the relevant consumers.  This means that “in the minds of the public, the primary significance of a product feature is to identify the source (e.g., LVL XIII) rather than the product itself (e.g. the sneaker toe patch). Continue Reading