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Collaborations in Creativity & the Law

On the Precipice of Registration Number 5,000,000

Posted in Trademarks, USPTO

Don’t look now, but the U.S. Patent and Trademark Office is about to hit a major milestone: we are only 24,819 registrations away from the magic number 5,000,000. The only thing more incredible than that number is the inexplicable lack of news media coverage. Maybe now that the primaries are over, the USPTO will finally get the attention it deserves.

5 million registrations is a big number. The number itself is remarkable, but what is more noteworthy is the sudden speed at which S.S. Trademarkia is steaming ahead. The first trademark registration issued on August 30, 1870. Registration number 50,000 did not issue until 36 years later. From there, the numbers rose steadily throughout the Twentieth Century, beginning to level out in the late 2000s:

  • 36 years to get to Reg. No. 500,000 (1948)
  • 26 more years for Reg. No. 1,000,000 (1976)
  • 14 years for Reg. No. 1,500,000 (1988)
  • 8 years for Reg. No. 2,000,000 (1996)
  • 5 years for Reg. No. 2,500,000 (2001)
  • 4 years for Reg. No. 3,000,000 (2005)
  • 3 years for Reg. No. 3,500,000 (2008)
  • 3 years for Reg. No. 4,000,000 (2011)
  • 3 years for Reg. No. 4,500,000 (2014)

While the period from 2008 – 2014 appeared relatively steady, the numbers have picked up. Looking at the Trademark Office’s own analysis (based on fiscal year), the number of Certificates of Registration issued from 2009 onward are:

  • 2009: 180,520
  • 2010: 164,330
  • 2011: 177,661
  • 2012: 182,761
  • 2013: 193,121
  • 2014: 206,555
  • 2015: 208,660
  • 2016: 210,000** (Projecting through Sept. 30 end of FY 2016 based on current rates)

That is a lot of registrations. And we’re getting more and more each year. In fact, Certificates of Registration are issuing at a rate of about 4,500 per week. That’s a pace of 234,000!

At this rate, it’s hard not to wonder whether we’re about to run out of trademarks. In fact, some industries, like the beer industry, already seem to be running into this issue (although “Esoteric Historical Event Brew” sounds like a crowd pleaser to me, NPR).

But even if we’re slowly approaching absolute zero of trademarks, we won’t get there before Reg. No. 5,000,000 issues. With that in mind, I’ll go out on a limb and make a bold prediction: trademark registration number 5,000,000 will issue on July 19, 2016.

More important than getting the date right, though, is making sure that the mark that gets the coveted 5,000,000 actually deserves it. There have been a lot of duds over the years for the milestone registrations. Past recipients of the honor include Reg. No. 4,000,000 for POCKET SOCKET for hand tools (really imaginative, Everhard), Reg. No. 3,000,000 for the mark TOT FINDER, which is unfortunately not registered for a GPS-enabled potato finder, Reg. No. 2,000,000 for BODY WISE for bags and briefcases (not terrible, but it’s cancelled! New rule: milestone registrants are required to stay in business and continue to sell their products, renew their registrations, no exceptions).

Thankfully, Reg. No. 1,000,000 comes in strong:

SweetNLow 2

Why yes, that is the background design from a Sweet‘N Low low calorie sugar substitute. Pretty iconic mark, even though it is frequently infringed upon by music score manufacturers with as many legal consequences as calories.

Other than Sweet’N Low, though, none really jump out as being particularly deserving. So, to the extent you’re reading USPTO big wigs, if you could find a way to casually slip one of my client’s applications in between 4,999,999 and 5,000,0001, I’d be very grateful. I’d be happy to draft the Milestone Registrant Rule if it’ll free up some of your time.

32 Hours of Terms and Conditions

Posted in Marketing, Mixed Bag of Nuts, SoapBox, Squirrelly Thoughts, Television

Norway has positioned itself as the leader in the “Slow TV” movement. I’m not sure it’s a movement, actually. Norway is really the only place I know of that this is going on (C-SPAN and golf aside). Slow TV is live coverage of a slow paced event, like a GoPro strapped to a sloth’s head as it goes about its daily business, or grass growing. Shows have been dedicated to topics such as National Wood Night (a four hour discussion on chopping and stacking wood, followed by eight hours of a live fireplace), National Knitting Night (12 hours of knitting), Piip-show (14 hours of birds at a coffee shop) Saltstraumen (12 hours of a tidal current), and Bergensbanen (a seven hour train journey from Bergen to Oslo). Believe it or not, National Wood Night ignited a bit of debate in Norway, with the country apparently divided over the correct way to stack wood.

Fireplace

For the next Slow TV thriller, my money was on a live broadcast of a pot of cold water being brought to boil or perhaps paint drying. I was wrong. The latest to come from Norway’s Slow TV is what I’m sure was a riveting 32 hour live stream  reading of the Terms and Conditions of some of the most popular smartphone apps. That’s right, that thing you click past saying you have read and agreed to the terms when you actually didn’t. 33 of them. It’s actually pretty impressive that it was only a 32 hour event considering they made it through the Terms and Conditions of 33 applications. Apparently the Norwegian Consumer Council chose 33 because it is the average number of applications a Norwegian has on their phone. A few years ago the common estimate was 76 eight hour work days to read the Privacy of Policies of every website an average internet user would come across in a given year. The longest policy the team of readers came across during the broadcast was 54 pages and took 2.5 hours to read.

ForbrukerRadet

The thought behind the event was to highlight the gargantuan task of keeping yourself informed of what you are agreeing to in a digital world and prod some of the companies into creating more user friendly versions. The Norwegian Consumer Council has taken exception with Tinder’s terms granting it a perpetual, irrevocable license to user-generated content. Every now and then there is a wave of fear that goes around about Facebook owning your photos. These are real issues, particularly given the ubiquity of apps.

I’m thinking the Slow TV concept was something of a reaction to the constant connectivity of modern life. Most of topics are nature inspired (train and boat trips), repetitive and soothing (knitting and a fire crackling), or lectures about history (when there was no smartphone). By bringing in the Terms and Conditions of smartphone apps, the Norwegian Consumer Council seems to have breached an unspoken norm in Slow TV. In reality though, the juxtaposition is brilliant and serves to further highlight (or mock) the complexity of and length of some of the documents. Using the key concept of Slow TV (long time periods and slow progression), the Consumer Council contrasts the modern speed and convenience provided by some of these apps with the painful experience of wading through the legalese just below the service. This is really brilliant marketing for their overall campaign to reign in Terms and Conditions.

What Black Mamba, Make America Great Again, and Netflix Fast all have in common

Posted in Advertising, Branding, Fashion, Marketing, Patents, Trademarks, USPTO

– Jason Voiovich, Chief Customer Officer, Logic PD

It’s not a new reality show. Let’s take that off the table straight away. That said, one could be forgiven this year (of all years) for imagining a scenario in which retired basketball great Kobe Bryant teamed up with not-so-retired real estate sort-of great Donald Trump to launch original programming on a new Netflix platform. Heck, I’d watch it.

But alas, it is not meant to be.

Black Mamba, Make America Great Again, and Netflix Fast are all trademarks, recently (and not so recently) filed by their respective owners, staking a claim to a piece of intellectual real estate. But I’ll bet you figured that part out already. What may not be so obvious is when they were filed. It’s the when that gives us a tiny open window into the future plans of these organizations. In other words, these trademarks are an example of potential competitive intelligence. But only if we use them.

Let’s have a brief look at each one.

BLACK MAMBA

In April of this year, Kobe Bryant made important news.

Kobe Bryant’s final game with the LA Lakers saw him torch the Utah Jazz with 60 individual points. It was a fitting end to a dominant career that included five NBA Championships, two Olympic Gold Medals, 18 All Star Selections, one NBA MVP award and nearly 34,000 points scored.

That wasn’t the important news.

Bryant’s retirement was no surprise. Although he could be dominant at times, at 37, he could no longer put the LA Lakers in a position to contend for a playoff spot through sheer force of will.

The big news for Bryant was the registration of the “Black Mamba” trademark in May – a nickname he has used for several years, including in some Nike advertisements. But Black Mamba had never been trademarked. Barring opposition, Bryant will own a distinctive piece of intellectual real estate for use in a variety of applications including shoes and apparel. Effectively exploiting this trademark, much in the same way Michael Jordan does with Nike and the “Air Jordan” trademark, not only secures Bryant’s future, but also changes the fashion apparel landscape.

I wonder how many other apparel manufacturers were monitoring the US Patent and Trademark Office for new submissions and found this one? Could it give them advance notice on an intent to market goods and services? Might they try to oppose it? Might they counter Bryant’s now-obvious strategy with deals of their own to preempt him in the market?

Adidas/Reebok, Under Armour and the like are pretty sharp. I’m guessing they’re on top of it.

Here’s my question: Are you aware of your competitors next major brand campaign?

MAKE AMERICA GREAT AGAIN

As if this political campaign weren’t interesting enough, The Donald has managed to show he’s crazy like a fox. Well before the trademark “Make America Great Again” made its appearance on baseball caps in this presidential election cycle, Donald Trump laid claim to the abandoned Reagan-era phrase.

How long before?

Here’s where it gets really interesting. Trump filed for registration on November 19, 2012, not two weeks after Barack Obama defeated Mitt Romney, winning a second term in the White House. (Trump later updated the filing to include apparel and other uses in 2015).

Curious timing? I don’t think so. It seems very clear to me that Donald Trump had been planting the seeds of a political campaign well in advance of anyone actively paying attention. How different might the political landscape look today if the RNC had paid attention to Trump’s USPTO filings? Would the DNC have begun to assemble a counter-strategy? Could Trump have been blocked?

Perhaps not, but the reality is, they probably weren’t looking at all.

My question again: Have your competitors given you a glimpse into their future, and what are you doing about it?

NETFLIX FAST

There are lots of Internet Service Provider (ISP) speed test sites. (My personal favorite is Speedtest.net by Ookla. I use it when I want to more effectively complain about slow CenturyLink service at home.) On the surface, Netflix starting a speed test service of their own seems iterative and silly.

But it’s not.

You may not realize it, but Netflix (and streaming services like it, but especially Netflix) is one of the biggest bandwidth hogs on the internet. You had better believe the major ISPs realize it. The whole “net neutrality” argument last year was prompted, in part, on the disproportionate toll streaming video services take on connectivity infrastructure.

The fervor may have died down in the public sphere, but the filing of the Netflix Fast trademark is a signal that the company is planning a more active role in the creation of the public narrative. One of the key parts of that narrative is access to their own data on network choke points. They will be able to use that data to effectively partner with local providers to enhance service. Or they might be able to counter the narrative that Netflix is clogging the pipe. Or both.

Are the ISPs and Telcos watching this announcement? Are they thinking ahead? Are they coming up with their own list of possible scenarios? Perhaps.

My question again: Which one of your competitors has telegraphed their public affairs strategy with a trademark filing?

YOU SHOULD BE DOING THIS

I’m admittedly using some big name examples here, so it’s easy to make the case that competitors have the resources and scale to sense and detect these types of threats. But that shouldn’t let us off the hook. In my experience, even small to mid-sized companies can take advantage of low-cost and no-cost competitive intelligence techniques to dramatically improve their early warning systems. The same logic applies to patent scanning, although I find that innovation-driven organizations keep pretty good tabs on the weekly Official Gazette for Patents published by the USPTO.

But in some ways, I think trademark scanning is even more immediately valuable. First, trademarks can be put into the field much faster than patents in the form of marketing and advertising campaigns. That means you have a much shorter window of time to react and adapt. Second, while many organizations may file dozens of patents looking to cover their bases in a number of areas (and possibly monetize their portfolio at some later point), the same really isn’t true for trademarks. You get ‘em to use ‘em. In other words, when you see a trademark filing, odds are that your competitor will be taking advantage of it soon. Finally, while patents are the primary domain of technology-driven organizations, trademarks are useful to every type of organization. You could argue to me that your service organization doesn’t need to monitor the patent gazette, but you can’t argue trademarks won’t impact you.

Bottom line: Using trademarks for competitive intelligence is easy and cheap. You should be doing it.

I Get It, Rapala Will Fill Up Your Fish Cooler!

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

CaptainPhilipRapalaIt took me a little while to find the message and humor in this one. I’m generally not the first to get the joke, probably dead last on this one though, since the fishing opener was last month.

As you know, we have enjoyed commenting on Rapala’s billboard ads each year, but when I first saw this one, I figured it must relate to some inside joke about a certain film I never saw.

How much do you like this Rapala Billboard ad?

I’ll ask a larger question too, how do marketing types go about predicting ad effectiveness when the embedded and intended humor is not immediately accessible to all potential consumers?

Blowing the Whistle on Trade Secrets: Employers Required to Provide Notice of Whistleblower Protections under DTSA

Posted in Agreements, Almost Advice, Law Suits, Loss of Rights

Blowing-The-Whistle

Last month, the federal Defend Trade Secrets Act (DTSA) was signed into law. The DTSA provides remedies for trade secrets misappropriation, including a new federal cause of action, under which private companies can sue for trade secrets misappropriation. The DTSA allows a trade secret owner to seek actual damages, injunctive relief, restitution, and in some cases, exemplary damages and attorneys’ fees. The Act also provides for an ex parte seizure order for seizing property containing trade secrets in some instances of misappropriation

Additionally, the DTSA lays out substantial protections for whistleblowers who disclose trade secrets in order to report a violation of law, and requires employers to notify employees of these protections.

Whistleblower Protections

The DTSA provides that individuals “shall not be held criminally or civilly liable under any Federal or State trade secret law for the disclosure of a trade secret” where the disclosure is made:

  • in confidence to a Federal, State, or local government official, or to an attorney, and solely for the purpose of reporting or investigating a suspected violation of law; or
  • in a complaint or other filing in a lawsuit or other proceeding, and filed under seal.

This language provides for immunity from both civil and criminal liability under any Federal or State law, but only where the information was disclosed confidentially to certain individuals or under seal. Thus, the DTSA does not provide protections for whistleblowers who go to the media or the general public, for example.whistleblower-cartoon

This seems to strike an important balance.  Whistleblowers can fill an important role in some instances, particularly where the public interest is a factor. Unfortunately, the act of reporting an employer’s violation can sometimes necessitate disclosure of the employer’s trade secrets or other confidential information. Once a trade secret is publicly disclosed, it is no longer protectable as a trade secret. As a result, whistleblowing may lead employers to retaliate with misappropriation claims against the whistleblower. It appears that the DTSA is thus aimed at striking a balance by encouraging whistleblowers with broad protections, while maintaining confidentiality of the employers’ information.

Employers to Give Notice

The DTSA also imposes an affirmative duty on employers, requiring that employers provide notice of the immunity provision to employees and contractors. The notice must be set forth in “any contract or agreement with an employee that governs the use of a trade secret or other confidential information.” The notice requirement seems to apply to all employers, as the Act does not define a small business or similar exception.

If an employer fails to provide the required notice, the penalty does not seem particularly harsh. Employers who do not provide the notice can still sue under the DTSA, but their available damages may be limited. Specifically, if an employer fails to provide the immunity notice to an employee or contractor, and later sues that employee or contractor under the DTSA for misappropriation of trade secrets, the employer will not be able to collect exemplary damages or attorneys’ fees. Exemplary damages and attorneys’ fees are otherwise available under the DTSA only in situations of willful or malicious misappropriation, where the employer proves not only misappropriation but also an element of willfulness or malice. Actual damages and other remedies, including injunctive relief and property seizure, are still available for employers who fail to provide notice.

The DTSA went into effect on May 11, 2016. Employers who wish to have full access to all of the available damages provisions under the DTSA may want to consider amending employee and contractor agreements to include the new notice provision.

Who owns Klingon?

Posted in Copyrights, Guest Bloggers, Infringement, Law Suits, Trademarks

-Laurel Sutton Senior Strategist & Linguist at Catchword Brand Name Development

The short answer: No one knows.

The long answer: No one knows, and it’s complicated.

As a linguist, I have more than a passing interest in this issue, which has been in the news recently because of a copyright infringement claim by Paramount Pictures and CBS Studios Inc. against the makers of a Star Trek fan film, Axanar (sometimes referred to Star Trek: Axanar). In the complaint, Paramount claims that “the Axanar Works infringe Plaintiffs’ works by using innumerable copyrighted elements of Star Trek, including its settings, characters, species, and themes.” Among the very long list of copyrighted elements is the Klingon language:

Klingonese or Klingon, the native language of Qo’noS, was first spoken in Star Trek: The Motion Picture in 1979. It was used in several works moving forward, including Star Trek III: The Search for Spock.  (p. 31)

Factually true. But is the Klingon language copyrighted, as Paramount claims? Is it even copyrightable?

A bit of Trek history, to clarify: In the original Star Trek series (1966-69), the Klingons (an alien race) spoke only English. In the first Star Trek movie, a bit of spoken Klingon was heard, but this was not meaningful language; it was made up to sound “alien” by James Doohan (who played Scotty). By the time of the third movie in 1984, the producers decided that they needed “real” Klingon for the Klingon characters to speak, and so engaged linguist Marc Okrand to construct some basic vocabulary, phonology, and grammar. The Klingon language was featured in many Star Trek series and movies over the years, requiring more development by Okrand, who published The Klingon Dictionary in 1985. CBS Television Studios owns the copyright to this book and to other canonical descriptions of the language.

But once Klingon was let loose into the wild, so to speak, it grew and evolved and became a true living language, with thousands at least passingly familiar with it, and a few dozen completely fluent. One man even raised his son as a native speaker, bilingual in English and Klingon. Although only words and grammatical forms invented by Okrand are considered canonical by the Klingon Language Institute (which is not affiliated the Paramount or CBS, but the studios do retain Klingon-related copyright and trademarks, and share rights to any original KLI works written in the language), necessity has demanded that speakers coin new expressions.

So: If Paramount and/or CBS can claim ownership of Okrand’s work-for-hire on the TV shows, the movies, and the dictionary, what about the neologisms not created by Okrand? What about A Klingon Christmas Carol,  a stage version of Dickens’ Christmas Carol performed entirely in Klingon? What about ‘u’, the Klingon opera performed in Europe? And what about the Klingon course offered by Duolingo, the language-learning app?

Paramount owns several trademarks for the word “Klingon”, for toys, computer games, and even beer and wine (they never miss a chance to monetize their IP). But it’s unclear if they’ve tried to trademark individual words for goods or services. In a quick search, I couldn’t find a TM for bat’leth, the iconic Klingon bladed weapon, but I did find an abandoned mark for Qapla Productions – Qapla’ is the Klingon word for “success”. (The abandonment was due to non-response, not opposition.)

The ownership of Klingon is just a small part of the Axanar lawsuit, but it raises many questions about the ownership of constructed languages. Of course no reasonable person would claim to own “natural” languages like English or Mandarin; ownership is restricted to chunks of text (copyright) or use of specific words and phrases in commerce (trademark). Constructed languages, by their very nature, imply a creator and the intellectual property rights that go with it. Thought experiment: How many people would have to speak Klingon natively before Paramount could no longer claim ownership? Ten? Five hundred? Five thousand?

Marc Randazza, a ferocious free-speech defender, is convinced that Paramount cannot have a copyright on the Klingon language, and he lays out his reasoning in an amicus brief for the Language Creation Society. While not taking sides, the group implored the judge to not allow the Klingon language to remain one of the copyrighted materials that Paramount/CBS is claiming is infringed by Axanar. Randazza’s brief, which quotes liberally from and in Klingon, is a thing of beauty.

“Now that Klingon has become an actual living language, Paramount seeks to reach out and stake its ownership by using copyright law. But as ‘Klingons do not surrender,’ neither do those who speak Klingon.” (p. 2)

PS. Okrand is an executive producer of a new documentary called Conlanging, all about the history of constructed languages, opening (hopefully) this fall.

The Do’s and Don’ts of Remembering Notable People as a Brand

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

– Jason Sprenger – President, Game Changer Communications

2016, thus far, has been a busy year for celebrities passing away.  The shock and grief many people feel is palpable.  But it’s not just people reacting to these events anymore; in this new era of social media and creative advertising, it’s never been easier for companies and brands to react.

Take the death of Prince last month, for example.  It hadn’t even been a day after he passed before we started to see brands and companies issuing their own unique statements and remembrances.  3M converted its logo to purple and inserted a teardrop.  Corvette issued a full-page advertisement with a little red corvette pictured and the tagline “Baby, that was much too fast.” Cheerios also weighed in with a simple message, using a Cheerio to dot an “I” in there.  There were many more.

Almost instantaneously, the court of public opinion was in session.  It seemed most of these efforts were well received, and even applauded.  Yet there were others that people skewered early and often.  The reaction was so strong the Star Tribune caught on; I had the honor of being interviewed for a story on the subject, along with other leaders in the Twin Cities business community.

After some reflection on what we saw from brands around Prince’s death, and what the public had to say about it, I think there are some key takeaways we can glean about how to properly recognize and/or remember a celebrity in a situation such as this:

Do:

  • Be human. A big reason social media are so popular is because everyone has a chance to be authentic and themselves through their channels.  Accordingly, brands and companies should do exactly that.  They should convey emotions, if in fact they feel them.  They should console stakeholders, if it’s appropriate.  They generally should speak in the same voice as they normally would in any other post at any other time.
  • Be a part of your community. This can refer to geography; Prince’s death hit hard here in Minnesota because he was one of us.  As such, you saw a lot of local organizations weighing in on his death.  Similarly, it can refer to stakeholder groups and others with shared interests and experiences.  MTV played Prince videos the entire day he died, engaging with its audience in a way that made an impression on the people that hold MTV dear.
  • Relate shared experiences, if appropriate. This is where the Corvette ad was particularly fascinating; Prince song and lyric helped make the company famous, and Corvette paid appropriate homage.

Do NOT:

  • Be opportunistic. Reactions usually strike people one of two ways: they feel genuine, or they feel forced.  If it feels like you’re reacting just for the sake of reacting, or that it isn’t appropriate, then you’re probably right – and the better decision would be not to react at all.  Items that just don’t fit tend to incur a lot of negative public opinion.
  • Be out of touch. Similar to being opportunistic, sometimes a reaction lays it on too thick.  Or an organization with no connections to a particular person or cause – or its followers – will reach out and engage.  These items also tend to be received poorly.

At the end of the day, it’s really pretty simple.  If it feels right, go for it.  If it doesn’t, then abstain.  Now, hopefully, we won’t need this tip list again anytime soon.

The Hashtag / Trademark Paradox: #Trending, but #Proprietary?

Posted in Advertising, Branding, Famous Marks, First Amendment, Infringement, Marketing, Social Media, Social Networking

As the hustle and bustle of the INTA 2016 Annual Meeting drew to a close yesterday, I reflected on the session “#HASHTAGS #EverythingYouNeedToKnow” from Tuesday. It seems trademark protection may not (yet) fit comfortably into the hashtag world.

DuetsBlog previously provided a helpful tutorial on the nuts and bolts of hashtags and how they function, particularly on the sites Twitter and Instagram. As James Mahoney alludes in his post, hashtags serve a collaborative purpose – they organize ideas, topics, and events, effectively creating “threads” of discussions on a medium that is otherwise a stream of consciousness. As brand owners grow in presence on social media, a question has arisen whether certain hashtags may become trademarks – and thus allow brand owners to stop others using those hashtags.

The U.S. Patent & Trademark Office now provides explicit guidance on the standard for registration of hashtags:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.

Most of the foreign jurisdictions discussed at the INTA session articulate a similar standard. Essentially, I see this standard to mean a hashtag mark must itself function as a trademark, and not just “contain” a trademark or house brand. If you’re familiar with hashtags, this might lead to some head scratching.

Consider how the appearance changes when a brand name is used as a hashtag. Applebee’s® gives all the information straight away, thanks in part to use of the registration symbol – it tells others that this is a brand name. But #applebees doesn’t readily convey as much information (and in fact here omits the apostrophe, because for some time hashtags were often “broken” by punctuation or numbering).

Among the social media savvy, the hashtag symbol itself is weighted with its own meaning – a hashtag is a self-contained invitation to be used by third parties on social media, much like an invitation to search for a term on a search engine. It invites users to see what’s already been posted containing that hashtag, and to contribute their own content. Consider the more natural functions of hashtags, such as charity events like today’s #RedNoseDay, which is trending this morning on Twitter. The very idea is to encourage unsolicited and unpoliced third party usage.

This is anathema to many trademark owners, who of course wish to (and are required to) establish control over use of their brand names. And there certainly can be exceptions for hashtags that zealously function as trademarks, and that consumers recognize as brand names unto themselves. Even then, brand owners must be prepared for rampant third-party use of a hashtag mark, and understand that nominative fair use is far more likely to apply in the hashtag context.

Twitter announced some new changes to its 140-character message limit, and will now no longer count username mentions, links, and photos toward the limit. So, we know nothing is set in stone when it comes to Twitter. So I would not be surprised should there come a day when some tweaks here and there make hashtags more trademark-friendly.

 

Second Circuit Weighs in on Nominative Fair Use

Posted in Fair Use

The federal courts of appeals have split as to how to apply the doctrine of nominative fair use in trademark infringement cases. Last week, the Second Circuit endorsed the nominative fair use factors used by the Ninth and Third Circuits. At the same time, however, the court rejected the manner in which the Ninth and Third Circuits evaluate these factors, instead adopting a third approach.

The decision is Int’l Info. Sys. Security Cert. Consortium Inc. v. Sec. Univ. LLC, No. 14-3456 (2d Cir. May 18, 2016) (decision available here). The plaintiff ISC developed a certification for information security professionals, marketed as the CISSP certification program. A party who passes the program can identify itself as CISSP certified.

The defendant, Security University, passed the program and therefore was able to identify itself with the CISSP certification mark. However, Security University chose to advertise itself as “Master CISSP” and “CISSP Master.” ISC objected to Security University’s use, arguing that it incorrectly suggested that the defendant had obtained some higher level of certification. As the lawsuit suggests, Security University declined to comply with ISC’s request.

For the casual trademark fan, it is worth noting that trademark law has two general types of “fair use.” Classic fair use, or descriptive fair use, has been recognized for a longer time. If a trademark consists of a descriptive word, consumers and competitors are free to use that mark in its original, descriptive meaning. The second category of nominative fair use is more recent. The doctrine provides that if a person is using a mark to identify the products of the trademark owner, then it is not an infringement (for more background, click here and here).

Not all circuit courts have adopted the nominative fair use doctrine. Those that have don’t agree on how to apply it. The Third Circuit considers nominative fair use to be an affirmative defense to a trademark infringement claim. Under Ninth Circuit case law, a court is required to identify whether the claim of infringement involves nominative fair use. If not, the traditional likelihood of confusion factors apply. If the complained of use does qualify as “nominative fair use,” then the likelihood of confusion factors are replaced by a different set of factors.

The Second Circuit rejected both of these approaches. In rejecting the Third Circuit’s view, it concluded that Congress did not intend for there to be an affirmative defense of nominative fair use because Congress chose not to include it with the other enumerated affirmative defenses. In rejecting the Ninth Circuit’s approach, the Second Circuit recognized that many of the likelihood of confusion factors are “a bad fit” to evaluate nominative fair use. Yet the Second Circuit saw “no reason” to replace the traditional test. Instead, the Second Circuit held that a court should consider the traditional likelihood of confusion factors, the Ninth Circuit’s nominative fair use factors, and the Third Circuit’s nominative fair use factors.

Instead of providing clarification regarding application of the nominative fair use doctrine, the Second Circuit’s decision seems to add another layer of disagreement. If the parties to the lawsuit aren’t already sick of litigation, perhaps the district court can provide some clarification on remand.

INTA Meet the Bloggers XII — Photo Gallery

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

Meet the Bloggers XIIadjacent to the INTA (International Trademark Association) meeting in Orlando — was a grand success, here is some of the visual evidence to prove the point:

Erik Pelton, Marc Randazza, Ron Coleman, Pamela Chestek, John Welch, Steve Baird, Marty Schwimmer

Left to Right Hosts/Sponsors: Erik Pelton, Marc Randazza, Ron Coleman, Pamela Chestek, John Welch, Steve Baird, Marty Schwimmer

John Welch

John Welch in the Winner’s Circle

Wes Anderson a Flanax Winner

Wes Anderson a Flanax Winner

 

 

 

 

 

 

 

 

 

Joel MacMull, Steve Baird, Ron Coleman

Joel MacMull, Steve Baird, Ron Coleman

Tiffany Blofield, Ron Coleman, Erik Pelton

Tiffany Blofield, Ron Coleman, Erik Pelton

Barb Grahn, Ted Davis, Lisa Dunner

Barb Grahn, Ted Davis, Lisa Dunner

MTBXIIg

Marc Randazza, Ron Coleman, Joel MacMull

Steve Baird and Marc Randazza

Steve Baird and Marc Randazza

Steve Baird and Ron Coleman

Steve Baird and Ron Coleman

More to come, stay tuned, if you have other photos you’d like to share here, please let me know!