Collaborations in Creativity & the Law

Monkey See, Monkey Do Selfie?

Posted in Articles, Copyrights, Fair Use, International, Law Suits, Loss of Rights, Technology

Is photography nowadays really so easy even a monkey can do it?

What about a caveman?

If Wikimedia is right, the caveman would own a copyright in his selfie (or perhaps Geico, under the work for hire doctrine) because he is a human being, capable of being an author under U.S. copyright law, but not the monkey — his or her selfie immediately becomes part of the public domain.

Well, I’ll be a monkey’s uncle, I never would have guessed an Indonesian macaque capable of such a beautifully perfect selfie! What, no direction?

Judging from the thick jungle of international news reports about the origin of the photo to the left, however, it sounds like it took the simian several hundred tries to capture the selfie everyone loves.

We might even call it the “money shot,” but that might provoke the owner of the camera equipment, David Slater, who sadly, it appears, only has made enough from this photo to buy a few loaves of monkey bread.

But seriously, I must ask, is Slater’s contribution — as a professional photographer – to the creation of this photo really only that he owns the equipment used to capture it? I think not. There’s much more, it appears.

I tend to agree with Matthew David Brozik — over at Likelihood of Confusion yesterday – that “judging from the quality of the photo in question, Slater (and presumably not the macaque) did a lot of work beforehand, because it is a terrific picture.”

Brozik goes on to make a creative joint authorship argument in Slater’s favor that could possibly throw a monkey wrench in Wikimedia’s public domain copyright position, but I have a hard time picturing satisfaction of the law’s joint work requirement that the macaque intended her contribution to be merged with Slater’s into a unitary whole.

Nevertheless, what I’d like to suggest Slater consider as a more promising argument for sole copyright ownership is this: The macaque simply was Slater’s amanuensis.

Although mentions of the word “amanuensis” have been in rapid decline over the last 200 years, the notion of an artist’s assistant or an author’s scribe receiving no copyright interest — in the resulting copyrightable work that they may help the artist or author fix in a tangible medium of expression – remains alive and well. The same is true for photographer’s assistants.

Judging from the detailed and technical description of Slater’s involvement in the creation of the photos on Slater’s website, I’m thinking this may be the direction he is headed, but stay tuned:

“It was about midday on the second day and the monkeys, about 25 strong of all ages, halted for a rest and a grooming session.  It had been a hard day as usual, slashing through tangled and very humid jungle, climbing over and squating under fallen trees, all with a 20kg backpack on full of expensive camera gear.  I sat close by them, camera at the ready as always. I must have tuned in to them, because after some time a few brave monkeys began to come closer, and slowly but surely began paying me more attention.  I held out my hand and WOW, one held my hand back. Shock!  This went on for maybe 15 minutes.  They started to groom me, picking through my hair as I knelt on the ground, hunched over my camera, but desperate to record it all.  I knew about monkey etiquette from many previous encounters around the world, and this made that knowledge so much more than worthwhile.”

Note how Slater’s knowledge of monkey etiquette allowed him to tune into them and gain the trust of the monkeys with his camera at the ready, as always, laying the groundwork and opportunity for the photos that resulted from his many choices. He’s not just monkeying around.

“I decided to set up the camera on a beanbag on a log, self-timer all set. I was afraid they would run off of course, but they didn’t.  Rather, they grabbed my camera!  Quick thinking had my guide rushing to save it – lesson learnt.  Setting up the camera again, some of the cheekier monkeys had now got bored, and now even my guide had wandered off for a smoke.  I was alone and had to encourage the monkeys back to me for my intended contact experience photo.  Soon enough, I was jokingly asking for his help again as the monkeys looked increasingly cheeky as they touched the camera with that glint in their piercing red eyes.  It was now that I heard some frames reeled off when my guide struggled to keep the camera from little monkey fingers – the scene was set.”

Note how Slater’s decisions, his selection, coordination, and arrangement, and his choices and contributions set the scene for the resulting photos. Not your typical monkey business at all.

“I wanted to keep my new found friends happy and with me.  I now wanted to get right in their faces with a wide angle lens, but that was proving too difficult as they were nervous of something – I couldn’t tell what.  So I put my camera on a tripod with a very wide angle lens, settings configured such as predictive autofocus, motorwind, even a flashgun, to give me a chance of a facial close up if they were to approach again for a play.  I duly moved away and bingo, they moved in, fingering the toy, pressing the buttons and fingering the lens.  I was then to witness one of the funniest things ever as they grinned, grimaced and bared teeth at themselves in the reflection of the large glassy lens. Was this what they where afraid of earlier?  Perhaps also the sight of the shutter planes moving within the lens also amused or scared them?  They played with the camera until of course some images were inevitably taken!  I had one hand on the tripod when this was going on, but I was being prodded and poked by would be groomers and a few playful juveniles who nibbled at my arms.  Eventually the dominant male at times became over excited and eventually gave me a whack with his hand as he bounced off my back.  I new then that I had to leave before I possibly got him too upset.  The whole experiance lasted about 30 minutes.”

Note how Slater made all the creative, technical, and artistic selections and camera settings, and only then, bingo, he allowed the monkeys to finish his work with a few clicks, almost at his direction, when they snapped the selfies in question. After all, if you pay peanuts, you get monkeys. In the end, it must have been a relief to finally have the monkey off his back.

“It was like the joy of seeing your new baby learn about something new and becoming enlightened with a new toy.  They loved the shutter noise, but most of all they loved their own faces, ‘chimping’ away in what seemd to me to be total fun for them……..”

Note how Slater taught the monkeys, and they learned something new, as he allowed them to complete the photos he so carefully envisioned and directed: Monkey see, monkey do selfie!

I’m thinking we’ll soon be reading about Slater’s lawyers donning their monkey suits in court any day now, and I suppose we should be relieved we aren’t dealing with a barrel full of monkeys. . .

Playing Games Over ANGRY BIRDS

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

The internet was aflutter yesterday over a lawsuit involving Angry Birds.  The artist who created a pet toy line is apparently quite angry that she’s not racking up gold coins from a lucrative license agreement for the mark ANGRY BIRDS with Rozio.  If you haven’t been living off the grid, and if you’re maybe somewhat tech savvy, you’ve probably heard of Rozio’s popular tablet game by the same name where colorful birds hurl objects at unsuspecting animals.

According to the complaint, in 2006, artist Juli Adams was approached by Hartz to create and design a pet toy line based on her cartoonish animal paintings.  In the context of copyright law at least, where a work is created within the scope of one’s employment or the work is a specially commissioned work and the parties have agreed that the work is a “work made for hire,” ownership rests with hiring party.  Patent law is similar when it comes to works made during the scope of employment.  But here, the artist and Hartz had a different agreement relating to Adams’ “intellectual property” – the two parties agreeing that the rights remained with her and Hartz licensed the intellectual property from her.  In addition to her intellectual property rights for her work developing the products, the artist also coined the trademark ANGRY BIRDS for the line according to the complaint.  The product packaging features her bio and states in general terms “Licensed from the art of Juli Adams.”  The term of the agreement began after the first sale of a licensed product, according to the complaint.

Following Hartz’s “key responsibilities” in the agreement to renew and protect the intellectual property of Adams, Hartz filed a trademark application for ANGRY BIRDS for pet toys.  The intent-to-use application was filed by Hartz on March 28, 2007 listing Hartz as the owner of the intellectual property, in contrast to the apparent terms of the agreement as described in the complaint.

By signing a trademark application, the signatory confirms that “the applicant declares that it has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services.”  Furthermore, the signatory declares that:  “he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.”  The signatory here was Hartz’s attorney, who confirmed Hartz’s rights, interest, and ownership in the mark by signing the document.  This application likely should have been filed in Adams’ name as the owner of the intellectual property rights, if this was intellectual property contemplated by the agreement as being owned by her and licensed to Hart.

Not all the facts appear to be out here yet, as the complaint leaves a lot of unanswered questions, especially regarding the scope of her intellectual property rights.  For instance, and importantly allegedly months after the ANGRY BIRDS application was filed, an amendment to the license agreement was executed that granted Hartz “the right to file copyright, trademark and other intellectual property right filings in Hartz’s name, in its discretion, for all of the Licensed Products” including a mark for THE JULI ADAMS COLLECTION (an application for which was filed by Hartz at the same time as ANGRY BIRDS).  The complaint disputes the validity of that amendment.

What does this mean for the marketers, product developers, advertisers and others of you who create intellectual property?  One takeaway may be to pay more attention to obtaining a well-crafted agreement that meets your objectives and your understanding of your rights.  Even if the intention is to license your intellectual property, an owner of trademarks puts themselves in the best position, even if they don’t want the responsibility for the filings going forward, by filing applications in their own name and let the licensee agree to pay all fees associated with them.  It also helps clarify issues related to the owned rights to be able to refer at least to a filed copyright, patent or trademark application.

Trademark Pronunciation Revisited

Posted in Articles, Branding, Marketing, Trademarks, TTAB, USPTO

Remember this little gem on trademark pronunciation from the DuetsBlog archives two years ago?

Judging from a search of Google, the JD Supra version of this post has gotten lots of traction.

Well, a few weeks ago the Court of Appeals for the Federal Circuit (CAFC) issued an interesting decision on trademark pronunciation in the likelihood of confusion analysis. John Welch reported on and discussed the CAFC’s Stoncor Group, Inc. v. Specialty Coatings, Inc. decision here.

So, how would you pronounce StonCor’s STONCLAD, STONHARD, and STONSHIELD marks, if you were shopping for epoxy coatings for use on concrete floors? Long “o” or short “o” sound?

This is what the Trademark Trial and Appeal Board (TTAB) said in StonCor’s 2012 opposition challenging ARMORSTONE for a competitor’s related goods, hearing no likelihood of confusion:

“At the outset, we note several key distinctions between applicant’s ARMORSTONE and each of opposer’s STONCLAD, STONHARD, and STONSHIELD marks. Applicant’s mark incorporates the grammatically correct spelling of the word ‘stone.’ Opposer’s marks, while pronounced by counsel for opposer at oral argument as ‘stoneclad,’ ‘stonehard,’ and ‘stoneshield,’ are not spelled in a manner consistent with this pronunciation. Rather, according to the spelling of each mark, the letter ‘o’ is pronounced as a short vowel sound as opposed to the long vowel sound. Opposer did not introduce any evidence at trial that ‘STON-’ would be pronounced and perceived by prospective consumers as the equivalent of the word ‘stone.’”

The CAFC heard the evidence differently, agreed with StonCor that the record evidence supported a long “o” sound, reminded the TTAB about the rules on trademark pronunciation, and held the TTAB erred by creating its own pronunciation rule (not supported by substantial evidence):

“There is no correct pronunciation of a trademark that is not a recognized word. . . . Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the [TTAB] to ignore this evidence entirely and supply its own pronunciation.”

In the end, however, the TTAB’s erroneous view on trademark pronunciation was considered harmless, because there was other substantial evidence to support no likelihood of confusion.

For brand owners that adopt marks not consisting of recognized words, this normally will yield a broader scope of protection when it comes to enforcing those rights, because of the variety of possible ways consumers and prospective consumers will perceive the prior mark.

As StonCor demonstrates, however, similar pronunciation of a portion of the marks at issue, alone, may not be enough to support a likelihood of confusion.

Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB

Posted in Articles, Law Suits, Trademarks, TTAB, USPTO

Please join me for a live and informative 90 minute Strafford law webinar a week from tomorrow, on Wednesday August 13, at noon CST.

The topic to be covered is “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” and here is a link for more information.

For the discussion, I’m joined by two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Oblon Spivak in Alexandria, Virginia.

We have written much about the right to register a trademark, here on DuetsBlog, and this is the very right determined by the USPTO’s TTAB in opposition and cancellation proceedings.

“Inter partes proceedings before the TTAB are proving to be worthwhile tools and a valuable part of a brand owner’s overall trademark enforcement and protection strategy. Despite the TTAB’s limited jurisdiction in only determining the right to register, as opposed to the right to use, and its inability to determine infringement, issue injunctive relief, or monetary awards, trademark oppositions and cancellation proceedings can be a less aggressive and cost effective venue for resolving existing and avoiding future trademark concerns between the parties.”

The TTAB venue is an important aspect of any coherent trademark enforcement program for a brand owner, the vast majority of disputes are resolved there without the need for federal district court litigation, so understanding how to navigate through these administrative proceedings is an important skill for any trademark type.

The Supreme Court will be shining a light soon on the importance of, and the impact of and circumstances under which, a TTAB decision on likelihood of confusion is to have on later federal district court trademark infringement litigation between the same parties.

The first three to post a comment may attend for free, without paying the typical registration fee — we hope you can join us!

Unintended Cultural Confusion

Posted in Branding, Goodwill, Guest Bloggers, International, Marketing, Mixed Bag of Nuts

- Mark Prus, Principal, NameFlash

Recently I discovered a wonderful infographic on the different meanings of colors in various cultures. It got me thinking that people who are branding a product, service or company might be unintentionally offending some of their potential customers. In the use of colors for example, Westerners/Americans would consider grey to be a good logo color to show respect, but in Japan the color for respect would be white and in China it would be yellow. Grey in Japan would be more aligned with words like modesty or reliability.

Sometimes the potential for offending your target customer is obvious. For example, Assitalia is one of the biggest insurance companies in Italy. I am sure the company developed its name without thinking about international considerations and in Italy the name is fine. But if they ever wanted to expand to an English speaking country…well, let’s just say there might be a problem.

But sometimes the potential for offending your customer is less obvious. Most of the large companies I work with agree to conduct foreign language checks to ensure that the names have no problematic connotations in the major foreign languages. In one instance that prevented us from making a major mistake. It turns out one of the names we developed had an obscure slang reference in the Spanish language to a body part that…well, let’s just say it was not a good choice of name.

Some of my smaller clients do not want to do foreign language checks because they are not planning to sell internationally. That is a mistake! Even if you have no plans to sell your product internationally, you need to beware of potential unintended consequences of your actions.

For example, people of Hispanic or Latino origin in the US represent over 17% of the population. What if you unintentionally chose a name that had a bad (but not obvious) connotation in the Spanish language? Would you like to offend over 17% of your potential market?

It is relatively easy to investigate potential unintended language consequences. There are linguistic companies or freelancers who will do this work for a reasonable fee. You can also try to do it yourself if you know different native language speakers. Just ask them questions like:

• How is this word pronounced by a native speaker of your language?

• Is this word similar in sound or appearance to other words in your language? If so, what do those words mean?

 • Are there any inappropriate associations with this word? Is this word similar to any slang terms of the language?

Finally, if you want to check to see if a common word is being used as slang for something else in the English language you can always check the Urban Dictionary. However, be aware that, even though the Urban Dictionary is regulated by volunteer editors (similar to Wikipedia), some of the content of the Urban Dictionary is sexual in nature (for adults only!).

SHARKNADO Trademark: Toothless Wonder?

Posted in Articles, Branding, Social Media, Television, Trademarks, USPTO

In case you missed SHARKNADO last year, fear not, the sequel SHARKNADO 2 — The Second One, is taking the country by storm, and it is reportedly even better than the first SHARKNADO film. Not having seen either, I’m not sure whether that’s saying much.

What is even harder to avoid seeing, however, is all the media attention and publicity SHARKNADO 2 has amassed over the last few days.

Entertainment Weekly reported yesterday “3.9 million viewers tuned in to SyFy Wednesday night to watch the premiere” of SHARKNADO 2, making it “SyFy’s most watched original movie ever.”

CNN also reported yesterday on the feeding frenzy SHARKNADO 2 has stirred up on Twitter.

NBC’s Today Show even played a role in SHARKNADO fever with silly cameo apperances by Matt Lauer and Al Roker.

All this attention made me wonder what kind of trademark filings have been done on the SHARKNADO franchise and whether any trademark bottom feeders improperly have attempted to cash in on the sudden popularity of the coined SHARKNADO brand and trademark.

As it turns out, I was a bit surprised to only find one USPTO filing for SHARKNADO, given all the hype, focus, and attention. But, what is even more bizarre than the film’s absurd plot (as seen in the onslaught of trailers) is that this single filing matured into a Supplemental Registration, as opposed to a Principal Registration.

Remember, Supplemental Registrations cover marks only capable of becoming distinctive and they are toothless in the protection they provide the owner — the Principal Register at the USPTO is the coveted prize reserved for those marks that are distinctive for their associated goods and services.

So, why did SHARKNADO land on the floor, i.e., the USPTO’s Supplemental Register?

Perhaps an overzealous Examining Attorney refusing registration because SHARKNADO is the title of a film and doesn’t function as a trademark? Actually, no — that refusal wasn’t made and couldn’t have been sustained because the goods covered by the resulting registration involve “beer mugs” and other items in Int’l Class 21, along with “whoolly hats” and other clothing items in Int’l Class 25, not entertainment services in Int’l Class 41 or DVDs in Int’l Class 9.

It would be hard to sustain an argument that the coined mark SHARKNADO is not distinctive and registrable for “beer mugs” and “whoolly hats,” even if it also functions as the title of a film.

No, the SHARKNADO registration landed on the Supplemental Registration floor, because that is how the application was filed by The Global Asylum, Inc. on July 24, 2013, seeking registration on the Supplemental Register in Int’l Classes 21 and 25.

My question is, assuming no mistake, why bother spending $650 filing anything? If you’re going to go through the minor trouble of filing something, why ask for nothing close to what you’re entitled to receive? The filing fee is the same, so it’s not like the owner of the admittedly B horror franchise was able to save a few bucks — to pay Tara Reid more — in accepting the lesser registration.

I don’t know, maybe they misunderstood the law. And, just maybe they’ll get it right yet, with a trademark application sequel.

Although the names of single creative works cannot be registered as trademarks for tangible copies of those works or the entertainment services they may embody (not even on the Supplemental Register), and putting aside any personal challenges as to whether the film in question is fairly called “entertainment,” now that there is a sequel using the SHARKNADO name, it should be considered inherently distinctive and registrable on the Principal Register even for entertainment services in Int’l Class 41 or DVDs in Int’l Class 9.

And, just to make sure two is really more than one, SHARKNADO 3 is apparently already in the works, given the growing cult following — resolving any possible doubt about whether SHARKNADO represents the mere title of a single creative work. We’re talking series, now.

My only hope for Global Asylum is that their needed second and third trademark application sequels aren’t as much of a joke as their first attempt, or the SHARKNADO storyline.

To be on the safe side, let’s put on some whoolly hats, fill our beer mugs, and stay tuned for some more entertainment . . . .

A Window into the Future for Apple’s Trade Dress?

Posted in Branding, Idea Protection, Non-Traditional Trademarks, Trademarks, USPTO

A few weeks back, Steve discussed Apple’s recent applications to register a trio of non-verbal trademarks, shown below:

(Each image links to the corresponding application on file with the U.S. Patent and Trademark Office – USPTO).

Spoiler alert:

This post contains the USPTO’s ultimate decision regarding the registrability of the design and layout of various application icons as part of a computer operating system, using rectangular geometric figures in rows. However, it isn’t a spoiler for Apple’s applications referenced above (those applications have yet to be assigned to an examining attorney).

No, instead, I’m referring to a since-abandoned application that provides some interesting contrast with Apple’s applications. In 2012, Microsoft filed an intent-to-use application for the mark shown below:

The USPTO examining attorney initially refused registration requiring a new drawing due to a potential for the existence of a phantom element of a mark, namely, the appearance of the “start” button and the “user name” element. The examiner also advised that, upon submission of evidence of use, the mark may be refused on the ground that it was merely ornamental and failed to serve any source identifying feature.

Microsoft submitted a substitute drawing and amended the mark to make clear that the “start” button and the “user name” element were not claimed as a feature of the mark. The examining attorney issued a subsequent refusal based on the presence of phantom elements in the mark, claiming that the mark contained “changeable elements.” After Microsoft failed to respond, the application was deemed abandoned. (Note that it appears there may be some issues with the examiner’s refusal, as a refusal for a “phantom element” normally requires that the phantom element be claimed in some way as a feature of the mark.).

It appears that Apple may have taken a few pointers from Microsoft’s unsuccessful efforts. Compare Microsoft’s description of its mark:

The mark consists of two groups of tiles arranged in at least five rows. In the first group, the first and second rows are comprised of a rectangle followed by two squares and the third, fourth and fifth rows are comprised of two adjacent rectangles. In the second group, the first row is comprised of a rectangle and the third, fourth and fifth rows are comprised of two adjacent squares. The second row comprises a rectangular boundary surrounding a rectangle formed from two combined squares. The borders of the mark, the rectangle formed from two combined squares, the terms “Start” and “User Name”, and other matter shown in broken lines are not part of the mark.

With Apple’s:

The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.

Apple’s description is much more concise. It also does not contain open-ended terminology such as “at least five rows.” Apple was also careful not to include any discernible words, like “Start” or “User Name,” in the drawing. Microsoft also included a number of additional tiles that were not claimed as a feature of the mark, but appeared identical to those icons which were claimed. In contrast, Apple specified its claim to reference all 22 icons, rather than only claim a portion of the icons.

Note that in two of three applications, Apple included the shape of the phone as well. Perhaps Apple feared that the mere layout of square icons might face the same fate as Microsoft’s application. Will this, along with the other changes, be sufficient for Apple to push the applications through to registration?

My immediate reaction is that, if you take away the shape of the phone and the content of the icons, I’m not convinced I would notice the difference between an iOS operating system, Microsoft Windows / Tiles, or an Android. It’s hard to imagine, but read through the mark descriptions and try to envision the layout with only the features claimed, with no other content. In my head, that just looks like a computer screen, regardless of whether its the size of a phone, Hardy Boys book, or a Trapper Keeper.

Apple certainly appears to have put some thought into their application strategy, though. I’m sure they’ve mapped out responses to potential refusals as well. Even if Apple is unsuccessful at registering these marks, at least they’ll have successfully given us something to talk about here, which I’m sure would be a wonderful consolation prize.


The Horror – Bar Exam Software Server Problems Nationwide

Posted in Social Media, Social Networking

As if the nation’s bar examinees didn’t have enough to worry about — last night, the company administering the process for any test-taker using his or her laptop to take yesterday’s essay portion of the exam experienced what could only be described as a major meltdown.  ExamSoft reports a problem at a “co-location,” causing a problem where bar examinees could not upload their exam files.  This caused panic, as states like Minnesota impose a same-day deadline for examinees to take their laptops home after the test, get online, and upload the secure, locked-down exam files from the test.

Social media — Twitter, in particular — came in handy as ExamSoft kept examinees updated regarding the problems, and informing them of extended deadlines.  Minnesota, for example, extended the upload deadline until this morning at 8 a.m.

David Lat and the good people over at Above the Law asked whether this debacle was “The Biggest Bar Exam Disaster Ever?”  Lat reports that it is the biggest foible in his eight years covering the bar exam on Above the Law.  Lat and his team updated their blog late into the night and one writer shared Tweet updates later than that.

A glance of the state of Minnesota’s website for the board of bar examiners doesn’t reveal any helpful or reassuring messages for test-takers regarding yesterday’s meltdown.  It goes to show that today, when problems arise, social media and the greater web community are the best places to find answers.

Today, examinees in most states are sitting through six hours of multiple choice questions — 200 in all.

Any of our lawyer-devotees have a disastrous bar exam story you’d like to share?  If not, sit back, think back, and be glad you’re not sweating through that beast again.  And to the bar examinees out there — by the time you see this, the thing will be done.  CONGRATULATIONS!


Posted in Mixed Bag of Nuts

- Derek Allen, Attorney -

There’s a line in my favorite writer Kurt Vonnegut’s Jailbird that goes “‘Hello and goodbye.’ What else is there to say? Our language is much larger than it needs to be.” I didn’t actually say “hello” in my initial post, so under the Vonnegut test, it looks like this post is the first one where I’ll be saying anything. Unfortunately, it’s goodbye.

When I first approached Steve over two years ago about writing for Duetsblog, I had a single post in mind (the post I linked to above). “A single post” might not be in Steve’s vocabularly, however, so I quickly became a regular poster at his urging. In hindsight, it’s one of the better decisions that was ever made for me.

My first post somehow landed on the radar of my alma mater, Beloit College, which led to the school inviting me to participate in an event for prospective students. I got two Beloit College beer glasses out of the deal, so, you know, score! I’ve also received a call from a tenant in Florida in response to my post about demand letters (he had received a nasty one from his landlord), been criticized by a New York Times best-selling author for leaving Perry Mason out of the top 10 TV and film lawyers of all-time (I’m still going to unfairly blame Tim for that one), and was featured for the first time in a YouTube clip that doesn’t involve something I did after several boots of beer at the Essen Haus in Madison, Wisconsin. I can safely say that none of these things would have happened without Duetsblog.

So, a number of big thank yous are in order. Thanks to my fellow Duetsblog writers for consistently producing the excellent content that has led to thousands of readers coming across my drivel a couple of times a month. Thanks to the Duetsblog readers for your continued readership, your comments, and the fact that you are apparently not that busy at work. And thanks to Steve for capably captaining the Duetsblog ship over the last five years.

If you’re curious about what I’m up to (and I suspect you’re not), I’m moving back to southern Wisconsin–where I grew up–most likely to join a small firm in my hometown of Evansville. I’m also starting a blog with a law school classmate of mine, which should be up and running at some point in September. So if you want to read more about pop culture and things that annoy me, check out the Completely Unhelpful blog in about a month.

Harley-Davidson Booze Coming Soon?

Posted in Branding, Food, Marketing, Non-Traditional Trademarks, Trademarks, TTAB, USPTO

With the 74th Anniversary of the famous Sturgis Motorcycle Rally less than a week away, it seemed like a good time to check in on recent Harley-Davidson trademark activity at the USPTO.

As it turns out, a very interesting intent-to-use trademark application was filed just two weeks ago, seeking federal registration of the world-famous HARLEY-DAVIDSON word mark in connection with “alcoholic beverages except beers” in Int’l Class 33.

It appears that Harley-Davidson has only obtained coverage for alcoholic beverages in Int’l Class 33 twice before, but never for the HARLEY-DAVIDSON brand.

In 1996 it obtained a federal trademark registration for STURGIS in connection with “prepared alcoholic cocktails,” and a renewal specimen of use from 2006 reveals that STURGIS is the name of a cocktail served at the Harley-Davidson Cafe, made with “Captain Morgan’s and Malibu Rum, orange and pinapple juice and bit of sour mix.”

A year later it obtained a federal trademark registration for V-TWIN in connection with “prepared alcoholic cocktails,” and a renewal specimen of use from 2007 reveals that V-TWIN is the name of a cocktail served at the Harley-Davidson Cafe, made with “Vodka, Blackberry liqueur, pinnaple juice and a splash of sour mix.”

And, the brand new Harley-Davidson intent-to-use filing does not appear to be a repeat of the company’s prior experimentation with beer, which was covered by Int’l Class 32, not 33.

Indeed, three federally-registered Harley-Davidson logos no longer have active coverage for beer in Int’l Class 32, the coverage being dropped years ago, here, here, and here.

The abandonment of that federally-registered protection for beer is a bit curious as Harley-Davidson continues to partner and co-brand with Miller High Life:













So, we’ll have to wait and see whether Harley-Davidson actually puts its brand name behind what a freedom lover might pour over the rocks in one of these glasses:

Finally, remember my question from last year about the Harley-Davidson logo, wondering whether there is a name for it?

Well, it appears there is: Bar & Shield Logo.

By the way, anyone heading to Sturgis?

If so, please keep an eye open for the launch of any Harley-Davidson brand extension for Int’l Class 33 style booze. Or perhaps a “bootleg” cocktail?