DuetsBlog

Collaborations in Creativity & the Law

Will Chick-fil-A, uh Chicken Out?

Posted in Almost Advice, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Social Media, Social Networking, Trademark Bullying, Trademarks, TTAB, USPTO

Just so you know, this is not the post I planned to write today. Hat tip to you, Bo!

It has been exactly one year since Bo Muller-Moore — the “Eat More Kale” guy from Vermont — submitted a comprehensive 71-page response to the registration refusal based on “Eat Mor Chikin” issued by the USPTO on March 27, 2012, after a dubious Letter of Protest was filed by Chick-fil-A and surprisingly granted by the USPTO on December 22, 2011.

Given my interest and coverage of this story (here, here, here, here, here, here, and here), and my meaty devotion to our dear readers, I’ve been periodically checking in on the status of Mr. Moore’s EAT MORE KALE application, anxiously awaiting the USPTO’s response to Moore’s thorough missive. So my plan was to write today about how the USPTO has laid a real egg that it continues to sit on – taking no action at all for an entire year, making me want to raise this question again (albeit in a different light): Is the USPTO acting like a (surrogate) trademark bully?

That is all unnecessary now, since the USPTO just yesterday appears to have approved Mr. Moore’s EAT MORE KALE application for publication, opening it up for third party challenge:

“Status: Approved by the examining attorney for publication but has not yet published for opposition. Although rare, withdrawal of approval prior to publication may occur after final review. The opposition period begins on the date of publication.”

Given it took an entire year to handle this hot potato at the USPTO, it’s hard to imagine a “rare” withdrawal of approval will occur at this point, but with this case, I suppose anything is possible.

A better question, it seems to me is: Does Chick-fil-A have the stomach to fight in public over this one, or will the social media shame-wagon cause it to chicken out (again)?

Chick-fil-A’s objection to Moore’s Eat More Kale tagline is not new, going all the way back to 2006, according to the New York Times, but public encouragement for Moore’s defiance dates back to at least 2011, around the time when the New York Times covered the story. Moore’s Kickstarter funding project for a documentary to expose Chick-fil-A’s enforcement as trademark bullying has raised almost $90,000.00 to date.

How much more is likely to be raised if Chick-fil-A files a formal Notice of Opposition?

As much as I’d like to continue to write about and eventually see a full-length documentary on this dispute, if I were Chick-fil-A, I’d let it go, without even a cluck — Eat More Kale that is – and leave Bo to fund a much shorter film instead.

What would you do if you were Chick-fil-A, besides not start this mess in the first place?

To our PR friends, how would you advise Chick-fil-A, now that it appears the opposition window at the USPTO will be open soon?

And, please don’t recycle this previous Chick-fil-A statement: “We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.”

Yes, Chick-fil-A, you have enforceable rights in EAT MOR CHIKIN, but you don’t need to pursue EAT MORE KALE to maintain rights to EAT MOR CHIKIN. Yes, that is a period.

UPDATE: October 14, 2014 is the currently scheduled date of publication for opposition, so stay tuned.

How Many Hours of Energy Do You Need to Protect a Brand?

Posted in Branding, Fair Use, Famous Marks, Guest Bloggers, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Product Packaging, Sight, Trademark Bullying, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

The reason Bhargava has won is that he plays tough. Sitting in that cemetery are a dozen or so neon copycats with names like 6-Hour Power and 8-Hour Energy. Each has been sued, bullied or kicked off the market by Living Essentials’ lawyers. In front of each are little placards with a skull and crossbones drawn in felt-tip pen. Bhargava points at the gravestone of one of his late competitors and says with a chuckle, “Rest in peace.”

— Clare O’Connor, The Mystery Monk Making Billions with 5-Hour Energy, Forbes.com (February 8, 2012)

5-Hour Energy is a monster* behemoth in the energy shot market it created in 2004. According to Forbes, retail sales for 5-Hour Energy hit $1 Billion in 2012, with advertising spending reaching almost $200 Million. Its market share is approximately 90%; its closest competitor’s share is about 3%. As CEO Manoj Bhargava puts it, 5-Hour Energy is “killing it.”

Last month, 5-Hour Energy appears to have put the final nail in the coffin of one of its would-be competitors, a persistent copycat extraordinaire named Jeffery Diehl. Operating through a few different corporate entities such as N2G Distributing, Inc. and Alpha Performance Labs, Diehl sold energy shots by the names of 6 Hour Energy Shot, Nitro2Go Instant Energy, and Extreme Monster** Energy Shot. Depicted below is a comparison of 5-Hour Energy’s bottle on the left and one of Diehl’s bottles on the right:

In 2008, 5-Hour Energy sued Diehl in federal court in Michigan and quickly won a preliminary injunction, immediately barring Diehl from selling any more of his products under confusingly similar names or in confusingly similar packaging while a complete trial on the merits played out. Of course, this didn’t stop Diehl from changing the name and changing the packaging, and each time he did, 5-Hour Energy added another product to its complaint. Three and half years later, after much procedural wrangling and a trial on the merits, Diehl was found liable for $1.75 Million in damages for trademark infringement and unfair advertising in connection with various iterations of his copycat product. The image below is from one page of the verdict form from the jury; the circled products represent infringing products:

In addition to monetary damages, the court ordered Diehl to stop selling infringing products. A few months later, through its own investigation, 5-Hour Energy discovered that Diehl was still selling copycat products online, albeit under a new corporate entity (his other corporate entities filed bankruptcy, of course). So 5-Hour Energy dragged Diehl back into court and the court was not happy: “[Diehl’s actions] are the actions of an individual trying to hide from and avoid his obligations under this Court’s order.” Diehl was held in contempt of court and ordered to immediately stop selling infringing products or face a $1,000 a day fine. Diehl stopped.

Now, this is America after all, and even crafty contempt-ing copycats have a right to appeal. So of course Diehl appealed (after losing his motion for a new trial); his view – the evidence didn’t show a likelihood of confusion! This is what the appellate court found:

• The jury could see that Diehl’s products used similar marks, despite minute differences in the words or images;

• The jury could listen to survey evidence and attacks on that evidence and determine that 5-Hour Energy was a strong brand and robust mark;

• The jury could recognize that Diehl was selling essentially identical products: two-ounce energy shots, often at convenience stores, near cash registers, where purchases are made impulsively;

• The jury could consider even a single instance of actual confusion as increasing the likelihood of confusion;

• The jury could disregard Diehl’s testimony that he only wanted to compete with 5-Hour Energy fairly in the free market; and

• The jury could infer that Diehl was laying claim to a mark when he testified that he just wanted to own the term ‘6 Hour Energy Shot’ the same way that the owner of 5-Hour Energy owns 5-Hour Energy, thus contradicting Diehl’s claim to a fair use defense.

Diehl also wanted to object to the verdict as inconsistent – one of the bottles was not circled! But the appellate court dismissed this objection because it must be brought when the jury is still assembled, so that the jury can resolve the inconsistency, if any.

Diehl tried another approach – the evidence was unfair and improper! For example, Diehl was upset that he had been denied access to 5-Hour Energy’s secret formula, which he said would show that his probably similar formula could produce more hours of energy – 6 or 7 or 14, as claimed – thus making his marks descriptive. Diehl was also upset that the jury learned about his copycat product, the Extreme Monster Energy Shot (photo below). Diehl further complained that the jury didn’t get to read an opinion from another court where Diehl had sued a competitor over similar trade dress AND LOST, because, Diehl claimed, when he lost he learned that you could get around trade dress laws with just a few little changes, and this showed he wasn’t intentionally infringing 5-Hour Energy’s trade dress with his little changes. Finally, Diehl complained that although he was able to show that 5-Hour Energy was litigious (i.e. a trademark bully), he didn’t get to present enough evidence on that point. The appellate court disagreed that any of these issues mattered.

Diehl struck out on a few other contentions as well, bringing his appeal at the Sixth Circuit, and six years of litigation, to an end. Those contentions, and more details about the case, can be found in the court’s opinion, here.

As for where exactly 5-Hour Energy and its lawyers get the energy for these types of cases, my money is on a secret 6-Year Litigation formula!

*Author’s Note: Poor choice of words.

**Author’s Note: Diehl, apparently, didn’t think so.

Is Deadmau5 a Dead Mouse?

Posted in Branding, Famous Marks, Infringement, Marketing, Trademarks, USPTO

With the NFL season in full swing and my fantasy football league thus far undefeated, as well as some really interesting tech stuff on fashion week, I really wanted to focus on something fascinating and fun on this Friday.

But I couldn’t resist some of the news I saw Thursday on the Notice of Opposition filed by Disney against EDM’s Deadmau5.  Having opined on this earlier in April when Disney first requested an extension of time to oppose, and pointed out that this dispute occurred many years ago, I was frankly surprised that this hadn’t yet settled.   I mean, this isn’t their first go around regarding the mau5head.

We have talked a  lot recently about the trend of small trademark applicants to take on the “Goliath” standing in their way through social media.   Natty Green v. Natty Light.  The now settled, BREWSKEE-BALL v. SKEE-BALLThe F Word v. FRAPPUCCINO. And even the Goliaths being bullied by the Davids.

Deadmau5 utilized his grasp of social media to do the same thing here with his followers.

 

 

 

 

 

 

 

But let’s be real for one minute.  This isn’t just about confusing an EDM performer with a mouse in a cartoon.  Deadmau5 has applied for the logo below

https://tsdrsec.uspto.gov/ts/cd/casedoc/sn85972976/APP20130702080142/2/webcontent

in connection with:

  • Apparatus and instruments for recording, receiving, processing, reproducing and/or transmitting sound and/or visual information or recordings; turntables, slipmats, headphones;
  • speakers;
  • radio receiving and transmitting apparatus;
  • telephone apparatus and instruments;
  • telephones, mobile telephones and telephone handsets; adapters for use with telephones;
  • battery chargers for use with telephones;
  • cases adapted for mobile telephones; sunglasses; spectacles, spectacle frames and cases; sound and/or visual recordings; interactive sound and/or visual recordings; sound and/or visual recording media;
  • juke boxes;
  • games adapted for use with television receivers;
  • video games;
  • coin/counter operated games;
  • arcade apparatus and games;
  • computer games;
  • computer software;
  • computers;
  • data processing equipment;
  • usb sticks;
  • mouse pads;
  • mice for computers;
  • screen savers;
  • publications (downloadable) provided on-line from databases, from the Internet or from any other communications network including wireless, cable or satellite; compact discs;
  • DVDs;
  • CD ROM;
  • carrying cases adapted for compact discs;
  • carrying cases adapted for DVDs;
  • video cameras;
  • cameras;
  • photographic and cinematographic apparatus and instruments;
  • photographic transparencies,photographic films;
  • digital music (downloadable);
  • MP3 players;
  • personal digital assistants and other hand held electronic devices;
  • metronomes;
  • telephone ring tones;
  • encoded magnetic cards and cards bearing machine readable information;
  • bank cards;
  • credit cards;
  • cheque cards;
  • cash cards;
  • smart cards;
  • automatic vending machines and mechanisms for coin operated apparatus;
  • batteries;
  • holographic images;
  • holographic cards;
  • holograms, credit cards with holograms;
  • BMX bikes;
  • Printed matter, namely, magazines in the field of entertainment;
  • printed publications, namely, magazines in the field of entertainment; books in the field of music and entertainment;
  • greeting cards, post cards;
  • picture cards;
  •  photographs, pictures, prints, posters, stationery, pens, pencils, erasers, pencil sharpeners, pencil cases, staplers, staple removers, rulers, boxes for pens, book markers, notepads;
  • address books;
  • diaries;
  • scrapbooks;
  • albums for photographs;
  • catalogues in the field of music;
  • stickers;
  • printed gift vouchers;
  • gift bags;
  • carrier gift bags;
  • calendars;
  • artists’ materials, namely, pens and brushes;
  •  paint brushes;
  • decalcomanias;
  • plastic materials for packaging not included in other classes, namely, bags;
  • cheques and travelers cheques;
  • banking cards, other than encoded or magnetic;
  • credit cards, other than encoded or magnetic
  • Leather and imitations of leather and goods made of these materials and not included in other classes, namely, leather cases;
  • trunks and travelling bags;
  • suitcases;
  • bags, namely, all-purpose sports bags;
  • schoolbags;
  • tote bags;
  • backpacks;
  • day packs;
  • handbags;
  • shoulder bags;
  • duffel bags;
  • messenger bags;
  • purses;
  • wallets;
  • leather shoulder belts;
  • credit card holders;
  • umbrellas, parasols and walking sticks
  • Clothing for men, women and children, namely, t-shirts, tank tops, sweat shirts, sweaters, jackets, hats, caps, visors, head bands, scarves, shorts, socks and casual footwear
  • Toys, games and playthings, namely, board games, card games and action skill games;
  • board games;
  • skateboards;
  • musical toys;
  • playing cards;
  • novelty figurines, namely, molded plastic toy figurines;
  •  slot machines;
  • automatic, coin operated or counter operated amusement apparatus adapted for use with an external display screen or monitor;
  • Christmas tree festive decorations;
  • carnival masks
  • Coffee, coffee essences, coffee extracts;
  • mixtures of coffee and chicory;
  • mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee;
  • tea, tea extracts;
  • cocoa;
  • chocolate;
  • chocolate products, namely, truffles;
  • sugar, maltose for food, rice, tapioca, sago, couscous; flour and preparations made from cereals and/or rice and/or flour, namely, cereal based snack foods;
  • nut paste, confectionery made of sugar and candy, breakfast cereals;
  • pastry;
  • pizza, pasta and pasta products, namely, noodles and alimentary pastas;
  • bread;
  • biscuits;
  • cookies;
  • cakes;
  • ice, ice cream, water ices, frozen confections;
  • preparations for making ice cream and/or water ices;
  • honey;
  • preparations consisting wholly or substantially wholly of sugar, for use as substitutes for honey, namely, honey substitutes; syrup, treacle, molasses;
  • ketchup;
  • custard powder;
  • frozen, prepared or packaged prepared meals consisting primarily of pasta or rice;
  • dessert mousses;
  • bakery desserts;
  • puddings;
  • yeast, baking powder;
  • salt, pepper, mustard;
  • vinegar;
  • chutney;
  • spices and seasonings;
  • vegetal preparations for use as drinks;
  • herbal and tea infusions, other than for medicinal use;
  • meat pies;
  • mayonnaise;
  • meat tenderizers for household purposes;
  •  royal jelly for human consumption, other than for medicinal purposes;
  • natural sweeteners;
  • syrups, namely, maple syrup;
  • salad dressings
  • beers;
  • mineral and aerated and effervescing waters and other non-alcoholic drinks, namely, soda and juice;
  •  fruit juices;
  • syrups, essences and extracts and other preparations for making beverages;
  • isotonic beverages
  • Entertainment in the nature of live performances by a musical artist;
  • educational services, namely, providing classes, seminars or workshops in the field of music;
  • production and distribution services in the field of sound and/or visual recordings and entertainment programs, namely, motion pictures, radio programs or videos in the field of music;
  • music library services;
  • music publishing services;
  • recording studio services;
  • disk jockey services;
  • provision of information relating to music, entertainment, games and events provided on-line from a computer database, from the Internet or any other communications network including wireless, cable or satellite; provision of non-downloadable digital music from the Internet;
  • provision of non-downloadable digital music from MP3 websites;
  • production, preparation, presentation, distribution, and rental of television and radio programs and films, animated films and sound and/or visual recordings; production of live entertainment features in the nature of music concerts;
  • organization, production and presentation of quiz shows, exhibitions for entertainment purposes, sporting events, shows in the nature of music concerts, road shows, live staged events in the nature of musical performances, theatrical performances, concerts, live musical performances and audience participation events; provision of on-line non-downloadable electronic publications, namely, a magazine in the field of music;
  • electronic computer game services provided from a computer database, the Internet or any other communications network including wireless, cable, satellite; advisory and consultancy services related to the aforementioned services

Really, guys?! This is a ridiculously long list of goods, and eventually deadmau5 would have to show use on all of these goods, or delete them.  Although this was based on a foreign registration in Australia, it makes me wonder whether there was a strategy here upon filing this, especially given the prior grievances of Mickey Mouse as I pointed out in my prior post.

With the right strategy, I think deadmau5 could easily carve out a plurality of goods and services descriptions that would allow for registration of his mau5head in view of the prior, famous, and subsisting rights of Disney’s Mickey Mouse.  And as we have often said, registration of a trademark may be barred while in actual use there is no likelihood of confusion due to the differences in standards between a likelihood of confusion in the Trademark Office’s view and a likelihood of confusion in the context of infringement. Disney hasn’t filed a lawsuit to prevent deadmau5 from using the mark, just to try to prevent them from registering it (although a good attorney will point out Disney’s delay in addressing the common law use of the mau5head).

BUT THEN…Disney’s website shows a “Re-Micks” video using deadmau5′s music WITH MICKEY MOUSE and WITHOUT PERMISSION TO USE THE MUSIC (according to deadmau5′s Twitter).  Really, guys?! 

What do you think about this dispute and the parties’ actions?  How do you think it should shake out?

 

It’s no secret that the future of PINK for Victoria in Europe is anything but rosy

Posted in Branding, Famous Marks, Fashion, Guest Bloggers, Infringement, International, Law Suits, Loss of Rights, Mixed Bag of Nuts, Sight, Trademarks

Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP

Victoria’s Secret is likely to be feeling less than angelic following its recent defeat in the UK Courts. The problem? PINK. 

PINK is Victoria’s Secret’s entry level brand, aimed at attracting younger customers to Victoria’s Secret, who will ultimately graduate to PINK’s more grown up and sexy sister. Victoria’s Secret has been selling PINK in the US for around 10 years and as a part of its expansion of the Victoria’s Secret brand into Europe in 2012, in particular the UK, PINK came too.

However, the launch of PINK set Victoria’s Secret on a collision course with another brandowner, Thomas Pink. Thomas Pink sells its range of clothing, primarily focussed on menswear and shirts, by reference to “THOMAS PINK” AND “PINK”.

 Thomas Pink claimed that PINK infringed its UK and European registered trade marks, both of which featured “PINK” but were stylised.

Victoria’s Secret’s response – Victoria’s Secret is a well-known brand in its own right and, therefore, when the average consumer sees PINK with Victoria’s Secret or in a Victoria’s Secret context, he or (more likely) she would not be confused.

In addition, no link between the two would be formed by the consumer – Victoria’s Secret emphasised that it considered its activities in the UK and the EU to be simply a natural extension of its US operations and it was not seeking to take advantage of Thomas Pink’s reputation.

Confused?

The Court disagreed and found that there was a likelihood of consumer confusion in relation to the majority of its use of PINK.

The main issue for Victoria’s Secret was the Court’s view on the “sign” that was being used, which impacted on significant aspects of the Judgment. When the Court reviewed the use of PINK it found that on many occasions it was used alone, as part of a slogan with no reference to Victoria’s Secret or that when Victoria’s Secret was used it was not prominent enough to make an impact on the average consumer. The use of VICTORIA’S SECRET PINK together in “locked-up format” was minimal.

Following this conclusion, it was only a small step for the Court to find that the average consumer would be confused, particularly with recent UK case law establishing that the “average consumer” represents a spectrum of consumers, at all levels of the market and of both sexes. Arguably, this broadening of the characteristics of the average consumer makes a brandowner’s position easier, as a more focussed and specific average consumer is less likely to be confused. Although, VICTORIA’S SECRET PINK, was used on the swing tags of products this was insufficient to negate the effects of the wider use of PINK without an accompanying and prominent VICTORIA’S SECRET.

Reputation based infringement

Reputation based infringement allows trade marks with a reputation in the UK or Europe to stop third parties using similar signs on identical or similar goods or services without due cause where a link is formed in the mind of the consumer and the use takes unfair advantage of or is detrimental to the distinctive character of the mark.

As the Court had already found that the use of PINK was confusing, a higher threshold than a “link” being formed, then Victoria’s Secret was always facing an uphill struggle.

The heart of Thomas Pink’s argument was that if Victoria’s Secret as a substantial brandowner was able to fill the clothing market with PINK then quickly Thomas Pink’s trade marks would cease to be linked with Thomas Pink’s products. While the Court was not prepared to accept that Victoria’s Secret “sexy sells” marketing would tarnish Thomas Pink’s reputation, it was prepared to accept the blurring or overtaking of Thomas Pink’s trade marks.

Victoria’s Secret had submitted that simply continuing its PINK brand which was already substantial and successful in the US in the UK and Europe amounted to “due cause”. This was strongly rejected by the Court, which unsurprisingly indicated that activities in a different country do not in and of themselves give a brand carte blanche to operate as it wishes in the UK or Europe if another party holds pre-existing rights.

Conclusion

Given the stakes, Victoria’s Secret is highly likely to appeal the Judgment, however, this is another recent instance of a high profile success in the UK Courts for a trade mark owner. Also, it further emphasises that intellectual property rights have territorial limits and even an established brand cannot simply expand its activities into another country without risk.

Victoria’s Secret could have improved its position by adapting the use of PINK, using it in locked up format – “VICTORIA’S SECRET PINK” – on all products. If “VICTORIA’S SECRET PINK” was the sign being used then the likelihood of confusion would have significantly reduced as would the prospects of Thomas Pink being able to claim reputational infringement.

Put it on Ice: ALSA Abandons ICE BUCKET CHALLENGE Trademark Applications

Posted in Branding, Fair Use, First Amendment, Goodwill, Marketing, Social Media, Trademark Bullying, Trademarks, USPTO

(Bill Gates putting his own spin on the ice bucket challenge)

So there is a thing called the ice bucket challenge. In case you haven’t heard of it, you can read about it here (while you’re at it, you may want to read up on the internet, color television, and greek yogurt). In fact, Matt Kucharski discussed the branding/marketing aspects of the challenge last week, but what about the trademark aspects? Is it a protectible trademark and, if so, who owns it? Most people appear to associate the ice bucket challenge with the ALS Association (“ALSA”), which has raised more than $100 million.

With that kind of revenue, its not surprising that the ALSA filed applications to register the marks ICE BUCKET CHALLENGE and ALS ICE BUCKET CHALLENGE. Unfortunately, there was a bit of a backlash and, in less than a week, the ALSA voluntarily withdrew the applications.

As Erik Pelton pointed out on his blog, the ALSA may have faced some legal hurdles in order to claim and obtain registered rights in the two marks. The ALSA does use the two marks on the website to help fundraise, but the general public may not necessarily associate the marks exclusively with the ALSA. Although, based on the sheer size of the donations, it appears that the majority of those taking the ice bucket challenge do make some association between the marks and the ALSA. Another issue though is whether the ALSA is the first to have used the mark. Slate magazine put together a good piece addressing whether the ALSA was the first to use the marks (spoiler: nope). The article tracks the possible connections with similar “cold stuff challenges” that preceded the ice bucket challenge, such as cold water challenges, ice challenges, polar plunges, and general “do something stupid and/or dangerous then put it on YouTube” challenges.

The ice bucket challenge has a number of critics, either because they consider it “narcissism disguised as altruism”, or because it is a waste of perfectly drinkable water. But others have used the success to highlight other important issues. Personally, I found Orlando Jones’ challenge video along with the “rubble challenge” videos/concepts to be particularly impactful. (more ideas here)

Given all the third-parties that have used the ice bucket challenge (or similar challenges) for fundraising efforts, both before and after the ALSA, it is not surprising that the public was generally displeased with the ALSA for filing the trademark applications. However, the ALSA’s concern for third-parties profiting from the ice bucket challenge is very real. There are numerous, different types of products for sale, many of them specifically mentioning ALS. It certainly isn’t inconceivable that those purchasing these products assume there is some connection with the ALSA or, at the very least, that part of the proceeds will go toward fighting ALS.

Given both the legal landscape and the court of public opinion, it appears that abandoning the applications was the best move for the ALSA. The general public will need to be aware of to whom they donate and from whom they purchase any products that appear to be associated with a particular organization. I’ll admit though, I wish somebody could claim exclusive ownership to the ice bucket challenge in order to get this Ice Bucket Challenge Halloween Costume taken down. Even if it doesn’t violate anyone’s trademark rights, it violates my core notions of what should exist.

A Less Possessive Hershey’s Brand?

Posted in Branding, Food, Marketing, Trademarks, Truncation, USPTO

The possessive form of the Hershey’s brand dates back to at least as early as 1894, according to U.S. Reg. No. 54,041 – a more than 100 year old trademark registration from 1906.

Last week, Brand New reported on Hershey’s new logo and corporate identity – without the apostrophe and letter “s” at the end:

I’m guessing that the possessive form of the HERSHEY’S trademark will continue to appear on chocolate bars and packaging, since all references to the rebrand seem to focus on the corporate identity, but if others have more information on this point, please feel free to weigh in.

Moreover, so far, there is no record of any trademark filings in the U.S. to match the new truncated look, perhaps also signaling that this look won’t hit packaging, at least in any dominant kind of way.

Here is how AdAge reported the change:

“The new branding will impact all visual aspects of how The Hershey Company presents itself, from consumer communications to websites to the interior design of its office spaces and the look of its retail stores,” the company said in a statement. While rooted in a rich heritage, the new corporate brand reflects a modern, approachable look that reflects the company’s openness and transparency as it has grown into a global company.”

Marketing types, if that is the goal, why leave the truncation and elimination of the possessive form to corporate communications, why not take it all the way to packaging? And, do you believe that makes sense as the next logical step, or does the trademark syrup just become too sticky?

Perhaps Hershey’s is merely dipping its toe in the chocolate of the less possessive format?

Given that Hershey’s has more than 150 live U.S. Registrations smooching the possessive form of the brand name (and many multiples of that number outside the U.S., I’m sure), if the truncated un-possessive format were to replace the more than 100 year old Hershey’s format, trademark types, would you feel comfortable advising the brand managers that amendments could be obtained safely without losing all these valuable registrations?

In other words, do you believe that removing the apostrophe and “s” creates a material alteration of the Hershey’s trademark? In the U.S.? What about outside the U.S.?

Would you hedge by having the new corporate identity appear in a trademark sense but in a more subtle way, almost as a corporate signature on the back corner of a packaging label?

There is certainly a lot to think about when an entire worldwide trademark portfolio is already in place — seems to me, this is a perfect opportunity for a graceful collaboration between legal and marketing types.

Don’t Litter, Eh?

Posted in Advertising, Branding, Fair Use, Famous Marks, Trademarks

The Toronto Globe and Mail recently reported on a clever anti-littering campaign that was launched and quickly aborted in Toronto due to trademark concerns.  The premise for the campaign was to take wrappers and packaging from some well-known brands and position it to create words describing litterers–words like dipstick, dumb, lazy, lowlife, pig, etc.  While it’s a close call, I suspect this campaign was expected to be slightly more effective than my headline for this post.

Now, I’m no Canadian lawyer (although I do own a Canadian tuxedo), but I wonder how in the name of Bryan Adams this ad campaign was approved all the way through publication without anyone thinking about getting the permission of the brand owners.  Not surprisingly, the brand owners whose packaging was used for the ads raised concerns about negative associations that might result from the ads.  And if Canadian trademark law is anything like U.S. trademark law, they would have probably had a pretty decent case.  That’s not to say that Toronto (or whatever ad agency put the campaign together) would be defenseless–indeed, I can imagine a couple arguments based on the fact that the packaging is not being used as a trademark and this could potentially constitute a type of fair use–but, at the very least, this campaign was something that was likely to start a fight.  Well-established brands are precious commodities and it’s unthinkable that any reputable brand would be okay with its brand being equated with trash.  (Unless, of course, you’re in the trash business.)

Perhaps the ad campaign was launched under the theory of “better to beg forgiveness than to ask permission,” or perhaps the ad agency that put the campaign together was willing to gamble in an effort to get their name out.  Whatever the logic, I think it was always an unfortunate foregone conclusion that this ad campaign would not survive long.  What do you think?

 

Another Real Lulu: Anatomy of an Affidavit

Posted in Articles, Branding, Food, Goodwill, Infringement, Law Suits, Marketing, Trademarks

On Tuesday of this week, we discussed the trademark infringement case filed by Lulu’s Market & Deli against Lulu’s Public House (depicted above), here is a link to a pdf of the Complaint.

As you will recall, we expressed a healthy dose of skepticism about the claims being asserted by Lulu’s Market & Deli, and we predicted that no emergency injunction would issue before the closing of the 2014 Minnesota State Fair next Monday. It appears our prediction will hold, given that today is the last opportunity to obtain an emergency order from the court to impact use this season.

Although the complaint was filed last Friday, along with a Motion for Temporary Restraining Order, as Ramsey County District Judge Robert A. Awsumb — who was assigned the case on Monday — noted in his Order on Tuesday, no emergency hearing will be scheduled until Lulu’s Market & Deli files with the court, proof of service of the complaint and motion on Lulu’s Public House.

Let’s count the number of ways, according to the actions of Lulu’s Market & Deli, that this is so not an emergency that would require immediate court intervention.

First, despite District Judge Awsumb’s warning on Tuesday, still no evidence of serving notice on Lulu’s Public House has been filed with the court.

Second, the owner of Lulu’s Market & Deli, submitted his Affidavit, last Friday to explain the need for the emergency injunction, but in doing so, admitted: “On or about June 26, 2014, I read a story in the St. Paul Pioneer Press about new food vendors entering the Minnesota State Fair, which is taking place this August 21 through September 1. Among the new vendors who were reported to be entering the State Fair was an operation called ‘Lulu’s Public House,’ . . . . The newspaper story ran in the ‘Eats’ section of the Pioneer Press. Since June 26, 2014, I have also seen several other internet news and information sites publicize the entry of ‘Lulu’s Public House’ at the State Fair.”

So to be clear, Lulu’s Market & Deli waited to file suit and request emergency court action until after the State Fair opened and more than eight weeks after admitted knowledge of Lulu’s Public House coming to the State Fair — and, the June 25 Pioneer Press article specifically referenced the “Breakfast Juicy LuLu” menu item that Lulu’s Market & Deli is complaining about.

Third, the Affidavit of the owner of Lulu’s Market & Deli also admitted: “Since the June 26, 2014 Pioneer Press story ran, I have been contacted by between five and ten people each week who mistakenly believed that ‘Lulu’s Public House’ was affiliated, associated, or connected in some way with Lulu’s Market & Deli.”

So, by the third full week of July, Lulu’s Market & Deli had heard from twenty to forty ”confused” people, but waited more than another four weeks to take formal action (the papers are also silent about and beg the question of when Lulu’s Market & Deli first contacted Lulu’s Public House), tellingly after the opening of the State Fair.

By Tuesday of next week, when the court reopens after Labor Day, the claimed need for emergency relief will be moot.

To be serious about seeking an emergency temporary restraining order, Lulu’s Market & Deli needed to move quickly upon learning what it learned in June, it needed to communicate through its actions that immediate attention and court action was required to avoid irreparable harm. Yet, the complaint, motion for temporary restraining order, and supporting affidavits, all beg the question of why Lulu’s Market & Deli waited so long, seriously undermining the request for immediate and emergency court intervention.

Of course, actions speak louder than words.

Just curious, why does the operation of Lulu’s Public House at the Minnesota State Fair create a twelve day emergency for Lulu’s Market & Deli, when another’s food truck – operating under the name ”Lulu’s Street Food” — has been circling the streets in the Twin Cities for more than a year?

As predicted, it appears this dispute will be sorted out after the 2014 Minnesota State Fair ends.

If so, that will provide Lulu’s Public House plenty of time to redeem itself and probe the claims and motives of Lulu’s Market & Deli, if it is inclined to defend itself.

There appears to be plenty to probe, based on a cursory review of the complaint, motion, and affidavits filed by Lulu’s Market & Deli.

First, Lulu’s Market & Deli does not appear to own a registered trademark, so it actually will have the burden of proving the existence of common law rights and the scope of those rights.

Second, although Lulu’s Market & Deli’s motion for a temporary restraining order contends that Lulu’s is an “arbitrary term” that “deserves the highest protection” and “no proof of secondary meaning” is required — the owner’s Affidavit admits that the “Lulu’s Market & Deli” name “is derived from the original owner’s last name. . . .”

Surnames are considered descriptive, and as such, they don’t enjoy exclusive rights upon first use, but they require a showing of secondary meaning or acquired distinctiveness. Here, the current owner’s Affidavit admits to only “spending $15,000 on advertising and marketing using the business’s name” since he became the owner in 2010.

Secondary meaning is not assured to Lulu’s Market & Deli. And, it will be interesting to see how Lulu’s Market & Deli plans to prove that Lulu’s enjoys a special significance or secondary meaning while another’s food truck — also using the Lulu’s name — has been roaming the Twin Cities for more than a year.

It is unclear whether Lulu’s Market & Deli will be able to rely on the claimed 13 years of use of Lulu’s by the prior owner with the last name Lulu — no chain of title has been made of record yet, and the current owner seems to lack personal knowledge of any prior use (“[t]o the best of my knowledge, since it first went into business, it has always operated under the name Lulu’s Market & Deli”), calling into question whether a proper assignment was made when he took over the business on the corner of Selby & Fry in St. Paul, Minnesota.

Indeed, the plaintiff’s assumed name filing for “Lulu’s Market & Deli” is dated September 14, 2010.

Nevertheless, assuming for the moment that prior common law rights can be proven, Lulu’s Market & Deli also will have to establish more than de minimis and otherwise manageable confusion in the marketplace.

Keeping that in mind, all of the customer, employee, and friend generated Affidavits purporting to prove “actual confusion” appear tainted by a leading questionnaire admittedly provided to each of them by the owner of Lulu’s Market & Deli, specifically asking: “When you heard or read about Lulu’s Public House entering the Minnesota State Fair, did you believe that it was affiliated or associated with Lulu’s Market & Deli?”

Ouch, that burns a lot like molten cheese dripping from a juicy lucy. This kind of evidence is not persuasive and it isn’t going to cut it, if the case is pursued beyond the closing of the State Fair in 2014.

The complaint and other papers filed by Lulu’s Market & Deli also question the good faith of Lulu’s Public House in adopting and using its name. Those filings call out the actions of the owner of Lulu’s Public House as ”wrongful,” “cavalier,” “willful, deliberate, and/or intentional,” “infringing,” and “unlawful.”

We had the distinct pleasure of meeting Lulu — the owner of Lulu’s Public House — and snapping the photo (above and to the right) two nights ago.

The Lulu we met is anything but the way described, she is charming, and seems to be a real and authentic sweetheart who wears the American flag quite well, by the way.

Oh, and did I mention, her name is Lulu? I’m thinking that quiets at least the motive behind selecting the name Lulu’s Public House.

So, we’ll be following this case closely, stay tuned dear readers.

Copyright Watch: Suit over the NCIS Bert the Far***g Hippo

Posted in Copyrights, Infringement, Mixed Bag of Nuts, Television

I can’t even say the word!  Don’t worry, I’ll have to eventually.  Let’s just say the folks at CBS are likely pretty steamed up over getting hauled into court on a smelly copyright suit involving a noisy character from its popular NCIS show.

The California designer, developer, and manufacturer of the original “Bert the Farting Hippo” is suing CBS as well as a host of others including the online retailer authorized by CBS to operate and sell goods in the CBS Store.  The copyright infringement suit alleges that the retailer went rogue in 2012, opting to source the copyright-protected plush and popular noisemaker in China rather than the California company that developed the original, Folkmanis, Inc.

As of this morning, Bert the Farting Hippo appears to be pulled from the virtual shelves of the CBS Store.  Earlier this week, The Hollywood Reporter noted that the hippo was still for sale at 53% off.

According to the Folkmanis complaint filed Monday in the Northern District of California, Bert’s first appearance on television came back in 2003 when the producers of NCIS acquired a silent version of the stuffed hippopotamus for use on the show.  When the hippo appeared on the show, the complaint alleges, “it was often accompanied by a dubbed sound effect of a fart attributable to the Hippo 1 puppet, and the show puppet was referred to and came to be known as ‘Bert the Farting Hippo.’”

Quick aside: I love the way lawyers write sometimes: a “fart attributable to…”  It almost hearkens to patent claim-writing parlance.  Attorney H. Michael Brucker, who filed the suit, must not be aware of the time-old rule, “you smelt it, you dealt it.”  It’s so much more conversational that way!  Then again, I see nothing about Bert’s ability to smell.  But I must admit, it’d be pretty cute if parents started to teach their children to assign blame using a more proper form of attribution.  But I digress.

The suit goes on to allege that in 2010, CBS and its online retailer-licensee “surmised that a hippo puppet would be a profitable product to offer for sale on the CBS Store.”  Folkmanis obliged, developing a version of its hippo that included “a sound box that emulates the sound of a fart.”  Emulates! Much to the chagrin of parents everywhere, of course.  In 2011, a keychain version of Bert was introduced.

Can you guess how many hippos they sold between just 2010 and 2012?  I’m not an NCIS fan so I didn’t know about Bert until I caught wind of this suit this week, so I’d never heard of this creature.  Would you believe it if I told you they sold some 30,000 farting hippos?  That’s what the complaint alleges.

Enter the presumably cheaper Chinese counterparts.  Folkmanis alleges that the online retailer operating the CBS Store started sourcing the hippos in China starting in 2012 and hasn’t purchased a single hippo or hippo keychain from Folkmanis since that time.  The lawsuit cites two copyrights, one for the stuffed animal toy, and one that’s pending that covers the keychain.

Since 2012, Folkmanis alleges that it has suffered an estimated $733,000.00 in damages.

Blue 42. Set. Trademark! I mean, Hike!

Posted in Articles, Branding, Fair Use, Famous Marks, First Amendment, Goodwill, Non-Traditional Trademarks, Product Configurations, Sound, Squirrelly Thoughts, Television, Touch, Trademarks, USPTO

Can you feel it? All around the country, fields are being groomed, stenciled, and painted. Tonight, the college football season begins with Georgia State taking on Abilene Christian in what could be a preview of one of hundreds of games that most of us don’t really care about. But like so many fans around the country, I’ll probably still watch it, at least for a quarter: I missed you Football.

Football certainly hasn’t been gone from the news though, as lawsuits addressing scholarships, unions, and additional antitrust violations have all made headlines. But one headline caught my attention, an article discussing the University of Southern California’s head coach Steve Sarkisian filing a U.S. Trademark Application for his moniker SARK. Sark joins a number of other college football coaches who have applied to register their names.

Just last month, we covered the University of Arkansas’s registration of the SOOOIE RAZORBACK cheer. There was also the Oregon/Oregon State CIVIL WAR, too. This got me wondering, if trademark law can protect coach names, chants, and intrastate rivalry games, what other fun ways can I think about work while watching football?

How about stadiums?

Check. Well, technically only the turf is claimed as a feature of the mark. Steve discussed this registration back in 2009. Also, the red version for Eastern Washington. Not the stadium itself. But still.

Uniforms?

 

Check. Oh, and better get one for the away uniforms, too.

And speaking of uniforms, if you were considering launching a business that sold perfume or deodorant in the form of a football jersey, well. Don’t. Not just because its a terrible idea, but because you might be infringing on the trademark registration below:

 

And since we’re on the subject of product trade dress, don’t forget about football shaped brownies:

 

And you definitely won’t want to forget about your football shaped “alcoholic beverages except beers:”

 

And let’s see if you can guess what kind of goods or services this is a trademark for:

Yes, it’s a kicking tee. And yes, it’s registered on the Principal Register in connection with kicking tees.  How? Well, apparently, the texture on the tee is so unique that it has acquired distinctiveness in the minds of consumers as identifying a particular source. Right.

There’s even a trademark registration for this logo:

 

Which is apparently in no way associated with this registered trademark of Nike:

 

Or how about this trademark:

Yep, that yellow line is a trademark of Sportsvision. Martha covered that here around Super Bowl time – Oh, sorry Roger -  The Big Game time.

And if you’re attending a game at Texas A&M, not only will you be surrounded by trademarks, but you will BE a trademark, way to go 12TH MAN®!

There are certainly many more that we could cover, but I think it is pretty clear that this Saturday, whether you’re in the stadium, on the LA-Z-BOY® at home, or at the BLUE 42 SPORTS GRILL in Winter Garden Florida, you will be surrounded by trademarks. And football. Glorious, but possibly not-very-competitive, football. Enjoy it! – I know I will (GO HAWKS!!).