DuetsBlog

Collaborations in Creativity & the Law

Silicon Valley x Fashion District = Blurred Lines

Posted in Advertising, Agreements, Branding, Copyrights, Fashion, Infringement, Marketing, Patents, Product Configurations, Technology, Trademarks

Growing up in the 80s, it’s amazing how both fashion and technology have evolved since Scrunchies and Commodore 64s – although a quite separate evolution. I can’t recall a fashionable pager (really, go try to find one), or a chic mp3 player (I had an Archos Jukebox, look at that brick). That all changed once Apple focused on form as much as function when it released the iPod.

People love fashion because it is an extension or reflection of their personality, and a part of their personal brand. People love tech gadgets because they are also extensions of themselves, allowing people to work more efficiently, connect globally, and learn about themselves and their environment by processing information more quickly. But with the exception of a case for these technological tethers that reflects our personal brand, little has been done to the devices to make these devices “fashionable.”  Sure some corners have been rounded, it might be sleek, and maybe there is a great user interface with some clever icons, but not much else reflects the user’s personality.

With the recent advent of wearable tech, naturally a new opportunity for interweaving design and technology has emerged.  Are they electronic devices or are they jewelry?

This meshing of design and technology hit the runway earlier this month at New York Fashion Week and also with Apple’s introduction of its Apple Watch product.  Several designers over the past year have announced collaborations with tech companies to make new wearable tech gizmos more fashion friendly:

  • Opening Ceremony announced a collaboration with Intel for a bracelet called the MICA (which apparently stands for “My Intelligent Communication Accessory”)
  • Diane von Furstenburg has been experimenting with designs for Google Glass frames
  • Ralph Lauren debuted a smart shirt at tennis’ US Open, held in New York during Fashion Week, which takes biometric data for athletes

For a gadget nerd like me, it’s comforting that the fashion community generally has viewed this as, well, “nerdy” and “dorky.” Good to know that geek thankfully is still not quite chic.  In light of the lucrative design patent wins from Apple and Lululemon’s aggressive assertion of its design patent rights, the fashion industry should be on notice that design patents can help protect their inventive designs against substantially similar ones from their competitors. Where some of these new wearable tech products are collaborations with tech companies, it is critical that these joint development projects have underlying agreements clearly outlining ownership rights in the wearable tech.  When I asked my Magic 8-Ball whether we would be seeing any patent cases involving fashion brands about these wearable tech devices, it said “you may rely on it, yes” and I agree.

So to our branding gurus, there’s clearly a lot of collaboration going on between fashion brands and tech companies, and campaigns to bring public awareness to that collaboration. Do you think the consumer will buy the product because of the fashion brand alone, or will they need some indicia of source of the underlying technology like the Tory Burch / FitBit collaboration? Or, from the other perspective, does wearable tech need a fashion brand with a following to help sell it?

Are you buying wearable tech?

 

Personal Brand: Beware of what Facebook is doing

Posted in Guest Bloggers, Mixed Bag of Nuts, Social Media, Social Networking, Technology

- Aaron Keller, Managing Principal, Capsule

There was a time, back in the day, when you could just “Google” yourself and that was the best way to assess the value of your personal brand. Simple quantifiable way to see how many mentions you had on Google’s interwebs (the reference is intentional). And, you could dig deeper into each link to see what others were saying about you.

Then, we entered an era of social media and the digital landscape shifted, even for the brilliant minds at Google. Managing your personal reputation now included not allowing old high school friends to upload and tag photos you believed were forgotten in albums (yes, the arcane way of storing embarrassing photos from childhood). And, while Facebook is one of the largest, you also needed to be aware of and perhaps even managing your reputation in LinkedIN, Twitter, Instagram, Vine and perhaps Pinterest (just to get started).

It has become a bit overwhelming so you question, “why should I care?” Well, unless you’re a billionaire and old enough to give a rats asterisk about your reputation in the digital universe, it matters (think owner of LA basketball team). It matters because your reputation helps get you a job, income and food on the table. It matters because you can spend decades being true to your values and then find someone has attached something false to your name. Decades of living by certain standards can be undone in a simple mention in the digital universe.

Then the small things, people and brands who sit facing backwards on your coattails and use your reputation to build their own brand. This can be as simple as a person referencing how well they know you in order to get a job with an ex-colleague of yours. And, it can apparently show up in the world of social media. Here’s a recent example brought to my attention by a gentleman (Scott Petinga) considering a class action suit against a gigantic brand in social media.

Are you sure you LIKE something? When you see someone’s name come up (see the image below) as Liking a particular brand, it may surprise you that they may NOT have actually clicked LIKE as it clearly indicates. I was first made aware of this tricky method by Facebook by Scott Petinga. So, I started to look for it and asked my wife if she found brands claiming I LIKED them, but seemed a bit odd based on her view of my reputation (Personal Brand).

Here’s the first. Cub Foods. I have nothing against Cub Foods, but our firm, helped rebrand Byerly’s, hence I haven’t found a need to LIKE Cub Foods. Certainly not a big ding on my personal brand, but it is a shady method to influence my friends with a false statement. And, it makes me wonder, how many times does my name come up as LIKING something I have not and what other brands is my name attached to in the Facebook universe?

This has led to a request, if you’re a friend of mine on FB, please tell me if you see my name attached to a brand you wouldn’t expect. Send it my way. And, I suggest you do the same in your personal network to see what Facebook is up to with this shady method.

And, if it makes you angry enough, contact Scott Petinga and get yourself on his class action lawsuit.

Thank you for reading and if your reputation is important to you, start looking into this behavior.

(Subway) Eat Flesh, An Effective Parody?

Posted in Articles, Branding, Dilution, Famous Marks, Fashion, First Amendment, Guest Bloggers, Infringement, Law Suits, Trademarks

 

This past weekend one of my sons said, “Dad, I have a good blog topic for you.” After he explained, it was clear, yes, son you do! So, he sent me the photo to the left. It is one that he recently snapped at a place that sells Halloween costumes.

 

As an aside, I love it when family members, friends, colleagues, our wonderful guest bloggers, and you dear readers, send potential blog ideas and topics! So, please keep them coming!

Anyway, my son’s photo reminded me of a similar t-shirt and I now remember seeing it worn by some folks during the Minnesota State Fair a few weeks ago. Since I captured no photos at the time, I had forgotten about it until now. As it turns out, you can buy the shirt I saw online.

The Etsy site where it is being sold describes the above shirt to the right this way:

“This t-shirt reads Zombies Eat Flesh and is shaped like a very famous sub logo. This decal measures approximately 11 x 13 inches and is great for all you zombie lovers!”

So, I’m left wondering why hasn’t Subway jumped on this zombie with both boots? After all, we don’t only have a famous mark targeted by this parody, but a very famous mark, thanks Etsy.

And, Subway ought to have some free time on its hands now that the FOOTLONG trademark debacle is behind it, unless it is still working on removing those millions of false TM notices.

Or, perhaps Subway just hasn’t gotten around to Etsy yet, as another online seller has indicated his Eat Fresh parody shirts are: “NO LONGER FOR SALE DUE TO THE MAN.”

I’m thinking that whoever created and is using the stylized ZOMBIES EAT FLESH trademark has zero chance of successfully registering it (no surprise, no application has been filed, to date), I just can’t see the USPTO allowing it, can you?

TTAB cases involving a discussion of parody — in the context of likelihood of confusion – include at least the following:

  • Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that “likelihood of confusion will usually trump any First Amendment concerns”);
  • Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that “parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks”); and
  • Columbia Pictures Indus., Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-shirts, likely to cause confusion, noting that the “right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another”).

As if that isn’t enough, couldn’t you see this well-settled TTAB precedent being relied on by the USPTO during ex parte examination or by the TTAB during an inter partes proceeding?

  • When present, the fame of a mark is “a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods.” Recot , 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that “a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark” and that “the fame of a registered or previously used mark can never support a junior party”); and
  • If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009).

But, if Subway were to actually bring a trademark infringement and/or trademark dilution action in federal district court, would that be a walk in the park with this zombie, or the cemetery?

I’m thinking that the federal district court takes a much closer look at the parody defense and pays more attention to First Amendment concerns. Do you agree that the zombie has a better than zero chance of successfully defending on parody grounds?

If so, doesn’t this example help make the point, again, about the difference between the right to use and the right to register? They aren’t necessarily coextensive rights are they?

Shouldn’t a federal district court who is asked to decide likelihood of confusion and likelihood of dilution — with injunctive relief, damages, and other monetary relief hanging in the balance (instead of just the right to register) – have the authority and obligation to consider these issues fresh, without having its hands tied by a earlier TTAB decision affirming a registration refusal or granting an opposition to register on likelihood of confusion grounds? There is simply more at the stake when the right to use is challenged and monetary relief is sought, it seems to me.

Moreover, I can’t believe that the TTAB wants the pressure of having its decisions also determine liability for trademark infringement and trademark dilution claims in the federal district courts.

So, let’s hope the U.S. Supreme Court gets it right and recognizes the difference between the right to register and the right to use, in the upcoming B & B Hardware case!

Please join me and the renown Bill Barber of the Pirkey Barber firm discuss these important issues at the Midwest IP Institute in Minneapolis on Thursday.

Claims of Copying a Girl’s Best Friend

Posted in Mixed Bag of Nuts

If you thought this would be about diamonds you are wrong. It is about chocolate!

My favorite candy REESE’S Peanut Butter Cup is at the heart of Hershey Co.’s (“Hershey”) recently filed suit against LBB Imports LLC (“LBB”). In other Hershey news, check out Steve Baird’s blog post here. I guess it is not just me because there have been over 7 billion (yes, billion!) in sales of REESE’S products during the last five years. Hershey has design trademarks for the well-known orange-colored background covering the entirety of the packaging for candy and chips for baking with peanut butter. (See Us. Reg. No. 2,256,226), as well as for the shaping of the candy (U.S. Reg. Nos. 4,082,233 and 3,492,642).

Hershey alleges that LBB’s TOFFEE CRISP products infringed its trademark, constituted false designation of origin and unfair competition, and trademark dilution. What do you think?

Hershey is also suing LBB for additional products too. They include: YORKIE (alleged to infringe on the YORK® trademark), MALTESERS (alleged to infringe on the MALSTER® trademark), CADBURY (alleged to infringe on CADBURY®), and KIT KAT (alleged to infringe on KITKAT® trademark and trade dress).

The CADBURY egg has been around since 1855 and Hershey owns the exclusive license to use the famous registered mark in the United States. LBB is alleged to also be selling a product with the name Cadbury.

Finally, there are allegations of copyright infringement and unfair competition related to the kid favorite KitKat®. What do you think?

We will have to wait and see if Hershey prevails in the chocolate wars.

 

To speak or not to speak about a data breach

Posted in Almost Advice

I recently posted about some companies making the decision to not announce when a data security breach has occurred, or at least they would think twice before announcing. According to a couple crisis communication experts, that delay in announcing could harm the business in more ways than just increasing the chance of legal liability.

In connection with the latest data breach involving Dairy Queen, Jon Austin, a crisis communications specialist, opined that remaining silent about a breach is the wrong approach. Austin said that a mishandled response to a data breach can have a corrosive effect on the relationship with customers.

Even if the data breach incident is not fatal, the message you want to send as a business to your customers is that you will protect them. Afterall, the customers trusted the business with their information and honored the business with his/her patronage, so the business should step up and make sure the customer is taken care of. Jim Lukaszewski, a crisis consultant, and frequent guest blogger here, said a data breach incident is an opportunity to strengthen relationships with customers.

Given the fallout that can occur from a data breach incident, companies should have a prepared plan for a data breach. A written information security plan will help maintain order when the disorder of a data breach occurs. Companies should also train their employees on data security and periodically run through a data breach response drill so that the business is prepared in the event an incident occurs.

A Powerful New Trademark for Apple?

Posted in Non-Traditional Trademarks, Product Configurations, Trademarks, USPTO

All eyes were on Apple on Tuesday, September 9th as Apple unveiled a new line of products. The new line includes the iPhone 6 as well as the long awaited, expected, and rumored Apple watch (which, after years of speculation, will not be branded as an iWatch).

I had expected Apple to have applied to register the APPLE WATCH mark, or at least APPLE in connection with watches. But based on a quick search of the USPTO database, they haven’t.  However, just a few weeks ago, Apple did apply to register the following claimed trademarks:

 

Both applications identify the goods as “Adapters for use with computers, computer peripherals, consumer electronics, portable and handheld digital electronic devices, digital media players, handheld computers, tablet computers, mobile phones, electronic book readers, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) devices.” Or, as most of us likely refer to them: “chargers.”

The application for the top mark (the photograph), describes the mark as “a cube having four sides with rounded corners, a flat front and back surface, a connector port on the flat back surface, and electrical prongs on the flat front surface.” The only difference between the top and bottom applications is that the top claims the color white as a feature of the mark, while the bottom makes no claim as to color.

We’ve discussed Apple’s previous applications for trade dress applications here and here. The U.S. Trademark Office has not yet examined the application, but in order to obtain a registration, Apple will need to prove that its claimed mark is 1) non-functional, and 2) has acquired distinctiveness.  For item #2, Apple claims use of the mark back to 2008. Under the Lanham Act, 5 years of use is normally sufficient to establish acquired distinctiveness. So Apple’s main hurdle will be proving that the claimed mark is non-functional. The Board relies on a four factor test to determine whether a claimed mark is functional:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Whether a mark is functional is a fact intensive inquiry that goes well beyond the average reader’s attention span for a blog post. What I do know is that the claimed mark is probably about as compact as a USB power adapter could be. For packaging purposes, the cube shape is probably helpful. And the location of the electrical prongs and the USB connector port are likely placed in the most accessible locations.  On top of that, the advertising at the Apple Store touts the adapter’s “Ultra compact Design.”

Of course, competitors could use an alternative design, like a triangle. or a cylinder. The edges could be sharp rather than rounded, you know, to keep the thieves at bay (that might be functional though, so….).

Given that Apple includes a free charger as part of each of its new products, you wonder what their goal is in obtaining a trademark registration for this claimed mark. Are they hoping to prevent off-brand chargers like this USB charger? Or this charger that resembles the Macbook chargers? We’re more likely to find out Apple’s goal if it can successfully register either of these marks. Unfortunately, we’re probably going to have to wait a while.

Anybody got a watch?

 

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.