DuetsBlog

Collaborations in Creativity & the Law

Channeling Justice Ginsburg of U.S. Supreme Court on the Right to Register a Trademark

Posted in Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademarks, TTAB, USPTO

We sounded the alarm exactly six months ago about a trademark case of great importance to brand owners: . Earlier this week, the U.S. Supreme Court heard oral argument in the case, and here is a link to the transcript (hat tip to Draeke).

As you will recall, our concern in sounding the alarm is that the Supreme Court might follow the advice of the Solicitor General (SG) who essentially equates the right to register with the right to use a trademark, seemingly suggesting the right to use is dependent on the right to register:

“The SG’s amicus brief, as well-written as it is, fails to appreciate the very limited scope of TTAB jurisdiction, the full extent of its unique practices and procedures in deciding likelihood of confusion for purposes of registration, and unfortunately the influential SG takes the following misguided position (without respecting the TTAB’s own view of its limited jurisdiction, much less appreciating the negative impact that the threat of preclusion will have by necessarily escalating the stakes, intensity and expense of administrative Board proceedings going forward):

“When the Board concludes in an opposition proceeding that a likelihood of confusion does or does not exist with respect to particular usages, that determination precludes relitigation of the likelihood of confusion question in a subsequent infringement action between the same parties for the same usages.”

We liked INTA’s amicus brief far better, calling for a black and white test against preclusion:

“INTA’s amicus brief is the only one to score an A. INTA’s amicus brief did a very impressive job of communicating the clear difference between how likelihood of confusion is addressed at the TTAB in determining the right to register, as compared to how likelihood of confusion is addressed in federal courts across the country — with brand owners having far more at stake in the latter, including injunctive relief, damages, and attorneys fees.”

We’ve also said before:

“Baby trademark lawyers have been taught for decades that the right to register a trademark is separate and distinct from the right to use a trademark. Every day we clear marks for brand owners understanding the critical difference between these important rights. It is not uncommon for a brand owner to be refused registration of a trademark based on another’s prior registration for a similar mark, but that doesn’t necessarily mean the brand owner’s use of the mark is infringing, or that it should be enjoined, or that monetary awards are appropriate for the continued use of the mark.”

So, imagine my pleasant surprise in reading the Supreme Court transcript (because I couldn’t just walk down the street to hear the live oral argument like Erik Pelton) that Justice Ginsburg appeared receptive to our channeling — coming out of the gates hard against preclusion, within the first 75 words uttered by counsel for Petitioner B&B Hardware:

Mr. William Jay: “The Lanham Act contains only one concept of likelihood of confusion. That is why the two tribunals in this case decided the same issue, and that is why the issue of preclusion is appropriate. Whether a court is considering registration or infringement or both at the same time, the statutory test is the same, whether the resemblance of the marks as used on particular goods would give rise to a likelihood of confusion or mistake or deceit.”

Justice Ginsburg: “Mr. Jay, there are exceptions to preclusion even though you would see the identical issue, and one of them is when the stakes are higher in the second proceeding than in the first and . . . . it seems to me this is such a case, because it’s one thing to say that we won’t register your mark and another to say you can’t use the mark. . . . And one way of assuring expeditiousness is to confine the stakes to the matter immediately in controversy. . . . The matter of controversy is registration, and in the second proceeding, it’s infringement. . . . [Y]ou don’t want to make that [expeditious first] proceeding pull out all the stops because it’s going to be determinative of the infringement suit. . . . [I]f one aspect of the first proceeding is to assure expeditiousness, then confining the stakes to that issue of registration makes sense so that the parties will not be induced to dispute the administrative proceeding in anticipation of its effect on another proceeding.”

Bingo! And, here’s to hoping that Justice Ginsburg ends up writing the Court’s majority opinion.

The Office Action Response

Posted in Almost Advice

For the most part, the law regarding the examination of trademark applications is slanted in favor of the examining attorney. However, examining attorneys have evidentiary burdens to meet. Analyzing the evidence offered by the examining attorney is as important as arguing the interpretation of the law. Additionally, understanding the evidentiary rules can make the difference in overcoming a refusal.

Responding to substantive refusals from the Trademark Office is not a simple task. You wouldn’t see a family practitioner if you needed surgery, so seek out an experienced trademark attorney with a proven track record of overcoming tough refusals when responding to substantive refusals on your pending applications.

 

Angry Monkey See, Angry Monkey Sue

Posted in Copyrights, Fair Use, First Amendment, Infringement, Law Suits, Trademarks

Video games have come a long way since I was a kid. I grew up with a pixelated plumber jumping on on turtles with frozen facial expression. Sometimes it is hard to believe how far video games have developed, with games like Call of Duty and Grand Theft Auto providing massive digital worlds that mimic and recreate everything from the precise recoil and smoke from an Uzi versus a handgun, to the minute details of Los Angeles, from the fancy high rise buildings to the adult dance clubs. What may be even more surprising is that these video games fall squarely within the protection of the First Amendment.

One of the most successful video game franchises of recent years is Activision’s Call of Duty games. In 2013, Activision released Call of Duty: Ghosts. One of the most popular elements of Call of Duty is the multiplayer mode, where players can play with players both in their own house and across the world.

In the multiplayer mode, you can customize your characters with particular weapons, gear, and “patches” – insignia that some users select in order to create an allegiance to a particular group. The option accurately reflects the use of “morale patches” by actual military members, a practice that goes back at least to the second world war. They can identify specific units, special operations groups, or nothing at all. Most are not sanctioned by the military, though.

In Call of Duty: Ghosts, the selection screen looks like this:

 

Unfortunately for Activision, one of these patches was a bit too close to real-life for one Mil-Spec Monkey Inc. (“Mil-Spec”) and the company sued Activision for trademark and copyright infringement (the complaint is viewable here). Mil-Spec sells the “Angry Monkey” patch shown below (and others) on their website for a bargain at $4:

Mil-Spec has been selling the patch since 2007, and owns a trademark registration for the design in connection with retail store services featuring clothing, patches, and other gear.  The patch could be popular among military members. It happened to be included on the board of morale patches in the first article Google found regarding the history of morale patches, if limited anecdotal evidence means anything (the complaint made no claim as to amount of sales, third-party publicity, etc.).

Activision filed a Motion for Partial Summary Judgment on the trademark infringement claims, claiming that its use was protected by the First Amendment. For expressive works, the Ninth Circuit follows the Rogers v. Grimaldi test to determine whether an infringement claim is barred by the First Amendment. Courts have repeatedly found that video games constitute an expressive work, so the court applied the two-prong Grimaldi test, which asks:

1) Does the use of the mark have “no artistic relevance to the underlying work whatsoever;” and

2) if there is some relevance, does the use still explicitly mislead consumers as to the source or content of the work.

If the answer to either prong is yes, the First Amendment will not protect the use.

As you might guess, the protection for expressive works is strong, as “no artistic relevance whatsoever” is a tough standard for trademark infringement plaintiffs to overcome. Activision argued that there was a need to make the game have a “look and feel” that accurately reflected military missions. Because both parties agreed that “morale patches are popular among military personnel and are often worn in unofficial contexts to allow the wearer to express a sense of personal identity,” the court concluded that the use of the patch had some artistic relevance.

The court then asked whether any other facts suggested that consumers would be misled into thinking that Mil-Spec had endorsed the game through the use of the Angry Monkey patch. However, this prong requires affirmative action and Mil-Spec could not put forth any such action. The game clearly identified Activision as the creator and source of the game. Mil-Spec could not identify any fact other than the use of the mark itself. The court therefore concluded that Activision had not explicitly misled consumers.

Consequently, the court granted Activision’s Motion for Partial Summary Judgment. Mil-Spec still has its claims of copyright infringement, though. But we’ll have to wait and see how that shakes out. If you’re interested in coming to your own conclusion, two patches are compared side-by-side below.

      

Feel free to make your own predictions as to the copyright claim in the comments. We’ll be sure to follow up in the event the parties don’t reach a settlement.

No IP Holes in this Crystal Head

Posted in Advertising, Articles, Branding, Food, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Product Packaging, Sight, Trademarks, USPTO

We’ve spilled a lot of digital ink here over the past several years discussing the protection of non-traditional trademarks. We’ve also written about the importance of layering various intellectual property rights (trademark, copyright, and patent) to accomplish the competitive goals of a business. And, we’ve enjoyed writing about non-traditional vodka branding here and here. Today, we have it all come together at once.

A federal lawsuit filed in Minnesota a couple of weeks ago illustrates very nicely the creative layering of intellectual property rights that are available to many brand owners, not just distilled spirit and vodka brand owners.

In Globefill Inc. v. Maud Borup, Inc. (complaint is here and exhibits are here), Globefill (who sells vodka in skull-shaped bottles) brought several IP claims against Maud Borup (who apparently sells cocktail mixers and hot sauces in skull-shaped bottles). I suspect the lawsuit resulted from Maud Borup’s recent Halloween features.

Globefill asserted infringement of its federally-registered skull bottle trade dress rights and its common law rights in the skull bottle trade dress, in addition to infringement of its registered copyright in the 3 dimensional sculpture embodied in the vodka bottle packaging, and infringement of the ornamental design features covered by a design patent (all issued rights shown in the exhibits attached to the complaint).

Specimen for U.S. Trademark Reg. No. 4,043,730

U.S. Trademark Reg. No. 4,043,730

The beauty of the layering of IP rights lies in the fact that each asserted IP right offers a different path to accomplish the same end goals of ending the infringement and unfair competition while also providing a monetary award to the brand owner.

For example, having copyright and patent rights will serve as a strong basis for injunctive relief even if there is no likelihood of confusion (which is required to establish trade dress infringement), so for those IP claims, no need to focus on whether hot sauce and vodka are sufficiently related to establish the requisite confusion for the trade dress claims.

Since the trade dress is federally-registered, the burden shifts to Maud Borup if it wants to defend the trade dress claims on functionality grounds. Without a registration, Globefill would have had the burden of establishing non-functionality of the skull design vodka bottle.

To establish copyright infringement Globefill will need to prove Maud Borup’s access to Globefill’s bottle and substantial similarity of the three dimensional skull works. This uniquely then opens the door to statutory damages and an award of attorneys fees to the prevailing party. On the other hand, with the patent and trademark claims, actual damages must be proven (as opposed to more easily obtained copyright statutory damages), and an award of attorneys fees is only possible for exceptional cases with patent and trademark claims, merely prevailing it not enough (as it is with copyright claims).

And, let’s not forget the boxcar numbers that can result from proving design patent infringement.

Of course, the different proofs and remedies resulting from Globefill’s intelligent layering of IP rights on a single product is far more complex than what I’ve noted here, but I think you get the point — there’s more than one way to obtain injunctive relief and more than one way to obtain monetary relief, based on essentially the same conduct by the defendant.

So, creative layering can be a beautiful sight, but just yesterday, John Welch, over at the TTABlog highlighted a case where the layering of IP rights didn’t go as well for the brand owner.

In that case, the brand owner fell into the all-too-common trap we have warned about for a long time, touting function over form, while trying to obtain non-traditional trademark rights — basically, it was a failed attempt to go beyond the copyright and utility patent rights the brand owner already had secured.

In short, word to the wise, there is far more art than science to an intelligent layering of intellectual property rights.

The Shiny Bright Red Holiday Star Brand(s)

Posted in Advertising, Articles, Branding, Famous Marks, Food, Goodwill, Infringement, Marketing, Non-Traditional Trademarks, Television, Trademarks

In the context of the holiday season, what comes to mind when you see a shiny bright red star?

If you’re reading this post from Russia, perhaps the top of a New Year Tree is brought to mind.

Of course, I have brands on my mind, and it has been hard to miss the barrage of holiday advertisements of two different, but well-known, if not famous, brands that feature a red star:

 

MACY’S claims use of the federally-registered solo red star logo for retail department store services since at least as early as 1892.

Macy’s once owned federal registrations for the red star logo in connection with a variety of products, including golf clubs, medicines, tooth powder, and wines.

The Macy’s red star registration for wines was not renewed, however, and expired in 1994, apparently opening the door to federal registration of the above Heineken logo.

So, does that mean Heineken now owns exclusive trademark rights in a single red star in the context of beverages? No, that context is likely too broad, given the rights SanPellegrino has acquired from its use of a red star logo in connection with “mineral and aerated waters and carbonated fruit drinks” since 1900 (or, perhaps 1961).

Heineken actually opposed registration of the SanPellegrino red star logo in 1997, but the opposition was withdrawn two years later — likely an interesting back-story, if anyone knows it, please share.

But, even limiting rights to the context of beer appears too broad for Heineken, as this non-verbal and non-traditional trademark application to the right is as close as Heineken has come to seeking federal registration of the red star logo without being tied to the Heineken brand name. (The colorless version of the same registered logo is almost a decade old now).

It is a curious decision for Heineken to bind rights in the red star for beer to the green/white/black trade dress — given the substantial brand equity in the red star logo for beer — because what it might end up with on another’s beer taps could leave it pounding its own fist (note the red/green/white trade dress on the Anti Hero IPA specimen to the right of the non-verbal trademark registration on the left below):

It is even more curious that Heineken sat on its hands and its heiny, not even attempting to slap Revolution Brewing’s wrist with an extension of time to oppose registration of the red star tattooed fist tapper trademark. Apparently, Iron Fist Brewing thought about it, but then said never-mind.

At this point in time, let’s just say the “red star” beer has been and continues to flow from the tap to the floor, making it almost impossible to put it back into the keg, as evidenced by these multiple third party uses of a “red star” or something close to it, also in the context of beer branding:

 

Not to mention the Redstar bar in Brooklyn, NY, the Red Star Craft House in Exton, PA, the Red Star Bar & Grille in Baltimore, MD, or the closer-to-home Duluth Red Star.

Briefly turning to the context of politics, given how the red star is also a recognized symbol of communism, how is it that Yum Brands appears to be the only one attracting objections on that basis?

I’m thinking we’re back to where we started with context.

Indeed, Yum Brands’ Bahn Shop — Saigon Street Food, appears to cater to those interested in Vietnamese cuisine, and based upon consumer outrage, it recently announced it would drop the red star logo from its visual identity.

Finally, back to Heineken, would you have pounded more than a fist against Revolution Brewing’s six-pointed red star logo on the beer tapper?

Not exactly a scientific survey, but I showed the tapper to one of my sons (who doesn’t yet fit Heineken’s target demographic), and he confidently assumed it was a Heineken beer tap.

Who should be more worried, Heineken, Revolution Brewing, or me?

Pass the Trademarks Please.

Posted in Branding, Famous Marks, Food, Genericide, Loss of Rights, Mixed Bag of Nuts

Now that Thanksgiving is over, Americans across the country are taking some time to relax, reflect, and digest. I know I will be doing all three, after enjoying a wonderful Thanksgiving Day surrounded by family, friends, food, and, yes, trademarks.

Even in the midst of one of the most significant holidays I still couldn’t quite get away from trademarks. While we weren’t discussing res judicata, trade dress protection, or comparative advertising, our discussion still underlined a very important (and sometimes overlooked) principle of trademark law: context is everything.

Context is what kept consumers being from confused yesterday as to whether the Lions were doubling up the Chicago Bears, the California Golden Bears, the Baylor Bears, or the Hershey Bears. The NFL association, uniforms, use of other wording, and many other contextual clues all contribute to consumers ability to distinguish between the various Bears.

Context is also what turns an otherwise descriptive name into a distinctive trademark. “Apple” is merely descriptive of food products, but for computers that descriptive meaning is lost. And while the phrase “Thanksgiving Day” is a holiday that is not likely registrable for a number of goods, when used in the context of pet food, it’s distinctive and registered:

And context is very important for those brands fighting off potential genericide, i.e., when a brand name loses its trademark significance by becoming the generic term for the goods. When you were around the dinner table, did you ask for Cool Whip® or non-dairy whipped topping? Jell-O® or gelatin? Did you cook your casserole in a Crock Pot® or a slow cooker? And when your guests went home with leftovers, did you put them in Tupperware® or containers? And with the cold weather, did you make sure to put on your Chapstick® or did you use lip balm?

Yes,  context is everything. It matters for brands and it matters for a lot of things your family and friends might say at the dinner table during a long, stressful holiday. And sometimes context is as simple as geography. The issue that brought all of this up for my family was whether some of the dishes we were preparing was a “casserole” or a “hot dish.” Being from Iowa, I was obviously on Team Casserole. As you can probably infer, we had someone from up Nord representing Team Hot Dish. But again, context is everything. And in this context, whether it was hot dish or casserole, it was still Thanksgiving.

Hope you all had a Happy Thanksgiving!

Giving Thanks

Posted in Mixed Bag of Nuts

As “Black Friday” store openings creep earlier and earlier into Thursday, I’m growing concerned that my favorite holiday Thanksgiving is losing its luster.  We eat pumpkin pie rather than carve pumpkins like Halloween, and Thanksgiving doesn’t carry the festiveness or allure of a stocking hung by the chimney with care.  We gorge on tryptophan, watch professional athletes pummel each other while trying to move a ball towards a goal, and stand in line for televisions.  We’ve sort of denigrated the turkey – trying to fry it, mixing it with other fowl in the form of a Turducken (also a registered trademark of Magic Seasoning Blends), pretending that Tofurkey seems normal, and local firm OLSON creating the Hot Durkey for Oscar Meyer.

Why must we rush from Halloween right into Christmas?

Can’t we all just take a break in November and be thankful?

Does Thanksgiving need a re-brand?

The importance of giving thanks is well documented.  Books on happiness generally suggest that expressing gratitude, even in a personal journal, leads to an increased level of satisfaction and happiness.  Lazlo Bock, senior VP of people operations at Google, believes in it.  Benedictine monk David Steindl-Rast did a TED talk on it.  And science even supports it.  When kids make a list about what they’re thankful for, you may be surprised about what you learn about them, like this guy wrote about on Deadspin.

There’s power behind those two magic words – “thank you” – that guest blogger James Lukaszewski wrote about here a few months ago.  Thank you notes seem to be kind of a lost art in the digital age.  You’d think Jimmy Fallon’s Thank You note segment would make it catch on a little more widely.  “Thank you” notes certainly provide a teachable moment to kids about graciousness and thankfulness.

I’m certainly grateful to DuetsBlog for the opportunity write on this top-rated, Blawg 100 blog, grateful to my colleagues who contribute such well-written and often humorous posts, and grateful to all of you for taking some time to read it.

What are you feeling grateful for today and how are you expressing it?

 

 

Spring Cleaning in the Winter?

Posted in Almost Advice

Winter is as good a time as any other for some spring cleaning when it comes to data privacy. In this case, the task is dusting off the privacy policies that you probably had drafted a while ago and probably have not looked at since to make sure they are up to date with any changes in the law.  One change that took place early this year is California’s requirement that a company disclose how it responds when a visitor’s Web browser sends a “Do Not Track” signal.  If you have not made this change to your privacy policy, now is the time to get compliant.

Thanksgiving Feast: ABA Journal’s Blawg 100

Posted in Advertising, Branding, Guest Bloggers, Marketing, Trademarks

Thanksgiving is coming a couple of days early here at DuetsBlog.

We have been minding our business — doing what we do best — fresh branding, trademark, and IP content and insights here five days a week, always thankful for the wonderful contributions from our talented guest bloggers, and staying inspired to write even more when generous folks like Seth Godin drop by for an encouraging word every now and then, and then, and then, and then, and then, and then, and again.

We celebrated our 5th and Golden Birthday earlier this year, yet we’re happy to be called NEW and thankful that the ABA Journal made DuetsBlog part of its 8th Annual Blawg 100. Here is how they describe us:

“All too frequently in corporations, the marketing team sees the legal department as buzzkill dream ruiners. Meanwhile, the company lawyers are convinced that the marketing folks are steering toward the shoals of litigation with berserker intensity. What’s needed is a more harmonious cooperation, DuetsBlog’s team of trademark attorneys argues. With an engaging mix of levity and real talk, they discuss recent examples of IP cases in which things may have gone horribly wrong.”

And, here is how ABA Journal goes about its Blawg 100 business:

“Every year, we find ourselves behind the eight ball as we struggle to rack up a great list and choose new nominees for our now 30-blog-strong Hall of Fame. No, we don’t just go through the 4,000-plus blogs in our directory and consult a Magic 8 Ball to decide what to add or scratch off our list. We remember the blogs that have tipped us off to breaking news and the bloggers who have compelled us to write about their innovative ideas.

And over the summer, we cue readers—and other bloggers—to write in and let us know about their favorites: When we can see their love for a blog is real and not a marketing hustle, it catches our attention.”

Dear readers, here is your chance to validate the ABA Journal’s confidence in us, show your support and cast a vote for DuetsBlog.

The digital polls remain open until the close of business December 19, so please vote here!

And, have a safe and blessed Thanksgiving!

Mmm (Mmm, Good) Coca-Cola?

Posted in Advertising, Articles, Branding, Food, Marketing, Sound, Trademarks

Love the recent holiday billboard ad for the beloved Coca-Cola brand!

Having said that, whenever I see branding around the sound Mmm, for food and beverage products, even if it is only one Mmm, and not back-to-back Mmm, Mmms, I’m thinking old school: Campbell’s Soup.

No wonder, Campbell’s M’M! M’M! GOOD! slogan has lasted nearly 80 years, and it likely has inspired many others to perpetuate the Mmm sound in their branding, and even sing about it.

With that memorability, heritage and long-standing success it’s hard to understand how anyone could think differently about the M’M! M’M! GOOD! slogan, oh well.