DuetsBlog

Collaborations in Creativity & the Law

Trademarks Can Be a Bitch

Posted in First Amendment, Trademarks, TTAB, USPTO

And I mean that literally.

We’ve laid down a lot of digital ink in the past about pejorative marks – lately in reference to the Redskins (at least here, here, and here) and  The Slants (here and here), both of which have been deemed disparaging enough to deny them a federal trademark registration.  We’ve even addressed some sexism in branding.  And I’m about to lay down a little more such ink.

I once saw a sign at my high school, which is attached to a convent, that said basically “tweet and post as if you were talking to one of the Sisters,” so I’m going to do my best to adhere to that with the topic at hand.

The topic is the word “bitch” in trademarks.

It’s a word that, by long-standing definition, refers to a female dog.  It also, of course, has been used as a pejorative term against women.   However, it also can characterize a strong, assertive woman.

In March, Flying Dog Brewery of Virginia won a long and hard fought First Amendment battle over the trademark RAGING BITCH in the state of Michigan.  The state of Michigan’s liquor commission had banned their beer labeled RAGING BITCH on the basis that the name was sexist and offensive, and Flying Dog tried to recoup lost profits because of the ban.  The Sixth Circuit ruled that the liquor commission had violated Flying Dog’s First Amendment rights and that the liquor commission should have been on notice that “banning a beer label for vulgarity violates the First Amendment” based on Bad Frog Brewery, Inc. v. N.Y. State Liquor Auth., 134 F.3d 87 (2d Cir. 1998) and remanded it to the district court (the parties then settled).

raging-bitch-label

The imagery clearly refers to a female dog.

The interesting part about this case is that Flying Dog owns an active federal trademark registration for the mark RAGING BITCH for beer (and incidentally, I’ve tried it and it’s quite a good beer).  For those unfamiliar with the nuances of brewery law, if a brewery wishes to sell their product in another state, they have to obtain a COLA (certificate of label approval) from the federal government’s TTB.  In addition, they often undergo specific licensing procedures within the relevant state, which is where the Michigan Liquor Control Commission balked at sales of the product due to the name.  Here, although they had an approved federal trademark registration which requires use in interstate commerce (and  a COLA license), they were impeded by the local authority in one state.

Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs or national symbols. TMEP 1203.03(c).  To be disparaging, it must be shown (1) that the communication reasonably would be understood as referring to the plaintiff; and (2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities. Id.

During some Wild-Blackhawks playoff intermissions, a question was posed to me:  why is Blackhawks OK but the Fighting Illini are not?  One refers to a revered leader of the Sauk and Fox Indians while the other to a made-up chief, Chief Illiniwek.  Seemingly, it’s a matter of connotation – a Redskin with a potato mascot may be acceptable under Section 2(a) if it is not understood to be referring to an Indian tribe plaintiff.

And in general, is society too offensive or too easily offended?  Or, even in such a politically correct society, are we not offended often enough?

Trademark a feeling.

Posted in Branding, Guest Bloggers, Mixed Bag of Nuts, Non-Traditional Trademarks, Sight, Smell, Sound, Taste, Touch, Trademarks

Aaron Keller, Managing Principal, Capsule

How fast are you getting at typing with your thumbs? My high school typing instructor would be so proud of my advancements. I’d say 60 words a minute if I am humming along with an idea of what to write. Not bad, proud to say I am writing this post on my Apple iPhone 6, and though my thumbs are manly, the letters are accommodating.

Now, what makes me curious is the rewarding outcome for all this work. The sound when I have finally completed my effort and this message is sent. I know the sound, it feels like a small jet taking off from my desk.

The sound brings a little rush and a mental reward for all my effort and tired thumbs. To me the sound has a feeling attached, the feeling of accomplishment.

So, in my searches for the entity owning this sound, I have explored the world of Apple intellectual property. I’ve found a registered trademark for the Mac startup chime and a trademark for the store design layout, both I have enjoyed and agree there should be some attribution and ownership.

But, nothing on the sound rapidly approaching as I finish this blog post. Perhaps it has been filed and just not obtained yet, or maybe this is a gap in the legal department at Apple (not likely).

I also have to admit to an anterior motive for finding the intellectual property behind this story. As an author of our next book on The Physics of Brand, we are seeking stories of brands protecting intellectual property surrounding the less considered sense (sound, taste and touch).

So, if you’re also getting excited about finishing this blog post and wondering, “what stories do I know about non-traditional trademarks,” leave a comment. Perhaps we will be able to share your name and story.

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

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

Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States.

As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution, success, jurisdiction) to consider, weigh and balance. Dabblers probably best step aside.

Now, thanks to the recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc., we must factor in the likelihood of preclusion too, throughout the trademark life cycle.

After noting that “the idea of issue of preclusion is straightforward,” but admitting it “is challenging to implement,” the Court broadly held that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.” (emphasis added)

This broad holding begs the question of what other types of issues decided by the TTAB — beyond the likelihood of confusion question before the Court — may result in the application of issue preclusion. Priority? Inherent Distinctiveness? Genericness? Functionality? Descriptiveness? Acquired Distinctiveness? Fame? Dilution? Intent to Deceive? Bona Fide Intent to Use? Fraud? Intent to Deceive the USPTO? Intent to Resume Use? Abandonment? Laches? Deceptiveness for False Advertising? False Suggestion of Connection for Right of Publicity Violations?

As to the likelihood of confusion question (which the Court found to be fundamentally the same for registration and infringement purposes), the Court unclearly directed: “So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.” (emphasis added) As is typical when the Supreme Court speaks, more questions are raised than answered.

Does the Court contemplate anything other than the potential for unregistered common law rights and restricted channels of trade when it refers to “usages adjudicated by the TTAB”? What about applications and registrations for typed drawing marks versus stylized marks? What about the presence of house marks and/or famous trade dress on packaging, but not included in the drawing of the applied-for mark? What about goods listings that are appropriate under USPTO rules (e.g., jewelry), but broader than what might be in actual use to support the registration or application (e.g., lapel pins)? Does a cautious following of B&B Hardware counsel in favor of seeking to register narrower trademark claims that include only the stylized version of a mark used with the sleekest description of goods possible?

Exactly what does the Court mean by materially the same usages? Does it contemplate partial preclusion scenarios? Does the materially the same reference invoke the material alteration standard? Does it invoke the “can’t materially differ” standard in trademark tacking cases? If so, under Hana Financial, doesn’t that question go to a jury? Yet, in B&B Hardware (argued to the Supreme Court on the very same day as Hana Financial), the Court wasn’t troubled by the absence of juries in TTAB decisions.

Perhaps most notably, the word “should” appeared twenty-six times in the majority opinion of the Supreme Court’s B&B Hardware decision, and the word “shall” only appeared five times (each of the five references related to specific statutory language), leaving me to ask, must a district court apply issue preclusion when the Supreme Court thinks it should, when the Court specifically avoided use of the words shall and must? In other words, is the decision of preclusion left to the sound discretion of the district court?

One of the other million dollar unanswered question remains: How does one predict the likelihood of preclusion?

For those looking for absolute certainty, don’t clear and adopt a mark for use you can’t federally register, don’t apply to register a mark likely to be opposed unless you can win and you’re prepared to see it though, don’t start defending an opposition if you aren’t prepared to see it through, but if you do and lose, by all means take a de novo appeal to federal district court if you’re a losing opposer who may want to force the use to stop, or if you’re a losing applicant who wants to keep using the applied-for mark.

For the rest of us who are comfortable living with some level of uncertainty, it’s time to read the tea leaves with a view to predicting not only likelihood of confusion, but the likelihood of preclusion too.

Is the Skype Falling?

Posted in International, Trademarks, TTAB, USPTO

skypelogo

 

An interesting battle ground may be brewing in light of the United States Supreme Court’s recent ruling in the B&B Hardware case which Duetsblog authors have previously commented on extensively.  Now that the Court has essentially expanded the scope of collateral estoppel applicable to trademark registration decisions made by the United States Patent and Trademark Office, a logical question is whether this expansion is going to apply to trademark registration decisions made in foreign jurisdictions.  There is legal support for the notion that judgments rendered in courts outside our fine nation can have collateral estoppel effect within the United States, but I am unaware of any authority applying collateral estoppel to trademark registration decisions made by foreign courts.

I expect this issue will come up sometime in the near future, and potentially in a case involving Skype and the European broadcasting company, Sky.  A European Court recently rejected Microsoft’s efforts to register the Skype mark  in Europe based on the conclusion that the mark was confusingly similar to Sky.  Microsoft has vowed to appeal the decision, but at least for now, there exists a judgment in a foreign court holding that there is confusing similarity between Skype and Sky.  Assuming this holding stands up, could Sky somehow attempt to transform this holding into an attack on Skype’s United States registration?

There are likely significant facts outside my knowledge that would affect the possibility of this happening.  Among other things, I don’t presently know the details of the European Court’s decision, I do not know what, if any, opposition was made by Sky to the U.S. registration of Skype, and I do not know the specific legal standard under which likelihood of confusion is judged in the European courts.  Nonetheless, the Supreme Court’s expansion of the collateral estoppel effect given to trademark registration decisions at least requires that this question be asked.

YourBrand.sucks — Unless You Act Now!

Posted in Advertising, Branding, Domain Names, Marketing, Squirrelly Thoughts, Trademarks

As the INTA Annual Meeting winds down, one memory for me that certainly stuck out was an on-site ad campaign revolving around the new “.sucks” top-level domain (“TLD”). Depending on whom you ask, it’s either ingenious or diabolical.

Just outside the San Diego Convention Center, the throngs of orange lanyard-wearing conference attendees were greeted by some rather cheery folks holding white signs with the “.sucks” TLD laid over some speech bubbles.

20150504_185413933_iOS

That nice lady who graciously agreed to pose for the picture is handing out — of all things — condoms (she’s holding one in its .sucks packaging in the photo). It goes without saying that INTA attendees receive a variety of knick-knacks, but generally not of this nature.

Also spotted in the wild was a truck carrying a bright blue advertisement with “INTA.sucks” which made frequent appearances puttering around the San Diego Convention Center (though, sadly, I never had my camera handy). They were even present in the exhibitor’s space.

20150504_213722429_iOS

It turns out that the company behind the whole campaign is Vox Populi Registry Ltd, which runs the www.nic.sucks website and refers visitors to various authorized .sucks domain name registrars. You can obtain your very own .sucks domain name for the low, low price of $2,500 (if, that is, your domain name isn’t among the “Premium” domain names that range upwards to an undisclosed amount). And with the general public window to purchase a .sucks domain name opening on June 1, time is running out for brand owners in the Trademark Clearinghouse to beat the traffic.

Much ink has been spilled about the .sucks TLD and its effects for brand owners. For its part, Vox Populi generally ignores the uproar surrounding the TLD’s very existence and instead adopts a marketing angle that is decidedly more altruistic. According to the nic.sucks site:

By building an easy-to-locate, “central town square” available 24 hours a day, 7 days a week, 365 days a year, dotSucks is designed to help consumers find their voices and allow companies to find the value in criticism. Each dotSucks domain has the potential to become an essential part of every organization’s customer relationship management program.

The nic.sucks website directs users to a video entitled “Our Vision for the Conversation,” featuring excerpted video footage of Martin Luther King and an appearance by consumer advocate Ralph Nader. “The word ‘sucks’ is now a protest word, and it’s up to people to give it more meaning,” Nader says in the video, as the words “Let Your Voice be Heard” appear on the screen.

So it appears that Vox Populi, the “voice of the people,” advertises the .sucks TLD as a means for John Q. Public to take action against corporate malfeasance. But that doesn’t explain their presence in San Diego at all. If .sucks is meant to spark a consumer-driven populist movement, then why in the world would Vox Populi seek the attention of a niche group of trademark practitioners and brand counsel? Wouldn’t they stand to benefit if brand owners miss the chance to scoop up and thereby “neutralize” the domain name? Shouldn’t the appropriately outraged customer have first dibs? Given the hefty price tag for a .sucks domain name, it’s hard to ignore the feeling of a shakedown going on.

Indeed, by appearing among us suits at INTA rather than to a general consumer base, Vox Populi sent a stark message to brand owners and their counsel: hurry up and register your .sucks domain name before an angry customer does. A “prophylactic” measure, if you will.

Google Wants to Buy Your Patent—To Keep it Away from a [Different] Patent Troll

Posted in Mixed Bag of Nuts, Patents, Technology, USPTO

 

 

googleLast week, Google announced its new “Patent Purchase Promotion.”  Under this program, for a two-week period, companies and individuals will have an opportunity to offer their patents to Google for purchase for a price determined by the patent owners themselves.  The program is set to run from May 8th through May 22nd of this year.  After the offer period ends, Google will review the offers and choose whether to accept any by June 26th.  Google promises that they will only accept or reject offers at the prices set by the patent owners.

Google is calling its new program an “experiment” and claims that its goal is to “remove friction from the patent marketplace.”  Allen Lo, Google’s deputy general counsel for patents said in the announcement on Google’s blog:

The usual patent marketplace can sometimes be challenging, especially for smaller participants who sometimes end up working with patent trolls. Then bad things happen, like lawsuits, lots of wasted effort, and generally bad karma. Rarely does this provide any meaningful benefit to the original patent owner. 

And so in an apparent effort to generate good karma, Google is purporting to buy patents in order to keep them out of the hands of patent trolls.  But what then does Google intend to do with all these newly acquired patents that it so gallantly saved from the trolls?

A patent troll, also known as a non-practicing entity, is typically defined as a company that collects patents and uses them to obtain licensing fees, while not actually practicing the invention itself.  In some cases, the licensing fees may be subject to unfair terms, and the troll may demand licensing fees from companies who only practice something tangentially related to the patent, hoping the companies will simply pay up to avoid litigation.

While Google holds itself out as strongly against the traditional patent system, it continues to amass an enormous patent portfolio for itself.  In 2014, Google earned the 8th-highest number of patents from the U.S. Patent and Trademark Office, for a total of 2,566 U.S. patents.  When Google purchased Motorola in 2011, discussions focused on the valuable patent portfolio Google obtained in the deal.  In recent years since the Patent and Trademark Office instituted a “fast track” program by which applicants can pay fees in order to have their patents cut in line and be examined more quickly, Google has utilized the program extensively in order to push its patents through the system.  In 2014 for example, Google obtained 875 patents through the fast track program.

Despite Google’s long history of lobbying for patent reform and even pledging many of its software patents as open-source, it has been accused of patent trolling in the past.  So is this new program just another way to obtain more intellectual property, disguised as good karma and a contribution to patent reform?  Google has not placed any restrictions on the types of patents that may be submitted for consideration, and the patent mogul expressly states that it will retain the right to license out the patents it purchases through the program.  Perhaps Google really is just trying to clear the way for patent reform.  In any event, it will be interesting to see where Google’s “experiment” leads.

The Bridge to INTA (or the UNTA)

Posted in Mixed Bag of Nuts

BridegtoUntaThis spot isn’t too shabby to make trips back and forth across the Coronado bridge to the annual meeting of INTA in San Diego, where ten thousand trademark attorneys from around the world descend for a week and congregate.

Any word on how many are here, but off the grid, attending the UNTA, so to speak?

This might be one topic of discussion this evening at the Meet the Bloggers event, see you there soon! Another might be Ron Coleman’s upcoming in banc oral argument at the Federal Circuit in The Slants case, to address the court’s sua sponte questions about whether the disparagement prong of Section 2(a) of the Lanham Act violates Free Speech. No comment, for now.

Remember the Alamo® but Don’t Forget the License.

Posted in Articles, Branding, Fair Use, Famous Marks, Infringement, Law Suits, Trademarks

With hard pressed economic times, state and local governments have turned to new sources of revenue: intellectual property licensing. The City of New York has been in the game for decades, licensing use of its the I ♥ NY symbol. San Francisco enforces its rights in the image of its BART transit pass. And Portland is the proud owner of an old sign with a reindeer.

Nobody likes being left out, especially Texas. So it shouldn’t have surprised anyone when the Texas General Land Office (“GLO”) asserted a claim of trademark infringement against the Alamo Brewing Brewing Co. and the Texian Brewing Co. (logos shown below).

Alamo Beer Co Logo

Texian Brewing Logo

The GLO claims that the the outline of the facade of the building is a “treasured symbol of Texas liberty” and its use, along with the word ALAMO, suggests an affiliation with the State and the historic Alamo location. In filings with the court, the GLO claims that the roof outline is famous and that “consumers anticipate that products bearing [these marks] are used by or with permission of the state.”

The GLO also owns a number of U.S. registrations for the marks THE ALAMO and THE ALAMO and Design, shown below:

Alamo Design mark

What do you think? Famous? Distinctive? Or common Spanish colonial roof that reminds you more of Taco Bell than the State of Texas?

On a brief review, it is difficult for me to find the fame of the Alamo roofline mark. Maybe it is in the basement.

The GLO and the brewery reached a settlement recently, in which the parties agreed to  a Consent Order and Final Judgment for the legal proceeding. This judgment and order issued yesterday, but the actual terms of the Settlement Agreement are confidential.

The GLO’s Commissioner has reportedly stated that companies are free to use the wording ALAMO, but cannot use the images or insignia of the Alamo, such as the roofline (good news for Alamo Rent a Car). In respect of the confidentiality terms, the Alamo Beer Company’s CEO Eugine Simor was quoted as stating that the “Alamo Beer Company is allowed to use the shape of The Alamo. I really can not say much more.”

In an apparent effort to convince other business to remove lines which look like roofs from their logos, the Press Secretary for the GLO released the following statement:

Alamo Brewing Company is the first commercial recipient of an official license to use the Alamo mark, for which they paid a substantial licensing fee. Any and all fees collected for use of the mark will be put in a dedicated fund for the Alamo. This matter was resolved amicably and the GLO is pleased to have come to mutually acceptable terms of agreement in this matter. (emphasis added)

It is interesting that after so many years, Alamo Brewing is the first commercial recipient of a license. While they may be the first to receive a license, it seems unlikely they were the only party to use the ALAMO mark or an image of the roofline. It’s possible that there may be enough third-party uses to show that the GLO’s marks are weak or entitled to narrow protection. But, then again, I have always heard that everything is bigger in Texas. Apparently that applies to the scope of protection for trademark rights, too.

 

Imported from “Dertroit”

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Fashion, Infringement, Marketing, Social Media, Social Networking

Readers of the blog know the dangers of selling unlicensed apparel and the oft-litigious stance of Major League Baseball when it comes to defending its marks.  But a recent viral t-shirt phenomenon may just be one time the MLB should call off the dogs — or the “BEISBOLCATS,” as it were.

The story begins with Dee’s Barber Shop, a Detroit business advertising a ticket giveaway to Tigers baseball games.  In the spirit of encouraging support for the local team, the owners painted a rather interesting take on the Detroit Tiger logo onto its shop window:

Screen Shot 2015-04-30 at 6.27.48 AM

Once the image had made its way around the internet circles, the progression seemed almost inevitable.  A graphic designer named Jeff Arcel saw the image and decided to create and sell a limited run of baseball t-shirts featuring the logo online.

Screen Shot 2015-04-30 at 6.37.35 AMTiger-old-logo

 

 

 

 

 

 

 

 

 

 

 

The shirt borrows both from the Dee’s Barber Shop mural and is a nod to the now-retired “circle logo” of the actual Detroit Tigers (which is a registered mark and notably employs a famously bewildered-looking tiger).

A common misconception is that a few stray misspellings or differentiating elements is enough to preclude a trademark complaint — unfortunately, employing “DERTROIT” and the quasi-Spanglish “BEISBOLCATS” doesn’t immunize Arcel from liability.  And while trademark law does provide a defense to infringement for “parody,” that generally applies only to noncommercial use.  Since these are being sold online, there’s likely no credible parody or fair use defense.

To his credit, Arcel seems to be well aware of the trademark issues surrounding his design, and he advertises the shirts as “DEFINITELY NOT AUTHENTIC.”  He also went so far as to incorporate the anticipated lawsuit from the Tigers into his tongue-in-cheek sales pitch (emphasis added):

Another joke gone too far, much like my life. Buy it before I get the pants sued off me. Printed on a White/Navy American Apparel baseball raglan. Soft and lightweight, unisex. It will probably look good on that weird body of yours.

It will probably look good on that weird body of yours is probably one of the most effective sales pitches I’ve yet come across in my 27 years on this earth.

Please allow about 2 weeks for shipping.

Any concern about trademark infringement certainly hasn’t affected sales — the shirts sold out almost immediately.  But Arcel does allude to a “repress soon,” ostensibly as long as the MLB doesn’t make its feelings known beforehand.