Collaborations in Creativity & the Law

Detroit Lions Trademark “Defend the Den”

Posted in Branding, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

The Detroit Lions have registered the phrase Defend the Den. This is part of what appears to be a growing movement in college and professional sports to trademark common or more particular phrases used at their sporting events.


The Seahawks have been registering just about everything it can that deals with the number 12 – The 12s, We Are 12, Spirit of 12, and 12 itself. 12 or the 12th man is a common reference to the influence of the fans on a football game. Unfortunately for the Seahawks, Texas A&M beat them to the punch and registered the 12th Man in 2007. Seattle now uses the phrase under license.

Perhaps this is what is driving the push to register such phrases. Teams are worried that someone else will sneak in and attempt to prevent them from using a term at their games. To avoid this, they are racing to trademark terms first. The Seahawks, for their part, appear concerned about being able to use “Boom” and “Legion of Boom” as well.

It seems that policing some of these marks would be rather difficult. Defend the Den, for example, is used by a number of schools and teams with lions, bears, or other similar den dwelling animals as mascots. The Billings Wolves, Montana State University Bobcats, Hershey Bears, and Blake School in Minnesota, among others, all make use of the phrase “Defend the Den” based on a quick Google search. While trying to enforce rights against a minor league hockey team in Pennsylvania may not create much of a public image problem for the Detroit Lions, enforcing them against a school in Minnesota may leave a bad taste in people’s mouths.

Fear and Loathing on the Creative Trail

Posted in Branding, Copyrights, Infringement, Marketing, Mixed Bag of Nuts, Trademarks

James Mahoney, Razor’s Edge Communications

Somebody might steal my ideas.

I’ve heard this consistently over the years, including in a few conversations this past month.

One was with a woman who wants to market her art as greeting cards, but is certain that the “big” card companies would copy her ideas and elbow her out.

The other was with a carpenter who’s afraid somebody will copy his unique designs and import cheap, mass-produced knock-offs from China.

So neither is doing anything to establish a market for their work.

Their fear and loathing aren’t entirely unfounded. To wit:

Not long ago, I received an emailed school photo with a cheery “Just passing along [child’s] handsome school photo. Feel free to print!”

And when a columnist for The Wall Street Journal asked business leaders about their favorite apps, one answered, “Pinterest. I’m a visual person and … We just bought a ski house in Utah that needed bunk beds. I found 185 different bunk bed photos, emailed my favorite to the contractor, and he’s building a knock-off.”

Now individually neither of these is going to break the bank for the school photographer or the creator of the original bunk bed (though in the photographer’s case, at least, the loss of income is real and could be fatal if enough people violate the copyright). But both are prime examples of the blithe indifference most people have to the copyrights and other protections of artists and artisans.

Yet is that really enough reason to never do anything with one’s creations? Does it really make sense to settle for zero market because of vague fears that someone somewhere might do you wrong?

I don’t think so.

The better course is to get educated on how to protect your work through copyright registration, trademark, etc. Then lawyer-up to take action if and when you need to, and let those puppies out of the box.

And yes, I stole the idea for the title of this DuetsBlog from Hunter S. Thompson. The irony is not lost on me.


How Many Ways Can a Trademark Be, Cool?

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

To the extent you’re also all about brands and trademarks, and you imagine a trademark story with each brand you might encounter, I suppose there are an infinite number of ways, right?

One of the Peace Coffee shops in our office building offers K’UL chocolate, and the point of sale display caught my eye, so I snapped this cool pic, to engage in a little trademark storytelling:



K’UL Chocolate appears to be a new brand, founded in Minneapolis, so that’s also pretty cool. Actually, even more than cool today, since it’s been downright frigid here the last few days!

So, as I suspected, the brand name is intended to be pronounced the same as “cool” — and it has an interesting and creative origin, according to the company’s website:

“We create great tasting, good for you, functional chocolate and energy bars with the finest all natural ingredients. The name, K’ul (pronounced cool), comes from the Mayan word for energy, which is what our bars provide you with – the ability to do more and do it better.”

A review of the USPTO’s file history for the K’UL trademark application for nutritional supplement energy bars and cocoa based energy bars is as surprisingly simple as the product’s ingredient listings. The only issue that the USPTO flagged related to the description of goods; no mere descriptiveness refusal based on foreign equivalency (Mayan languages apparently aren’t dead); and no likelihood of confusion refusals, despite these other phonetically similar federally-registered marks for similar goods (so, perhaps a crowded field with narrow individual rights):

  1. KÜL FUEL for sports drinks;
  2. COOL MINT CHOCOLATE for grain-based ready to eat energy bars (MINT CHOCOLATE disclaimed);
  3. COOL ENERGY for nutritional supplements for boosting energy;
  4. COOL RUNNINGS for energy drinks;
  5. COOL CONFIDENCE for energy mints; and
  6. ICE COOL for energy drinks.

I’m thinking K’ul Chocolate probably thought it was pretty cool the USPTO’s assigned examining attorney didn’t gum up the chocolate with arguments like these that prevented registration (just last year) of KÜL HANDBAGS for fashion handbags, based on the prior registered mark for COOL HANDBAGS (stylized) in connection with backpacks, beach bags; book bags; and gym bags:

“Applicant’s mark and the registered mark are similar in sound, appearance, and commercial impression. In this case, the marks contain terms that look and sound similar. KÜL and COOL look similar because the terms seem to suggest the same word – “cool”. The marks also sound the same, as the KÜL is pronounced the same as “cool”. Thus this term and COOL paired with the term “Handbags” as the main components of the marks. The commercial impression created by the marks is also similar in that the combination of terms immediately names the type of goods identified, as well as suggesting a quality of the goods. Consumers would experience confusion when speaking about or observing the marks based upon the similarities detailed above.”

KULHandbagLet’s just say, it would be even cooler for K’ul Chocolate, if the other COOL energy food and beverage brands were to view their rights narrowly, and chill on raising any objections as well.

Perhaps there’s an added intentional and subliminal benefit of K’ul Chocolate being for sale in the ever-so-tranquil Peace Coffee shops?

Suppose you’re a brand manager or trademark counsel for one of the previous COOL brands, would you chill or start to melt down, and why?

Star Wars: The Missing Fanfare

Posted in Advertising, Audio, Branding, Famous Marks, Marketing, Sound, Trademarks

A bit belated, but I finally caught a screening of Star Wars: The Force Awakens. Unbeknownst to me, the film was missing a part of the Star Wars experience many fans hold dear. And it’s all about branding.

Note: No spoilers of the film itself follow here, unless you consider a discussion of the pre-opening titles a “spoiler” unto itself. A further note: I do not hold myself in any way to be a competent Star Wars nerd, so please excuse any missteps or general unfamiliarity with the lore surrounding the films.

When most people think of the Star Wars opening titles, they probably think of the John Williams score’s opening flourish and a giant yellow STAR WARS outlining flashing on the screen before zooming into space to make way for the iconic scrolling text to introduce the film’s story. But many fans also immediately think of what precedes all of that – the 20th Century Fox “spotlights” logo and its associated fanfare.



It turns out that prior to the release of the first Star Wars film in 1977, 20th Century Fox had abandoned the logo and fanfare in the opening titles for films it distributed. But George Lucas loved it so much he insisted that it precede the Star Wars opening titles. It’s said that John Williams went so far as to record the soundtrack’s opening titles in the same key as the Fox fanfare, so as to truly integrate 20th Century Fox’s branding into the fabric of Star Wars. The Fox fanfare was reborn.

This all changed in 2013, after Disney purchased Lucasfilm and the rights to the Star Wars franchise. When releasing the library of Star Wars films in digital download format, Disney removed the 20th Century Fox fanfare from the opening titles. A logical move, it would seem, but it irked many Star Wars fans who considered it an indispensable part of the films. Many worried that Disney’s first new Star Wars film, “The Force Awakens,” would feature an amalgam of Disney / J.J. Abrams branding that would clash with history, as conceptualized in this YouTube video.

Screen Shot 2016-01-15 at 6.57.37 AM

Some even wondered if it would be possible for Disney to license the 20th Century Fox fanfare. While all things are possible in trademark licensing, this would likely be a step too far for 20th Century Fox, which now uses the fanfare and spotlights logo for all of its films.

Fortunately, these Disney-fication fears did not come to fruition – The Force Awakens begins silently, displaying only the Lucasfilm logo, before the iconic text “A long time ago in a galaxy far, far away…” appears on screen, and the John Williams score takes over. The Disney logo never appears (at least I didn’t notice it, unless it snuck into the film’s closing credits). And yet, despite its visual absence, I was acutely aware that this movie had Disney’s fingerprints all over it.

In making branding decisions, sometimes less can be much, much more.

Get The Target Right

Posted in Advertising, Branding, Fashion, Guest Bloggers, Squirrelly Thoughts

– Mark Prus, Principal, NameFlash

When a prospective client tells me that his/her product is “meant for everyone” I have to bite my tongue. You cannot target everyone. But that does not stop clients from trying to do so!

The main reason clients want to target everyone is because they do not want to eliminate any customers from consideration. Let’s be clear – picking a target market is not about refusing to sell to anyone. Rather, it is all about deciding how to position your business and making sure that the right messages are delivered to the right consumers at the right time.

The other end of the targeting spectrum is “me,” as in clients who say that their product is for “people like me.” There is only one person like “me” and a target market of one person won’t generate a lot of business.

So how do you find your ideal target market somewhere between “me” and “everyone?”

The rule of thumb is to identify the smallest possible group of people who are united by some commonalities that will cause them to be motivated by your messaging. If you have a concise, well-defined target market you will be able to consistently delight your customers by providing them with meaningful value that meets their specific needs.

I’m an advocate of consumer research to gain an understanding of your target market. By asking the right questions, you can gain an in-depth understanding of the customers who are most likely to be attracted to your product. You need to gather customer demographics (e.g., gender, age, income, geographic location, etc.), beliefs (e.g., attitudes and behaviors), and a basic understanding of their “story” (motivations and concerns). Done correctly, research can provide a very specific understanding of your target market’s goals and challenges, and an understanding of how your product or service can help them, which will be an invaluable resource when developing your messaging.

Failing to identify the proper target market can be a multi-billion dollar mistake. Here is an example where better targeting could have resulted in billions of dollars:

Roy Raymond had an embarrassing experience trying to buy lingerie for his wife in 1977, so he decided to launch a lingerie shop geared toward men to make them more comfortable in buying lingerie. While his Victoria’s Secret store led to a multi-million dollar business, he missed the multi-billion dollar opportunity in lingerie. Despite his successful launch of a lucrative retail concept and expansion to a mail-order catalog business, he was selling to the wrong target audience for the wrong reasons. Women buy way more lingerie than men do, and the primary reason lingerie is purchased is not to make men happy, but rather because it makes women feel more confident. When Victoria’s Secret fell on hard times, Leslie Wexner (CEO of The Limited) bought the business and totally repositioned the company and its products to women. Today Victoria’s Secret is a multi-billion dollar megabrand.

I strongly encourage clients to thoroughly understand their target market before spending significant efforts in marketing.

Louis Vuitton’s Other Lawsuit Was a Winner, but Loses to a Parody Defense – Again.

Posted in Dilution, Fair Use, Famous Marks, First Amendment, Infringement

Louis Vuitton is no stranger to trademark disputes. As a a manufacturer of handbags, wallets, and other luxury goods, the company has its hands full just addressing counterfeit products. However, like any other company, there is concern not just with “fakes,” but other products and services that may otherwise infringe or dilute Louis Vuitton’s trademark rights (anyone hungry for luxury waffles?). The company takes an admittedly “aggressive” approach to enforcement, sometimes resulting in criticism. For example, Louis Vuitton created controversy in the legal world with a cease and desist letter to a law school over a fashion law symposium flyer that riffed off of the LV handbag motif. While Louis Vuitton has won many legal battles, it has also lost  a few, too. Last week, the Southern District of New York added another tally to the loss column, granting summary judgment to the defendant, My Other Bag, Inc. (“MOB”) (decision available here).

Louis Vuitton sued MOB in 2014. MOB created a line of canvas tote bags that sell in the range of $30 – $55. The founder of the company provides an origin story for the brand on its website:

One fine day in sunny Los Angeles, California a designer handbag junkie found herself walking out of a grocery store with an arm full of perishables and a burning question: “if I don’t want to stuff my produce in my Prada, where can I find a stylish, Eco-conscious reusable bag?” Underwhelmed with her options, she took it upon herself to create My Other Bag: a line of Eco-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life.

On one side of the canvas tote bag appears the phrase “My other bag…” and on the other side appears a cartoon of a luxury handbag (with some changes to the shapes, and replacement of the LV with MOB). The bag that formed the basis for this suit is shown below (and is still up for sale on MOB’s website):

MOB Image

Louis Vuitton sued MOB, alleging trademark infringement, trademark dilution, false designation of origin, and copyright infringement. MOB moved for summary judgment on all counts, claiming that MOB’s use of an image that invoked the Louis Vuitton design was a parody and therefore a fair use.

A claim of “parody” is not a defense in and of itself, but generally qualifies as a type of fair use for copyright infringement and for claims of dilution. Section 43(c)(3) of the Lanham Act also specifically identifies “fair use” to include uses that are “parodying, criticizing, or commenting upon [a] famous mark.” With regard to trademark infringement, while there isn’t a strict “parody as fair use” defense, courts generally rely on the “defense” as a means of concluding that consumers are not likely to be confused. Defendants and applicants frequently claim that their reference to a famous mark qualifies as a fair use, with mixed results (for example, here, here, and here).

One decision frequently cited by courts to evaluate a parody defense involves a familiar name , Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In Haute Diggity Dog, the Fourth Circuit affirmed a finding that a pet toy manufacturer’s use of CHEWY VUITTON in connection pet chew toys constituted a parody that did not infringe Luis Vuitton’s trademark rights. That decision, and the court here, identified a parody as a work that (1) references the original/famous brand, (2) but makes clear that the work is not the original/famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement.

Here, the court had no trouble concluding that MOB’s bags constituted a parody. The tote clearly referenced the Louis Vuitton product through the similar design. However, MOB’s bag made clear that the bag was not a Louis Vuitton bag. As the judge noted, “the whole point is to play on the well-known “my other car . . .” joke by playfully suggesting that the carriers’ “other bag” – that is, not the bag that he or she is carrying – is a Louis Vuitton bag.”

Louis Vuitton argued that MOB’s bags  do not criticize or disparage the Louis Vuitton brand and therefore cannot be a parody. Louis Vuitton relied upon an unpublished decision in which Louis Vuitton successfully defeated a parody claim asserted by Hyundai Motor for its use of a similar design motif on a basketball in a car commercial. In that case, Louis Vuitton elicited testimony from Hyundai Motor in which it admitted that Hyundai did not intend to criticize or make fun of Louis Vuitton. The court distinguished that case (and noted that it would have declined to follow the decision any way), concluding that even vague critiques or general commentary can be sufficient to establish a parody.

In the end, the court granted summary judgment to MOB on all of its claims. The successful parody defense defeated Louis Vuitton’s claims of copyright infringement and dilution. With regard to trademark infringement, the court concluded that the parties’ products targeted different customers, were not competitive, that the purchasers of Louis Vuitton bags were sophisticated, the channels of trade distinct, and that there was a lack of any actual confusion. In summarizing the factors, the court reasoned that the “purchasing public must be credited with at least a modicum of intelligence” and concluded that the joke was so “obvious” that there could be no mistake as to source or affiliation.

This decision demonstrates the subjective nature of evaluating parody and fair use defenses. Two courts in the same district with very similar facts reached completely opposite conclusions. At first glance, I would have expected a two second clip of a basketball with a similar design in a car commercial to have a stronger argument for a parody defense than a canvas tote bag displaying a similar design (that is actually being sold). Stay tuned for coverage of any appeal, but for now, it looks like the score is Louis Vuitton 1 : Parody 2.

Snoop Dogg’s Branded Cannabis Among the First, But the Stakes Will Get Higher

Posted in Advertising, Branding, Famous Marks, Guest Bloggers, Marketing, Mixed Bag of Nuts, Trademarks, USPTO

–Jason Voiovich, Chief Customer Officer, Logic PD

Who among you is surprised that Snoop Dogg was among the first to create his own marijuana brand? Or that the distinguished list of early entrants includes Willie Nelson and Melissa Etheridge? Like me, you are probably not shocked. Recreational marijuana is “legal” in four states. Medicinal use is permitted in over 30. And the change is happening fast.

For us advertising hacks, we’re nothing if not opportunists.

I’m not going to wade into the “should pot be legal” debate. But should pot be branded? Trademarked? Addressed by the FTC? Now that’s something I can put in my pipe and smoke!

Now, before you think you’ve stumbled across a munchie-fueled million dollar idea, there’s already a marketing agency launched to specialize in marijuana marketing programs. (And yes, I checked. And yes, Cannabrand is based in Denver. And no, I’m not shocked.) As tempted as I might be to make a joke about a group of stoners in the ad business (and wonder aloud if that’s any different than any other agency), this ad team seems quite sharp.

I wish Cannabrand the best of luck.

Branding marijuana faces a number of significant challenges. It’s got all the issues of the modern pharmaceutical industry, combined with the stigma of the “War on Drugs”, limited access to capital, and a nearly nonexistent corporate infrastructure. (I’d argue UAV/drone manufacturers face different issues, but the same underlying problem, but that’s a different story).

How challenging is it? Oh, my stoner friends, let me count the ways!

Let’s tackle the trademark issue first.

Marijuana remains a federally controlled substance. The US Patent and Trademark office isn’t going to play ball here and grant his Dogg-ness a trademark on his brand of buds. Might there be an angle for “smoking” paraphernalia? Perhaps, but it’s severely limiting. From what I understand (and legal guys, sound off below to correct me if I’m wrong), Mr. Dogg would have little recourse in federal court if another party used his name or likeness to market their brand. There’s a state agency angle to play here, but then there’s that whole “interstate commerce” issue. Like I said, complicated.

What about the Federal Trade Commission?

Most people forget that advertising speech is held to a higher standard than regular speech. Advertising speech must be true. That doesn’t mean it can’t show its subject in the most favorable light, but advertisers cannot make demonstrably false claims. As my friends in the pharma industry know, there’s a special circle in hell dedicated to complying with FTC guidelines on legal drug marketing. Many other industries have their own special hoops to jump through. Again, because marijuana is a controlled substance, there are no specific guidelines on truth in advertising. Suffice to say, once that day comes the industry will likely be subjected to the worst version of pharma’s rules, combined with alcohol’s rules, combined with tobacco’s rules, with a side of “don’t market this to kids” for good measure. I’ll reiterate: Complicated.

Complicated yes, but to me it is not all that interesting.

The real story is the challenge behind the cannabis branding strategy. Because of the tawdry image of marijuana, it hasn’t received rigorous mindshare from brand strategists. That is about to change. We’re not going to figure it all out here, but we can begin to apply some semblance of methodology that can help us understand the issues.

If we apply a basic segmentation analysis, three markets immediately emerge: Counterculture, Medicinal, and Transformational.

Cannabis Market #1: Counterculture

The Counterculture market is exactly what you think it is. It’s what you call a “made” market, meaning that the market already exists, is now opened to commerce, and brands are rushing to fill the void. This is the appeal of the Snoop Dogg, Willie Nelson and Melissa Etheridge celebrity endorsements. Recreational users will instantly recognize these brands as “credible” – it will take other non-celebrity brands time and money to catch up. The objective here is to grab market share quickly.

Cannabis Market #2: Medicinal

The Medicinal market also is pretty straightforward. Again, it is a “made” market, legal (at least to some degree) in a majority of the country. Brands competing here need to duke it out in the existing herbal supplement market with all of its challenges.

Cannabis Market #3: Transformational

If that’s where marijuana marketing and branding stops, it will be incredibly disappointing. The true opportunity is creating a transformational branding strategy. This is nothing less than rehabbing the image of marijuana after nearly a century of being labeled as a pariah. This is a “make” market, meaning there is tremendous risk (and corresponding reward) for whatever brand can convince the average person they should roll a joint with dinner. That the NCAA should allow a “Marijuana Bowl”. That you should be able to buy buds at Target.

sweetspotI think the trick there will be to dial back the “naughty factor” just enough. Not quite Snoop Dogg, but not Budweiser either. Noted psychologist Wilhelm Maximilian Wundt and his “Wundt Curve” model can help us here. If you look at it, it makes sense. Any target audience craves novelty, newness, and naughtiness – but not too much of any of those things. Too little and the brand is boring. Too much and it’s repellant. I’ve always thought of the Wundt Curve as the “Goldilocks Curve”. Cannabis needs to be just naughty enough!

Will it happen? Who knows. Until then, what can you do besides sit back, grab a bag of Doritos, and watch.

Watch the Informational Refusals, Please!

Posted in Advertising, Articles, Audio, Branding, Look-For Ads, Marketing, Non-Traditional Trademarks, Sound, Trademarks, USPTO

Let’s suppose you conduct sightseeing tours using a tram car, maybe on the boardwalk in New Jersey. Maybe even a famous tram car service you’ve operated since 1949?

Let’s further suppose your passengers may get on or off anywhere along the route, as it travels along Wildwoods Boardwalk.

Would you think you could own a sound trademark, if your tram played, since 1971, a sound recording saying these cautionary words over and over again: Watch the tram car, please!“?

Back in June, during the heat of the season, it appears the operator of the tram car service believed it did, filing a federal service mark application for a sensory mark described this way: “The mark is a sound. The mark consists of the spoken phrase, ‘Watch the tram car, please’.”

I’m guessing the operator is having second thoughts now, given the USPTO’s registration refusal issued just last week, sounding the death knell to this baseless trademark claim:

“Registration is refused because the applied-for mark merely conveys an informational warning/cautionary message; it does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others.”

“Because consumers would regard the phrase as indicating an important command to give attention to the tram car so that nothing bad or unwanted happens, they would regard the phrase as informational rather than as a source indicator. This notion is reinforced by applicant’s specimen, which shows that the mark is presented to consumers as the tram car approaches, in the fashion of a warning. The specimen does not show the mark being presented to consumers at other non-warning times, such as when purchasing tickets or visiting a website. Instead, the sound is played when the consumers are in need of a safety warning that a heavy vehicle is moving toward the vicinity.”

Honestly, I’m mystified by this trademark claim. Really, putting aside the merits, what’s the point? What’s the purpose, the ultimate goal? Prevent others from issuing similar cautionary messages on competing transportation methods?

I suppose if there was some distinctive music in the background to carry the merely informational words, there might be some possibility of disclaiming the words and still having something left to own as a mark, but the spoken words alone, I’m not seeing it.

Perhaps the applicant confused “look for advertising” with their cautionary and merely informational “watch the tram” message?

I’m thinking there is no amount of evidence that can turn the Watch the tram car, please! phrase into a mark for tram car services, do you agree?

Is this a good reminder to watch the informational refusals, please, at least when making silly, overreaching non-traditional trademark claims?

Trademark Bully or Not?

Posted in Infringement, Law Suits, Mixed Bag of Nuts, Trademark Bullying, Trademarks

Chrysler and Moab Industries LLC (“Moab”) have been battling over the Moab mark for years. Moab holds the federally registered trademark Moab Industries®. Its business involves customization or uplifting vehicles—primarily JEEP® Wrangler® vehicles manufactured by Chrysler.

In 2012, Chrysler sought to register a “Moab” trademark, but the application was denied based on a likelihood of confusion with Moab’s mark and another mark. On December 12, 2012, Moab filed a suit asserting claims for unfair competition and trademark infringement related to the Moab Industries® mark. This case is scheduled for trial in April of this year.

In another suit filed last month, Moab sued FCA US LLC (this is the name Chrysler changed to in 2014) alleging that Chrysler had tortiously interfered with its business expectancy and defamed it. In the Complaint, Moab alleges that Chrysler sought to punish Moab for not being able to register, or at least, to concurrently use the Moab mark. Specifically, Moab alleges that Chrysler asked Moab’s main supplier Chapman Automotive Group of Scottsdale, Arizona (“Chapman”) to quit selling vehicles to Moab. In making this request, Chrysler allegedly accused Moab of flipping vehicles, which had an adverse effect on Chrysler’s fair allocation of vehicles to its dealers. Further, Moab claims that Chrysler sent a “blacklist” of companies and individuals that were purportedly exporting vehicles to its dealerships. The dealerships were told not to sell Chrysler vehicles to those on the list. If they did so, there would be a chargeback for each vehicle sold, or worse consequences. Moab contends this was done to coerce Moab to drop its pending trademark infringement suit against Chrysler, or to put Moab out of business so that it can appropriate the Moab trademark. Chrysler has not yet answered, so we do not know its side of the story yet.

Some have characterized the lawsuit as an attempt to address Chrysler’s “trademark bullying” activities. The purported actions by Chrysler are a bit different than the allegations of overreaching by a trademark owner that are usually at issue when “trademark bullying” is discussed.

bullseye“Trademark bullying” has been a hot topic in recent years and has been discussed in many DuetsBlog posts. You may recall my colleague Steve Baird wrote about this topic and explained the importance of trademark owners taking action to maintain the scope of their initial rights to protect their valuable intellectual property. Steve used a great analogy to a bullseye to explain these rights.

Specifically, Steve explained that “if the original scope of the rights associated with a particular non-famous mark is represented by the black-colored concentric circles on the target, and the bullet holes represent third party unauthorized uses of confusingly similar marks, and if the trademark owner takes no action against them, then over time, the trademark owner’s scope of rights easily can shrink down to center of the bullseye, where the trademark owner is only able to control identical marks in connection with directly competing goods.” This is obviously not a good result for the trademark owner. Accordingly, actions that some may term as “bullying” are sometimes merely actions to protect a trademark owner’s valuable rights.

In the recently filed case by Moab, there is a bit of a twist in that Moab is claiming that Chrysler is using “bullying” tactics to drive it out of business to obtain its valuable trademark rights. It will be interesting to read Chrysler’s side of the story and see whether a judge or jury finds that this is a case of “bullying” or not. The outcome of the trial in April related to Moab’s claims of trademark infringement and unfair competition will likely impact the recently filed case too.

Star Power Arrives in Marijuana Branding

Posted in Branding, Dilution, Mixed Bag of Nuts, Trademarks

Willie Nelson has “Willie’s Reserve“. Snoop Dogg has “Leafs By Snoop“. And rumor has it that Bob Marley’s heir’s will have their own brand out soon. As more states legalize medical and even recreational marijuana, brands and trademarks are starting to make their way into the industry (of course, in the pure sense of a trademark, they have been in the industry for a long time). The discord between state and federal laws is making things difficult, however. Even though these businesses are legal at the state level, they are illegal at the federal level. Marijuana is still a class I controlled substance according to the federal government. That means that, in addition to other problems like no access to banks, marijuana businesses don’t have access to federal trademark registration and protection. Companies with established brands have not been shy about using those federal rights against marijuana businesses, however.

Willie's Reserve

(Looks like a high end meat rub)

Federal trademark rights are based on use of the trademark in interstate commerce. It’s quite difficult to claim legitimate use in interstate commerce and the accompanying trademark rights when your product is illegal under federal law. The unlawful use doctrine is normally a difficult affirmative defense for trademark infringement as it is narrowly applied. However, selling marijuana in contravention of federal law is a pretty clear example and the unlawful use defense would seem to be a slam dunk should any marijuana business attempt to stop other entities from using its trademarks.

That got me wondering how these businesses and star-sponsored lines will protect their brands. Without federal registration available, they will have a tougher time. However, one clear option is registering at the state level. Most, if not all, states have state level trademark registration. For a nominal fee you can register your trademark with the state and enjoy some protections through state courts. The fees and paperwork burden obviously increase with the number of states involved, so this option is not as attractive as federal registration, but it is a viable alternative for those without federal registration as an option.

I was curious to see if anyone was attempting to reserve rights at the federal level in obvious and common marijuana related names. The answer: of course they are. The tide seems to be moving towards nationwide acceptance at a pretty rapid pace so people have obviously tried to get ahead of the game. Many are in the application stage but there are a number that have been registered. There’s Pineapple Express for cigars (undoubtedly influenced by the movie of the same name), Purple Haze for, among other things, electronic cigarettes and tobacco products, and White Rhino for tobacco. And then there’s this for clothing. While I am sure all of these are doing legitimate business, I can’t help but think that some out there may also be hoping that, if and when it is legalized at the federal level, marijuana will be seen as a similar good to tobacco products. If so, a good number of companies will have a powerful card to play to force licensing if anyone wants to use these terms as part of their brand.

It will be interesting to see how Willie’s Reserve’s common law rights will be interpreted if someone else holds the registration for Willie’s Reserve for tobacco products.