DuetsBlog

Collaborations in Creativity & the Law

An OXI Surprise

Posted in Trademarks, Truncation, USPTO

One of the blessings of homeownership is the surprise that accompanies a major appliance breakdown.  I had the pleasure of experiencing one of these events over Labor Day weekend when my dryer decided it was done working.  Labor Day is one of the weekends you want to have it happen because there are plenty of sales.  I went to one of the local box stores to figure out which dryer worked best for me, and also look at some washers (mine currently is predisposed to ripping holes into fabrics).  As I perused my options (the most critical of which was whether, at my short stature, I could reach anything within the washer or dryer), I came across this Maytag washer:

FullSizeRender(4)

Three trays, one for “softener”, one for “detergent”, and one on the right for…”oxi.”  Oxi?  I immediately thought “oh that must be for Oxi Clean” and no, not some white powdery drug.   In either event, how can you not think of this guy (and one of the greatest South Park episodes)?

 

goon meet

But…maybe it’s not for Oxi Clean.  There are a number of trademark registrations involving laundry detergent that include “OXI,” none of which disclaim OXI as being descriptive.   For example:

Even the product labels seem to encourage consumers to assume that the products are infused with Oxi Clean.

cholrox2oximax  wiskoxi oxiclean-large sun-plus-oxi-detergent-is-my-choice-for-low-cost-laundry-soap-21668894

The stylization of the lettering on each looks very similar, lending credence to the concept that there is some infusion with the Oxi Clean product or its formatives.  But compare these with Arm & Hammer:

armandhammeroxy

If the dispenser on the Maytag washer is intended for Oxi Clean detergent and was a permitted, licensed use, it would be highly desirable for the dispenser to show the OXI CLEAN mark in full.  But is it for that, or is it not?  The “detergent” portion of the dispenser says “liquid only”, so can you put Oxi Clean powder in the “oxi” dispenser?  That seems unclear.  There was no clear connection to the Billy Mays brand nor were there any clear instructions on the lid of the washer on how to use “OXI” as there was for “detergent.”

There seems to be some unapparent history here regarding the use of “OXI” but brands should beware of permitting uses of a mark without control  – or allowing it to be truncated on product packaging by not acting against such uses – in ways that may ultimately dilute the brand.

Raiding the Register: Trademarks and Franchise Relocation

Posted in Famous Marks, Infringement, Trademarks

It seems like each year a new sports franchise is threatening to move to a new city. Here in Minnesota, we recently ensured at least 15 more years of the Vikings with the newly opened U.S. Bank Stadium. Before the announcement of the stadium deal, though, each time a veiled threat of the Vikings leaving Minnesota brought back the quote below from the 1988 comedy BASEketball:

Soon it was commonplace for entire teams to change cities in search of greater profits. The Minneapolis Lakers moved to Los Angeles where there are no lakes. The Oilers moved to Tennessee where there is no oil. The Jazz moved to Salt Lake City where they don’t allow music. The Raiders moved from Oakland to LA back to Oakland, no-one seemed to notice.

However some recent reports demonstrate that at least some people care about the Raiders. The team’s recent trademark filings suggest that a move to Las Vegas is a real possibility. On August 20, the team applied to register the LAS VEGAS RAIDERS mark in connection with various clothing items, providing entertainment services, including football games, and other memorabilia.

There is no guarantee that the Raiders will move from Oakland, but of course, there is a chance. And where there is a chance, there’s always someone hoping to strike it rich with a gamble. The Oakland Raiders aren’t the only entities with pending applications for the LAS VEGAS RAIDERS mark. In fact, there are six other pending applications owned by other individuals for the identical mark. Each of the applications below is owned by a different individual person:

  • LAS VEGAS RAIDERS for t-shirts, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for t-shirts, tank tops, sweatshirts and jerseys, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for various entertainment services, including presenting football games, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for athletic shirts, pants, jackets, footwear, hats, caps and uniforms, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for bottoms, footwear, jerseys, hats, pants, socks, and tops, filed on Jan. 29, 2016;
  • LAS VEGAS RAIDERS for shirts, jerseys, polo shirts, sweat shirts, and t-shirts, filed on Jan. 30, 2016; and
  • SIN CITY RAIDERS for various clothing items, filed on May 14, 2016.

My memories from Jan. 29, 2016 are a little foggy, but I have an inkling there may have been a news report regarding a possible move to Las Vegas published on that day.

Each of these applications has been refused registration on the ground that the mark falsely suggests a connection with Raiders from the NFL as well as a likelihood of confusion with the prior registered marks RAIDERS, OAKLAND RAIDERS, and LOS ANGELES RAIDERS, and RAIDERS NATION. None of these applicants are likely to overcome the refusals. All of the applicants will be sad to learn that the $225 – $235 governmental filing fee is non-refundable.

There is also one company (rather than an individual person), Nella Chunky LLC, that has also filed trademark applications just recently on Sept. 2, 2016: one for the LAS VEGAS RAIDERS mark in connection with clothing items and VIVA LAS RAIDERS, also in connection with clothing. Interestingly, this entity claims a date of first use back to March 1, 2015, but even assuming that this is truthful, it won’t help the applicant overcome a refusal based upon the prior registrations owned by the team. While Nella Chunky was more than seven months late to the “get rich quick” party, I at least have to give them credit for the more creative VIVA LAS RAIDERS mark.

Note that these are just the Las Vegas marks. Similar applications have been filed for other geographic locations, including SAN ANTONIO RAIDERS, SAN DIEGO RAIDERS, CALIFORNIA RAIDERS, and SOUTHERN CALIFORNIA RAIDERS.

On a surface level, it doesn’t seem like there is much to learn from these applications, other than the fact that it is difficult to hijack the trademark of a professional sports team. But in reality, these applications provide a valuable lesson if you or your client is on the verge of launching a new product, service, or company: seek trademark protection prior to any public announcements.

The caveat to early filing is that you’ll want to ensure that you will be able to begin using the mark in U.S. interstate commerce within about 3 and a half years. The Trademark Office allows up to 3 years to begin using the mark after the Trademark Office publishes the application and issues the Notice of Allowance. The first six months are free, but every six months thereafter the applicant is required to file a Request for Extension of Time and pay a $150 governmental filing fee.

Although a public announcement for your company may not create as many copycats as an NFL franchise, any public announcement could result in third-parties adopting similar marks for related goods or services. Alternatively, the longer you delay in filing, there is a greater risk that a third-party innocently adopts a similar mark for the same or related goods or services. You or your client will likely be forced to spend the time and effort to oppose the application or petition to cancel the registration. Even then, there is a chance that you may not be successful because it may be difficult to establish a likelihood of confusion depending upon the particular facts. This would create a risk that this third-party could prevent you from registering and/or using the mark. Keeping this lesson in mind could help you or your client avoid expensive headaches later down the road.

Avoiding the Seven Self-Inflicted, Destructive and Deceptive Industry (and Leadership) Behaviors that Create Victims, Critics and Often Enemies

Posted in Goodwill, Guest Bloggers, Mixed Bag of Nuts

James E. Lukaszewski, ABC, APR, Fellow PRSA

Any organization, leadership or business decision that can involve conflict, confrontation, controversy and contention (the four ingredients of catastrophe) is by definition dangerous ground. All too often leadership planning and decision making tends to ignore, minimize, even discredit the power of these emotional circumstances. Think again.

Whenever any of the four ingredients of catastrophe begin to emerge, decision makers need to adopt a handful of crucial but achievable survival principles.

  1. Avoid the production of new critics, victims and enemies. These players, once created, tend to live forever, remember everything and actively or surreptitiously, lie in wait to make your life miserable again and again going forward, often for reasons you’ll fail to remember.
  2. Talk promptly. Failure to speak promptly on matters that can trigger any of the four ingredients of catastrophe, is a powerful failure that is unrecoverable. Whatever excuse an organization or its leaders use to forgive themselves for not speaking promptly is never credible, creates even more critics and victims which you may only learn about when they surface by surprise to disrupt something you want to accomplish. The most common criticisms of crisis response are the failure to speak (arrogance and hiding stuff) and the failure to act promptly (lack of empathy and callousness).
  3. When in doubt, do something. Do it now, ask it now, say it now, change it now, fix it now. All too often really smart people seem timid, hesitant and confused. The tendency to stall, supported by the false imperative to get something done correctly, even perfectly, the first time, rarely happens. Your reputation is on the line from the very beginning. Timidity, hesitation and confusion are powerful, and reputationally corrosive. Far better to get something done and said today, even if significant repair is required tomorrow, than to do and say nothing today in hopes that inspiration will strike before something worse happens tomorrow. Something worse is always waiting to happen in crisis.

My philosophy is always to try and make next week’s mistakes this week, because that means that next week will be a better week with different but perhaps more helpful mistakes. Turns out that speed beats smart every time. Continue Reading

2016 Midwest IP Institute Around Corner

Posted in Articles, Branding, Marketing, Mixed Bag of Nuts, Trademarks

If you want to learn how to see around corners when it comes to doing battle on the IP landscape, the 2016 Midwest IP Institute is just around the corner in downtown Minneapolis.

Like last year, a full two days of excellent programs, but this year on Thursday and Friday September 22 and 23. Here are details for how you can register to attend.

And this year, for the Annual Trademark Review, I’ll be teaming up with a former colleague and one of our founding writers on DuetsBlog, Karen Brennan, now in-house counsel at Best Buy.

On that note, here are a few of my favorite Karen Brennan DuetsBlog posts from the not-to-distant past:

Enjoy all, thanks again Karen, and we hope to see many of you next Thursday September 22 at 11:15 AM, at the MN CLE Center, for a full hour of trademark energy.

NEIL LANE: Branding in Paradise

Posted in Advertising, Branding, Fashion, Product Configurations

I’ll admit it: if there’s a frivolous TV franchise I watch, it’s probably The Bachelor in one of its many iterations. Each series fits the same template: caricatures of eligible men and women stoke the flames of tear-stained conflict for a few weeks, before the show tries to narrow its focus to a true romantic connection (or, at least, attempt to salvage one with careful editing).

And each series, jewelry designer Neil Lane makes an appearance, brandishing engagement rings priced well into the six-figure range. Lane has been a staple of the ABC show for many years, and appears to help each bachelor pick out just the right engagement ring. The lucky contestant then presents the ring, each time with just the right camera shot to display that NEIL LANE stylized logo (Reg. No. 4,007,677):

bachelor_proposal-ring

ImageAgentProxy

For those keeping track, the latest season of Bachelor in Paradise wrapped up just last night, with three separate marriage proposals and three separate Neil Lane engagement rings on offer. This has been something of a coup for Neil Lane, whose brand has become a big-box jewelry store staple. Lane says the product placement has “totally been a tremendous boon,” but what I found interesting was his comment about the IP in his jewelry designs:

It’s totally been a tremendous boon for me, but I think it’s helped to whole American bridal industry. I don’t hold copyrights on everything I do—when you affect change, people use it. It becomes part of the lexicon, and that’s kind of cool. If you look now in the assortment of American bridal, you can see the aesthetics that I brought to it. The whole industry has benefited—it’s been boosted, and now girls can get things like they see on The Bachelor, or they can get a piece of that Hollywood glamour with that vintage vibe, which I don’t think was available before. I’m not saying I did all of that—I think the energy of the universe, I was in sync with that.

Neil’s reference to “copyrights” is a bit vague here – he may be referring to trade dress protection in his ring or diamond designs. A brief search of the Trademark Office suggests diamond “shape” configuration marks are fairly rare, but aren’t unheard of. So long as the design is non-functional and the applicant can establish acquired distinctiveness in the design (i.e., recognition of the design among the consuming public as a trademark), these designs could well be protected. One example is a registration for “a non-round diamond that bears a hearts pattern and an arrows pattern” owned by Worldwide Diamond Trademarks, Ltd.:

ImageAgentProxy-2

The Trademark Office reveals a variety of word mark registrations and applications owned by Neil Lane Enterprises, Inc., but no configuration marks of any kind. Lane does mention that his “aesthetics” are now used by his competitors in the quote above, suggesting that there might not be any design features in which Lane can claim exclusive use to establish acquired distinctiveness.

I’m no jewelry expert, but the question seems apparent – is there something unique about Neil Lane’s jewelry worth protecting, aside from its presence on TV? Given the unlimited term of registration for a configuration trademark, and the ability to enforce the mark against other similar designs, the advantages to registration are clearly there.

 

Does a Commodity Ever Need to Apologize?

Posted in AlphaWatch, Articles, Branding, Genericide, Goodwill, Loss of Rights, Marketing, Mixed Bag of Nuts, Trademarks

On this welcome Labor Day, a few different thoughts converged for me, so please allow me to answer my own question in the title of this post, starting by explaining the below photo:

EscalatorNorthstarMpls

After repeated diversions from a particular moving stairway a/k/a escalator to the far less convenient elevators in an unnamed downtown Minneapolis office building, I finally decided to capture the above photo of signage most recently affixed to the frequent escalator blockade.

This escalator blockade suddenly appears fairly frequently, on a highly traveled portion of the Minneapolis skyway system, at least for me, and at least frequently enough for me to wonder over and over if there are lemon laws not just for cars, but for escalators too.

To soften my repeated frustration shoulder to shoulder with other skyway travelers also waiting for and packing into an elevator to travel one floor from the skyway level to the street level, I often joke out loud about how this building’s escalator must be the most frequently serviced escalator in the entire Minneapolis skyway system:

skyway-minneapolis

Most openly agree. No one has ever disagreed or openly challenged my assessment. And, since the signage provides no explanation, and the ratio of human laboring time at the escalator site compared to total blockade time yields an exceedingly small fraction, to date I’ve been unsuccessful in learning from the experts why this particular escalator is so challenged.

With a view toward the need for branding, let’s turn for a moment back to the above signage attached to the escalator blockade (reproduced below), did you happen to notice anything interesting about the unbranded messages being communicated there?

nonapologysign

Three messages appear in apparent order of importance, at least according to the order of appearance and the size of and particular type styles used.

Apparently most important is the obvious verbal message that probably needs no words given the escalator’s static state and the physical blockade: “ESCALATORS OUT OF ORDER.”

Next is the kind request: “Please use elevators.” With some helpful arrows for directing where to find them. The request part is appreciated, but not always honored. But for the movable blockade, the non-moving escalator, can appear deceptively similar to a static stairway that is capable of being climbed on and even walked upon if someone were so inclined to use their legs.

Last, but not least, especially from a branding perspective, is the exceedingly small and barely legible print at the bottom of the sign: “We apologize for any inconvenience.”

Really, any? As in, we don’t think there is even one notable inconvenience, but if you’re so high-maintenance to think otherwise, accept this token and simply move on. Brands aren’t so invisible and have the potential for being punished when they don’t own their failings.

More than a couple of branding questions come to mind from the last message in the signage. Who is we? Who is the wizard behind the sign? Who is responsible for the frequently failing escalator? And, is this really a genuine apology? In other words, why reference “any” inconvenience when the repetitive inconvenience is obvious and known to anyone close enough to read it? Seems like a classic non-apology to me, made more possible because of the anonymity of the faceless escalator service commodity.

Seth Godin’s post from this morning spoke wisdom about commodities. He contends that a commodity is a product or service no one cared enough about to market.

Building on that idea and tying in my escalator woes, it seems to me that another explanation for commodity status is not caring enough to: (a) engage in the hard work of building a brand; (b) nurture a relationship with customers, and (c) be visible, responsible and accountable to those customers.

So with that, what do you think, does a commodity ever need to apologize?

Federal Cannabis Laws Don’t Impede Patentability

Posted in Agreements, Patents, Technology, USPTO

Marijuana Leaf

While the Lanham Act bars the federal registration of trademarks related to illegal goods and services, there is no such prohibition against patenting illegal products or processes. However, the value of such patents is debatable.

State Legalization Leads to Increased Patent Applications

Marijuana is now legal, in some form, in 25 states. But under federal law, cannabis remains classified as a “Schedule I” narcotic. In recent years, the USPTO saw an influx of patent applications for marijuana-related inventions. Last year, the first U.S. patent directed to a cannabis plant was allowed. Even the United States Government holds a patent on a medical use for marijuana.

Enforceability Problems

A patent allows the patent holder to exclude others from making, using, selling, offering to sell, or importing the patented invention. This allows the patent holder to obtain licensing or assignment fees from others who make, use, sell, offer to sell, or import the invention. However, if such activities are illegal, the patent’s worth is questionable at best. There is no value in a right to exclude others from performing an act if the performance of that act is already against the law.

Of course, in the case of marijuana, there is no shortage of individuals and businesses willing to disregard the federal law. But it is unclear whether a patent holder could enforce a marijuana-related patent. That is, would a federal court be willing evaluate whether otherwise federally criminal acts constitute patent infringement?

It is equally unclear whether an assignment or license of a marijuana-related patent would be enforceable. Patent assignments and licenses are contracts, and it is a general tenet of contract law that a contract directed toward an illegal purpose is unenforceable.

Hidden Value

While a patent on an illegal product or process may not be valuable in a traditional sense, it may provide an advantage for some inventors. For example, despite questionable enforceability, the patent may provide a deterrent against infringement by competitors. Moreover, if there is a change in federal marijuana laws, those early patent holders will surely have an advantage in the market.

The Hugo Awards: Tarnished by Puppies?

Posted in Branding, Guest Bloggers, Infringement, Mixed Bag of Nuts, Trademarks

-Laurel Sutton Senior Strategist & Linguist at Catchword Brand Name Development

Have you read J. K. Rowling’s Harry Potter and the Goblet of Fire? What about Orson Scott Card’s Ender’s Game? Frank Herbert’s Dune? Maybe Neil Gaiman’s American Gods (coming soon to the cable network Starz)?

jhghfIf you’ve read any of those books, you’ve read a Hugo Award winner. The Hugos (named for Hugo Gernsback, the founder of the pioneering science fiction magazine Amazing Stories) have been given out every year since 1955 and recognize the best science fiction or fantasy works of the previous year. They are awarded to outstanding novels, short stories, graphic novels, and works in many more categories representing creativity. Unlike the Academy Awards, they’re voted on by fans of the genre and are generally regarded as one of the most prestigious science fiction awards. There’s a trademark for The Hugo Award and everything!

Don’t feel clueless if you haven’t heard of the Hugos; most people outside science fiction/fantasy fandom haven’t. I give the capsule history here to show that since its inception, the Hugo brand has stood for excellence; the yearly competition is fierce, and simply to be nominated is recognition of worthiness. Until recently, that is…

Continue Reading

Timber! Will the Little Trees Car Freshener Configuration Trademark be Chopped Down?

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Trademark Bullying, Trademarks

AnatomyofTMWarning

We wrote about the above trademark warning ad a few years back, and the claimed trademark owner likely recognizing vulnerability as to validity:

The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.

Now, the validity of Car-Freshner Corporation’s federal non-traditional trademark registrations for the shape, configuration, and silhouette of a tree design, are seriously being questioned.

Sun Cedar, a non-profit based in Lawrence, Kansas, with the able pro-bono assistance of Marty Schwimmer of the Leason Ellis firm, has filed an answer and counterclaim in federal district court in the Northern District of New York, denying Car-Freshner Corporation’s allegations of trademark infringement, dilution, and unfair competition, and seeking cancellation of U.S. Reg. Nos:

on functionality grounds, and the ‘016, ‘233,  ‘888, and ‘854 registrations on abandonment grounds.

You can read more about this trademark dispute here at Techdirt — calling it another example of trademark bullying.

Here is an image of the Sun Cedar product that is alleged to infringe and dilute Car-Freshner Corporation’s federally-registered trademarks in the so-called Little Trees design:

SunCedarTree

A few questions come to mind.  Would you have put your non-traditional trademark rights at risk for the above alleged infringement?

Will the registrations be exposed to have ticking time bombs inside them?

If so, will Marty declare timber! as they fall and then gather up the debris to stack like cord-wood?

Or, will there be a mixed result, and if not chopped down altogether, might the registrations simply be chopped down to size.

Endless possibilities abound, so stay tuned, this is sure to be an interesting one.

The RedBox Mark Has Gone to Waste and 3 Quick Lessons to Learn

Posted in Dilution, Famous Marks, Infringement, Loss of Rights, Trademarks

The RedBox brand continues to dominate the movie rental market. For the uninitiated, RedBox is a brand of movie and video game rental vending machines placed in convenient locations like grocery stores, gas stations, and fast food lobbies, like the one below:

redbox

However RedBox’s commercial success hasn’t stopped the brand from going to waste – literally, that is. On a recent walk through Minneapolis, I happened across this monstrosity:

RedBoxWaste

We’ll get the easy jokes out of the way first: No, this isn’t the RedBox for movies on LaserDiscs and VHS tapes; and no, this isn’t the RedBox where you go to rent box office bombs like Gigli, John Carter, The Lone Ranger, and whatever Alvin and the Chipmunks 4 through 7 will be called.

Instead this is a run-of-the-mill waste dumpster targeted primarily toward use at construction sites. There is one unique attribute though if you pay enough attention: the little attached box that includes space for a portable restroom. This combined service is allegedly a game-changer when it comes to efficiency according to the redbox+ website:

The redbox+ system gives you two services with one call. No more needing to use two different vendors for your roll-off and portable toilet needs, you don’t make two phone calls, you don’t get two invoices and best of all you keep your crew on site with a service that they need.

Normally the use of an identical mark with a plus sign would be cause for alarm. I don’t expect to see McDonalds+, Microsoft+, or similar marks used by others any time soon. However it seems unlikely that RedBox the rental service can take any action. The reasons why provide us with three quick tips regarding trademark infringement and adoption of strong, protectable trademarks:

  1. “They stole my name” doesn’t work if the goods or services are so unrelated that no consumer would likely be confused. It’s a stretch to think that a dumpster and toilet business would be connected to an entertainment vending machine, so an infringement claim would be an uphill battle.
  2. Starting with a commercially weak mark will entitle your brand to a narrower scope of protection. By the time the RedBox movie brand was registered, there were a number of other RED BOX marks already registered in connection with various goods and services, including toys and games, fiberglass pipes, tape, printed publications for business topics, and sound equipment. This widespread use in connection with other goods also makes a dilution claim less plausible.
  3. Notwithstanding the above, the best legal approach isn’t always the best marketing approach. Marketers and trademarks lawyers both understand the friction between beginning with a strong, unique, distinctive trademark – it is easier and less costly to protect and enforce and provides the owner with broader rights. However it takes longer to educate consumers about the product (what’s a Xerox, anyway?). But having a name that directly communicates something about a product has marketing appeal, either by telling the consumer about the product itself, or making it more memorable in the marketplace (“Look, it’s one of those RedBox things!”). Walking that line can be tough, but RedBox is an example of having a good product that can become a widespread commercial success, even if the mark isn’t the next Apple or Microsoft.