Collaborations in Creativity & the Law


Posted in Branding

  Long suffering Vikings fans–a population of which I am a proud/depressed member–received emotionally confusing news earlier this week.  Adrian Peterson, scourge of the NFL, pled out of his felony child abuse case for a lesser charge, thereby concluding his case and avoiding jail time.  This news was emotionally confusing because, while Peterson is a superlative football player that could make my beloved Vikings a more formidable team, something just doesn’t feel right about cheering for a player who did what he did.

Vikings fans are not the only ones wandering around with the overwhelming melodramatic angst of Dawson’s Creek characters.  Vikings management is undoubtedly racking their brains about how to handle this development without alienating and disappointing their fans and their “corporate partners”–groups with somewhat different opinions.

Frankly, the Vikings couldn’t have handled the Peterson situation worse when the allegations initially came to light.  After putting Peterson on the inactive list and then promptly getting stomped by the New England Patriots, the Vikings reversed course and reinstated Peterson while lauding the importance of “due process.”  Of course, if due process was their goal, there was no meaningful reason to deactivate Peterson in the first place.  While the Vikings dithered about, the actions of their advertisers were swift and decisive.  Radisson cut ties with the Vikings, Nike suspended its contract with Peterson, and Target and other retailers removed all of its Peterson related clothing.

All of this creates an interesting stew to consider.  The speculation has been that Peterson is unlikely to face any further suspension from the NFL because he has already missed 8 games.  This is two games more than the 6 game suspension called for by the NFL’s recently instituted domestic violence policy.  That means he could very well be available to play within the next two weeks.  If the Vikings put him on the field immediately, they potentially face the ire (again) of corporate sponsors that want nothing to do with Peterson.  But if they don’t play him, they potentially face the outrage of their core fan base who, I suspect, is responsible for a substantially greater portion of their revenue than their corporate sponsors.  I suppose its at least possible that the Vikings will at least solicit input from their sponsors prior to making a decision so they can at least begin to assess the financial impact of whatever decision they make.  Regardless, it should be some interesting “brand watching” over the next several weeks.

Photoshopping: One Lingerie Company is Bucking the Trend while Making a Buck

Posted in Advertising, Branding, Fashion, Goodwill, Marketing

It’s no secret that the advertising industry relies heavily on physical appearance to sell products, especially for clothing, accessories, and even cheeseburgers. About a year ago, Brent (Lorentz, of the fellow Duets Blogger fame) discussed the prevalence of unrealistic expectations of beauty in advertising. As Brent mentioned, while ethical standards are applied to all sorts of industries, there seems to be little discussion of any ethics in advertising. Sure, some academics, activists and other groups might complain now and then, but the complaints don’t seem to result in any meaningful action or change.

As an anecdotal example, when Hardees / Carl’s Jr. came out with its first “pretty ladies in very little clothing cheeseburger ad,” the Parents Television Council objected. They released a public statement chiding the restaurant chain stating “The Paris Hilton/Carl’s Jr. commercial is nothing but a sleazy attempt on Carl’s Jr. part to make money selling burgers with pornography.” The response from Andy Pudzer, CEO of the chain? “Get a life.”

Against this backdrop, American Eagle took a risk with it’s “Aerie” chain of lingerie stores, choosing to not photoshop the models in its advertisements. The brand’s decision is particularly noteworthy due to the chain’s target market: 15-21 year old females. Here is one of their summer ads:

The fact that one brand has made this commitment isn’t big news. After all, companies have an occasional bout of conscientiousness quite frequently. I haven’t heard any announcement from any other brand. No, the real news is that the ad campaign is not just a “feel good” moment, but is actually making American Eagle more money. Sales of the Aerie brand shot up 9% over the last quarter. Sure, it could be coincidence or it could be that people simply hadn’t heard of the Aerie brand until these ad campaigns. Regardless of the “why,” there is at least anecdotal evidence that consumers will positively respond (with their wallets) to more ethical, realistic beauty standards for women.

To be sure, professional models don’t provide a truly realistic expectation of beauty either. But it is a step in the right direction. I doubt that the entire industry will follow suit and, honestly, I’m not sure that it would be necessary. The primary problem, for me, is that realistic body images were never portrayed in advertisements. The idea, I suppose, is that companies think that consumers see the advertisement and on some subconscious level think that they’ll be just as beautiful if they buy that swimsuit/wear that perfume/ eat that jalapeno chili cheeseburger. By extension, choosing to not make the women in the advertisements as beautiful as possible would presumably have less of an effect on the viewer because they don’t want to be average, they want to be beautiful. Even if companies didn’t believe it, it likely wasn’t worth the risk. But Aerie’s ads question these assumptions. Here’s to hoping at least some companies follow suit.

Mayhem: Ahem, Metaphorically Speaking

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Sight, Television, Trademarks, USPTO

Metaphors are a good choice for trademarks. A metaphor typically requires some thought, imagination or perception to understand the connection between the mark and what’s for sale.

Remember what a floating feather might suggest metaphorically? Yes, a good night’s sleep. So, the symbol works well as a distinctive non-verbal trademark for a pharmaceutical sleep aid.

Metaphors are everywhere. According to James Geary, we utter about six metaphors a minute. He also notes: Aristotle’s classic definition of a metaphor is “giving the thing a name that belongs to something else.” This approach serves as a powerful trademark tool too.

Over the weekend, during the constant barrage of nauseating political ads, I found myself more focused on the few interspersed commercial advertisements, allowing me to appreciate the metaphorical thinking embodied in Allstate’s Mayhem ads:

“The character Mayhem is essentially a metaphor for any disaster that might befall a member of the target demographic, and tries to warn people that if they don’t have enough insurance coverage, they could have to pay for it out of their own pockets.”

Sure enough, Allstate has secured inherently distinctive federal service mark registrations for MAYHEM, and the slogan MAYHEM IS EVERYWHERE for: “Insurance services, namely, writing and underwriting insurance in the fields of property, liability, life, and casualty, and providing ancillary services thereto, namely, administration and claims adjustment; financial sponsorship of athletic events; financial sponsorship of charitable organizations.”

As it turns out, MAYHEM also serves as a branding metaphor and suggestive, federally-registered trademark for all kinds of different sporting goods offered by all sorts of brand owners: Scheels’ towable floats, Eastman’s archery arrows, Lost’s surfboards, Crosman’s airsoft guns, Rawlings’ lacrosse equipment, and Rawlings’ baseball bats.

So, not only are metaphors everywhere, but it appears even non-Allstate Mayhem is everywhere too, at least in the world of sports equipment.

Ahem, of course, none of that equipment would be appropriate for any of the athletic events sponsored by Allstate’s Mayhem.

By the way, in case you’re wondering, Havoc is everywhere too . . . .

I’m a Patent Attorney – Isn’t that Scary Enough?

Posted in Patents, Product Configurations, Squirrelly Thoughts

A Hoppy Halloween from all of us ghoulish folks here at DuetsBlog!

Spending for Halloween this year is likely to hit $11 billion dollars, possibly more than is spent decorating for Christmas.  This fact is easily witnessed in many neighborhoods around town, especially this one where just about every house has some sort of Halloween decoration.

Although not pictured here, I also found a creepy Santa statute with a bloody head mere blocks from where a drunken zombie Santa recently traumatized some teenagers by unwittingly breaking into their home after a rough night out.

So with all this spending on Halloween, and the number of novelty items that can be purchased for the holiday, I thought it might be fun to peruse patents and patent applications for your trick-or-treating necessities.

First, there is the all-important costume.

In the age of Frozen, Transformers, Teenage Mutant Ninja Turtles, and Spiderman, you have to wonder what Disney, Marvel and Hasbro make off of costume licensing.

For your child, you’ll probably want something “weather and climate adaptive,” breathable, and reflective.

Your teenage boy probably wants something that oozes blood.

And you may just want something funny.

You’ll need a vessel for collecting candy.

The bigger and easier to haul around, the better.  Wheels and a handle?  Check.

Don’t forget to say “Trick or Treat.”

Here’s a patent application for a candy bag incorporating a speaker activated by a remote managed by the parent, where you can zap (er, gently remind) your trick-or-treater to say those magic words (along with a “thank you”).

But be wary of what may lurk in the yard.

This is a little creepy.


 Have a safe and sugary Halloween!



Posted in Mixed Bag of Nuts

As a huge fan of gangster movies, I was intrigued by a recently filed lawsuit in California. Although I am familiar with actor Frank Sivero’s work in “The Godfather: Part II” and in “Goodfellas” (left side of photo below), I am not familiar with the accused “Louie” character on the Simpsons (right side of photo below).

Mr. Sivero sued Fox Television Studios, Inc. alleging that the Louie character constituted infringement of his right of publicity, misappropriation of his ideas, interference with prospective economic advantage and unjust enrichment. The right of publicity, also called “personality rights,” is a property right to control the commercial use of a person’s name, image, likeness, or persona.

The complaint contends that Mr. Sivero lived next door to the writers of the Simpsons in an apartment complex. They saw each other almost daily. During these encounters, Sivero states that he discussed the character he was creating to play in the “Goodfellas” movie. Sivero based the “Frankie Carbone” character on himself. As gangster movie buffs know, “Goodfellas” was nominated for six Academy awards. Joe Pesci won a best supporting actor award for his portrayal of “Tommy DeVito.” The character “Louie” is known as a “wise guy” and is part of the Springfield Mafia.

The Simpsons writers are known for modeling characters after real life people or real life characters from other shows or movies. For example, the Simpsons’ character “Moe the Bartender’s” voice is based on the real life voice of acting legend Al Pacino’s voice. Likewise, Simpsons’ character “Dr. Julius Hibbert” is based on Bill Cosby’s character “Dr. Cliff Huxtable” on the popular “Cosby Show.” Further, character Mayor Quimby is based on President John F. Kennedy from his days in Camelot. Finally, Ranier Wolfcastle the agitated action hero movie star is based on Arnold Schwarzenegger.

Will this case go to trial or will there be a settlement offer by Fox that Mr. Sivero cannot refuse?


Posted in Almost Advice, Trademark Bullying, TTAB

Think an undefended opposition proceeding is a slam dunk, then you better think again.  In Emminence, LLC v. Lisa Kelly, Opposition No. 91205286 (October 8, 2014), the Trademark Trial and Appeal Board dismissed an opposition proceeding even though the defendant did not offer any evidence or even a trial brief in support of her case. Even though Ms. Kelly clearly demonstrated her intention to not defend herself in the opposition proceeding, the Board found that the plaintiff failed to offer sufficient evidence of the relatedness of the goods, so the opposition was dismissed.

If a plaintiff fails to prosecute an opposition proceeding, a defendant can move for a directed verdict at the close of the plaintiffs testimony period. However, no similar motion exists for a plaintiff against a defendant that chooses not to defend itself.

In one sense, the lack of a motion could be a useful strategy against a trademark bully. The party that is bullied can choose as a strategy to not engage the bully in the proceeding and allow the Board to do the bullied party’s bidding. Giving up control like this may not be ideal, but is a cheap strategy.

However, the likelihood of using such a strategy is low and should not justify the absence of a motion for a directed verdict for a plaintiff in an opposition proceeding. The more likely situation is a defendant that has no interest in defending its right to a registration, yet unjustifiably increases the cost of litigation to the plaintiff by not defending itself after filing a bare bones answer.

Does Your Business Have a Chief Branding Officer?

Posted in Branding, Goodwill, Guest Bloggers, Marketing, Mixed Bag of Nuts

- Debbie Laskey, MBA

Who owns the brand in your business? If your business is top heavy with numerous members in the C-Suite, this may be a difficult question to answer if you don’t have a Chief Marketing Officer. Your Chief Sales Officer may claim ownership, or your Chief Information Officer may claim ownership. Perhaps, your Chief Legal Officer may claim ownership. If you don’t have a large number of people in your C-Suite, your Chief Executive Officer may be the face of your brand and simultaneously leads your messaging.

But no matter who owns the brand in your business, there are three key responsibilities for the person in this role.

First, make sure that all brand tools are consistent. This means that all your digital assets including your main website, your blog, and all your social media accounts reflect the same look and feel; and make sure all your printed collateral also reflects the same look and feel (brochures, newsletters, flyers, annual reports, etc.). Make sure they all provide the same description about your company and brand, feature the same logo and/or tagline, and include the same color palette. For example, you would look twice and not trust a site with a purple Coca-Cola – those iconic red and white colors are as famous as the product they represent.

Second, make sure your brand has a defined voice. If you provide professional services, for example, legal or financial services, you may use formal language that matches your industry. But if you sell consumer products, your ads and emails may be full of informal lingo or slang. Think detailed emails versus brief texts. Also, depending on your industry, there may be appropriate words that would be considered essential to include in your brand messaging. For example, professional sports have terminology that is important in their branding – football ads can easily integrate “touchdowns” and “hail Mary’s,” and baseball ads can easily integrate “home runs” and “shut outs.”

Third, create brand advocates. As the owner of your brand, you want to welcome employees into the branding process so that they understand their importance in sharing your brand story with the world. Since all employees are brand advocates, take the time to educate employees about your brand’s strengths during the onboarding phase and also re-train on a regular basis. Make the training fun and always have a smile on your face.

What do you do as your brand’s owner? Please chime in.

When is a Flavor/Taste Trademark Possible?

Posted in Articles, Food, Infringement, Law Suits, Non-Traditional Trademarks, Sight, Taste, Trademarks, TTAB, USPTO

Are your intellectual taste buds craving more discussion of non-traditional trademarks? It’s not every day we have the opportunity to write about a restaurant’s claimed trademark protection for the flavor or taste of certain food dishes and a restaurant’s claimed trade dress in the chef’s unique plating or visual presentation or appearance of certain food dishes, including the delicious-looking baked ziti to the left.

Last week Professor Eric Goldman wrote an interesting Forbes article about an unusual federal trademark infringement case from Texas involving those very unlikely non-traditional trademark claims. In that case, United States District Judge Gregg Costa dismissed both the taste trademark claim and the plating trade dress claim before the plaintiff even had a chance to be seated much less order an appetizer.

Although Judge Costa called the taste trademark claim “half baked” well into the third course of his decision, the first few lines should have tipped the reader off to his skepticism of the claims:

“Intellectual property plays a prominent and growing role in our Information Age economy.  High-stakes litigation over software patents, for example, is increasingly common in federal dockets.  In this case, though, the plaintiff seeks intellectual property protection for something quite traditional: the meal one might order at a neighborhood pizzeria.  New York Pizzeria, Inc. contends that the flavor of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to protection under the trademark laws.”

The plaintiff was denied the opportunity to try and prove taste infringement because its complaint failed to identify a valid taste trademark given the “insurmountable” functionality hurdle:

“The functionality doctrine is a significant hurdle for any party seeking to protect a flavor as a trademark. In In re N.V. Organon, for example, the Trademark Trial and Appeal Board (TTAB) denied a pharmaceutical company a trademark in the orange flavor of its pills on functionality grounds. Because medicine generally has ‘a disagreeable taste,’ flavoring ‘performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade.’

If the hurdle is high for trademarks when it comes to the flavor of medicine, it is far higher—and possibly insurmountable—in the case of food. People eat, of course, to prevent hunger. But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.”

Sound familiar? It reminds me of our taste infringement blog post from a few years back, where I wrote:

“Of course, there is a reason for the lack of or scarcity of taste trademarks. Any product intended for human consumption is unlikely a candidate for taste trademark protection given the functionality doctrine. So, Coca-Cola can’t stop another from selling a beverage that has the same taste as Coca-Cola, just because it tastes the same, unless of course, the maker of the competitive beverage hired away key Coke employees who unlawfully revealed the closely guarded secret formula. That is how trade secret litigation happens, not “taste infringement” litigation.”

And, even longer ago than that, I answered the very question posed in the title of this blog post:

“I have suggested before that taste is only available as a possible non-traditional trademark when it is applied to a product not meant for human consumption (e.g., flavored ear rests on eyeglasses and flavored ballpoint pen caps). Foods, beverages, and other oral products that are meant to be consumed or placed in the mouth and have a pleasing taste most likely are to be disqualified from enjoying trademark protection in the taste or flavor, based on the functionality doctrine.”

Although the taste trademark claim was “half baked,” Judge Costa thought the plaintiff’s trade dress plating claim deserved a closer look.

“[T]here may be some rare circumstances in which the plating of food can be given trade dress protection. When plating is either inherently distinctive or has acquired a secondary meaning, when it serves no functional purpose, and when there is a likelihood of consumer confusion, it may be possible to prove an infringement claim. It is conceivable that certain well-known “signature dishes” could meet this very high standard.”

Nevertheless, Judge Costa dismissed the trade dress plating claim too, since the plaintiff failed to articulate the specific elements of its claimed trade dress in the visual presentation of certain food dishes.

Given all that, what do you make of U.S. Trademark Registration No. 1,623,869, registered more than twenty years ago, back in 1990.

The registered non-traditional configuration mark mentions flavors and is described this way:


So, is the claimed combination of flavors actually protected by this federal trademark registration?

Or, does it merely protect the appearance, given the below drawing of the registered non-verbal mark?

And, given the color claim, detailed below:



Or, does the registration perhaps protect both taste and appearance?

Unlikely, but if so, it is the only federally-registered taste/flavor trademark I’ve seen (and not tasted) before.

What do you think?

Aggie-ravating Trademark Issues with College Mascots

Posted in Infringement

Colleges serve an important role in American society, providing education, experience and leadership to each new generation. Also, sports. And did I mention SPORTS? Regardless of the reason (cable?), college sports have become a huge business over the last 25 years, with NCAA schools having a reported annual value of $8 billion (without including revenue generated for private companies). That number may not be accurate, but given the number of Division 1 school football and basketball programs, price of tickets, number of games, broadcast rights, merchandise, etc., I don’t think that’s an exaggerated number. And with revenue like that, it isn’t surprising that universities rely on trademark law to protect their brands.

Earlier this week, Oklahoma State University (OSU) filed a lawsuit against New Mexico State University (NMSU) over NMSU’s renewed use of its retro cowboy logo. The two logos are shown side by side below:

Hard to argue that those aren’t similar. OSU claims use of its mascot all the way back to the 1920s. NMSU claims use of their logo back to 1960s. However in 2005, NMSU moved toward a more modern logo. However, NMSU’s recent decision to sell merchandise featuring the old logo apparently sparked the lawsuit. On its website, NMSU has a document chronicling the history of its logo in which it admits that it “initially” paid royalties to OSU for use of the logo. There is no explanation of when these royalties ceased.

Of course, fans of the University of Wyoming might be a bit confused too. As it turns out, Wyoming has a similar logo that it uses, shown below:

Apparently OSU also objected to Wyoming’s use, but they reached a concurrent use agreement in 1993.  Based on the reported terms of the agreement, OSU concluded that so long as the respective logos appear in each school’s respective colors and with some text located on the clothing, that the two schools could avoid any confusion (oh, and don’t forget the royalties…). The NMSU design is already in NMSU’s colors, so perhaps OSU is just taking a really expensive route to get NMSU to add some text to the design. Or it could be the royalties. I’ll let you decide.

The dispute highlights an interesting aspect of trademark law. Regardless of the type of products involved or the amount of money on each side, the question ultimately comes down to consumer perception and whether consumers are likely to be confused. Sports teams, especially college teams, frequently use identical names for their mascots and teams. For example, the name “cowboys” is used by both, you guessed it, OSU and Wyoming (Also, another football team that you may heard of down in Dallas…). As far as Aggies go, you’ve got NMSU, Delaware Valley College, North Carolina AT&T, Texas A&M, UC Davis, and Utah State. I don’t know all of them, but this Wikipedia article lists 76 different Eagles, 46 Tigers, 39 Bulldogs, and 33 Panthers. In short, consumers are accustomed to relying on indicia other than merely the name (and likely the logo) to determine the source or sponsorship of the goods, such as the colors, school name, acronyms, etc.

But if you’re looking for unique college mascots, you’ve got the Fighting Okra of Delta State University in Mississippi, the Geoducks of Evergreen State College (it’s a type of mollusk, apparently), the Scotsdale Community College  Fightin’ Artichokes, or the St. Louis University Billikens. You never hear about any trademark disputes over mollusks or artichokes, do you?

But back to our friendly cowboys. The lawsuit seems a bit surprising. After all, the parties apparently had a forty year agreement and working relationship. Or, if “initially” paying royalties only meant a few years (5, 10?), NMSU used the logo the remainder of the 40 years without objection by OSU. The agreement with Wyoming also weakens OSU’s claim, but probably not enough to preclude a successful claim. I’d be highly surprised if the dispute lasts very long, as it seems to be ripe for settlement. Even in the billion dollar industry of college athletics, settlement is often the most efficient means of settling trademark disputes, especially if you both have pistols.