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Collaborations in Creativity & the Law

iOS 8: Bigger, faster, but still not a valid trademark (yet)

Posted in Fair Use, Non-Traditional Trademarks, Product Configurations, Technology, Trademarks, USPTO

Although the iPhone 6 was the headliner, Apple’s release of iOS 8 was a respectable supporting act. Unfortunately though, the negative headlines keep coming in as poor performance reviews have kept more than half of Apple users from downloading the new operating system (your dear author included among them).

Apple received some additional bad news on October 2 when the U.S. Patent and Trademark Office issued Office Actions initially refusing registration of Apple’s three claimed trademarks set forth below (click the image for a link to the application):

We’ve previously discussed these applications here and here. Part of the discussion centered around whether the claimed mark actually functioned as a trademark. Specifically, the third application set forth the following description of the mark:

The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.

The Trademark Office has initially refused all three applications on the grounds that the claimed marks (1) are non-distinctive product designs, (2) require changes to the drawings and descriptions of the marks, and (3) the drawing has included functional elements. The Office Action did not identify the arrangement of square icons in rows as a functional element and also left open the possibility for establishing acquired distinctiveness for the marks. Consequently, it is certainly possible that Apple could overcome the refusals.

Under the Supreme Court’s TrafFix decision, a feature is functional if it is essential to the use or purpose of the product, if it affects the cost or quality of the product, or if it would put competitors at a significant non-reputation-related disadvantage. Generally, the ability to use square icons arranged in rows could affect the quality of the operating system. This arrangement efficiently uses the limited space available on a phone’s operating system. It also is a very common arrangement for icons on digital devices (computers, phones, and more). It is hard for me not to conclude that granting Apple the exclusive right to use the mark, as identified in the application, would not not put competitors at a disadvantage. As a result, I’m still not so sure the mark isn’t entirely functional.

Of course, based on the numerous issues that users are experiencing with iOS 8, would it be so bad for Apple if some part of iOS 8, even just the trademark, was determined to be “functional?”

Would Benefit Corporations Benefit from Some Trademark Clarity?

Posted in Genericide, Goodwill, Guest Bloggers, Mixed Bag of Nuts, Non-Traditional Trademarks, Trademarks, Truncation

- Draeke Weseman, Weseman Law Office, PLLC

A benefit corporation is the term used when a company is created under corporate law and should not be confused with a “B Corp,” which refers to a company that is certified by B Lab to meet specific standards for social and environmental performance.

Why Consider a Benefit Corporation? Doug Bend and Alex King, Forbes.com (May 30, 2014)

Starting on January 1, 2015, Minnesota businesses will have the option to incorporate in Minnesota as benefit corporations, a new type of for-profit entity that commits to pursue social goals. More than half of the states in the United States have enacted some type of legislation allowing for benefit corporations (Maryland was the first in 2010).

Benefit corporations arose in response to the growing demand for socially conscious businesses. The group largely responsible for the benefit corporation movement is B Lab, a 501(c)(3) non-profit formed in 2007 that evaluates and certifies businesses according to a stakeholder and environmental impact scorecard, while also acting as a public promoter and supporter of such businesses.

B Lab (through B Lab IP, LLC) owns several trademark registrations or pending applications for benefit corporation related marks, including the following:

B Corporation

 

 

 

 

 

Brought To You By the Community of Certified B Corporations

 

 

 

 

 

On its website, B Lab describes its role as follows: “B Corps are certified by the nonprofit B Lab to meet rigorous standards of social and environmental performance, accountability, and transparency. Today there is a growing community of over 1,000 Certified B Corps . . . .”

Despite this clear statement about B Corps and the certification provided by B Lab, no trademark applications or registrations exist for the truncated marks “B Corp” or “B Corps,” or for the certification mark “Certified B Corps.” Instead, the marks registered by B Lab are service marks applied to “association services,” business “testing, analysis, and evaluation,” and “quality assurance” services.

This is surprising because both B Lab and the companies adopting the B Corp certification routinely use variations on the B Lab marks while mentioning certification. For example, below is a screenshot from the B Lab home page, followed by a screenshot from Patagonia’s website, both using the truncated B Corp mark and both prominently using the unregistered “Certified B Corporation” mark:

 

 

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Another Way the NFL Can Protect the Shield

Posted in Mixed Bag of Nuts

It’s no secret that the NFL is facing a reputation crisis, on a variety of fronts. With 2013 being called “a very bad year” for the NFL, words will be difficult to describe how badly 2014 ends (reputationally), if the league continues on its current path of self-destruction.

A common thread to the concussion crisis and domestic assault crisis involves physical injury — and the league’s failure to act (contrary to its significant short term financial interest).

In the midst of the current crisis, much has been said about protecting the shield — yeah, the one to the right. As Mike Lupica wrote for the Daily News:

“We all get why these guys protect ‘the shield’ at all costs. But if that shield can’t properly protect its own players, or the women in their lives — or the children — what does it stand for, really?”

Kent Hollenbeck of The Holmes Report has offered some sensible advice:

“[I]f the NFL wants to bring any measure of authenticity back to itself – they could begin by stopping their self-inflicted harm of the shield, and begin repairing it. “

At the risk of piling on to the monumental opportunities in reputation-rebuilding for the NFL to consider, I’m thinking it is long past due to extend beyond the NFL’s forced focus on physical harm to include a focus on psychological harm too, starting with the harm the league perpetuates against Native Americans.

How much longer before the league takes responsibility for its ongoing use and protection of a racial slur as the name for the NFL franchise located in our nation’s capital? Did Mr. Snyder ever read and take to heart, “Enough — An Open Letter to Dan Snyder,” by David Zirin of Grantland?

Apparently not, but the league can and should take action before the USPTO’s decision to revoke the R-word federal registrations becomes final, and before its failure to act on this issue is more widely ridiculed.

The Daily Show’s piece entitled “The Redskins Name — Catching Racism,” was brilliant in highlighting the ridiculousness of Snyder’s steadfast refusal to face the facts while he clings to the past. Perhaps the Jon Stewart and Jason Jones piece and other recent comedic pieces like South Park’s “Go Fund Yourself” will help to inform those who still don’t get it — and to help shrink the sad disconnect among those who recognize the inappropriate nature of the R-word yet don’t want the team to change its name.

Seth Godin’s blog post from yesterday could be applied to the NFL’s current crisis, it seems to me: Failure “is almost always the result of missed opportunities, a series of bad choices and the rust that comes from things gradually getting worse. Things don’t usually explode. They melt.”

So, will the NFL use the present crisis as an opportunity to drop kick or simply retire the R-word?

Or, will it continue to measure short term profits while it watches the shield continue to melt?

When it Feels Like “Look For” Advertising, How About a Little Follow-through?

Posted in Advertising, Almost Advice, Articles, Branding, Food, Look-For Ads, Marketing, Non-Traditional Trademarks, Sight, Trademarks

As we head into the weekend, I thought I’d leave you with a Culver’s ad that feels like “look for” advertising:

We’ve spilled a lot of digital ink on the topic of how “look for” advertising greatly enhances a brand owner’s ability to federally register non-traditional trademarks.

Now, if Culver’s would only follow-through and seek federal registration for the color blue, at least on its aprons.

You Can McDo It, But You Might Get McSued.

Posted in Famous Marks, Infringement, Trademarks, TTAB

Shares in McDonald’s jumped surprisingly high earlier this week, causing some to wonder whether any notable investors might be involved, possibly with inside information. Or maybe it was somebody hoping to get an inside track on McDonald’s Monopoly game, which began yesterday (do the stock certificates come with as many peel-off game pieces as a super sized soda?). Or maybe, just maybe, it had something to do with the Trademark Trial and Appeal Board (the Board)’s impending decision in the McDonald’s v. McSweet opposition. Has the NFL become so dysfunctional that bookies have turned to taking odds on the outcome of Board proceedings?

McDonald’s opposed McSweet’s application to register its MCSWEET mark in connection with various pickled vegetables. The Board issued its decision yesterday. The issue before the Board was whether registration of MCSWEET would be likely to cause confusion or dilution with McDonald’s claimed family of MC- formative marks. Steve discussed this dispute back when oral arguments had just been scheduled. What was interesting is that McDonald’s claimed rights in numerous registered and unregistered marks, essentially arguing that, although it phased out use of various marks, that the overall effect was to create consumer recognition of any MC- formative mark as being associated with McDonald’s, at least in connection with food products. Steve wondered whether the Board would give any credence to McDonald’s MC- family of “fluid trademarks.”

Unfortunately, the Board didn’t venture into such interesting areas. Instead, the Board relied only on the MC- marks that are currently in use to find that McDonald’s owned a family of MC- formative marks. In reality, the legal issues in the case aren’t that entirely interesting. But wow. The decision certainly provides a ton of great trivia about McDonald’s history. For example, did you know that, at some point in time, McDonald’s has sold food under all of the following marks: MCPIZZA, MCCHILI, MCD.L.T., MCCOLA, MCCOOKIE, MCBURGER SUPREME, and more?

The decision even offers more than just the unbelievably strange notion that McDonald’s used to sell pizza (PIZZA!). In an effort to prove that consumers associate MC- formative marks with McDonald’s, the company relied upon a number of advertising campaigns to show their efforts to reinforce this association. The decision references what appeared to be a terrible 80s attempted-rap used in a commercial.

Proving yet again that the internet is truly the most amazing thing ever, containing so much of the most unimportant things ever, 30 seconds later I was enjoying this gem:

So it wasn’t a rap song, but still pretty terrible though (and come on, no way that’s a camera. That’s the size of a laptop…).

Back to the decision though. McSweet counterclaimed to cancel the registrations for MCPIZZA, and the other marks referenced above, based on abandonment. McDonald’s voluntarily surrendered them. But unfortunately for McSweet, the Board still found MCSWEET likely to create both a likelihood of confusion and dilution with the McDonald’s family of marks that were still in use. Thus, the Board sustained the opposition.

Although the decision doesn’t break any new legal ground, it provides a comprehensive outline as to why Board decisions should not be granted preclusive effect in infringement litigation (Just in case RBG or Alito are reading…). Among the arguments rejected by the Board:

  • McDonald’s products are only sold in restaurants! (no channel of trade limitations set forth in the identification of goods, so the Board presumes all normal channels)
  • We sell expensive gourmet products! (no class of consumer restrictions set forth in the identification of goods, so the Board presumes all classes of consumers)
  • Nobody would confuse the products based on the trade dress! (the application is for a standard character mark and not limited to any particular trade dress)

All of these factors would have been considered by a district court in an infringement analysis. And the trade dress claim in particular may have carried substantial weight (No golden arches, no red and yellow on the packaging, etc.). McSweet had a number of arguments that it was literally precluded from making in front of the Board because of the limited nature of the proceedings (not exactly a full and fair opportunity to litigate…). It’s a bit like going to McDonald’s and being told that they’re out of everything but the filet o fish. Yeah, technically you had an opportunity to eat, but did you really?

Here’s to hoping the Supreme Court does the right thing in B&B hardware. If not, it won’t be long until plaintiffs take their favorable Board decisions to district court to super size their successful oppositions into full fledged awards of damages and attorneys fees.

3 Really Is the Magic Number

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

- Mark Prus, Principal, NameFlash

Schoolhouse Rock fans already know this, but it took a January 2014 publication in the Journal of Marketing for marketers to get confirmation.

I blogged about Procter & Gamble’s “Secret of the Number 7” a few years ago on DuetsBlog, and later observed that their “magic number” had dropped to 5.

Well now there is scientific evidence that the actual magic number is 3.

The publication was titled: “When Three Charms but Four Alarms: Identifying the Optimal Number of Claims in Persuasion Settings”. The authors Suzanne B. Shu & Kurt A. Carlson conducted a study where consumers were shown messaging that consisted of one, two, three, four, five and six positive claims about a product such as shampoo or a breakfast cereal or even a politician.

For example, in the case of the “six claim” breakfast cereal situation, participants were told:

“Imagine that you are shopping at the grocery store and you notice that a brand of cereal you sometimes buy has a new package design. As you look closer you discover that they have also changed the product itself. The packaging says that it is now:

“Healthier, better tasting, crunchier, sweeter, organic, and with higher quality ingredients.”

After the participants saw the messaging, the researchers measured the attitude of each respondent to gather positive or negative impressions. They also measured the amount of skepticism the respondent had about whether the messaging was intended to inform them or to push them to choose a particular product.

The results clearly demonstrated that those who read three claims rated all of the subjects of the ads (e.g., breakfast cereal or politician) significantly more positively than respondents who had read the ads with one, two, four, five or six positive claims. The results seemed to indicate that adding additional positive claims increased appeal until the third claim, but after the third positive claim, additional claims increased skepticism which in turn lowered the overall level of persuasion.

So 3 really is the “Magic Number,” at least when it comes to adding positive claims to your advertising!

Coca-Cola’s Significant Interest in Zero Marks

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

Coca-Cola just announced it is introducing Coke Zero in India, which will make it the sub-brand’s 149th market in the world, a truly remarkable reach.

As the popular Coke Zero brand is approaching its tenth anniversary in the U.S., it seems like a good time to explore Coca-Cola’s trademark position in COKE ZERO and COCA-COLA ZERO here in the U.S., especially given the news last week that the beverage giant escaped a trademark infringement suit over the marks in the Northern District of Illinois.

After looking into that case, I was surprised to see, as long as Coke Zero has been on the market  — none of the ZERO marks sought by Coca Cola have registered, all seventeen remain pending in the U.S., including COKE ZERO, COCA-COLA ZERO, SPRITE ZERO, PIBB ZERO, VAULT ZERO, and POWERADE ZERO, among others.

In fact, the series of ZERO marks has been the subject of at least two very large and significant consolidated trademark oppositions at the TTAB of the USPTO, since 2007, and the one brought by Royal Crown Company (RC) remains active — in fact, the case was fully briefed this past summer and Coca-Cola requested just last month that the Board schedule final oral argument in the case. In the Royal Crown opposition, RC contends that Coca-Cola must disclaim any exclusive rights in the term ZERO, as that term is either generic for zero calorie beverages or merely descriptive without any secondary meaning or acquired distinctiveness.

The other consolidated opposition was brought by AMBEV, back in 2007, also asserting mere descriptiveness and lack of secondary meaning, but AMBEV’s consolidated opposition was dismissed just over two years ago by the TTAB, as the Board was convinced at that time, Coca-Cola had established acquired distinctiveness in its ZERO marks based on the factual record developed in that case.

So, if ZERO marks can be owned in connection with beverages, how did Coca-Cola escape liability in the trademark infringement suit in the Northern District of Illinois last week? The plaintiff in that case had asserted exclusive common law rights in NATURALLY ZERO for spring water, but it admitted to gross sales of $150,000 between 1998 and 2004, no production or sales after 2004, and no attempt to resume sales until 2010, well after Coca-Cola had launched its ZERO series of beverage products in the U.S.

Moreover, the plaintiff there had admitted NATURALLY ZERO communicated “no calories, you know, a drink about nothing . . . .” As a result, the court granted summary judgment to Coca-Cola, ruling as a matter of law that the plaintiff’s merely descriptive mark had not acquired distinctiveness, and even if it had, the claimed NATURALLY ZERO mark had been abandoned.

Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.

Yet, it remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

Show More Value, or Lose The Sale

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

Neil F. Anderson, Founder & President, The Courage Group, Inc.

Now days, it’s tough for any business, regardless of size, to successfully compete and win new business.

The days of signing up new clients or customers with ease are long gone. The past recession, the anemic economy, the fierce competition and impact of the internet have all made it very difficult to close the sale. Now you have to fight “tooth and nail” to get more new customers.

Breaking News: The reasons really don’t matter. What matters most is generating revenue, continuing to pay the bills, grow the business and stay out of the business failure graveyard.

What will help? Three words-offer more value. Try this strategy on for size, always give people more value for their hard earned money.

Eight Offering More Value Tips

1. Do Your Homework-To win new business, by adding more value, you first need to know what the other guy is doing. That means updating or writing your business plan.

A business plan is simply a written description of what you are going to do and how you are going to do it. It is your roadmap to success.

One of the best reasons for writing a business plan is that it will force you to examine your competition. You can’t add value to your products or services until you have a strong understanding of what your competitors are offering.

Note-Check out the below entrepreneurs, who recognized the value of writing a business plan. Recognized the opportunity to add more value, based on their knowledge of the competition, then delivered it in order to win business and successfully grow the company.

* Phil Knight/Founder of Nike/Annual Revenue-$24 BB/44,000 employees

* Fred Smith/Founder of FedEx/Annual Revenue-$46BB/300,000 employees

* Jim Koch/Co-Founder/Sam Adams/Annual Revenue/$794MM/840 employees

* Jeff Bezos/Founder of Amazon.com/Annual Revenue-$74MM/132,000 employees

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Googling Doesn’t Break Google Trademark

Posted in Articles, Famous Marks, Genericide, Law Suits, Loss of Rights, Trademarks

Our friend Professor Eric Goldman, over at his Technology and Marketing Law Blog, reported earlier this week that the Google trademark has survived a genericness attack by a fellow named David Elliot. Here is a link to Mr. Elliot’s complaint filed in Arizona federal court back in May of 2012, and here was Martha’s coverage. And, here is more coverage at the time labeling the challenge as being from the “land of slightly crazy lawsuits.” And, here is the Arizona federal court’s decision rejecting the genericness challenge. There.

Mr. Elliot’s focus in attempting to take down the Google trademark was primarily directed to the common verb meaning of the word to search the internet using any search engine, but the court wasn’t moved:

“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”

The court noted that even if the third meaning was proven, the first meaning is the key meaning because the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”

Does this decision slam the door to all successful genericness challenges based on the verbing of your favorite brands? It would be a mistake to read it that broadly, in part, because the plaintiff was an individual, and the defendant was, well, Google — a brand reportedly worth more than $150 billion.

While you will recall that I have not been a nervous nellie when it comes to the risks of genericide based on the verbing of brands, if your opponent is not an individual and you’re not Google, this reading on the subject of trademark verbing and the risk of genericide is still highly useful and recommended:

Having said all that, I’m thinking the brand managers over at Rollerblade must be breathing a sigh of relief with this decision.

How concerned are you about genericide?

Executing Noriega?

Posted in Law Suits

As some of you may recall, I posted about a lawsuit Manuel Noriega brought against purveyors of the Call of Duty video game franchise arising from his depiction in the game.  In essence, I suggested that Noriega’s lawsuit was unlikely to succeed because his fame and notoriety that he accused the game of misappropriating arose from ghastly acts that he committed in connection with his dictatorship in Panama, and the law would avoid rewarding such notoriety.

By way of update, Activision and its attorneys (who include Rudy Giuliani) recently filed a motion to strike Noriega’s Complaint.  Activision relies on California’s Anti-Slapp statute and the contention that Activision’s depiction of Noriega is protected by the First Amendment.  Slapp stands for “strategic lawsuit against public participation.”  As you can guess, then, an “Anti-Slapp” statute is intended to curb practices where targets of public criticism file  lawsuits to censor, intimidate, and silence critics.

It will be interesting to see how this motion plays out.  While the brief is very well written, and while my knowledge of California Anti-Slapp motions is minimal, my initial reaction is that this just doesn’t feel like a proper case for an Anti-Slapp motion.  As set forth in California’s statute itself, the purpose of the statute is to “encourage participation by all segments of our society in vigorous public debate related to issues of public interest.”   Activision admits throughout its brief that its portrayal of Noreiga is fictionalized.  And while this might ultimately help it prevail if the case moves past the Anti-Slapp stage, I’m not sure it helps in getting this case kicked out now.

As a practical matter, it doesn’t seem to me that a party’s right to use historical characters to lend context to fictional narratives has any relation to “public debate related to issues of public interest.”  The only thing the brief really says about the public interest is “there is an obvious public interest in, among other things, the historical contexts of Panama, Central America, and other ‘hot spots’ of the late 1980′s that the game depicts, as well as in creative works about the deployment of U.S. special forces in foreign countries.”  While this statement (which was relegated to a footnote) may be true, I don’t understand how an admitted fictionalization of these historical contexts supports vigorous public debate.

Its very possible that the Court will just want to get rid of this case early, and this gives it an opportunity to do so. I would not, however, consider this motion a slam dunk.