Duets Blog : Creativity and the Law: DuetsBlog

The Los Angeles Times reported last week on an interesting nugget – the Missile Defense Agency’s new logo sports a blue O, a red-and-white swooping swirl, and white outlining to set the image off from a blue background. 

The logo looks like this:

Remind you of anything? Say, this:

The LA Times article remarks upon a “perceived similarity” between the two. However, I submit that what is more interesting than this “perceived similarity,” is what the blogosphere is discussing as the perceived message behind the MDA’s new logo. An official at the MDA, Richard Lehner, states that “[t]he symbolism of the design is that it shows missile defense as a global system to defend the US, our deployed forces and allies and friends, as depicted by the path of an interceptor missile and a flash (not a star) denoting a missile intercept.”

The Washington Post, on the other hand, asks “Is the Missile Defense Agency's logo Obama-meets-Islam?”, pointing out that “conservatives’ charges that a logo being used by the Pentagon’s Missile Defense Agency looks very much like a fusion of the Muslim crescent moon and star and the Obama campaign logo. Some folks even detected a similarity to the Iranian Space Agency logo.”

What I find most interesting is that, according to Mr. Lehner, the MDA began using the logo to its materials three years ago to save costs over using its previous logo. I couldn’t find any information on when the Obama logo debuted, but I’m wondering whether the blogosphere has considered the possibility that it is the Obama logo that is newer than the MDA logo. 

What do you think?

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A few months ago, my colleague Karen Brennan blogged about the Sci-Fi Channel’s name change to SyFy and removal of its Saturn logo. As Karen explained, part of the reason Sci-Fi/SyFy company heads wanted to change the name was to update the brand to appeal to a wider audience. 

Now MTV is “changing” its logo as well. To what, you ask? MTV. MTV? MTV. 

MTV isn’t changing the hefty, 3-D “M” or the graffiti-esque “TV.” MTV is simply doing away with the tagline “Music Television.” 

Rolling Stone is calling it “a move that signifies the end of an era”, while the LA Times reports that “[f]or its part, MTV says viewers had moved beyond what the old logo said. ‘The people who watch it today, they don't refer to MTV as music television.’” 

Rather than a move to expand its audience, however, MTV’s logo change comes across as a bit of coming clean – I was five when MTV debuted and spent most of my single digits pestering my parents so that they would install cable so I could watch it, and I don’t ever recall calling MTV “music television.” The on-line petition to convince MTV to change its name supports my theory, at least in part. 

And besides, as my post last week indicated, we all know what MTV is really known for now.

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At the risk of giving the readers of this blog the wrong impression about my tastes in entertainment, I have to mention the MTV show Jersey Shore. In just a few months, this reality television series about a group of proud New Jerseyans (or Jersyeites?) living at a beach house in the Garden State has partied, squabbled and otherwise worked itself in to the hearts of millions of viewers. The cast of memorable “characters” includes Mike “The Situation,” Jenni "J-WOWW," and Nicole “Snooki,” among others.

With monikers like those and their rapid rise to fame – their salaries have risen from a purported hundreds of dollars per episode to $10,000 dollars per episode - it was only a matter of time before one of them sought to protect the names that many Americans can recognize in an instant. Indeed, the New York Times reports that both Snooki and The Situation are seeking trademark protection for their names.

However, parties cannot seek trademark protection simply for their names. Trademark protection is extended to the use of a name or designation in connection with goods and services. Many celebrities file applications for the services that they provide as a natural result of being famous and on television – entertainment services. Snooki has done this, filing

an application for “entertainment in the nature of personal appearances by a television personality” with the addition of “printed matter, namely, books.”

But Mike “The Situation” does not appear to have filed for these services yet. Instead, the USPTO database reveals four recently filed, pending applications for THE SITUATION – all by different owners, none of whom are an individual named Mike – including “clothing for domestic pets, dog apparel,” “eau de toilette,” “clothing, namely t-shirts and underwear,” and other types of clothing too numerous to list here. Given the range of subjects covered by the characters of Jersey Shore, none of these goods seems implausible – only time will tell if The Situation will live on in American popular culture as an entertainer, a purveyor of doggie duds, or a clothing label.

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Thinking about filing a trademark opposition against a competitor’s pending trademark application? Thinking about filing a civil suit against a competitor’s corresponding trademark use? Often, upon the filing of a civil trademark suit and a request to the Trademark Trial and Appeal Board (“TTAB”), the TTAB will suspend the opposition pending the disposition of the civil suit. Generally, the expectation is that the civil suit will wrap up within a few years, sometimes rendering the subject of the opposition proceeding moot.

But from time to time it is possible for a civil suit to linger – causing its corresponding TTAB action to do the same. The most notorious of such cases (at present) is United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. The cancellation proceeding was filed in 1982 and suspending in 1984 pending the outcome of a corresponding civil action in the United States District Court for the District of Maryland. The lawsuit was administratively closed by the court in order to allow “the parties the opportunity to resolve their differences.” If my calculations are right, the parties have provided the TTAB with at least 10 status reports since suspending the action corresponding to the TTAB’s inquiries into the civil suit every two or three years over the past 25 years or so.

The petitioner’s most recent filing indicates that the civil suit remained administratively closed as of December 2009 and that the parties were engaged in settlement talks. The United Black Fund has used its mark in connection with fundraising activities since 1969, while the Black United Fund has done so since 1977. Both continue to offer those same services today, as seen here and here, presumably without any settlement regarding how the parties may use their marks. It would seem that this 28-year-long saga has played itself out, but only time will tell.

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A few weeks ago, the Federal Circuit Court of Appeals issued its decision in The University of South Carolina v. the University of Southern California in South Carolina’s appeal from the Trademark Trial and Appeal Board (“TTAB”).  The Federal Circuit affirmed the TTAB’s finding that consumers are likely to be confused by South Carolina’s use of this design on clothing:



And Southern California’s use of this design on clothing:



I’ve written before about the lucrative field of collegiate sports merchandising.  Given the millions of dollars at stake, it’s therefore no surprise that these universities have spent thousands upon thousands of dollars taking this case to the Court of Appeals; it’s also no surprise that South Carolina is considering an appeal to the Supreme Court.  

In reaching its decision, the Federal Circuit considered many of the usual arguments – such as the parties respective channels of trade (found to be similar), the conditions under which consumers would purchase the parties’ respective merchandise (found to be similar), and the parties’ simultaneous use of their marks in commerce without confusion (found to be insignificant).  In fleshing out this argument, the Court noted a number points that would seem to work against a finding of likely confusion: the schools are located on opposite sides of the country, many collegiate sports fans are sophisticated when it comes to recognizing their teams, and no instance of actual confusion has been reported.  Moreover, South Carolina presented evidence that at least sixteen other universities and colleges represent themselves as SC, indicating that college students and sports fans are sufficiently knowledgeable to recognize their desired school.  (Notably, the parties were able to come to an agreement regarding concurrent use of the mark USC in connection with education services, with Southern California taking Washington, Oregon, California, Nevada, Idaho, Arizona, Utah, Colorado, Wyoming, Montana, New Mexico, Texas, North Dakota, South Dakota, Nebraska, Kansas, Oklahoma, Minnesota, Iowa, Missouri, Massachusetts, Illinois, and Hawaii and South Carolina taking Wisconsin, Mississippi, Indiana, Kentucky, Tennessee, Alabama, Georgia, South Carolina, North Carolina, Virginia, West Virginia, Ohio, Pennsylvania, Maryland, New York, Arkansas, Louisiana, Connecticut, Maine, Vermont, New Hampshire, New Jersey, Florida, Rhode Island, Delaware, the District of Columbia and, interestingly, Alaska).

Nevertheless, the Court upheld the TTAB’s finding that, as the disputed marks are “legally identical,” there is a likelihood of consumer confusion among them.  As a result, South Carolina’s application to register its design mark has been refused.  While this decision does not prevent South Carolina from using its design mark in connection with merchandise, it does deprive South Carolina of the benefits of registration – including the ability to enforce infringing use of its own mark nationwide.  

In a nice article on this matter, the Los Angeles Times has queried, “Would a reasonable person confuse a USC logo on a garnet-and-black ball cap in Columbia, S.C., with the same letters on cardinal-and-gold sportswear worn by a Trojans fan at the Coliseum?”

What do you think?

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Times. Garamond. Arial. Copperplate. Chances are that if you are reading this, you not only know what the four terms preceding this sentence mean; you probably use them throughout your daily life.

I’m talking about fonts. In the branding world, fonts add more than a little something extra to the words of an advertisement, a title, or copy, communicating to viewers something more than that which words, pictures and layout can express on their own.  

The mixture of hard angles and titled edges of the font used in the “Star Trek” title evoke what we imagine to be the future:

The classic, familiar edges of Times New Roman make reading most documents, and just about any newspaper with the words “Times” in the title, easy to read:

Fonts are clearly integral to branding and advertising. But how can they be protected? 

Trademark law requires a symbol to identify a source of goods and services. A font is, by definition, a size and style of type; thus, the most that trademark law can offer is to protect the names of fonts (e.g., Palatino, Lucida). Thus, while the public may not infringe a font creator’s rights by using a font, unscrupulous font designers should not be able to sell or license fonts under the names of previously established fonts.

Although some Western countries protect typefaces through copyright law, U.S. law currently does not offer such protection to fonts. Of course, the technology used to create a font, such as computer software, may be protectable under copyright. 

Typeface designs may, however, be protected by design patents, provided that the font meets the requirements for a patentable design. 

For this reason, a license may be necessary in order to use a font in connection with your commercial branding activities.

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Reuters reported last week that Conagra Foods, maker of Swiss Miss hot cocoa, has sued Dean Foods over its use of the term “Swiss” in connection with teas. Specifically, the suit takes issue with Dean Foods’ new design mark for its Swiss Premium Teas, which incorporates a white font for the term “SWISS” and  a picture of snow-capped mountains on a blue background, which Conagra argues are similar to its SWISS MISS marks, which also incorporate the same features.

Here are the marks on their product packaging:   

                                                                               

Dean Foods could try to argue that its use of snow-capped mountains is descriptive for SWISS – after all, what small child isn’t aware after her first trip to the Magic Kingdom that the snow-capped Matterhorn is one of the natural jewels of the Swiss Alps? As for the lettering, however, Dean Foods may have to get more creative to argue that its font style and background are commonly used to evoke Swiss-themed products.   My extremely unscientific search of Google Images revealed that the term “Swiss,” as used in connection with food products, is most often used in white and red, no doubt evoking the country’s recognizable coat of arms:

Further, as courts are directed to evaluate composite trademarks for infringement as unitary marks – that is, fonts, pictures, words, and other elements together, as they are seen by the consumer – Dean may not get much mileage out of its use of the arguably descriptive snow-capped mountains.

What do you think?

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The Associated Press reported last week that adult entertainment pioneer Larry Flynt, the creator of the famous, and infamous, Hustler Magazine, scored a victory in his trademark infringement suit against his estranged nephews, who are also in the family business.  The nephews, Jimmy Flynt, Jr. and Justin Flynt, launched their business after their uncle fired them from Larry Flynt Publications.  The mark at issue?  FLYNT.  Simply put, the court found that the nephews’ use of FLYNT – regardless of the fact that it is their own last name – creates a suggestion of sponsorship or endorsement by the elder Flynt.  “No one wins in this thing,” said one of the nephews, “It’s sad that the family is in this dispute, but we felt strongly that we should be allowed to use our name in our business.”

This case underscores a point that is all too familiar to many trademark attorneys – trademark-related conflicts that may arise among family members when the family business becomes successful.  In many conflicts, a grandparent or parent starts a business – using the family name as a trademark – and toils to make it successful, only to pass the business on to multiple children who proceed to have differences of opinion, split the business, and commence to fight about who has the right to use the family name as a trademark and take advantage of years and years of goodwill in their own last name. 

In most cases, the selection of an inherently distinctive mark – or exploitation of a personal name that is not related to the family – will often prevent this problem.  The Flynt case, however, adds a wrinkle to this approach; Larry Flynt did use an inherently distinctive mark, HUSTLER, in connection with his goods and services and, of course, Larry Flynt didn’t pass his business on to his nephews – he simply fired them because he “felt they were doing a horrible job.”  Under these circumstances, it’s possible that the suit could have been prevented by following different employee termination procedures.  In terms of preventing his nephews from using their own last name in connection with their business, however, and as with many successful family businesses, it appears that court was the only place for these parties to go.

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Lest you think this post is just an excuse to post the ridiculously viral video of The Muppets singing Queen’s “Bohemian Rhapsody,” guess again.  There is a trademark lesson here.  


Do I still have your attention?  The lesson is this – you, the consumer, don’t need to know what the source of a good or service is for that good or service’s mark to function as a mark.  All that matters is that mark is capable of signifying a single source, regardless of whether any consumers know what that single source is.

Case in point – when I saw this video, I thought of the late, great Jim Henson, who passed away from complications of pneumonia in 1990.  But there’s the rub – Mr. Henson hasn’t had a hand in The Muppets since his death (pun intended).  As much as I love The Muppets, I couldn’t for the life of me remember who – or what – is the source of The Muppets.  A bit of searching, and the answer was clear: the owner of The Muppets (and the MUPPETS family of trademark registrations) is the Muppets Studio, LLC (The Walt Disney Company).  In contrast, the JIM HENSON portfolio of marks is owned by the Jim Henson Company, which I believe is unaffiliated with Disney.  The fact that I still think of Jim Henson when Animal cries “Mama!” is irrelevant for the purposes of trademark law.  In the end all that matters is that the source of goods and services featuring Animal – whatever he happens to be crying – is the same source of goods and services featuring Miss Piggy, Fozze the Bear, Kermit the Frog, and the rest of The Muppets.

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[Spoiler alert – this post is about the season finale of Mad Men. If you haven’t watched it, please skip this post (never fear, you can revisit it in the archives once you’ve watched the episode)]. 

In the season finale of Mad Men, the best show on television, the executives of the fictional Sterling Cooper advertising agency stage a mutiny upon learning that Putnam Powell and Lowe, the British agency that purchased Sterling Cooper only a year ago, is now selling Sterling Cooper to McCann-Ericson. Taking the proverbial bull by the horns, the team works all weekend to secure clients, ensure the confidence and loyalty of the top creative and account management talent, and a hotel room at The Pierre from which to launch their new empire.

The name of their new agency? Sterling Cooper Draper Price. Short, crisp, to the point and accurate, as it reflects the names of the main players in the new partnership forged in the dark of night – Sterling Cooper founders Burt Cooper and, by way of inheritance, Roger Sterling, creative director Don Draper, and CFO Lane Price. 

But is it legal? Probably not.

The reason, simply put, is that Powell Putnam and Lowe, the current owner of Sterling Cooper, likely assumed ownership of the rights of the STERLING COOPER trademark when it purchased the company. Similarly, as McCann-Erickson has purchased the entirety of Powell Putman and Lowe, it likely assumed ownership of those rights as well. 

But what about the fact that Sterling Cooper Draper Price is made up of Msgrs. Sterling, Cooper, Draper and Price? Can’t they use their own names to identify their own agency?  The answer is no, not unless Sterling Cooper Draper Price purchases back the rights to STERLING COOPER, or McCann-Erickson abandons the mark altogether by subsuming the old Sterling Cooper under the banner of McCann-Erickson, which, notably, Powell Putnam and Lowe did not do, in large part because of its sterling reputation (pun intended!).

Will McCann-Erikson sue Sterling Cooper Draper Price for trademark infringement?  Stay tuned over the long haul – we have nine months until Season 4 begins.

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