Duets Blog : Creativity and the Law: DuetsBlog

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:

The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen -- and on that basis alone -- concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:

Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).

I respectfully submit that these kinds of determinations -- especially since they are admittedly and "necessarily subjective" -- are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).

Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?

Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant's product by the claimed trademark, given what actually appears on the specimen.

In other words, how might consumers request applicant's sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:

1. The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
2. They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
3. They form the dominant portion of the label since the design elements can't be spoken;
4. The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
5. There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
6. Consumers familiar with applicant's products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
7. Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

There was a very interesting article in the New York Times this weekend worth reading - Best Soup Ever?  Suits Over Ads Now Seek Proof.

The article addresses several recent issues raised by companies against competitors over statements or claims being made in advertisements.  Specifically, companies are challenging the truth or implied truth in competitive ads in an attempt to get the ad withdrawn or changed.

Apparently, the number of complaints over advertisements with the National Advertising Division, as well as the number of false advertising lawsuits (under Section 43(a) of the Lanham Act) are up significantly.  Some interesting disputes from the article include:  

• AT&T sued Verizon Wireless over an ad chart, claiming it falsely implied that AT&T had no cell phone coverage in the white area (rather than no 3G coverage):

The lawsuit attacks use of the chart in several commercials.  One great example, is Verizon's Island of Misfit Toys commercial.  In this holiday commercial, out-of-date toys have been banished to an island where Verizon sends one of AT&T’s new phones, due to its allegedly inadequate coverage.  On a related note, the National Advertising Division recently recommended that Sprint discontinue its use of the claim "Most Dependable 3G Network" due to a lack of sufficient support for the claim. 

• Pantene attacked Dove’s claims that its conditioner repairs hair better.  According to the Times, Dove defended its claims with a market study and an expert to defend its use of “wet combing” versus “dry combing” technique.   Based upon a quick review of a few blogs, these two companies are in direct competition over solving the frizzies (for examples, see here and here). 

The Times article suggested defending such claims sometimes requires “delving into the minutiae” and raises the question of whether most consumers actually believe and/or rely on statements such as “no other dog food stacks up” or a hair care product that can really “repair hair better.”  Regardless, it is a great article for anyone interesting in marketing. 

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Viking fans will recall the famous Purple People Eaters from the late 1960s through the late 1970s. The nickname arose for the defensive line of the Vikings from their purple jerseys and the popular Sheb Wooley song bearing that name. Although they went to four Super Bowls (unfortunately, not taking home a Super Bowl ring), the Purple People Eaters did not receive the astronomical, multi-million dollar, contracts received by the Pro Bowl players today. Accordingly, the retired players rely upon the use of their names, images, and likenesses on paraphernalia, sports bars, and other businesses to make money.

To protect their valuable trademarks in their names, images and likenesses, Purple People Eater Jim Marshall, along with five other retired National Football League (“NFL”) players, filed a class action lawsuit against the NFL to recover for their injuries as a result of the NFL’s unauthorized use of their identities to promote the NFL, sell NFL-related products and otherwise generate revenue for the NFL.  They have brought claims for false endorsement under the Lanham Act and various state law claims. The lawsuit was filed in the United States District Court for the District of Minnesota.

Their Amended Complaint alleges that “by commercializing the names, images and likenesses of its players, both active and retired, the NFL has become one of the largest entertainment conglomerates on the planet, raking in an estimated $6.9 billion in 2008 alone.” In contrast, the “now-retired NFL players, as a group, suffer severe physical maladies and disabilities as a result of the sacrifices they made to make the NFL what it is today.”  One example identified in the Amended Complaint was that safety Toby Wright sought to use his name, likeness and identity as an NFL player to promote two businesses, one a sports bar and the other a training facility. In response, the NFL informed him that he would have to pay the NFL $100,000 to use his own identity. Because he did not have the funds, the safety was effectively “blocked” from using his own identity. 

Only time will tell if Minnesota Supreme Court Justice Alan Page, who is also a Purple People Eater, will join the class action and whether the Purple People Eater Jim Marshall and the other retired players can beat the NFL off the football field.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

More than a few trademark types cringe when their clients or others say things like "let's trademark it," "they didn't trademark their logo," or "we don't want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “'Trademark' is not a verb. There is no such thing as 'trademarking' a word or phrase." Similar views are expressed here, here, and here.

Perhaps any cringing may result from the fact that the Lanham Act -- the federal trademark statute -- defines the word "trademark" as a noun, not a verb or adjective:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof --

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Section 45 of Lanham Act, 15 U.S.C. 1127.

Turns out though, the words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; 'trademarked goods'".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

v.              

                        (Medline Sterillium Rub)                                          (3M Avagard Surgical Scrub)

In a very recent false advertising lawsuit, Medline Industries is all lathered up, alleging that 3M Company is playing dirty in the surgical hand antiseptic marketplace by making false and misleading statements in advertising about 3M's Avagard brand surgical scrub and Medline's competing Sterillium Rub brand surgical hand antiseptic.

Here is a copy of the complaint filed in U.S. District Court for the Northern District of Ohio. As you will see, Medline alleges that 3M has made the following false and/or misleading statements of fact in advertising, in violation of Section 43(a)(1)(B) of the Lanham Act:

1. Sterillium Rub lacks approvals and/or benefits that it should have;
2. Sterillium Rub is of a lesser standard, quality, or grade than what it is;
3. Sterillium Rub does not meet FDA scrub test criteria;
4. Sterillium Rub does not meet AORN recommendations;
5. Sterillium Rub does not meet persistency requirements of the FDA;
6. Sterillium Rub cannot meet FDA criteria for persistency or cumulative activity; and
7. Avagard is the only waterless, brushless hand antiseptic that meets FDA persistency requirements. 

Paragraph 31 of Medline's false advertising complaint appears to be the most personally and potentially infectious:

During deposition testimony given in the related litigation styled GoJo Industries, Inc. v. 3M Company, United States District Court for the Northern District of Ohio, Eastern Division, Case No. 5:09-cv-1251-DDD, [the] Regulatory Affairs Manager in the Infection Prevention Division of 3M, admitted that statements contained in the marketing literature disseminated by 3M in which 3M compares Avagard to other surgical antiseptic hand scrub products, including Sterillium Rub, misrepresented the FDA scrub test criteria for surgical antiseptic hand scrubs. [She] confirmed this deposition testimony in her testimony before the Court at the preliminary injunction hearing during which the Court characterized her efforts to explain this testimony away as not at all persuasive (citations omitted).

Not only has Medline sued 3M for this alleged unlawful conduct, but it also has taken its claims directly to health care professionals and the surgical hand antiseptic marketplace, commencing a comparative advertising campaign of its own. Presumably, 3M will be closely scrubbing each of the literal and implied claims set forth in this advertising brochure distributed by Medline and BODE Chemie GmbH & Co.

So, stay tuned for developments concerning this interesting federal false advertising case.

Hopefully, we'll eventually be able to learn who comes to court with clean hands. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

This unsolicited e-mail communication from the Caribbean Island of Nevis got trapped in our spam filter, but I thought I'd remove the link and bring it out under a short leash for some legal training and discussion:

Trademark fair use, you ask?

• Email This
• Print
• Comments (6)
• Trackbacks
• Share Link

I, like most women, want a present in a little blue box from Tiffany & Company (a/k/a Tiffany & Co.) This is not just because the company bears my name (I only wish I were an owner of the company), but because Tiffany & Co.’s exquisite jewelry is associated with the fabulous blue box.  Tiffany & Co. has been around for over 170 years. The mystique of Tiffany & Co. was enhanced by the movie “Breakfast at Tiffany’s” starring the beloved Audrey Hepburn. To protect this long-established brand and trademark that epitomizes luxury and attentive customer service, Tiffany & Co. took to the courts to obtain protection from Internet sales of counterfeits.  

eBay has become a hotbed for counterfeit sales of many high-end products. To assess the impact of this practice, Tiffany & Co. embarked on two buying programs where it bought products that had been represented to be authentic Tiffany & Co. merchandise on eBay. The overwhelming majority of these purchases, as much as seventy-five percent, were fakes. 

To combat this trademark infringement and dilution, Tiffany & Co. sued eBay in 2004 alleging that eBay had facilitated and allowed these fake or counterfeit items to be sold on its website (bringing six causes of action, including various trademark infringement, dilution and false advertising claims under the Lanham Act). Last month, a New York District Court found that Tiffany & Co.—not eBay—was responsible for protecting its brand and trademark on the auction site. In other words, eBay is not responsible for keeping its users from selling fake jewelry with the Tiffany & Co. name. eBay is only required to take appropriate action when it receives notice of the infringement, presumably from Tiffany & Co. Not surprisingly, Tiffany & Co. has appealed this decision to the United States Court of Appeals for the Second Circuit. 

Does this decision ignore an important tenet of the Lanham Act—that it is supposed to protect consumers and trademark owners? Should eBay and other sites such as Amazon.com have independent obligations not to contribute to trademark infringement (i.e., policing their websites)? 

Several other high-end companies have sued eBay in Europe and have fared much better than Tiffany & Co. did in the United States.   A French judge ordered eBay to pay 40 million euros (in light of the current low value of the United States dollar, this would translate to $63.2 million) to LVMH Moёt Hennessy Louis Vuitton over charges of selling fakes. Similarly, the German courts held that eBay must employ preventative measures against the sale of fake Rolex watches.  Unless the Second Circuit overturns the New York District Court’s decision, consumers and trademark owners will receive more protection in Europe than in the United States. Should American courts be more friendly to trademark owners?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

This past Thursday, John Hughes—the mind that created every slumber party-worthy movie of my youth—passed away from a heart attack. Whenever I hear John Hughes’ name, my mind, taking some sort of odd word-association trip, automatically shifts to “The Breakfast Club,” which then makes me think of the Simple Minds song “Don’t You Forget About Me” (the anthem of the movie), which then makes me think of the lead singer of Simple Minds, whose name I can’t remember but who I’m convinced has red hair…

In short, the consumer associations I have with John Hughes—and with the film “The Breakfast Club” specifically—are particularly strong, meaningful and positive. I would venture to say that, given the sheer number of pages devoted to quotes from John Hughes’ movies, I’m not alone in these associations. At the heart of trademark protection is the goal of protecting consumer associations—or “goodwill”—which is so precious to businesses building their brands. While a movie title such as “The Breakfast Club” is not technically a brand under which John Hughes technically sold goods and services, that movie, along with numerous others in his repertoire, collectively showcase John Hughes’ “brand” of narrative, wit, juvenile humor, and outlook on Gen-X adolescence. 

And yet, titles of works such as “The Breakfast Club” are not protected by trademark law. The Lanham Act prohibits the registration of a title, or portion of a title, or a single creative work, because, according to the Lanham Act, a single title can’t function as a source-identifier.   See 15 U.S.C. §§1051, 1052 and 1127. However, a title used in a series, such as HARRY POTTER, is considered capable of acting as a source-identifier and may therefore achieve a trademark registration.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

There is no question that attempting to own "hot" or versions of "hot" appears to have great value and importance in the marketing world. So, how many original, unique, and memorable ways are there to communicate spicy "hot" anyway?

As to memorable, perhaps painfully memorable, Paris Hilton apparently sells designer clothes under her "That's Hot" brand, and judging from her pending federal trademark filings, she still has an intention of expanding her "That's Hot" brand to cell phones and alcoholic beverages, among other items, but apparently not buffalo chicken wing sauce or potato chips, thankfully.

Otherwise, it really might distract from a recent pair of trademark food fights in Minneapolis, both involving chips claiming to be "hot" too. You may recall the "Red Hot" Chip Fight between Barrel O'Fun and Old Vienna discussed here, that was quickly bagged here.

So, here are the current contenders in the most recent "Blazin' Hot" trademark food fight:

   Vs.   

A copy of the Buffalo Wild Wings trademark infringement complaint against P&G and Pringles is here.

The most interesting aspect of the complaint, from a trademark strategy perspective, is the fact that Buffalo Wild Wings did not bring a claim for infringement of a federally-registered trademark (Section 32 of the Lanham Act). Instead, it only relies on Section 43 of the Lanham Act (designed to protect unregistered trademarks) and a pair of Minnesota state law causes of action, even though it refers to owning some federal trademark and service mark registrations for and containing the term BLAZIN'. Perhaps Buffalo Wild Wings is attempting to insulate them from attack or challenge by P&G, since none is five years old yet or incontestable. Stay tuned to learn whether P&G turns up the heat on this dispute and counterclaims for cancellation anyway.

Now, as to the "original and unique" point raised above, it is worth asking, who else appears to have a stake in "Blazin" hot trademarks for food products? Uh, let's just say, more than a few . . . .

• Email This
• Print
• Comments (5)
• Trackbacks
• Share Link