Civil War II: North (Face) vs. South (Butt)

Posted on December 24, 2009 by Brent Lorentz

If you've been paying attention on the trademark litigation front, you may have heard that The North Face recently brought a lawsuit against a freshman at the University of Missouri, Jimmy Winkelman, who has been selling clothing under the name The South Butt.  Aside from the obvious trademark question of whether the consuming public is, as Jimmy's attorney stated, "insightful enough to know the difference between a face and a butt," there are a couple other issues (unrelated to each other) that piqued my curiosity. 

First, it appears that The North Face has included a claim for trademark dilution.  For the uninitiated, trademark dilution is a different claim which, unlike a general claim for infringement, does not require consumer confusion.  Rather, it requires the diminishing of a "famous" mark's ability to serve as an indicator of source through "tarnishing" or "blurring." A classic example of tarnishment is the case of Moseley v. V Secret Catalogue, Inc., where Victoria's Secret sued an individual, named Victor Moseley, who was operating an adult store under the name Victor's Little Secret.  The theory was that even if the consuming public would not be confused by Victor's Little Secret, it damaged Victoria's Secret because it essentially cheapened their trademark.  So too here.  Even if people can tell the difference between a face and a butt, the damage may still exist because The South Face will case people to associate The North Face with a butt.  Notably, successful claims for dilution are rare, frequently because the "famous mark" hurdle is difficult to clear and "blurring" and "tarnishing" are difficult concepts for a court to address.  To me, it's uncertain whether The North Face can meet the "famous" requirement and whether dilution could be shown.  I'd like to see how the dilution claim would play out, but I doubt we will get that chance.

Second, I can see this case turning into an absolute nightmare for The North Face from a public relations standpoint.  Apparently, little Jimmy is a college freshman who started The South Butt to help pay for school.  This has all the makings of a classic David versus Goliath story where the public perception will end up being that The North Face is just a giant greedy corporation that can't take a joke and wants to beat up on a little guy.  (The last I heard, The South Butt's revenue was hovering around $5000.)  While I'm not particularly knowledgeable about The North Face's target demographic, it seems like this wouldn't play well with a lot of them.  This brings us to a teaching point:  While diligence is important in protecting your brand, so is thoughtful contemplation about your enforcement actions.  It's important to weigh the risks of doing nothing (which can sometimes be very substantial), with the risks of engaging in very public litigation with a sympathetic adversary.  Here, I think The North Face could have taken a more thoughtful approach than suing a poor college freshman named Jimmy right in the midst of the holiday shopping season.

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Thriving In A Speeded-Up World

Posted on June 23, 2009 by Guest Blogger

Moore’s Law holds that the power of an integrated circuit will double every two years. That prediction, made in 1965 by Intel co-founder Gordon Moore, has proved remarkably durable.

The continued application of Moore’s Law has taken us in a few decades from crude transistor radios to handheld information devices packing more power than entire rooms of mainframe computers that sent the first spaceships to the moon.

And it’s unleashed an unprecedented burst of creativity, as the reach of the Internet allows people from around the globe to exchange information and build on each other’s ideas at dizzying speed.

I was reminded just how far we’ve come when I ran across a 1997 law journal article on trademarks and the Internet in the course of doing a little homework for this blog post.

The article seems impossibly quaint today, explaining the concept of linking from one website to another and using quotation marks to highlight such exotic terms as “homepage,” “hits” and Web “surfers.”

A key issue at the time, according to the authors, was cybersquatting: Internet users claiming rights to domain names that were identical to federally registered trademarks. However, they believed it had been effectively settled by recent court decisions on the topic.

The Internet has no doubt been both a great boon and a tremendous headache for trademark lawyers. On the one hand, it created an entirely new field of practice. On the other hand, I can only imagine the diligence required to regularly police the entire Web for trademark infringement.

We in marketing feel the effect of the Web constantly. Each week, it seems, brings new applications, new sites, new ways of organizing and delivering information on behalf of our clients.

I’m reminded of The Education of Henry Adams, a Pulitzer-winning memoir by the journalist, historian and descendant of two presidents. In his lifetime (1838-1918), Adams saw astonishing change, witnessing the growth of the United States from a largely Anglo-Saxon, insular and agrarian society to a multicultural industrial behemoth and world power.

Adams concluded that his classical education had left him unprepared to cope with these dynamic changes, and stressed the need for individual self-education.

We’re only beginning to see how the Internet will change our world, and anything I write today may look as quaint in a dozen years as the journal article I cited above.

Still, I’m convinced that all of us – trademark attorneys, marketers and virtually everyone else – should heed Adams’ advice.

We all need to take responsibility for our own self-education to keep up with the rapid changes around us. Stand still and you risk being left behind, wondering why nobody is interested in your stories about the latest cybersquatting case.

—John Reinan, Senior Director of Media Relations at Fast Horse
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How Hot Will This Saucy Trademark Chip Fight Be? Blazin' Hot? Now, That's Hot!

Posted on May 7, 2009 by Steve Baird

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.   buffalowings

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 . . . .

Sara Lee owns a federal registration for BLAZIN' HOT covering processed meats and meat snacks, and sandwiches, namely sausage biscuits;

Frito-Lay owns a federal registration for BLAZIN' BUFFALO & RANCH covering tortilla chips;

Pilgrim's Pride owns a federal registration for BLAZIN' WINGS covering chicken wings;

Jardine's owns a federal registration for BLAZIN' SADDLE covering hot (spicy) salsa;

International Market Brands owns a federal registration for BLAZIN RED covering red hot sauces;

Meijer owns a federal registration for MEIJER BLAZIN' BBQ SAUCE covering barbecue sauce;

Hot Stuff Foods owns a federal registration for BLAZIN' covering dry spice mix;

Jarden owns a federal registration for BLAZIN' ONION covering a seasoning kit;

Oasis Foods owns a federal registration for GRILL BLAZIN' covering barbecue sauce; and

Branding Iron Foods owns a federal registration for E.Z. EARL'S BLAZIN-HOT covering hot sauce.

So, how is it that in the prayer for relief in the complaint, Buffalo Wild Wings asks the court to enjoin P&G "from using the term BLAZIN' with the words 'buffalo,' 'wing,' or 'sauce'?

OK, I'm not THINKIN' ARBY'S, but I AM THINKIN' the scope of claimed rights in BLAZIN' is going to be an issue in this case.
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