Duets Blog : Creativity and the Law: DuetsBlog

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.

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

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

I have heard that lightning only strikes once in the same place, but apparently that is only a myth. Indeed, the number of lightning bolt logos that have "hit" the mail room, over the years, at the U.S. Trademark Office appear to provide additional evidence for disproving the popular myth.

So, what does that say, if anything, about the scope of rights associated with the non-verbal lightning bolt logos shown below, none of which are owned by the same entity, and all of which have been registered or at least approved for publication by the U.S. Trademark Office? And, how many of them do you recognize anyway?

In addition to the link for each logo that connects to the relevant trademark information at the USPTO, here is a numbered hint for each, and the answer key is below the jump:

1. golf ball brand
2. golf club brand
3. Wyeth is the owner
4. protective eye wear brand
5. professional football club is the owner
6. PulseSwitch is the owner
7. Gatorade's lightning bolt
8. the lightning bolt logo that Gatorade filed an opposition against
9. firearm trigger brand
10. an NFL team, the NFL, and the Air-force have filed extensions of time to oppose
11. semiconductor brand
12. athletic competitions at the high-school level

a.   b.      c.

d.e.f.   g.  

h.i.j.k.l.     

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

Are you shopping for a trademark? Stores spend lots of money branding their names. Accordingly, many register their store names as trademarks.   Over Thanksgiving while shopping in Turkey,  I saw the store front sign Inci®.

I thought it was unique because you do not often see the ® on a store front sign. For example, you do not see bloomingdale’s® or Neiman Marcus®.  Although I am not quite to the shopping level of Isla Fisher’s character in the movie “Confessions of a Shopaholic,” I still have never seen the Inci® store anywhere in the United States, or even on the streets of Paris or London. 

When I returned to the United States, I checked the United States Patent and Trademark Office (USPTO for short) website and found that there is an abandoned trademark for Inci in the United Statesand two live trademarks for Yeni Inci

and Inci Fatih.

According to the USPTO website, “Inci” means pearl. Although I cannot fully understand the Turkish registration website, I was able to determine that the same trademarks are owned by the same entities in the United States and Turkey. The registrations are for clothing. It is unclear, however, if this trademark owner is associated with the Inci® store that I saw in the Turkish mall.

Could the owner of the Turkish store Inci® receive protection in the United States even if it did not have a valid  registration? Possibly. The “famous marks” doctrine could provide such protection. This doctrine was born in my favorite city Paris. Article 6bis of the Paris Convention for Protection of Intellectual Property protects marks within a nation where it is well-known even though it is not actually used or registered in that nation  So, if Inci® can show that it is well-known in the United States it may receive additional protection. 

The courts are far from uniform in applying the “famous marks” doctrine. A New York court ruled in favor of Cutabaco, the company producing the favorite cigar of Cuban President Fidel Castro.  The court held that Cutabaco had a legally protectable right to COHIBA because the Cuban brand was well known among United States premium cigar smokers before the American company General Cigar resumed use of the COHIBA trademark. Accordingly, the court granted Cutabaco an injunction prohibiting General Cigar from continuing to sell cigars under the COHIBA trademark and cancelled General Cigar’s COHIBA. On the other hand, the Second Circuit refused to recognize the doctrine in connection with the famous Bukhara restaurant of New Deli. The Second Circuit explained that Congress had not incorporated the doctrine into Federal Trademark law so it would not recognize the doctrine.  

Whether Inci® or other such European stores would receive protection in the United States without registered trademarks will depend upon how famous the stores are and what court they land in. With the international nature of the economy, this is a topic that the Supreme Court will likely take up in the years to come.

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

A couple of months ago there was quite a buzz about Holiday Inn's projected $4 million annual savings by moving to a leaner and greener direction with their adoption of LED lighting on exterior signage. 

As you may recall, back in June we blogged about Holiday Inn's interesting effort to federally register a pair of non-traditional lighting trademarks, one employing a green-colored lighting scheme and the other employing a blue lighting scheme: 

We had noted it would likely take a strong showing of "look for" advertising to overcome the registration refusals initially lodged by the Trademark Office.

Instead of attempting to overcome the registration refusals, however, Holiday Inn apparently has opted for a leaner approach and cost savings on the trademark front too, settling for Supplemental Registrations, a much dimmer form of protection -- offering no legal presumptions of validity, ownership, or exclusive right to use.

About the only meaningful benefit of a Supplemental Registration for a service mark is that it blocks and prevents others from obtaining Principal Registration for confusingly similar marks. Here are the official drawings associated with those newly issued Supplemental Registrations:

In addition to amending the applications to seek registration on the Supplemental Register, Holiday Inn tweaked the description of the marks to read as follows (for the green mark):

The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark.

Perhaps Holiday Inn will be back -- with a brighter approach down the road -- to seek Principal Registration after it believes it has sufficient evidence to establish acquired distinctiveness.

Any thoughts on how long that might take?

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

What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int'l Class 12:

And, as you may recall from Dan's I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

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

There is a time and a place for the use of double negatives. The Rolling Stones made the double negative "I Can't Get No" lyrics famous in the legendary hit Satisfaction (#2 on Rolling Stone Magazine's List of the Top Songs of All Time). Pink Floyd made the double negative lyrical phrase "We Don't Need No" famous in the song Another Brick in The Wall, Part 2. With respect to song titles, what about Diana Ross' recording of the double negative Ain't No Mountain High Enough?

Despite these widely popular uses, we are all taught (at an early age, my children have confirmed) not to use no double negatives, never, ever, as they are grammatically incorrect, inappropriate, and most likely to be avoided at all cost in writing and speech. Indeed, to fix the double negative problem, we also are taught that a double negative should be removed and resolve to a single positive. So, we're told that a double negative carries the same meaning as a single positive.

Does that mean Mick Jagger and Keith Richards really meant to say, "I Can Get Satisfaction"? What about the "We Don't Need No" lyrics? Did Roger Waters really intend to communicate that "We Need Both Education and Thought Control? Did Diana Ross really mean, "There is a Mountain High Enough"? Maybe, but I don't think so. Those "positive" versions of the double negative lyrics create entirely different meanings, in my opinion, and if used, they would have put us into a collective slumber.

So, clearly, there is a creative role for double negatives in music, but how about in branding?

My question was inspired driving into work a couple of weeks ago, as I was passed by a Sara Lee delivery truck prominently displaying a double negative tag line ("Nobody Doesn't Like Sara Lee"), confirming that the guardians of the Sara Lee brand continue to believe there is a time and place for the use of double negatives in branding.

In fact, Sara Lee owns several federal trademark registrations for the "Nobody Doesn't Like Sara Lee" tag line covering a wide range of food items, including "rolls, pies, cakes, cheesecake, muffins, ice cream," "flavored mustards, sauces and mayonaises," "cheese," "bread, bagels and buns," "bakery goods," "processed meats," and "frozen prepared meat lasagna entrees."

Perhaps not surprisingly, I couldn't find any other trademark on the entire USPTO database that included both of the terms "nobody" and "doesn't." Given how unique and inherently awkward the phrase is, one might wonder whether substituting any term or other brand name for Sara Lee might avoid a likelihood of confusion with the original.

• Email This
• Print
• Comments (11)
• Trackbacks
• Share Link

Can you name the owner of this exclamation mark branding signal?

You may be surprised to learn it is federally-registered in the U.S. as a stand-alone non-verbal trademark.

You may be even more surprised to learn, it was federally-registered without a showing of secondary meaning or acquired distinctiveness, because it was viewed as an inherently distinctive non-verbal trademark.

This is no ordinary exclamation mark, however, the trademark owner claims it in a 3D appearance, does that help?

Here's another clue: In Latin American countries, the brand name associated with this particular punctuation mark is Pepitos!

Last clue: Would it help to know the goods associated with this registered trademark are chocolate chip cookies?

Answer below the jump.

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

Today, the U.S. Supreme Court declined to hear the requested appeal of Harjo v. Pro-Football, Inc., the nearly two-decade old trademark case seeking cancellation of the U.S. Trademark Registrations owned by the NFL franchise in the Nation's Capitol. In doing so, the highest Court in the land, has permitted the laches ruling to stand. Basically, permitting dismissal of the action given a perceived "unreasonable delay" by the Native American Petitioners in bringing the trademark challenge, despite clear language in the Trademark Act permitting such challenges outside the typical five year statute of limitations, and specifically indicating they can be filed "at any time."

My prior involvement in filing the case back in 1992, the victory we all enjoyed in 1999, and my admittedly rather critical coverage of the dismissal of this historic and ground-breaking case may be found here (9/17/09) and here (May 21, 2009).

Although many ironies may be highlighted from this odd conclusion to the Harjo case, certainly one of the most striking ironies is that it took far longer for this case to wind its way through our legal system than the accused delay by Mateo Romero, the youngest of the original Native American Petitioners, led by Suzan Shown Harjo.

Be that as it may, the torch has been passed to a brand new generation of Native American Petitioners, eager to have the case decided on the merits. The "new" case filed by Amanda Blackhorse and others, more than three years ago, was promptly suspended, pending the final outcome in the Harjo case. Now that the Harjo case has concluded, the Blackhorse case will proceed before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, the same admininstrative body that found in favor of Harjo's disparagement claim in 1999.

Moreover, the TTAB appears to have read the news accounts and just today issued an order, indicating that if the parties to the Blackhorse proceeding don't advise it of the status of the Harjo case within thirty days, it will automatically resume the Blackhorse proceeding and issue a new scheduling order to move the case forward, so stay tuned.

OK, here is my prediction. Some day, I don't know when, justice will prevail, and some talented branding guru will make a tidy sum re-naming and re-branding this offensive NFL franchise name that could have and should have been re-named long ago.

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

In case you're wondering, this design is a federally-registered non-verbal trademark.

The owner identified it as a "Miscellaneous Design," without further detail or description (since it predated the more rigorous rules on supplying the Trademark Office with an accurate and detailed description of the mark).

The U.S. Trademark Office assigned to this design mark Design Code 24.15.25 ("other arrows") and in some cases 26.17.09 ("bands, curved; bars, curved; curved lines, bands or bars; lines, curved.").

So, now that you're armed with all this valuable information, certainly you can answer three simple questions: (1) Who owns it? (2) What is it? and (3) What goods or services are identified and distinguished by this non-verbal design mark?

• Email This
• Print
• Comments (14)
• 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

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