DuetsBlog

Collaborations in Creativity & the Law

Battle Over Trademark in NOLA

Posted in Articles, Civil Procedure, Dilution, Fair Use, Famous Marks, Food, Infringement, Law Suits, Marketing, Trademarks, USPTO

The trademark ST. ROCH MARKET is at the heart of a dispute in New Orleans (aka NOLA).  The City of New Orleans is battling in court with the current lessee of the building associated with the trademark.

ROCH MARKET has been associated with a popular market in New Orleans since 1875. Prior to Hurricane Katrina, the market sold fresh seafood. After begin devastated by the hurricane, the City pumped over $3.2 million dollars to transform the place into a food hall with vendors selling seafood, confections, coffee, alcoholic drinks, streetfood, and other food.  Renowned food expert ZAGAT states that it is “An absolute must visit.”  I intend to do so when I visit my friend in NOLA this fall.

Following the renovation, Bayou Secret, LLC leased the building to operate a full service neighborhood restaurant with multiple vendors in a stalls concept.   The company’s sole member Helpful Hound, LLC applied to register the ST. ROCH MARKET mark in April 2017 in connection with food kiosk services and retail vending stand services (Bayou Secret, LLC, and Helpful Hound, LLC and certain individuals associated with the entitityes will collectively be referred to as the “Bayou Secret Parties”).  Because the term ST. ROCH MARKET is descriptive of an actual place, the mark could not be registered on the Principal Register of the United States Patent and Trademark Office.  However, registration for the mark was secured on the Supplemental Register at U.S. Reg. No. 5,293,244 based on the mark’s secondary meaning.

The Bayou Secret Parties launched a similar food hall in Miami in April 2018 and planned to expand into Chicago and Nashville.  Within days of each other in April 2018, the City of NOLA and Bayou Secret Parties filed lawsuits against each other.  The Court consolidated the two cases which involve allegations that Bayou Secret Parties infringed the City of NOLA’s trademark, that the famous trademark was being diluted, among others.

The City of NOLA also filed its own application for the ST. ROCH MARKET in April 2018 in connection with the leasing and management of space for food and drink vendors in a public market at Ser. No. 87/890,988.

In August, the City of NOLA and its management company (NOBC) secured a preliminary injunction that barred the Bayou Secret Parties from using the ST. ROCH MARKET mark for food hall locations other than in NOLA and its newly opened food hall in Miami.

The Bayou Secret Parties brought a motion to dismiss on various grounds.  The City of NOLA defeated the motion with the exception of having its claim for trademark dilution dismissed.  The court found the allegation that the mark “is widely recognized by the general consuming public of the United States” was merely conclusory.

Do you think the EATALY® mark associated with food halls would fare better?  (See U.S. Ser. Nos. 3,065,012; 3,567,939).  It might.  The mark is associated with the well known food halls located near the iconic Flatiron building in New York, downtown Chicago and other locations.

Significantly, famous chef Mario Batali is a partner with the Italian owner of the EATALY mark that was first used in Turin, Italy for a food and wine market before traveling to the United States.

The Perils of Portmanteau Names

Posted in Almost Advice, Branding, Guest Bloggers, Keyword Ads, Look-For Ads, Marketing, Mixed Bag of Nuts, SoapBox

– Mark Prus, Principal, NameFlash

A portmanteau is a linguistic blend of words in which parts of multiple words are combined into a new word. Common language examples include smog, which is a combination of the words smoke and fog, and motel which combines motor and hotel.

Some big companies used the portmanteau technique to develop their names. Microsoft is a portmanteau of microcomputer and software. Groupon combines group and coupon.

However, sometimes companies refuse to admit that their portmanteau name doesn’t work.

Consider this manufacturer of pool maintenance products.

Yes, I get that they slammed “pool” and “life” together to get their name, but no matter how many times you look at this name it is hard to not see “Poo Life” isn’t it? And who wants to live a “poo life” anyway?

Here is another one. Yes, I see what they did here by combining “smart” and “tours.” But step away from the page for a second and look at it…what the heck is a “smar Tour” (or did you mean “smarT ours)?

Portmanteau names can be very good when the combination makes sense, but you have to have some common sense (as in most things in life). Combining words together to make a brand name can work or can look very stupid. Don’t be stupid!

Cat Calling Attention to Women’s Footwear?

Posted in Advertising, Articles, Branding, Fashion, Marketing, Trademarks, TTAB, USPTO

When ideas from different realms converge in a single moment of time, a new blog post is born.

Catcalling” — albeit a rebranded, reimagined, or redefined version of it — recently has been front and center in a political Twitter storm and remains a lightning rod in the non-stop news cycle.

So, imagine my surprise also to see the sturdy Cat construction-oriented brand calling my fashion-forward daughter to select it for her brand new, back-to-school footwear look this coming Fall:

 

Photo credit: G. Baird

This isn’t our first rodeo with Cat footwear. We previously kicked heels with my son’s steel-toe boot choice, also covering the careful timing of Cat’s truncation from the four-syllable Caterpillar.

While the brand extension from construction and earth-moving equipment to boots makes perfect sense, especially the steel-toe variety, here is the explanation for women’s casual dress shoes:

Photo credit: G. Baird

Marketers, the extension seems unnatural and forced to me, but I’d love to hear from our readers who have a stronger vantage point on whether this brand extension will work long term for Cat.

What called me to create this story for you is the hidden trademark strategy to be unearthed.

“Footwear” is one of those broad descriptions of goods that the USPTO will accept as sufficiently precise. Selecting it facilitates and better positions your brand for line extensions yet to come.

In other words, narrowly selecting “slippers” or “steel-toe boots” over “footwear,” in trademark filings may leave you boxed in when seeking to expand or extend the lines of your present brand.

Not sure when Caterpillar first introduced women’s casual dress shoes under the Cat brand, but it has owned federally-registered rights in the word CAT for “footwear” for more than a decade.

Caterpillar likely began using CAT with steel-toe boots, but given its broader registered rights, I’m guessing it didn’t lose much sleep wondering if it could grow into those broader registered rights.

In fact, this Cat has become quite active enforcing its broader rights at the USPTO’s TTAB, here.

Billy Goats, Trademark Twins, and the Descriptive Limits of Language

Posted in Advertising, Articles, Branding, Food, Infringement, Law Suits, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

I’ve been thinking about the nature of language lately, ever since I listened to a podcast about various philosophers who devoted their study to language. For example, Ludwig Wittgenstein, one of the most influential philosophers of the twentieth century, is famous for his work on the logic of language. A fundamental premise to his philosophy is that “the limits of my language mean the limits of my world.” In other words, language, although purposed on painting a picture of reality, is fundamentally limited in its ability to describe and do so fully and accurately. For Wittgenstein, this primarily meant that language cannot help us answer pressing metaphysical questions, but the realization has practical importance in branding.

Consider Wittgenstein’s insight in tandem with the desire to promote recall and recognition in a name without causing customers to confuse the name with another source, and you are presented with the challenge underlying all word-based marks: to turn a generally-known and familiar word (or prefix or suffix or otherwise) into a distinctive identifier so that it means something different or more than its generic definition. No small task, especially given language’s inherent descriptive limitations, and this is evidenced by the finite universe of words and combinations to choose from. There is bound to be some overlap in naming. Hence, we regularly witness “trademark twins”–the same or similar words used as marks for different sources of goods and services.

One example of trademark twinning has garnered attention in the press recently, arising from a trademark infringement suit between the Billy Goat Tavern and the Billy Goat Chip Company. The Billy Goat Tavern is a fast-food restaurant in Chicago which gained notoriety when its founder brought his goat to a Cubs game, but was asked to leave (with his goat), casting the “Billy Goat’s Gruff” curse on the Chicago Cubs. Saturday Night Live also parodied the experience of eating there–accurately, I can attest.


Credit: Fox 32

The Billy Goat Chip Company, out of St. Louis, has no affiliation with the Tavern, but the Tavern took issue with the Chip Company’s similar name after the Chip Company’s crisps started showing up in Chicago. Recently, a federal judge rejected the Chip Company’s defense that the Tavern delayed too long in suing the Chip Company, after having notice of the similar name for several years. It is worth noting that although the companies’ names begin with the same two words, their logos set them apart:

But the similarity of the names in the context of food may be more likely to cause confusion than if the names were used in completely different industries. On a continuum of “identical” to “fraternal” (non-identical) twins, it’s hard to pinpoint where the marks fall–and, thus, whether trademark law would require a bit more distinguishing. There is a possibility that consumers would think of the chips, for example, as having some affiliation with the Billy Goat Tavern as a source. This is even more likely when one realizes that the Billy Goat Tavern has never sold fries, only chips with its signature “cheezborger.” Coincidence? I’ve written about stranger coincidences before. Even then, though, how many consumers are that knowledgeable about the Billy Goat Tavern to make the connection? I’m thinking these twins are fraternal.

Numerous other examples of trademark twins abound: Domino’s Pizza and Domino Sugar, Dove Soap and Dove Chocolate, Pom Wonderful and Wonderful Pistachios–just to name a few! Speaking of three, how about some trademark triplets: Apple (iPhone), Apple Records, and Apple Paints. Or quadruplets: Delta Airlines, Delta Dental, Delta Faucet, and Delta Power. These twins, triplets, and quadruplets all borrow similar common words as names, but use them in different industries–making it unlikely that consumers will confuse the companies as one source. Their use in dissimilar markets and in connection with unique logos mitigates the legal danger presented by the intersection of the limits of language, fleetingness of human memory, and protections afforded by trademark law. But industry and logo are just two ways in which their genes differ.

Can you think of additional trademark twins or otherwise? How are they fraternal or identical? What do you think is most important when balancing simplicity, familiarity, notoriety, and legality?

Update: MOMACHA Triples Down, Expanding Despite Infringement Claim

Posted in Almost Advice, Infringement, Trademarks

Earlier this year, the Museum of Modern Art in New York City, known as “MoMA,” sued a cafe and art gallery, MoMaCha, also located in New York City, asserting claims of trademark infringement, trademark dilution, and unfair competition. As discussed in my post a couple months ago, although MoMaCha has some well-founded arguments and defenses, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city. MoMA’s motion for a preliminary injunction, filed in the Southern District of New York, is still pending. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

Despite the threat of MoMA’s claims and motion for preliminary injunction, MoMaCha has announced plans to expand to three additional locations in New York City. This type of significant expansion — growing from one to four locations — is a bold move in light of MoMA’s claims, even if MoMaCha is feeling confident in the merits of its arguments and defenses. In particular, damages for trademark infringement under 15 U.S.C. 1117(a) can consist of all the defendant’s profits from its sales of goods/services under the infringing mark, which can add up quickly. Adding three more locations could mean a quadrupling of such potential damages, depending on their profit streams. Furthermore, damages can be tripled under Section 1117(a) based on the circumstances of the case. Therefore, a pending infringement claim can warrant a conservative approach to a defendant’s business expansion — or even limiting the use of the claimed infringing mark — until the dispute is resolved, to mitigate the risk of damages.

Nevertheless, it is possible that MoMaCha might be following this conservative approach. Despite their announcement several months ago to expand to three locations, and coverage of that expansion in the media including articles linked above, after a quick Google search I’m not seeing that any new locations have actually opened, but any New Yorkers out there, let me know if you’ve seen more MoMaCha’s opening up. Stay tuned for updates.

Will Mr. Wonderful Become a TM Nutcracker?

Posted in Articles, Branding, Food, Marketing, Mixed Bag of Nuts, Trademarks, USPTO

Two months ago, our attention seized on a nutty and woefully deficient USPTO examination of a trademark application to register — Mr. Wonderful — for roasted nuts, and nut-based snack foods, among other food products, given the prior WONDERFUL trademark rights owned by these folks:

Just like clockwork, events now appear to be playing out as expected, so keep your eyes peeled and your watches synchronized. Last Friday, The Wonderful Company LLC, filed an extension of time to oppose registration, so the new deadline for opposition is September 8, 2018.

We’ll likely soon see whether a Letter of Protest was filed behind the scenes, giving the USPTO a chance to correct this mistake and issue a likelihood of confusion refusal —  as it’s hard to imagine the Examining Attorney’s failure to issue a refusal won’t be considered clear error, so stay tuned.

Wonderful likely has made contact with Mr. Wonderful by now — my question would be, how hard will Mr. Wonderful play to salvage the other food items currently in the identification of goods?

What do you think, are these goods sufficiently related to roasted nuts to become toast, as well?

Jellies and jams; Banana chips; Dried fruit-based snacks; Fruit preserved in alcohol; Nut butters; Olive oil for food; Potato chips; and Yogurts.

Color Marks: Looking for Look-for Advertising

Posted in Articles, Branding, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, USPTO

These lime green building sites caught my eye and jogged my trademark memory. First, the future home of the University of Iowa College of Pharmacy, at beam signing, on May 4, 2018:

Second, the expansion of the Metro Transit headquarters near downtown Minneapolis, on June 12:

Of course, the obviously common element of both building sites, besides my iPhone, is the same lime green sheathing, both also branded with the USG and SECUROCK word trademarks.

Then poof, they’re gone, after being covered by some black-colored sheathing, on August 2, 2018:

What’s my point? Actually, I have a few that immediately come to mind, so bear with me.

First, do you suppose United States Gypsum Company views the lime green color of its gypsum panels to be a trademark? Apparently there are no look-for statements on the product itself:

In looking for look-for ads that might draw attention to this particular shade of green as a brand, Green Means Go (scroll down after linking), is the closest I’ve found.

Let’s just say, USG has been far more effective in owning the color red as a band or stripe applied to packaging for plaster products, and the supporting look-for-like TOP RED word mark.

Still, it’s difficult to tell what USG thinks from the general legend used in its online brochures:

“The trademarks USG, FIRECODE, SECUROCK, IT’S YOUR WORLD. BUILD IT., the USG logo, the design elements and colors, and related marks are trademarks of USG Corporation or its affiliates.”

It’s even harder to tell, despite the “colors” mentioned in the legend above, after searching the USPTO, since USG allowed its Supplemental Registration — for what I’m calling the “lime green sheathing” — to expire without first obtaining, or at least, filing for Principal Registration.

The Supplemental Registration described the mark as “the color yellow green (Pantone 375) as applied to the goods.” Namely, “non-metal water-resistant boards and panels for construction.”

Why let it go?

I’m sure the color green is considered difficult to protect for sustainable building materials, but this color mark was narrowed down to the particular Pantone shade. Perhaps the shade changed?

Typically, a Supplemental Registration is considered valuable to a brand owner, while it works to build the evidence necessary to establish acquired distinctiveness for Principal Registration.

In addition, the Supplemental Registration for Pantone 375 was some indication that the USPTO did not view that shade of green as being functional even for sustainable building materials.

We’ll keep watching to see if Principal Registration is pursued.

In the meantime, let us know if you discover any better look-for advertising for USG’s SECUROCK gypsum panel sheathing. Loyal readers know how important look-for ads are for trademark colors.

Last, the now-you-see-them-now-you-don’t green gypsum panels remind me of the lavender color registration I convinced the USPTO to issue for spray in place insulation in 1994, oh the memories!

No Gold TM Stars for This Red Star Brand!

Posted in Advertising, Almost Advice, Articles, Branding, Food, Loss of Rights, Marketing, Product Packaging, Trademarks

As I’ve been known to do long before now, this past weekend I found myself gazing intently, this time, into the front label and back copy on this S. Pellegrino sparkling natural mineral water bottle:

Putting aside the question of the shiny red star logo, which we already have bloviated about, here, a few years back — my focus is centered on the surrounding Enhance Your Moments tagline.

No gold star for the brand’s failure to capture federally-registered protection for it, despite the obvious association with SanPellegrino, as shown in results of a simple Google search, here.

Another “no gold star” moment that needs a modicum of enhancement would be the back copy:

Why? As you can see, SanPellegrino has taken a perfectly fine, inherently distinctive, and suggestive trademark, and used it in a sentence (without brand emphasis) in a descriptive sense.

Make sense?

Where’s the Beef? Trademark, That is . . . .

Posted in Advertising, Articles, Branding, Food, Marketing, Sight, Trademarks

You never really need to wonder where the beef empanadas are, inside the display case, at least at Whole Foods, given the literal “beef” branding — visible on the edge of each outer dough shell.

This is a good example of a word appearing on a product that does not function as a trademark, as it does not satisfy the 3 elements of: identifying, distinguishing, and indicating a product’s source.

Instead, the word “beef” above connotes what’s inside, the primary ingredient of each empanada — you might say, it is merely informational, incapable of serving a trademark or brand purpose.

While “beef” could be a perfectly suitable and suggestive trademark for something not containing that meat, like clothing (assuming it’s available); as it is above, it’s simply a generic designation.

I’m thinking Whole Foods is missing out on an opportunity to also imprint on its empanadas a symbol that designates where they came from, who put them out, their source, don’t you think?

Safe = Death In Naming

Posted in Almost Advice, Branding, Guest Bloggers, Marketing, Mixed Bag of Nuts, Product Packaging

– Mark Prus, Principal, NameFlash

Summer is in full swing and that means baseball is top of mind for many of us. As a professional name developer, I continue to get a charge from the names of minor league baseball teams. Following up on my previous post on minor league baseball team names here are some controversial team names:

All of these names were controversial when they were introduced. Think about it…who wants to support the El Paso Chihuahuas? However, according to the brand name developer, Jason Klein of Brandiose, being controversial was the intent.

Today these franchises are successful examples of branding with great ticket sales and high merchandise sales.

Obviously, these are fun names and minor league baseball is all about fun. However, the genius in these names is not that they are just fun…the names leverage a bit of history and are familiar to the target audience.

Take the El Paso, TX Chihuahuas as an example. When the name was introduced there was an uproar in the local community about the derogatory nature of the name. Shortly thereafter, articles of support started appearing (such as this one) and the name became a rallying point.

The same thing was true with the Hartford, CT Yard Goats. Yard Goat is a relevant name in Hartford as “yard goat” is railyard slang for the switch engines or terminal tractors that shuttle train cars between different locomotives, and Hartford has a strong rail presence.

In the 19th century the leading industry in the Lehigh Valley was iron production, and therefore the IronPig name makes sense (“pig iron” is the term for the raw iron that gets melted down to make steel).

Using a “safe” name might seem like a good idea, but safe names are generally mainstream names that don’t stand out.

Finally, please recognize that I’m not advocating “alphabet soup” names that seem to be in vogue with startups. If a name has some relevance, but is different enough to be noticed, then it might be worth the risk in the long run!