DuetsBlog

Collaborations in Creativity & the Law

Coming Soon: Creative Brand Protection Event

Posted in Advertising, Articles, Branding, Domain Names, Fair Use, Guest Bloggers, Marketing, Trademark Bullying, Trademarks

We’re always looking forward, but every once in a while we look in the rear-view mirror and become amazed at how far we’ve come since our humble beginnings a short nine years ago.

Well, it’s almost time to celebrate another birthday here at DuetsBlog, and if we make it to March 5th, Duey will be ecstatic, thanks so much again to our many devoted readers and guest bloggers.

On Thursday March 8th, we’ll be doing more than cutting and sharing slices of our 9th Birthday Cake (promise it will be fresh, not four days old), we’ll be educating and entertaining our guests.

Beginning at 4 PM, in our newly reimagined cool office space, we’ll host a few hours of trademark and brand protection education, entertainment, food, drink, celebration, and conversation.

For the educational portion of the evening, we have assembled two dynamic panel discussions with valuable insights and guidance from a pair of national branding and design experts and leading trademark counsel for some very notable brands with global footprints.

Yours Truly, will moderate this panel of accomplished luminaries:

  • Shaelyn Crutchley, Former Senior Director, Head of Design – N. American Beverages, Pepsico
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Rosalie O’Brien, Senior Associate General Counsel, University of Minnesota

Our focus will be on the development of a creative, coherent, and compelling brand protection strategy. In addition, we’ll look back together on Super Bowl LII through our collective brand protection eyes, discuss so-called trademark bullying, and the latest on trademark fair use.

Brad Walz, Winthrop Shareholder and Adjunct Professor, University of St. Thomas School of Law Trademark Clinic, will moderate a panel discussion joined by some of our esteemed alumni:

This panel will focus on the implementation and execution of creative trademark and brand protection strategies. Attendees will learn about the effective and efficient use of trademark watch services, brand registries, website complaint programs, USPTO Letters of Protest, cease and desist correspondence, TTAB and UDRP proceedings, and also, when federal district court may be necessary to achieve goals.

Space is limited for this special event, but we have set aside a few seats for readers who may not have received invitations, so please let me know if you’re interested in joining us.

Lawsuit Verdict Makes Grumpy Cat Smile

Posted in Contracts, Copyrights, Dilution, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Trademarks

For anyone unfamiliar with internet cat personalities, Grumpy Cat is a well-known feline whose dwarfism and underbite culminate in a perpetual—and adorable—sour expression.  Grumpy Cat’s real name is Tardar Sauce.  In 2012, when Tardar Sauce was only a few months old, she became an internet sensation after a photo of her endearing scowl was posted on Reddit.  Since that time, Tardar Sauce has made several public appearances, and was named to Forbes’ list of Top Pet Influencers.

Tardar Sauce’s owner, Tabatha Bundesen, formed Grumpy Cat Limited to handle licensing and merchandising of the Grumpy Cat brand.  Grumpy Cat Limited holds eight federal trademark registrations, including five registrations for the standard character mark GRUMPY CAT, and three registrations for this design mark:

Grumpy Cat Limited also owns multiple copyright registrations, including these:

 

In 2013, Grumpy Cat Limited entered into a licensing agreement with Grenade Beverage LLC.  Under the agreement, Grumpy Cat Limited licensed the Grumpy Cat trademarks and copyrights to Grenade in connection with a line of iced coffee products (appropriately named Grumppuccinos).

Three flavors of Grumppuccino

The licensing agreement additionally permitted Grenade to develop other Grumpy Cat beverage products, but only with the permission of Grumpy Cat Limited for each new product.  Under this provision, Grenade sought approval from Grumpy Cat Limited for a new line of Grumpy Cat-branded coffee beans.  Grumpy Cat Limited withheld approval for the coffee beans.  Grenade nonetheless moved forward with the new product.  Grenade also began selling unauthorized Grumppuccino t-shirts.

The offending beans

In late 2015, Grumpy Cat Limited sued Grenade for breach of contract, copyright infringement, and trademark infringement.  Namely, Grumpy Cat Limited asserted that Grenade’s use of the Grumpy Cat name and likeness on the coffee bean products and unauthorized Grumppuccino t-shirts was outside the permissible scope of the licensing agreement.

After a week-long trial, during which Tardar Sauce herself made an appearance, a jury decided in favor of Grumpy Cat Limited.  The jury awarded $710,001 to Grumpy Cat Limited: $230,000 in statutory damages for copyright infringement, $480,000 in statutory damages for trademark infringement, and $1 for breach of contract.  Presumably, the statutory damages awarded to Grumpy Cat Limited equal more than any actual damages the company could have obtained–a reminder of the value of statutory damages in trademark and copyright infringement suits.

Snickers Has a Cross Section TM Registration!

Posted in Advertising, Articles, Branding, Food, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Trademarks, USPTO

It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:

Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:

After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.

But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.

So, after a little interpretation and modification by the Board, the registration issued with these express limitations:

“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”

“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”

Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.

Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?

Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.

Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.

Who Owns the Trademark Rights to Tesla/SpaceX’s Roadster?

Posted in Branding, Infringement, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, Sight, Squirrelly Thoughts, Trademarks

Today I write with a thought-provoking question: Just who owns the trademark rights to Telsa/SpaceX’s Spaceman Roadster? Tesla? SpaceX? Perhaps even humanity?

If you didn’t catch it, SpaceX recently launched its first Falcon Heavy three-booster rocket designed to carry large payloads into space. In a stunning feat of engineering and genius marketing, the rocket sent SpaceX CEO (and Telsa CEO) Elon Musk‘s Tesla Roadster toward the Sun (where it will orbit for billions of years), all while returning two of the three boosters to the same location from which the rocket departed.

It might seem incredible to believe, but the NASA-defined space object “Tesla Roadster (AKA: Starman, 2018-017A)” is now traveling away from the Earth on its trajectory to the Sun. You can track the object using NASA’s HORIZONS system and even watch a live feed from its on-board cameras.

Yes, these are real pictures: credit, credit.

If you haven’t seen the launch and booster touch down, now is the time; it is truly awe-inspiring and one of the biggest feats of the decade. It may also be the most ambitious marketing promotion for a product and service (the Falcon Heavy) ever, establishing both Tesla and SpaceX as innovative, intelligent, and forward-thinking brands. And that gets me thinking: Spaceman (or some similar description), as a potential name, symbol, or device, could constitute a trademark. But because two separate companies, Tesla and SpaceX, are involved in launching the car into space, just who has a right to the mark? And does Spaceman itself operate as a mark identifying either company as its source?

The answer could hinge on whether either company decides to use the mark to designate itself as the source of certain goods or Spaceman, for that matter. The primary purpose behind trademark protection is to reduce information and transaction costs, while protecting investment in the creation and promotion of marks that do just that. Thus, a fundamental inquiry in trademark infringement cases is whether use of a mark causes consumer confusion as to the source of a good or service. So far, both companies have touted the Falcon Heavy achievement. But Spaceman itself does not clearly indicate one source over the other. Of course, the Roadster identifies Tesla as its source, but the rocket on which it is affixed designates SpaceX as the means for its position in space. Maybe that is enough of a distinction to make the mark part Tesla and part SpaceX.

I would like to believe that both companies’ CEO, Elon Musk, would think of Spaceman not as a symbol of either business, but rather a symbol of human achievement and what is to come. Indeed, both companies have grand visions for humanity. SpaceX’s mission is “to enable humans to become a spacefaring civilization and a multi-planet species.” Telsa is purposed on “accelerat[ing] the transition to a sustainable energy future.” To any other-worldly being, Spaceman itself identifies Earth and its people as its source. In this way, Spaceman is similar to other satellites within the solar system, which identify Earth as progenitor. Perhaps, then, it is fair to say that we all have a stake in the symbol. What do you think?

 

 

Hands Off Jay-Z’s Hand Gesture Trademark

Posted in Non-Traditional Trademarks, Trademarks, USPTO

Words and pictures are so 2017. This year, it is all about the non-traditional trademarks (i.e., something other than brand names and images). In the past, we’ve covered a variety of these types of trademarks, from colors to product shapes, to sounds and even the touch of a product. Even looking only at college football, there are registered marks for the color of a field, player uniforms, and fan chants.

And 2018 has already given us a new category: hand gestures. Music and fashion mogul Shawn Carter (also known as Jay-Z) recently applied to register the hand gesture below for entertainment services.

According to one origin story, the image of a diamond was meant as a reference to the slang term “rock” for diamonds. Jay-Z’s record label is Roc-A-Fella Records, and using the hand symbol has come to be known as “throwing up the roc.”

Whether due to Jay-Z’s popularity or due to the calorie burning benefits of raising your arms briefly, the symbol has become a bit ubiquitous in popular culture. Everyone from Aaron Rodriguez, Fran Drescher, to Warren Buffet and others are documented roc-throwers. But nobody can do it quite like Hov himself:

Also worth adding to the list is professional wrestler Diamond Dallas Page. He’s been throwing the roc since the ’90s:

Although his gesture is just a little bit different, with his fingers extended. Also, he refers to his symbol as the diamond cutter. He also has already registered a version of the gesture (shown below) as a trademark for various clothing items.

And, come to think of it, he sued Jay-Z over the symbol years ago. Although there isn’t much information available, it appears the case settled out of court with Jay-Z making a payment of an undisclosed amount (to keep it fair and balanced, there is a wrestling source and a hip hop source).

As of yet, no word on whether Diamond Dallas Page will take action against Jay-Z’s trademark application. Perhaps the settlement between the parties prevents him from doing so. But if so, then why did Jay-Z wait for nearly a decade to file his own trademark application? And although the Diamond Cutter was registered as a trademark, should either celebrity own enforceable rights in a hand gesture? Does it really signify source? Or does it remind us of something in a non-trademark manner, like trash compactors remind me of Star Wars or triangles remind me of the White Stripes?

And I would be remiss to not mention the elephant in the room: the conspiracy theory that Jay-Z along with many other musicians, politicians, and others are part of a secret society of the illuminati, freemasons, or (more recently) Taco Bell. Fingers crossed the Trademark Office utilizes her power to issue a Request for Information to demand that Jay-Z answer once and for all whether he is, in fact, a member of the Illuminati.

Celebrity Trademark Updates: Sean Connery and Meryl Streep

Posted in Trademarks, TTAB, USPTO

With the Oscars coming up in less than a month, it seems like the issue of “celebrity” trademarks is a hot topic in the media.  For example, many news outlets (such as here, here, here) are covering Meryl Streep’s application to register her name.  Her application (Serial No. 87765571) was submitted last month for a variety of services, including entertainment services, personal appearances, speaking engagements, and autograph signings.

It has become increasingly common for celebrities to seek federal trademark registrations for their names, often in connection with entertainment services, to provide greater protection and enforcement ability against authorized third-party uses.

Another recent example is Sean Connery’s application to register his name (Reg. No. 5015683), which was covered in the news over the past couple years.  He had to overcome some obstacles, including two Office Actions rejecting his specimens of use (here and here), but he was finally able to reach registration after submitting a third substitute specimen.

Interestingly, trademark rules and precedent allow registration of personal names as inherently distinctive, without the need to show “acquired distinctiveness” (i.e., evidence, such as longtime exclusive use, showing consumers recognize the mark as a unique source indicator).  This rule differs from the common law rule, in which acquired distinctiveness is required. Christopher Brooks, 93 U.S.P.Q.2d 1823 (TTAB 2009); McCarthy on Trademarks §13:2; TMEP § 1301.02(b).  It also differs from the bar against registering mere surnames (i.e., just the last name, rather than the full name), without acquired distinctiveness. TMEP §1211.01.

Nevertheless, it makes sense to take advantage of this unique rule for federal registration of personal names, if there is a good business reason for doing so–which there often is for celebrities.

What do you think about trademark registration for personal names?  Do you think celebrities have gone too far with trademark applications in connection with their name (see a list here)? For example, Taylor Swift has over 50 trademark registrations for her name or her initials.

Any predictions for the biggest winners at the Oscars? (I’m betting Shape of Water wins Best Picture and Best Director.)

Does Google’s Enforcement Explain New Ads?

Posted in Advertising, Articles, Branding, Fair Use, Marketing, Trademarks

Remember this North Memorial Health billboard ad — sporting a plain and literal Google reference — that we wrote about a few months ago, where nominative fair use was pretty clear to me?

Well, a new set of North Memorial billboard ads rolled into to the Minneapolis skyway system, just in time for Super Bowl LII, with essentially the same message, but without a Google mention.

Do you think Google was behind North Memorial’s move away from the Google reference, or was it part of the original plan to grab attention, then migrate to a more generic online search mention?

Does North Memorial showing it is able to communicate essentially the same idea without Google’s help impact the nominative fair use analysis? So, how do you come down on this one?

In case you’re wondering why I’m not writing about Super Bowl LII and the television commercials, as has been typical here on the day after, let’s say I’m still letting it sink in, so stay tuned.

Are You Leading With Buddha’s Hand Too?

Posted in Advertising, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Trademarks

Size and prominence of wording on business signs, product labels and hangtags will often emphasize brand signals. Yet, sometimes decisions are made to scream generic names instead.

Never having seen the above shown wacky fresh fruit until recently, my assumption was that Buddha’s Hand represented a clever brand name for a certain type of citron fruit. Nope, generic.

The source-indicating information on the above shown Buddha’s Hand hangtag — the trademark — is barely legible, so I’ll help readers out: Ripe to You represents the above shown brand name.

So, what are the best practices when it comes to marketing commodities over brands and vice versa? The Branding Strategy Insider had an informative take on this topic just yesterday, here.

From my perspective, since brands manifest reputation, relationships and experiences, there must be accountability, and sometimes apologies are needed. Commodities, nope, not so much.

I’m thinking that while Ripe to You apparently is working to create market demand and interest in the unusual Buddha’s Hand fruit, more emphasis on the fruit’s generic name may take priority.

It also stands to reason that as Buddha’s Hand citron fruit becomes as understood as cherry tomatoes, tangelos, and bananas, the thing will speak for itself, and the brand will be paramount.

It’s also important to remember that when work is needed to create demand for a new category of products, attention on a memorable generic name can be as important as the brand name.

Otherwise, a brand owner launching a new category might find itself forever working to avoid the slippery slope of genericide, can you say, Rollerblade, Velcro, Band-Aid, and Peppadew?

Thankfully for Ripe to You, the clever and memorable Budda’s Hand generic name was handed to it on a silver platter, leaving the field wide open to focus on and emphasize its brand name.

I’d love to hear more insights from our extraordinary marketers and designers about when and how to balance the marketing of commodities/brands — when do you lead with Buddha’s Hand?

The Elvis Presley Estate Loses Bid to Block ELVIS JUICE Beer

Posted in Dilution, Famous Marks, Food, Infringement, International, Law Suits, Trademarks, TTAB, USPTO

Trademark disputes involving breweries are nothing new, with breweries battling each other, wineries, and even cities over trademarks. We can now add estates of dead celebrities to the mix, as the Estate of Elvis Presley continues its battle against UK-based BrewDog over its ELVIS JUICE I.P.A.

The Elvis Estate first attempted to resolve the dispute through a cease and desist letter. In response, BrewDog’s owners, James Watt and Martin Dickie, changed their first names to “Elvis.”

And before you ask, yes, the above picture is just a marketing version of the official name change document. Although the battle has been waged for decades with the U.K. Employment Agency, “Beer Pirate” is not yet an officially recognized title. For the potential Elvis fans with the proclivity toward belief in aliens and other conspiracies, the official documents are also available here.

When BrewDog failed to heed the Estate’s demand of “Don’t,” the Estate brought an action against BrewDog at the U.K. Intellectual Property Office. Apparently the UKIPO was unmoved by the Elvis Brothers’ claims and, in July of 2017, the Estate prevailed.  But before Elvis could leave the building, BrewDog appealed. Apparently the appellate body had a few more suspicious minds. Just last week, the appellate body reversed the prior decision, concluding:

On balance I do not think that the hearing officer was entitled to take judicial notice that beer consumers who see the word Elvis will always think of Elvis Presley. The two marks are too different for there to be direct confusion. Even with imperfect recollection the average consumer will not mistake Brewdog Elvis Juice for Elvis. Put simply, the common element of Elvis is not enough on its own to make consumers think there is a link between the mark Elvis and Brewdog Elvis Juice.

As the quote suggests, the UKIPO’s decision was based specifically on a trademark that includes the brewery’s house brand BREWDOG. This may mean some extra steps for the brewery to ensure that BREWDOG always appears in close proximity to the ELVIS JUICE trademark, but the steps may be worth it to protect BrewDog’s growing investment in the name. BrewDog recently expanded operations, opening a satellite brewery in the United States near Columbus, Ohio. On top of that, BrewDog even won a bronze medal in its first appearance at the Great American Beer Festival last year.

Although the Elvis Estate may be licking its wounds somewhere in the heartbreak hotel, the war isn’t over yet. As you might expect, the UKIPO’s office has no authority here in the U.S. In fact, BrewDog has a pending application for the mark BREWDOG ELVIS JUICE that was approved for registration by the U.S. Trademark Office. On December 27, the company that manages the intellectual property on behalf of the Elvis Estate filed a Request for Extension of Time to Oppose the application. Will the recent loss temper the Estate’s position? Or is it now or never for the Elvis Estate to make a stand? We might have a better idea after April 25, when the Estate’s first extension request runs out.

As of the date of publication, there is no word on whether Elvis Costello also objects to BrewDog’s beer.

Legitimate Super Bowl Ambush Marketing

Posted in Advertising, Articles, Branding, Dilution, Fair Use, False Advertising, First Amendment, Infringement, Marketing, Trademark Bullying, Trademarks

Not all ambush marketing is created equal. Some can cross the line and create a likelihood of confusion as to sponsorship. Some falsely advertises. But, some is totally fair use and lawful.

This current promotional banner by La-Z-Boy is capitalizing on the excitement surrounding the upcoming Super Bowl weekend festivities, but without reasonable risk of heat from the NFL:

The same can be said for this Lunds & Byerlys in-store signage, with the local grocery chain having tiptoed around the issue entirely by using the Big Game code word instead:

Love the fine-print shout out to local darling, Surly’s Cynic Pale Ale, and the additional shout out to Surly’s “Over Rated” — and clever jab at West Coast IPAs — thankfully no risk of offending all the visiting fans from the East Coast for Super Bowl LII.

By the way, since the Home Team, won’t be playing, merely hosting, which team do you favor from the East Coast, the Philadelphia Eagles or the New England Patriots?