DuetsBlog

Collaborations in Creativity & the Law

DuestBlog Reflections: Embracing Tension

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

As the drum beat grows for our interview of Seth Godin tomorrow, it is only fitting that we are reminded of the importance of embracing tension and the ruckus we’ve set out to make here.

Seth’s fabulous and penetrating new book called This is Marketing, will be released tomorrow, no doubt another best-seller, a must-read for any lawyer who cares to make change for the better.

Until then, thanks again to Fred McGrath for this second video, capturing how we embrace tension:

DuetsBlog Reflections: “In The Beginning”

Posted in Articles, Branding, Guest Bloggers, Marketing, Trademarks

Throughout our nearly decade-long journey and exploration called “DuetsBlog,” we have been blessed and we remain grateful to have met so many incredible new friends along the way.

Next Tuesday, we have the remarkable privilege of publishing here on DuetsBlog an interview with Seth Godin, a generous person, overflowing with thoughtful insights and valuable perspectives.

In the meantime, many thanks to Fred McGrath for his interest and generosity in sitting down with me to capture a conversation about DuetsBlog, editing our discussion in 3 videos, here’s the first:

The New England Patriots Are Ready To Battle Off The Field

Posted in Articles, Branding, Idea Protection, Infringement, Marketing, Mixed Bag of Nuts, Technology, Trademarks

 

An NFL team and an NBA team are duking it out over trademarks with the word “UPRISING” to be used with eSports.

What is eSports you may ask? It is professional competitive video gaming. Anyone with a teenager has probably heard of Fortnite. Fortnite is a world-wide phenomenon. Over three nights during TwitchCon (which is a Fortnite competition), Fortnite averaged around 65,000 viewers per day across Twitch, YouTube and Facebook. However, there are also numerous other video games such as Hearthstone, Tom Clancy’s Rainbow Six Siege, Star Craft II and Overwatch, among others. Indeed, Overwatch is related to the trademark dispute involving the owner of the New England Patriots.

The dispute involves the marks BOSTON UPRISING and NORTH UPRISING. Specifically, last month, the billionaire owner of the New England Patriots Robert Kraft’s company, Kraft Group, filed a Notice of Opposition against an application filed by the NBA’s Toronto Raptors for the mark NORTH UPRISING (stylized) in connection with clothing and other merchandise that is to be used with video games. The Kraft Group alleges that the stylized mark in the application is similar in stylization and font of its applied for stylized mark for BOSTON UPRISING.

 

 

The NFL team’s owner applied for the mark BOSTON UPRISING in connection with entertainment services including electronic and video games, and various clothing and other merchandise. This BOSTON UPRISING mark will be used with an eSports team that operates in a professional Esports league for the video game Overwatch.

The Kraft Group and related entities know how important trademarks are to their business. They own many trademarks related to the New England Patriots football team such as:

  • NEW ENGLAND PATRIOTS® (U.S. Reg. No. 2,766,441)
  • PATRIOTS (& Design) (U.S. Reg. No. 4,668,420)
  • ROAD TO PERFECTION (U.S. Reg. No. 4,250,317)
  • PASS IT ON (U.S. Reg. No. 3,349,437)
  • TROPHY TOWN  (U.S. Reg. No. 3,823,236)
  • PATS  (U.S. Reg. No. 3,144,361)
  • BOSTON THREE PARTY (U.S. Reg. No. 3,773,822)
  • KRAFT SPORTS PRODUCTIONS (U.S. Reg. No. 4,619,577)
  • 3GAMES TO GLORY (U.S. Reg. No. 3,031,278)
  • Design mark below (U.S. Reg. No. 2,755,546), among others

 

 

 

 

 

 

The New England Patriots team is savvy with its trademarks. You may recall that the team applied for, and obtained, a registration for the mark PERFECT SEASON even though the perfect season never materialized for the Patriots. To still obtain the registration, the Patriots licensed the use of the PERFECT SEASON mark to the Massachusetts Interscholastic Athletic Association, which produced a DVD of the 2015 state football championship game between two high school teams–Xaverian Brothers and Central Catholic.  Xaverian prevailed and accomplished a perfect season, winning its 24th straight game (spanning two seasons) as previously discussed on DuetsBlog.

It will be interesting to see which team prevails for its UPRISING mark in the video gaming world.

One Cool Series, One Great Ad

Posted in Advertising, Almost Advice, Fashion, Guest Bloggers, Look-For Ads, Marketing

–James Mahoney, Razor’s Edge Communications

Every now and then, I find pearls floating in the tide of print advertising. These two, for example.

First is the Kiton ad, one of a series the company is running. I liked the whole look and feel of it right away, but didn’t know anything about the company.

I like it even better after doing a little research and learning that Kiton prides itself on its fabrics and the quality of the clothing it creates using them.

These ads work on multiple levels. First, they stand out both for their striking simplicity and for the visual puzzle: why the red dot covering the head? (At least, it’s red to my color-challenged eye.)

Beyond that, the more you look at one of the ads, the more attention to detail you see. There’s deep creative thought behind these.

More important, the first ad you see imprints visual clues that unmistakably identify every subsequent ad you see as a Kiton. In the sea of luxury-good advertising, you too often have to glance at the company name to see whose ad it is.

As I’ve mentioned before, one of the big creative questions is, “How can we indelibly link the company or product name to the creative idea?” Kiton’s campaign achieves this, not least by linking the red-dot head with the red dot on the Kiton i.

Incidentally, the dot over the head probably has an additional benefit for Kiton. Rates and residuals for models vary depending on the image used. Because the Kiton models are unidentifiable, their rate is likely lower than if we could see their faces. Small change in the larger scheme of things, but a benefit for Kiton nevertheless.

The other pearl is this ad for the Omega Seamaster Diver 300M. In case it’s not clear, the tuxedoed Daniel Craig is up to his chin in water. It’s a great visual that pays off the promise that the watch “will take you from the bottom of the sea, to the center of attention, and the top of the world.” Form and function married with fashion illustrated by a brilliant concept.

Illegal Brand Clone, or Evolved Inspiration?

Posted in Articles, Branding, Dilution, Famous Marks, First Amendment, Infringement, Marketing, Trademarks, USPTO

A loyal reader brought to our attention the logo for a rather interesting chiropractic practice:

Without too much pain, can we all agree on the likely inspiration for the above name and logo?

What’s really interesting is that the name Thorassic Park has been federally-registered since 2004, so there is little doubt that the names may co-exist without likelihood of confusion or dilution.

But, what about the visual identities? Don’t they seem far too close, even if the businesses are very different? It appears the chiro-logo is almost a fossil now, having been around twenty years.

How can that be, given the close proximity between Orlando, Florida and Bradenton, Florida? What are the odds that the Jurassic Park franchise owner hasn’t discovered the chiro-logo before now?

And, what are the odds a patient of Thorassic Park in Bradenton might need an adjustment after visiting Jurassic Park in Orlando? Might there be an opportunity for a shuttle service in between?

So, if you are the brand police for the Jurassic Park franchise, does the chiro-logo give you back pain? For the creatives in the crowd, does your spine tingle seeing this painstakingly cloned logo?

Kevin O’Leary Not Nuts About Mr Wonderful

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

We’ve been stalking Kevin O’Leary’s nutty Mr. Wonderful trademark application, for a while now.

In April, we thought the USPTO would refuse registration of Mr. Wonderful for nuts, based on this:

In June, we were shocked to see the USPTO missed issuing the obvious refusal, and in August, we noted and reported that The Wonderful Company LLC had filed an Extension of Time to Oppose.

Just last month, O’Leary’s trademark counsel filed a Request for Express Abandonment of the Mr. Wonderful trademark application, and the USPTO promptly issued a Notice of Abandonment.

One of O’Leary’s most famous lines from Shark Tank seems to fit this very moment, as we mourn the loss of O’Leary’s Mr. Wonderful trademark application for roasted nuts, with a popular meme:

Change Your Name Part 2

Posted in Advertising, Almost Advice, Branding, Domain Names, Guest Bloggers, Marketing, Mixed Bag of Nuts, SoapBox

– Mark Prus, Principal, NameFlash

Last year I wrote a “Change Your Name Already” blog post about Overstock.com on DuetsBlog which described the painful way that Overstock.com was trying to communicate that their name did not fit what they were doing as a business…”we are so much more!” My response was to politely suggest that they call me to help them find a new name that did fit their business model.

Recently MailChimp launched an ad campaign that approached the “our name does not fit our business model” issue from a different angle. In this effort, they celebrate the fact that they have outgrown their name and tell prospective customers that they would like to help them do the same thing.

Brilliant…simply brilliant. Both Overstock.com and MailChimp have outgrown their names, but Overstock.com communicates it in a way that makes the potential customer feel stupid (“you thought we only sold overstock items but you are stupid…we actually do more!”). MailChimp admits they do more than what their name implies and desire to have the same impact on the prospective customer’s business, thereby leaving prospective customers feeling hopeful. Big difference.

So the CEO of Overstock.com should still call me to initiate a name development project…but the CEO of MailChimp can just take a bow!

Leaving Zero to the Imagination in Branding

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

We’ve been down this road before, some themes intersect, and trademark value is filtered out:

The intersecting themes on tap for the day are: Zero, Branding, Trademarks, and Loss of Rights.

ZEROWATER is a perfectly suggestive, inherently distinctive, and federally-registered trademark with “incontestable” status as a source-identifier for “water filtering units for household use.”

Judging from the specimens in the file history at the USPTO, the brand owner appears to have done a nice job leaving consumers to imagine the connection between the mark and the goods.

Branding ZEROWATER with taglines like “For water that’s only water,” “Get more out of your water,”  “If it isn’t zero, zero, zero, it isn’t just water” “If it’s not 000, it’s not ZeroWater,” and “If it’s not all zeros, it’s not ZeroWater,” all help to block Zero from pure and mere descriptiveness:

On the other hand, as the top image of the retail endcap shows (click the image to enlarge), the current packaging and product description adds blunt force to the now obvious meaning of ZERO:

“LEAVES ZERO DISSOLVED SOLIDS BEHIND”

Had this purely descriptive use of ZERO been present at filing, then ZEROWATER easily could have been refused as merely descriptive — why add it now? Especially with this far better existing copy:

“REMOVES VIRTUALLY ALL DISSOLVED SOLIDS”

While ZEROWATER can no longer be challenged as merely descriptive for “water filtering units for household use,” what about future applications having slightly different descriptions of goods?

Given all that Coca-Cola has done to turn ZERO generic in the soft drink category (meaning ZERO Sugars and/or Calories), shouldn’t ZEROWATER remove virtually all opportunities for genericness?

When a brand owner migrates toward descriptiveness with its copy, leaving the consumer with zero need to exercise any imagination as to meaning, there just might be “nothing” left to protect.

The Horror! Government Argues No Claim of Infringement for Unregistered Copyrights

Posted in Articles, Copyrights, Infringement, Law Suits, Loss of Rights

Happy Halloween from DuetsBlog! I write today regarding a scary subject: unregistered intellectual property. The horror! Ask any IP professional about registration, and you’re likely to hear that registration is one of the most important steps in protecting IP. Whether it is a patent, trademark, or copyright, registering IP often provides the IP owner greater rights than if the IP was unregistered. There is sometimes an exception for trade secrets, but that’s for another time…

A scary place for some; credit: Gen. Progress

Registering IP, specifically copyrights, may become even more crucial in the future. One of the most important upcoming U.S. Supreme Court cases this term–which begins in October (coincidental?)–is Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. The appeal addresses the question of whether the creator of an unregistered work may sue for copyright infringement so long as the creator has applied for a copyright on the work, rather than requiring the creator to wait for the Copyright Office to register the work. The dispute comes down to 17 U.S.C. § 411(a), which provides that:

no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

Currently, the Fifth and Ninth Circuit Courts of Appeal have held that creators may sue for infringement as soon as they file the appropriate paperwork and fees for registration. Importantly, the Ninth Circuit encompasses Hollywood, providing greater protection to many of the nation’s creators. I ran into this issue myself on a case in these venues, and thankfully the law in these jurisdictions supported bringing a claim for copyright infringement without awaiting registration.

The Tenth and Eleventh Circuits have held that filing for registration is insufficient; a creator must have obtained preregistration or actual registration to sue for infringement. It’s the stuff of nightmares for procrastinating creators in Wyoming, Utah, Colorado, Kansas, New Mexico, Oklahoma, Alabama, Georgia, and Florida!

But creators around the country, especially in Hollywood, let out a collective shriek when the federal Government filed a brief in support of the Tenth and Eleventh Circuits, arguing that “a copyright-infringement suit may not be filed until the Register of Copyrights has either approved or refused registration of the work.” Beyond the statutory arguments in support of this position, the Government argued that  “although…the registration requirement may temporarily prevent copyright owners from enforcing their rights, that is the intended result of a congressional design to encourage prompt registration for the public benefit.”

Maybe the Government is right; requiring registration will certainly encourage registration. But on the other hand, many small creators either do not have the time or resources to seek registration for every work. However, even in cases in which there is copying, a creator can file an expedited application for registration, which sometimes results in a decision in less than a week.  So perhaps the rule from the Tenth and Eleventh Circuits isn’t that scary after all. A non-expedited application can take months, though. Thus, the rule from the Fifth and Ninth Circuits provides greater protections to creators who may face copying immediately after creating a work and who do not have the ability to file an expedited application. We’ll see what’s in the Supreme Court’s candy bowl this term. To be continued…

Update #2: No Mo MoMaCha (For Now)

Posted in Almost Advice, Infringement, Mixed Bag of Nuts, Trademarks

There’s been a major update in the trademark infringement lawsuit brought by the Museum of Modern Art (“MoMA”) against the cafe and art gallery, MoMaCha in New York City.

MoMA’s motion for a preliminary injunction was recently granted by Judge Louis Stanton of the Southern District of New York. As we discussed previously, the infringement allegations by MoMA were compelling, and it appears the court agrees that MoMA is likely to succeed on its claims, based primarily on the similarity of the marks and the relatedness of the parties’ goods/services in the same city (both parties display works of art along with offering cafe services). The court was particularly persuaded by the similarity of the vertical use of “MoMaCha,” as seen on the coffee cup above, with MoMA’s similar vertical use on the museum building signage above. (See Order at p. 18.)

The court’s preliminary injunction bars MoMaCha from continuing to use its name, logo, and the momacha.com domain name, at least while the legal proceedings are pending. As of today, the previous website, www.momacha.com is no longer accessible.

Instead, it appears that MoMaCha has already rebranded to a slightly different name, by changing one letter: MaMaCha, with a new website already available here: www.mamacha.nyc

Unfortunately, that probably won’t be sufficient to satisfy MoMA’s trademark infringement concerns. Indeed, the New York Times reported that MoMA has already sent a letter to “MaMaCha” regarding the new name and demanding that they cease use. The demand letter closes by stating:

Changing the ‘O’ in MOMACHA to an ‘A’ merely indicates your clients’ continued contempt for MoMA’s trademark rights. Your clients’ decision to change to a mark of such an infringing nature will be done at their peril.

As discussed in my last post, in the midst of trademark infringement allegations, extra caution is warranted. Just as one should be cautious with business expansion under an alleged infringing mark to mitigate damages, extra care is also warranted in selecting a new or modified mark (whether voluntarily or by court order) to avoid similar or further infringement claims, as there will be extra scrutiny and potentially over-aggressive enforcement by the opponent in the present dispute.

And as a practical matter, if one has to expend the effort and resources to re-brand, it may be more cost-effective to make a more significant, lower-risk change, rather than pushing boundaries with a minor change that may again be challenged, instigating further litigation expense, and requiring another re-brand. In many cases, simply changing one letter may not sufficient. Based on these developments thus far, I’m sure there will be interesting updates to come, so stay tuned.