DuetsBlog

Collaborations in Creativity & the Law

Kris Lindahl Owning a Wingspan Trademark?

Posted in Advertising, Articles, Branding, Marketing, Trademarks

If you’ve paid attention to any billboards in the Twin Cities over the last year or so, you’re probably wondering why I haven’t discussed this one yet, knowing my passion for billboard ads:

The Kris Lindahl billboard ads — especially this one —  are hard to ignore. They are almost as ubiquitous as a certain iPhone Xs ad. Plus, this one strikes a pretty distinctive wingspan pose.

Apparently there is an art or science behind poses for real estate agents, but as far as I can tell from a Google search, none appear to cry out “wingspan” like Kris’ does, so is the pose ownable?

Seems pretty clear from how his name is used as a mark on this billboard that Mr. Lindahl’s eponymous Lindahl Realty firm is on the way to registering his personal name as a service mark.

While it isn’t always a cake walk, in obtaining federally-registered service mark rights in a personal name, what I’d really like to see Mr. Lindahl attempt next is registration of his wingspan pose.

What would you rate his chances, putting aside whether you like the above billboard ad or not?

Talking the Trademark Talk

Posted in Mixed Bag of Nuts

When we are not walking the trademark walk (or posting the trademark posts) we are talking the trademark talk.  Dear readers, I would like to invite you to join me and my esteemed colleague Patrick Gallagher, member of the Cozen O’Connor firm’s Trademark & Copyright Group, for a live online talk through the often seemingly confusing law of likelihood of confusion in trademark prosecution. The webinar will be held from 12:00 to 1:30 PM CT this Thursday, December 6.  Learn more and register through this link.

Strafford, an excellent resource for CLEs, has generously offered a few complimentary passes, good for CLE credits, too, all you have to do is ask.  Simply send me an email requesting a pass before 10:30 AM CT on Thursday, December 6, and if passes remain, I will gladly share one with you!

In the meantime, enjoy this oldie-but-goodie, and still relevant treat from 2015, sure to be mentioned in the presentation Thursday:  Peace, Love, and Trademarks, all!  Hope you’ll join us!

SCOUTING Trademark Infringement: Girl Scouts v. Boy Scouts

Posted in Branding, Dilution, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

The Boy Scouts of America (BSA)’s decision last year to end its boys-only policy was met with mixed reactions.  Some lauded it as a progressive victory.  Others, including former Girl Scouts, viewed it as a thinly-veiled corporate strategy and a loss for girls.  As part of an early adopter program, more than 3,000 girls have already signed up to be BSA Cub Scouts.

To help solidify its more inclusive policies, the Boy Scouts also announced a new branding strategy.  Beginning in 2019, the organization will be known as Scouts BSA.  The rebranding efforts include a new tag line: “Scout Me In.”

The Girl Scouts of the United States of America (GSUSA) has been openly and decisively against the Boy Scouts’ policy change.  In a public letter to the Boy Scouts, the GSUSA expressed its concern regarding what it perceived as the “short-sightedness of thinking that running a program specifically tailored to boys can simply be translated to girls.”

In a blog post on its website, GSUSA wrote, “We believe strongly in the importance of the all-girl, girl-led, and girl-friendly environment that Girl Scouts provides, which creates a free space for girls to learn and thrive.”  It continued, “The benefit of the single-gender environment has been well-documented by educators, scholars, other girl- and youth-serving organizations, and Girl Scouts and their families. Girl Scouts offers a one-of-a-kind experience for girls with a program tailored specifically to their unique developmental needs.”

The Girl Scouts are now suing the Boy Scouts for trademark infringement, trademark dilution, and unfair competition.  The GSUSA asserts that its right to use the SCOUT and SCOUTING marks in connection with development programs for girls has been long recognized by the TTAB and the Boy Scouts.  GSUSA notes that the two organizations’ use of the SCOUT, SCOUTS and SCOUTING marks have, until recently, “either been preceded by words like BOY or GIRL . . . or appeared in a context making clear that the programs at issue were developed by one organization or the other.”  In the complaint, the Girl Scouts provide evidence of confusion among the public resulting from the Boy Scouts’ use of the ungendered terms.  Cited examples include cases of girls accidentally signing up for Boy Scouts programs and parents believing the two organizations have merged.

The GSUSA seeks an order blocking the Boy Scouts from using SCOUT, SCOUTS, SCOUTING, or SCOUTS BSA without “an inherently distinctive or distinguishing terms appearing immediately before it,” in connection with services directed to girls.

This is not the first time the two groups have fought over branding.  Prior to 1917, the Girl Scouts were instead known as the Girl Guides.  When the change to “Girl Scouts” was announced, the chief executive of the Boy Scouts accused the group of “trivialize[ing]” and “sissify[ing]” the term.  According to the Atlantic, the Boy Scouts even sued over the name change.

Another Suggestive Log for a Trademark Fire

Posted in Articles, Branding, Marketing, Trademarks, USPTO

You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

Are You Ready for The Battle at First Avenue?

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

The anticipation is building for this inaugural battle of the bands to raise money for a great cause:

“The Twin Cities advertising and communications industry lacks diversity. It’s a serious challenge. And it’s a problem that won’t be solved overnight. But there’s no reason we can’t have a little fun as we work to ensure our industry better reflects society as a whole.”

“The local marketing community will descend on First Avenue on December 6 for a friendly battle-of-the-bands competition that will raise scholarship money for diverse students seeking a career in the advertising and communications field. The scholarship fund is part of a new collaboration between the University of Minnesota’s College of Liberal Arts, CLAgency, its student-run agency, and The BrandLab.”

We look forward to spending time with our very creative friends in the Twin Cities advertising and communications community — thrilled to be the law firm sponsor of this incredible event, please join us at First Avenue Thursday December 6, from 5 – 11 PM ($20 tickets are available here).

OK, we won’t be singing the notes, strumming the guitars, pounding the keyboards, or blowing on any horns ourselves, but we’ll proudly beat the drum hard for this awesome competition and fundraiser event, as we sip on our signature cocktail for the evening, please come, see you soon:

On a Roll with Tasty Marketing

Posted in Food, Guest Bloggers, International, Mixed Bag of Nuts

–James Mahoney, Razor’s Edge Communications

It was festival time in Italy when I passed this food truck at an Abruzzo village’s celebration. I understand a little Italian (and speak even less), so what initially caught my eye was the crowd and the fun-loving couple serving up the goodies.

I knew that “Amici delle” on the sign and t-shirts means “friends of,” but didn’t know what “Fregne” means. Turns out, it’s the name that Elena Iannone gave to her special take on a type of Abruzzo pastry that she and her husband sell from the truck.

Only later, when I was gazing at the photo, did I spot the clever warning on the sign in the bottom-right corner of the case:

“Gli amici delle ‘Fregne’ declinano ogni responsabilita da un eventuale dipendenza!” (Loosely: Friends of the “Fregne” take no responsibility for you becoming addicted!)

How’s that for a not too subtle boast about the quality of your tasty pastries?

Not content with that, though, the Amici take it further. The offerings have names like Exotic, Delicate, Greedy, Widow, Kinky, and a few others that hint at the meaning of Fregne, which none of my Italian dictionaries defines. Suffice to say that the jovial Elena has both a sense of humor and a marketing instinct.

Most of the time when we talk about marketing and advertising campaigns, the subject companies are well-known, at least regionally, and often nationally or internationally. But lots of little one-offs, like the Amici delle Fregne, produce creative, consistently on-brand approaches that are qualitatively right up there with the big leaguers.

And like the big leaguers, when your marketing is good, your product better live up to it. Based on what I saw that night, when the Amici were happily handing over a steady stream of Fregne, they more than deliver on that front.

What About the SuperAmerica Trademark?

Posted in Advertising, Articles, Branding, Goodwill, Loss of Rights, Marketing, Trademarks

Loyal readers know that trademark rights are dynamic, use-it-or-lose-it intellectual property rights.

So, when signage announces a name change, it jumpstarts the question of trademark abdonment:

The above signage and reporting around the sale and rebrand of SuperAmerica convenience stores seem to suggest the SuperAmerica name will cease to be used, bringing Speedway coast-to-coast.

Time will tell though if there is a plan in place to avoid legal abandonment of the SuperAmerica trademark, so that it does not become part of the public domain, available for others to adopt.

We explored this important question a few years ago, when we discovered Chevron’s efforts to maintain exclusive rights in the Standard trademark:

“Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because ‘token use’ of a trademark was rejected as a ‘use in commerce’ in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing ‘token use’ as a now failed way of developing trademark rights, the definition of ‘use in commerce’ was amended to add this critical language, requiring the use to be: ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.’

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made ‘merely to reserve a right in a mark.’ Congress did indicate that what constitutes use ‘in the ordinary course of trade’ will vary from one industry to another. It also noted that ‘use in commerce’ should be ‘interpreted flexibly’ so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.”

It appears most of the SuperAmerica trademark registrations recently have been renewed, so with ten year terms, it likely will be several more years before we begin to see what, if any, use is relied upon at the Trademark Office to maintain registered rights in the SuperAmerica mark.

In the meantime, what do you think, is there a plan in place to maintain rights in SuperAmerica?

Will “Return Mail” Create an Escape from the Supreme Court’s Holding in “SAS”?

Posted in Articles, Infringement, Law Suits, Patents, Squirrelly Thoughts, USPTO

Readers of this blog may recall that in the past year, I wrote extensively about the U.S. Supreme Court case of Oil States v. Greene’s Energy. But I paid little attention to another important case decided around the same time: SAS Institute v. IancuOil States centered on whether the USPTO’s inter partes review (“IPR”) process (challenging a patent at the USPTO, rather than in court) was constitutional. SAS followed up with a seemingly less-pressing issue: whether, when the USPTO institutes an IPR to reconsider a patent by accepting an IPR petition, the USPTO must decide the patentability of all of the claims of the patent that the IPR petitioner challenged in the IPR petition. The Supreme Court ruled that IPR is constitutional in Oil States and that the USPTO must decide the patentability of all of the claims which were challenged in the accepted IPR petition in SAS.

Just this week, I was attending a “Supreme Court Preview” event hosted by the Eighth Circuit Bar Association. One of the topics was upcoming patent cases before the Supreme Court. I’ll admit; they’re not as juicy as last term (but perhaps only lawyers would have salivated over last year’s cases). However, one gave me a squirrelly thought: Return Mail v. United States Postal Service. The major issue in Return Mail is whether the federal government is a “person” who may petition to institute review proceedings before the USPTO.

Credit: Channel 3000

Technically, Return Mail doesn’t involve IPR, but rather a different proceeding called covered business method (“CMB”) review. CMB review, as its name implies, is limited to review of business method patents–that is, patents that claim a method or apparatus for performing data processing or similar operations relating to the practice, administration, or management of a financial product or service. But CMB review is very similar to IPR; a person files a petition with the USPTO seeking review, and the USPTO decides whether to institute proceedings. For example, in the Return Mail case itself, Return Mail, Inc. sued the United States Postal Service (“USPS”) for infringement of a business method patent described as: encoding information about the name and address of intended recipients in the form of a barcode, returning undeliverable mail to a processing location, scanning the barcode, obtaining the corrected information, and then providing that information to the sender to choose whether to resend with correct addressee information. (Description in the Federal Circuit opinion.)

Credit: Postal Reporter

Does Return Mail’s patent seem a little…obvious? Sounds like USPS might have a good shot at challenging the patent via CMB review, right? That’s what the USPS thought, so it petitioned for CMB review of certain claims of the patent. There’s just one problem: current patent law says that only a “person” can institute CMB review, and that person must meet certain other requirements, which include being sued or charged with infringement. Is the USPS–an arm of the government–a person? Current patent law does not define the term. In a short opinion, the Federal Circuit held that the federal government is a “person” for the purposes of CMB review. There was a fiery dissent. The Supreme Court granted cert on this specific question.

And here is where the squirrely thought arises. Just like CMB review, IPR review starts with a petition by a “person.” But unlike CMB review, an IPR petitioner need not have been sued or charged with infringement. Indeed, an IPR can be instituted by any person “who is not the owner of a patent.” 35 U.S.C. § 311. The USPTO must review all claims challenged in a petition if the USPTO accepts the petition. But the USPTO might not want to do that in every case–as in SAS. If the government is a person, can it escape SAS‘s mandate by filing its own petition for IPR limited to the claims it actually thinks should be evaluated?

The process would go something like this: (1) the USPTO receives an IPR petition from a third party and reviews the petition, (2) the USPTO determines it would like to institute review on some of the claims of the patent challenged in the petition, but perhaps not the same claims as those listed in the petition, (3) the USPTO works in collaboration with another governmental agency (say, for example, the Attorney General or USPS), (4) the other governmental agency files a petition for IPR of the same patent, but on the claims and grounds desired by the USPTO, and (5) the USPTO accepts the governmental petition, achieving the goal of escaping SAS‘s mandate that it decide the patentability of claims listed in the third party petition that the USPTO thinks need not be considered. And voila! Return the earlier petition for IPR as uninstituted to sender.

Thus, affirming the Federal Circuit could provide the government an escape from SAS, so to speak. While reversal could preclude agencies like the USPS from seeking cost-effective review of patents with the USPTO. What do you think?

Watch Out: Unauthorized Changes in USPTO and Amazon Brand Records

Posted in Almost Advice, Technology, USPTO

Trademark owners should beware of a scam involving the Amazon Brand Registry. There have been several reports of rogue users exploiting the Amazon Brand Registry through the unauthorized modification of trademark registration records at the U.S. Patent and Trademark Office (USPTO). These scammers are submitting fraudulent requests to change the email addresses for trademark registrants, and thereafter, updating the brand ownership records with the Amazon Brand Registry.

As we have previously discussed, trademark infringement and counterfeiting is an ongoing issue on Amazon. In recent years, Amazon vastly improved its brand protection capabilities with the Amazon Brand Registry. Enrollment in the Amazon Brand Registry, which requires a trademark registration, allows brand owners to control the detail pages for their product listings (which Amazon otherwise controls), and create customized “Store” pages to showcase their branded products. Enrollment also provides access to powerful tools for reporting intellectual property violations and removing infringing product listings.

Because Amazon relies on USPTO records to verify the owner of the trademarks that are registered in the Amazon Brand Registry, this scam can result in the true trademark owner losing control of their brand and store pages on Amazon, and hindering their ability to report intellectual property violations. Indeed, the scammer can take over the brand owner’s store pages and product listing details, and sell their own counterfeit products from such pages instead.

Unfortunately, until security measures are improved by the USPTO, this is a scam that is difficult to prevent. For example, the USPTO could require additional authentication before approving an address change request, such as sending a security code to the current address of record, but such an improvement has not yet been implemented. For now, the USPTO is monitoring every address change request while it “explores a long-term solution” to stop the fraud.

In the meantime, trademark owners should always ensure that email addresses are up-to-date in USPTO records, so that any notices regarding address changes are received. Furthermore, it may be worthwhile to do a spot check of registration records to see if any unauthorized changes have occurred. If you see any unauthorized changes, you should contact your attorney, inform the USPTO at teas@uspto.gov, file the appropriate forms to correct USPTO correspondence records, and then get in touch with the Amazon Brand Registry to correct any unauthorized changes.