Collaborations in Creativity & the Law

JD Supra Readers’ Choice Awards for 2018

Posted in Articles, Branding, Marketing, Trademarks

We’re humbled and honored to share some exciting news about an accolade just announced today.

For the second year in a row, we have been recognized as the Top law firm writing on Trademarks.

Actually no other law firm has received this particular honor before, as it only has been around two years. I’m speaking about the Trademarks category, recognized by JD Supra, a very large online platform that helps distribute our content and the content of almost 50,000 authors last year.

The list of contributors to the JD Supra platform is quite impressive, and the multitude of law firms that contribute to it include many of the largest in the world, so we’re in pretty good company, especially if law firm size is to be considered an important factor or unit of measurement.

Some of you have found us through JD Supra, some through LinkedIn, some Twitter, and others have been with us since the beginning, more than 9 years ago, finding us the old fashioned way.

However you found us, welcome aboard, and dear readers, thanks for helping us continue to prove that “we punch well above our weight class” — we’re so happy to have you join us on this journey!

March Sadness? No, Our Memories, Priceless!

Posted in Articles, Branding, Marketing, Trademarks

Besides some team tournament sadness, the only thing sad about our remarkable Creative Brand Protection Event was our camera problem, so these few photos are all we have to share, so sorry:

From left to right above, special thanks to Shaelyn Crutchley (former PepsiCo, now Volo Creative), Aaron Keller (Capsule), and Rosalie O’Brien (University of Minnesota), they were fantastic, and their valuable insights about Super Bowl LII, Ambush Marketing, and Brand Protection Strategies were nothing short of brilliant.

Equally exceptional were our three alumni Trademark and IP attorney panelists, special thanks to Sarah Lockner (Ecolab), Sharon Armstrong (3M), and Susan Perera (United Health) — their energy and passion, as guardians of the “most important assets” of their companies, was wonderful to witness and experience. Amazing leaders, they offered very balanced, matter-of-fact, and pragmatic insights on how they approach their important brand protection work and certain trademark enforcement tools.

Duey certainly wasn’t sad either, he was the star of this 9th birthday cake (thankfully captured on my iPhone before cutting), congrats Duey, and thanks for ALL those who joined us, as we look forward to Creative Brand Protection II, date to be announced soon, likely late June, so stay tuned.

Patent IPRs and Allergan’s Sovereign Immunity Defense

Posted in Agreements, Contracts, Law Suits, Mixed Bag of Nuts, Patents

In an age of rising healthcare costs, pharmaceutical companies can be an easy target in calls for patent reform.  Patent protection helps drug manufacturers recoup their investment in developing the new drug,.  It also prevents generic manufacturers from releasing the same drug formulation at lower cost.  The Hatch-Waxman Act provides a pathway for generic manufacturers to challenge branded drug patents, but this type of challenge requires costly litigation.


Inter Partes Review

Enter the Inter Partes Review.  An Inter Partes Review (IPR) is a procedure before the Patent Trial and Appeal Board (PTAB) for challenging the validity of a patent.  IPR proceedings provide an expedited and cost-effective alternative to litigation.  The IPR process was introduced in 2012, and since then, hundreds of patents have been invalidated using this process.  In the pharmaceutical industry, IPRs provide generic drug manufacturers with an additional or alternative path to challenge branded drug patents.


The Allergan Case

In 2016 and 2017, generic drug manufacturers filed IPR petitions seeking to invalidate patents owned by drug maker Allergan on its branded prescription eye drops, Restasis.  In response, and less than a week before a scheduled hearing before the PTAB, Allergan transferred its patents to the Saint Regis Mohawk Tribe.  Like states, Native American tribes have sovereign immunity, and therefore are not subject to private lawsuits.  The idea of sovereign immunity is codified in a Constitutional Amendment, and it stems from the basic notion that you cannot sue a monarch.

The Allergan-Tribe agreement provides for an initial payment of $13.25 million, plus an annual royalty of $15 million paid to the Tribe.  In exchange, the Tribe agreed to exclusively license the patent rights back to Allergan.

Shortly after the agreement was finalized, the Tribe moved to terminate the IPR proceedings on the basis of its sovereign immunity.

There are many opinions about both the legal and moral implications of this agreement, with some calling it a sham transaction.  In a highly unusual move, the PTAB authorized interested third parties to file amicus curiae briefs.  A total of 15 briefs from outside parties were filed, including some from other Native American Tribes.  Seven briefs were filed in support of the Tribe’s (and Allergan’s) sovereign immunity argument, while eight argued against it.  Briefs siding with the Tribe cited prior PTAB decisions recognizing sovereign immunity for states, and dismissing IPR proceedings initiated against state universities.  Briefs arguing against the Tribe’s motion cited a lack of precedent with respect to tribal-specific sovereign immunity, and asserted the question should be left for Congress.


The PTAB’s Sovereign Immunity Decision

Ultimately, the PTAB decided last month to deny the Tribe’s motion to terminate the proceedings.  See the decision here, courtesy of Patent Progress.  The PTAB differentiated tribal sovereign immunity from state sovereign immunity, and broadly held that tribal sovereign immunity does not insulate a patent from an IPR proceeding.  The Tribe and Allergan are seeking to appeal the decision.

What do you think?  Just as a matter of policy, should companies be permitted to transfer their IP to sovereign entities to avoid this type of challenge?  The PTAB’s distinction between tribal and state sovereign immunity suggests that if Allergan had made this same agreement with a state university instead of a tribe, the IPR would have been terminated.  Is that the right distinction to make?


Posted in Trademarks

I’m counting down the minutes to leaving my office later today to begin my favorite weekend of the year – the first weekend of the NCAA Tournament!  Even though my bubble was bursted on Selection Sunday – my team didn’t make it this year – I am always thrilled by the drama of tourney time and watching unpaid athletes play their hearts out hoping to bask in their one shining moment.  Incidentally, not a single team from Wisconsin made the tournament?  When was the last time that ever happened?  To take that even a step further, when was the last time not a single team from Minnesota, Iowa, or Wisconsin was in the tournament?  That must be a rarity.

There have always been a number of trademark issues surrounding the tournament – whether it’s a team’s name or mascot, the rights of a student-athlete, or using NCAA marks in any advertisement.

I’ll just get this well-worn recommendation out of the way – MARCH MADNESS, unless you’re a paid sponsor of the NCAA, don’t use it.  Not on an ad.  Not on a beer-themed bracket, like this one from last year (and I didn’t find one yet for this year on the site).  Not even as MARKDOWN MADNESS for something as seemingly unrelated to basketball tournaments as automobile dealership services or MUNCH MADNESS for providing information about restaurants; restaurant reviews; and an online tournament allowing people to rank restaurants.  (Psst…the NCAA even owns the mark MUNCH MADNESS, after it was transferred from a NY Times entity).

Unless you’re an official NCAA bracket game, you may even want to avoid using the word BRACKET in advertisements during this time.  Yes, the NCAA recently challenged a filing for DON’T LET ONE TEAM BUST YOUR BRACKET only on the basis of their alleged continuous use of “images of brackets, and marks consisting of or referring to the term BRACKET, in commerce in connection with entertainment services, and related promotional and sponsorship services.”  After two years, the applicant withdrew the application.

Since the NCAA purchased the trademark registrations, and associated rights, to MARCH MADNESS in 2010 (yes, can you believe DuetsBlog has been around longer than that?) purportedly for about $17 million, the NCAA has taken legal action against more than a dozen other marks, like MARCH WAGNESS, and likely many others through demand letters and discussions.

Aside from not using the NCAA’s marks and purchasing rights to protect your marks, there are a couple other important trademark considerations that the NCAA tourney tips off:

Meddle with unitary marks with caution (and preferably not at all). Despite all they hoopla (haha) about MARCH MADNESS, the NCAA filed an application for MARCH TO THE MADNESS, inserting two small but critical words into the well-known MARCH MADNESS mark.  It’s a clever play on the mark, but in some circumstances could ultimately could serve to weaken the strength of MARCH MADNESS.

– Employment contracts can impact trademark rights.  A CBS Sports reporter and online columnist filed an application for THIS IS MARCH. for apparel.  Employment agreements – as well as legal precedence with respect to the employee-employer relationship – often deem any intellectual property related to the employee’s work for the employer as being owned by the employer.  Given the discussion about paying student athletes (and the scandal surrounding payments or favors surreptitiously made to court high school players), could players potentially be “employees” thereby creating questions of ownership of player-related trademarks like Anthony Davis’ UNI-BROW?

Enjoy the games this week – the best week of the year!


Join Me at Capsule’s Think & Link on Thursday

Posted in Articles, Branding, Marketing, Trademarks

Capsule has been putting on a pretty cool monthly event for some time, aptly called Think & Link.

Join me at Capsule this Thursday morning (7:30 AM) where I’ll discuss building the Duets brand.

Here is where you can RSVP, hope to see you there! By the way, thanks for the invitation, Aaron.


Update: PayPal v. Pandora Settlement

Posted in Agreements, Branding, Famous Marks, Law Suits, Mixed Bag of Nuts, Trademarks

Last year I posted about the trademark infringement complaint by PayPal against Pandora, based on Pandora’s rebranded “P” logo that was introduced in October 2016.  See a comparison below of PayPal’s blue “PP” design mark (left) with Pandora’s blue “P” design mark (right).

Last November, the parties reached a written settlement agreement and stipulated to dismissal of the lawsuit.  There was some media coverage of the settlement, but no details of the settlement were discussed in the media nor in any comments from the parties. A spokesperson for PayPal commented only that “we have resolved this matter amicably.” Thus it appears the terms of the settlement were confidential.

Despite such confidentiality, it has seemed, at least for the past few months, that Pandora was on the winning side of the dispute, as it continued using its blue “P” logo without any changes. Nevertheless, since my post last year, I’ve kept an eye on the logo, as it’s relatively common for settlement agreements in trademark disputes to have extended “phase-out” periods, in which a party is given some time period (such as three months) to phase-out an infringing mark and switch to a rebranded mark.

Last week (roughly three months since the date of settlement), I noticed the Pandora logo on my iPhone app had suddenly changed, see below.


After some (very brief) searching, I could not find any announcement or mention of the new logo on Pandora’s website or blog, nor on Pandora’s Twitter feed. Nor have I found any other significant media or online discussion of the new logo, yet. This is a bit surprising in light of the extensive marketing and announcements surrounding the previous rebrand.

I believe the logo change occurred about a week ago, based on when my iPhone app updated, but I can’t be sure. Perhaps this is just a temporary or seasonal logo change for other reasons, but I can’t think of a reason why. Nor does it appear to be limited to the iPhone app–the new logo also appears in the Google Play store, on Amazon, on Pandora’s official Twitter account, and its YouTube channel.

Just a wild guess, but perhaps the written settlement agreement required Pandora to change its logo within three months, and also required both parties to remain silent and refrain from any announcements of the new logo? And just another guess, if that’s the case, perhaps Pandora requested confidentiality, and silence regarding the rebrand, to avoid any suggestion that PayPal’s claims were meritorious (i.e., that Pandora’s logo infringed or diluted PayPal’s logo), or that Pandora was on the losing end of the settlement.

What do you think? As I only searched briefly, let me know, have you found any other discussion or media coverage yet of the new logo? Also, what do you think of the new logo from a branding perspective? Not sure I like the contrasting color combinations, but I could get used to it.

USPTO Adds New Tool to Fight Fraud

Posted in Trademarks, USPTO

Yesterday the U.S. Patent and Trademark Office announced a new pilot program to help fight fraudulent trademark applications. Specifically, the new program addresses situations where the applicant provided the USPTO with a fraudulent specimen to demonstrate use of the trademark.

Only a narrow subset of fraudulent applications would be vulnerable to a claim under this pilot program. One example could include the whiskey specimen shown below.

Based on the name alone, I assume this is some high quality booze. However, it might surprise you to learn that this is not a real bottle of whiskey. I just created it using it in MS Paint (cue mindblown gif).

Most attorneys understand that submitting this as a specimen would constitute fraud on the USPTO. However, not all individuals and companies understand the use requirements for obtaining trademark protection in the U.S. Some may mistakenly believe that registering a trademark is merely a ministerial act, requiring only a picture of how the applicant plans to use a trademark. Others might understand the requirement, but simply don’t care about the legal ramifications of submitting a fraudulent specimen.

It is not unsurprising that many fraudulent specimens come from foreign countries and, in particular, individuals in foreign countries.  A real life example of a possibly fraudulent specimen was submitted for this application, and is shown below.

Based on the lack of information on the label and the positioning of the wording, it appears that the applied-for mark was digitally added to the image. This is an example of the type of fraudthat can be submitted through the new pilot program.

The full details of the pilot program are available here. The basic details include:

  1. Eligibility: the allegedly fraudulent specimen “is potentially not in actual use, but has instead been created for the purpose of submission to the USPTO as a specimen.”
  2. Evidence: Supporting evidence must include either (1) references to prior registrations or applications that show the same “mock up” or digital specimen with different marks (i.e., a company has applied to register five trademarks for whiskey, and submitted five version of the same mock up imagine but with different marks; (2) evidence showing use of the same digital image from a third-party on a website, advertisement, or other publication that shows that the alleged fraudster merely deleted wording and added its own mark.
  3. Reporting procedure: an email must be sent to the USPTO.gov email addressed identified in the Pilot Program instructions. There is not a formal online submission form. The email must include “Duplicative Specimens — [Serial Number]” in the subject line, provide any additional serial numbers in the body, and include the supporting evidence.
  4. Timing: The USPTO will consider evidence sent prior to the opposition deadline, or likely any time if the application has not yet been approved for publication.


The program is narrowly tailored, but will certainly be helpful to address some of the most egregious cases of fraud. These types of fraud may also be difficult to uncover before the end of the publication period. Nonetheless, it is encouraging to see the USPTO institute programs like this, as it allows the USPTO to help combat fraud within the applicable statutory constraints.

We’re Nine, That’s Lots of Blogging Birthdays!

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

Can you believe it? Nine times, we’ve celebrated our birthday with you (our amazing readers and supporters) — it all started with Dr. No and the Parade of Horribles; then a Seth milestone here.

A Ron milestone there. We’ve hardly taken a day off, much less skipped a class, or been called out as absent from any serious discussion on any of the many IP topics we’re truly passionate about.

Let’s be clear, this is no fool’s paradise, we won’t be led down the primrose path, it’s time to wake up and smell the coffee — are those enough hints to the first link in this blog post, Mr. Rooney?

Heartfelt thanks to all our regular writers (past and present), our guest bloggers, and also those who generously share their insights by posting comments or spreading the news in other ways.

What you’ve done over the past nine years to support our passion and to help make this dialogue and graceful collaboration a remarkable success, is not unnoticed, we appreciate each one of you.

By the way, we’ll be cutting more than virtual birthday cake on Thursday, at our Creative Brand Protection event, so here is your last chance to request an invite for a few remaining open seats.

The Sweet Smell of Registration

Posted in Non-Traditional Trademarks, Smell, USPTO

Last year we took a whiff of Hasbro’s application to register the smell of its Play-Doh® for “toy modeling compounds.” We didn’t think the application was ripe for a functionality refusal, but a refusal on the ground of a lack of acquired distinctiveness seemed like a certainty.

An Office Action issued on May 26th, 2017, refusing the application on the ground of a lack of acquired distinctiveness. The Office Action also included a number of Requests for Information to determine whether a functionality should issue, too.

For the uninitiated, a trademark must be distinctive in order to be protectable. Because a scent mark cannot be inherently distinctive, an applicant must establish “acquired distinctiveness,” also known as “secondary meaning,” to obtain a registration. Essentially, acquired distinctiveness means that the claimed mark may not have been a symbol of the source of the goods, but because of advertising, commercial success, publicity, etc., the public has come to recognize the claimed mark as a identifying a particular source for the goods.

For attorneys looking for a good playbook as to how to establish acquired distinctiveness, look no further than Hasbro’s Response, filed on November 27. The Response includes pretty much every piece of evidence that you could ask for.

It included the classics:

  • Sales numbers, more than a billion since 2004 in the U.S.
  • Advertising numbers, $77 million since 2004 in the U.S.
  • Longstanding use, since the year 1956
  • Unsolicited media attention referencing Play-Doh’s “unique and distinctive smell” and its “legendary scent”

It included new hits, like screenshots of social media of consumers talking about the memory of the smell of Play-Doh as a child. It also included “blogs written by experienced attorneys who opine on the source-identifying function and registrability of the applied-for mark.” Looking at those articles, you might even recognize a familiar blog post. No need for any thanks, Hasbro. But on a completely unrelated note, this R2-D2 Play-Doh set looks pretty great. Just saying.

The Response also included the obligatory declaration from a Hasbro head honcho to support these claims. The declarations always have at least one over-the-top assertion that you just can’t help but include. Here, it was the reference that Play-Doh for some people is “as identifiable as their mother’s faces.” Might be a bit of a stretch, not that I’m saying I wouldn’t have included it though. For me, the gem is the strange but unforgettable fact that since 1956 more than 950 million pounds of Play-Doh had been sold. If only it had included a reference as to how big that Play-Doh boulder would be.

And yes, the Response even included the coveted, but not always available “look for advertising”:

I’m not entirely convinced this qualifies as “look for advertising” though. It doesn’t direct consumers to the claimed trademark like a “look for the purple cap!” might do. Just looking at the advertising doesn’t tell me what type of smell I’m looking for. It’s close enough though, and the rest of the evidence is pretty compelling.

So, do you think the evidence was successful? Could the examiner smell what Hasbro was cooking? If you guessed yes, then congrats. The application published on February 27. Now all that is left is to see whether any of Hasbro’s competitors file an opposition to the application.

It’s certainly possible that a competitor might feel that providing Hasbro with ownership of the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough” might put them at a non-reputational, competitive disadvantage. In theory, it doesn’t seem like granting Hasbro the registration will be problematic, but in practice it will depend upon how broadly Hasbro interprets its rights.

But that may be parting the cart before the horse. Let’s wait and see how the next 35 days go before we start talking enforcement.

Amazon Smiles With Iconic Non-Verbal Logo?

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Trademarks, USPTO

Yesterday, while on the highway heading to a client meeting, I noticed a truck that looked like this:

It reminded me of the plentiful ink we’ve spilled over the years about singular iconic non-verbal logos that can truly stand alone. Remember Seth Godin’s generous insights shared, here?

Given the dominant display of Amazon’s non-verbal logo shown above (without the Amazon brand name), it’s probably time to ask: Does or Can the Amazon Non-Verbal Logo Truly Stand Alone?

Over time, Amazon carefully and strategically has migrated and associated the non-verbal logo with other Amazon indicia, while omitting the likely famous Amazon word mark and brand name:


These variations look to be on the way, with Amazon not only smiling, but licking its chops as well:

So, I’m thinking Amazon’s “smile or curved arrow” design logo, has been out and about without a parent or guardian long enough, and it can and does truly stand alone, what do you say?

Back to the question in the title of the post, what do you see, a smile or a curved arrow, or both?

The more messages the better, at least from a trademark perspective, especially in thinking about Amazon’s scope of rights having no singular meaning, right?