Jason Voiovich

Last week, we saw the latest installment in the “trademark bullying” saga. But this time was different. Instead of lawyers fighting amongst themselves, DuetsBlog brought out the big gun: Seth Godin. You can read the entire piece here. I like Seth Godin, and so do lots of other people (hence, the “big gun”). I read the comments (over 30 from my count). It seems to make people feel better to have someone with credibility give voice to their frustration.

I’m not against feeling better; mental health is a big deal. But as I read situation after situation, I am struck by how cases of trademark bullying almost always turn out: The small business loses.

Perhaps they don’t lose in the legal sense, but they lose in nearly every sense that matters to a small business: Time, Energy, Money, Resources, and Attention. Every moment addressing a trademark issue is a moment not invested in their business. Small businesses do not have any of those assets to spare. Large organizations do. They have legal teams that shield their workers from the ongoing drama. They have marketing budgets to drown out negative publicity. If all else fails, they have the resources to outlast you. In over 10 years of public attention, is it any wonder their behavior hasn’t changed?

Public shaming feels good, but it is not working.

It’s time to act.

To act, small business owners need reliable information about their risks. They need that information in advance of a trademark filing, and even in advance of first usage – after-the-fact litigation or advertising insurance don’t solve the problem. And finally, they need accessible and affordable information – calling your lawyer before each decision is not realistic.

In other words, small business owners need an ounce of (affordable) prevention, not a pound of cure.

Here’s my proposal.

To explain it, I am going to adapt Guy Kawasaki’s new business pitch format. At the end, I am going to ask you to invest. Let’s go.

Define the problem.

Trademark owners rightfully defend what they’ve built. However, when they overstep, there is no downside for their behavior. Even if they “lose” in court, they don’t really lose. They create a “chilling effect” for future conflicts. Additionally, they can restrict the distraction in their organization to only their legal team (who, to them, this is not a distraction). By contrast, there is plenty of downside for the small business owner. An unfavorable result in a lawsuit can put a small company out of business. But even if you win, you lose. Distractions are killers.

How does your product solve that problem?

Prevention is the best cure. Imagine a “Trademark Risk Score” much like a credit score. At “1” might be a name you completely invent from random characters. At “100” might be naming your tech company “Big Apple Computers” – an algorithm automatically scores everything in between.

Underlying magic or technology.

Building the algorithm seems easy, but it is not. Factors could include the number of existing trademarks, the size of the companies with those marks, matches in categories of use, length of trademark ownership, recent court decisions or filings, etc. But those factors don’t make an algorithm any more than ingredients don’t make a recipe. The “magic” here is using professional attorneys to “train” the algorithm and improve it.

Business model.

Small business owners could buy access to the system as a one-time purchase (like a “risk check”) or as a subscription (like a “regular checkup”). Accelerators and angels offer this subscription as a service to their startups. I could even see entrepreneurial publications (cough, cough) providing this to their subscribers as an add-on. Lawyers could advertise their services. You get the idea.

Go-To-Market plan.

Aggregators of small businesses are key to the strategy; reaching them 1:1 is cost prohibitive. Fortunately, there are plenty of accelerators, gig economy supporters (e.g. WeWork), and trademark lawyers in the world.

Competitive advantages.

The biggest competitor to this idea is a data aggregator named Trademarkia. However, their service still relies on you as the small business owner to know what you’re looking for (and I don’t think their search functions or aggregation is all that “smart”). If you’re confused, they offer expensive add-on services ranging in cost up to $10,000. That’s not going to fly for the average small business owner. They need something easier to understand and digest.

In this proposal, you plug in a few details, the algorithm spits out a risk score. Is it perfect? No. Will it protect you? No. But it will give you critical information you need to make an informed decision on next steps based on your risk tolerance.

Management team.

This solution will require three key groups of people – tech (to write the learning algorithm), lawyers (to train it), and marketers (to promote it). I wonder if I know any of those people who might be reading this?

Financial projections.

Based on the 300,000 (or so) new businesses started in the United States each year, and a 20% penetration rate for my TAM, and a $100 subscription price, I calculate about $6 million in annual revenue. Back of the napkin, but it’s a business.

Rollout plan and milestones.

I am putting my money where my mouth is – with hard cash. I am committing publicly to the first $1,000. That’s (obviously) not enough to get started, and there is hardly enough detail in this “proposal” to make a formal investment decision, but perhaps it’s enough to get others interested and begin the conversation.

Hate this idea? Awesome! Use it (copyright free) to come up with your own idea.

Just don’t keep public shaming. That’s not helping anyone.

Let’s be very clear, today is April Fools’ Day, but this is not an April Fools’ Joke.

It’s not every day Seth Godin volunteers a guest post, but Thursday was that day.

Friday we published Stop Bullying the Entrepreneurs, 33 comments and counting.

This isn’t the first time Seth has spoken out against trademark bullying, he’s on record before noting: “When a brand becomes a bully, it loses something vital.

And: “If you want to keep the taco place down the street from infringing on your business, don’t hire lawyers to hate on their slogan. Make better tacos instead.”

On Friday Seth went to public bat for kindred spirit and entrepreneur Jen Lehner:

Seth called out Entrepreneur Magazine for going after the name and mark for Jen’s podcast, “The Front Row Entrepreneur” — described by Jen this way: “The Front Row Entrepreneur gives you a front row seat to all of the most exciting people and happenings in online marketing and entrepreneurship.”

To Seth’s point, it’s difficult to create a podcast designed for an entire class of people known as entrepreneurs and not have the ability to include “entrepreneur” in the name, because it is: “One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.”

Actually, that’s a fair point, given the special meaning of the word — no other word that I could find with a thesaurus really captures the same and complete essence of the word “entrepreneur,” not “administrator, contractor, executive, manager, producer, backer, businessperson, founder, industrialist, organizer, promoter,” etc.

In fact, the Examining Attorney who approved Jen’s application to register THE FRONT ROW ENTREPRENEUR as a mark for podcasts, recognized the special meaning of the word, noting it to be descriptive of Jen’s podcasts: “A person who organizes, operates, and assumes the risk for a business venture.”

So, the USPTO told Jen to disclaim exclusive rights in the term ENTREPRENEUR in THE FRONT ROW ENTREPRENEUR mark for podcasts, and she did, but to satisfy Entrepreneur Magazine she also apparently needed to withdraw her registration application and, in terms of future use, contort the more efficient name into the more wordy mouthful: THE FRONT ROW PODCAST FOR ENTREPRENEURS.

So, what does ENTREPRENEUR mean anyway? Clearly much more than a particular magazine or other offerings of that magazine. Might it even designate a category or perhaps a subgroup of magazines — those about and for an entrepreneur?

If Entrepreneur Magazine is not careful, one of these days, it might find itself in a position tangling with an enforcement target willing to go the distance, finding out the hard way, if ENTREPRENEUR has become generic (part of the public domain).

Seth Godin

It’s not good marketing and I’m pretty sure it’s not good law, either.

It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.

And yes, it’s a word.

Not a fanciful or inherently distinctive trademark, a word. Almost 800,000,000 matches in Google.

One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.

Without that word, it’s hard to describe the work.

Poignantly, it’s interesting to see that they’re not going after people with a ton of resources. If Brian Koppelman, David Levien and Showtime started going after billionaires for using the word ‘Billions’, I’d call it a fair fight. A dumb fight, but a fair one.

But deep in the bowels of the Latham offices in San Diego (which, fortunately, hasn’t been sued by the producers of Anchorman for trademark infringement) there are young lawyers, early in their career, sending nasty letters to entrepreneurs (there’s that word again) like Jen Lehner. You can see her work here: jenlehner.com/blog

Apparently, the powers that be decided that her podcast called “Front Row Entrepreneur” somehow infringed on a magazine that hit its peak in 2013. How?

“Front Row” modifies the noun. The trademark is the modifier, not the noun. Front Row™ is a trademark. Entrepreneur is simply a word.

With great cost and hassle, fledgling entrepreneurs (there’s that word again) who have finally gotten their business off the ground now have to dig in to either fight a huge law firm and their misguided but well-funded lawyers–or spend the money to change what they already built.

Who, exactly, does this help?

By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.

Better, I think, to spend the time and the money building something that entrepreneurs actually like and respect.

The saltiest trademark news in the last week surrounds singer Cardi B’s application to register the marks “Okurr” and “Okurrr,” both slang for “Okay???”–but pronounced in a hip, rolled-r trill, sometimes with a shady tone. Or, as Cardi describes, it: the sound of a “cold pigeon in New York City.” If you haven’t heard it said before, search no further than these humorous and fully-extra renditions by a few popular drag queens:

As with most seemingly-overreaching trademark applications, Cardi’s registration of these popular words–particularly in the drag queen community–has been met with criticism. The public backlash is understandable; it brings to mind the concern that trademarking a term will take it out of the public domain and inhibit free speech and fair use. Though, to be fair, Cardi’s applications only seek to preclude use of the word on clothing and merchandise. But she acknowledges the registrations are, essentially, a cash grab.

Indeed, trademarking common words appears to be a regular strategy for celebrities seeking to capitalize on words’ popularity. I’m reminded by the recent example of singer Will.I.Am attempting to trademark the phrase “willpower,” which was cancelled by the Trademark Trial and Appeal Board because the mark was too similar to other existing marks and had no source-indicating distinctiveness. That is, the public did not strongly associate the word “willpower” with Will.I.Am, so Will.I.Am cannot claim exclusive use of the mark in commerce. But Cardi argues that “Okurrr” has become her famous slogan, buoyed by a Superbowl Pepsi ad featuring her using the phrase and instructing others on how to pronounce it correctly.

And that brings me to the “T”–the truth–of the enforceability of Cardi’s registrations: it is unlikely that the general public would identify Cardi as the source of goods beat with “Okurrr” or similar marks because, in fact, “Cardi can’t honestly make the argument that she created the word.” Rather, according to the fiercest drag queen of them all, RuPaul, the credit goes to Broadway actress Laura Bell Bundy–even though RuPaul and other drag queens brought the phrase, which may have roots in African-American culture, to the runway, where it was picked up by the Kardashians and, now, Cardi B.

The contextual history of Okurrr is important and cannot be overlooked in the distinctiveness and goodwill analysis. It not only undermines Cardi’s legitimate claim to exclusive nation-wide use of the mark in commerce, but also seriously calls into question the appropriateness of restricting use of the word by all others, including the communities from which it originates–and which much of the public likely identify as earlier or actual sources of the word. Thus, trademarking “Okurrr” is likely to lose from both a legal and PR standpoint. That’s a sickening realness, but not in a “feeling the fantasy” kind of way.

Whether Cardi’s tuck-under will be allowed to stand, or the gag will be up, remains to be seen. At least one drag queen, Alaska, who is also known for her rendition of “Okurrr,” plans to clock Cardi’s conduct, potentially by challenging the registrations in court. Time will tell whether Cardi’s gambit will stay, or be asked to “sashay away.”

It’s that time of year again, and we’re honored to share some wonderful news — hot off the press today — concerning the 2019 JD Supra Readers’ Choice Awards:

For the third year in a row, we have been recognized as the Top law firm writing on Trademarks (incredibly, four of us made the Top Ten listing out of more than 1,200).

Of course, we couldn’t achieve these lofty accolades without you, our dear readers, followers, and those who generously provide their valuable insights and comments.

However you have found us, whether through JD Supra, LinkedIn, Twitter, or if you’ve been with us since the beginning, more than 10 years ago, we’re thrilled you have joined us on this journey, and thank you for your generous contributions! Each one of you inspire us to write clearly, also thanks to Jimmy John’s, for this reminder:

Let’s all hope that the Supplemental Trademark Register is not on the death watch.

It appears though to be on life support, at times, and especially with the USPTO’s heightened focus on “merely informational” matter, including laudatory messages.

This is a common basis for registration refusal nowadays: “Merely informational matter fails to function as a mark to indicate source and thus is not registrable.”

Don’t all valid trademarks communicate information? Exactly. How does the USPTO know when at least one of the bits of that information is not about the source?

It cannot be fatal to validity that a mark communicates more information than simply source, see a suggestive mark or a descriptive one that has become distinctive.

Although not a laudatory example, the first precedential decision from the TTAB in 2019 denied Wal-Mart’s application on the Principal Register, for INVESTING IN AMERICAN JOBS, a slogan for retail store services, calling it “merely informational,incapable as a mark:


Wal-Mart recognized that its claimed mark communicated descriptive information, yet it argued that its evidence was sufficient to show acquired distinctiveness.

What’s striking about the Wal-Mart decision is that evidence of descriptiveness was used to support the fatal conclusion that the slogan can never function as a mark.

It relied on a series of prior cases holding certain phrases incapable of functioning as marks (THINK GREEN, GUARANTEED STARTING, DRIVE SAFELY, and others).

It used evidence typically supportive of a descriptiveness refusal to say that Wal-Mart’s slogan would not be perceived as a mark to indicate the source of services.

It also pointed to several examples like “ONCE A MARINE, ALWAYS A MARINE,” “PROUDLY MADE IN THE USA,” and “THE BEST BEER IN AMERICA,” as merely informational or laudatory slogans, incapable of serving a trademark purpose.

Laudatory terms long have been considered merely descriptive (not generic) for the provided goods or services, so they’re ideally suited for the Supplemental Register.

The Supplemental Register exists as a holding cell for merely descriptive phrases not yet distinctive, but capable of becoming distinctive, maybe at some future time.

Incapable matter — subject matter that cannot serve as a trademark — like generic terms and phrases are impossible and hopeless of ever functioning as a valid mark.

TMEP 1202.04(a) actually blends laudatory and informational: “Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark.”

So, now we’re going to differentiate between garden variety laudatory claims that are descriptive, and “highly laudatory claims of superiority” — the latter being incapable, and the former holding out some hope of having at least a chance?

This unfortunate approach is reminiscent of the widely criticized approach of the “so highly descriptive” category as to be incapable of serving a trademark purpose.

All the way back in 1989, I went on the record, questioning the “so highly descriptive as to be incapable” line of cases in “Putting the Cart Before the Horse in Assessing Trademark Validity — Toward Redefining the Inherently Generic Term,” published in the University of Iowa College of Law’s Journal of Corporation Law.

The problem with the “so highly descriptive” category is it treats descriptive matter as incapable and generic without the rigors of an actual genericness determination.

The poster (or coaster) child for the eerily similar approach is the Federal Circuit’s 1999 decision rejecting Sam Adam’s THE BEST BEER IN AMERICA slogan as incapable, blurring the distinction between descriptive and generic designations:

In that decision, Sam Adams had “not met its burden to show” that the slogan THE BEST BEER IN AMERICA for beer, had acquired distinctiveness/secondary meaning.

Had the TTAB and Federal Circuit stopped there, fair enough, doing so would have allowed Sam Adams to seek a Supplemental Registration and try again later (with more evidence of acquired distinctiveness) for a coveted Principal Registration.

But instead, both the TTAB below and the Federal Circuit on review, went on to editorialize that no amount of evidence could ever turn THE BEST BEER IN AMERICA into a trademark, not because it’s generic, but because it’s incapable.

That’s what courts routinely said about single color marks, they’re impossible and incapable of serving a trademark purpose, until Owens Corning came along with the Pink Panther, to reverse decades of thinking against single color trademarks.

And, if “highly laudatory claims of superiority” are actually incapable of a trademark purpose and outside the possible definition of a trademark, then how can Principal Registration of AMERICA’S BEST BEER DRINKING CITY be explained, or these?

Let’s be honest, since the stated test is really to discern how the claimed mark would be perceived by the relevant public, too easily dismissing evidence going to that question, doesn’t help and starts to feel more like an impossible shell game.

I’d rather see the evidence of descriptiveness (which provides information) used to support a descriptiveness refusal, allow a Supplemental Registration, then the USPTO can wage the real evidentiary battle with claims of acquired distinctiveness.

Last week was an incredible opportunity to share some of these thoughts in NYC with those attending Practicing Law Institute’s Advanced Trademark Law 2019 seminar, thanks to PLI, Kenneth Min, and co-chairs Kieran Doyle and Dean Eyler!

In the end, let’s all hope that the USPTO reins in its hyper-focus on expanding the “merely informational” and outcome-determinative category of incapable subject matter, so we don’t have to kiss the Supplemental Register goodbye.

Additional hat tip to Sam Adam’s and its vintage painter’s cap:

 

 

Famous celebrity chef Chloe Coscarelli (“Chloe”) and Tom Colicchio (“Colicchio”) started a new pop-up restaurant called “Supernatural” that is in the midst of a “food fight” or lawsuit with owners of the By Chloe restaurant Chloe originally founded but no longer has an ownership interest in.  After receiving cease and desist letter from BCH Hospitality Group LLC (“BCH”), Chloe and Colicchio sued BCH in a declaratory judgment action for a judgment that they do not infringe on the CHLOE® trademarks and did not breach Coscarelli’s Name, Face and Likeness Agreement (“NFL Agreement”) with BCH.

Chloe was the first vegan chef to win Cupcake Wars, a national cooking competition, on the Food Network.  She is a published author of four popular cookbooks.  She is known as “Chloe” and “Chef Chloe” and worked at gourmet vegan restaurants in New York and San Francisco.  She has been recognized as “America’s favorite vegan chef” and featured on the “30 under 30” series by  The New York Times, Zagat and Forbes.  However, I must confess that although I am a pescatarian (meaning a vegetarian that eats fish) I had not heard of Chloe or her vegan restaurant until I learned about her lawsuit.

However, I have heard of Chef Tom Colicchio.  He is a James Beard Award winner and also known as “Top Chef.”  Colicchio received an Emmy Award for his work as a Judge on the show Top Chef.  I have had the pleasure of eating at Colicchio’s New York restaurants:  CRAFT (located by the fabulous Flat Iron Building), Gotham Bar & Grill and Gramercy Tavern.  I am hoping to check out The Quilted Giraffe on my next trip to New York (but I digress).

Their Complaint includes the following picture of the chefs:

Chloe founded “by CHLOE” and then partnered with BCH’s predecessor.  BCH is associated with James Haber and ESquared Hospitality.  She claims in her lawsuit that BCH ousted her from the restaurant and she has not been involved for two years.  BCH has a different story, alleging among other things, that she was “grossly negligent” related to losing leases and sabotaging deals with partners.  I have not delved into this messy business “divorce” so I will comment no further.

After Chloe left, BCH started “Sweets by Chloe bakery” pictured below:

am starting to get hungry so I better get back to the legal dispute.  In their Complaint, the chefs included the following picture related to their vegan restaurant:

The chefs argued that the restaurant’s name is “Supernatural” which is not similar to By Chloe at all.  The name highlights that the food is super natural.  According to the Complaint, the two chefs collaboration arose from Colicchio writing “An Open letter to (Male) Chefs” on the platform Medium about rampant harassment in the restaurant industry.  It sounds like Colicchio is on the right side of the Me-Too movement.

In contrast,  BCH focuses on the lower portion that identified the two chefs involved with the new SUPERNATURAL restaurant.  Specifically, the lower part of the sign is “CHLOE COSCARELLI X TOM COLICCHIO COLLABORATION.”  The chefs will likely argue that their names are informative and the trademark and certainly any dominant mark for their restaurant is SUPERNATURAL.  Further, the chefs argue their fame as chefs will not be confused with BCH or its By Chloe marks or restaurants.

I have not seen the NFL Agreement.  It may have a non-compete, but it would likely have some sort of time limit rather than preclude her from working for life.  Chloe asserts the agreement is terminated.  Further, I would doubt that the NFL Agreement required her to change her name or not be able to truthfully state who she is in connection with a restaurant.  The more likely prohibition would be to not use the name “CHLOE” for the restaurant.  But, I have not seen the NFL Agreement, so there may be other arguments that BCH will have against the chef.

This will be an interesting case to follow.  As there are allegations about a dip in quality at By Chloe, the judge and jury might want to sample food from the restaurants involved.

If you have heard of Penn State, you have probably heard the phrase “Happy Valley.” The school, the students, and the media regularly use “Happy Valley” in reference to the school and the surrounding community. The school considers the association so strong that Penn State recently applied to register HAPPY VALLEY as a trademark for clothing – and received a refusal to register.

The Trademark Office examining attorney assigned to the application refused registration on the ground the phrase “Happy Valley” is geographically descriptive. This means that the examining attorney concluded the public will see the phrase simply as describing the geographic area where the school is located. The school’s own website seems to confirm the examining attorney’s concerns, as it describes “Happy Valley” as an “also known as” name for the town, State College.

But don’t worry Penn State fans. The university has a strong chance to overcome the refusals so long as Penn State can demonstrate the HAPPY VALLEY trademark has acquired distinctiveness in the minds of consumers. Marks that may initially be considered geographically descriptive or may become distinctive after sufficient use of the mark in commerce.

For example, use of a trademark for five years or longer may be sufficient to overcome a refusal on this ground. In fact, the examining attorney expressly references this option in the Office Action. Accordingly, chances are good Penn State can overcome this refusal simply by submitting a declaration that the university has used the mark in commerce for more than five years. However, the Trademark Office will also consider other evidence such as widespread advertising efforts, significant sales numbers, and substantial media attention and publicity.

As a fellow alum of a Big Ten university (which university isn’t important), I wanted to provide some assistance in gathering evidence in support of Penn State’s potential claim of acquired distinctiveness for the HAPPY VALLEY trademark.

If you’ve heard of Penn State, you know they receive a lot of publicity for their college sports teams. For example, this ESPN article prominently uses HAPPY VALLEY to refer to Penn State with its headline “Iowa silences No. 5 Penn State in Happy Valley.”

The Penn State wrestling program is also among the best in the country. Historically, the Happy Valley-based wrestling squad has the third-most successful program in the country, with 8 (!!) NCAA national championships , just slightly trailing Iowa’s 23 national championships.

Last, but certainly not least, Penn State can point to a visit last month from the Big Ten Tournament Champions and presumptive NCAA ’s basketball player of the year Megan Gustafson. Yet again Penn State received some great publicity associating the claimed HAPPY VALLEY mark with the University, as media ran with the headline “Iowa Cruises in Happy Valley.”

With all this evidence, Penn State fans should feel good about the likelihood they’ll soon be able to purchase HAPPY VALLEY t-shirts with a ® symbol adjacent to the phrase (exclusively from a licensed retailer). Of course, if they need more evidence, I’m sure I can find some fellow Big Ten organizations that would be happy to add some new headlines in 2019.

A little over one year ago, I blogged about Tesla’s Roadster being launched into outer space, asking who owns the right to the “Spaceman” rider’s mark? Today I post a different thought-provoking question about electric car company Rivian: Does Rivian’s use of a Ford F-150 body when testing its electric truck technology in public risk trade dress infringement?

If you haven’t seen the recent headlines, startup electric truck company Rivian has been testing its 100% electric truck technology under the hood of a Ford F-150 body:

Credit: AutoBlog

In these photos of a Rivian masquerading as a Ford at an electric charging station, you can make out the modified chassis underneath. You might also notice there are no tailpipes, and the wheels seem just a little too small. Surprisingly, the Ford logo is still present on the truck body in both the front and back, along with the F-150 mark on the side. I sure hope Rivian has a licensing agreement…

Compare the above look to the distinct headlight and sleek design advertised by Rivian:

Credit: Jalopnik

For the past few months, consumers have been reporting sightings of strange F-150s with missing features, speculating that the trucks might be prototypes for an electric Ford. Here’s another example of one seen in the wild, although it’s unclear whether this is a genuine Ford electric prototype:

Credit: AutoBlog

However, recently Rivian CEO R.J. Scaringe confirmed that the company has been secretly testing its “skateboard” chassis architecture underneath Ford F-150 bodies on public streets. And he also suggested the company may be testing under other masks: “They’re all over the place, but nobody knows. We’re very quiet about that.”

When I learned about Rivian’s clever camouflaging, it immediately brought to mind trade dress protections. The Lanham Act protects a product’s design, shape, and configuration when such features serve as distinctive identifiers of the product’s source. Note, however, that functional aspects of trade dress are not protected–only ornamental features are. Just like trademark infringement claims, to prevent others from using a specific trade dress, the plaintiff must show that the use is likely to cause confusion. The Lanham Act also protects against trade dress dilution, which includes weakening of the distinctiveness or fame of trade dress or use of trade dress in connection with inferior products. In either case, the plaintiff can seek both damages and an injunction barring further infringement and dilution.

Arguably, Rivian’s masquerading as a Ford F-150 risks liability for trade dress infringement, as well as dilution. As to infringement, there are already reports of confusion on the streets. Though, the harm from infringement is probably minimal because Rivian is not selling any counterfeit electric F-150s.

Rivian’s use of the Ford F-150 body may also dilute the distinctiveness of the F-150’s overall design and Ford’s marks. Indeed, with knowledge of Rivian hiding under the hoods of F-150s, consumers and commentators may be starting to wonder if the F-150s on the road were actually made by Ford. And depending on your view of electric vehicles, use of the Ford and F-150 marks, in addition to the model’s trade dress, could be seen as use in connection with inferior, unrefined products. On the other hand, if you’re like me and are excited about electric vehicles, the use could elevate Ford and the F-150’s overall image to high-tech chic.

But Ford would likely face an up-hill battle arguing the F-150’s trade dress is famous enough to be entitled to protection from dilution. In fact, it appears Rivian chose the F-150 body precisely because it is ubiquitous and generic enough that hiding under it would likely not draw attention. Moreover, Rivian could argue its use of the F-150 trade dress is fair, and therefore statutorily protected, because Rivian is not using the trade dress to designate itself as a source. Rivian’s use also doesn’t seem to fit the mold for what is typically considered “commercial” (or transactional) use. On the other hand, Rivian could probably take simple steps to modify the body of its testing vehicles to reduce the trade dress risks created by its masquerade.

At DuetsBlog, we never shy away from sharing our opinion.  It’s part of what makes us not Dr. No.  For over ten years, this has included opinions about interesting trademarks, non-traditional trademarks, boring trademarks, and controversial trademarks, and those are just from me, as well as our opinions on the opinions of others (Ron Coleman, especially), and we love when others share their opinions of our opinions (Ron Coleman, especially).

Well, on March 12, 2019 at 1:00 PM ET, this opinion fever may reach its peak.  As part of a Strafford webinar with Karen Lim of Fross Zelnik about Structuring Trademark Clearance Opinions, I’ll be sharing my opinions about crafting a well-written trademark clearance opinion, and long the way, providing my opinions on the judicial opinions on trademark clearance opinions.  That’s right, opinions on opinions on opinions.  This reminds me of the ever-entertaining and valid English sentence: Buffalo buffalo Buffalo buffalo buffalo buffalo Buffalo buffalo.

Once again, Strafford has generously provided a limited number of complimentary passes, which I’d like to make available to you, our dear opinionated readers.  So, if you’d like a complimentary pass for the webinar, please send me an email at dweseman@winthrop.com.  In fact, I recall benefiting from the very same offer, about six years ago: Thanks, Steve!

My only request is that, afterward, you provide me your opinions of the webinar, to which I will reply with my opinions of your opinions, and you could counter-reply with your opinions of my opinions of your opinions.  With your help, we can get to at least opinions on opinions on opinions on opinions on opinions on opinions.  Still short of what buffalo can accomplish, but fun to try.