DuetsBlog

Collaborations in Creativity & the Law

Protecting the Women’s March Brand

Posted in Branding, Marketing, Mixed Bag of Nuts, Trademarks

Branding a social movement is tricky.  Many individuals following (and leading) social movements tend to view IP rights as antithetical to the spirit of the movement itself.  Moreover, success in the PTO for these types of marks is by no means guaranteed.  The purpose of a trademark being to identify a source for goods or services, efforts to register the names of social movements are often met with refusals for failure to function as a trademark.

Organizers of the Women’s March held in Washington, D.C. last year are facing opposition in their attempt to register the brand name.  Shortly after the march itself, Women’s March, Inc. filed to register WOMEN’S MARCH as a trademark.  The proposed mark is for use with certain clothing items and for promotion and lobbying services related to women’s rights, LGBTQ rights, and racial equality.  The application faced two Office Actions, including one refusal for failure to function as a trademark.  Women’s March, Inc. overcame the refusals, and the mark published for opposition in March 2018.

Several parties have now expressed an interest in challenging the mark.  Organizers of fourteen so-called “sister marches” across the country filed an extension seeking additional time to oppose the mark.  Women’s March Los Angeles also filed a letter of protest challenging the mark as generic.  The protest letter included evidence pointing to genericness of the phrase, such as Wikipedia articles discussing the 1789 “Women’s March on Versailles” and the 1956 “Women’s March” in South Africa.

The groups opposing the WOMEN’S MARCH mark cite fears that Women’s March, Inc. will use the trademark to charge licensing fees and severely restrict usage of the mark by smaller march organizers.  Women’s March, Inc., however, maintains that filing the mark is a “matter of course.”  Bob Bland, co-president of Women’s March, Inc. stated: “We have to be able to control it or else anyone could use it.  We need to be able to protect the brand, which represents the Unity Principles and is rooted in Kingian Nonviolence.”

While a registered trademark can help a movement shape and protect its identity, movement organizers seeking to protect their brands should consider the potential backlash in both obtaining and enforcing IP rights.  Attempts to protect the brand may appear exploitative and cause divisions within the movement.

Interestingly, I did not find any trademark applications or registrations for the Women’s March three faces logo, which appears prominently in the company’s branding.  Organizers might have more success (and face less backlash) seeking protection for the logo than for the standard character mark alone.

Trade Dress Catches Up With Ketchup

Posted in Non-Traditional Trademarks, Product Configurations, Product Packaging

On a recent happy hour trip to HopCat, a brewpub chain with an incredible beer list of local and regional craft beers, I expected to find a trademark issue or two among the tap handles.  However, instead, I was distracted by a “catsup” bottle (hah) positioned casually next to a bottle of Heinz mustard.

The familiar green and gold border, the white cap, the white background, the shape of the plastic bottle…it reminded me of this previous DuetsBlog post involving a de-branded ketchup bottle.  Private labeling and contract manufacturing has become an increasingly popular means of overcoming barriers to entry, entering new market segments, or accommodating increased demand,  especially for breweries, wineries, and distilleries.

I doubt I’m alone in quickly jumping to the conclusion the HopCat “catsup” was a private labeled version of this and also wondered why the mustard wasn’t similarly branded (other than the lack of appropriate mustard puns):

But looking at the back of the bottle, I was proven wrong just as quickly:  “Manufactured for Hop Cat by Red Gold, LLC.”   However, Red Gold ketchup bottles appear to be sold generally with a yellow cap and a yellow label.  Hmm.

I suppose the shape of the HopCat bottle is closer to Red Gold’s shape, but everything else suggested to me that Heinz was the source behind the brewpub’s ketchup.

In contract manufacturing or private labeling agreements, it’s important to consider the responsibilities of each entity for packaging decisions.   Is the buyer responsible for providing the artwork for approval by the supplier?  Or is the manufacturer responsible for that with the buyer’s approval?  What are the approval conditions if any?  And depending on that decision, which entity is responsible for any liability associated with intellectual property or regulatory claims?  The representations and warranties in the agreement should also appropriately protect the entities – especially the buyer who is ultimately putting the product out into the market.

Brawling Brands: Beaver Versus Alligator

Posted in Dilution, Infringement, Law Suits, Trademark Bullying, TTAB

Who do you think would win in a fight to the death: a beaver or an alligator? Sure, alligators seem scarier. They’re known for sharp teeth and strong jaws. They even have a 1980 horror movie about them called Alligator (Sidenote: the plot summary makes this sound like a must-see). Beavers? Not so much. Small and furry. They cut down trees. Sure, there was a television series called Angry Beavers, but it was a kids cartoon on Nickelodeon. Those beavers didn’t live in the Chicago sewers feasting on discarded animal carcasses from secret government laboratories testing mutating growth hormones (Again, this Alligator movie sounds like a must-see).

But what if this isn’t just a regular beaver? What if this is a beaver with an entire travel center full of deli stations, gasoline pumps, bathrooms, and over three decades of use? Oh! And did I mention the red baseball cap? It may not sound that scary to you, or alligators in general, but for the Choke Canyon Alligator, the fear might be starting to build. While an alligator likely gets the best of a beaver in the animal kingdom, the courtroom is an entirely different venue.

The animals underlying this dispute are beavers and alligators, but the parties are Buc-ee’s, Ltd., Shepherd Retail, Inc., and Harlow Food, Inc. The plaintiff is Buc-ee’s, the operating of a chain of Buc-ee’s travel stations throughout Texas. The defendants Shepherd Retail and Harlow Food operate a travel center under the name Choke Canyon, also in Texas. The dispute centers around Buc-ee’s claim that Choke Canyon’s design logo is similar to Buc-ee’s logo. A jury was impaneled earlier this week to help decide whether these logos are confusingly similar, but in the meantime, you can put on your juror hat and compare the parties’ logos yourself.

Thoughts? And to finish any potential arguments before they get started, this is an alligator, not a crocodile. Crocodiles can’t stick out their tongues (We’re not just a trademark blog, we’re a science blog, too.)

Here’s how Buc-ee’s summarized the similarity of the marks in the Complaint:

Defendants’ anthropomorphic and cartoon representation of the alligator as shown above in connection with a convenience store copies the most important aspects of the iconic BUC- EE’S Marks. Specifically, besides Defendants’ improper use of a friendly smiling cartoon animal, Defendants have copied the BUC-EE’S Marks with: (i) the use of a black circle encompassing the alligator (compare to the black circle around the beaver), (2) use of a yellow background (compare to the yellow surrounding the beaver), (3) use of the red-colored tongue of the alligator (compare to the red hat on the beaver), (4) prominent use of sharply drawn black edges for the alligator mascots (compare to the sharp crisp black edges defining the beaver, and (5) the use of letters in raised block font in the name “CHOKE CANYON”

This also isn’t the first trademark battle for Buc-ee’s. The beaver has already defeated two chickens (settled out of court):

And a rival (but hatless) beaver (settled out of court):

As a general matter, I think trademark plaintiffs are too easily branded with the label of a “trademark bully,” but this one seems like a stretch.

Granted, I’ve never been in any of either party’s stores. Perhaps the manner in which the marks are advertised adds to the confusion. In fact, Buc-ee’s also claimed that Choke Canyon’s trade dress infringed upon Buc-ee’s trade dress. The layout of a store or restaurant can be protectable trade dress under the Lanham Act. Even if the individual elements may not be protectable (for example, cactus in a Mexican restaurant), the overall selection and arrangement of even unprotectable elements may give rise to protectable trade dress.

Buc-ee’s claimed trade dress for its travel store-restaurant-convenience store-gas station consists of:

(a) consistent use of bell-gabled roof lines;
(b) Use of a red, white, yellow and black color scheme in store signage;
(c) Use of stone siding on the exterior of the store;
(d) Consistent use of a specific and distinctive fountain drink set up in the interior of the stores;
(e) In-store computer ordering kiosks;
(f) Horse-shoe shaped in-store carving stations;
(g) Open counter deli stations;
(h) Freshly prepared signature food choices;
(i) Consistent, prominent use of the BUC-EE’S Marks in signage above and on the products offered for sale;
(j) Large square footage;
(k) Numerous fuel pumps;
(l) Abundant and oversized parking spaces;
(m) Oversized bathrooms;
(n) A multitude of cashier stations;
(o) Entrances from three of the four sides of the building.
(p) Antique-looking displays;
(q) Country-themed signage; and
(r) Khaki paint colors.

I’m no expert in convenience stores, but most of the elements seem like generic elements of a travel center, restaurant, or convenience store. The antique and country themed signage is not as much of a required element for these types of store, but it hardly seems unique for a convenience store or gas station to have a country theme. Like the claim of trademark infringement based on the use of a cartoon character with a hat, I also have doubts as to the success of the trade dress infringement.

But is the combination of the two enough to nudge these claims over the edge into potential infringement? Based on publicly available information, the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers dont’ seem likely to assume that that there is a connection between the two. While it can be a fine line, trademark law is pretty consistent that merely “calling to mind” is insufficient to establish trademark infringement. There must instead be a possibility of consumer confusion as to source, sponsorship, or some other connection.

It is possible additional facts will come out during trial to bolster Buc-ee’s claims. Perhaps there really was a pattern of intentional copying, from the yellow background of the circle logo, to the store layout, down to individual products being offered, like the purportedly famous “Beaver Nuggets” (aka, caramel corn). Stay posted for future updates as the trial proceeds and ends. We’ll also keep a lookout for comments from our neighbor to the east, the other cartoon Bucky:

 

 

Hamm It Up? The Latest Brand to Verb It Up!

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

It’s been a little while since the last example we’ve shared showing a brand turning its face, or a blind eye, on age-old rigid trademark advice, counseling against using a brand name as a verb.

Given the more common trend of many alcoholic beverage brands focusing attention and their messaging on drinking responsibly, MillerCoors has made a surprising choice with Hamm It Up!

While we’re all for encouraging brand owners to carefully explore the true risk of genericide from verbing their brand name, encouraging drinkers to be “ridiculous or over the top,” is over the top.

We get it, Hamm’s is going gangbusters as an economy beer brand, but there is a way to verb an alcohol brand more gracefully, so I’m left wondering when MillerCoors will, let’s say, Hang it Up?

UPDATE: In case you’re wondering, the microscopic text in the lower right corner of the billboard reads like a disclaimer: “ENJOY IN MODERATION.” How’s that for a messaging mixed drink?

Rapala’s 2018 Fishing Opener Billboard Ads

Posted in Advertising, Articles, Branding, Marketing, Trademarks

What would Mother’s Day be, at least in Minnesota, without the fishing opener near by?

What would another fishing opener be without Rapala’s distinctive slate of billboard ads?

Here is an engaging pair of billboard ads currently running, if you’ve seen others, let us know:

My personal favorite between them would be Wassup, dock? — love the double meaning and nod to the Warner Brothers and Bugs Bunny trademark saying to Elmer Fudd, What’s Up Doc?

What’s the other meaning to Wassup, dock? One of my sons tells me that bass like to hang around under docks, so the friendly little crank bait is just getting acquainted with his/her surroundings.

Which one do you like better, lighting aside? And, by the way, what is your all-time favorite from the annual Rapala line up that we’ve been covering for a whole ten seasons now?

Rapala’s “More Hits Than Google” Billboard Update (Photo Included) (2009)

Good Bye Google, Hello Whudjagiddumon? (2010)

Rapala Taunts a Monster? (2011)

Rapala: Happy Fishing on Mother’s Day (2012)

Rapala Billboard Ads Continue to Engage (2013)

Eat More Walleye? (2014)

Top Ten Questions About Rapala Minnocchio (2015)

I Get It, Rapala Will Fill Up Your Fish Cooler! (2016)

Rapala’s Public Service Announcement? (2017)

What would this time of year be without us sharing and discussing the Rapala billboard ads?

Trader Joe’s Takes on Trademark “Schmo”

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Food, Infringement, Law Suits, Mixed Bag of Nuts, Sound, Squirrelly Thoughts, Trademarks, TTAB, USPTO

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The company instituted an opposition (which I cannot help but note is #999,999), arguing that “Trader Schmo” will confuse consumers because consumers will naturally switch “Joe’s” with “Schmo,” given the popular phrase “Joe Schmo.”

This is not the first time Trader Joe’s has taken legal action to protect its brand. Notably, just a couple years ago the company sued “Pirate Joe’s,” a counterfeiter with a backstory almost too unbelievable to be true. Pirate Joe’s was a “rebel Canadian grocery operation,” which bought Trader Joe’s products in the United States and “smuggle[d] them across the border to Vancouver” to sell them. Pirate Joe’s eventually ran aground under the immense pressure of its legal fees.

Pirate Joe’s Comes Crashing Down, Credit: Georgia Straight

This new dispute reminds me of the famous “Dumb Starbucks” experiment by comedy TV series Nathan For You. Over one weekend in 2014, the show opened a coffee shop that looked just like a real Starbucks, except that its name and every drink it sold was preceded by the word “dumb.” The comedian behind the prank (or “art“) claimed that “Dumb Starbucks” was permissible fair use because both the use of the Starbucks mark, as well as the store itself, was one big parody. One cannot help but notice some parallels to Trader Schmo; the latter word refers to a hypothetical “dumb” person.

Comedian Nathan Fielder, Credit: New Yorker

Dumb Starbucks and Trader Schmo raise difficult questions about permissible comedic use under trademark law. On the one hand, the marks free ride on the notoriety of other marks, bringing attention. On the other, it seems unlikely the marks would cause actual consumer confusion, making them harmless jokes. Whether Trader Schmo runs afoul of the Lanham Act will likely depend on two major inquiries: (1) whether it constitutes infringement or dilution, and (2) whether statutory fair use defenses apply.

InfringementPreviously on this blog, I explained that infringement usually centers on likelihood of confusion, which is evaluated using a variety of factors:

whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines.

The factors could support a finding of infringement here. The uses are related (food). The strength of the Trader Joe’s mark rides the line between arbitrary and fanciful to descriptive; who is Trader Joe in the abstract, and what does he sell? Surely the marks are similar…sounding. But on the other hand, would an average Joe really mistake Trader Schmo for Trader Joe’s? As a counter, though, it seems reasonable to infer that Trader Schmo was selected because it is similar to Trader Joe’s.

Dilution: So there might be infringement. How about dilution? This occurs when the similarity between the accused mark and a famous mark is likely to impair the distinctiveness or reputation of the famous mark. Dilution does not require any actual or likely consumer confusion. Depending on how good Trader Schmo’s Baba Ganoush, Gefilte fish, Matzo ball soup, and Borscht taste, Trader Joe’s could have an argument for dilution–especially if Trader Schmo’s grows large enough to undermine the distinctiveness of Trader Joe’s as a famous brand.

Fair Use: Generally speaking, the fair use provisions for infringement and dilution both require: (1) that the accused mark be used in a descriptive sense and not as a mark, and (2) that use of the accused mark be fair and in good faith. However, fair use does not provide a defense to infringement if there is likelihood of confusion–but we’ll gloss over that for now.

First, Trader Schmo could arguably be descriptive, delineating traded products. And the word ‘schmo’ has Jewish roots, which could describe the Kosher foods the mark designates. On the other hand, Trader Schmo isn’t inherently descriptive in that it actually describes a product or a characteristic or quality (e.g., Vision Center, a store for glasses). And it’s being used as a mark. So fair use might not even apply.

Assuming descriptiveness, the second element (the ‘fair’ aspect of the doctrine of fair use) often implicates the kinds of First Amendment interests that protect parody, satire, and criticism. But there’s no indication that Trader Schmo is intended to comment on Trader Joe’s. Moreover, courts have rejected the idea that a use is “fair” or in good faith if its similarity to a protected mark is deliberately concocted to garner attention. Trader Joe’s could have a good case for that here–just as Starbucks likely had against Dumb Starbucks.

A high-level analysis of the Trader Schmo mark suggests it could constitute infringement or dilution and is not fair use. This conclusion underscores trademark law’s general distaste for humor when it comes to commerce, as opposed to actual social commentary and comparison.

M22/Michigan Road Sign Dispute: The Saga Continues

Posted in Branding, Mixed Bag of Nuts, Trademarks

My first post on this blog, nearly two years ago, was about a trademark dispute between the State of Michigan, and a Michigan company, M22, LLC.  M22 sells a variety of merchandise bearing an “M22” mark that appears similar to the route marker signs on Michigan Highway M-22, see photos below.

U.S. Registration No. 3992159

Posted to Flickr by Larry Page. License: CC BY 2.0.

M22 was granted several federal trademark registrations, including an “M22” word mark and several M22 design marks. The dispute escalated began back in 2013, when Michigan filed a petition for cancellation at the Trademark Trial and Appeal Board (TTAB) on several grounds, including that the registration violates federal regulations related to the Manual on Uniform Traffic Control Devices (MUTDC) (among several other grounds which are now less relevant). In August 2016, the TTAB denied Michigan’s motion for summary judgment.

Shortly after the TTAB denied summary judgment, Michigan turned to a different venue, filing a lawsuit in Michigan state court (ultimately resulting in suspension of the TTAB proceeding), against M22 seeking declaratory relief. M22 quickly removed the case to federal court. In its complaint, Michigan alleged that trademark protection for the M22 design in Michigan’s M-22 route marker signs is prohibited based on Federal Highway Administration standards under MUTCD, which provide that any road signage designs (“traffic control devices”) required on federally funded highways, including the M-22 signs, are in the public domain and shall not be protected by patent, trademark, or copyright.

However, last year, the federal court issued an opinion in favor of M22, dismissing the case for lack of jurisdiction. The court held that it lacked jurisdiction over Michigan’s claim for declaratory relief. Furthermore, the court held that Michigan lacked standing as there was no concrete injury alleged. Michigan’s main argument as to concrete injury was that Michigan risks losing federal highway funding if it does not comply with and enforce state and federal laws and regulations, including the MUTCD. The court disagreed, determining Michigan had not alleged facts showing how the registration of M22’s marks would prevent Michigan from complying with the MUTCD, that there was any risk of losing federal funding, or that Michigan has any power to enforce the MUTCD against private third parties.

But Michigan still didn’t give up after losing the federal court ruling. The case was remanded back to state court, where extensive motion practice ensued. The state court ultimately concluded that: (1) Michigan has standing; (2) the MUTCD has the force and effect of Michigan law; (3) M22 LLC is subject to Michigan law; and (4) the M-22 highway sign is a traffic control device under the MUTCD. However, the court declined to determine whether M22’s trademark registrations and use were unlawful under the MUTCD (as Michigan argued), and held the TTAB may lift its stay.

So now the dispute is right back where it started over five years ago, in the trademark cancellation proceeding at the TTAB.  The TTAB lifted its stay last year, and recently granted an extension of discovery to allow M22 to take a deposition of a designee for Michigan. Most recently–just yesterday in fact–Michigan moved again for leave to file a partial summary judgment motion, on Michigan’s claim that M22’s registration should be cancelled for unlawful use in commerce, based on violations of the MUTCD standards. However, the Board had already ruled twice that Michigan was prohibited from filing further motions for summary judgment. Today, M22 filed a request for a telephone conference with the Interlocutory Attorney, stating that briefing on Michigan’s third motion for summary judgment should be unnecessary based on the Board twice prohibiting such a motion.

This has been an interesting saga so far, and it’s fascinating that Michigan has been willing to invest so much time and money vigorously contesting this registration, when it is unclear (as it was to the Michigan federal court) whether there is a significant risk of any concrete injury to Michigan in allowing this mark to remain registered. How do you think this dispute will end up? Stay tuned for updates.

 

What Will Happen To The New Prince Songs

Posted in Audio, Copyrights, Famous Marks, Idea Protection, Infringement, Law Suits

There is a battle brewing over songs by Minnesota’s own Prince.  I, for one, am anxious for the dispute to be resolved so we can enjoy these recordings. Who knows, there may be another worldwide hit “Purple Rain” out there.

The initial lawsuit was brought by Prince’s company Paisley Park Enterprises, which is now owned by his estate and its representative Comerica Bank & Trust, N.A.  (Collectively “Prince’s Estate”). Prince’s estate filed a Statement of Claim against George Boxill who was the sound engineer who worked with Prince on several music performance recordings. Before working with Prince, Mr. Boxill signed a confidentiality agreement. Prince’s estate states that the agreement explicitly stated that all recordings from the consultation remained the property of Paisley Park Enterprise. In 2006, Boxill worked with Prince to record five songs that have not been released yet. Other songs from this work were released on Prince’s album titled 3/21, which credited Boxill as a sound engineer. However, that same year, Boxill refused to return the five recordings to Paisley Park Enterprises. Prince’s estate now argues that this refusal to return the musical recordings violated his agreement.

A year after Prince’s untimely and tragic death, and ten years after working with Prince, Boxill mixed and edited the Prince songs. Boxill and Rogue Music Alliance, LLC and Deliverance, LLC (“music companies”) began promoting and selling the recordings under the name of “Prince” on the website www.princerogersnelson.com (the artist’s full name). They issued a press release announcing a nationwide release of an EP titled Deliverance that included songs by the late iconic Prince. This caused Prince’s estate to commence arbitration against Boxill and another case against Boxill and the music companies in federal court to stop the release of the songs and return them to Prince’s estate.

On April 20, 2018 (five days before the evidentiary hearing in the arbitration proceedings), Boxill and the music companies filed an emergency motion in the United States District Court for the District of Minnesota to enjoin the arbitration. United States District Court Judge Wilhelmina Wright denied the motion.

Boxill and the companies filed another motion to stay the hearing, arguing that the Copyright Act preempted the state law claims asserted in the arbitration proceedings. Judge Wright again denied the motion and ruled that the Eight Circuit lacked jurisdiction to review her order.  Despite this second order, Boxill filed the appeal.  Prince’s estate not only opposed the appeal but also asked for sanctions against Boxill and the record companies. The Eighth Circuit denied both motions.

Hopefully, this dispute will be resolved quickly and we can all enjoy recordings from the late great Prince.

Uncertain Case of Google Trademark Fair Use

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Fair Use, Famous Marks, Infringement, Marketing, Search Engines, Trademarks

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway:

My questions, permission, co-branding, no permission, but classic or nominative fair use?

Is Google flattered? Free advertising? Do they care? Should they care?

Discuss, to quote John Welch, on another subject.

The Uncertain Case of Deadwood Trademarks

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

Last week, I enjoyed the privilege of returning to Iowa City (where it all began) for Executive Leadership Board Meetings at the University of Iowa College of Pharmacy. Great meetings there!

During a stroll through downtown, I was reminded of Deadwood, a legendary Iowa City tavern, so I snapped a few photos, having long forgotten the creative tagline — Institute of Higher Learning:

Deadwood has special meaning in the trademark world. A federally-registered mark no longer in use and legally abandoned, is considered deadwood, making it ripe for and subject to cancellation.

We’ve written before — here and here — about the challenges of trademark deadwood that face brand owners, and we’ve also highlighted the USPTO’s proposed help on the way, here and here.

Yet, until there is perfect alignment between every federal registration and corresponding actual use, the problem of deadwood will remain, even if it is less frequently seen by brand owners.

What we haven’t discussed much before is how to guage whether a registration is deadwood. The most common approach is to have a routine, professional, factual investigation conducted.

Turns out though, even reputable, professional investigations that reasonably seem to point to non-use and abandonment are not perfect, nor are they a guarantee of all the relevant facts.

For example, years ago, we received a petition to cancel our client’s federal trademark registration on abandonment grounds. Petitioner’s counsel was overly-confident in the assertion of non-use.

The investigation even noted that the mark no longer appeared on our client’s product packaging and labeling. Sadly for the Petitioner though, the mark was still in use on point of sale materials.

As a result, the matter resolved very differently than expected for Petitioner. Our client ended up selling the registered mark and receiving a royalty free license back to continue using the mark.

Back to the Deadwood mark shown above, technically it is not deadwood at all, first, because it is not federally-registered, and second, it is very much in use, posing a very different kind of issue.

Undoubtedly there are unregistered rights in the Deadwood mark, and the owner could come out of the woodwork to oppose or cancel another’s registration even up to five years after issuance.

Given the uncertainty of when and if the owner of an earlier unregistered mark wakes up to the importance of federal registration, it is pretty risky to ignore these kinds of uses during clearance.

Finally, given the uncertain and imperfect nature of trademark investigations, it’s best to think ahead and have some alternative leverage in mind before chopping at wood assuming its dead.