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 differnt 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.

Well, here we are — a mere ten years ago today — when we dove head first, or at least, dipped our collective toes into the vast intellectual property blogging pond.

Intellectual PropertyIP — is italicized today, because there is currently a belief among some of those we respect, that trademarks aren’t intellectual property.

According to our friend Ron Coleman of the Likelihood of Confusion blog:

“[N]othing about trademarks is brain-born other than what we might fairly call the ministerial choice to associate a given trademark with a good or service. That process may involve, and often does, a lot of thinking, creativity and intellection. But none of that invests the trademark itself — which may, in fact, be completely lacking in creativity (“Best,” “Ford,” “American”) — with the quality of intellectual, mental, creative or original content such that it should be deemed ‘intellectual property.’”

There’s a lot to unpack there, but until then, just so you know, I’m firmly on the other side of the fence, viewing trademarks as being a recognized subset of the convenient category label commonly referred to as “intellectual property.”

Stay tuned on this topic, there is much more to say, much more than there is time left in this 10th birthday to do the topic justice, but for now, I’ll simply rest with a notable quote from branding icon, Walter Landor:

“Products are made in the factory, but brands are created in the mind.”

While trademarks aren’t brands, not only can trademarks be bought, sold, licensed, and leveraged as property, trademarks protect brands, and they embody all the intangible goodwill of the portion of a business associated with a particular mark.

Dare I say there is nothing ministerial about the brain-born brilliance Landor brought to his craft as a designer, nor is there mere ministerial contribution to the brilliance and creativity that our many non-lawyer guest bloggers have brought to their work over the last decade. Aaron? James? Mark? Agree?

We’ve written a lot over the years about picking a side, the art of taking a position, not waffling; one of the things we love about Ron is he is unafraid to take a position, to plant his flag firmly in the ground — that’s what we’ve tried to do too, and what we intend to continue to do going forward.


 

Here’s a question, what purpose is served by excluding trademarks from the definition of what constitutes intellectual property? Here’s another, who gets to decide?

Many years ago, as a young lawyer, I experienced the utter joy of helping a client dismiss a copyright infringement lawsuit against it, because the plaintiff’s claimed copyright hadn’t yet been registered with the Library of Congress.

Seemed like an obvious error for the plaintiff to file when it did, since the federal copyright statute, according to my reading, required that registration be made (or denied) before a lawsuit could be brought, mere application was not enough.

Over the last twenty-five years, I’ve observed creative lawyers convince some courts that the language isn’t that clear, leading to a split in the various federal courts, some courts allowing suit based on the mere filing of an application.

So, imagine my surprise this morning, to read that the U.S. Supreme Court has decided the issue once and for all: It is actually pretty clear from the language of the statute, mere applications to register are not enough to allow filing a lawsuit.

That’s right, earlier today, the U.S. Supreme Court issued its decision in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, Justice Ginsburg delivering the unanimous decision of the Court:

“Impelling prompt registration of copyright claims, 17 U.S.C. §411(a) states that ‘no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.’ The question this case presents: Has ‘registration . . . been made in accordance with [Title 17]’ as soon as the claimant delivers the required application, copies of the work, and fee to the Copyright Office; or has ‘registration . . . been made’ only after the Copyright Office reviews and registers the copyright?”

“For the reasons stated, we conclude that ‘registration . . . has been made’ within the meaning of 17 U. S. C. §411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.”

So, with that, at least two takeaways emerge.

First, those who create copyrightable expression have yet another incentive to promptly register the copyrights in their creative works.

Second, issues that seem obvious on their face can nevertheless, through creative lawyering, tie the courts up in knots for decades.

– Mark Prus, Principal, NameFlash

It’s that time of year! Baseball Spring Training is here! In honor of this, I’m looking at the fun names in Minor League Baseball. Some of them demonstrate the key principles of name development!

Minor League Baseball team names can be dull and boring. For example, there are some that just reflect the name of the parent Major League Team (e.g., Oklahoma City Dodgers, Syracuse Mets, Springfield Cardinals or Iowa Cubs). Yawn.

Or maybe they use a traditional animal such as the Burlington Bees or the classic Durham Bulls. These are a little more interesting, but not especially engaging.

Some teams are “swinging for the fences” with their names. When you think about what is important in naming your minor league team, you should focus on 3 things. Team names should be fun, relevant to the local population, and quirky enough to be memorable.

Here are some examples of team names that are “hitting it out of the park.”

  1. The Madison, Alabama, Rocket City Trash Pandas – Yes, there is a large NASA facility nearby (that includes Space Camp) in Huntsville so the “Rocket City” moniker is no surprise. The Trash Pandas came from a consumer contest and won the public vote by a large margin. The previous team name was the uninspiring Mobile BayBears. For the record, the other finalists were space-animal combinations: Moon Possums, ThunderSharks, Space Chimps, and Comet Jockeys.

    Even though the Trash Pandas won’t start playing until 2020, they broke the three-month sales record for merchandise sold by a rebranded Minor League Baseball team with over $500,000 in merchandise moved in nearly 3,500 online orders.
  2. The El Paso Chihuahuas – When the former Tuscon Padres moved to El Paso in 2013 the team ran a naming contest and fans chose between these finalists: Aardvarks, Buckaroos, Chihuahuas, Desert Gators, and Sun Dogs. While Team Management was initially a little apprehensive about the name, their focus on fun drove sales of Chihuahuas merchandise to record setting levels.
  3. The New Orleans Baby Cakes – According to a team PR release, the Baby Cakes name is “A tribute to the Mardi Gras king cakes where small plastic babies are sought after.” In the 2017 rebranding, the former New Orleans Zephyrs held a name-the-team contest and the finalists were Baby Cakes, Crawfish, King Cakes, Night Owls, Po’boys, Red Eyes, and Tailgators.

    Although the Baby Cakes name was initially met with mixed reactions, the team reported increased merchandise sales after the announcement and the rebrand set a record for online merchandise orders. Of note, the team awarded a free lifetime pass to any baby born in the state of Louisiana during 2017 and was entered into a raffle to win a full four-year tuition to a state college in Louisiana upon their 18th birthday in 2035.
  4. In 2019 the Amarillo Sod Poodles begin play – Per the team, Sod Poodles is a “pioneer’s nickname for ‘Prairie Dogs.'” This name emerged victorious in a “Name the Team” contest, triumphing over other selections rooted in Amarillo’s Texas Panhandle location: Boot Scooters, Bronc Busters, Jerky and Long Haulers.
  5. The Jacksonville Jumbo Shrimp – Previous renditions of teams in Jacksonville included the Jacksonville Expos (referencing the parent Montreal Expos) and the Jacksonville Suns. You’ve got to admit that the Jacksonville Jumbo Shrimp is an upgrade, even if it is an oxymoron.

    And speaking of oxymoron, the Jacksonville Jumbo Shrimp was an answer on Jeopardy earlier this year!Jacksonville Jumbo Shrimp✔@JaxShrimp

    Hey @thereal4smo – we loved your work on @Jeopardy tonight. Can we interest you in to coming to Jacksonville for a ballgame this season? Follow back and message us if you’re interested!

 

If you want to check out the bible of the weird team names of Minor League Baseball, check out this book: Root for the Home Team: Minor League Baseball’s Most Off-the-Wall Team Names and the Stories Behind Them.

Someday I’d like to work in the “Funnest” brand name category in America–Minor League Baseball Teams!

Welcome to another edition of Single Letter Brands. This one was uncovered in the far southwest corner of the country, if you haven’t been, I highly recommend a visit:

Q is a casino/resort near Yuma, Arizona. Here’s a question, what does Q stand for?

In this context, near Yuma, we’re not talking this Q casino, but rather, The Quechan, a Native American tribe, living on the Fort Yuma Indian Reservation, located on the lower Colorado River in Arizona and California, just north of the Mexican border:

The Objects in the Rear May Appear Closer Than They Are, Really.

Here’s another question: Why do you suppose The Quechan haven’t pursued registration of Q at the USPTO? Perhaps this federally-registered Q casino mark?

Here’s yet another question: Is there room on the Principal Register, for multiple differently stylized Q casino marks? I’ll answer that one with another question: Would you rather have really thin national rights or broad, but more local rights?

And, your Answers?

Does Sanas Health Practice Ltd. (“Sanas Health”) think that Daenerys or Sansa will win at the end of the wildly popular Game Of Thrones series and ultimately sit on the Iron Throne?  Sanas Health filed two applications for the mark “QUEEN OF THRONES” with the United States Patent and Trademark Office (“USPTO”). Interestingly, the Applicant’s name Sanas is extremely similar to the Game of Thrones show leading character Sansa Stark. This may be merely a coincidence but could be argued to enhance confusion between the GAME OF THRONES® marks and the applied for “QUEEN OF THRONES” mark.

I guess there could even be those out there that think Cersei will not die in the final season (not me) and instead will end up on the Iron Throne at the end of the series. But, I am thinking most people agree with me that she will not survive (and will likely be killed by one of her brothers – my bet is on Jaimie).

Not surprisingly, Home Box Office (“HBO”) believes that Sanas Health is trying to capitalize on the goodwill of its famous GAME OF THRONES® mark and brand; and thereby, diluting its distinctive and famous GAME OF THRONES® marks. HBO further believes that the “QUEEN OF THRONES” mark is confusingly similar with its marks. Accordingly, HBO has filed a Notice of Opposition against these applications (No. 91246195).

By way of background, HBO has thirty-one (31) registrations and applications for GAME OF THRONES marks (including design marks and GAME OF THRONES with additional words such as GAME OF THRONES CONQUEST®, GAME OF THRONES THE THREE-EYED RAVEN®, GAME OF THRONES ASCENT®, and GAME OF THRONES BEYOND THE WALL) in connection with various goods and services.

Sanas Health applied for its “QUEEN OF THRONES” mark in connection with:

  • “Castor oil for medical purposes,” IC 5 (Ser. No. 87/839,043); and
  • “Nutrition counseling; Dietary and nutritional guidance; Providing a website featuring information about health, wellness and nutrition; Providing information about dietary supplements and nutrition,” IC 44  (Ser. No. 87/922,698).

This is not HBO’s first time seeking to protect its marks related to the Game Of Thrones series and brands. HBO has three (3) trademark registrations and an application for WINTER IS COMING®, which is the House of Stark-centric premiere episode of the Game of Thrones series. The Purple Wine Company attempted to register the “WINTER IS COMING” mark in connection with wines. HBO opposed the application and the Purple Wine Company failed to respond. The mark is now abandoned.

The Examining Attorney found the recent application for “WINTER IS COMING” filed by Chen Yufang to be confusingly similar with HBO’s WINTER IS COMING® marks and issued an Office Action preventing registration. We will have to see if Mr. Yufang serves a response to this Office Action or abandons the application. If he does not abandon the Application and is able to overcome the Office Action, I would anticipate that HBO would file a Notice of Opposition against his application for the famous “WINTER IS COMING” mark.

Fans of the Game of Thrones series are aware of the fanciful word “Dracarys” as a command to Daenerys’ the fire breathing dragons. HBO opposed an application filed by Hangzhou Wanry Imp. & Exp. Co., Ltd.  (“Hangzhou”) to register the “DRACARYS” mark in connection with numerous automobile related accessories. HBO opposed the application and Hangzhou failed to respond. The mark is now abandoned.

Fan favorite Tyrion Lannister proclaimed, “That’s what I do. I drink and I know Things” in season six of Game of Thrones, and HBO’s official trailer for the sixth season included this saying. When Francis Collins from Florida tried to register this mark in connection with t-shirts, HBO relied upon its common law rights associated with its sale of t-shirts having the “That’s what I do. I drink and I know Things” mark to oppose the Application. Ms. Collins defaulted and her application for the mark is now abandoned and dead.

DuetsBlog has featured other posts related to the famous show and its brand, including Martha’s post here, and mine here.

The wait is almost over.  The final six episodes of Game of Thrones start on April 14.  We will have to see if there is a King or Queen who ends up on the Iron Throne and what happens to the “QUEEN OF THRONES” applications.

No worries, I’m back at the keyboard, refreshed after a busy January, from the ATA Show in Louisville to Las Vegas for the SHOT Show, then Austin, and well beyond.

2019 is off to a rapid start, not sure where the first half of February went, so I’ll make sure this is a good one, and with a little luck, it might even be a great one:

Did my iPhone capture a production anomaly in the soap on display? Note the disconnect between the word and the stuff that I’m not sure I’d want to rub on me.

How often do we hear, “Oh it’s good enough,” or “Yeah, it’s pretty good”? — Good seems pretty watered down today, bordering on being just OK, a passing grade.

Kind of reminds me of AT&T Wireless’ funny Just OK Is Not OK commercials. Let’s just say, good seems much further from CNP than BGE — Barely Good Enough.

A Friday evening shopping run to Whole Foods provided inspiration for this blog post; as you will recall, it’s not the first, others preceed it, e.g., here, here, and here.

So, imagine my surprise that someone actually would try to “brand” soap as good.

Turns out, that someone has infused more than the common meaning into the word, incorporating the more active “do-good” kind, with a real social impact.

Before learning of that aspect to the brand, I was left wondering, is good — well, enough to serve as a distinctive trademark, in other words, is it ownable, as IP?

Turns out, it apparently is, Good Soap is federally-registered for “sustainably manufactured beauty products, namely fair trade shea butter soap” — no less than 500+ pages of evidence was submitted to establish acquired distinctiveness.

At the end of the day, I’m still left wondering about the reasonable scope of rights?

With the mildly laudatory Good, it’s probably no surprise that other coexisting soap marks have slipped into the same laudatory-themed bubble bath as Good Soap:

Besides all those, why did the USPTO allow this Good soap mark to coexist, much less achieve federal registration without a showing of acquired distinctiveness?

Perhaps another less-than-wonderful style of truncated examination at the USPTO?

With a broader identification of goods, covering simply “soaps” — and no apparent “do-good” double meaning, how did the informational matter refusal slip by too?

Back to what Good might mean to consumers, at first blush, it seems facially about managing normal expectations, but Great is about exceeding them.

Assuming the product attributes live up to the name, wouldn’t a brand rather be great than simply good? In other words, can Good Soap, ever be a Great brand?

By the way, this is not anywhere close to our first soapbox when it comes to getting lathered up over soap trademarks:

You can be the judge of what is good versus great. Yes, lather, rinse and repeat.