It’s been a while . . . about seven months now.

As you’ll see, a few things have happened since April, when we last left you with these gems on the topic of trademark bullying: Stop Bullying the Entrepreneurs, What does Entrepreneur Mean, Anyway?, and Public Shaming is Not the Solution to Trademark Bullying. Let’s Build One

We’re thankful to be back here, to resume the legal and marketing team dance.

So, in the spirit of counting our abundant blessings, especially this week, I’d like to share with you how continuously thankful I am for:

Tiffany, Draeke, Tucker and I, with the help of others, will no doubt have some fun, thought-provoking posts for you as we look ahead to 2020, and we are so thankful to be doing so as part of the GT platform, just named U.S. News and World Report’s only Law Firm of the Year in Trademark Law for 2020.

Thank you, Susan Heller and Joel Feldman, for your incredible leadership of GT’s Trademark and Brand Management Group.

Dear readers, I am truly, continuously thankful for the ability and opportunity to stay engaged with you.

What or who are you thankful for?

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.

Can a gang become a brand? This is a question asked in the new Netflix show, Trigger Warning,  produced by and starring Michael Render, AKA Killer Mike, one half of the Grammy-nominated rap group Run the Jewels.

Killer Mike of Run the Jewels performing at Pitchfork Chicago on July 19, 2015 (Photo Credit: Me)

In episode three, “White Gang Privilege,” Mike explores America’s love of the Outlaw, real and imaginary, and typically white: Al Capone, Tony Soprano, Tony Montana, Michael Corleone, Johnny Cash, Gordon Gecko, and Hells Angels, to name a few.  The episode begins with Mike asking: How is it possible for Hells Angels, a known biker gang, to sell t-shirts on Amazon? And what’s stopping black gangs from doing the same thing?

As Mike drives to a trap house in Atlanta to find out, he comments that “even though black gangs … are as well known as the Hells Angels, they haven’t been able to cash in and trademark their brands in the same way.”  So he meets with Crips gang members Yayo, Murdo, AC, and Newny to discuss legitimate business ideas, like zipper and button manufacturing, and, eventually, the gang lands on a new brand of soda: Crip-a-Cola.

Crip-a-Cola packaging as shown on The Late Show with Stephen Colbert

Spoiler alert: The episode proceeds to follow the gang through all of the typical startup business challenges: getting a loan (or at least trying), creating a minimum viable product (needs more sugar), working with a graphic designer (his first time working with a gang), consulting a beverage industry expert (impressed by the polished product), focus-group testing (everyone is afraid or skeptical at first, especially Mario!), advertising (a music video like commercial), and making that first sale (at a local farmer’s market), all while handling a new market rival (Blood Pop soda produced by the Crips’ rival gang, the Bloods).

Considering everything that went into the episode, and the seriousness of the effort, I was left scratching my head over the obvious, and perhaps true-to-life, startup oversight:  where’s the trademark lawyer?  I spotted at least four issues where a good trademark lawyer could have really helped.

Trademark Notice

Do you see the little circle-R next to the word Crip-a-Cola on the product packaging?  That means “registered trademark” and indicates that Crip-a-Cola is federally registered in the United States.  The only problem is that it’s not registered.  In fact, there isn’t even an application pending!  We’ve blogged before about misuse of the trademark registration symbol here (fraud?) and here (false advertising?).  A good trademark lawyer would have corrected that to a “TM” and filed an intent-to-use application before going live on Netflix (or even to that first farmer’s market).

Clearance

Another possible problem a trademark lawyer could have helped with: Clearance.  Can the Crips actually use “Crip-a-Cola?” despite at a minimum, perhaps calling to mind Coca-Cola?  While “calling to mind” is not infringement, does Crip-a-Cola step to closely to Coca-Cola, since Coca-Cola is a famous brand, and able to wield the full power of anti-dilution law?  What has Coca-Cola done with similar attempts?  A good trademark lawyer would investigate and find out: of course, Coca-Cola will protect its corner, just take a look at the mark CropaCola, which popped up in 2014, and which Coca-Cola quickly opposed, on likelihood of confusion and dilution grounds, asserting the following:

[Coca-Cola] is the world’s largest beverage company, serving more than 1.6 billion consumers each day, in more than 200 countries around the world.  [The] COCA-COLA brand is the cornerstone of its portfolio, which presently includes fifteen billion dollar brands.  COCA-COLA and DIET COKE are the top two soft drink brands in the world. . . .[T]he ‘CROPA’ term in [CROPACOLA] is confusingly similar in sight and sound to the ‘COCA’ term in [COCA-COLA], containing the same number of syllables and a similar phonetic impression, which is compounded by the addition of the ‘COLA’ suffix, in and identical manner as the use of [Coca-Cola’s] COLA suffix.”

Seems plausible that Crip-a-Cola could expect the same treatment from the largest beverage company on Earth.  This is where having a trademark lawyer in your gang would really help.  For one, to identify issues like these (never mind taste infringement) and identify strategies for going forward, but more importantly, to look for defensible legal positions and creative solutions, for example, perhaps seizing on this line in Coke’s opposition: “Furthermore, the ‘CROPA’ term has no independent meaning, further failing to distinguish it from [Coca-Cola].”  (emphasis added).  Here, Crip-a-Cola may have an advantage: unlike “Cropa”, the term “CRIP,” does have several independent, distinct meanings (perhaps the most helpful is the possible backronym: “Common Revolution In Progress.”) and is likely famous, or infamous, in its own right.

Ownership

What else could a good trademark attorney help with?  How about determining ownership?  Absent a legal entity to own the CRIP-A-COLA mark and the related business, Yayo, Murdo, AC, Newny, and Killer Mike would own Crip-a-Cola jointly as individuals in a general partnership, the worst form of legal entity, due to the shared, personal, and unlimited legal liability each partner shoulders. Better to form an LLC at least, not only to more cleanly own the trademark, but also to remove personal liability, formalize ownership, management, and tax decisions, and adopt buy-sell provisions.

Furthermore, what about competing claims of ownership? Is there an official Crips entity that could claim false association?  Maybe – one trademark application filed July 5, 2018 for the mark CRIPS for “association services” and “Organizing chapters of a Community Revolution In Progress club and promoting the interests of the members thereof” suggests that an entity called Crips, LLC, may have been formed to claim leadership of the Crips.  This would be something any good trademark attorney would investigate, and develop a strategy for dealing with.

Legal Notices

Finally, the last issue in the episode I spotted, where good trademark lawyer would lend a hand, arises from the fine print claim made at the end of the Crip-a-Cola commercial (NSFW):

The fine print states that “unauthorized use of the Crip-a-Cola font is prohibited by law.”  The problem? Fonts, or typefaces, are only indirectly protected by law, and not in gross.  Sure, if your typeface is displayed as a result of computer software code operating on a device, then copyright protects the computer code necessary to display the typeface as a font. This is the main reason why certain fonts are licensed. But if the typeface is “copied” or used without authorization through other means, there is no recourse under copyright law.  Instead, one would have to turn to trademark protection of the stylized mark, which, absent a federal registration would be limited geographically by common law rights based on use, perhaps as narrowly as Atlanta or the State of Georgia.  And except for the famous typefaces of famous brands (for example the Coca-Cola script), such rights would be further limited by the goods in connection with which the typeface is used, to prohibit use on only identical or related goods (for example, complimentary goods, or goods within the likely “zone of expansion”), in this case, rival beverage or food products. So the claim that the “unauthorized use of the Crip-a-Cola font is prohibited by law,” while not entirely untrue, is mostly inaccurate.

Outlaws are known for having their criminal defense attorneys on speed dial.  Maybe it’s time to add the number for a good trademark attorney.

Better Call Saul? Only if he practices trademark law!

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Wow, what a start to 2019!  We already have a Supreme Court case to look forward to, some great guest posts here and here, and plenty to build on from 2018.  Our first trade show of the year is also in the books – this time in Louisville, Kentucky for the Archery Trade Association’s annual trade show.  In addition to supporting clients in the industry, we had the privilege of working with the ATA in 2018 to develop an IP Guide for its members and help launch a new brand for the ATA, seen in the photographs below, along with a few other shots from the week:

Craig Krummen, Steve Baird, and Draeke Weseman at the ATA Trade Show (L to R, Dipak Shah not pictured)

 

Archery Trade Association – New Logo
Archery Trade Association – Express Pass Signage
Creative Brand Protection Video – Steve Baird
ATA Member Interview Video – Steve Baird
IP Guide Prepared for ATA Members by Winthrop & Weinstine

Along with predictions, also part of every new year is setting resolutions and goals. Aside from the usual, I’ve set a goal for DuetsBlog of joining Steve with posting something interesting once a week (unless the calendar is already full), which is easier typed than done.  So stay tuned, more to come from me and all of us at DuetsBlog in 2019!

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

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

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

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

Like many new parents, my wife and I own a Boppy® infant support pillow.  Examining the packaging, I noticed an excellent example of “look-for advertising:”

Typically, look-for advertising is part of a campaign to build consumer recognition of a product design to a level where it can support a claim of “acquired distinctiveness,” that is, the design tells consumers the product comes from a distinct source.  One exception to this process is that a functional product configuration is not distinct and can never acquire distinctiveness – functional features can only be protected by patents, if they meet the requirements for patent eligibility.  We’ve written extensively about these issues here, here, and here.

So, is the “Boppy Shape” functional, that is, unable to acquire distincitiveness?  This expired patent suggests the answer might be “yes,” describing the invention, a support pillow, as follows:

It is generally circular but discontinuous where tapered ends meet, defining a well in the center.

The patent drawings also show the “Boppy Shape” as a preferred embodiment of the invention:

This evidence doesn’t end the inquiry, but it’s strong evidence that the “Boppy Shape” is functional.  The Trademark Manual of Examining Procedure describes patent evidence as follows:

It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does, the utility patent is strong evidence that the particular product features claimed as trade dress are functional. If it does not, or if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely.

However, even if the “Boppy Shape” itself is functional and not protectable as a trademark, nothing stops Boppy from registering the phrase “Look for the Boppy Shape!” as a trademark, as these registrations show, here, here, and here, or the two-dimensional representation of the shape, here, and doing so is a good move by Boppy regardless of the whether the shape itself can ultimately also be registered.

One reason Boppy might want to do this is because with patent expiration comes generic competition.  And that’s fine – if all this talk about trademark and patent law gives you a headache, you can save a few bucks buying generic ibuprofen instead of brand name Advil – just don’t call it Advil®.

Where we as trademark professionals see generics violating that rule all the time (and counterfeits) is on e-commerce platforms like ebay and Alibaba. Just take a look at these snips from the search results for “Boppy Pillow” on these two websites:

Alibaba:

Ebay:

The listings above are not for Boppy brand pillows. Instead they appear to be generic support pillows, perhaps fairly produced given the expiration of the patent (Boppy owns other patents for other elements of its pillows and other products, which were not examined for this post). But what’s not fair, and what is actually likely infringement, is use of the “Boppy” trademarks to sell generic support pillows.

Based on my review of its product packaging and trademark registrations, Boppy has done an admirable job raising its trademark portfolio. Now the question is, is it time for a pillow fight?

Everyone knows if you really want to get zero calories from a beverage without any strings attached, you have to drink water. But what if you hate water? Try sparkling water! Look how exciting it is:

If sparkling water is the remedy to plain old boring water, why are some trademarks for sparkling water so … flat?

Back in May, Steve wrote about a new Pepsi sparkling water product branded as bubly™. That’s “bubbly” misspelled “bubly.” For sparkling water, it’s also descriptive, probably generic, and definitely not a conceptually strong trademark. Just look at this snip from the Wikipedia page for “carbonated water,” listing “bubbly water” as a generic alternative term:

Then earlier this month, it was announced that Pepsi has agreed to buy SodaStream, the popular manufacturer of at-home sparkling water makers, its most economical model branded Fizzi™.  That’s “fizzy” misspelled “Fizzi.”

De ja vu, anyone?  Take a look at the Wikipedia page again, if you have to:

So, here we have another descriptive, probably generic, definitely not conceptually strong trademark that lacks any suggestive, inherently distinct sparkle. And if there’s any doubt, check out the descriptive uses of the word “fizz” right on the product packaging:

And on the label attached to the machine:

And on the product website:

And in the consumer comments:

And in the FAQs:

Do marketers of sparkling water hate trademarks? (And why are they such bad spellers?)

Perhaps we’ll never know. Or perhaps the answer is simply that these marketing types just wanted to avoid this:

Video: link

Or this:

But what’s the fun in something so flat!

Marketing-types, what would you do? Would you bottle the brand that is so flat it needs no imagination for its meaning to bubble up in the minds of consumers? Or would you go with the brand that nobody knows how to say but plenty of folks enjoy . . . and enjoy poking fun at?

“It just kind of spontaneously happened. Nobody at a production meeting said, ‘OK, now we are going to start circling Twins fans at the ballpark.’ It’s just something that happened spontaneously that has caught fire.”

— Dick Bremer, 2002

Although we still have snow on the ground here in Minnesota, spring is officially here and Twins baseball is about to start.  The Twins take on the Orioles for their first game of the season tomorrow, and the home opener at Target Field is April 5 against the Mariners.

Yesterday, Twins fans were alarmed when long-time color commentator and fan favorite Bert Blyleven announced on Twitter that his beloved “Circle Me Bert” on-air element in which he circles fans with a telestrator, was being replaced by a related Minnesota Lottery concept called the “Winners Circle.”  Fans were in an uproar.

But it was a false alarm – or at least, Fox Sports North reversed course fast enough to make it appear that way.  Instead, the “Winners Circle” is a apparently a complimentary addition, not substitution, that is FSN’s way of expanding the Circle Me Bert concept to a broader audience, to include fans watching the game at home, likely through social media.  As Michael Rand of the Star Tribune writes, perhaps the move by Fox Sports North was related to a reduced role for Blyleven on the air.  His contract for 2017 and 2018 is for just under half the games, down form essentially every game a decade ago.  The new name would allow FSN to promote the Minnesota Lottery without Blyleven.

Regardless, the good news for Blyleven is that with “Circle Me Bert” continuing for the forseeable future, he’ll likely be able to sling some additional merch and keep his Circle R or ®  for CIRCLE ME BERT, the mark he smartly registered more than ten years ago, and has since renewed, for clothing and toys, like this Circle Me Bert bobblehead and t-shirt.

The same cannot be said for one of the other pieces of this story.  Did you notice no ® attaches to the word “telestrator” used above?  That’s because ESPN cancelled the mark TELESTRATOR, registered in connection with “apparatus for generating video images which can be superimposed over background video images,” through a simple default judgment at the Trademark Trial and Appeal Board, back in 2001.

With no valid registration now for almost 20 years, no ®, and widespread, long-term use of the the word without pointing to a single source, it seems like an easy call – strikes one, two, and three – the telestrator is OUT, having become genericized, and sent to the bench with other former trademarks like “escalator“.

 

 

 

 

 

 

 

Growing up with a farm in the family, I learned early on that Nothing Runs Like Deere®.  As people tend to do, we named all of the tractors –  after Masters of the Universe characters, of course.  There was a front-loader type tractor of a brand I don’t recall named Skelator, another old tractor named Cringer, and a John Deere that we called He-Man.

John Deere, like other iconic brands, holds an elevated status among farmers and inspires a certain tribal loyalty – the kind that reminds me of Seth Godin’s quote about Harley Davidson: “Nobody gets a Suzuki tattoo.”  Well, people get John Deere tattoos:

John Deere Tattoo John Deere Tattoo John Deere Tattoo John Deere Tattoo

A couple things you’ll notice is that these tattoos prominently feature actual tractors, not just the famous John Deere deer logo, and they are in color: John Deere’s iconic green and yellow.

It should be no surprise that these are colors John Deere values and protects.  Colors can function as trademarks, just like brand names or logos, but only if they acquire distinctiveness.  Color, planted as seeds on products, packaging, in logos, and in “look-for” advertising, grows into a trademark over time as the public begins to associate the color with a source of products or services and recognize it as a mark . Once that association is made, the color becomes part of the story of the brand, and the brand owners have significant power through it.

Last month, John Deere showed just how much power it has in its color marks when it won a hard-fought court battle against FIMCO, maker of these sadly named, “Ag Spray Equipment” agricultural sprayers (the name is not surprisingly not registered as a trademark):

Ag Spray Equipment

Here is one being pulled by a John Deere tractor.  Confusing?  Would you assume the tractor and the equipment come from the same source?  What about a defense that farmers want their equipment to match the color of their tractor, because it is aesthetically pleasing?  Is it fair to give John Deere a monopoly right on a color combination?

Ag Spray Equipment and John Deere

Perhaps even more importantly than the immediate legal victory, in the 107-page decision the district court also called John Deere’s green and yellow color combination “famous,” a meaningful label for trademarks from which John Deere may potentially harvest even greater long-term value.  Under the Lanham Act, the owners of famous marks can enjoin subsequent users of similar marks that are likely to dilute distinctiveness of the famous mark “regardless  … of actual or likely confusion, of competition, or of actual economic injury.”  Powerful stuff indeed.

So, hey, John Deere, if you ever need a new slogan, how about “These Colors Don’t Run?”

P.S. On second thought, for a tractor, “not running” might be the wrong message ;)