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View my professional biography

People often ask me why my name is spelled the way it is. When I was born, my mother added an extra “e” in the middle to distinguish it from being confused with the word “drake,” meaning “male duck.” The strategy was mostly successful. (I still earned the nickname “the mallard” for a short time and there was even a duck call at a tenth grade basketball game or two, to be used on the rare occasion I scored any points).

Having an uncommon name, I noticed any other “Drake.” Whether it was the secret identity of my favorite cartoon character, a hotel in Chicago, a university in Iowa, a person everybody loves (except George), a fictional soap opera doctor, or a rapper from Toronto. But it wasn’t until I was in law school studying trademark law and likelihood of confusion that I actually experienced firsthand the confusion of being confused with another “Drake.” A fellow student casually commented that they did not know I was such a fan of salsa dancing (I wasn’t) but it turns out another “Drake” was and had posted a request for dancing partners on some law school bulletin board. This felt like infringement to me!

My understanding of trademark law has come a long way since, but it is with this personal experience that I practice and write about trademark law. On DuetsBlog, you will find posts from me about my personal favorite brand and other personal topics of interest. I may occasionally take a controversial position, but only because I can – with that extra “e” in my name, even if my argument is questionable, one thing is certain: I’m not a quack!
Continue Reading Draeke Weseman

Time certainly flies while you’re having fun, and for me, the past two decades of serving as an editor and author for The IP Book and also as a planner for the Midwest IP Institute is no exception:

In the 2022 IP Book you’ll find a lot of terrific content, including Tiffany and Molly‘s Trademark Modernization Act Updates, and Draeke‘s Trademark Failure to Function Update.

The IP Book is available for purchase here, all proceeds go to Minnesota Continuing Legal Education, learn and enjoy at the same time.

Hotels, Ice Cream, and Shoes as Canvases for Great Brands

 

Seth Godin has written about how Nike is a great brand because we can imagine what a Nike hotel would look like.

 

So, let me ask a slightly weirder question: If Nike were an ice cream flavor, what would it taste like?

 

My guess would be something like a lemon zest sorbet, perhaps. (I’ll look for your best guess in the comments.)

 

Speaking of ice cream, Ben & Jerry’s is another great brand, like Nike.

 

Maybe you have a favorite Ben & Jerry’s flavor. Maybe it’s Chunky Monkey? My favorite is currently Half Baked:

Although I have to say, the recent collaboration with Netflix, called Netflix & Chill’d, is pretty good too, and not a bad show of brand strength by Netflix:

(For the record, the ice cream gods have decided that Netflix tastes like Peanut Butter Ice Cream with Sweet & Salty Pretzel Swirls & Fudge Brownies).

Based on your experience with the Ben & Jerry’s brand, I bet you can even imagine what a Ben & Jerry’s hotel would look like.

 

How about another test of brand strength?

 

What if Ben & Jerry’s were a basketball shoe? What would it look like?

 

No guessing required this time: I present to you, the Chunky Dunky:

 

 

“The Chunky Dunky” is a limited run collaboration between Nike and Ben & Jerry’s that applies Ben & Jerry’s iconic trade dress to the iconic Nike SB Dunk Low shoe silhouette, named using a mashup of “Dunk” with Ben & Jerry’s Chunky Monkey flavored ice cream.

 

I have bad news for you though, if you want a pair, you’ll likely (more on this below) need to spend $2,000 or more, as the very limited run sold out instantaneously and can only be found on the secondary collector’s market on platforms like StockX.  You’ll also want to keep an eye out for fakes.

 

Collaborations like this are excellent ways to strengthen a brand, including its trade dress, well beyond the scope of the core goods of the brand owner. Usually, a brand owner can only enforce its mark against another mark if the use of the other mark is likely to create confusion about the source of the goods or suggests endorsement, sponsorship, or approval, because of similarities in the marks and goods or other factors. That can be difficult to do when goods are seemingly unrelated, for example shoes and ice cream.  In fact, I would generally assume one’s ability to dunk is inversely proportional to the amount of ice cream they consume.

 

By expanding use of marks and trade dress to seemingly unrelated goods like shoes and ice cream, not only is a direct link established between the goods in question, the brand owner can show that consumers expect to see its brand on a wide variety of goods, making enforcement easier against copycat marks appearing on goods not offered by the brand.  When possible, establishing a high degree of consumer recognition, or brand strength, can be a critical factor in the likelihood of confusion analysis used to prove infringement.

 

To my knowledge, neither the strength of the Ben & Jerry’s trade dress nor the Nike Dunk Low silhouette has ever been determined in litigation (unlike the famous colors of John Deere), but it seems fair to say that by now, the Nike Dunks are one of the most recognized shoes on the market, having been commercially available since 1985.  The “SB” version (for skateboarding) was launched in 2002 and has appeared in countless collaborations, many of which are highly sought after among shoe collectors, a.k.a sneakerheads. Indeed, we may soon have a determination about the strength of the Nike Dunk Low silhouette via a recent lawsuit filed by Nike.

 

No doubt relevant to that lawsuit will be the fact that Nike owns multiple federal trademark registrations for features of shoe silhouettes, including the following which shows features of the Nike SB Dunk Low:

(U.S. Registration No. 3711305)

 

As described in the registration, the mark consists of the design of the stitching on the exterior of the shoe, the design of the material panels that form the exterior body of the shoe, the design of the wavy panel on top of the shoe that encompasses the eyelets for the shoe laces, the design of the vertical ridge pattern on the sides of the sole of the shoe, and the relative position of these elements to each other.

 

Meanwhile, Ben and Jerry’s might be the most beloved premium ice cream on the market. Ben & Jerry’s owns an incontestable federal trademark registration for its trade dress,  as shown in this drawing on file with the United States Patent and Trademark Office:

(U.S. Registration No. 4176490)

 

As described in the registration, the mark consists of the image of a cow in black and white, standing on green pasture. The pasture has a shade of lighter green on the horizon where it meets an image of a blue sky with white clouds as part of the background.

 

Combine the trade dress of these two powerful brands and you have an extremely expensive shoe, almost all of the value of which is derived from the goodwill of the brands and scarcity of the shoe, rather than innovation or materials.

 

It’s ultimately the kind of exclusive collector’s shoe you might see on the feet of a person staying at a luxury hotel adorned in the trade dress of another famous brand, this fictional version imagined by graphic designer Tarek Okbir …

(HT: Brand New)

 

It might also be the kind of shoe you could come to own, despite its high price tag. The Atlanta-based rapper / activist Michael Render, known professionally as Killer Mike (blogged about on DuetsBlog here), has donated his own pair of Chunky Dunkys to Ben & Jerry’s get-out-the vote campaign. For more details visit www.action.benjerry.com/rtjsweeps by Oct. 25. Below, Killer Mike can be seen wearing his Chunky Dunky shoes in a recent photo by Diwang Valdez published in Billboard magazine and shared via Killer Mike’s Instagram page a few weeks back:

 

So dear readers, what brands would you like to see as either shoes, ice cream, or hotels?

Hearty thanks to Colette Durst, Stephen Lee, and Susan Perera, for generously sharing their insights and perspectives about trademark nominative fair use.

By all accounts, the Midwest IP Institute was a great success this year despite the limitations of delivering knowledge in a virtual format, thanks Zoom.

Hearty thanks to Draeke Weseman for his great work in helping pull together Chapter 7 in the IP Book, which can be purchased here from Minnesota CLE.

In case you missed it, here is my Trademark Nominative Fair Use of Another’s Logo post from March, leading up to the 2020 AIPLA Annual Spring Meeting.

Here’s a question for our design-minded readers: If survey evidence told you that consumers recalled only certain elements of a beloved logo, would you remove the rest, and reduce it to only the most commonly remembered features?

 

Most likely, your answer doesn’t involve analysis under trademark law.

 

So, maybe, this post will influence how you think about the answer to that question.

 

One of the often-ignored principles of trademark law is that the determination of similarity between marks is not made through “side-by-side” comparison.

 

Rather, marks are evaluated based on all relevant facts pertaining to appearance, sound, and connotation, with the emphasis on the “recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks.”

 

The predecessor court to the Court of Appeals for the Federal Circuit stated it more bluntly in 1969: Consumers “may have but dim recollections.”

 

Despite this long-standing expression of the law, trademark attorneys for both plaintiffs and defendants still can’t help themselves from making “side-by-side” comparisons, routinely leading with them in pleadings or letters, often setting the marks side-by-side in a table, or one-after-the-other in paragraphs. Here’s an example snipped straight from the pleadings in a previously blogged about case involving a beaver in a ball cap and an alligator in a cowboy hat:

 

 

Of course, it’s fair that a plaintiff or defendant would like to point out exactly, side-by-side, the common elements or differences in the marks.

 

I wondered, how often courts strictly enforce a side-by-side comparison from making its way to a jury, since once the side-by-side comparison is shown, it is sort of hard to unsee, and couldn’t that potentially mislead a jury by giving them a false experience with the marks?

 

In the Buc-ee’s case, it appears no attempt was made to shield the jury from such exposure, as a slide deck was purportedly used as a demonstrative to the jury during opening and closing statements, it is literally only side-by-side comparisons:

 

 

In the wild, with few exceptions, this is not how consumers interact with brands.  Instead, in between the interactions with the alleged rightful brand owner in the first instance and the alleged brand infringer some time after, there is the memory of the consumer, dim as it may be.

 

Thus, there is infringement when a plaintiff can show that upon seeing the defendant’s junior mark, factoring in the consumer’s fuzzy recollection of the plaintiff’s senior mark, the similarities of the defendant’s mark are such that consumers are likely to be confused, mistakenly believing they are encountering products or services of the plaintiff.

 

In such situations, the law views the defendant’s enjoyment of the goodwill earned by the plaintiff under its mark as a harm to the plaintiff.

 

So it seems that if what consumers recollect ultimately drives the infringement analysis, it is important then to understand: Just what do consumers remember about trademarks?

 

Recently, Van Monster, “the UK’s largest choice of quality used vans” published the results of Motors by Memory, an informal, non-academic, study of British consumers’ recollection of car logos.  The study asked 100 British consumers to draw 10 car logos, purely from memory.

 

The results are presented along an approximate spectrum of accuracy, and as you might expect range from impressively accurate to incredibly terrible.

 

Take a look at the results for BMW, below:

 

 

As analyzed by Van Monster, in the BMW example, 92% were able to recall the colors white and blue, and 59% drew a quadrant.

 

However, despite more than 90% drawing a circle of some kind, by my own calculation, only about 20% specifically recalled the black outer circle.

 

Recently, BMW updated its logo to remove the black outer circle.  Although BMW’s decision was met with mixed reviews, perhaps similar survey results contributed to the controversial redesign?

 

Below is a side-by-side comparison, old versus new:

 

 

Take a look back at consumer recollections of the old BMW logo. Doesn’t it seem that the new logo falls right in the middle of the chart, perhaps representing some sort of mean or median of “consumer recollection?”

 

Whether or not BWM actually took this approach, I have no idea – but, designers, what would you say about taking this approach to design?

 

And trademark attorneys, would the new BMW logo, backed potentially by survey evidence about how strongly the elements are recalled, make it that much easier to support enforcement against similar marks using those same elements, without resorting to any side-by-side comparison?

 

And finally, just curious, if a beloved logo is changed, do those with tattoos care?

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!