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

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

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

Their Complaint includes the following picture of the chefs:

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

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

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

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

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

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

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

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?

You may recall that DuetsBlog informed you in May of 2016 (here) that Beyoncé filed suit in New York federal court against a company and its owners who were using the mark Feyoncé on apparel and other products, such as mugs. She has now dismissed the lawsuit—likely based on a settlement (although the settlement has not been reported yet, and if there is a confidentiality provision in the agreement we may never know for sure).

Beyoncé was understandably troubled when the company began using both Feyoncé (rhyming with her name, the only difference being the beginning letter) and “Single Ladies,” which is the same name as Beyoncé’s famous Grammy award winning Song of the Year. In her complaint, Beyoncé explains that the song “tells the tale of female empowerment – the protagonist celebrates her newly found status as a single woman in a dance club telling her ex-boyfriend (who is jealous of the attention that she is receiving from other men) that if ‘you liked it, then you shoulda put a ring on it.” Beyoncé alleged that defendants were “seeking to capitalize on the notoriety of ‘Single Ladies’… defendants are selling merchandise bearing the ‘Feyoncé’ mark – a misspelling of ‘fiancé’ intended to call to mind ‘Beyoncé’ and her famous song.”

Beyoncé brought a motion for summary judgment. In denying the motion, the court found that there were genuine questions of fact regarding whether there was a likelihood of confusion. It was not enough that the company had tried to “capitalize off the exceedingly famous ‘Beyoncé’ mark.” There were still questions as to whether consumers would believe that Beyoncé was associated with the ‘Feyoncé’ products.

Beyoncé takes intellectual property rights seriously (as we all should). You may recall we blogged about her efforts to protect intellectual property related to her daughter Blue Ivy Carter, here, here and here.

We have likely not seen the last of Beyoncé’s efforts to protect intellectual property.

The popular UGG® branded sheepskin boots are at the heart of a dispute in the Northern District of Illinois. Deckers Outdoor Corp. (“Deckers”) owns 29 federal registrations for the trademark UGG in connection with numerous goods and services, including footwear, clothing, wallets, passport covers, plush toys and retail store services. The company also has four pending applications for UGG to add to this family of UGG trademarks.

Deckers sued Australian Leather Pty. Ltd. and its owner (“Australian Leather”) for trademark infringement and patent infringement for selling “ugg” boots.

UGG® branded boots have become very popular. Fashion forward celebrities, such as Blake Lively and Sarah Jessica Parker, are often pictured wearing the comfortable boots as they go about their daily lives. This provides the brand with free publicity and even more exposure.

Defendant Australian Leather alleged that the ugg mark was generic for sheepskin boots and that the doctrine of foreign-equivalents supported this conclusion. The parties brought cross motions for summary judgment on these issues and others.

Steve Baird has written about trademark genericide before on DuetsBlog. Generic trademarks are those where a brand name has become synonymous with a general class of product or service. Famous examples include: aspirin (Bayer lost this valuable mark), elevator and linoleum. Losing a trademark to genericide allows competitors to benefit from the originating company’s goodwill without being guilty of trademark infringement. Companies have undertaken advertising campaigns to prevent or combat their trademarks from becoming generic. For example, the Velcro Companies came up with the hilarious video, “Don’t Say Velcro,” explaining that the product is a “hook and loop” with the brand name VELCRO®. The company even came up with a sequel video called “Thank You For Your Feedback” that Steve Baird wrote about previously on DuetsBlog.

Luckily for Deckers, the Illinois Court found that its UGG® trademark was not generic. Deckers introduced a survey undertaken in 2017 in the United States of 600 women between the ages of 16 and 54 wherein 98% of the respondents viewed UGG® as a brand name. These results were even better than past surveys commissioned by Deckers in 2004 where 58% of the respondents viewed the mark as a brand, and in 2011 where 89% of respondents viewed UGG® as a brand name.

In turn, Australian Leather asserted that “ugg” was generic among American surfers in the 1970s. The Court found this group to be too narrow. Australian Leather also introduced evidence of “ugg” being generic for sheepskin boots in Australia. Not surprisingly, the Court did not find this evidence to win the day. The Court noted that genericness in another country could be at least relevant to consumer perceptions in the United States. However, it is important to remember that whether a trademark is generic in another country has little bearing on whether it is generic in the United States. Trademark rights are territorial. Having a registered trademark in the United States does not give a company rights in that mark in Australia or other countries.

The Court explained that the foreign-equivalents doctrine did not warrant another result. It explained that “the doctrine is not a perfect fit for English to English [terms, rather, the doctrine] is generally used to analyze non-English terms used in the American marketplace.” Steve Baird did a nice job of explaining the appropriate use of this doctrine in his post, here.

What genericide stories have you heard about?  It can be an ongoing and costly battle for brand owners to protect their valuable intellectual property rights.

Love the simplicity and honesty of this sign, captured on vacation, in a cozy crepe spot (had to get out of my chair and walk across the dining room to read the smaller print, well worth the steps):

LessisMore

As Seth recently noted, there can be room for improvement when it comes to making signs (we have too), and he further notes, depending on your approach, it is possible and can be best to have more and less (although not of the same things).

As a late and gentle kick-off for the New Year, and after a long weekend of some pretty amazing NFL football games, here are a few additional thoughts about more and less (no particular order):

Less Single Letter Brands, Especially When it Comes to Equis:

MaxDosEquis

(Photo Credit and Hat Tip to Maxwell)

More Showing, Less Telling:

Especially With Effective Non-Verbal Brand Signals:

StarbucksSirenLogo

“Show, don’t tell . . . . the value of design.”

More Naming of Distinctive Product Design Features:

LexusSpindleGrille

Less Unnecessary Touting of Function Over Form

 More Creative Signs That Move Us to Be Better and Engage More

Less Pavlov in Your Hands, Especially During Meals:

Calypso

More Creative Wifi Passwords:

CalypsoWifi

(Calypso Grill Photo Credits and Hat Tip to Maxwell)

Here’s to all of us having more amazing collaborations, connections, and relationships in 2017.

On this welcome Labor Day, a few different thoughts converged for me, so please allow me to answer my own question in the title of this post, starting by explaining the below photo:

EscalatorNorthstarMpls

After repeated diversions from a particular moving stairway a/k/a escalator to the far less convenient elevators in an unnamed downtown Minneapolis office building, I finally decided to capture the above photo of signage most recently affixed to the frequent escalator blockade.

This escalator blockade suddenly appears fairly frequently, on a highly traveled portion of the Minneapolis skyway system, at least for me, and at least frequently enough for me to wonder over and over if there are lemon laws not just for cars, but for escalators too.

To soften my repeated frustration shoulder to shoulder with other skyway travelers also waiting for and packing into an elevator to travel one floor from the skyway level to the street level, I often joke out loud about how this building’s escalator must be the most frequently serviced escalator in the entire Minneapolis skyway system:

skyway-minneapolis

Most openly agree. No one has ever disagreed or openly challenged my assessment. And, since the signage provides no explanation, and the ratio of human laboring time at the escalator site compared to total blockade time yields an exceedingly small fraction, to date I’ve been unsuccessful in learning from the experts why this particular escalator is so challenged.

With a view toward the need for branding, let’s turn for a moment back to the above signage attached to the escalator blockade (reproduced below), did you happen to notice anything interesting about the unbranded messages being communicated there?

nonapologysign

Three messages appear in apparent order of importance, at least according to the order of appearance and the size of and particular type styles used.

Apparently most important is the obvious verbal message that probably needs no words given the escalator’s static state and the physical blockade: “ESCALATORS OUT OF ORDER.”

Next is the kind request: “Please use elevators.” With some helpful arrows for directing where to find them. The request part is appreciated, but not always honored. But for the movable blockade, the non-moving escalator, can appear deceptively similar to a static stairway that is capable of being climbed on and even walked upon if someone were so inclined to use their legs.

Last, but not least, especially from a branding perspective, is the exceedingly small and barely legible print at the bottom of the sign: “We apologize for any inconvenience.”

Really, any? As in, we don’t think there is even one notable inconvenience, but if you’re so high-maintenance to think otherwise, accept this token and simply move on. Brands aren’t so invisible and have the potential for being punished when they don’t own their failings.

More than a couple of branding questions come to mind from the last message in the signage. Who is we? Who is the wizard behind the sign? Who is responsible for the frequently failing escalator? And, is this really a genuine apology? In other words, why reference “any” inconvenience when the repetitive inconvenience is obvious and known to anyone close enough to read it? Seems like a classic non-apology to me, made more possible because of the anonymity of the faceless escalator service commodity.

Seth Godin’s post from this morning spoke wisdom about commodities. He contends that a commodity is a product or service no one cared enough about to market.

Building on that idea and tying in my escalator woes, it seems to me that another explanation for commodity status is not caring enough to: (a) engage in the hard work of building a brand; (b) nurture a relationship with customers, and (c) be visible, responsible and accountable to those customers.

So with that, what do you think, does a commodity ever need to apologize?

-Wes Anderson, Attorney

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot.

This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot of businesses lay claim to the letter “W” in one form or another.  A quick check of the Patent and Trademark Office database yields no fewer than 1,092 applications or registrations for the letter “W” (or, in some cases “WS” where the letters are intertwined).  Of those, there are 919 live registrations for “W.”

The latest chapter in the saga of our alphabet’s 23rd letter sets an app developer on a collision course with two of Major League Baseball’s most iconic franchises.   Evolution Finance, Inc. applied to register the stylized W mark shown below, featuring a sans-serif “W” on a rounded square with a green gradient.  It uses the mark in connection with WalletHub, a “personal finance social network.”

The WalletHub application claims the colors green and white and identifies, among other services,  “creating an on-line community for users seeking financial information” that allows users to “compare financial products” and “engage in . . . social networking services in the field of personal finance.”  After amending the identification of services in response to an Office Action, the mark was published in October 2012.  Smooth sailing, right?

Enter the Chicago Cubs and the Washington Nationals.  The two ballclubs lay claim to the letter “W” as part of their team heritage.  For the Cubs, a blue “W” (for “Win”) flies on a white flag atop the Wrigley Field scoreboard when the Cubs are victorious, ostensibly so commuters riding the “L” train on the north side of Chicago can see whether their team won.   The Nationals, as we have previously detailed, use a loopy, cursive “W” as their primary logo, and also lay claim to a variety of more basic, sans-serif “W” marks as vintage or throwback logos.  Interestingly, it doesn’t appear that the Nationals are currently selling any “throwback” caps on their official store’s website — they all bear the cursive “W.”

The Cubs’ “W” Flag

In the opposition, the Cubs cited its registration for the W mark in standard characters for “fabric flags,” and the Nationals cited its registration for a stylized W mark that identifies “clothing, namely, caps.”  Of course, the clubs’ notice of opposition claims additional common-law services, “including but not limited to, baseball games and exhibits services and a variety of goods as services.”  We’re left to assume the “variety of goods and services” most closely overlaps with WalletHub’s offerings.

The Nationals’ Registration for the W (Stylized) Mark

A brief disclosure: I am deeply and irretrievably biased as a lifelong Chicago Cubs fan.  In college, I was among the many who draped that very white-and-blue “W” flag in my apartment.  But given their travails into free agency during that time, I would be hesitant to seek financial information from the Cubs, except for the price of a bleacher seat this season.  (as much as $66 for a Saturday in June, if you were curious).

The opposition has been fairly dormant since its filing in early 2013.  The last filing on record is an extension of time from December 2014, containing a lengthy report on the back-and-forth(-and-back-and-forth) settlement discussions among the parties.

Things must have turned south since then.   WalletHub turned to the court of public opinion last month and penned a blog post entitled “Major League Bullies: Teams Seek Hypocritical Trademark Ruling.”

WalletHub considers the pending opposition to be “frivolous corporate bullying” and “pure hypocrisy” given the myriad of coexisting trademark applications and registrations that identify the letter “W.”  WalletHub then takes a swipe at the Cubs, quipping that “very few people would associate the Cubs with W’s these days.” Ouch.

In a way, you can understand where the ballclubs are coming from — sports teams are among the nation’s most iconic brands.  And remember those 919 live registrations for the letter “W”?  It turns out that only four of those are for the “W” mark in standard characters — among them, the Chicago Cubs.   A standard character registration conceivably encompasses every possible stylization of the letter.  The Cubs also seem to be very cognizant of the importance of trademark rights — as the blog Uni-Watch has noted, they may be the only professional sports team to embroider the ® symbol onto the logo of its on-field jerseys.

So where will this one come out? Who gets the “W”?  It seems the WalletHub application is more than just a letter – its background shape and color gradient form a stylization onto themselves separate from the letter.  This gives WalletHub’s mark features that distinguish it from a standard-character “W.”  When combined with the difference between the identified services, WalletHub has a fighting chance — if it can stomach an opposition.  Otherwise, here’s hoping for an amicable settlement — after all, it’s just two “U”s put together.  What harm can it do?

Let’s suppose you’ve been asked to search and clear the name of a bar, without seeing the design mark in the upper right and lower left hand corners of this photo (from a recent trip to Boston):

When I first saw this design logo, I thought the name was probably W Bar, so you know where my mind went next, right?

Not there, but here, yes, I was thinking Alpha Watch again.

But then, I second-guessed myself and started seeing M Bar, still with Alpha Watch on my mind.

Next, I really started questioning my focus on single letter marks, seeing instead Un Bar, then Hi Bar (without the dot in the i).

What have you seen that I didn’t, as a possible bar name? If you’re familiar with Boylston Street in Boston, you’re disqualified from answering.

Back to your assignment now — the point is, had you merely been asked to search and clear M Bar as a name and mark, it is best to see how it actually will appear to potential consumers.

Curious cursive lettering or script can appear to be or mean different things to different people.

So, while the potential scope of rights in the resulting visual identity of the brand may be quite broad if cleared for use, the significant challenge during clearance and due diligence is to make sure the multitude of possible meanings have been considered as part of the search strategy.

Here is a blast from the past: The D-Word: What Ever You Do, Don’t “Describe” Your Brand!

And, here is something a little more recent that I found on a recent business trip to Las Vegas:

So, let’s file this one in the AlphaWatch file.

There appears to be no tiring of single-letter branding.

Remember the V Bar, also located in Las Vegas?

Here’s yet another example of single-letter branding in Sin City:

Marketing types, thoughts about single letter branding?

Legal types, thoughts about the possible scope of rights?

By the way, does anyone call Gatorade by the letter G, nearly five years later?

 

As many anxiously await the Trademark Trial and Appeal Board’s (TTAB) decision in Blackhorse v. Pro Football, Inc., a trademark cancellation action seeking to revoke six federal service mark registrations containing the R-Word (issued between 1967 and 1990), the pressure is mounting for the NFL team located near our Nation’s Capital to stop postponing the inevitable: A name change.

Change would be good. It is worth noting the team has enjoyed only six winning seasons since the original trademark challenge on disparagement grounds was filed more than twenty years ago, on September 10, 1992, in Harjo v. Pro Football, Inc.

Although he has vowed otherwise, more and more are realizing the time is long overdue for the current owner of the Washington Redskins to engage a naming firm and creative design team to retire the racial slur and craft a new name and visual identity for the football club. In addition to the mountain of evidence before the TTAB demonstrating the offensiveness of the name, earlier this year ten members of Congress introduced legislation and called for a name change, as did the Oneida Indian Nation, and several prominent writers will no longer use the term when reporting about the team.

Most recently, President Obama weighed in on the issue last Friday, indicating if he owned the team, he’d “think about changing the name,” since the name offends “a sizable group of people.”

The Blackhorse decision could be rendered any day, week, or month now, as oral argument at the final hearing was completed on March 7, 2103, more than 8 months ago. Bloomberg recently posted the video of an informative interview with counsel for the Native American petitioners, explaining the details of what is at issue in the case.

What has not gotten any attention — that I’ve seen anyway — is the quiet behind the scenes activity at the USPTO, demonstrating the USPTO’s consistent (and in my view, correct) position that the term REDSKIN (in singular or plural form) is not suitable subject matter for federal registration as it “may disparage Native American persons” in violation of Section 2(a) of the Lanham Act, as illustrated by this excerpt from a 2011 registration refusal of the term in connection with computer software:

“The  attached dictionary evidence shows that “REDSKIN” is a disparaging slang term  for a Native American.  The American Heritage® Dictionary of the English  Language (2009) defines “REDSKIN” as “offensive slang” that is “[u]sed as a  disparaging term for a Native American”; Webster’s  New World College Dictionary (4th ed. 2010) defines “REDSKIN” as  “an American Indian: now considered by many to be an offensive term”  (see attachments from http://education.yahoo.com/reference/dictionary/entry/redskin and http://www.yourdictionary.com/redskin).”

The only exceptions made to this rule understandably have been when the context of the use relates to peanuts, potatoes, or beans — not Native Americans or Native American imagery.

Indeed, every one of the Washington football team’s applications (containing the R-Word) filed since the original challenge in 1992 have been refused on the same disparagement ground, and the team either has elected to voluntarily drop them or have them suspended pending a final outcome in the pending cancellation action.

For example, back in August 1992, about a month before I filed the original Petition to Cancel in the Harjo case, contesting all of the team’s then-existing federal registrations for marks containing the racial slur, the team filed a new application to cover goods as opposed to services, for the first time. It sought registration of WASHINGTON REDSKINS for all kinds of clothing in Int’l Class 25 and “trading cards, posters, magazines and books regarding football, postcards, calendars, wrapping paper, paper gift boxes, paper stickers, paper napkins, paper towels, posterbooks, notepads, paper hats and greeting cards” in Int’l Class 16.

Then, in August 1999, the team filed an application to register the REDSKINS BROADCAST NEWORK logo for “production and broadcast of radio and television sports and human interest programs.” Both of these applications were refused registration under Section 2(a), both had a Letter of Protest granted with nearly 500 pages of evidence showing the offensiveness of the term, yet both were suspended under Harjo and remain suspended pending the outcome in Blackhorse.

Even the NFL’s application to federally-register a vintage Boston Redskins logo suffered the same refusal, but the application remains suspended pending a final outcome in Blackhorse. And, as was the case in the two team applications referenced above, a successful Letter of Protest also was granted back in 2010, as to the Boston Redskins logo, providing over 500 pages of evidence as to the disparaging nature of the R-Word.

So, if the Examining Corps at the USPTO already has made up its mind on the issue, you might ask, why have those refused applications been allowed suspension for years pending a final outcome in the Harjo and Blackhorse cancellation proceedings? After all, the Blackhorse cancellation proceeding will answer the question of whether the evidence shows that the team’s marks containing the R-Word were in violation of Section 2(a) at the times of their registration — between 1967 and 1990.

To the extent the NFL and the Washington Redskins football club believe that “kicking the can down the road” — on the initially refused but pending and suspended applications — was or is a good strategy, the growing support for a name change would seem to indicate otherwise. Even in the unlikely event the TTAB declines to order cancellation of the registrations containing the R-Word, and all appeals are exhausted leaving the same result, such a result would not preclude the USPTO from finding the R-Word inappropriate for federal registration today and tomorrow, and the next day.

And, in the unlikely event the USPTO were to be somehow persuaded by the team or the NFL to eventually publish those marks for opposition, they certainly would be opposed, and those opposition proceedings would not require any historical evidence (e.g., in the 1967 – 1990 time frame), because the issue would be: Do the marks consist of or comprise matter that may disparage Native American persons? Now, not then.

So, where do you come down on this issue?

Do you have any creative naming ideas for the team’s inevitable name change?

For prior coverage of this issue on DuetsBlog, see:

UPDATE: Bob Costas of NBC Sports on R-Word (Sunday Night Football, October 13): “It’s an insult, a slur.” See also: http://www.nbcsports.com/nickname.

ADDITIONAL UPDATE: David Gregory of “Meet the Press” on Monday morning’s Today Show (October 14): On changing the R-Word  team name, “it may be just a matter of time.”