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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!

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!

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 ;)

And whatever the man called a living creature, that was its name.

Genesis 2:19

Naming things is a fundamentally personal, human act that sometimes – in a profession all about brand names – we take for granted. It’s easy to forget when we are clearing, registering, and protecting names, that at a basic level we are engaging with an essential part of human existence not so far removed from the story of Adam’s naming of living creatures in Genesis. True, Adam may not have had to concern himself with trademarks and intellectual property rights, but we trademark lawyers do.

Lately, I’ve been thinking a lot about this act of naming and names – not brand names, but specifically, baby names. My wife and I are expecting a baby on December 1, and among many of the things to do, naming the baby is perhaps the most important. So while my wife and I work on that, I thought I’d use the opportunity to take a closer look at a case that reminds us of how a personal name can become something else – a brand name – and what happens next.

Ten years ago, while I was in law school taking my first trademark law course, the famous fashion designer Joseph Abboud was learning about trademark law the hard way: in court. The lawsuit (about suits) against Joseph Abboud claimed that his marketing and promotional activities as Joseph Abboud for a new clothing line called “jaz” infringed trademark rights to the name – you guessed it – “Joseph Abboud.” So how did it come to pass that the real person named Joseph Abboud was being sued for using his own name?

Well, it turns out that in his rise to the top of the fashion industry through the 1980s and 1990s, Joseph Abboud registered his personal name and variations as trademarks in connection with his clothing. Then, in 2000, Joseph Abboud sold his company JA Apparel and its trademarks, including the trademarks “Abboud” and “Joseph Abboud,” for approximately $65 million. As part of the transaction, Joseph Abboud transferred all of his rights to the following:

[T]he names, trademarks, trade names, service marks, logos, insignias and designations [of Joseph Aboud]. . . . and [a]ll rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud,” “JOE” or “JA,” or anything similar to or derivative thereof, either alone or in conjunction with other words or symbols . . . for any and all products and services. . . .

In addition, the designer Joseph Abboud further agreed not to compete with the JA Apparel for a period of time.

But wouldn’t you know, the designer Joseph Abboud couldn’t sit idle and, despite his agreement, he began to engage certain third parties in preparation for the launch of a new line called “jaz” and began promoting it as Joseph Abboud, the fashion designer. When JA Apparel found out, it sued to stop Joseph Abboud on the grounds that it had acquired the exclusive rights to use the name Joseph Abboud, not just the trademarks. In other words, while perhaps “jaz” didn’t infringe the trademarks, Joseph Abboud’s use of his own name to promote it did, and furthermore it breached the contract. In a page right out of Mad Men, the attorneys for JA Apparel even published a full-page ad announcing that “The Finest Trademark Attorneys in the World Wear Joseph Abboud®.”

After a bench trial, the district court agreed with these finest trademark attorneys in the world and concluded that the agreement made by Joseph Abboud transferred not just certain trademarks to JA Apparel, but also the right to use his own personal name for commercial purposes, including in the phrases “a new composition by designer Joseph Abboud” or “by the award-winning designer Joseph Abboud.” Nevertheless, although providing “sweeping injunctive relief” was necessary to ensure that JA Apparel received the full benefit of its bargain, the court determined Joseph Abboud could make media appearances as himself or as a fashion expert, but not to promote clothing in competition with JA Apparel.

On appeal, the Court of Appeals for the Second Circuit found the word “name” as used in the agreement ambiguous and vacated the decision of the district court, remanding returning it for a full refund. Additionally, the court of appeals held that if the contract was not breached, then the district court would need to determine whether Joseph Abboud’s use of his own name constituted trademark infringement by examining specific proposed advertisements. For example, one advertisement featured the “jaz” mark prominently with an image of Joseph Abboud and the disclaimer “Designer Joseph Abboud is no Longer Associated or Affiliated with JA Apparel Corp., the owner of the Trademark ‘Joseph Abboud’TM.” Such advertisements presented the “jaz” mark and Joseph Abboud’s name in ways which might not be infringing or could reasonably be fair use.

On remand, the district court examined additional extrinsic evidence and discovered that the word “names” appeared only in the final draft of the agreement and that nothing in the discussions between the parties explained the reason for its inclusion. Instead, the word “names” was part “laundry list of words” under the “more general penumbra of ‘trademarks’” – essentially a substitute for “brand names” not “personal names.”   Reversing its prior conclusion, the court concluded that Joseph Abboud had not sold his personal name. Unfortunately, for Josheph Abboud, the inquiry did not end there.

The problem, the court explained, was that while Joseph Abboud may not have sold all rights to commercially use his personal name to JA Apparel, Joseph Abboud did register his name as a trademark and he did sell that trademark to JA Apparel. And in such circumstances, Joseph Abboud would be permitted to use his name to advertise his affiliation with other businesses, so long as such use was not in an “overly intrusive manner:”

This is a case in which an individual elected to use his name for many years as a trademark, building up substantial goodwill; he then sold the same, but intends to continue to commercially exploit his name by designing clothes in competition with the purchaser of the trademark. This case therefore presents an inherently difficult scenario, because Abboud’s use of his name in the sale of clothing will inevitably lead to consumer confusion.

The court’s solution was to allow the following ad and similar ads, with the addition of a conspicuous disclaimer making clear that Joseph Abboud, the designer, was no longer affiliated with Joseph Abboud, the apparel brand:

The court was even stronger in its approval of the following possible ad, proposed by JA Apparel, noting that the placement, size, and useage of Abboud’s name, together with the disclaimer (unreadable in the image below), arguably would remove the likelihood of any confusion:

The court was not so enthusiastic about the following ad, which it called “utterly confusing” because Joseph Abboud’s personal name would be used in a virtually identical way as the Joseph Abboud trademark, suggesting “jaz” is merely a sub-line of clothing:


The review of the ads above helped the court craft the following permanent injunction against Joseph Abboud, showing just what happens when a name becomes a brand name:

Abboud may not use his name in any manner on “jaz” clothes, labels, hang-tags, or product packaging.

Should Abboud choose to use his name in promotional and advertising materials, he must do so in a way that is not inconsistent with this Court’s fair use analysis.

Abboud’s name must be used descriptively, in the context of a complete sentence or descriptive phrase, and must be no larger or more distinct than the surrounding words in that sentence or phrase.

Abboud is to prominently display his trademark “jaz” (or any other trademark) elsewhere in the advertisement, both to alert consumers that “jaz” is the source—in the trademark sense—of the new clothing line, and to minimize any resulting confusion.

Finally, should Abboud use his name as proposed in [the ads] or anything similar, he must include a disclaimer of any affiliation with JA Apparel and products sold under the Joseph Abboud trademarks. The disclaimer must be displayed in a font that is no smaller than the accompanying text in which Abboud uses his name.

The lesson for all of us is that a personal name, when it becomes a brand name, becomes something that can be bought and sold just like any other trademark. And after that sale, while some personal uses of a name will be fair use, any use of the name as a brand name will likely result in confusion (if the goods are the same or related).  Sometimes the use of a personal name is inevitable, but business owners and celebrities should take care when they decide to use their personal name as the brand name for their business, especially if they are not exactly ready to retire from what made them famous and successful when they sell their business.  Otherwise, they may find themselves with a name that’s become something they can’t use.