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I’ve always been passionate about smartly designed, cleverly branded, and well-crafted products – from cars to craft beer to fashion to gadgets. My ad executive father and artistically gifted mother fostered an appreciation for the creative from a young age, but my aptitude for math and fixing things eventually led me to become an engineer. Through trips to the art museum, car shows, and many afternoons spent at the ad agency, I developed an interest in design and an understanding for the value of a strong brand. I feel incredibly fortunate that my job allows me to be an engineer and a creative, while helping entrepreneurs, inventors, start-ups, and companies of all sizes and in a variety of industries protect their designs and brands. .

Because my passions blend with my work, it’s hard not to think about the law even when I’m outside of the office, which helps me find topics for this blog. You can otherwise find me attempting a project at my house, engaging in a competitive board game with my family, hanging out at a brewery, researching for my fantasy football team (2015 WAFFL champs!), doing yoga, adding to my art collection, or reading a magazine on my iPad®.

On a recent happy hour trip to HopCat, a brewpub chain with an incredible beer list of local and regional craft beers, I expected to find a trademark issue or two among the tap handles.  However, instead, I was distracted by a “catsup” bottle (hah) positioned casually next to a bottle of Heinz mustard.

The familiar green and gold border, the white cap, the white background, the shape of the plastic bottle…it reminded me of this previous DuetsBlog post involving a de-branded ketchup bottle.  Private labeling and contract manufacturing has become an increasingly popular means of overcoming barriers to entry, entering new market segments, or accommodating increased demand,  especially for breweries, wineries, and distilleries.

I doubt I’m alone in quickly jumping to the conclusion the HopCat “catsup” was a private labeled version of this and also wondered why the mustard wasn’t similarly branded (other than the lack of appropriate mustard puns):

But looking at the back of the bottle, I was proven wrong just as quickly:  “Manufactured for Hop Cat by Red Gold, LLC.”   However, Red Gold ketchup bottles appear to be sold generally with a yellow cap and a yellow label.  Hmm.

I suppose the shape of the HopCat bottle is closer to Red Gold’s shape, but everything else suggested to me that Heinz was the source behind the brewpub’s ketchup.

In contract manufacturing or private labeling agreements, it’s important to consider the responsibilities of each entity for packaging decisions.   Is the buyer responsible for providing the artwork for approval by the supplier?  Or is the manufacturer responsible for that with the buyer’s approval?  What are the approval conditions if any?  And depending on that decision, which entity is responsible for any liability associated with intellectual property or regulatory claims?  The representations and warranties in the agreement should also appropriately protect the entities – especially the buyer who is ultimately putting the product out into the market.

I’m counting down the minutes to leaving my office later today to begin my favorite weekend of the year – the first weekend of the NCAA Tournament!  Even though my bubble was bursted on Selection Sunday – my team didn’t make it this year – I am always thrilled by the drama of tourney time and watching unpaid athletes play their hearts out hoping to bask in their one shining moment.  Incidentally, not a single team from Wisconsin made the tournament?  When was the last time that ever happened?  To take that even a step further, when was the last time not a single team from Minnesota, Iowa, or Wisconsin was in the tournament?  That must be a rarity.

There have always been a number of trademark issues surrounding the tournament – whether it’s a team’s name or mascot, the rights of a student-athlete, or using NCAA marks in any advertisement.

I’ll just get this well-worn recommendation out of the way – MARCH MADNESS, unless you’re a paid sponsor of the NCAA, don’t use it.  Not on an ad.  Not on a beer-themed bracket, like this one from last year (and I didn’t find one yet for this year on the site).  Not even as MARKDOWN MADNESS for something as seemingly unrelated to basketball tournaments as automobile dealership services or MUNCH MADNESS for providing information about restaurants; restaurant reviews; and an online tournament allowing people to rank restaurants.  (Psst…the NCAA even owns the mark MUNCH MADNESS, after it was transferred from a NY Times entity).

Unless you’re an official NCAA bracket game, you may even want to avoid using the word BRACKET in advertisements during this time.  Yes, the NCAA recently challenged a filing for DON’T LET ONE TEAM BUST YOUR BRACKET only on the basis of their alleged continuous use of “images of brackets, and marks consisting of or referring to the term BRACKET, in commerce in connection with entertainment services, and related promotional and sponsorship services.”  After two years, the applicant withdrew the application.

Since the NCAA purchased the trademark registrations, and associated rights, to MARCH MADNESS in 2010 (yes, can you believe DuetsBlog has been around longer than that?) purportedly for about $17 million, the NCAA has taken legal action against more than a dozen other marks, like MARCH WAGNESS, and likely many others through demand letters and discussions.

Aside from not using the NCAA’s marks and purchasing rights to protect your marks, there are a couple other important trademark considerations that the NCAA tourney tips off:

Meddle with unitary marks with caution (and preferably not at all). Despite all they hoopla (haha) about MARCH MADNESS, the NCAA filed an application for MARCH TO THE MADNESS, inserting two small but critical words into the well-known MARCH MADNESS mark.  It’s a clever play on the mark, but in some circumstances could ultimately could serve to weaken the strength of MARCH MADNESS.

– Employment contracts can impact trademark rights.  A CBS Sports reporter and online columnist filed an application for THIS IS MARCH. for apparel.  Employment agreements – as well as legal precedence with respect to the employee-employer relationship – often deem any intellectual property related to the employee’s work for the employer as being owned by the employer.  Given the discussion about paying student athletes (and the scandal surrounding payments or favors surreptitiously made to court high school players), could players potentially be “employees” thereby creating questions of ownership of player-related trademarks like Anthony Davis’ UNI-BROW?

Enjoy the games this week – the best week of the year!

 

Well, it is the end of February and the Super Bowl hangover in Minneapolis might finally be over. But that doesn’t mean there isn’t still time to analyze trademarks related to the Big Game. Much ado was made about the Eagles’ “Philly Special” trick play.  When a catch phrase is born, it is often followed by trademark filings by opportunistic individuals or those teams, businesses, or celebrities associated with the mark in the first place.  Typically these filings are for apparel items and other novelty items like we saw with the Minneapolis Miracle.

PHILLY SPECIAL is a little “special” in this case because, while there were filings by the Philadelphia Eagles and individuals (presumably, Eagles fans) from Texas to New Jersey to Florida for the mark for apparel and novelty items, the historic Yuengling brewery also filed for PHILLY SPECIAL for use in connection with beer.  They even seemed to have a marketing strategy forming behind it and, well, Yuengling’s logo also incorporates an eagle.  A natural fit.  If you aren’t familiar with Yuengling, it’s a brewery based in Pottsville, Pennsylvania and the oldest operating brewery in the U.S.  It also has a bit of a cult following throughout the East Coast – you know, where there are Patriots fans still reeling from a Super Bowl loss, Ravens fans, and most importantly that other NFL team in Pittsburgh and its Steeler Nation of fans.

With such a wide range of loyal drinkers, this trademark filing associating such an iconic brand with a team seems like an errant throw.  Yuengling expressly abandoned the application last week citing a desire to “allow the Eagles to have full, unfettered access to all rights and uses of the term ‘Philly Special.’”  While it’s unclear whether the Eagles asked Yuengling to withdraw the application (although I would be willing to bet that they did), the audible was probably the right call.

Plus, given certain factions of the Eagles fan base, who wants to have a Philly Special hurled at them?  That honor should only be reserved for Nick Foles with an actual football.

 

To me, one of the most exciting aspects of intellectual property law is when patent law and trademark law intersect in product or packaging design.  Last week, I had the honor of speaking to a graduate product design class at the University of Minnesota’s School of Design, where I discussed the valuable strategy of having a novel design that can translate into forming trademark rights in a distinctive look and feel of the product that allows consumers to instantly associate the look of the product with a brand.

One of the best Instagram accounts for seeing copycat design is @Diet_Prada, and they recently posted quite a gem.  (H/T to my sister for alerting me to this one.)

On the left-hand side is packaging for cosmetics sold by Pat McGrath Labs, a high-end cosmetic brand from one of the most influential makeup artists in the world.  Pat McGrath’s iconic packaging – putting the $100-ish products in shiny sealed foil pouches filled with sequins – has gained significant attention and notoriety in the fashion world.  There are even blog posts about what to do with the sequins.

On the right-hand side is packaging for some ornaments with $20 mini perfumes by Victoria’s Secret for this season.  Does it look familiar?

 

“They took a pouch, and put some sequins in it, and packaged some beauty products in it.  So what?”  Well, I think think the copying goes even beyond that.  The choice of the color palette.  The positioning of the label on the package.  Accidental?  Perhaps but seems unlikely.

So how can a company protect its thoughtfully designed packaging from being ripped off?  First, try to seek design patent protection or even utility patent protection, if there’s some functional aspect to the packaging and not purely ornamental.   Then craft an appropriate marketing / PR strategy draw consumer attention to the packaging so that you could argue that consumers associate that packaging with your company.   Also, pay attention to your agreements with your packaging suppliers and, if you are asking them to do something unique and to your particular specifications, ensure that there’s language in the agreements to protect you in the event your supplier makes similar packaging for others.

On December 11, I will be presenting a CLE on Brewery and Distillery Law, discussing trademark issues affecting breweries and distilleries.  One of the topics that I’ll spend some time on during that presentation – and one that we’ve covered a lot here – is how the Trademark Office considers beer to be sufficiently related to wine and other spirits when evaluating a pending application for a likelihood of confusion with a registered mark.  The same has, in a few cases, been said about these alcohol products being related to restaurant services or bar services.

In today’s episode involving this issue, Heritage Distilling Company in Washington filed a trademark application in 2016 for a standard character mark BSB for “distilled spirits”.  The Trademark Office refused registration of this mark, however, based on a prior registration by Black Shirt Brewing Company for the following mark for “brewpub services; taproom services; taproom services featuring beer brewed on premises.”

Trademark image

Meanwhile, Heritage Distilling Company filed for the logo below and that went through the office with ease.  Not even an Office Action.  It was filed on April 28, 2017 and registered on October 3, 2017.

Trademark image

Heritage Distilling Company appealed the Examining Attorney’s rejection of its standard character mark for BSB claiming, in part that brewpubs and taprooms are not generally known for distilled spirits.  Although finding the marks to be similar, the Board agreed that the claimed services of the registration were not sufficiently related to support a likelihood of confusion.  “To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and restaurant services.”  In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003).  The Board further noted that “the definitions of taproom and brewpub refer to beer and food, not spirits. ”  Based on the evidence of record, the Board determined that the Examining Attorney had not satisfied the “something more” requirement here and found that the goods and services were not similar or related.  Only because the record failed to show these goods were related, the Board reversed the refusal.

So what if Black Shirt Brewing Company had instead filed for their mark on “bar services”?  It’s possible that the Board may not have reversed the refusal because there would have been a more clear association between a distilled spirits and bar services.

Taking that a step further, what if Black Shirt Brewing Company had filed for the mark on “beer”?  That would have likely made a refusal of BSB in standard characters over BSB on beer more difficult for the Trademark Office to reverse.  The “something more” standard would not apply when comparing goods to goods – beer to distilled spirits – as it does when comparing food products and restaurant services.  The brewery never filed for its house mark for beer, yet a few months after these applications were filed, they filed for some of its beer names for “beer”.   Here’s the specimen from one of those filings in 2014.  Would you have filed for BSB for beer?

https://tsdrsec.uspto.gov/ts/cd/casedoc/sn86372733/SPE20140823081858/1/webcontent?scale=1

What happens when a clothing manufacturer starts selling graphic t-shirts and sweatshirts, perhaps without doing a proper trademark search?  Sometimes a lawsuit.

A trailblazing brewery when it comes to trademark disputes, Long Trail recently sued snowboard manufacturer and fellow Vermonter Burton for using TAKE A HIKE on shirts and sweatshirts.  Here’s an example of one of the offending sweatshirts:

Long Trail owns U.S. Trademark Registration 3,637,458 for TAKE A HIKE! for shirts, short-sleeved shirts, and sweatshirts as shown only here on their website.

Two days after Long Trail sued Burton, the parties apparently settled it with Burton agreeing to cease use of the mark on these products.

So would you be confused by Burton’s use, just looking at the examples above?   Does TAKE A HIKE! even function as a trademark?  Does it indicate the source of goods or services to you, or is it merely ornamental?  Should Burton have turned around and said “No, you take a hike!”?

Burton does not appear to be the only one using the phrase “Take a Hike” on a graphic element on a shirt.  Target, Saks Off 5th, and Macy’s websites all have shirts or sweatshirts currently available for purchase bearing TAKE A HIKE – including one from The North Face.  Then there’s Amazon, where a quick search reveals over 700 search results for “Take a Hike” apparel.  This seemingly pervasive third party use suggests that the mark may not be source identifying.

Federal registrations provide a statutory, but rebuttable, presumption of the owner’s exclusive rights in a mark.  Without their federal registration of TAKE A HIKE! here, Long Trail may have experienced a more grueling climb to establish its rights in the mark before it could convince Burton to turn around.

While breweries sell plenty of cool swag, few go through the process of filing federal trademark applications on apparel, glassware, or even key chains.  There are over 12,000 live applications and registrations for breweries on “beer,” but there are less than 800 live applications and registrations owned by breweries for apparel or glassware.  Even Long Trail did not file for their LONG TRAIL mark on many of their goods until last year.  If you are a brewery, you may want to consider filing on important goods to your business other than beer, especially on your house brand like LONG TRAIL, as part of an overall filing strategy.

Several years ago I wrote a post about Selfridges’ “No Noise” campaign, featuring de-branded items from brands like Heinz, Clinique, and Levi’s.  In that post, I asked whether de-branded design would soon become a new trend.

It looks like we might be there at least in theory with Brandless, a startup retailer that, as today’s Wall Street Journal article stated, “is betting it can get American shoppers to break up with big brands from Colgate to Heinz.”

The premise with Brandless is that everything – soap, pasta, and even a pizza cutter – is $3 and everything is labeled with the generic product name.  As they say on their blog, they also “hacked the BrandTax™, the hidden costs you pay for a national brand often associated with production and retailer margin.”

But isn’t Brandless doing arguably the opposite of its name and establishing its own brand?  You can see their smart attempts to cultivate their own brand by the consistent use of a bordered, white, label-like background with a TM next to it.  In addition to filings for their BRANDLESS mark and even BRANDTAX, they also filed an application last month for the following  “white rectangle with rounded edges” mark.

This label-like mark seems like the Gene Simmons “devil horns” trademark equivalent to the packaged good industry.

In a crowded field of online retailers chasing Amazon dreams, can a brand like Brandless break away from the bunch with de-branded products?  Unlike Target’s Up & Up line of private labeled products, consumers have little to no experience or knowledge of the source of these products to confirm their quality.  Will this be a hard sell?  Maybe not if the price of $3 and the consumer engagement is right.

In Monday’s decision in the newly minted Matal v. Tam case, the Supreme Court affirmed the Federal Circuit decision that the Trademark Office’s refusal to register THE SLANTS mark on disparagement grounds was unconstitutional.  Many were not surprised by this decision, foreshadowed in part by the transcript of the January oral argument where the justices leaned heavily into the government’s position.  If anything surprised me here, it was that the Court unanimously affirmed the Federal Circuit in an IP case.  The Court held that Section 2(a) of the Lanham Act was unconstitutional as being viewpoint discrimination by the government.

Many of the news articles that I read about the decision on Monday suggested this decision would open the floodgates to disparaging or offensive marks.  But they’re already there, as many of the briefs in this matter pointed out.  Some have even been found disparaging by other government agencies.

Take, for example, the RAGING BITCH mark that I discussed two years ago.  The Trademark Office stamped a brilliantly gold seal of approval on a registration certificate for that mark for beer, yet the Michigan liquor commission refused to allow the label because it was deemed disparaging and offensive to women.  The Sixth Circuit found the Michigan authority’s refusal unconstitutional on First Amendment grounds, perhaps a prelude to the Court’s decision here.

The holding in Tam seemingly applies not only to trademark law, but also at least to patents and alcohol labels.  Section 1504.01(e) of the Manual of Patent Examining Procedure (MPEP) says that “design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.”   Section 608 of the MPEP also states that an examiner should object to any papers during the course of the examination of a patent that use language “that could be deemed offensive to any race, religion, sex, ethnic group, or nationality.”  The Tax and Trade Bureau that regulates the alcohol industry from a federal level also includes language that is obscene or indecent from appearing on a label.  See 27 CFR 4.39(a)(3)27 CFR 5.42(a)(3) ; and 27 CFR 7.29(a)(3).  While much has been said about the government’s position in Tam not limiting Tam’s ability to use THE SLANTS, at least this TTB labeling provision in fact does prevent an alcohol manufacturer from using the offensive language.  In the wake of Tam, we are likely to see new challenges to these and other regulations that apply viewpoint discrimination by the government in a manner similar to that of Section 2(a).

Many have exclaimed “how will we stop all these offensive marks?”  This problem doesn’t require a government solution.   Just this April 2017, the Brewers Association recently updated their Marketing and Advertising Code to prevent the use of marks and materials that “contain sexually explicit, lewd or demeaning brand names, language, text, graphics, photos, video or other images that reasonable adult consumers would find inappropriate for consumer products offered to the public” and/or “contain derogatory or demeaning text or images.”  Perhaps other industries – and even the NFL – could take a cue from this self-policing strategy.

 

Today is Flag Day, which commemorates the adoption of the Stars and Stripes as our national flag 240 years ago.  Although maybe more obscure than Fourth of July or Memorial Day since it is not a federal holiday, this has always been one of my favorite American holidays.  There’s just something nostalgic, reverent, and almost pure about a street lined with even small American flags, which is how my neighborhood acknowledges the day.  For me, the flag is symbolic of freedom, of our nation’s values, of our veterans, and of hope for America’s future.

Although the flag itself was adopted over a decade before the Bill of Rights, the protection of free speech allows for irreverent use of the flag by burning it or otherwise desecrating it as a form of expressive speech.  While state and federal authorities have attempted to criminalize flag burning through several statutes, SCOTUS repeatedly struck down in the late 1980s and early 1990s such statutes as an unconstitutional impringement on free speech rights.

However, one of the only remaining codified restrictions on one’s ability to use the flag is the right to register it as a  trademark.  Section 2(b) of the Lanham Act prohibits registration of a mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  This restriction, as you may find through the examples below, seems to be inconsistently applied.  You will see registered marks that incorporate the Stars and Stripes, but other marks that were refused registration.

Compare these marks of recently filed applications.  Which do you think were abandoned after being refused registration under 2(b)?  Which do you think are allowed or registered?  (Answers below).

(A) and (B) were both filed in class 25 on apparel goods.  (C) was filed for pet cremation urns.  (D) was filed by the Shooting Star Flag Company and (E) was filed by the Everytown for Gun Safety Action Fund.  (F) and (G) were obviously filed related to the marijuana industry.

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We are expecting a decision from SCOTUS any day now regarding its review of the Federal Circuit’s holding in THE SLANTS case that Section 2(a) of the Lanham Act is unconstitutional on free speech grounds.  It will be interesting to see whether SCOTUS discusses Section 2(a) relative to Section 2(b) at all in the context of whether the USPTO’s prior practices have amounted to unconstitutional content-based restrictions of speech.

(Answers:  B, C, E, F and G are allowed or registered marks.  Only A and D received 2(b) refusals.  Did you get them all right?)

I spent much of Saturday morning watching Warren Buffett and Charlie Munger at the annual Berkshire Hathaway shareholder meeting.  I have previously made the pilgrimage to Omaha, waiting outside before dawn with a plan for our seats much like these guys. In the last two years, thankfully, they’ve streamed it live.  I love listening to these two talk about business, American values, political influence in current and future business opportunities – all while sipping Cokes and chomping on See’s Candies peanut brittle.  It’s wholesome, often nostalgic, and the banter between the two is remarkably entertaining (at times it’s like the two judges from the Muppets).  Come to think of it, Warren and Charlie really need a podcast.  One of the investing tips that they consistently hammer on is being sure you understand the business.

I think I get paint.

What I don’t get, however, is the use of this logo in the 21st century.  When another patent attorney and former colleague of mine Jason Campbell posted his photo below to Facebook, I audibly gasped.  Cover the Earth…with a can of spilt paint?!?  The juxtaposition with “automotive finishes” doesn’t help as it makes me think of motor oil.

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I’m technically a millennial, although it pains me to say that as I often feel more at ease with the likes of Warren Buffet.  I’ve grown up knowing that lead paint is bad, the environment needs protection, and paint needs to be properly disposed.

All I see when I look at that logo is a giant, bright green Mr. Yuk sticker.

However, the logo is one of the oldest, still active marks on the Trademark Office’s register.  It was first registered in 1906.  When AdWeek asked about its relevancy and openly pondered its need for a redesign back in 2015, Sherwin Williams’ corporate communications director said at the time that it “is not meant to be taken literally, rather it is a representation of the our desire to protect and beautify surfaces that are important to people.”  Does the use on this van really convey that to a consumer?

I have a fondness for nostalgic brands, but the message still needs to remain relevant in its time or it loses its luster.  Attorneys use the term of “goodwill” frequently with marks – maybe a nostalgic brand loses some of that in changing times if it doesn’t adapt?  We have seen much debate on climate change, the EPA, and national parks.  Can’t Sherwin Williams deftly shift this from “Cover the Earth with-all-of-this-toxic-paint-that-we’ve-spilt” to something like “Cover the Earth…With Color” while maintaining rights in the logo?  Don’t we all seek a more vibrant and colorful world?