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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®.

The Craft Brewers Conference is an impressive affair. Between the number of brewers I’ve met from across the country as well as internationally, and the colossal trade show, the breadth and scope of the industry is probably most visible from this event.  Set in D.C. this year, it’s surrounded by important historical places and legal landmarks. Like George here.

Throughout the show and its associated events, there are opportunities to sample beers  – including some not made in DC or without distribution in this area but available in other markets.  Without getting too far into the complicated web of laws that govern how alcohol gets from the brewer to the consumer, distribution is challenging and a long term strategic process.  For a trademark to achieve registration though, the applicant must have use in commerce and use in interstate commerce.  So I think George Washington wanted to ask a question on many Brewers minds – are these samples a sufficient use in interstate commerce?

When the brewer has used in commerce – sold or shipped product from its brewery to a purchaser – that can establish the “use in commerce” even if the use is only within the state.  It has to be a product that a consumer can buy, not some token use.  Use in interstate commerce is in addition to that use. It has to have a sale or shipment across state lines – or otherwise federally regulated under the Supreme Court’s expansive interpretation of the Commerce clause. To have a sample at an event like this or at a beer fest, a keg is typically transported across state lines, which can support use in interstate commerce.

So yes it seems that these uses would meet that second standard, but it is important to document that transfer and also document how the consumer encountered the product. Many I saw this week barely had a name of the brewer clearly recognizable, let alone the beer name. They also were being served by convention center staff – an often unavoidable decoupling of a consumer’s experience with the brand.

 

I laughed when I saw yesterday’s Adweek article about Heinz adopting Don Draper’s “Pass the Heinz” pitch from the hit show “Mad Men.”  Given the lackluster creativity observed from the Super Bowl ads, have we actually reached a point where a creative says “hey remember that Mad Men episode? let’s just do that!” and the client agrees?  I hope not, and I have to believe that that isn’t what happened here.

According to the Adweek article, the fictitious Sterling Cooper Draper Pryce is given credit for the work alongside DAVID The Agency – an international agency with offices in Miami, Brazil and Argentina.

Their logo reminds me of someone – how about you?

DAVID

Setting aside the strong possibility that this agency (or at least members of it) created the work featured in the Mad Men episode, this real life fact pattern reads like an Intellectual Property law school exam.  What risks does Heinz have in adopting this work?  Who authored the creative work and who may own the copyright in the creative work?  Is DAVID’s use of the print ads an infringement of that copyright?  Could the creators and writers of Mad Men use the Heinz trademark in this matter without their permission?

The story here is “tantalizingly incomplete,” if I may borrow Draper’s words from the clip.  Assuming this was executed with some forethought, there are likely one or more agreements involved.   The creatives behind the ad campaign featured in Mad Men may have assigned the work to the owners of Mad Men as a “work made for hire.”  Someone from Heinz or DAVID The Agency may have obtained permission from the copyright owners of Mad Men to then use the work.  There might even be a product placement agreement with Heinz that would later allow Heinz to use the Sterling Cooper campaign later in real life, and maybe even give Heinz the right to select the agency that creates the Sterling Cooper campaign.

Taking this outside of the fictitious context, what about the fact that this agency essentially stole the pitch from Sterling Cooper?  Most agencies would rightfully have an issue with another agency using their pitch.  Does this have any negative effect on the industry?

From a brand perspective, what do you think about Heinz adopting this “50-year-old campaign” from Mad Men?   And, for the agency, is there any benefit to them for just tipping in Don Draper’s shot from the 3-point arc?  Of course I wasn’t going to make it through this whole post on the eve of the best sports weekend of the year without throwing in a March Madness reference – especially with my team in both the men’s and women’s brackets this year.  GO MARQUETTE!

 

While on my flight back from speaking on trademarks & the alcohol industry at this year’s CiderCon, I listened to a fascinating TedTalks podcast on advancements in artificial intelligence that you can find here.  Some of the examples of the progress made in robots included the concept of open-ended, non-linear “generative” thinking by advanced AI machines.  As discussed in the podcast, artificial intelligence is now at a level of sophistication where, when given a problem, the robot can create what sounded like an inventive solution for new designs.  This seems to be beyond just more efficiently and expeditiously completing calculations, but actually derived from robots “thinking.” And that got me thinking – who should be the author or the inventor of that new design?

jetsons-rosey-mack

Under U.S. patent law, “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor” as long as the invention is novel and non-obvious.  An “inventor” is defined by the statute as an “individual” with no explicit qualifier that the individual be a human.  The basis for patent law – Article I, Section 8 of the Constitution – also doesn’t specifically require a human inventor.

Assuming that the robot would be the “inventor”, would the new design be assigned automatically to the owner of the robot?  Maybe, as it would be similar to an employer-employee relationship under current law.  But what about any claims by the manufacturer of the robot?  Perhaps this issue of ownership in patentable inventions generated by these robots would need to be handled through user agreements for the robots.  Or should the inventor be the human directing the robot, as a tool, to provide a solution?

Under U.S. copyright law, the copyright in a work vests initially in the “author or authors” of the work.  The robot situation seems similar to “the monkey selfie” copyright infringement action.  There, a federal judge dismissed the case on the basis that the statutory language did not plainly state any rights for non-humans, leaving it up to Congress and the President to decide whether a monkey or another animal had standing to sue for copyright infringement as an owner.

The law is often slow to catch up to technological advancements.  How do you think the law should develop in this area?

 

 

Pisco is a light-colored brandy traditionally produced in portions of Peru and Chile.  One brand that offers this product in the United States is PISCO PORTÓN (the latter word meaning “gate” in Spanish).

duetsblog_piscoporton

Pisco Porton has a number of registrations including PORTÓN, PISCO PORTON, and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO.

The owners of PATRON challenged these registrations, first petitioning to cancel PORTÓN in 2014.  The owners surprisingly didn’t attempt to cancel PISCO PORTON and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO at the same time, but waited until August 2016 to petition to cancel these – despite these being registered before PORTÓN.

Duetsblog_patron

In deciding to cancel the mark, the TTAB went through the typical analysis of the “likelihood of confusion” factors:   the goods “distilled spirits” were identical in both registrations; pisco and tequila are offered in similar retail environments to the same or similar mark; the marks were similar in sight & sound; and the PATRON mark has developed some fame.  The decision here to cancel the PORTÓN mark is not surprising, especially to those of us following trends in this industry.

However, the Board’s decision includes a few points that breweries, wineries, and distilleries ought to consider in their brand management.  First, the Board did not find that PATRON’s claims were barred by laches based on PATRON’s about 2+ year delay following registration before filing the cancellation proceeding.  Companies should be mindful of the potential impact of delay on enforcing a registration against a third party under this theory known as laches.  Second, the Board went into a relatively lengthy discussion on the admissibility of an article  that included quotes from Pisco Porton’s General Manager and Master Distiller made during an interview in London.  He was quoted as saying “sometimes people get PORTÓN confused with PATRON Tequila, which can be a good thing for us” and “[the] names might be similar.”  Since these quotes were from an interview in the UK, the Board found them to be not probative because they did not necessarily reflect sentiments about US consumer confusion.  However, this is an important point for breweries, wineries, and distilleries – as well as any marketer of any good – to consider the implications of public statements, comments made to journalists, or social media posts that may negatively affect their rights in a particular mark.

Now we will have to see how this decision impacts the protection for the remaining PISCO PORTON registrations.   Do you think that the decision will also result in the cancellation of the other PISCO PORTON registrations?

 

The word “Jägermeister” conjures up memories (or maybe lapses in memory) for many.  I have only had the German liqueur in the beautiful blue-collar town of Milwaukee, WI – home of my college alma mater.  While you would never catch me ordering the liqueur, I was fascinated by the cool and well-lit dispensing machine behind the bar that kept the product at a desirable serving temperature.

dispenser

Milwaukee is also home of the Milwaukee Bucks professional basketball team, which plays at the Bradley Center downtown along with my Marquette basketball team.  Both teams are gearing up to move from the Bradley Center to a new home.  In April 2015, the Milwaukee Bucks did a brand refresh and unveiled an updated logo with a more aggressive looking deer on a partial circular background.

Here’s a look at the progression of the Bucks’ logo since their inception in 1968 (a progression which appears to create its own commentary on our society):

IMG_0005

The owners of Jägermeister have opposed registration of the Bucks’ new logo above on the right in connection with entertainment services based on their well-known Deer Head mark, which they have registered in most classes.   They may have a point – well, a similar 12-point buck to be more precise as the dominant portion of the mark.

Mark Image

While the filing of an opposition proceeding does not mean that the Bucks necessarily have to cease using the mark, the lack of registration may conflict with the Bucks’ agreement with the NBA.  As with most professional sports associations, this agreement likely requires registrations for marks, as well and representations and warranties that the mark will not infringe on any rights of others.  The Bucks likely would have to cease using the mark – and the owners of Jägermeister would likely demand it as well.

Surprisingly, Jägermeister did not oppose the Bucks’ application for the same mark with respect to various apparel goods in class 25, despite Jägermeister having registrations for similar if not identical apparel goods.  That application was allowed although the Bucks’ are still seeking extensions of time to confirm use of the mark on all of the listed apparel goods.

A brand refresh (or a rebrand) often involves updating original elements of a brand identity to give it a contemporary look and tone.  Creative types tasked with this important work should still be cautious about treading on the rights of others, even if the dominant elements of the mark have been used for a long time.  You can rely on the long term use of some of these key elements to some extent, but adjustments even to these elements may create a likelihood of confusion despite years of overlapping use of the old identity without such concerns.  Working together with legal types proactively can help prevent situations like this when rebranding.

It’s highly unlikely that the Bucks would have to cease use of a forward-facing buck all together based on Jägermeister’s contentions.  The Bucks here may be able to make some tweaks to get back into their lane and avoid drawing a foul, such as reducing the points on the antlers from 12 back to the previously used 8 and making some changes to the background while still modernizing the look.  Otherwise, we may be watching this battle on and off the court for awhile.

Do you think the Bucks have an issue here?

Overshadowed by that yuuuge, shocking, {insert adjective for your feelings here} win was the legalization of recreational marijuana in three more states – California, Massachusetts and Nevada – in conflict with federal law.  This comes at a time when there have been a number of successive decisions (here, here) affirming refusals of trademark rights for marijuana-related products and services based on federal prohibition of marijuana.

Although I follow the TTAB’s reasoning on affirming these rejections that if federal law prohibits the good or activity, then it cannot grant a federal trademark registration for a mark used on those goods or services, the Trademark Office has previously registered marks known to be used in connection with goods or services that may involve federal crimes.

We allow trademark registrations for marks known to be used for brothels.  See, for instance, BUNNY RANCH and MUSTANG RANCH, registered for among other goods and services “escort services.”

Online gambling was deemed under the Unlawful Internet Gambling Act of 2006, yet the Trademark Office has registered marks involving online gambling services. See, for instance, LUCKY NORTH, CASINO YOUR WAY!, BETDAQ, and others.

We allow registrations for marks, on their face, related to the cannabis industry and many for business services or educational services related to the industry.  Here are some examples of registered marks:

  • CANNSTANDARD for “Chemical preparations for testing the potency of cannabis and of food products made with cannabis”
  • GANJAPRENEUR for “providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp”
  • THE ORIGINAL AMSTERDAM and Design for among other goods and services, “herbs for smoking”

Given the number of states legalizing marijuana, I do not believe that this issue will persist much longer.  But in the interim, what can companies, and the attorneys advising them, consider doing when facing these refusals?

1) File for a obscure description of the goods or services, and be smart about your online presence.  In the TTAB decisions, some cutely used “herbs” in their description, but their web presence or their specimen clearly showed use of the mark involving predominately the sale of marijuana.

2) File an intent-to-use based application and keep it active until the law is changed at the federal level. If you do this, and you avoid any online use that may prevent the mark from being refused as discussed above, you can keep extending your application while preserving your earliest filing date for a period of three years as long as the necessary extensions are filed.

3) If the company is based overseas, obtain a registration in a foreign country and then use 44(E) as the basis for registration in the United States.  That’s how The Original Amsterdam filing, as well as several filings for online gambling services, appears to have circumvented the issue because they do not have to show use of the mark in order to obtain a registration.  Several of these affirmed refusals rely on the specimen of use, which is not a required filing for these marks until 6 years after registration.

 

Today’s offices treat acronyms like linguistic yoga (TOTALLY).

ICYMI, they’re popular also in texts, tweets, and other “thumb-talking” activities.  LOL.  SMH.

Legislators are having fun with them lately too, for example the Personal Rights in Names Can Endure Act (PRINCE Act),  the Uniting and Strengthening America by Providing Appropriate Tools Required to Intercept and Obstruct Terrorism Act (USA PATRIOT Act), the Brewers Excise and Economic Relief Act (BEER Act), the Jumpstarting Our Business Sector Act  (JOBS Act), the Value Our Time Elections Act (VOTE Act), and last but not least the Accountability and Congressional Responsibility On Naming Your Motions Act (ACRONYM Act).  If you find these as amusing as I do, check out more of them in this article.

Acronyms are often abbreviations formed from the first initials of the words of a descriptive phrase.  Nevertheless, acronyms may be registerable unless  (1) “the wording it stands for is merely descriptive of the goods or services” and (2) it “is readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents.”  TMEP 1209.03.  An acronym will be considered “substantially synonymous” if it is an acronym for specific wording, the specific wording is merely descriptive of applicant’s goods or services, and the relevant consumer viewing the mark in connection with those goods or services will recognize it as an acronym of the descriptive wording.  Id.   So two important considerations that affect registerability of an acronym are the listing of the goods or services and the perception of the mark created by product packaging and/or marketing material relative to these goods or services.

A recent TTAB decision illustrates this concern.  The Trademark Trial and Appeal Board recently affirmed a refusal of CARS for “Computer software used for capturing road data and determining safe curve speeds for automobiles; Computer hardware used for capturing telemetry and road data” and “Software as a service featuring software for capturing road data and determining safe curve speeds for automobiles” on the basis that the mark is merely descriptive of the listed goods and services.  The specimen filed with this use-based application showed CARS as being an acronym for “Curve Advisory Reporting System.”  Given the use of the synonymous “automobiles” in this goods and services description, as well as the use on the specimen, the examiner found the mark to be descriptive and the Board agreed.  Perhaps if the application did not include “automobiles” in the description and the example of use provided with the application did not so directly tie the meaning of the acronym to the listed goods and services, this may have been allowed.

With the popularity of acronyms, marketing teams working together with their legal friends can develop a suitable strategy for the application for the mark and the mark’s use that can help guide an acronym towards federal protection.

“Forties at 4” was a time-honored Friday tradition among my engineering classmates in college.  After our last class, several of them would purchase Miller (if we could find it in a 40 oz) or Old English or some other malt liquor that provided the most bang for the buck.  Cracking one open always signaled the beginning of the weekend.

With the growing number of brewery acquisitions, not to mention yesterday’s approved merger of the two largest brewing companies in the world, many breweries may be thinking about the beginning of their weekend – an exit strategy.

An acquisition of a brewery can provide significant marketing, production, and sales resources otherwise unavailable to the brewer.  They can expand a brewery’s brand availability and marketshare.  They can free the founders up to return back to whatever brought them to start that home brewery in the basement without worrying as much about the day-to-day operations.  I often hear from brewers that they love what they do, but “it’s starting to feel like work, and I didn’t anticipate feeling like that.”

2015 saw 19 acquisitions of craft breweries worth $13 billion, and there’s no doubt that number will be even higher in 2016.  When valuing companies for craft brewery acquisitions, besides their balance sheets, there is a clear emphasis on the strength of the brand and making sure the brewery’s intellectual property is in order.  Every brewery has essentially the same equipment, the same assets, and the same costs.  It’s the brand and the quality of the beer that can push it ahead of similarly positioned breweries, attracting an acquirer.

When it comes to most breweries’ intellectual property, there are Four T’s that breweries, or any craft beverage manufacturer for that matter, should be thinking about to best position themselves for a strong valuation in an acquisition when the time is right.

  1. Trademarks are clear – Have you conducted a proper clearance search of your brewery name, your flagship brews, and any specialty brew names?  Before releasing any new beer, search at least the U.S. Trademark Office Records, the internet, and beer resources such as Untappd or BeerAdvocate to see whether the mark is available.
  2.  Trademark registrations for at least your brewery name and your flagship brews.  Have you filed federal trademark applications to protect your brands nationwide, even if your sales territory has been more limited?  Are you enforcing the scope of your trademark rights in your brands to continue to keep your rights broad?
  3.  Trade dress – Maybe it’s a consistent theme in your product packaging.  Or the unique way you serve a flight of beer in your taproom.  Distinctive trade dress can complement a creative set of trademarks, and can be protectable itself.
  4.  And, most importantly, Taste.  “Quality” has been a strong focus of brewer’s guild and Brewer’s Association presentations over the past few years.  Consistently brewing high quality beer is important for your brand.  Are you taking the necessary and appropriate precautions to ensure that your beer recipes remain trade secrets?  Have you made sure in any employment agreement with a brewer that the brewery owns the recipes?  Are you investing in the proper equipment and necessary training for your staff to ensure high quality beer production?

Some breweries decide to forego the expense of properly protecting the brand initially, making it potentially less attractive for an acquirer and without as big a payoff when they may be ready to make this transition.

One of the blessings of homeownership is the surprise that accompanies a major appliance breakdown.  I had the pleasure of experiencing one of these events over Labor Day weekend when my dryer decided it was done working.  Labor Day is one of the weekends you want to have it happen because there are plenty of sales.  I went to one of the local box stores to figure out which dryer worked best for me, and also look at some washers (mine currently is predisposed to ripping holes into fabrics).  As I perused my options (the most critical of which was whether, at my short stature, I could reach anything within the washer or dryer), I came across this Maytag washer:

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Three trays, one for “softener”, one for “detergent”, and one on the right for…”oxi.”  Oxi?  I immediately thought “oh that must be for Oxi Clean” and no, not some white powdery drug.   In either event, how can you not think of this guy (and one of the greatest South Park episodes)?

 

goon meet

But…maybe it’s not for Oxi Clean.  There are a number of trademark registrations involving laundry detergent that include “OXI,” none of which disclaim OXI as being descriptive.   For example:

Even the product labels seem to encourage consumers to assume that the products are infused with Oxi Clean.

cholrox2oximax  wiskoxi oxiclean-large sun-plus-oxi-detergent-is-my-choice-for-low-cost-laundry-soap-21668894

The stylization of the lettering on each looks very similar, lending credence to the concept that there is some infusion with the Oxi Clean product or its formatives.  But compare these with Arm & Hammer:

armandhammeroxy

If the dispenser on the Maytag washer is intended for Oxi Clean detergent and was a permitted, licensed use, it would be highly desirable for the dispenser to show the OXI CLEAN mark in full.  But is it for that, or is it not?  The “detergent” portion of the dispenser says “liquid only”, so can you put Oxi Clean powder in the “oxi” dispenser?  That seems unclear.  There was no clear connection to the Billy Mays brand nor were there any clear instructions on the lid of the washer on how to use “OXI” as there was for “detergent.”

There seems to be some unapparent history here regarding the use of “OXI” but brands should beware of permitting uses of a mark without control  – or allowing it to be truncated on product packaging by not acting against such uses – in ways that may ultimately dilute the brand.

Instagram recently released a new feature called Instagram Stories, which allows users to curate a collection of photos or videos of moments to share with friends for them to view, but then it disappears after a day.  The thing is Snapchat, a competing photo sharing app, already had a feature called Stories, which allows users to curate a collection of photos or videos of moments from the past day to share with friends for them to view.  Mashable has a nice post comparing the two features and identifying some of their differences.

So, can Instagram have Instagram Stories and call it that when Snapchat Stories already exists?

The answer, as it often is in the law, is “it depends.”

On the trademark side, neither Snapchat nor Instagram seems to have filed a trademark application for their respective Stories marks, with or without their house brand.  Notwithstanding that though, Snapchat has been using Stories since at least 2013 and would have prior trademark rights to STORIES over Instagram, which was just released this year.  However, they would only have those rights if STORIES actually functions as a trademark, rather than being a generic term.  A trademark can be generic if it becomes the common word or term used to identify a particular product or service regardless of source.  Examples of this include aspirin or elevator.   Trademark owners risk their trademarks becoming generic by their own improper use of the mark, like by using the mark as a noun rather than an adjective next to a generic term for a product (e.g. KLEENEX® tissues).  They can also become generic by failure to properly police the use of the mark by consumers or the media.

There could also be some issues for Instagram on the patent side.  Snapchat owns at least U.S. Patent No. 9,026,943, which has the following claim:

1. A computer implemented method, comprising:

allowing a user to access a user-controlled social network profile page with posts in a specified order;
permitting a user to traverse an interface element across the posts in the specified order to establish a set position for the interface element;
providing access to posts on a first side of the set position for the interface element to define a viewable profile; and
blocking access to posts on a second side of the set position for the interface element to define a non-viewable profile, wherein blocking access to posts includes blocking access to posts observed by social network members associated with the user, while the user has access to posts on the first side of the set position and the second side of the set position.
If Instagram’s Instagram Stories feature practices each and every element of this claim, it would infringe Snapchat’s patent, assuming of course that the patent is not somehow invalid – a defense that would certainly be brought by any alleged infringer.  It’s also possible that Instagram designed its Instagram Stories feature around claims of Snapchat’s portfolio, which may explain why the order of displaying friends’ posts to a user is different and other differences between the apps.
Instagram is owned by Facebook, which has a history of mimicking features of Snapchat in its applications as this article from 2014 discusses (see this 2016 update as well).  We’ll have to wait and see if this is the final chapter of this ongoing saga between social media app giants.