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I have always considered myself to be a creative person. Full disclosure: I'm not claiming that I've created anything good, merely that I have created things that exist. Over the years I have made skateboarding movies, played bass and guitar in bands, acted in plays, written and performed sketch comedy, and even acted in an independent (i.e. very low-budget) zombie movie. Unfortunately none of these ever blossomed into a career. I guess it was the classic case of being ahead of your time.

Thankfully these hobbies put me on a path to my current career as an intellectual property attorney. In fact, my first legal venture was obtaining copyrights for my band's debut (and only) album. I had considered law school as an option but I hadn't committed by the time I finished my undergraduate studies. To buy time I signed up for a student work visa and moved to London. Thanks to destiny, dumb luck, or both, I found a position in a law firm specializing in trademark law and brand management. It was my first exposure to the practice of law, and I quickly discovered that I had found my future career.

When I'm not in the office, I spend my time playing my guitar, obsessing over baseball (go Twins!), or talking up a band, movie, or television show that has recently impressed me.

Legal departments sometimes get a bad reputation for saying “no” too often. A “no” from legal is particularly hard to stomach when you think the potential legal risk is farfetched. In this dispute, Wal-Mart must have decided that there was no way a competitor could own the basic word BACKYARD for grills and grilling accessories. However, after some discovery and a motion for summary judgment, Wal-Mart was left holding a tab for $34 million in damages, costs, and attorney’s fees. Thankfully for Wal-Mart, the Fourth Circuit just issued a decision vacating the award and the grant of summary judgment.

The plaintiff is Variety Stores, Inc., a regional retail chain in the southeast that sells lawn, garden, and grilling products. The company owns a registration for THE BACKYARD for tail store services and has also used variations of the mark such as BACKYARD and BACKYARD BBQ for grilling products. One of their advertisements is included below.

 

About 20 years after Variety’s first use, Wal-Mart decided to develop an in-house line of grilling products. During the clearance search for potential names like BACKYARD BARBECUE and BACKYARD BBQ, Wal-Mart’s in-house legal group identified Variety’s prior registration and advised the business team that Variety’s registration could pose a problem. Wal-Mart decided to go with BACKYARD GRILL, filed an application to register the mark with the US Patent and Trademark Office, and began selling products, like the ones below.

At the district court, Variety prevailed on for summary judgment. In evaluating the likelihood of confusion factors, the district court concluded :

  • Wal-Mart intended to create confusion because Wal-Mart moved forward with the name despite the legal department’s concerns;
  • Variety’s mark was strong because of large numbers of sales and advertising expense, the court declined to give any weight to Wal-Mart’s evidence of dozens of third-parties using variations of BACKYARD with grilling products;
  • The grilling products were competitive;
  • The two marks – BACKYARD GRILL and BACKYARD (or BACKYARD BBQ) – were nearly identical; and
  • That Wal-Mart’s consumer surveys regarding the absence of confusion were faulty and should be given little weight.

The court concluded that the infringement was willful and awarded $32.5 million in profits and $1.5 million in attorney’s fees.

The Fourth Circuit viewed the evidence differently. Because Wal-Mart did not appeal the district court’s findings with respect to all of the likelihood of confusion factors, the court affirmed the decision with respect to some of the factors. Instead, Wal-Mart appealed the court’s findings on the most important factors: the strength of the plaintiff’s mark (often considered “paramount” by the Fourth Circuit); the similarity of the marks; the defendant’s intent; and the presence or absence of actual confusion.

In reviewing the strength of the mark, the Fourth Circuit concluded that Variety’s BACKYARD marks were “conceptually weak,” but that there was a material dispute as to whether the mark had commercial strength.  The court also concluded that a jury could conclude that the marks were dissimilar in light of the design features and the greater visual emphasis on GRILL. With respect to intent, the court noted that the jury could conclude that Wal-Mart intended to avoid confusion by not pursuing the specific names rejected by the legal department (“Backyard Barbecue” and “Backyard BBQ”) and instead choosing “Backyard Grill.” Finally, the court concluded that the district court improperly rejected Wal-Mart’s survey evidence, noting the district court improperly weighed the evidence at the summary judgment stage. As a result, the court vacated the grant of summary judgment and the monetary awards.

Will Wal-Mart prevail at trial? The Fourth Circuit’s analysis certainly suggests Wal-Mart may have the conceptual weakness of Variety’s BACKYARD marks. It seems like the case is ripe for settlement, but it Variety may have an unreasonably high demand, given the district court previously awarded $34 million. Given that us Minneapolitans are going to hit the 70s today (just weeks from a historic April blizzard), I’m comfortable waiting this one out in my own backyard. Let’s just hope we get an answer before the snow returns.

You may have heard of a little movie called Star Wars. If you haven’t, well, I’ve got some movies for you to borrow. The film was released in 1977, and soon spawned a trilogy of movies that are among the most popular film franchises in the world. Fast forward forty years and eight of the nine triple-trilogy movies have been released, along with spin off movies such as Rogue One and the soon-to-be released Solo. However, the new Solo movie has created a spin-off of its own: a lawsuit filed by a U.K. gamemaker claiming that Lucasfilm’s movie and subsequent advertising infringes on his trademark rights in the mark SABACC.

The complaint was filed by Ren Ventures (“RV”) and its licensee Sabacc Creative Industries and the main issue involved is which party owns rights in the SABACC name and trademark. From the best I can tell, the name Sabacc was coined by George Lucas (the creator of Star Wars) or one of his co-writers at Lucasfilm. The game is mentioned in the original 1977 Star Wars movie and is referenced throughout the Star Wars universe of books and movies. For example, Han Solo “famously” won his spaceship the Millennium Falcon in a Sabacc game. That story likely plays out in the plot of the new Solo movie, which likely explains why Sabacc is prominently featured in advertising related to the movie, like this Denny’s commercial.

But does Lucasfilm’s use of SABACC as a fictional card game in movies and books create enforceable trademark rights? I haven’t seen any current use of SABACC with any specific goods or services, so there doesn’t appear to be any traditional trademark usage (affixed to goods or their packaging). However, Lucasfilms has sought and obtained registration for a number of similar features of the Star Wars universe, as you may recall from this Handy List of Star Wars References that Might Get You Sued. These registered marks include LIGHTSABER, THE FORCE, JEDI, and others. Of course, these marks are used with toys and other merchandise, making Lucasfilm’s claim to trademark rights a bit easier.

In fact, Lucasfilms distributed a licensed Sabacc card game in 1989. An image of the rules are below, but it appears this was a limited distribution.

Given that SABACC is a term coined by Lucasfilm and used only in the Star Wars universe, what type of Jedi mind tricks is RV using to assert its own rights in the SABACC name? Surprisingly, they’re relying on some ancient dark magic – a trademark registration. According to the complaint, RV sought to adopt a trademark for a game that mixed the rules of poker and blackjack. The complaint alleges that RV “searched the public domain for names” for such games, and the search revealed the names Pojack, 727, 727 Poker, Home Card, and Sabaac (ed note: one of these names is not like the other…). It’s unclear what RV meant by searching the “public domain,” as that phrase is normally used for copyright protected works that have lost their protection. Nonetheless, RV filed an application to register the SABACC mark for various computer game software and entertainment services. The application was published for opposition on June 7, 2016 and, after no third-party opposed, a registration issued on Aug. 23, 2016.

Although Lucasfilm actively enforces its rights at the U.S. Patent and Trademark Office, likely with the assistance of numerous watch services, its hard to fault Lucasfilm for not opposing. After all, even with all that Disney money, it might be difficult to justify a watch notice for each every made up element from the Star Wars universe. Regardless, Lucasfilm eventually learned of the registration and filed a Petition for Cancellation on May 1, 2017 with the Trademark Trial and Appeal Board (“TTAB”). Lucasfilm filed a Motion for Summary Judgment and, shortly thereafter, RV filed an infringement action and requested suspension of the cancellation proceeding at the TTAB.

RV has begun use of the SABACC game to promote online games, including at the iTunes store. A screenshot of the store is shown below:

You’ll notice that there are a number of word choices in the description that reference the Star Wars universe. This includes the reference to a “Cantina” (the Mos Eisley Cantina plays a major role in the original Star Wars movie), the word “galaxy” and the phrase “far, far away” (A reference to the films’ opening credits), and a reference to Cloud City, which plays a major role in the Empire Strikes Back. The use of a single one of these might not be concerning, but all of them in combination with Sabacc? Coincidence, I’m sure…

Setting aside Lucasfilm’s potential claims for trademark and copyright infringement, the facts strongly suggest that Luasfilm has a claim of unfair competition against RV. Based on all of these “coincidences,” the facts strongly suggest RV is attempting to capitalize on the goodwill and popularity of Star Wars. RV has essentially created the exact same game from the movies and books, is promoting the game utilizing similar imagery of robots, and utilizing words and phrasing uniquely associated with the Star Wars franchise to promote the game.

RV seems to be placing all of its eggs in the basket of “Lucasfilm didn’t use the mark in commerce and therefore we established valid trademark rights.” Unfortunately, there is at least one allegation in RV’s complaint that they might break a few of those eggs:

when consumers encounter Plaintiff’s pre-existing SABACC brand video playing-card game in the marketplace, they are likely to mistakenly believe that Defendants are the source of, and/or sponsor or endorse, Plaintiff’s SABACC brand video playing-card game, and/or that Defendants, the upcoming Solo Film, and/or Defendants’ Hand of Sabacc Commercial is/are otherwise associated or connected with Plaintiffs, Plaintiff RV’s SABACC Mark, and/or Plaintiff SCI’s pre-existing SABACC brand video playing-card game

The allegation arguably eliminates any need for Lucasfilm to establish use in commerce of the SABACC mark. The allegation suggests that the mere use of playing a Sabacc game in the movie or a in a commercial creates a likelihood of confusion with RV’s video game. If that’s all that it takes to create a likelihood of confusion, it makes it pretty easy for Lucasfilm to agree and simply gather the evidence of Lucasfilm’s use of Sabacc games in its films, moves, books, and related merchandise since 1977, and assert its counterclaim for infringement based on these prior rights.

With an upcoming premiere date of May 15 at the Cannes Film Festival, and a U.S. release date of May 25, there isn’t much time for the parties to work out a settlement. I’m not one with the Force and certainly can’t read minds, but I have a feeling this lawsuit won’t change Lucasfilm’s timeline.

Maybe you’ve heard of Warby Parker. The eye wear company has become quite successful in a previously monolithic industry. But a tongue-in-cheek advertising effort for a new onion ring monacle might just cross the line into provoking a trademark feud. See, Exhibit 1, below:

And, for the main course:

Even if Warby’s doesn’t actually sell the products, the packaging incorporates not only the entirety of the Arby’s trademark, but also the iconic, cowboy hat/maybe-its-a-fishhead logo. Has Warby Parker’s rebellious attitude finally crossed a line?

It turns out, no. No it hasn’t. According to AdWeek, Arby’s and Warby Parker specifically teamed up on this project as part of an elaborate April Fool’s Day joke (and, ICYMI, this is not Warby Parker’s first rodeo, either). So the joint use of the marks is authorized by both parties and not an infringement. As the companies explain in their joint press release:

Arby’s has an eye for meat. Warby Parker has meat for eyes. The result? A new partnership sandwiched somewhere between vision and at least eight different kinds of meat.

If you’re lucky enough to live in New York, New York, there will be two real life Warby’s restaurants, beginning this Friday, March 30th. The participating locations are at 121 Greene Street and 32 E. 23rd Street. I don’t know where those addresses are, but for marketing purposes I hope it isn’t Long Island (no offense, Long Island).

So yes, this isn’t an infringement issue. But this is still a trademark story. At some point attorneys on both sides of the equation received an email because “This sounds awesome, but I think we have to run it by legal first.” Thankfully, the attorneys didn’t get in the way of this project to prevent it from actually happening.

My only complaint is that the companies announced it as an April Fool’s Day joke. You have to at least try to trick people into falling for it. Come on.

Yesterday the U.S. Patent and Trademark Office announced a new pilot program to help fight fraudulent trademark applications. Specifically, the new program addresses situations where the applicant provided the USPTO with a fraudulent specimen to demonstrate use of the trademark.

Only a narrow subset of fraudulent applications would be vulnerable to a claim under this pilot program. One example could include the whiskey specimen shown below.

Based on the name alone, I assume this is some high quality booze. However, it might surprise you to learn that this is not a real bottle of whiskey. I just created it using it in MS Paint (cue mindblown gif).

Most attorneys understand that submitting this as a specimen would constitute fraud on the USPTO. However, not all individuals and companies understand the use requirements for obtaining trademark protection in the U.S. Some may mistakenly believe that registering a trademark is merely a ministerial act, requiring only a picture of how the applicant plans to use a trademark. Others might understand the requirement, but simply don’t care about the legal ramifications of submitting a fraudulent specimen.

It is not unsurprising that many fraudulent specimens come from foreign countries and, in particular, individuals in foreign countries.  A real life example of a possibly fraudulent specimen was submitted for this application, and is shown below.

Based on the lack of information on the label and the positioning of the wording, it appears that the applied-for mark was digitally added to the image. This is an example of the type of fraudthat can be submitted through the new pilot program.

The full details of the pilot program are available here. The basic details include:

  1. Eligibility: the allegedly fraudulent specimen “is potentially not in actual use, but has instead been created for the purpose of submission to the USPTO as a specimen.”
  2. Evidence: Supporting evidence must include either (1) references to prior registrations or applications that show the same “mock up” or digital specimen with different marks (i.e., a company has applied to register five trademarks for whiskey, and submitted five version of the same mock up imagine but with different marks; (2) evidence showing use of the same digital image from a third-party on a website, advertisement, or other publication that shows that the alleged fraudster merely deleted wording and added its own mark.
  3. Reporting procedure: an email must be sent to the USPTO.gov email addressed identified in the Pilot Program instructions. There is not a formal online submission form. The email must include “Duplicative Specimens — [Serial Number]” in the subject line, provide any additional serial numbers in the body, and include the supporting evidence.
  4. Timing: The USPTO will consider evidence sent prior to the opposition deadline, or likely any time if the application has not yet been approved for publication.

 

The program is narrowly tailored, but will certainly be helpful to address some of the most egregious cases of fraud. These types of fraud may also be difficult to uncover before the end of the publication period. Nonetheless, it is encouraging to see the USPTO institute programs like this, as it allows the USPTO to help combat fraud within the applicable statutory constraints.

Last year we took a whiff of Hasbro’s application to register the smell of its Play-Doh® for “toy modeling compounds.” We didn’t think the application was ripe for a functionality refusal, but a refusal on the ground of a lack of acquired distinctiveness seemed like a certainty.

An Office Action issued on May 26th, 2017, refusing the application on the ground of a lack of acquired distinctiveness. The Office Action also included a number of Requests for Information to determine whether a functionality should issue, too.

For the uninitiated, a trademark must be distinctive in order to be protectable. Because a scent mark cannot be inherently distinctive, an applicant must establish “acquired distinctiveness,” also known as “secondary meaning,” to obtain a registration. Essentially, acquired distinctiveness means that the claimed mark may not have been a symbol of the source of the goods, but because of advertising, commercial success, publicity, etc., the public has come to recognize the claimed mark as a identifying a particular source for the goods.

For attorneys looking for a good playbook as to how to establish acquired distinctiveness, look no further than Hasbro’s Response, filed on November 27. The Response includes pretty much every piece of evidence that you could ask for.

It included the classics:

  • Sales numbers, more than a billion since 2004 in the U.S.
  • Advertising numbers, $77 million since 2004 in the U.S.
  • Longstanding use, since the year 1956
  • Unsolicited media attention referencing Play-Doh’s “unique and distinctive smell” and its “legendary scent”

It included new hits, like screenshots of social media of consumers talking about the memory of the smell of Play-Doh as a child. It also included “blogs written by experienced attorneys who opine on the source-identifying function and registrability of the applied-for mark.” Looking at those articles, you might even recognize a familiar blog post. No need for any thanks, Hasbro. But on a completely unrelated note, this R2-D2 Play-Doh set looks pretty great. Just saying.

The Response also included the obligatory declaration from a Hasbro head honcho to support these claims. The declarations always have at least one over-the-top assertion that you just can’t help but include. Here, it was the reference that Play-Doh for some people is “as identifiable as their mother’s faces.” Might be a bit of a stretch, not that I’m saying I wouldn’t have included it though. For me, the gem is the strange but unforgettable fact that since 1956 more than 950 million pounds of Play-Doh had been sold. If only it had included a reference as to how big that Play-Doh boulder would be.

And yes, the Response even included the coveted, but not always available “look for advertising”:

I’m not entirely convinced this qualifies as “look for advertising” though. It doesn’t direct consumers to the claimed trademark like a “look for the purple cap!” might do. Just looking at the advertising doesn’t tell me what type of smell I’m looking for. It’s close enough though, and the rest of the evidence is pretty compelling.

So, do you think the evidence was successful? Could the examiner smell what Hasbro was cooking? If you guessed yes, then congrats. The application published on February 27. Now all that is left is to see whether any of Hasbro’s competitors file an opposition to the application.

It’s certainly possible that a competitor might feel that providing Hasbro with ownership of the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough” might put them at a non-reputational, competitive disadvantage. In theory, it doesn’t seem like granting Hasbro the registration will be problematic, but in practice it will depend upon how broadly Hasbro interprets its rights.

But that may be parting the cart before the horse. Let’s wait and see how the next 35 days go before we start talking enforcement.

Words and pictures are so 2017. This year, it is all about the non-traditional trademarks (i.e., something other than brand names and images). In the past, we’ve covered a variety of these types of trademarks, from colors to product shapes, to sounds and even the touch of a product. Even looking only at college football, there are registered marks for the color of a field, player uniforms, and fan chants.

And 2018 has already given us a new category: hand gestures. Music and fashion mogul Shawn Carter (also known as Jay-Z) recently applied to register the hand gesture below for entertainment services.

According to one origin story, the image of a diamond was meant as a reference to the slang term “rock” for diamonds. Jay-Z’s record label is Roc-A-Fella Records, and using the hand symbol has come to be known as “throwing up the roc.”

Whether due to Jay-Z’s popularity or due to the calorie burning benefits of raising your arms briefly, the symbol has become a bit ubiquitous in popular culture. Everyone from Aaron Rodriguez, Fran Drescher, to Warren Buffet and others are documented roc-throwers. But nobody can do it quite like Hov himself:

Also worth adding to the list is professional wrestler Diamond Dallas Page. He’s been throwing the roc since the ’90s:

Although his gesture is just a little bit different, with his fingers extended. Also, he refers to his symbol as the diamond cutter. He also has already registered a version of the gesture (shown below) as a trademark for various clothing items.

And, come to think of it, he sued Jay-Z over the symbol years ago. Although there isn’t much information available, it appears the case settled out of court with Jay-Z making a payment of an undisclosed amount (to keep it fair and balanced, there is a wrestling source and a hip hop source).

As of yet, no word on whether Diamond Dallas Page will take action against Jay-Z’s trademark application. Perhaps the settlement between the parties prevents him from doing so. But if so, then why did Jay-Z wait for nearly a decade to file his own trademark application? And although the Diamond Cutter was registered as a trademark, should either celebrity own enforceable rights in a hand gesture? Does it really signify source? Or does it remind us of something in a non-trademark manner, like trash compactors remind me of Star Wars or triangles remind me of the White Stripes?

And I would be remiss to not mention the elephant in the room: the conspiracy theory that Jay-Z along with many other musicians, politicians, and others are part of a secret society of the illuminati, freemasons, or (more recently) Taco Bell. Fingers crossed the Trademark Office utilizes her power to issue a Request for Information to demand that Jay-Z answer once and for all whether he is, in fact, a member of the Illuminati.

Trademark disputes involving breweries are nothing new, with breweries battling each other, wineries, and even cities over trademarks. We can now add estates of dead celebrities to the mix, as the Estate of Elvis Presley continues its battle against UK-based BrewDog over its ELVIS JUICE I.P.A.

The Elvis Estate first attempted to resolve the dispute through a cease and desist letter. In response, BrewDog’s owners, James Watt and Martin Dickie, changed their first names to “Elvis.”

And before you ask, yes, the above picture is just a marketing version of the official name change document. Although the battle has been waged for decades with the U.K. Employment Agency, “Beer Pirate” is not yet an officially recognized title. For the potential Elvis fans with the proclivity toward belief in aliens and other conspiracies, the official documents are also available here.

When BrewDog failed to heed the Estate’s demand of “Don’t,” the Estate brought an action against BrewDog at the U.K. Intellectual Property Office. Apparently the UKIPO was unmoved by the Elvis Brothers’ claims and, in July of 2017, the Estate prevailed.  But before Elvis could leave the building, BrewDog appealed. Apparently the appellate body had a few more suspicious minds. Just last week, the appellate body reversed the prior decision, concluding:

On balance I do not think that the hearing officer was entitled to take judicial notice that beer consumers who see the word Elvis will always think of Elvis Presley. The two marks are too different for there to be direct confusion. Even with imperfect recollection the average consumer will not mistake Brewdog Elvis Juice for Elvis. Put simply, the common element of Elvis is not enough on its own to make consumers think there is a link between the mark Elvis and Brewdog Elvis Juice.

As the quote suggests, the UKIPO’s decision was based specifically on a trademark that includes the brewery’s house brand BREWDOG. This may mean some extra steps for the brewery to ensure that BREWDOG always appears in close proximity to the ELVIS JUICE trademark, but the steps may be worth it to protect BrewDog’s growing investment in the name. BrewDog recently expanded operations, opening a satellite brewery in the United States near Columbus, Ohio. On top of that, BrewDog even won a bronze medal in its first appearance at the Great American Beer Festival last year.

Although the Elvis Estate may be licking its wounds somewhere in the heartbreak hotel, the war isn’t over yet. As you might expect, the UKIPO’s office has no authority here in the U.S. In fact, BrewDog has a pending application for the mark BREWDOG ELVIS JUICE that was approved for registration by the U.S. Trademark Office. On December 27, the company that manages the intellectual property on behalf of the Elvis Estate filed a Request for Extension of Time to Oppose the application. Will the recent loss temper the Estate’s position? Or is it now or never for the Elvis Estate to make a stand? We might have a better idea after April 25, when the Estate’s first extension request runs out.

As of the date of publication, there is no word on whether Elvis Costello also objects to BrewDog’s beer.

Nearly four years ago, Friend of the Blog Derek Allen and I published an article on our Top 10 Fictional Lawyers of all time. Part 1 and Part 2 are etched in the tomes of Duets Blog for your perusal and criticism. It was difficult to decide on the top ten, but we felt like we covered our bases pretty well with a long list of “honorable mentions.” Yet I recently realized there was a glaring omission from our list, Mr. Oliver Babish from the television series The West Wing, played by the actor Oliver Platt. I knew it was necessary to amend the list as soon as possible (i.e., the next time I was scheduled to post) to correct this injustice, and pass along some nuggets of legal advice that Mr. Babish provided to us all.

With this year’s increased attention to political issues of all kinds, I continued to find myself remembering scenes from the show. When my wife mentioned she had recently finished a new series, and I realized she had not seen The West Wing, the choice was obvious. So now we are knee deep in Season 3, when Mr. Babish arrives. I’ll try to avoid any significant spoilers, but Mr. Babish’s arrival coincides with a major scandal involving all of the main characters of the show, from the President and the First Lady too the assistants, deputies, and advisors. Mr. Babish interviews each of them, one by one, to assist in determining whether any law has been broken, fighting most of them along the way. While each character is initially frustrated and annoyed with Mr. Babish’s questions, he quickly makes clear why his questions are so important. While the substance of the inquiries likely has no direct impact on our lives, I’d like to provide three pearls of wisdom that both lawyers and non-lawyers would do well to remember.

First, gather all the facts before you form an opinion. After speaking with the President for (presumably) a half hour or more, he leaves for another meeting. The Chief of Staff asks, “Well, what do you think?” Babish’s answer? “I am nowhere close to being able to answer that.” Don’t give your clients, fellow attorneys, or others advice based on incomplete advice. When it can’t be avoided, stick to the law school standby “it depends.”

The second pearl involves the White House Press Secretary, C.J. Cregg. In the midst of asking substantive questions, the following exchange occurs:

Oliver Babish:  Do you know what time it is?
C.J. Cregg:  It’s five past noon.
Oliver Babish:  I’d like you to get out of the habit of doing that.
C.J. Cregg:  Doing what?
Oliver Babish:  Answering more than was asked.
Oliver Babish:  Do you know what time it is?
C.J. Cregg: Yes.

 

The point is that C.J. will likely be subpoenaed to testify and be deposed. While limiting the answers is part of the goal, this advice has the added benefit of conditioning a person to focus on the question and think through the answer before speaking. This is great advice not just for those being deposed, but all of us when we’re engaged in important conversations, legal or otherwise.

Finally, the third pearl is that words matter apart from their substance. While questioning the First Lady, Babish is focused on the First Lady’s signing a form on behalf of her then 17 year old daughter (Warning: Possible Spoilers ahead). The First Lady states she doesn’t remember if she read it or not, she just signed it. It was one of hundreds or thousands of forms signed for her multiple children over many years. The reason this matters, is because the President (Spoiler Alert) was diagnosed with MS during the campaign, but never disclosed it. If the First Lady signed the form, then she may have falsely stated that there was no family history of medical problems.  When she claims she didn’t read it, Babish asks her whether when she was a practicing doctor whether she had a habit of signing medical forms without reading them. When the First Lady explains that the illness is not genetic and therefore it doesn’t matter for the form’s purpose of determining whether her daughter might have the illness, Babish asks why she’s changing her story? Did she sign it because she didn’t read it, or did she sign it because it didn’t matter?  It’s important for lawyers, our clients, and most people generally to remember Babish’s point: the way you say something is just as important as the substance of what you’re saying.

These are just some of the helpful nuggets for lawyers and others found in Mr. Platt’s Oliver Babish character. The guest performance netted him a nomination for an Emmy for best guest performance in a drama. Where would a place him in the Top 10 Fictional Lawyers of All Time? I’d probably have to do some reshuffling, so let’s peg him at #11 for now and perhaps we’ll revisit on the fifth year anniversary.

Attorneys in general, and trademark attorneys in particular, have a reputation for heavy handedness. The traditional weapon of choice for these legal pugilist has been, and continues to be, ye olde cease and desist letter. A long, unnecessarily wordy letter sprinkled with “without authorization”‘s and “reserves all rights and remedies”‘s and other thinly veiled and not-so-thinly veiled threats of legal action. There are times when the traditional cease and desist letter is acceptable – Nay! – all but necessitated! But attorneys with an eye on their client’s business goals understand that there is no such thing as a one-size-fits-all enforcement communication. Indeed, the trademark tomes are jammed to the brim with tales of trademark owners whose actions have earned them the alleged label of a “trademark bully.”

But Bud Light’s recent dispute with a local Minneapolis brewery was just the opposite. Instead of creating a public relations nightmare, fanning the flames of “Big Beer” versus “Craft Beer,” Bud Light turned a trademark dispute into an advertising boon! The issue involved Bud Light’s newly adopted advertising tagline DILLY DILLY, which appeared in a Bud Light commercial earlier this year. Modist brewery chose to name its new Mosaic Double IPA “DILLY DILLY.” At the moment, the beer is still posted on the Modist Brewing website. The companies reached a friendly agreement and Bud Light even offered Modist two free tickets to the Super Bowl (which, coincidentally, will be in Minneapolis). And then, like a foam cherry on top, Bud Light hired an actor to visit the Modist taproom and “deliver” a cease and desist message from a scroll in medieval tongue. Modist plans to exhaust its current supply and then, if the beer is brewed again, use a different name. Even if the beer comes back as a new name, Modist will still have Ye Olde Scroll, which Modist has hung in its taproom.

In this instance, everyone seems to win. Bud Light received favorable press coverage throughout the country on the issue and put all other breweries on notice of its claimed rights in DILLY DILLY tagline. Modist received some great free publicity, two months ahead of the biggest sports party in the United States. I have to assume there will be more than just a handful of beer drinkers coming for Super Bowl festivities, wanting to go to the Dilly Dilly brewery and get a picture with Ye Olde Scroll.

Scrolls won’t be the next big thing in trademark enforcement. However, this is another example of how creative legal approaches can not only resolve a problem more efficiently, but end up creating other benefits for your business or clients. And with the number of breweries and beers expanding at an exponential rate the last few years, the industry will need to continue to find creative solutions to these problems. It’s great to see even the big players in the industry recognize this need.

The City of Portland is known as a hub for craft beer, and its local government couldn’t be prouder. The Travel Portland website proudly proclaims that Portland is “home to more breweries than any other city on earth.” Yet the city’s relationship with the local craft beer scene is not so bubbly at the moment, as trademark dispute between the city and local Old Town Brewing has gone public.

The dispute revolves around Old Town Brewing’s logo and a large lighted sign owned by the city, both shown below.

 

This isn’t the first time the city hasn’t gotten into a dispute with a brewery over the sign. The city previously objected to Pabst’s use of a logo derived from the sign back in 2015.  Our 2015 article contains a good back story as to the city’s purchase of the sign as well as the city’s claimed trademark rights in the sign (and for our regular readers, the investigation into Portland’s unicorn burial ground is ongoing). However, for our purposes, a TLDR history will suffice. The sign is known as the “White Stag” sign and was built in 1940. The text has changed numerous times along with the ownership. The City of Portland purchased the sign in 2010 and has since begun licensing reproductions of the sign to third-parties.

Most recently, Portland sought to license production of the sign to AB InBev, the parent company to Budweiser and a whole host of other big and small names in the alcohol business. Jeff Alworth at the Beervana Blog has a great write up regarding the dispute that is worth a read. As you might expect, the small, local craft brewery is not pleased with Portland’s attempt to permit a direct competitor to use a similar logo. The fact that the competitor is Budweiser certainly can’t help.

Luckily for Old Town, they recognized the benefits of obtaining a registration for their design logo at the U.S. Trademark Office. Even better, the registration is now more than 5 years old and can no longer be challenged on a number of grounds, like confusion with a senior user’s mark.

The City of Portland also recognized the importance of registrations and applied to register the image of the sign for a wide variety of goods and services, including alcoholic products. The Trademark Office has refused registration based on a likelihood of confusion with Old Town’s prior registration.

The situation is a twist on the more common David versus Goliath of Big Beer versus Craft Beer, and not simply because the City of Portland is involved. In fact, the city is claiming that David, aka, Old Town Brewing, is the bad guy. The City is arguing that “it is Old Town Brewing that is trying to prevent the City from using its own logo.”

The city isn’t entirely off base. It’s true that the City isn’t telling Old Town to stop using the logo. But the City’s argument makes a lot of assumptions that may not hold water (or other beverages, for that matter).

The city seems to assume that because the City bought the sign, they own the right to use the component images of that sign for any and all purposes. That’s wrong. For a lot of reasons. Owning a sign doesn’t create trademark rights, use does. And if Old Town began using a portion of that sign as a trademark before any other third-party, then Old Town is the senior user. Also, even if the City owns some trademark rights, the law is clear that a trademark does not provide a right in gross. Trademark rights are defined by the goods or services sold under the mark, with protection against goods and services that are sufficiently related to owner’s goods or services.

Also, the City’s white hat isn’t so white. I’m not even sure it’s a hat. Old Town isn’t the bad guy here. The brewery isn’t telling the City not to use the logo derived from the sign design.  I’m not a politician or a mayor, but I can’t think of any reason why a city needs to be able to use its logo to sell beer. If Minneapolis were doing this, I’d kindly ask that they fix the potholes or finish construction on the bridges over 35W first.

At the moment, it seems that public opinion seems to be in Old Town’s favor, at least based on the limited (and biased) sampling of Old Town’s Facebook Page.  From the legal standpoint, it seems that Old Town has an upper hand, but from all public statements it seems that Portland is committed to moving forward with its own applications and a license. But is a deal with Budweiser important enough to risk the bad press and the alienation of the craft beer industry? The City has until March 15 to appeal the Trademark Office’s last Office Action. By then, we’ll at least know whether Portland wants to continue the fight. In the meantime, I’ll be looking to see how far Old Town distributes its products. Their SHANGHAI’D IPA sounds delicious, not to mention, it has an excellent name.