DJ Khaled and his son’s company sued an online retailer named Curtis Bordenave and his company, Business Moves Consulting, Inc., alleging that they are illegally using his and his son Asahd’s intellectual property.

Most of you likely know who DJ Khaled is, but I had not heard of him before reading about this dispute.  When I asked my friend about him on Friday night , she said “I know he is famous but I can’t tell you why.”  In looking at the Complaint, I found that “Khaled has enjoyed tremendous success in the United States and beyond as an entertainer, record producer, radio personality, radio label executive, and media celebrity.”  Wow. It appears I have been missing out.

DJ Khaled himself owns the KHALED mark in connection with musical sound recordings musical video records, disc jockey services, and other entertainment services.

DJ Khaled’s son, Asahd Tuck Khaled, is frequently featured on Instagram. The complaint asserts that Asahd has become a social media phenomenon.  He has lots of followers on Instagram (a social media I need to start using more—I have an account that I only use right now to communicate with my niece and nephew).

In addition, DJ Khaled is challenging Bordenave’s filing an application for “We The Best Lifestyle,” which infringes on his trademark WE THE BEST®.  DJ Khaled has registered the WE THE BEST® trademark in connection with, among other goods and services, musical recordings, entertainment services, online retail clothing store services, recordings and e-cigarette liquid.

Khaled frequently uses the saying “We the Best.”  Forbes even wrote an article entitled “How many Times can DJ Khaled say ‘We the Best’ in 40 seconds?” in November 2014.

Khaled worked the circuit using his catch phrase “We the Best” on shows such as The Ellen Show, Jimmy Kimmel Live, Live with Kelly and Ryan, The Chew, Rachel Ray, The Daily Show, The Late Show with Stephen Colbert, Late Night With Seth Meyers, and Good Morning America.  Khaled formed ATK Entertainment, Inc. to protect his infant son’s interests.

The complaint alleged that “Plaintiffs bring this action to halt the brazen attempt by trademark pirates…to usurp and trade on the names and trademarks of world-famous entertainer Rahled M. Khaled, known popularly as “DJ Khaled, and his 18-month old son, Asahd Tuck Khaled.”  It further describes Bordenave’s actions as “parasitic  conduct and bad-faith act.”  Specifically,  DJ Khaled and his son’s company brought various claims of violation of both Khaled and his son’s trademark rights and right of publicity under New York state law.  Not all states have such laws. Minnesota does not. See a former Duets post on the subject, here.

Specifically, DJ Khaled and his son’s company have brought claims under the New York Right of Privacy Act (N.Y. Civ. Rights Law §§ 50-51), trademark infringement and unfair competition under the Lanham Act and common law, state law claims under the New York Deceptive and Unfair Trade Practices Act (N.Y. Gen. Bus. Law § 349), and commercial defamation.  Finally, they brought a declaratory judgment action seeking a declaration that they are not violating any rights of Bordenave or his company.

Khaled alleges damage because Bordenave attempted to interfere with a deal that Khaled had made with Nike to use his son’s name in conjunction with Michael Jordan to sell clothes.

This is not Bordenave’s first rodeo. The complaint states that he is a “serial trademark infringer.” Bordenave and his company have previously applied to register:

  • CARDI-B—which is the name of a well-known rapper
  • STORMI COUTURE—which it applied to register within a month of the birth of Kylie Jenner’s daughter Stormi Webster.

The complaint also alleges Bordenave improperly filed six other trademark applications based on other famous people, television stations or radio stations.

This appears to be a new trend with the rich and famous: promoting your kids names to sell products. Other famous parents have sought trademarks in connection with their children’s names. For example, Beyoncé and Jay Z applied for the mark BLUE IVY CARTER® in connection with numerous goods and services, including but not limited to, entertainment services, fragrances, cosmetics, skin care products, metal key chains and metal key rings, DVDs, CDs, and audio and visual sound recordings featuring musical performances, handheld and mobile digital electronic devices, baby teething rings, baby strollers and book, bags, and hair accessories. Beyoncé’s company is currently battling an Opposition filed by a company named Blue Ivy that is an entertainment and event planning firm focused on weddings and other elegant events.

We will have to see if DJ Khaled can stop Bordenave from capitalizing on his young son’s fame.

Hat tip to Sri for capturing this image of a passing by backpack, illustrating how much a little spacing can end up making all the difference in the world, when it comes to brand identity:

To the extent, IV IKE, I VIKE, or even IVIKE might be a legitimate backpack brand, when the letter “I” is tilted and compressed together with VIKE, it’s difficult not to see what seems likely to be the intended meaning and infringing impression: NIKE.

Compression undoubtedly works to the advantage of the provider of the IV IKE, I VIKE, or IVIKE branded backpack, and to the disadvantage of consumers by deceiving them not only as to source, but likely fraud as to the federal registration status too.

Probably no surprise, but my brief search revealed no such federal registrations and the website leads to a collection of apparent Chinese characters, anyone able to translate?

Elisha is the two time Super Bowl MVP New York Giants quarterback Eli Manning.

Eli Manning

Collecting equipment used, or uniforms worn, during an NFL game is big business. Young and old alike want these items to feel close to their favorite team or player.

throw football 1celebrate football 2

In a 99 page Amended Complaint, plaintiffs (including,  sports memorabilia collectors/marketers and resellers) sued the New York Giants and employees, alleging that Eli and the team provided fake memorabilia to a dealer. They allege that fake helmets, jerseys and other sports memorabilia were given to dealers.

The lawsuit arose after a criminal investigation into the sports memorabilia business that resulted in Plaintiffs’ being indicted. Ultimately, the indictments were dismissed. Plaintiffs allege that the New York Giants lied during the criminal investigation and were involved in a cover up. Specifically, Plaintiffs alleged the Giants’ General Counsel concealed and encouraged misconduct. This resulted in Plaintiff Inselberg being indicted.

Specifically, the Amended Complaint has 18 counts including: civil RICO, malicious prosecution, tortious interference with prospective economic advantage, trade libel, intentional infliction of emotional distress, consumer fraud, common law fraud, quasi contract unjust enrichment, quantum meruit, unfair competition – misappropriation and reverse palming off; breach of contract, tortious interference with contractual relations, civil conspiracy, aiding and abetting, negligent supervision, negligent retention, negligent misrepresentation, and respondeat superior.

Last week, Plaintiffs attorney told a New Jersey court that a 2010 e-mail exchange between Eli Manning and the team’s equipment director Joe Skiba proves that Eli Manning knowingly provided fake helmets to a sports retailer. Specifically, Plaintiffs’ attorney claims that Eli Manning told Mr.  Skiba that he was looking for “2 helmets that can pass as game used. That is it.” They assert that Eli Manning was under contract to provide game-worn memorabilia to retailer Steiner Sports, LLC. Further, Plaintiffs’ attorney asserted that the Giants or their employees “appear to have deleted” Manning’s e-mail.

The New York Giants’ attorney stated that “the e-mail, taken out of context, was shared with the media by an unscrupulous memorabilia dealer and his counsel who for years has been seeking leverage to a big payday. The e-mail predates any litigation, and there was no legal obligation to store it on the Giant’s server.”

Were the helmets and jerseys fake? Was there a cover up and conspiracy by the New York Giants? Or, are the Plaintiffs merely seeking a big payday and/or to divert attention from the dismissed indictment?

We will have to wait to see how this “plays” out in the courts.

-Wes Anderson, Attorney

Last year, I blogged about the decades-long dispute for the HAVANA CLUB trademark in the United States. Nearly ten months later, well, its spirit lives on.

To briefly recap: in one corner, Empresa Cubana Exportadora, an arm of the Cuban government, owns a registration for the HAVANA CLUB trademark. In the other corner, Bacardi claims rights to the HAVANA CLUB trademark in the U.S. based on an acquisition from the “founding family” of HAVANA CLUB rum – who were exiled from Cuba in the 1960s. Bacardi has its own application for HAVANA CLUB for “rum and rum specialty drinks.” Examination of that application has been suspended since its filing in 1994 – while the parties duke out a cancellation action against the Cuban registration also dating back to Bill Clinton’s first term. That cancellation is itself suspended pending a civil action in federal court for the District of Columbia.

Cuba_US_Rum_Wars

Last year, it seemed the U.S. government put its thumb on the scale to end the dispute, by allowing the Trademark Office to renew the Cuban government’s registration. But, as is the recurring theme of the last few months: what the government giveth, the government can taketh away.

Lawmakers (on both sides of the aisle) from Florida are asking the Trump administration to revoke the license granted by the Office of Foreign Assets Control. This would effectively eliminate the Cuban government’s ability to maintain the HAVANA CLUB trademark in the United States. The lawmakers cite the Trump administration’s “Cuba policy review” for justification – essentially reinstating a particular sanction against Cuba lifted by the Obama administration.

In short? The chaos continues, though Bacardi notes “nothing has yet moved in court.” It seems a dispute that began when I was all of eight years old will still be on the TTAB’s docket well into my thirties.

-Wes Anderson, Attorney

The Chicago Cubs are rolling into the playoffs, putting the finishing touches on a historically dominant regular season with over 100 wins. Cubs fans (like me) even dare to dream that the century-plus long championship drought may finally come to an end this fall, if the team can carry its impressive form into the postseason.

Also coming to an end, if the Cubs have their way: the unauthorized T-shirt and merchandise sales outside Wrigley Field. The Cubs’ home ballpark is planted right in a bustling residential area, surrounded by bars and rooftop venues. The various street vendors lining the streets are a fixture of the gameday experience at Wrigley, if only because of their seemingly insurmountable numbers.

ct-cubs-mlb-trademark-suit-0924-biz-20160923-002

It seems fall is an important time for both the team and the Cubs’ trademark lawyers. the Cubs and Major League Baseball Properties, Inc. (the IP ownership arm of MLB) brought suit last week against a laundry list of parties alleged to be “deliberately free riding on the success of the Cubs and trading – without a license or permission – on the substantial goodwill associated with the Cubs’ trademark and trade dress. The Cubs allege rights not just in their various logos (and the letter W, as previously discussed here), but also in “the combination of their iconic blue-and-red color scheme and other indicia.”

The Cubs then allege various street vendors utilize the Cubs’ trademarks and associated trade dress on T-shirts sold “around and near Wrigley Field in Chicago, Illinois, and on the Internet.”  The (now-amended) Complaint can be found in full here. The Cubs’ complaint also seeks a non-specific court order “allowing them to work with law enforcement to seize counterfeit or trademark-infringing merchandise spotted for sale outside the ballpark,” according to the Chicago Tribune.

Taking a look at the shirts captured in the complaint, there are certainly examples where the Cubs have a legitimate grievance, and others that tend to strain credulity:

Screen Shot 2016-09-28 at 6.08.13 AM

An infringement case may well be open and shut as to those shirts with the “C” or “Cubbie Bear” logo, or even the “W” letter from the Cubs’ “win” flag. But those who have been to Wrigley Field might agree there are countless examples where vendors do not use any Cubs intellectual property, and allude to the team more creatively. The “WE ARE WORLD SERIOUS” shirt above would be a prime example of this – were it not for the “W” flags flanking either side of the shirt’s logo. Still, it’s hard to wonder what precisely the Cubs see as infringing in the “CENTRAL DIVISION 2016 CHAMPIONS CHICAGO” shirt in the bottom row. If anything, it might be a tailor-made case of nominative fair use.

The Cubs’ request to actively enforce its trademarks in the Wrigley Field area is certainly a novel one, and appears to be timed to seize upon the influx of interest (and cash) that surrounds playoff baseball. T-shirt vendors might find the “Friendly Confines” to be a bit less friendly in October, unless they have the means to defend a federal trademark infringement suit.

-Wes Anderson, Attorney

Readers: find any good deals on Prime Day? For my part, I abstained. I’ve had a “Gold Box” deal sitting in the box for about 6 months now — turns out, I really didn’t need a pressure cooker.

If you did seize upon Prime Day, here’s hoping you got exactly what you ordered, and not a knockoff or counterfeit product. Amazon is generally very reliable, yet as it grows to unspeakably immense proportions, sales listings have become increasingly difficult for brand owners to police, and Amazon may not be much help either.

According to a CNBC report, counterfeiting on Amazon.com “has exploded this year, sellers say, following Amazon’s effort to openly court Chinese manufacturers, weaving them intimately into the company’s expansive logistics operation.”

This is a big issue for Amazon, a $348 billion dollar company, sixth most valuable in the United States.

One common problem arises from the “commingled” listing system on Amazon which bundles together multiple third-party sellers, including Amazon’s own fulfillment system, onto one product listing. Suppose you see a product for sale on Amazon for $20, while a third-party seller claims to offer the exact same product for $8. Which one to buy? The answer seems obvious – until a knockoff product (or blatant counterfeit) arrives at your doorstep instead.

Amazon does use bold language in its Anti-Counterfeiting Policy to assure consumers:

Products offered for sale on Amazon.com must be authentic. The sale of counterfeit products, including any products that have been illegally replicated, reproduced, or manufactured, is strictly prohibited.

But in practice, brand owners can face an onerous burden when it comes to addressing counterfeit sales of products. To cite a recent experience, upon discovering that knockoff goods were sold through a brand owner’s listing, Amazon was exceedingly unhelpful in removing the listing and taking any action whatsoever against the seller. We repeatedly received emails asking for the following information:

If you believe sellers are offering items different than advertised, please file a report with Seller Performance and provide an Order ID Number of a test buy that confirms your claim that these sellers are not offering the item(s) advertised.  You may contact the Seller Performance team through the following form:

http://www.amazon.com/gp/help/reports/contact-us

To facilitate an investigation, be sure you include the following information in your complaint, as applicable:

  • The ASIN/ISBN of the item’s detail page and the product title
  • The store or business name of the seller you are reporting
  • Your order ID (required)
  • A brief explanation of the violation (required)

Once all this information was provided, Amazon will assist with removing that specific listing, but likely will not take any broader action against the seller’s account or other marketplace listings. This is because sellers will frequently claim their knockoff product was simply “mis-listed” by Amazon and should not have been listed as the brand owner’s product. Too often, it seems Amazon is willing to give the benefit of the doubt.

You may also notice the reference to a “test buy” in the emails — indeed, Amazon has confirmed to us that brand owners (or their counsel) are required to purchase items from third-party sellers to prove they are counterfeit or knockoff products — even if they are sold at a fraction of the authorized resale price. This means that serial counterfeiters are likely to get away with their activities, as purchasing their entire catalog is a unsavory option for brand owners. And even if a single listing were enough to deactivate the seller’s account, they may spring up again under another account days later.

eBay has long dealt with counterfeiting issues, and now the same rule applies to Amazon – if it seems too good to be true, it probably is.

 

 

Jack Ma, the founder of the Chinese internet giant Alibaba, recently said that the counterfeit problem so many brands are dealing with today is primarily a result of the fact that the fakes are actually better than the originals. Of course this set off another furious round of critiques from large brands and industry groups. This is quite a significant attempt to blame shift. Some companies estimate that between 20% to 80% of the products sold under their name through some of Alibaba’s companies are actually counterfeits. That’s a pretty staggering amount.

Back in April, Gucci and Michael Kors withdrew from the International AntiCounterfeiting Coalition (IACC) after it granted membership to Alibaba. I’m sure there were some other members who weren’t all too pleased with the new arrival either. The membership did not last long. In May the IACC suspended Alibaba’s membership in response to its members’ concerns, among other things.

In the same statement regarding the superiority of fakes, Mr. Ma also noted that it is the same factories using the same materials that produce the goods, only they do so without using the brand name. This seems to be an attempt to sow some confusion in an effort to give that blame shifting some legs. What he is describing, the same factory making the same goods from the same materials under a different name, is not counterfeiting at all but a common and legal practice. These products are generally known as off-brand, white label, private label, store brand, or generic goods (varying slightly in how they are marketed and sold). Those Green Giant vegetables may possibly come from the same farm and factory as your off brand green beans.

 

Great Value Green Beans

Green Giant Green Beans

That really isn’t a problem. People accept this as a common legal practice and as a way to save some cash sometimes. It’s a bit cheaper to go with the store brand or generic because they don’t advertise and can pass those savings on to you. Sometimes those green beans are inferior and were purchased at a discount. If you are concerned you buy a brand that you know and trust to have a commitment to a certain quality. That is essentially a very basic function of a brand.

What is a problem, and the issue that Mr. Ma is trying obscure and confuse, is when a source passes its product off as that of another. That is the essence of counterfeiting and infringement. Not only are the brand owners losing out on sales, but they lose control of the products sold under those names. Obviously this can harm the brand owner’s reputation, but it is also a problem for consumers who purchase a product relying on that brand name for any number of things, from quality and price to sustainable practices, fair labor practices, or commitments to certain social issues.

This all appears to be a red herring. If those factories are producing goods using the same materials but under different names, then what we have is good old fashioned competition (absent some other IP theft). New brands enter the market all the time. But putting another brand’s name on your product to make sales is counterfeiting, even if the product might be superior.

Fantasy Live Role Playing Characters, Hardenstein 2014

Live Action Role Playing (LARP or LARPing) usually involves Renaissance Festival worthy costumes, foam medieval weapons, and an intense dedication to not breaking character.  I can’t say I’ve ever had the privilege of participating in a LARP event, but I also can’t say I’d turn down the opportunity.

A different kind of battle—the intellectual property kind—is being fought over the sale of some foam LARPing arrows.  Jordan Gwyther, a church pastor who sells LARPing equipment on the side, is being sued by the proverbial Goliath, Global Archery Products, Inc.  Jordan Gwyther owns LARPing.org and UpshotArrows.com, both of which offer foam tipped arrows for sale to LARPing enthusiasts.  Gwyther doesn’t manufacture the arrows; he imports and sells them.  Global Archery initially sued for patent infringement, trademark infringement, false advertising, and unfair competition.

The patent infringement claims relate to Global Archery’s two U.S. utility patents, each entitled “Non-Lethal Arrow.” The patents were granted in 2013 and 2015.

Here are some images from Global Archery’s patents:

name 2name

The scope of a utility patent, however, is defined by it numbered “claims.”  Claim 1 of one of the patents, for example, is directed to:

A non-lethal arrow, comprising:

a shaft; and

a foam tip assembly connected with an end of the shaft, wherein said foam tip assembly comprises a tip connector having a foam tip overmolded to at least a portion of the tip connector such that said foam tip is securely attached to said tip connector.

And here are some of Gwyther’s arrows accused of infringing the Global Archery patents:

IDV-03005_1_IDV-02002

At least upon first glance, there are surely some similarities here.

Gwyther responded to the lawsuit by launching a GoFundMe page with this video, asking the LARP community for help.  In the video, Gwyther claims that if Global Archery succeeds in its lawsuit against him, they will likely succeed in suing other foam arrow distributors and effectively end LARP archery in the U.S.

Global Archery motioned the court for a temporary restraining order and preliminary injunction to remove the video, stating the video led to “hateful phone calls, emails, and [social media] posts.”  Global Archery’s efforts at a so-called “gag order” did not sit well with the LARP community or the more general online community.  As a result, tech company Newegg joined in the fight, calling Global Archery a patent troll, and offering $10,000 and the proceeds from some anti-patent troll t-shirts to Gwyther’s cause.

Newegg_Anti_Troll_Shirt
Newegg states, “Proceeds from the sale of this shirt will be used to support Mr. Gwyther’s legal defense fund.”

But is Global Archery really a patent troll?  There are a few ways to define a patent troll.  Usually, the term is used to refer to a non-practicing entity—a company that owns patents for the purpose of collecting license fees and/or settlement money.  Non-practicing entities do not actually make, use, or sell the things their patents cover.  That definition does not seem to apply to Global Archery, however, since it is a company directly involved in various forms of archery, even if it does not market directly to the LARP community.  Other times, “patent troll” is used to refer to a patent holder using its patents to assert overly broad and even baseless claims against others in order to collect settlement checks.  This definition, too, seems inapplicable given the apparent similarities between the patent claim language and Gwyther’s arrows.  Perhaps a more broad definition of a patent troll is simply a large company that enforces its patent rights against smaller companies?

Patent troll or not, the patent claims were recently dropped.  Gwyther cited a German patent, predating Global Archery’s patents, as invalidating prior art.  Here are a couple images from the German prior art patent:

a

After reviewing the German patent, Global Archery voluntarily dismissed the patent infringement claims against Gwyther.  According to the online file histories, neither of Global Archery’s two patents received much push back from the U.S. Patent Office prior to allowance.  Apparently, Global Archery decided it would be safer to drop the patent infringement claims against Gwyther than be forced to defend the novelty and non-obviousness of its patents.

Invalidity is a frequent offensive strategy to combat patent infringement claims, and Gwyther did well to bring in the German patent.  Gwyther won the battle, it seems, but the war rages on.  It will take something stronger than foam arrows to defeat the remaining trademark, false advertising, and unfair competition claims asserted in the suit.

Happy 2016! I hope everyone had a fun and festive New Year celebration.

As for me, I’ll be spending my three-day weekend tinkering with this:

Thanks to my thoughtful husband and the rapidly increasing availability and affordability of these products, I am the proud new owner of a 3-D printer.  It’s basically been running nonstop since I first turned it on.

The computer builds an object by extruding hot plastic into a series of 2-D layers.  The software converts a 3-dimensional design file, like a CAD drafting file, into a series of these layers, and converts the design into a format that the printer can understand.

Here are a few of the things I’ve printed so far:

image1

image2

image3

It’s incredible that 3-D printers have nearly reached a level of plug-and-play availability.  This printer requires some occasional calibration and maintenance, and the objects take hours to print. But it’s generally easy to use, and the software is surprisingly user-friendly.

Some of our guest authors have written before about the impending intellectual property implications of 3-D printing. See here, here, here, and here.  In 2012, Jason Voiovich even predicted such 3-D printing accessibility.

I didn’t design the files for the objects I printed.  Someone else designed them and uploaded them on the Internet for others to freely use.  Websites like Thingiverse and Shapeways allow users to upload their designs.

It wasn’t until I made that baby Groot (Guardians of the Galaxy character) figurine that I started thinking about the intellectual property implications.

This technology allows people to create just about any physical object.  An individual could reproduce a copyrighted work or an item covered by a product configuration trademark or design patent.  An individual could even produce components for a functioning device covered by a utility patent.

There are a couple pathways to infringement here.  First, there’s the designer who creates the drawing file of baby Groot.  Secondly, there’s the individual who downloads the design file and physically prints out the baby Groot object (in this case, me).

Toy company Hasbro had the forethought to partner with Shapeways to license design files for printing Hasbro characters.  Hasbro is even allowing individuals to sell the objects they print.

Other IP holders have taken a different approach.  Thingiverse and Shapeways have both received Digital Millennium Copyright Act (DMCA) takedown notices.  There were 3-D print files for the Penrose triangle, and remember Katy Perry’s left shark?  The DMCA allows copyright holders to alert a website of infringing content so that the site can remove the content in an effort to avoid liability.  However, the DMCA does not provide a remedy for trademark or patent holders.

Is 3-D printing going to become the next Napster?  It’s unclear at this point, but we’re surely headed toward a clash between existing IP laws and this emerging technology.

 

 

 

Today, we’re not talking about that Purple Rain, that Color Purple, or those Purple People Eaters, and we’re especially not talking today about Purple Gloves, Purple Bags, Purple Jackets, Purple Candy Wrappers, or Purple Tags, no today, we’re talking about “The Purple Pill,” a/k/a Today’s Purple Pill — AstraZeneca’s blockbuster Nexium brand acid reflux medication.

Just last week, AstraZeneca brought a federal district court action in the District of Delaware, to relieve its heartburn and other forms of damage over Dr. Reddy’s competing generic version of Nexium that is also sold in purple colored capsules.

NexiumPurplePill

The Purple Pill Complaint is loaded with references to and colorful examples of “look for” advertising, something we have covered a lot here (don’t forget the Purple Host Jackets at the Phoenix Sky Harbor International Airport):

“To reinforce the brand significance of the color purple, in addition to its ‘purple’ websites, [AstraZeneca]’s advertising and promotional efforts from as early as 2000 to present have consistently focused on educating the public to associate the color purple as applied to capsules for treatment of gastrointestinal (“GI”) diseases and the phrase ‘The Purple Pill®’ (collectively, the “Purple Marks”) with its . . . products, first with Prilosec® and then Nexium®. The express purpose of this ‘look for’ advertising was to establish the purple color and the phrase ‘The Purple Pill®’ as symbols of origin and quality of GI drugs that emanate only from [AstraZeneca], i.e., as brands of [AstraZeneca]. [AstraZeneca] has devoted significant resources over the years to advertise and promote its Prilosec® and then Nexium® purple pills using this ‘look for’ purple advertising.”

Although “look for” advertising is a helpful key to establish distinctiveness of a non-traditional trademark like a single color, the striking and dominant emphasis in AstraZeneca’s complaint seems more designed to help establish fame, and perhaps for fending off any potential aesthetic functionality defense that Dr. Reddy’s might raise, since acquired distinctiveness is not in question, given the incontestable registrations already in place. THE PURPLE PILL word mark, also federally-registered, is another effective form of “look for” advertising.

Oh, one more thing we’re not talking about today, Glaxo’s Purple Inhalers to dispense Advair brand medication for respiratory ailments, as opposed to gastrointestinal ailments. Perhaps this explains why AstraZeneca made this express point in its complaint:

“[AstraZeneca] is not aware of any third-party trademark registrations covering the mark purple applied to capsules or pills for the treatment of GI diseases. Moreover, [AstraZeneca] is not aware of any third parties that have promoted the color purple as a trademark for any pharmaceutical preparations for the treatment of GI diseases.”

So, does this signal that AstraZeneca’s rights in purple are limited to pharmaceuticals for the tummy, or what other types of ailments might need to be covered by a medication to upset their non-traditional trademark stomach?