It’s fall, and you know what that means: football season! For many, this means a return to the couch each weekend to spectate America’s most-watched sport. But the popularity of doing so appears to be in decline. This shift isn’t only affecting the NFL, but also college football as well, as ticket sales continue to plummet. Increasingly among my own family and friends, it seems as if everyone is more interested in playing their fantasy leagues than watching reality unfold before them. Which is why, one would think, that leagues and other football organizations would want to promote discussion about football, rather than hinder it.

Credit: Geek.com

But football organizations are cracking down on, rather than encouraging, use of familiar football names and phrases. Some have questioned, for example, the NFL’s bully-like tactics in aggressively protecting the “Superbowl” name. The annual “big game” is so well-known and such a major event that it’s almost impossible not to use its actual name. Yet, the NFL persists, enforcing more than just its famous name, drawing the ire of commentators each year.

Such tactics appear to have inspired a recent filing by the Heisman Trophy Trust against “HeismanWatch.com,” for trademark and copyright infringement. The Heisman Trophy Trust, the complaint says, is the owner of a slew of federal trademark and service mark registrations related to the Heisman Trophy, “one of the most distinguished, prestigious, and recognized awards in all of sports, and perhaps the most famous of all individual awards in football.” The award is given to the most outstanding collegiate football player, usually a quarterback or running back, each year. You might recognize the trophy by its distinctive “stiff-arm” maneuver captured in bronze:

Credit: The Ringer

Defendant HeismanWatch.com is a website that offers information, analysis, and podcasts about the Heisman trophy award. It is known for its “one-of-a-kind regression model that processes simulated Heisman votes,” to predict in advance who will win the Heisman each year. It reportedly correctly predicted the most recent winner, Baker Mayfield.

The Heisman Trophy Trust, apparently, does not appreciate HeismanWatch.com’s analysis and attention. It alleges that the website is deliberately attempting to free ride on the fame and notoriety of the Heisman Trophy marks, and it says that consumers are likely to believe there is a connection between the website and the actual trophy organization. Of course, the fact that HeismanWatch.com exists at all belies any such connection; the Trophy selection is secretive, but the website helps fans read the field and guess who will win next.

Time will tell whether the Heisman Trophy Trust can prevail against a news reporting and commentary organization like HeismanWatch.com, but it’s not unprecedented. The Academy Awards sued “OscarWatch.com” over a decade ago, prompting the website to change its name to “Awards Daily.” One cannot help but think that HeismanWatch.com has an incredibly strong nominative use defense, though. Under nominative use doctrine, another person can use the trademark of another if:

  1. the thing identified by the trademark (here, a trophy) cannot be readily identified any other way;
  2. the mark is used only as much as is necessary for that identification; and
  3. the use does not suggest sponsorship or endorsement.

The nominative use defense protects free speech and against the need to use “absurd turns of phrase” to avoid liability.

Credit: Wikipedia

It’s difficult to imagine a viable substitute to the name “Heisman,” given the trophy’s actual name–and namesake. What alternatives are there to HeismanWatch.com that do not include the surname? One commentator  offered an idea:

BestOffensivePlayerWithAGreatPRCampaignOnAVerySuccessfulTeamWatch.com.

Of course, this is absurd. And generic alternatives would fail to adequately describe what the website does (e.g., OutstandingCollegiateFootballPlayerWatch.com). One also doesn’t have to look much farther than a simple Google search to find that the media regularly uses “Heisman Watch” as a phrase to discuss anticipation about the next awardee. Even ESPN has a section called “Heisman Watch.” This kind of ubiquity shows the obvious necessity of using the surname. The common use of the phrase also suggests there is a very low likelihood that collegiate football fans are confusing the website–or any other reporting source–with the actual trophy organization. These are hallmarks of fair use.

But setting aside the legal defenses, one has to wonder if organizations such as the Heisman Trophy Trust, NCAA, and NFL ought to relax a little, and encourage the kind of use presented by sites like HeismanWatch.com. These fan centers generate excitement about, and interest in, football. That’s something football desperately needs more of lately.

The popular UGG® branded sheepskin boots are at the heart of a dispute in the Northern District of Illinois. Deckers Outdoor Corp. (“Deckers”) owns 29 federal registrations for the trademark UGG in connection with numerous goods and services, including footwear, clothing, wallets, passport covers, plush toys and retail store services. The company also has four pending applications for UGG to add to this family of UGG trademarks.

Deckers sued Australian Leather Pty. Ltd. and its owner (“Australian Leather”) for trademark infringement and patent infringement for selling “ugg” boots.

UGG® branded boots have become very popular. Fashion forward celebrities, such as Blake Lively and Sarah Jessica Parker, are often pictured wearing the comfortable boots as they go about their daily lives. This provides the brand with free publicity and even more exposure.

Defendant Australian Leather alleged that the ugg mark was generic for sheepskin boots and that the doctrine of foreign-equivalents supported this conclusion. The parties brought cross motions for summary judgment on these issues and others.

Steve Baird has written about trademark genericide before on DuetsBlog. Generic trademarks are those where a brand name has become synonymous with a general class of product or service. Famous examples include: aspirin (Bayer lost this valuable mark), elevator and linoleum. Losing a trademark to genericide allows competitors to benefit from the originating company’s goodwill without being guilty of trademark infringement. Companies have undertaken advertising campaigns to prevent or combat their trademarks from becoming generic. For example, the Velcro Companies came up with the hilarious video, “Don’t Say Velcro,” explaining that the product is a “hook and loop” with the brand name VELCRO®. The company even came up with a sequel video called “Thank You For Your Feedback” that Steve Baird wrote about previously on DuetsBlog.

Luckily for Deckers, the Illinois Court found that its UGG® trademark was not generic. Deckers introduced a survey undertaken in 2017 in the United States of 600 women between the ages of 16 and 54 wherein 98% of the respondents viewed UGG® as a brand name. These results were even better than past surveys commissioned by Deckers in 2004 where 58% of the respondents viewed the mark as a brand, and in 2011 where 89% of respondents viewed UGG® as a brand name.

In turn, Australian Leather asserted that “ugg” was generic among American surfers in the 1970s. The Court found this group to be too narrow. Australian Leather also introduced evidence of “ugg” being generic for sheepskin boots in Australia. Not surprisingly, the Court did not find this evidence to win the day. The Court noted that genericness in another country could be at least relevant to consumer perceptions in the United States. However, it is important to remember that whether a trademark is generic in another country has little bearing on whether it is generic in the United States. Trademark rights are territorial. Having a registered trademark in the United States does not give a company rights in that mark in Australia or other countries.

The Court explained that the foreign-equivalents doctrine did not warrant another result. It explained that “the doctrine is not a perfect fit for English to English [terms, rather, the doctrine] is generally used to analyze non-English terms used in the American marketplace.” Steve Baird did a nice job of explaining the appropriate use of this doctrine in his post, here.

What genericide stories have you heard about?  It can be an ongoing and costly battle for brand owners to protect their valuable intellectual property rights.

As Steve blogged earlier this week, we’ve had a lot of “zero” on the mind lately—marks related to the word and numeral. It got me thinking about the letter ‘O,’ especially since it has been in recent trademark news.

If you missed it, The Ohio State University and Oklahoma State University are now dueling it out at the USPTO over Oklahoma’s trademark application related to the block ‘O.’ Specifically, Oklahoma is attempting to register a mark of “a drum major marching while leaning back with head tilted back”:

According to Oklahoma, it has been using the singular block ‘O’ since 2001, most notably on the jersey of its band’s drum major (but also on sports memorabelia):

But in an opposition to the mark, Ohio says it has been using the same letter since as early as 1898, and it’s current main athletics logo includes the block ‘O’ in the background:

According to Ohio, Oklahoma’s use of the leaning and tilted ‘O’ is likely to cause confusion. I wonder if any other O-state institutions will weigh in—looking at you, Oregon.

On the one hand, the block styling of the Oklahoma ‘O’ could cause consumers to accidentally purchase sports gear from the wrong institution. On the other hand, the letter ‘O’ is such a fundamental unit of the English language that it’s hard to argue just one institution should be entitled to its exclusive use—even if it’s only in the college sports context. And Oklahoma is only seeking registration of a mark which uses ‘O’ in a minor fashion. However, Oklahoma’s marching ‘O’ mark could run into issues related to the requirement that the mark be used in commerce. After all, it’s a mark representing the band major, who wears an ‘O.’ How does Oklahoma otherwise use the mark or plan to use it commerce?

It turns out that the letter ‘O’ is not widely used as a mark on its own. There are some recognizable uses, though. Perhaps the most distinctive use of the letter ‘O’ is the Oprah Magazine:

In 2001, a German magazine also named ‘O’ sued Oprah’s ‘O’ magazine, but the suit appears to have gone nowhere, and Oprah’s ‘O’ lives on.

The only other major ‘O’ competitor appears to be Cirque du Soleil:

Maybe there’s some potential for confusion between the Oklahoma drum major and the high-flying circus performers. Though, I’m guessing the audiences for both don’t substantially overlap.

I think the few recognizable instances of ‘O’ marks can be explained by the overall minor distinctiveness a single letter can generate when used in connection with a brand. This is the up-hill battle both Ohio and Oklahoma will face in arguing their sides of the trademark dispute. Stronger letter marks are paired with other words, such as O Magazine and O Cirque du Soleil. Another example comes to mind: Toys ‘R Us (also in the news lately).

The battle for attorneys’ fees after an intense trademark dispute often leaves many prevailing parties empty handed. This is because the Lanham Act only provides for attorneys’ fees in “exceptional cases.” Congress’s (and courts’) reluctance to award attorneys’ fees stems from the “American Rule,” which provides that each party to a lawsuit is responsible for paying its own fees–unless a statute provides otherwise. But the Lanham Act erects a high bar to obtaining fees by requiring that the case be “exceptional.”

On the one hand, trademark owners should not have to fully shoulder the burden of what often turns into expensive litigation just to enforce their rights. Indeed, the estimated cost of protecting one’s rights can dramatically affect the calculus of whether to sue for infringement in the first place. But on the other hand, trademark violations are sometimes debatable and unclear. In such circumstances, the American Rule provides some protection to litigants who would otherwise be discouraged from seeking redress due to the risk that they might have to pay the defendant’s fees in the end if they lose. Thus, the Lanham Act strikes a balance, providing for reimbursement in cases of brazen and clear infringement–or brazen and clear abuse of the litigation process–while retaining the benefits the American Rule otherwise provides.

The Lanham Act’s fee provision has come up recently in two high-profile trademark cases: one involving Comic Con (reported on previously here and here), the other meme-famous Grumpy Cat (also reported on previously here). But the result was legally different in both cases, with Comic-con obtaining millions in fees under the Lanham Act, while Grumpy Cat obtained nothing under the Act, but recovered nevertheless pursuant to a contract between her and the infringer. What explains the different results?

Comic-con: The Comic Con (short for “comic book convention”) dispute began when the San Diego Comic Con sued the Salt Lake Comic Con for infringing on San Diego’s “Comic-Con” trademarks. The San Diego convention was one of the first comics-fan conventions.  And it is the largest convention of its kind, drawing more than 130,000 attendees each year. Salt Lake’s convention began in 2013, but it has quickly grown to over 120,000 attendees. Thus, it is probably no surprise that San Diego took exception to Salt Lake’s competing event and use of the same “Comic Con” name–though, as my colleague Jessica Alm pointed out, there are many other conventions across the United States using the same name.

San Diego Comic Con sued Salt Lake Comic Con for infringement. But despite the seemingly-debatable nature of the dispute (because the name could be generic, and it would be difficult to prove consume confusion), less than a year ago a jury determined that Salt Lake was liable for infringement in the amount of $20,000. Thereafter, San Diego moved for fees in the amount of $5 million–a little disproportionate, one would think (but perhaps not in view of San Diego’s requested $12 million in damages).

The district court judge granted $3.9 million. The reasons? Salt Lake repeatedly disregarded court rules, violated confidentiality rules, squandered judicial resources by relitigating issues, based arguments on irrelevant law, and attempted to bias the jury during the trial. The judge felt that the case stood out from others due to the “unreasonable manner it was litigated.” Expect an appeal on the $20,000:$3.9 million ratio.

Grumpy Cat: The Grumpy Cat dispute began when Grenade Beverage LLC, which had licensed Grumpy Cat’s trademarks (names and likenesses) to be used in trade dress and advertising for a new line of iced coffee products called “Grumppuccinos,” also used the marks in connection with a new coffee bean product without Grumpy Cat’s permission. Like the Comic Con litigation, the parties also litigated this case for three years. In addition, a jury awarded Grumpy Cat over $700,000–much more than San Diego Comic Con. But only $1 of that was for breach of the licensing agreement.

But unlike the Comic Con litigation, a federal judge recently denied Grumpy Cat’s request for approximately $320,000 in fees under the Lanham and Copyright Acts. The judge did, however, granted Grumpy Cat fees under the licensing agreement with Grenade Beverage–though, the judge said that there needs to be additional briefing on how much in fees can be awarded under the contract. Central to the judge’s decision on the Lanham Act fees issue was the fact that Grenade Beverage had not acted frivolously or in bad faith when they adopted an interpretation of the licensing agreement that entitled them to use Grumpy Cat’s marks in a line of Grumpy-Cat- branded “coffee products,” rather than just iced coffee. This reasonable difference of opinion–and, presumably, reasonable litigation behavior throughout the case–did not make out “exceptional” circumstances justifying fees under the Lanham Act.

In general, the Comic Con and Grumpy Cat cases provide two high-level teachings when it comes to fees. First, it is important to choose professional counsel, make reasonable litigation decisions, and take good faith positions throughout the course of a case. Otherwise, that conduct in and of itself may make the case “exceptional,” putting you on the hook. Second, attorneys’ fees provisions in a licensing agreement can serve as a helpful back-up if the Lanham Act fees request fails. But in providing for such fees, one should consider whether it is truly advantageous in the circumstances to remove the American Rule’s protections. That requires some thought…I need a Grumppuccino.

P.S. In April, I wrote about the USPTO’s attempt to obtain attorneys’ fees when it prevails in district court patent litigation. The Federal Circuit rejected this attempt, stating “the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a ‘specific and explicit’ directive from Congress. The phrase ‘[a]ll the expenses of the proceedings’ [in 35 U.S.C. § 145] falls short of this stringent standard.”

PepsiCo recently made waves with its purchase of SodaStream, but the company is now making news in the food business. This time the news is all about Pepsi’s Frito-Lay division, and its mischief making Chester Cheetah and his crunchy, cheesy, Cheetos brand. Pepsi recently sent a cease and desist letter to World Peas, a manufacturer of healthy-ish snack foods and its recent marketing of Peatos brand snacks.

 

What are Peatos exactly? They’re a crunchy snack food made primarily from peas and lentils, but, Peatos are not intended to be a “health food.” The company describes its mission as making “90% of people eat 10% better, not 10% of people eat 90% better.” The goal appears to be: make a snack that is a little bit better for you without sacrificing flavor. Product quality aside though, is Pepsi correct that the PEATOS mark is confusingly similar to the CHEETOS mark?

Courts consider a variety of factors in evaluating whether someone is infringing another’s trademark: do the marks create similar commercial impressions; are the products at issue competitive, similar, or related; how strong are the marks in terms of meaning and commercial strength; are the goods sold through similar channels of trade (i.e., through the same types of stores); and others. The two factors that tend to play the most prominent role are the similarity of the commercial impressions of the marks and the similarity of the goods.

In the Peatos versus Cheetos dispute, many of the factors would favor Pepsi. The goods are competitive (even if one is a bit healthier), both are sold in the grocery stores, and the CHEETOS mark is an arguably famous and strong mark. But even if every single factor but one were to favor Pepsi’s claim of infringement, it would not be enough if the marks are so dissimilar that no confusion is likely. So what do you think, how similar to Cheetos is Peatos?

The only difference in sound is the initial letter P versus the CH sound. Visually, the marks have a few more differences in letters. As far as I’m aware, neither mark has a defined meaning. The PEATO mark has additional meaning of one its ingredients (Pea).

But what about the overall commercial impression of the marks? What is the impression that Peatos will make in the mind of a consumer? For me, the immediate impression is that the product is a Cheeto made from peas. In fact, I can’t imagine that World Peas came up with the name in any other way other than “What should we call a Cheeto made from peas? Oh! Peatos would be a good pun!”

A likelihood of consumer confusion does not require actual consumer confusion. It also does not require that consumers confuse the products themselves, or that a consumer incorrectly think that Pepsi makes Peatos. A likelihood of confusion exists whenever a consumer might mistakenly believe that there is some type of endorsement, connection, or affiliation between the two parties. Given Pepsi’s recent purchase of SodaStream and the general trend toward healthier consumer choices, is it really that much of a leap to imagine a famous brand of snacks extending into a pea-based version of itself?

Setting aside the similarity in the marks, World Peas is actively drawing a connection between Cheetos and Peatos through use of a tiger and a similar color scheme for its bag and logo. The fact that the actual Peatos products look like Cheetos isn’t likely an issue, but it doesn’t help, especially if Pepsi argues a claim of post-sale confusion.

In addition to all this, World Peas makes explicit Cheetos comparisons on its website. Granted, these comparisons likely qualify for a fair use (although the use of the Cheetos logo may be more than necessary). However, when you know you’ll be poking the tiger, do you really need to pull its tail and poke it in the eye too? If the company truly plans on sticking with the Peatos name, it may have been best to not exacerbate Pepsi’s concerns and use a different colored logo, avoid the tiger on the packaging, and maybe not so aggressively market yourself as a healthier version of Cheetos. While Pepsi may have still come knocking, Pepsi would at least have less ammunition for its claims.

I wouldn’t say this a clear cut case of infringement, but given all these facts, there is at least a colorable claim of infringement . The company must have known it would receive a demand letter regarding the name. Perhaps the plan was to enjoy the free press for its new product and then switch the name, knowing the name change would also be heavily publicized?

Apart of from the potential legal liability, it isn’t a terrible plan, and I’m certainly interested in trying a bag of Peatos. Once I find a bag, I’ll be sure to let you know whether they’re g-r-r-r-r-r-r-r-eat!

The trademark ST. ROCH MARKET is at the heart of a dispute in New Orleans (aka NOLA).  The City of New Orleans is battling in court with the current lessee of the building associated with the trademark.

ROCH MARKET has been associated with a popular market in New Orleans since 1875. Prior to Hurricane Katrina, the market sold fresh seafood. After begin devastated by the hurricane, the City pumped over $3.2 million dollars to transform the place into a food hall with vendors selling seafood, confections, coffee, alcoholic drinks, streetfood, and other food.  Renowned food expert ZAGAT states that it is “An absolute must visit.”  I intend to do so when I visit my friend in NOLA this fall.

Following the renovation, Bayou Secret, LLC leased the building to operate a full service neighborhood restaurant with multiple vendors in a stalls concept.   The company’s sole member Helpful Hound, LLC applied to register the ST. ROCH MARKET mark in April 2017 in connection with food kiosk services and retail vending stand services (Bayou Secret, LLC, and Helpful Hound, LLC and certain individuals associated with the entitityes will collectively be referred to as the “Bayou Secret Parties”).  Because the term ST. ROCH MARKET is descriptive of an actual place, the mark could not be registered on the Principal Register of the United States Patent and Trademark Office.  However, registration for the mark was secured on the Supplemental Register at U.S. Reg. No. 5,293,244 based on the mark’s secondary meaning.

The Bayou Secret Parties launched a similar food hall in Miami in April 2018 and planned to expand into Chicago and Nashville.  Within days of each other in April 2018, the City of NOLA and Bayou Secret Parties filed lawsuits against each other.  The Court consolidated the two cases which involve allegations that Bayou Secret Parties infringed the City of NOLA’s trademark, that the famous trademark was being diluted, among others.

The City of NOLA also filed its own application for the ST. ROCH MARKET in April 2018 in connection with the leasing and management of space for food and drink vendors in a public market at Ser. No. 87/890,988.

In August, the City of NOLA and its management company (NOBC) secured a preliminary injunction that barred the Bayou Secret Parties from using the ST. ROCH MARKET mark for food hall locations other than in NOLA and its newly opened food hall in Miami.

The Bayou Secret Parties brought a motion to dismiss on various grounds.  The City of NOLA defeated the motion with the exception of having its claim for trademark dilution dismissed.  The court found the allegation that the mark “is widely recognized by the general consuming public of the United States” was merely conclusory.

Do you think the EATALY® mark associated with food halls would fare better?  (See U.S. Ser. Nos. 3,065,012; 3,567,939).  It might.  The mark is associated with the well known food halls located near the iconic Flatiron building in New York, downtown Chicago and other locations.

Significantly, famous chef Mario Batali is a partner with the Italian owner of the EATALY mark that was first used in Turin, Italy for a food and wine market before traveling to the United States.

Even in July, with the heat of summer still blazing, you can’t get away from ice hockey in Minnesota. However, now that the Vegas Golden Knights have settled their dispute with the U.S. Army, it was starting to look like we were running out of hockey trademark news. Thankfully, the National Hockey League came through at the last second, filing a trademark infringement lawsuit on July 23. At issue is the NHL’s rights in the design of its championship trophy, the Stanley Cup, and the defendants’ sale of allegedly infringing beer mugs shaped like the Stanley Cup.

The defendants comprise companies, purportedly all owned or managed by the same individual, operating primarily under the name “The Hockey Cup LLC.” According to the complaint, the Hockey Cup has been selling unauthorized reproductions of the Stanley Cup as well as counterfeit jerseys. The company even applied to register trademarks for THE CUP HOCKEY. The NHL opposed the applications and, in response, the Hockey Cup counterclaimed to cancel the twelve registrations asserted by the NHL on the grounds of lack of ownership, abandonment, non-use, and fraud. With the gloves now off, the NHL chose to escalate the skirmish and sue the Hockey Cup in the Southern District of New York for trademark infringement, false association, dilution, copyright infringement, and unfair competition.

There is a good chance that the Hockey Cup will also assert its counterclaim for cancellation of the NHL’s registrations in the lawsuit. The counterclaim essentially argues that the NHL does not control the actual, physical Stanley Cup, and therefore the NHL cannot have trademark rights in the design of, or name of, the Stanley Cup. Strangely enough, this part of the argument has some truth to it. Since 1893, the Stanley Cup has been controlled by a pair of trustees. In 1926, the Trustees reached an agreement with the NHL, and the NHL has been the sole organization associated with the cup ever since, with continued permission from the Trustees. If that’s true, the Hockey Cup’s claims appear to be a bit of an underdog in this legal matchup.

But does the Hockey Cup’s sale of beer mugs in the shape of the Stanley Cup create a likelihood of confusion with the NHL? The NHL claims in its complaint that it has sold beer mugs in the shape of the trophy in the past, but none appear to be available at the moment. The NHL is selling Stanley Cup shaped ornaments, paperweights, inflatable trophies, miniature crystal replicas, and, for some reason, a popcorn maker. If we’re sticking with the booze, the NHL is selling a shot glass with a picture of the Stanley Cup. But yet, no beer mugs in the shape of the trophy.

To prevail though, the NHL does not need to show that it has lost sales due to the defendant’s conduct. Instead, there must only be a likelihood of confusion as to source, sponsorship, connection, or affiliation. One plausible argument in support of the NHL’s claim is that consumers will mistakenly assume that the mug has been licensed by the NHL.

In fact, one recent case from the Eleventh Circuit is quite relevant to the dispute. In that case, the Savannah College of Art and Design, Inc. sued an unauthorized online manufacturer and seller of apparel that was selling clothing with the school’s name. Savannah Coll. of Art and Design, Inc. v. Sportswear, Inc., 872 F.3d 1256 (11th Cir. 2017). The school sued, but the school could not establish that it began selling apparel with the school’s name before the defendant. Based on this, the district court concluded that the school’s rights in the mark with respect to education services did not provide it with trademark rights in the name for clothing. The district court granted summary judgement to the defendant.

On appeal, the Eleventh Circuit reversed, relying on precedent involving – you guessed it – hockey:

One of our older trademark cases, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends protection for federally-registered service marks to goods. Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow.

As the quote suggests, the Eleventh Circuit is not certain that the precedent was rightly decided. In that decision, the NHL and the Boston team sued a manufacturer to prevent the sale of patches featuring team names and logos. The NHL had registered the marks for hockey game entertainment services, but not for any goods. The court noted the decision has been criticized but never overturned. As a result, the Eleventh Circuit remanded to the district court for further proceedings consistent with the Boston Hockey ruling. The NHL—and any other school, sport team, or other organization with an appreciable amount of merchandising—will want to pay attention to the resolution of the case, and consider filing applications to register their marks for valuable, merchandised products.

In the meantime, we’ll watch the ownership dispute play out between the NHL and the Hockey Cup. While it appears to be a longshot, perhaps ownership of the cup will return to the people of Canada, as some prefer (mostly Canadians). Until then, we’ll leave you with the words of Lord Stanley himself, announcing the creation of the Stanley Cup in 1892:

 

Starbucks is moving away from green straws, actually any plastic straws, to live a little more green. So, we’re unlikely to see any straw trademark filings, despite decent look-for advertising.

While Starbucks appears to have drawn the short straw at the USPTO on its efforts to federally-register a pair of green dot marks, appeals to the TTAB are currently pending, here and here:

Let’s stay tuned to see whether Starbucks gets cooking at the USPTO by filing any service mark applications for its distinctive green colored aprons, can you say look-for advertising?

What do you think, does this GREENER APRON word-only mark filing move Starbucks closer?

Starbucks certainly seems to have a lot of brand equity wrapped up in the color green, so I’m left wondering why this coffee shop in San Francisco Int’l Airport chose its name and green letters?

Is it ironic that I’m writing and publishing this Starbucks post remotely on my lap top from here?

Starbucks, thanks for the great coffee, tasty blueberry muffin, and most importantly, the free wifi!

Over the years, we’ve written much about trademark bullying. When the mantle fits, and when it doesn’t. When a brand has a realistic view of its rights, and when the claimed scope is bloated.

We’ve never before written about “Ruby Tuesday,” neither the Rolling Stones’ song nor the struggling restaurant chain, until now — and both at the same time, so thank you Techdirt.

As reported by Munchies, MusicFeeds, and Timothy Geigner of Techdirt, the Ruby Tuesday restaurant chain is threatening trademark litigation against an Australian band, Ruby Tuesdays.

In a twist of double irony, Techdirt hangs the pejorative “trademark bully” name on Ruby Tuesday, for copying the Rolling Stones’ song title and then bullying an Australian band from using it too.

While the reported facts are incomplete and insufficient for judging the merits, one of the lines from the restaurant chain’s demand letter caught my eye, as it appears to impute bad faith:

“[T]he knowing adoption of a mark intending to play off a well-established mark is among the most egregious of trademark violations, warranting courts to apply the harshest of consequences.”

If you’re humming to the lyrics “yesterday don’t matter if it’s gone,” please still consider reviewing an early blog post gem about imputing bad faith, When Intent Matters in Trademark Matters:

“One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people.”

“[T]his permission is frequently abused . . . when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into the matter.”

“Even the pejorative “trademark bully” label . . . garners public sympathy while imputing evil intentions to the trademark owner aiming to enforce its rights.”

“Less emotion and more objective facts should drive decisions on the question of likely confusion. If a case screams bad faith based on the objective facts, fine, make the case, but recognize this is likely a rare case.”

“Imputing motives and intentions to people is a messy, dangerous, and emotional business, trademark types should honor the law’s permission to to explore proof of bad faith intent, but not abuse it.”

In other words, initial demand letters shouldn’t attack motives, instead objective, unlawful actions.

And, those tempted to hang the pejorative trademark bully mantle before knowing the facts and law should pause and recognize that hanging the name and mantle also attacks motives.

Having said that, brands, when you really do overreach there are consequences.

Keep in mind, you might just find the infamous trademark bully mantle hanging around your neck, whether the actual merits of the facts and law warrant it or not.

Ain’t life unkind?

Goodbye, Ruby Tuesday, in more ways than one . . . .

On a recent shopping trip, I couldn’t help but notice some interesting brand extensions inside and outside the stores.

My encounter inside involved Burt’s Bees . The brand encompasses a wide variety of lip balms, lotions, cosmetics, and personal body care items. (pets, too). Yet I discovered a new addition to the lineup: Burt’s Bees protein shake powder.

While most cosmetics and lip balm companies don’t make a jump into the nutrition field (a ChapStick shake just doesn’t sound appetizing), Burt’s Bees’ extension seems to make sense. In my mind, I’ve always associated it with an image of healthy, natural products, and nutrition products seem to fit that image.

Outside, I ran into a similar situation in the lawn and garden center: a blast from childhood past:

This seemed a bit further afield than Burt’s Bees. Had my childhood sugary “fruit” drink really expanded into live flowers? After all, the company does sell Hawaiian Punch lip balm.

However, the answer seems to be no. The flowers are a sold by Canadian company Fernlea Flowers. The company has even registered the mark with the U.S. Patent and Trademark Office, without an opposition from Dr. Pepper/Seven Up (the owner of rights in the HAWAIIAN PUNCH mark).

Are flowers sufficiently related to fruit juice and lip balm such that Dr. Pepper should have objected to the use of HAWAIIAN PUNCH for flowers? Generally speaking, I’d say the goods are highly unrelated. Yet the marks are identical, the HAWAIIAN PUNCH mark has been licensed for other non-food goods, and the HAWAIIAN PUNCH mark is arguably famous. Plus, the mark could have been licensed because the flowers are the colors of various flavors of Hawaiian Punch drinks. Are these factors enough to create a likelihood of confusion?

If there isn’t a likelihood of confusion, is there a claim for dilution? This seems more plausible, but would extending protection of HAWAIIAN PUNCH to live plants in this instance effectively give the owner a right in gross to the phrase HAWAIIAN PUNCH? Is that okay for marks that can establish that they are famous? What do you think, was this an enforcement punch worth pulling?