– John Reinan, Senior Director, Media Relations, Fast Horse

That is, assuming it ever was. But as a marketer, I often wonder what advice trademark attorneys offer to their clients on enforcement in the Internet age.

Every day, I visit websites that make use of (almost certainly) unauthorized photos, logos, videos, slogans and any kind of content you can think of. Multiply that by billions of Internet users, and you get a sense of the scope I’m talking about. Some is copyright infringement, some is trademark infringement. To attorney specialists, there’s a distinction. But to marketers, the entire area is fraught with questions, no matter what kind of infringement may be happening.

I know that at least some policing is taking place, because I occasionally run across a YouTube video with a message saying it’s been removed at the request of the owner. But how does an owner assert trademark or copyright ownership in the digital Wild West that is the Internet?

We’re careful about any assets we use in major campaigns. But we also send out tweets, create Facebook items and write blog posts on behalf of our clients. Are we liable for retweeting something that may contain an unauthorized use of an image or logo? Is there a primer somewhere that advises marketers and others on how best to avoid legal jeopardy in these areas?

I realize that the strictest level of enforcement is virtually impossible, and probably always has been. But the Internet ratchets things up considerably. It would appear that only the most selective kind of enforcement is possible, mainly for practical and financial reasons.

But is selective enforcement just? How does one make the determination on which unauthorized uses to vigorously pursue? The ol’ sternly worded letter may be the default position.

I realize this post raises more questions than it answers. But I don’t have answers – I have questions. Perhaps the DuetsBlog community can offer some insight.

Over the past five years, we have spilled a lot of black digital ink discussing trademark ownership of single colors. Color continues to be an important aspect of branding and differentiation in a variety of markets, including many you’d expect, and some you might not.

Christian Louboutin’s red color trademark helps to illustrate the importance of single color trademarks in the fashion industry.

Tiffany’s robin egg blue boxes help to illustrate the importance of single color trademarks in the luxury jewelry marketplace.

Although brown may not be the most glamorous color, it has done a lot for UPS, who has believed it can do a lot for you too.

Let’s not forget where this whole single color trademark ownership concept started, with Owens-Corning and the color pink for fibrous glass building insulation, remember the Pink Panther campaign?

And, while we’re on the subject of pink, what about T-Mobile’s magenta (hot pink) trademark recently afforded protection against AT&T’s use of a plum color in the wireless telecommunications industry? Here is a link to a copy of the decision granting T-Mobile a preliminary injunction against AT&T earlier this month.

Lest you operate under the misapprehension that color trademarks are limited to consumer goods and services, a couple of recent decisions from the Trademark Trial and Appeal Board (TTAB) demonstrate that color ownership is important to those in the medical device industry too.

As our friend John Welch covered so well over at the TTABlog, just last month:

“In a ‘somewhat unusual’ likelihood of confusion case involving the comparison of two color marks, the Board affirmed a refusal to register the color ‘teal’ for ‘medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures.’ The Board found the applied-for mark likely to cause confusion with a registered mark comprising the color “blue” applied to the tip and indwelling length of catheters. In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential].”

Now John — wearing the advocate hat for Covidien — as a service to all trademark types, has identified another tool that might be used to facilitate the coexistence of “teal” and “blue” marks, or in his client’s case, “red” and “pink” marks in the field of medical devices.

In Covidien LP v. Masimo Corporation, John defeated a motion to dismiss his petition for partial cancellation of a prior and blocking single color mark registration under Section 18 of the Lanham Act. His plan appears to be to compel a narrowing of the “red” registration, to the specific shade of red allegedly used by Masimo, “fire engine red” — Pantone PMS 185, so that Covidien’s pink (Pantone PMS 806) mark can peacefully coexist at the USPTO without any likelihood of confusion. Who knows, maybe he’ll be able to leverage a consent to registration now from Masimo?

But if not, the T-Mobile decision mentioned above didn’t seem to put much stock in the narrow shade-specific language found in the registration at issue there:

“This court finds and concludes that the Supplemental Register’s reference to Rhodamine Red U does not limit the mark protections T Mobile seeks.”

In part, because the facts showed that different shades of magenta had been used over time by T-Mobile. Any thoughts about whether this different perspective might be applied to impact whether Covidien is granted its request to compel a “narrowing” of Masimo’s single color registration from “red” to “fire engine red” and/or Pantone PMS 185?

How would you attempt to avoid having a broadly worded single color registration narrowed in a partial cancellation action under Section 18 of the Lanham Act?

Might it help to avoid slavish consistency of one exact Pantone shade of color? Might that impact your ability to establish acquired distinctiveness or secondary meaning in the first place?

– Anjali Shankar, Attorney –

The first time I heard the phrase “Candy Crush,” I remember thinking it was something edible. In actuality, Candy Crush (also known as “Candy Crush Saga”) is a game developed by the developer King.com, Ltd. (King) for Facebook and smartphones. I personally have never played the game but have heard tales of its addictiveness.  

 

King previously attempted to trademark the word “candy” in an effort to avoid persistent infringement. The Company obtained a trademark from the European Union, which extends not only to computers, but also clothing and footwear.  King’s trademark application with the U.S. Patent and Trademark Office was recently approved with respect to certain computer games and clothing items.

Incidentally, while attempting to protect its own rights, King may have been infringing another company’s intellectual property rights.  Recently, Albert Ransom, president and founder of Runsome Apps, Inc., the creator of the game “CandySwipe,” wrote an open letter to King stating that CandySwipe was released two years before Candy Crush, and noting that the app icon, candy pieces and word “Sweet” were virtually identical. King has allegedly been seeking to remove the trademark of CandySwipe. 

 

So, if CandySwipe was released before Candy Crush, how is it that King can seek removal of the CandySwipe trademark?  Apparently, in January 2014, King bought a trademark for the game “Candy Crusher,” which was trademarked in 2004, six years before CandySwipe.  While Candy Crusher does not share similarities with the other two games, King appears to be leveraging the trademark as a basis for removing the CandySwipe trademark.

 We will have to wait and see how the saga continues.

–Ben Kwan, Attorney

It’s February — and that means it’s time for local television stations across the nation to get out their measuring sticks.  Here in Minneapolis, and on this day, that notion carries a double meaning.  For one, the local weather forecasts are calling for maybe a foot of snow and blizzard winds after that — so we’ll be crawling along come drive time.  But more importantly, February is also known as a “sweeps” month, when the Nielsen company measures and reports local news ratings.  For decades, these sweeps months (November, February, and May being the key months) have been highly important to television stations because they establish viewership and, in the end, dictate what a station can charge for its advertising.

I think there’s a lesson in the local news landscape about the new rules of engagement for all of us in the connected professions – where relationships matter and personal branding is taking a key role in business development.  Traditional measurements of who’s number one should not be relied upon alone.

For example, here in the Twin Cities television market, KARE and WCCO (the NBC and CBS affiliates, respectively) have been duking it out for the Nielsen top spot in recent years.  The ABC affiliate (KSTP-TV) has been trying to fight its way from the bottom of the rankings since the 1980s.  The local FOX affiliate (KMSP-TV) hasn’t had too much Nielsen success, either, at least in the evening news rankings.

But then, look to one of the new measures of engagement—Facebook followers—and the FOX affiliate actually reigns supreme.  And look at the wide gulf between WCCO and KARE, who, if close in Nielsen rankings (or solidly #1 and #2 to say the least), shouldn’t they have similar Facebook followings?

Facebook Followers (main station page):

KMSP (FOX)             150,291

KARE (NBC)             129,562

WCCO (CBS)             58,586

KSTP (ABC)              34,526

I’m not sure I’d endeavor to explain why the Nielsen rankings don’t correlate with the number of people plugged into these local brands via their Facebook pages.  At least not in this forum.  I do think it’s important to simply recognize the disparity in the metrics — and appreciate it.

If KMSP – branded “FOX 9” locally – is nearly three-times more “plugged-in” with a Facebook following than WCCO, which has been ranked #1 in a lot of local news time slots in recent years, I think we at least have some evidence that measuring and ranking brand connectedness is about more than the traditional totem poles.

For lawyers, the analogues to the Nielsen ratings are well known.  You have the storied list of AmLaw 100 firms, your SuperLawyers, the list goes on.  But who’s number one today may not be number one tomorrow.  I realize that there are–and will always be–new media naysayers out there—the people in your law firms who question all the social media engagement (and this non-billable .75 1.1 blog post).  But keep in mind that today’s book of business isn’t tomorrow’s book of business.  And when there’s a legal dollar to be spent in the future, who is going to be top-of-mind, as our marketing friends say?   Probably the gal who’s plugged-in and engaging, building her personal brand… today.

I would assume that our local FOX affiliate here in the Twin Cities is fairly proud of its Facebook following.  They’re always engaging, always in my Facebook news feed, and one day soon, could be our top local news brand in this media market, no matter what the Nielsen folks have to say about it.  (Monetizing that can be someone else’s blog topic, haha.)

There is only one Lord of the Ring, only one who can bend it to his will.  And he does not share power.  – Gandalf, Lord of the Rings

As we have posted about more than a few times on DuetsBlog over the years (like here and here), the OLYMPICS trademark and the Olympic Rings mark are highly enforced marks that uniquely bear special protection granted from Congress.  In order for a country to be eligible to host one of the Games, they must have a law providing heightened protections for use of these marks.   36 U.S.C. 220506 provides that only the US Olympic Committee (“USOC”) has the exclusive right to use ” the symbol of the International Olympic Committee, consisting of 5 interlocking rings”,  the word “Olympic”, and other Olympic- and Paralympic-related names and marks.  The USOC may file a civil action if the Olympic rings, the word Olympic or trademarks owned by the International Olympic Committee are used without their consent and for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition.  If you want to use OLYMPICS or the five interlocking rings on any product or in any promotional materials, the general advice is the reverse Nike slogan – “just DON’T do it” (well at least without getting consent).

But then came the epic mechanical failure during the Sochi Opening Ceremonies…with four rings and a snowflake/asterisk-like contraption that malfunctioned.  #SochiFail.

The failure was maybe only overshadowed by Costas’ gruesome eye infection, and amazingly not seen by Russians on their TVs since the Russian government spliced in images from a dress rehearsal during the local broadcast.

A meme was created…

And then there were t-shirts…

And then there was this brilliantly executed (but fake) ad for Audi, with the “asterisk” next to copy that says “when four rings is all you need.”

So does the use of this gaffe on products and in advertisement to promote products or services violate the USOC’s exclusive rights in the rings as described in 36 U.S.C. 220506?  Perhaps not.  The statute specifically describes the symbol as “consisting of five interlocking rings.”   Not two rings, not four rings, not five rings spaced apart from one another – five interlocking rings.  While courts have weighed in differently on trademark fair use for parodies, it is doubtful that this use confuses the consuming public into assuming source or sponsorship by the Olympics.    So it is possible that this could be one of the few instances of fair use for the “Olympic rings.”

What do you think about the Olympics’ unique rights in their mark over other brand owners?  Do you think those rights are fair?  Are there other marks that you think deserve similar protection?

 

The U.S. government released a final version of standards intended to help companies better defend against cyber attacks. The question remains whether the private sector will voluntarily adopt these measures. The standards include broad benchmarks for companies to measure the effectiveness of their cyber defenses.

While knowledge of what to shoot for is good, some companies have said the standards alone do not go far enough to curb the problems associated with cyber attacks. Companies are looking for incentives to adopt these standards such as limiting shareholder suits when security breaches occur.

Most would agree that the standards are a step in the right direction. But a cybersecurity law is needed.

 

– Brent Carlson-Lee 

Dumb Starbucks opened in Los Angeles last week serving Dumb Frappuccinos and Wuppy Duppy Lattes. As I read the article, I scrolled back to the topic to make sure I wasn’t reading The Onion. Sure enough, I was reading the Los Angeles Times. This Dumb Starbucks was real, and Starbucks was “looking into it” according to a company spokesperson.

Clearly Dumb Starbucks wasn’t attempting to fly under the radar while profiting off the Starbucks name as evidenced by their active @DumbStarbucks twitter account. And the fact they weren’t charging customers for coffee.

So what is this all about?

It turns out it was a parody art project by Nathan Fielder who has a show “Nathan For You” on Comedy Central.

Viacom and Comedy Central issued a statement saying they “take intellectual property rights seriously, and also recognize the important constitutional protection afforded to expressive works characterized by social commentary. The episode relating to “Dumb Starbucks” constitutes protected free expression.”

Does it?

MillerCoors is currently running this Lite Beer ad, promoting the limited edition original can, and taking credit for inventing the light beer category, way back in 1973.

It is a great reminder that despite Miller’s determined and long-protracted litigation over its attempt to own the word LITE as a trademark for beer, in the end, it was unsuccessful because the misspelled word LITE was found generic — along with the correctly-spelled word LIGHT — for a type or category of beer, namely, low calorie beer.

What MillerCoors does own — as a federally-registered trademark — is the visual representation of the word LITE in the unique script to the right (with the generic word LITE disclaimed):

With the phonetically identical words LITE and LIGHT generic for low calorie beer, and part of the public domain for anyone to use, it isn’t surprising that others have gotten into the market with their own federally-registered versions of the misspelled LITE category term for beer: Falstaff Lite, Lite My Fire, Mike’s Lite, Arctic Lite, Lite is Good, and Duff Lite.

So, if you can’t legally own the category term, maybe you can take credit for inventing it.

Marketing types, I ask you, how much is that credit worth to a brand?

Enough to make your main competitor spell the word correctly?

Trademark types, can you think of other similar examples?

Despite watching a lot of Olympics coverage, no I haven’t picked up Russian or another Eastern European language yet.  Translation:  is going backwards a new ad trend?

I have been noticing a surprising trend towards using backwards video play.  Take for instance these examples:

TD Ameritrade ad featuring Olympic speed skater  J.R. Celski (Goodby Silverstein & Partners – interestingly TD Ameritrade started a search for a new agency in January prior to the Games)

 

Toyota ad (Saatchi & Saatchi)

I have to admit, after watching guys ski down a hill at 80 mph or skate in circles from the confines of my couch, an ad in reverse video is a bit nauseating (especially the ones featuring the Olympic athletes).

It’s notable that  reverse video is part of the ad creative for a company focused on your financial future like TD Ameritrade and a car company with the slogan “Let’s Go Places”.  Conceptually sure it takes a lot of work or activity in your past to get where you are today, and the ads have people like me talking, but what do you think of this trend?

Maybe they’ve all been thinking backwards since listening to Seth Godin’s thinking backwards talk.

Most people likely know that the Los Angeles Angels are a baseball team. But did you know they are also a blood bank? Me neither! But according to a filing with the U.S. Patent and Trademark Office (USPTO), it appears that the Angels are, or at least claim to be.

At issue are two pending applications to register the marks ANGELS FOR LIFE and PLATELET DONORS ARE ANGELS FOR LIFE, both for use in connection with “promoting the donation of blood by means of arranging and conducting incentive reward programs” in Class 35 and “blood donation services, namely, blood bank services” in Class 44.

The Angels have opposed both applications, relying on a number of registrations for printed materials, bags, clothing, and entertainment services. Interestingly, the Angels also claimed prior common law rights in connection with “blood donation services” and “promoting the donation of blood.” It turns out that the Angels have allowed local hospitals and related medical entities to conduct blood drives at the stadium, along with offering prizes for donating blood.

The issue brings up an interesting question of what level of use is required in order to develop common law rights. Is the fact that it occurs at the Angels stadium sufficient? Does the fact that UC Irvine Healthcare ran the clinic mean that the public would have associated the blood donation services with UC Irvine Healthcare, rather than the Angels?

If this use is sufficient to establish rights in connection with blood donation services, what else can the Angels claim? Restaurant services are obvious, I mean, they do sell hot dogs. I’m sure there is a first aid kid somewhere, too, so medical clinic services sound alright. Transportation services, check. Security services? Sure. Do ATMs and providing change at registers count as banking or financial services? Sure, why not.

All of this begs the question, why do the Angels care?  If the applicant had also applied for use of the ANGELS FOR LIFE mark in connection with clothing, I’d understand. There could be some potential for confusion as to endorsement or affiliation with that use.

Given that the Angels are going after blood donation services, one would expect that they have an even more aggressive approach to marks that are registered for goods that coincide with their federal registrations, like clothing. However a quick search of the register reveals a number of live marks incorporating the term ANGELS in connection with clothing, including US ANGELS & Design, ANGELS ARE EVERYWHERE, ANGELO ANGELS, ANGELS AT WORK, ANGELS SO SWEET, TREY’S ANGELS, SUNANGELS & Design, and many more.

I’m not sure how the Angels can ignore all of these other marks that are arguably more similar in commercial impression for use in connection with more related goods. Perhaps the club has determined that the term ANGELS is diluted for clothing but wants to prevent this from occurring with other goods or services. Yet if such minor variations are sufficient to avoid a likelihood of confusion for identical goods, how can similar variations not be sufficient for promoting blood donation services? Especially for the PLATELET DONORS ARE ANGELS FOR LIFE mark.

Most attorneys would agree that an enforcement program is key to protecting a client’s marks. However it isn’t sufficient to merely send out demand letters once a month or oppose an application occasionally. In order to be truly effective, an enforcement program requires substantial planning. You need to be aware of the extent of your client’s trademark rights and any limitations based on third-party uses. Once you have that knowledge, you can create an enforcement strategy to protect your client’s current rights, identify the buffer zone that you need to defend to prevent your client’s rights from shrinking, and also identify potential areas of expansion based on your client’s business plans. If a particular area (identical marks or closely related goods/services) isn’t worth defending consistently, it isn’t worth defending at all. And even big businesses don’t like to waste money. That’s money that the Angels could be spending on trying to buy a world series the services of a highly sought-after free agent!

For the sake of full disclosure, I guess I should admit that I still haven’t gotten over the Angels defeating the Twins in the 2002 American League Championship Series. I wasn’t particularly happy when they signed Torii Hunter, either. I guess it’s just an old fashioned blood feud…