— Randall Hull, The Br@nd Ranch®

In August 2012 I wrote about Sanrio’s well-known brand, HELLO KITTY and its appearance on customized assault rifles, as an example of unfortunate brand association.

To paraphrase the late Ronald Reagan, “Here we go again.”

This September, I guess just in time for the fall drinking season, HELLO KITTY introduced a six-pack of tropical fruit flavored beer in China and Taiwan. And this is not Sanrio’s first “purrambulation” into adult beverages. HELLO KITTY branded wines were licensed in Asia, Europe, and the United States.

It is a true each culture has it’s own boundaries of acceptability and logical brand associations, and HELLO KITTY beer, as incongruous it may seem to American branding practices, is not the first instance of the bow-bedecked feline gracing products for adults.

For example, HELLO KITTY Sephora cosmetics, HELLO KITTY Hanky Panky intimate apparel — not for little girls, and the HELLO KITTY Smart Car Wrap. And, as I mentioned in the last blog, HELLO KITTY was a Valentine’s Day “Special Parfait” at Hooters Tokyo and even rolled KISS HELLO KITTY toilet paper.

According to an ABC News article, it is not unusual for adults in Asia to accept the “kawaii” kitty on products far from the children’s aisle. HELLO KITTY is approaching middle age — 40 years old in 2014 — so it appears Sanrio wishes to reach the customers that have grown up with the brand.

It seems a reasonable brand manager would not want a highly recognizable child-centric brand associated with an alcoholic beverage. I find this a ready-made situation for brand dissonance and a bit troubling for parents of youngsters.

If the strategy is to expand the brand to adults as well as maintain its preadolescent market, how do you compartmentalize the adult side so the iconic kitty isn’t encouraging under-aged drinking?

Brand channels are not that discrete and the strategy ignores the desire of children to emulate the acts of adults. Beside the fact that the tropical fruit flavors in colorful cans adorned with HELLO KITTY are more reminiscent of sodas than beer. “Look Daddy, the cute kitty can makes me happy — and dizzy, too!”

In brand proliferation the what, where and when should take precedence over omnipresence.

To this brand practitioner a HELLO KITTY brewski is too discordant and fraught with risks for a cuddly pop icon brand seeking to be venerable in its middle age.

Just what are they sipping over there at Sanrio?

As many anxiously await the Trademark Trial and Appeal Board’s (TTAB) decision in Blackhorse v. Pro Football, Inc., a trademark cancellation action seeking to revoke six federal service mark registrations containing the R-Word (issued between 1967 and 1990), the pressure is mounting for the NFL team located near our Nation’s Capital to stop postponing the inevitable: A name change.

Change would be good. It is worth noting the team has enjoyed only six winning seasons since the original trademark challenge on disparagement grounds was filed more than twenty years ago, on September 10, 1992, in Harjo v. Pro Football, Inc.

Although he has vowed otherwise, more and more are realizing the time is long overdue for the current owner of the Washington Redskins to engage a naming firm and creative design team to retire the racial slur and craft a new name and visual identity for the football club. In addition to the mountain of evidence before the TTAB demonstrating the offensiveness of the name, earlier this year ten members of Congress introduced legislation and called for a name change, as did the Oneida Indian Nation, and several prominent writers will no longer use the term when reporting about the team.

Most recently, President Obama weighed in on the issue last Friday, indicating if he owned the team, he’d “think about changing the name,” since the name offends “a sizable group of people.”

The Blackhorse decision could be rendered any day, week, or month now, as oral argument at the final hearing was completed on March 7, 2103, more than 8 months ago. Bloomberg recently posted the video of an informative interview with counsel for the Native American petitioners, explaining the details of what is at issue in the case.

What has not gotten any attention — that I’ve seen anyway — is the quiet behind the scenes activity at the USPTO, demonstrating the USPTO’s consistent (and in my view, correct) position that the term REDSKIN (in singular or plural form) is not suitable subject matter for federal registration as it “may disparage Native American persons” in violation of Section 2(a) of the Lanham Act, as illustrated by this excerpt from a 2011 registration refusal of the term in connection with computer software:

“The  attached dictionary evidence shows that “REDSKIN” is a disparaging slang term  for a Native American.  The American Heritage® Dictionary of the English  Language (2009) defines “REDSKIN” as “offensive slang” that is “[u]sed as a  disparaging term for a Native American”; Webster’s  New World College Dictionary (4th ed. 2010) defines “REDSKIN” as  “an American Indian: now considered by many to be an offensive term”  (see attachments from http://education.yahoo.com/reference/dictionary/entry/redskin and http://www.yourdictionary.com/redskin).”

The only exceptions made to this rule understandably have been when the context of the use relates to peanuts, potatoes, or beans — not Native Americans or Native American imagery.

Indeed, every one of the Washington football team’s applications (containing the R-Word) filed since the original challenge in 1992 have been refused on the same disparagement ground, and the team either has elected to voluntarily drop them or have them suspended pending a final outcome in the pending cancellation action.

For example, back in August 1992, about a month before I filed the original Petition to Cancel in the Harjo case, contesting all of the team’s then-existing federal registrations for marks containing the racial slur, the team filed a new application to cover goods as opposed to services, for the first time. It sought registration of WASHINGTON REDSKINS for all kinds of clothing in Int’l Class 25 and “trading cards, posters, magazines and books regarding football, postcards, calendars, wrapping paper, paper gift boxes, paper stickers, paper napkins, paper towels, posterbooks, notepads, paper hats and greeting cards” in Int’l Class 16.

Then, in August 1999, the team filed an application to register the REDSKINS BROADCAST NEWORK logo for “production and broadcast of radio and television sports and human interest programs.” Both of these applications were refused registration under Section 2(a), both had a Letter of Protest granted with nearly 500 pages of evidence showing the offensiveness of the term, yet both were suspended under Harjo and remain suspended pending the outcome in Blackhorse.

Even the NFL’s application to federally-register a vintage Boston Redskins logo suffered the same refusal, but the application remains suspended pending a final outcome in Blackhorse. And, as was the case in the two team applications referenced above, a successful Letter of Protest also was granted back in 2010, as to the Boston Redskins logo, providing over 500 pages of evidence as to the disparaging nature of the R-Word.

So, if the Examining Corps at the USPTO already has made up its mind on the issue, you might ask, why have those refused applications been allowed suspension for years pending a final outcome in the Harjo and Blackhorse cancellation proceedings? After all, the Blackhorse cancellation proceeding will answer the question of whether the evidence shows that the team’s marks containing the R-Word were in violation of Section 2(a) at the times of their registration — between 1967 and 1990.

To the extent the NFL and the Washington Redskins football club believe that “kicking the can down the road” — on the initially refused but pending and suspended applications — was or is a good strategy, the growing support for a name change would seem to indicate otherwise. Even in the unlikely event the TTAB declines to order cancellation of the registrations containing the R-Word, and all appeals are exhausted leaving the same result, such a result would not preclude the USPTO from finding the R-Word inappropriate for federal registration today and tomorrow, and the next day.

And, in the unlikely event the USPTO were to be somehow persuaded by the team or the NFL to eventually publish those marks for opposition, they certainly would be opposed, and those opposition proceedings would not require any historical evidence (e.g., in the 1967 – 1990 time frame), because the issue would be: Do the marks consist of or comprise matter that may disparage Native American persons? Now, not then.

So, where do you come down on this issue?

Do you have any creative naming ideas for the team’s inevitable name change?

For prior coverage of this issue on DuetsBlog, see:

UPDATE: Bob Costas of NBC Sports on R-Word (Sunday Night Football, October 13): “It’s an insult, a slur.” See also: http://www.nbcsports.com/nickname.

ADDITIONAL UPDATE: David Gregory of “Meet the Press” on Monday morning’s Today Show (October 14): On changing the R-Word  team name, “it may be just a matter of time.”

– Anjali Shankar, Attorney –

In 1980, Robert De Niro starred in an Oscar-winning boxing movie, “Raging Bull.” A suit has been brought by Paula Petrella, whose father, Frank P. Petrella, wrote the book and screenplay for the movie. Frank Petrella and his collaborator, boxer Jake LaMotta, assigned the rights to their book and screenplay to Chartoff-Winkler Productions in 1976. Two years later, in 1978, United Artists and MGM acquired the rights to the film. Frank Petrella passed away in 1981 and reverted his copyrights to his daughter.

In 2009, Paula Petrella sued MGM, alleging, among other things, copyright infringement, for creating and distributing copies of the movie. She claimed that she had renewed the copyright to Frank’s work after the initial 28-year term had expired in 1991. Both the federal district court and the U.S. Ninth Circuit Court of Appeals rejected her claims on the grounds that her suit was brought too late. The lower court noted that Petrella “was aware of her potential claim (as was MGM) since 1991, when her attorney filed renewal applications for the 1963 screenplay [and] [s]he did not file her lawsuit until 18 years later, in January 2009.”

The district court held that the copyright infringement claim was barred by the doctrine of laches. The Ninth Circuit agreed while acknowledging that the statute of limitations for copyright claims is three years. The court noted that in order to establish a defense of laches, MGM would need to prove that (1) the plaintiff delayed in initiating the lawsuit, (2) the delay was unreasonable, and (3) the delay resulted in prejudice. The court agreed with the district court that Petrella delayed initiating the lawsuit and that Petrella could not demonstrate that the delay was reasonable. On the issue of prejudice, the court found that MGM expended a substantial amount of financial and other resources distributing, marketing, advertising and promoting the film. The court held that MGM had demonstrated prejudice to sustain its laches defense. The court thus held that Petrella’s copyright infringement claim was barred by laches and refused to reach the merits of the case.

On October 1, 2013, the U.S. Supreme Court agreed to decide the appeal. In requesting that the Supreme Court grant review, Petrella’s lawyers said that the Ninth Circuit’s approach conflicted with the separation of powers doctrine, stating that “Congress, not the courts, is responsible for weighing competing interests and policy considerations and setting a limitations period.”

As we all know, The Motion Picture Association of America (MPAA) has long taken an active role in the debate regarding the advantages and disadvantages of traditional midwifery and modern medical views regarding childbirth. That’s what Rosemary’s Baby was all about, right? Well, the MPAA filed an amicus brief yet again in a lawsuit between a doctor and a midwife, Tuteur v. Crosley-Corcoran, a pending case in the District of Massachusetts.

Tuteur is a former physician and Crosley-Corcoran is a midwife. They are also both avid bloggers, and it also appears that they do not think highly of each other of nor each other’s views. The two exchanged criticism of each other’s opinions on their respective blogs, The Skeptical OB and The Feminist Breeder. The exchange resulted in Crosley-Corcoran posting a picture of herself giving Tuteur a hand signal, or as the court described it, the digitus impudicus.  Obviously the only appropriate response at that point was for Tuteur to repost the image on her own blog. Crosley-Corcoran then filed a takedown notice pursuant to the Digital Millennium Copyright Act (DMCA) claiming infringement. Thus, the other explanation for the MPAA’s involvement becomes clear. Tuteur sued, alleging that Crosley-Corcoran had made material misrepresentations in her DMCA take-down notices, exposing her to liabililty under Section 512(f) of the DMCA. The MPAA would like to make sure that the subjective test for material misrepresentatives remains as subjective as possible.

I’ve previously discussed potential liability under the provision here. The crux of the debate is whether an individual or entity must consider ifa particular use is protected under the fair use doctrine prior to filing a DMCA takedown notice. The Massachussetts district court joined those courts that have answered in the negative, although the court ultimately denied the Motion to Dismiss. A number of other commentators have provided thoughtful analysis on the case, here, here, and here. The legal issues surrounding liability under 512(f) are likely to stay in the news thanks to an Australian record company’s failure to google the name of their target. Lawrence Lessig, professor and author of many books on copyright law, filed a lawsuit under 512(f) after the company filed a DMCA takedown notice over Lessig’s video lecture discussing fair use.

Certainly there are a lot of interesting legal issues in these cases. Most sides also agree that the process can be (and often is) abused by some individuals and entities. One of the important lessons to take away though is that the rules we enact affect everyone – not just Universal Music Group and Sony Records. The rules will apply to both David and Goliath. Do we really except Ms. Crosley-Corcoran to consider all potential affirmative defenses prior to filing a takedown notice? We can expect individuals to view the work, but I’m not sure we can expect everyone to have an understanding of the often malleable concept of fair use.  While we might all cheer when Lessig sues the Australian record company, or when the single mom sues Universal Music Group, how should we feel when it is David suing David?

The lesson applies equally to legislation and other attempts to curb perceived abuses of trademark law, or “trademark bullying.” The proposed legislation for Minnesota (discussed here) defined trademark bullying as:

“[T]he practice of a trademark holder using litigation tactics in an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark holder.”

While people may have the best intentions to encourage small businesses and individuals not to back down from bullying tactics, it is difficult to craft legislation that only applies when it feels right. Any laws need to be written carefully because not only will David use them against David, but Goliath can use them against David, too.

– Derek Allen, Attorney –

I just finished reading Chuck Klosterman’s I Wear the Black Hat, a book that deals with what we mean when we call someone a villain.  By covering examples as diverse as Joe Paterno, Bernhard Goetz, O.J. Simpson, N.W.A., and Chevy Chase, the ultimate conclusion of the book is that a villain is someone who “knows the most, but cares the least.”  The sole exception to this rule is the villain of all villains, Adolf Hitler.  He cared a lot (in this example, about his World of Warcraft account being hacked), but didn’t know the most (he failed to learn one of history’s great lessons — don’t try to invade Russia in the winter).

The concept of villainy is a familiar one to the law.  A prime example of a legal villain is the “trademark bully,” a subject that has been covered extensively on this blog (see here, here, and here).  These are people who know the most because they are able to use their knowledge of the trademark system to inflict pain on others, but care the least because of their willingness to inflict the aforementioned pain. 

I’d be lying if I said I hadn’t heard clients sing a similar tune in other contexts.  They might feel wronged in some way, but not in a way that is likely compensable under our legal system.  When this happens, it’s not uncommon to hear them say that they have more resources than the person who wronged them and they’re happy to drag everyone through protracted litigation, with a high likelihood of losing, because they know that they can handle the legal fees better than the person on the other end of the lawsuit.  These clients fit Chuck Klosterman’s definition of a villain: they know the most (they hired Winthrop & Weinstine, after all!), but care the least.  (I should add that these clients think — perhaps quite rightly — that the other person is the true villain, so my example might be a pot-meet-kettle situation.)

My advice to those out there who know the most, but are considering caring the least, is to make that decision with your eyes open.  As the list of Klosterman’s villains indicates, villains are often very successful.  Sometimes it’s because of their villainy — N.W.A. and Andrew Dice Clay are good examples from the book — and sometimes it’s in spite of their villainy — Joe Paterno and Muhammad Ali fall into this camp.  So, being a villain might be the best thing for your business or you personally.  But just know that if you’re perceived as knowing the most, but caring the least, the outside world is inclined to view you as the villain.

 

Sometimes if you blink you can miss a trademark infringement suit from beginning to end. Well, ok, that’s probably a slight exaggeration.

In case you missed the news reports from June, Accenture sued rival Deloitte for trademark infringement, asserting that Deloitte’s use of the slogan HIGH PERFORMANCE.AMPLIFIED. infringed on Accenture’s prior federally-registered rights in HIGH PERFORMANCE. DELIVERED. A copy of the complaint is here.

To the extent you saw the news and have been wondering about status, well it’s over, as of a few weeks ago. A copy of Accenture’s voluntary dismissal of the action is here.

Presumably Deloitte figured time is money and decided to “fastforward” getting back to business without the Amplified slogan, but the exact terms of the resolution have not been disclosed.

One term that is probably safe to assume was included is a confidentiality provision — no press releases about the resolution can be found on either of the consulting firm’s websites.

Recently, a Seventh Circuit Judge penned an article over at Law360 setting forth her belief that the Federal Circuit should no longer have exclusive jurisdiction over patent appeals.  For those of you unfamiliar with our Federal court system, the way it works is that appeals for your federal district court are typically heard by an appellate court that covers all appeals for your particular geographic area.  Patent cases are unique in that all appeals are heard by the Federal Circuit Court of Appeals located in Washington, D.C.  While I can’t recall the exact reason, I believe it was originally based on the thought that it would be helpful to have  a court that developed a level of particular expertise in patent law.

I tend to agree with the author, Judge Diane Wood.  Change should happen.  I think there are a number of problems with the Federal Circuit’s exclusive jurisdiction.  First, if their goal was to generate a uniform body of case law that parties could rely on to accurately and meaningfully assess the risks of litigation, they’ve failed miserably.  For anyone that’s practiced in patent litigation, its almost comical how easy it is to find federal circuit case law on both sides of patent issues.  Second, the importance of patents in our society has almost led to the Federal Circuit having too much power.  While my evidence is anecdotal as opposed to analytical, it seems that patent litigation is now spawning the most expensive, high stakes litigation in the country.  When you start talking about cases worth billions of dollars, they are almost always patent cases.  I don’t think it was ever intended or expected that a single federal appeals court (with the exception of the Supreme Court who does not have to hear every appeal filed before them) would wield so much control.  I think the benefits of dispersing that power far outweigh the risks.

We continue to anxiously await the Trademark Trial and Appeal Board’s decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, especially given the Board’s recent genericness ruling in Sheetz of Delaware, Inc. v. Doctor’s Associates, Inc., finding FOOTLONG generic for “sandwiches, excluding hot dogs.”

The question at issue in Frito-Lay’s trademark challenge to registration by Princeton Vanguard is whether PRETZEL CRISPS is generic for the goods depicted above — “pretzel crackers” according to Princeton Vanguard.

As you might have imagined, this high-stakes trademark dispute involves a real battle of each side’s trademark survey experts, both attempting to show how the relevant consuming public understands “pretzel crisps.” Both sides agree that the “primary meaning” controls, but they appear to disagree on whose views are relevant to the determination.

As you will recall from previous writings here, the “primary meaning test” amounts to a “majority rules” test of genericness. In 1938 the U.S. Supreme Court ruled “shredded wheat” generic for a type of cereal in Kellogg Co. v. National Biscuit Co.:

“But to establish a trade name in the term ‘shredded wheat’ the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. This it has not done.”

The survey commissioned by Frito-Lay found that fewer than half of respondents (41%) thought “pretzel crisps” was a brand name and an equal percentage of respondents (41%) thought “pretzel crisps” was a generic product category name, and the remaining respondents (18%) were unsure.

Princeton Vanguard argues that adequate “gate-keeping” was lacking and more respondents should have been excluded from the survey, especially those unable to demonstrate they knew the difference between certain brand/generic examples used in the screening questions. The more exclusive survey commissioned by Princeton Vanguard found that over half of respondents (55%) thought “pretzel crisps” was a brand name, less than half of respondents (36%) thought it was generic, and the remaining 9% were unsure.

The parties appear anxious for the Board’s decision as well. Within the last few weeks, both sides have sent letters to the panel of TTAB judges who heard oral argument back in July, explaining how the Board’s recent precedential decision in Sheetz works to their favor. Here is Princeton Vanguard’s letter, and here is Frito-Lay’s response letter.

Yet, in the end, after all the slicing and dicing of the competing surveys and the supporting testimony from the survey experts — similar to the result in Sheetz where the Board highlighted and showed a picture of an early generic use by Subway depicting Footlong in the same manner and style as 6″ Sub and Wrap — my prediction is that Princeton Vanguard will be haunted by a different picture that is also worth a thousand words (or at least one that Princeton Vanguard doesn’t want to hear):

Frito-Lay characterizes this image in this way:

For “nearly six years, Applicant presented ‘Crisps’ as a generic term in the nutrition facts box. Applicant then substituted ‘Crackers’ for ‘Crisps’ using the same typeface, size, position, and capitalization, indicating to consumers that the two terms are synonymous.”

What do you think, is this another example of legal and marketing types not being on the same page sufficiently early to best position a designation for trademark protection?

The latest shoe dispute involves AirWair International Ltd. (“AirWair”), who manufactures the Dr. Martens shoe brand, and an alleged knock-off being sold by Cels Enterprises, Inc., d/b/a Chinese Laundry (“Chinese Laundry”) under the “Dirtiy Laundry” mark and brand.  You may have read about other trademark disputes involving Louboutin shoes at DuetsBlog here and here.

Although I have a couple of Chinese Laundry brand dresses and a yellow pair of sandals, I do not have a pair of Dirty Laundry shoes in my closet.  They may not be my style (See pictures comparing brands below).

The Complaint alleges that Chinese Laundry has copied the Dr. Martens trade dress that features yellow stitching in the welt area of the sole and a two-tone grooved sole edge and a fabric heel tab.  The AirWair company holds many registrations for Trade Dress for the Dr. Martens shoes.  Specifically, the Complaint contains claims of trademark infringement, false designation of origin, trademark dilution, and California statutory claims.

How similar do you think the two boot brands are?   Are you aware of any other shoe wars?  I am sure it will not be the last.

– Derek Allen, Attorney –

As we sit here today, with our cities laying in decay and the collective psyche of our nation’s children having been damaged beyond repair, we can surely point to the event that started it all: the time rap sort-of-star M.I.A. flipped the bird during the Super Bowl halftime show.  Just kidding — I, like anyone else who was watching, either didn’t notice it or forgot about it as soon as a bigger problem emerged.  Like, I’m hungry, but the fridge is all the way over there and if I get up I might miss some of the game or one of the commercials.

But the NFL seems to have cared quite a bit.  Based on a recently unearthed arbitration filing, the NFL sued M.I.A. for $1.5 million because her “offensive gesture [was] in flagrant disregard for the values that form the cornerstone of the NFL brand and the Super Bowl.”  For those who are curious, this would be the same NFL that currently features on the frontpage of its own website an article asking whether a player who lost a fingertip during a game and CONTINUED PLAYING this past weekend did enough to make him the toughest player the sport has ever seen.  It’s also the same NFL that recently settled a lawsuit claiming that it covered up what it knew about the effect of head injuries to players to the tune of $765 million, which many believe was a payoff to shield the public from finding out that the NFL actually knew about the dangerous effects of concussions far before it has claimed publicly. 

Unsurprisingly, M.I.A herself and an apparent majority of those in the media who have commented on the suit seem to think that either the league should have bigger fish to fry or are impressed that the league can keep a straight face when it claims to possess such a wholesome reputation that a two second clip during a halftime show has caused it seven figure damages.

So what’s the lesson?  In my mind, it’s one that lots of clients (and especially well-known ones) should learn.  One of the supposed benefits of agreements that include arbitration provisions is that disputes will be litigated privately, as opposed to the public nature of lawsuits filed in the court system.  But, as the NFL learned here, arbitration proceedings tend not to stay secret, especially when they involve high profile parties.  The best bet for potential litigants is to assume that any lawsuit they file, in court or otherwise, is going to become known.