It appears I have overlooked highlighting to our readers an upcoming opportunity to advance and hone your trademark knowledge and perspective. Here is a link to the pdf brochure for the event.

On Wednesday March 2, starting at 1:15 PM (after the conclusion of the morning session on Introduction to Trademark Law), in downtown Minneapolis, we’ll be discussing these interesting topics and hearing from several dynamite speakers, including Jackie Leimer of Chicago-Kent Law School (former President of INTA and former Chief Trademark Counsel of Kraft), Paul Mussell of Wells-Fargo, Mark Masnick of the famed Techdirt Blog; Craig Krummen of Winthrop & Weinstine, Ann Wessberg of Target Brands, Barb Grahn of Oppenheimer, Jack Clifford of Merchant & Gould, and Brad Walz of Winthrop & Weinstine:

  • "Strategies for Dealing with ‘Trademark Bullies’"
  • "Update on Online Trademark Issues, Moblie and Social Media"
  • "Trademark Due Diligence in Mergers & Acquisitions"
  • "Navigating Private Label and Store Brand Disputes"

For those of outside the Minneapolis area, Minnesota Continuing Legal Education is also making the "Strategies for Dealing with ‘Trademark Bullies’" panel discussion available via live webinar.

We hope to see you in Minneapolis on March 2 or join us via live webinar!

—Joy Newborg, Winthrop & Weinstine, P.A.

Over the years, several businesses have tried to gain a competitive edge by associating their products with famous celebrities… but without obtaining licenses. There has been the “Bogart” collection of furniture sold by Ashley Furniture (presumably relying on Humphrey Bogart’s name to sell a common looking line of couches and recliner) and the “B Davis Dress” sold by Stop Staring! Designs (presumably relying on Betty Davis’ name to sell a vintage dress). More recently, the company HendrixLicensing.com sold various items, including apparel, posters and novelty items, using Jimi Hendrix’s name and image. Such business were sued, with claims that rights of publicity were violated. What makes this cluster of lawsuits more interesting, though, is that all the celebrities are dead.

So should the right of publicly extend beyond the grave? One side of the argument is that the celebrity through his or her personal efforts became famous, and their families should be able to continue to benefit from such efforts even when the celebrity passes on. And is it really fair that another party benefits from capitalizing on the celebrity’s fame by falsely implying an association simply because the celebrity is now dead? The other side of the argument is that if such rights of publicly are extended to a deceased person, it would stifle creativity, restrict rights of others to sell legally obtained items, interfere with copyright law and violate First Amendment rights to free speech.

Recently, the federal judge in the Hendrix case found that the Washington’s statute which extended rights of publicly to deceased celebrities (the statute that Hendrix’s heirs were relying on) was unconstitutional. There are certain details which led to this decision that you would know about. First, Washington did not even have a right of publicity statute until 1998, long after Hendrix died. Secong, the revised WA statute extended the right of publicity to deceased individuals or personalities retroactively , meaning to those who died before the right of publicity even existed in WA. Third, the revised WA statute provided that right of publicity applies even when the celebrity did not live or die in the State of Washington. The statute appears to try and override the laws of other states which do not provide the same generous rights granted under WA’s statute, with its history showing it was specifically drafted to assist the Hendrix’s heirs in their claims. By finding the WA statute unconstitutional, Hendrix’ heirs are relegated to the rights granted under NY law, where Hendrix lived and died, which does not grant the heirs continuing rights of publicity.

Even if the Hendrix case goes to the Supreme Court, there will probably be a lot more heated discussion on this subject. What are your views? Should rights of publicity extend beyond the grave? Should WA (or any other state) be able to extend rights of publicity to those who have no connections with the State?

Many visitors traveling to Times Square since 2002 have caught a glimpse of the Naked Cowboy®, a/k/a Robert Burck. He sings and officiates weddings (charging $499 and up). He even ran for the Mayor of New York at one point (although he ended up withdrawing from the race). For those of you who have not travelled to the Big Apple, the Naked Cowboy also appears on television in venues ranging from Sunday football pregame shows to “The Apprentice.” Mr. Burck, a savvy businessman, secured a trademark for the Naked Cowboy. He dresses (or undresses) in a white hat, boots and underwear briefs. Mr. Burck also franchises this image and provides training for other would-be Naked Cowboys. With an income estimated at $5,000 an hour from tourist donations alone, and adding to that revenue from souvenirs, franchise fees and appearance fees, the Naked Cowboy brand is valuable. Mr. Burck vigilantly protects his trademark, likeness and brand. 

Naked Cowboy, doing business as Naked Cowboy Enterprises, previously sued the Naked Cowgirl. There were allegations that her vulgar hand gestures (i.e., giving the finger) harmed his valuable trademark and image. The parties are currently in settlement discussions.

Mr. Burck’s company also took on America’s favorite candy company. When Mars Company put up a billboard in the Naked Cowboy’s backyard (i.e., Times Square) featuring a cute M&M candy wearing the famous garb, the Naked Cowboy sued. Mars defended the lawsuit based on the First Amendment right to parody Burck’s character. Before there was a resolution on the merits, the candy company and the Naked Cowboy reached a settlement.

The latest target for Mr. Burck’s trademark enforcement is daytime television. It’s notJames Franco’s psychopathic artist character “Franco” on “General Hospital” (although wearing this garb may be an idea for the Oscar nominee/host to try). Instead, CBS and the producer of “The Bold and the Beautiful” are being sued over the character Oliver, who dresses as the Naked Cowboy on the show. To add insult to injury, the daytime “Naked Cowboy” was referred to as a “fool” on the show. Specifically, the Naked Cowboy has sued CBS and the producer of the show for trademark infringement, false designation of origin passing off and false advertising under the Lanham Act, dilution of the mark, and false description along with various state law claims. When they file their answers in the case, CBS and the producer of “The Bold and the Beautiful” may raise the First Amendment right to parody defense that was raised by the Mars Company. Only time will tell as to whether the Naked Cowboy can prevail in his suit against the daytime drama.

–Susan Perera, Attorney

It was time for a new kitchen faucet at our house and after opening the box of our new Delta faucet we noticed this image on the side panel of the box.

The registration for this kitchen faucet product configuration mark (shown farthest to the right on the box) can be seen here.

As we have discussed previously, product configuration marks protect the distinctive design or shape of a product.

Product configuration marks generally require a showing that the configuration has acquired distinctiveness (serves as an identifier of source ) in order to be registered. In this case, that means the configuration above identifies Delta Faucet Company

Does it? Well, how about an exciting round of “Spot that Spout” to find out?

Below are a few different faucets available at your local home improvement store.  So who makes these faucets, are they all Delta? And if not are they distinguishable from Delta’s product configuration registration?

Answers after the jump…

 

 

Continue Reading Spot that Spout

Gentle reminder: This is your chance to get a solid introduction to trademark law and what some call trademarking.  This amazing half day program on March 2, 2011, is being held in downtown Minneapolis, a pdf of the brochure is here.

The speakers for the 9 AM CST morning session include:

I’m thinking that this is a perfect program for those new to the trademark field, advertisers, creatives, marketing types, business owners, and any other who might want to dispel any myths they may have heard about trademarks, trademarking, and the protection of brands.

Special bonus for those who register online, here, Minnesota Continuing Legal Education is offering a $5 Starbucks gift card to DuetsBlog followers (coupon code is 5starbuckstm).

We hope to see you there at the live program on March 2 or the video replay on March 15.

—George Fiddler, Client Relationship Manager, Fast Horse Inc.

Last Saturday night I watched the entire 2011 Taco Bell Skills Challenge, an NBA All-Star competition that puts some of the league’s best point guards through an obstacle course of shooting, passing and dribbling. I somehow turned the tube off thinking about trends in modern crisis communication strategy.

How did this happen? I noticed that a couple of the participants in the basketball drill seemed to have a game plan in place intended to preserve energy, whereas others just appeared content on figuring out their strategy as they went. This then made me think more deeply about the proactive approach that the Taco Bell marketing team took to a disparate recent challenge. Strange connection, I know, but I also happened to be eating a burrito at the time and you know how pervasive the branding is at these sponsored events – it was hard not to think about tacos.  

The aforementioned other Taco Bell–related challenge is the strategy that had to be developed after a Montgomery, Alabama–based law firm filed a class action lawsuit against the fast food chain last month. If you’re not familiar with the lawsuit, here are the lead sentences in its Nature of the Action section:

“This is a consumer rights class action challenging Taco Bell’s practice of representing to consumers that the filling in many of its “beef” food items is “seasoned ground beef” or “seasoned beef,” when in fact a substantial amount of the filling contains substances other than beef. Rather than beef, these food items are actually made with a substance known as “taco meat filling.””

I guess I didn’t notice it as much as it happened, but the approach that Taco Bell took was pretty bold. Rather than shying away from the claims or preparing a response strategy for if and when consumers come knocking, the company took the media–buying initiative and ran full-page ads proclaiming “Thank You For Suing Us."

It also made the lawsuit a focal point of its website with video responses from its CEO and links to the nutritional value of its products. Furthermore, it changed the copy in its paid–search advertising from "Taco Bell" to "Taco Bell Official Facts" about the beef lawsuit.

Surely Taco Bell’s legal folks were confident that the claims made against the brand weren’t legitimate. If the lawsuit was regarding an issue that wasn’t backed by USDA certification, then it’s doubtful the company would’ve brought the issue front and center like it did with its consumers, but it’s still fairly surprising that a major company would choose to bring more attention to a lawsuit, any lawsuit, regardless of how dubious the claims may be. Too many consumers will hear the words ‘lawsuit’ and ‘ingredients’ and make up their mind. It seems that the company realized there was potential for rampant consumer backlash and that it was best to put out the fire before much of one could get started. 

It’s been a month, but it seems like that decision was the right choice. The strategy exposed more people to the lawsuit, but the humor, confidence and transparency that the brand showed were consumer–friendly moves that might have saved an angry online outrage that can escalate in a drop of a dime (see: Kenneth Cole) from happening.

It’s interesting to imagine if this had happened with Taco Bell five years ago and if the brand would’ve taken the same approach before social media changed the communications landscape. Even if it’s out of the fear of consequence, the digital era might just be making brands become better listeners and more honest (see: Dominos). In part so I can finally get this pun out: what do you think the future holds for when someone has a beef with big businesses?

—Brent Carlson-Lee, Founder & Owner of Eli’s Donut Burgers 

The kids were at Grandma and Grandpa’s this weekend. Everything was under control at work. My wife and I could have gone anywhere, done  anything…so we decided to strip wallpaper and paint the upstairs bathroom. Before starting the job, I made the requisite trip to the paint  store where I came across a painter’s tape I had never tried.

My background as a marketer in the consumer packaged goods industry has left an indelible mark on me – I’m a label reader. Who manufactures this product? What claims are they making? Would their target consumer really care about this feature? As I was reading the package, another customer (a professional painting contractor) said to me, "I’ve been painting for 20 years and this is the best tape I’ve ever used." And as he walked away he said, "That tape makes me a better painter."

That last comment struck me as the single most powerful product endorsement I have ever heard. What more could you ask for from a product or service than for it to make you better at what you do, especially when it is what you do for a living? I can’t imagine a more resonant, ownable point of difference. Would such an on-pack claim hold legal water? Maybe not. But delighted customers are worth far more than any on-pack claim ever could be. Claims may buy you trial, but delighted customers earn you repeat – the key to long-term success in the marketplace.

At the core of any consumer promotions strategy is the concept of frequency and reach, i.e. how many people receive the message and how often. Despite the power of the message I heard in the paint store, its impact will be limited given that it reached only one consumer, one time. Imagine this conversation happened on Twitter instead, reaching hundreds if not thousands. This represents not only the power of social media but also what puts fear in the hearts of many a marketer as they cede control to consumers.

As a small business owner, I have decided to live and die by the social media sword. Eli’s Donut Burgers, a food truck that frequents fairs and festivals, quickly gained a following on Twitter and Facebook. The social media interaction was positive until an influential food magazine shared a decidedly negative review of my product on Facebook and Twitter. I could have ignored it and hoped the post would go largely unnoticed. Instead, I retweeted and posted the article on Facebook for all my followers to see.  The result? My customers loudly voiced their disagreement with the food critic. What could have been a wholly negative social media experience was neutralized and perhaps even turned into a positive one.

As another example of understanding the power of social media – but not attempting to control it – the American Red Cross recently tweeted: "Ryan found two more 4 bottle packs of Dogfish Head’s Midas Touch beer…when we drink we do it right #gettngslizzerd." As it turns out, an employee tweeted this while she THOUGHT she was logged in to her personal Twitter account.  Rather than attempt to hide  from the tweet, Red Cross tweeted "We’ve deleted the rogue tweet but rest assured the Red Cross is sober and we’ve confiscated the keys." In my opinion, this was a fabulous response. And apparently others agree as the Red Cross reportedly experienced an uptick in donations following the incident.

–Dan Kelly, Attorney

On a regular basis, we receive inquiries from clients about IP-related solicitations that they receive from third parties relating to things like renewing trademark registrations and domain names.  Typical solicitations are one-pagers with a patina of legitimacy, referencing a particular IP asset, the owner, then usually ending with the punch line of requesting a fee or payment for “registration” or some other official-sounding service.  (Example here.)

The Domain Name Strategy Blog (which you can now access at both domainnamestrategy.com and domainstrategy.com) wrote recently about a solicitation that they received from a company calling itself WIPD, an acronym for “World Intellectual Property Database.”  Some of you may know that there is a rather large organization in Europe called WIPO, or “World Intellectual Property Organization,” which is a U.N. organization that facilitates (or attempts to facilitate) an international IP system.  WIPO is a well-known and generally trusted organization in IP circles.

Below is a partial screen shot of the header on WIPO’s home page.  WIPO is the genuine article, the real deal.

 

Now here is a partial screen shot of the header from a WIPD solicitation:

 

The WIPD website is only a slightly less egregious ripoff of WIPO’s website.  Hit the jump to see those side-by-side.

Continue Reading The World is Full of Scam Artists

— Laura Gutierrez

A week or two after the Super Bowl, I’m not the only one still talking about it (our guest blogger David Mitchel discussed it yesterday). This year’s commercials did not wow me like I expected (sorry, cute Darth Vader kid). What surprised me was the lack of brand message. Sure, Doritos has edgy ads, and yes, Pugs are cute…but what does it have to do with the brand?

There were some odd ones this year. GoDaddy’s ads get stranger all the time, with its new campaign that revealed Joan River’s body (is it her real body?). You may have missed Salesforce.com’s Chatter ad (I mentioned this in my last post) with an animated Will.i.am of the Black Eyed Peas (I won’t even go there with their performance…or Christina Aguilera’s botched National Anthem…). I thought it an odd choice for a celebrity endorsement. Would the president of your company be more likely to purchase Chatter if a member of the Black Eyed Peas endorsed it? Doubtful.

So, who wins the Super Bowl of Advertising? Check out what the social world thought. “Brand Bowl,” presented by Mullen and Radian6, measured what ads Twitter users were tweeting about. Chrysler had the most buzz, most likely due to rapper Eminem, which was unexpected (he also did a spot for iced tea). Neilsen also has a ratings roll-up of the most recalled ads. From most accounts, the top three are Darth Vader kid, Eminem’s Chrysler endorsement, and the Doritos Pug ad.

A few advertisers actually damaged their brand by their message…I’m sure you’ve heard about Groupon’s terribly insensitive spots, reeling the watcher in with saving the whales…and Tibet…oh, but Tibetans make great food – buy Groupon! They’ve since pulled their ads and are hard to find on video. Sites like Triple Pundit and The New York Times’s Media Decoder have good recaps of the controversy.

If the Groupon commercials weren’t enough, advertiser HomeAway pulled their ad after watchers complained about a “test baby” getting smashed into a window. Yikes. My friend Lindsay Griffiths over at the Zen & the Art of Legal Networking blog has more “misses” of the year. And there are some good tips for not only lawyers but advertisers as well.

(You can find all the Super Bowl commercials here.)

Unrelated to the Super Bowl but along the same line, Kenneth Cole sent a promotional tweet implying that the uprising in Egypt was a response to Kenneth Cole’s new spring collection. This isn’t the first time we’ve seen that tactic used; not long ago, during the terrible fires in San Diego, a bar/restaurant used the heat of the fires as an excuse to grab a drink. The marketing community was a bit stunned. There are many effective ways to communicate a message…but are you communicating the right message? What are the implications of damaging a brand in a way that offends your audience?

Enough about that. Now for the entertaining stuff. Elsewhere in the marketing world…

A girl uses her ex-boyfriend’s photo to create a meme (find that embarrassing photo here). His mother is trying to sue for copyright infringement to remove the picture from Google. Legal types…do you think his mom has a case?

File this under the “is it legal” category: A web designer hacked a chiropractor’s website after the business failed to pay the designer. The commentary on the site was quite comical (I think it’s funny, but I’m sure the owner of the business doesn’t).

(Click here to view the image in a larger size so you can read it)

The site has since been taken down. If someone owns a domain, hires a web designer to create a site but does not pay for those services, does the designer have the right to mess with it? Another brand damaged.

Until next time…work on your brand message and remember your audience!

[Make sure to send me your favorite stories for next time! Duetsblog[at]gmail[dot].com]

This scene from the Minnesota State Fair reveals how the “About a . . . Foot Long Hot Dog” stand is a “State Fair Taste Tradition. . . .” With respect to the name, I have always believed that the “About a . . .” qualifier is lawyer-driven to avoid false advertising lawsuits if a ruler might reveal a stretching of the truth and/or the wiener unintentionally coming up short on the promised twelve inches.

Turns out, we have much more to fear in the world of “Foot Longs” than literally false trademark claims or even stubby wieners in a bun at the State Fair, so, let’s name that fear: Subway.

Yes, Subway claims to own the word “footlong” as a trademark for sub sandwiches. Now, I fully appreciate that Subway has probably spent lots and lots of money on television advertising for its “$5 Footlongs” promotion, but to claim exclusive rights in the word “footlong” for subs is ridiculous (especially when the ads themselves have multiple references to the fact the term is directed to the length of the sub), in my not so humble opinion. Let’s not forget that Lite is generic for beer.

Subway’s cease and desist letter prompted Casey’s General Store (a convenience store chain based in Des Moines, Iowa) to bring a declaratory judgment lawsuit:

“Specifically, this action seeks, inter alia, a declaration that Casey’s use of the generic term “footlong” to describe a footlong submarine sandwich, commonly referred to as a “sub”, is not a violation of any right currently owned by Subway; and it requests an order so saying and declaring that “footlong” for description of sandwiches including submarine sandwiches is generic. Further Casey’s seeks an order that Subway’s attempt to assert trademark rights against Casey’s for its use of “footlong” for sandwiches and/or restaurant services is frivolous litigation and seeks an award of damages and attorney’s fees against Subway.”

If Casey’s is right, this could satisfy the exceptional case provision of the Lanham Act, which could result in Subway being ordered to pay Casey’s attorneys fees in defending against the claim.

It appears that Casey’s aggressive response to the cease and desist letter is designed to take advantage of all the current focus and attention on “trademark bullying” — although that specific phrase does not appear anywhere in the complaint.

As you may recall, I have suggested that “there seem to be enough existing legal tools to handle a real trademark bully, namely, one that brings frivolous, bad faith, vexatious or objectively baseless litigation.” Casey’s appears uniquely poised to test this proposition.

In support of its claim of frivolity, Casey’s relies, in part, on a transcript from a 2009 Subway case where a federal district court judge in the Eastern District of Virginia indicated he thought that “footlong” should be considered generic for subs.

With respect to Subway’s pending trademark and service mark applications for “Footlong” at the USPTO, Casey’s has this to say:

Subway has sought trademark protection for “footlong” for sandwiches and restaurant services in trademark application Nos. 77/752,328 (“Footlong” for restaurant services) and 77/324,328 (“Footlong” for sandwiches). The application for “footlong” for sandwiches was approved for publication by the trademark examiner, but has not issued as a registration because there are many ongoing opposition proceedings filed by the likes of Long John Silvers, Taco Bell Corporation, Kentucky Fried Chicken, Dairy Queen, Pizza Hut, Inc., and Domino’s, just to name a few. The application for “footlong” for restaurant services is currently under rejection as a mark that consists of the generic name for something that is served in providing restaurant services. A true and correct copy of the rejection issued by the trademark examiner is attached hereto as Exhibit C. Subway’s attempt to establish an acquired distinctiveness under § 2(f) of the Lanham Act has to date failed.

Here’s a question, how on earth did the word “footlong” for sub sandwiches get approved for publication at the USPTO?

Here’s another, does Subway deserve to have each and every customer measure the length of their purchased sub to see if it comes up short, and if so, suffer the consequences failing to add the “About a” qualifier too?