DuetsBlog

Collaborations in Creativity & the Law

Good Translation/Bad Translation

Posted in Advertising, Almost Advice, Branding, Guest Bloggers, Mixed Bag of Nuts, Product Packaging, Squirrelly Thoughts

-Mark Prus, Principal, NameFlash Name Development

When you finally identify a name for your business, product or service, you must conduct proper due diligence to ensure that you have a legal right to use the name. Trademark searches are mandatory and I’d strongly recommend talking to a great trademark attorney. A little upfront time and money can save you a ton of heartache and cash at a later point (if, for example, the name you decide to use is challenged by someone who is already using a similar name).

One of the other things you should do is conduct foreign language checks using native speakers to identify if the name has unfavorable meaning in a foreign language. Even if you do not plan to market in a foreign country, you do not want your name associated with unfavorable meanings. Here are some examples that prove the point:

  • Barf Detergent – In Persian apparently Barf means snow. But can you imagine the conflict in the mind of an English speaker when seeing a detergent called Barf?

  • Vicks – When Vicks was introduced in Germany, somebody forgot that the German pronunciation of “v” is “f” which made their “Vicks” brand name sound like slang for sexual intercourse (the name in German speaking countries is now Wick which translates correctly).
  • Scat Airlines – An airline based in Kazakhstan. Not sure if an English speaker would fly them.

  • Emerdata – This is the reincarnation of Cambridge Analytica. I find great irony in the fact that the name translations in Portuguese and Italian refer to the act of defecation.
  • IKEA – IKEA has a unique naming convention that often leads to translation errors. For example, some product names sounded like sex acts. And in many cases, IKEA names just sound amusing to English speakers:

Perhaps there is an alternative strategy to conducting a disaster check on international translation. What if you actively looked for names that translate well across the major languages of the world? As an example, one of the reasons that Kit Kat is so successful in Japan is the name “Kit Kat” famously translates to “You will surely win.”

“Good Translation” might be an excellent naming strategy!

Buc-ee’s Beaver Chomps Reptilian Competitor

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Infringement, Law Suits, Mixed Bag of Nuts, Sight, Trademarks

About a week ago, we reported on an interesting case out of the Southern District of Texas involving two competing convenience stores with cartoon animal mascots: Buc-ee’s (a beaver) and Choke Canyon (an alligator).

As someone who has personally visited Buc-ee’s stores, I can tell you that they are quite the destination. Buc-ee’s tend to be absolutely massive, with checkout lanes (everything’s bigger in Texas). People even buy T-shirts with Buc-ee’s logos on the front, with various Texan sayings on the back. I personally own three of them. So it’s kind of an understatement to call Buc-ee’s a “convenience store,” by Minnesota standards. And one can hardly complete a description of Buc-ee’s without noting that it is considered to have the “best bathrooms in Texas.”

Credit: Houston Chronicle

Choke Canyon? Yeah, its locations are pretty big too, but the mascot is far less cuddly. Though, it has a nice saying above the exit that probably wouldn’t work at Buc-ee’s: “See ya later, alligator.”

Credit: Yelp

Buc-ee’s sued Choke Canyon for a variety of claims, including: trademark infringement, dilution, unfair competition, and unjust enrichment. We cover these topics frequently on DuetsBlog (check out the topics column).

I must admit that when I first read about the suit, I could hardly believe it. I agree with my colleague that “the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers don’t seem likely to assume that that there is a connection between the two.” And I also think that ” if it weren’t May, I’d assume this was an April Fools Day joke.”

But it’s no joke, and after a four-day jury trial and six hours of deliberation, Buc-ee’s won on all fronts. Specifically, the jury answered six questions (downloadable here):

  1. On Buc-ee’s claims for trademark infringement of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
    • Interestingly, the jury sent one note to the District Judge during deliberations, asking “Does the logo to be considered by the jury in rendering an infringement judgment include a version without words?” To which the Judge responded, “Yes.”
  2. Do you find that Buc-ee’s Logo was famous throughout Texas before Choke Canyon’s use of the Choke Canyon Logo?
    • Jury answer: Yes
  3. Because the jury answered “yes” to question 2, they skipped question 3 (which pertained to specific geographic areas in Texas).
  4. On Buc-ee’s claim for dilution by blurring of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  5. On Buc-ee’s claim for unfair competition, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  6. On Buc-ee’s claim for unjust enrichment, do you find for Buc-ee’s or Choke Canyon?
    • Jury Answer: Buc-ee’s

I am surprised by the generality of the questions presented to the jury, and it’s interesting that the jury was not asked about damages–perhaps the issue was bifurcated and will be tried to a different jury.

Question 1, and the jury note, suggests to me that the jury was allowed to focus purely on the similarities between the cartoon animals in the above logos, disregarding Choke Canyon logo’s ribbon stating “Choke Canyon Travel Centers.” But even then, the only obvious similarities are the orientation of the mascots, the yellow background, the wearing of a hat, and their smiles and red tongues. It is hard to believe those basic, nominal characteristics are enough to show consumer confusion and infringement. Maybe Choke Canyon has a good chance on appeal or at judgment notwithstanding the verdict.

And I cannot help but wonder, in view of Question 2, whether the fact that Buc-ee’s mark was famous throughout Texas prior to Choke Canyon’s use of its alligator mark played the most important role in the jury’s verdict. Perhaps the jury felt that Choke Canyon intended to ride on Buc-ee’s mark. Indeed, at closing argument, Buc-ee’s counsel reminded the jurors that a survey showed more than 80% of Texans recognize the Buc-ee’s logo. But I tend to agree with Choke Canyon’s closing argument that the lawsuit seems directed at stifling competition, rather than truly protecting consumers–pointing to Buc-ee’s own prior statement that it only noticed the potential for consumer confusion when Choke Canyon began buying property in towns where Buc-ee’s operates. I find it hard to believe that a reasonable consumer would seriously confuse the two mascots and think they were associated. But apparently two actual-consumer witnesses testified in Buc-ee’s favor on this point. Texas sure is a strange place sometimes.

“Square Donuts” – Generic for Cafe Services?

Posted in Branding, Infringement, Law Suits, Loss of Rights, Mixed Bag of Nuts, Trademarks, USPTO

Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts.

Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease the use of the term “Square Donuts” for the square-shaped donuts sold in its stores.

The parties wrangled for years about a potential co-existence agreement, in which Square Donuts would allow Family Express to use the “square donuts” term, but they never reached an agreement.

Later, Square Donuts filed a federal trademark application for the word mark SQUARE DONUTS for “cafe services,” claiming use since 1968, and obtained registration in 2013. (Reg. No. 4341135). The USPTO initially refused registration based on mere descriptiveness, but the refusal was overcome when Square Donuts claimed acquired distinctiveness (secondary meaning based on long and substantially exclusive use).

A couple years ago, Family Express filed a preemptive, declaratory-judgment complaint in Indiana federal court, on several grounds–including that the term “square donuts” is generic, and therefore, Square Donuts’s trademark registration No. 4341135 should be cancelled, and Family Express has the right to use that generic term. Additionally, Family Express filed last year a petition for cancellation before the Trademark Trial and Appeal Board (TTAB), also claiming this registration should be cancelled based on genericness. (The TTAB proceeding is currently suspended based on the federal court action.)

The genericness claim is interesting for a couple reasons. First, in both its federal court complaint, and the TTAB petition, Family Express claims the SQUARE DONUTS registration should be cancelled because the term “square donuts” has become “generic…for square-shaped donuts.” But as discussed in previous posts, the genericness inquiry must be tied to the particular goods or services for which the trademark rights are claimed and registered. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553 (Fed. Cir. 1991). Square Donuts registered and claims rights to the mark SQUARE DONUTS for its “cafe services,” particularly as the name of its cafe.

Indeed, in the Board’s order suspending the TTAB proceeding, the Board left a footnote that was critical of Family Express’s genericness claim, and suggested it must be re-pleaded in an amended petition, if the suspension is lifted, because the genericness inquiry must be “based on the recited services in the registration at issue,” namely cafe services, not “square-shaped donuts.” However, as also correctly noted by the Board, a term can be generic for a genus of services, such as cafe services, if the relevant public understands the term to refer to a key or featured good that characterizes that genus of services (e.g., serving square-shaped donuts).  In re Cordua Rests., Inc., 118 USPQ2d 1632, 1637 (Fed. Cir. 2016).

Therefore, the appropriate genericness inquiry here — which will be more difficult for Family Express to establish — is whether the term “square donuts” has become generic for the genus of “cafe services.” In other words, do the relevant consumers refer generally to the genus of cafes (even cafes that feature square donuts), as “square donuts”?

Second, another interesting point is that Family Express still appears to be claiming trademark rights to “Square Donuts” as a brand for their donuts, while arguing the term is generic at the same time. The Family Express website, “Our Brands,” prominently features a section discussing their “Square Donuts” brand, with an introductory paragraph about “our proprietary brands.” This cuts against their argument that the term is generic, meaning it’s not a “brand,” and no party can claim exclusive, “proprietary” rights. I wonder if that website will show up as an exhibit at some point.

What do you think? Will Family Express be able to establish genericness here? Stay tuned for further updates on this dispute.

 

Meet the Bloggers IVX Event: INTA in Seattle

Posted in Advertising, Articles, Branding, Marketing, Trademarks

It was another star-studded event in Seattle last night, enjoy some pics from Meet the Bloggers:

The Ironmongers are Reunited:

Friendly Ron Coleman, John Welch, Steve Baird

Skeptical Ron Coleman, Steady Welch and Baird

Concerned Ron Coleman, Steady Welch and Baird

Animated Ron Coleman, Mildly Amused Welch and Baird

Much Going on Under the Light of a Full Moon:

Marty Schwimmer Focusing as Carl Oppedahl Howls at the full Moon?

The Ayes Have it, About What I Don’t Recall?

Ron Coleman, Carl Oppedahl, and Pamela Chestek, in Favor, Among Others

More Celebration Under the Full Moon?

Tara Aaron Sticks Her Landing, and the Crowd Applauds

Karaoke? Maybe a Little Jackson Browne, Running on Empty?

Eric Pelton Lead, with Backup Vocals by Carl Oppedahl?

Above all the Nonsense? Pleasant and Bright Susan Montgomery and Marty Schwimmer

Ron Continues to Steal the Show With Multiple Facial Expressions:

Friendly Tiffany Blofield, Confident Ron Coleman, Friendly Erik Pelton

Friendly Tiffany Blofield, Amplified Ron Coleman, Friendly Erik Pelton

Steady Tiffany Blofield, Say Cheesy Ron Coleman, Steady Erik Pelton

We look forward to Meet the Bloggers VX in Boston, next year, around this same time, stay tuned.

At INTA 2018: Trademarks and Free Speech

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Trademarks, TTAB, USPTO

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:

Before:

 

During:

 

 

After:

Steve Baird, Amanda Blackhorse, Joel MacMull, Simon Tam

Professor Lisa Ramsey, Steve Baird, and Professor Christine Haight Farley whispering in Steve’s ear

Highlights:

Amanda Blackhorse:

Message to Daniel Snyder: “You cannot force honor on someone.”

Steve Baird:

“Federal trademark registration is a giant exception to Free Speech.”

Other messages drawn from here, here, here, here, and here.

Simon Tam:

Interpreting USPTO: “They said we were too Asian!”

Joel MacMull:

The Tam case never should have been decided on Constitutional grounds!

Great questions from the engaged crowd, wish there had been much more time!

What were your highlights from the panel discussion?

UPDATE: Simon Tam, writing about Paper Justice, here.

Protecting the Women’s March Brand

Posted in Branding, Marketing, Mixed Bag of Nuts, Trademarks

Branding a social movement is tricky.  Many individuals following (and leading) social movements tend to view IP rights as antithetical to the spirit of the movement itself.  Moreover, success in the PTO for these types of marks is by no means guaranteed.  The purpose of a trademark being to identify a source for goods or services, efforts to register the names of social movements are often met with refusals for failure to function as a trademark.

Organizers of the Women’s March held in Washington, D.C. last year are facing opposition in their attempt to register the brand name.  Shortly after the march itself, Women’s March, Inc. filed to register WOMEN’S MARCH as a trademark.  The proposed mark is for use with certain clothing items and for promotion and lobbying services related to women’s rights, LGBTQ rights, and racial equality.  The application faced two Office Actions, including one refusal for failure to function as a trademark.  Women’s March, Inc. overcame the refusals, and the mark published for opposition in March 2018.

Several parties have now expressed an interest in challenging the mark.  Organizers of fourteen so-called “sister marches” across the country filed an extension seeking additional time to oppose the mark.  Women’s March Los Angeles also filed a letter of protest challenging the mark as generic.  The protest letter included evidence pointing to genericness of the phrase, such as Wikipedia articles discussing the 1789 “Women’s March on Versailles” and the 1956 “Women’s March” in South Africa.

The groups opposing the WOMEN’S MARCH mark cite fears that Women’s March, Inc. will use the trademark to charge licensing fees and severely restrict usage of the mark by smaller march organizers.  Women’s March, Inc., however, maintains that filing the mark is a “matter of course.”  Bob Bland, co-president of Women’s March, Inc. stated: “We have to be able to control it or else anyone could use it.  We need to be able to protect the brand, which represents the Unity Principles and is rooted in Kingian Nonviolence.”

While a registered trademark can help a movement shape and protect its identity, movement organizers seeking to protect their brands should consider the potential backlash in both obtaining and enforcing IP rights.  Attempts to protect the brand may appear exploitative and cause divisions within the movement.

Interestingly, I did not find any trademark applications or registrations for the Women’s March three faces logo, which appears prominently in the company’s branding.  Organizers might have more success (and face less backlash) seeking protection for the logo than for the standard character mark alone.

Trade Dress Catches Up With Ketchup

Posted in Non-Traditional Trademarks, Product Configurations, Product Packaging

On a recent happy hour trip to HopCat, a brewpub chain with an incredible beer list of local and regional craft beers, I expected to find a trademark issue or two among the tap handles.  However, instead, I was distracted by a “catsup” bottle (hah) positioned casually next to a bottle of Heinz mustard.

The familiar green and gold border, the white cap, the white background, the shape of the plastic bottle…it reminded me of this previous DuetsBlog post involving a de-branded ketchup bottle.  Private labeling and contract manufacturing has become an increasingly popular means of overcoming barriers to entry, entering new market segments, or accommodating increased demand,  especially for breweries, wineries, and distilleries.

I doubt I’m alone in quickly jumping to the conclusion the HopCat “catsup” was a private labeled version of this and also wondered why the mustard wasn’t similarly branded (other than the lack of appropriate mustard puns):

But looking at the back of the bottle, I was proven wrong just as quickly:  “Manufactured for Hop Cat by Red Gold, LLC.”   However, Red Gold ketchup bottles appear to be sold generally with a yellow cap and a yellow label.  Hmm.

I suppose the shape of the HopCat bottle is closer to Red Gold’s shape, but everything else suggested to me that Heinz was the source behind the brewpub’s ketchup.

In contract manufacturing or private labeling agreements, it’s important to consider the responsibilities of each entity for packaging decisions.   Is the buyer responsible for providing the artwork for approval by the supplier?  Or is the manufacturer responsible for that with the buyer’s approval?  What are the approval conditions if any?  And depending on that decision, which entity is responsible for any liability associated with intellectual property or regulatory claims?  The representations and warranties in the agreement should also appropriately protect the entities – especially the buyer who is ultimately putting the product out into the market.

Brawling Brands: Beaver Versus Alligator

Posted in Dilution, Infringement, Law Suits, Trademark Bullying, TTAB

Who do you think would win in a fight to the death: a beaver or an alligator? Sure, alligators seem scarier. They’re known for sharp teeth and strong jaws. They even have a 1980 horror movie about them called Alligator (Sidenote: the plot summary makes this sound like a must-see). Beavers? Not so much. Small and furry. They cut down trees. Sure, there was a television series called Angry Beavers, but it was a kids cartoon on Nickelodeon. Those beavers didn’t live in the Chicago sewers feasting on discarded animal carcasses from secret government laboratories testing mutating growth hormones (Again, this Alligator movie sounds like a must-see).

But what if this isn’t just a regular beaver? What if this is a beaver with an entire travel center full of deli stations, gasoline pumps, bathrooms, and over three decades of use? Oh! And did I mention the red baseball cap? It may not sound that scary to you, or alligators in general, but for the Choke Canyon Alligator, the fear might be starting to build. While an alligator likely gets the best of a beaver in the animal kingdom, the courtroom is an entirely different venue.

The animals underlying this dispute are beavers and alligators, but the parties are Buc-ee’s, Ltd., Shepherd Retail, Inc., and Harlow Food, Inc. The plaintiff is Buc-ee’s, the operating of a chain of Buc-ee’s travel stations throughout Texas. The defendants Shepherd Retail and Harlow Food operate a travel center under the name Choke Canyon, also in Texas. The dispute centers around Buc-ee’s claim that Choke Canyon’s design logo is similar to Buc-ee’s logo. A jury was impaneled earlier this week to help decide whether these logos are confusingly similar, but in the meantime, you can put on your juror hat and compare the parties’ logos yourself.

Thoughts? And to finish any potential arguments before they get started, this is an alligator, not a crocodile. Crocodiles can’t stick out their tongues (We’re not just a trademark blog, we’re a science blog, too.)

Here’s how Buc-ee’s summarized the similarity of the marks in the Complaint:

Defendants’ anthropomorphic and cartoon representation of the alligator as shown above in connection with a convenience store copies the most important aspects of the iconic BUC- EE’S Marks. Specifically, besides Defendants’ improper use of a friendly smiling cartoon animal, Defendants have copied the BUC-EE’S Marks with: (i) the use of a black circle encompassing the alligator (compare to the black circle around the beaver), (2) use of a yellow background (compare to the yellow surrounding the beaver), (3) use of the red-colored tongue of the alligator (compare to the red hat on the beaver), (4) prominent use of sharply drawn black edges for the alligator mascots (compare to the sharp crisp black edges defining the beaver, and (5) the use of letters in raised block font in the name “CHOKE CANYON”

This also isn’t the first trademark battle for Buc-ee’s. The beaver has already defeated two chickens (settled out of court):

And a rival (but hatless) beaver (settled out of court):

As a general matter, I think trademark plaintiffs are too easily branded with the label of a “trademark bully,” but this one seems like a stretch.

Granted, I’ve never been in any of either party’s stores. Perhaps the manner in which the marks are advertised adds to the confusion. In fact, Buc-ee’s also claimed that Choke Canyon’s trade dress infringed upon Buc-ee’s trade dress. The layout of a store or restaurant can be protectable trade dress under the Lanham Act. Even if the individual elements may not be protectable (for example, cactus in a Mexican restaurant), the overall selection and arrangement of even unprotectable elements may give rise to protectable trade dress.

Buc-ee’s claimed trade dress for its travel store-restaurant-convenience store-gas station consists of:

(a) consistent use of bell-gabled roof lines;
(b) Use of a red, white, yellow and black color scheme in store signage;
(c) Use of stone siding on the exterior of the store;
(d) Consistent use of a specific and distinctive fountain drink set up in the interior of the stores;
(e) In-store computer ordering kiosks;
(f) Horse-shoe shaped in-store carving stations;
(g) Open counter deli stations;
(h) Freshly prepared signature food choices;
(i) Consistent, prominent use of the BUC-EE’S Marks in signage above and on the products offered for sale;
(j) Large square footage;
(k) Numerous fuel pumps;
(l) Abundant and oversized parking spaces;
(m) Oversized bathrooms;
(n) A multitude of cashier stations;
(o) Entrances from three of the four sides of the building.
(p) Antique-looking displays;
(q) Country-themed signage; and
(r) Khaki paint colors.

I’m no expert in convenience stores, but most of the elements seem like generic elements of a travel center, restaurant, or convenience store. The antique and country themed signage is not as much of a required element for these types of store, but it hardly seems unique for a convenience store or gas station to have a country theme. Like the claim of trademark infringement based on the use of a cartoon character with a hat, I also have doubts as to the success of the trade dress infringement.

But is the combination of the two enough to nudge these claims over the edge into potential infringement? Based on publicly available information, the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers dont’ seem likely to assume that that there is a connection between the two. While it can be a fine line, trademark law is pretty consistent that merely “calling to mind” is insufficient to establish trademark infringement. There must instead be a possibility of consumer confusion as to source, sponsorship, or some other connection.

It is possible additional facts will come out during trial to bolster Buc-ee’s claims. Perhaps there really was a pattern of intentional copying, from the yellow background of the circle logo, to the store layout, down to individual products being offered, like the purportedly famous “Beaver Nuggets” (aka, caramel corn). Stay posted for future updates as the trial proceeds and ends. We’ll also keep a lookout for comments from our neighbor to the east, the other cartoon Bucky:

 

 

Hamm It Up? The Latest Brand to Verb It Up!

Posted in Advertising, Articles, Branding, Loss of Rights, Marketing, Trademarks

It’s been a little while since the last example we’ve shared showing a brand turning its face, or a blind eye, on age-old rigid trademark advice, counseling against using a brand name as a verb.

Given the more common trend of many alcoholic beverage brands focusing attention and their messaging on drinking responsibly, MillerCoors has made a surprising choice with Hamm It Up!

While we’re all for encouraging brand owners to carefully explore the true risk of genericide from verbing their brand name, encouraging drinkers to be “ridiculous or over the top,” is over the top.

We get it, Hamm’s is going gangbusters as an economy beer brand, but there is a way to verb an alcohol brand more gracefully, so I’m left wondering when MillerCoors will, let’s say, Hang it Up?

UPDATE: In case you’re wondering, the microscopic text in the lower right corner of the billboard reads like a disclaimer: “ENJOY IN MODERATION.” How’s that for a messaging mixed drink?