-Martha Engel, Attorney

I laughed when I saw yesterday’s Adweek article about Heinz adopting Don Draper’s “Pass the Heinz” pitch from the hit show “Mad Men.”  Given the lackluster creativity observed from the Super Bowl ads, have we actually reached a point where a creative says “hey remember that Mad Men episode? let’s just do that!” and the client agrees?  I hope not, and I have to believe that that isn’t what happened here.

According to the Adweek article, the fictitious Sterling Cooper Draper Pryce is given credit for the work alongside DAVID The Agency – an international agency with offices in Miami, Brazil and Argentina.

Their logo reminds me of someone – how about you?

DAVID

Setting aside the strong possibility that this agency (or at least members of it) created the work featured in the Mad Men episode, this real life fact pattern reads like an Intellectual Property law school exam.  What risks does Heinz have in adopting this work?  Who authored the creative work and who may own the copyright in the creative work?  Is DAVID’s use of the print ads an infringement of that copyright?  Could the creators and writers of Mad Men use the Heinz trademark in this matter without their permission?

The story here is “tantalizingly incomplete,” if I may borrow Draper’s words from the clip.  Assuming this was executed with some forethought, there are likely one or more agreements involved.   The creatives behind the ad campaign featured in Mad Men may have assigned the work to the owners of Mad Men as a “work made for hire.”  Someone from Heinz or DAVID The Agency may have obtained permission from the copyright owners of Mad Men to then use the work.  There might even be a product placement agreement with Heinz that would later allow Heinz to use the Sterling Cooper campaign later in real life, and maybe even give Heinz the right to select the agency that creates the Sterling Cooper campaign.

Taking this outside of the fictitious context, what about the fact that this agency essentially stole the pitch from Sterling Cooper?  Most agencies would rightfully have an issue with another agency using their pitch.  Does this have any negative effect on the industry?

From a brand perspective, what do you think about Heinz adopting this “50-year-old campaign” from Mad Men?   And, for the agency, is there any benefit to them for just tipping in Don Draper’s shot from the 3-point arc?  Of course I wasn’t going to make it through this whole post on the eve of the best sports weekend of the year without throwing in a March Madness reference – especially with my team in both the men’s and women’s brackets this year.  GO MARQUETTE!

 

We write a lot here about the scope and strength of trademark rights and how that determination is often intertwined to making intelligent likelihood of confusion determinations.

Does “April Madness” fall within the NCAA’s scope of trademark rights for “March Madness“?

Likelihood of confusion? Is “March Madness” a famous mark deserving protection from dilution?

How about “Final 3”? Does that fall within the NCAA’s scope of trademark rights in “Final 4”?

These are some of the questions that will be answered in NCAA v. Kizzang LLC, filed by the NCAA in Indiana federal district court last week, a PDF of the complaint is here.

Yesterday we wrote about a 1929 decision determining that the letter “C” fell within the scope of rights of a trademark containing the letter “B”.

Now, the NCAA is asking for a mark containing the month “April” to fall within the scope of rights in a mark containing the month “March.”

Doesn’t this remind you a little bit of our prior discussions of Adidas and its “one stripe buffer” — enjoying protection of its three stripe design against two and four stripes?

Hat tip to Dan.

USPQ1

The United States Patents Quarterly has been a resource used by intellectual property lawyers for a very long time. Most of the decisions published in USPQ are patent decisions, but there are a large number of trademark decisions too, especially those decided by the USPTO and TTAB.

As the image above reveals, an admittedly weathered set of USPQ books adorns my bookshelf, beginning with Volume 1, published in 1929. Apparently, Bloomberg L.P. purchased BNA (the Bureau of National Affairs, publisher of USPQ) for about $1 billion, back in 2011.

Given my love and nostalgia for these tattered books, and the trademark history stored inside, my plan from time to time, is to bring to life some of the old decisions housed in these books, by telling a trademark story, so this is the first post in a series called: “My USPQ _ Round Up.” The blank indicates the USPQ volume the story is drawn from.

Sinclair Refining Company v. Robert Hickman Blackburn

(Cancellation No. 1766) USPQ 1, at 263 (1929).

“Confusion in Letters”

On April 29, 1929, the First Assistant Commissioner of Patents affirmed a likelihood of confusion decision of the Examiner of Interferences that sustained a petition to cancel U.S. Reg. No. 240,100 (which had issued in 1928). The canceled registration covered the letter “B” inside a diamond positioned above the words “Diamond B Motor Oils” for lubricating oils and greases.

Sinclair, the successful petitioner asserted prior rights in U.S. Reg. No. 146,872 (issued in 1921), for the trademark “Diamond C” continuously used since at least as early as 1919 and “probably since 1917” for lubricating oil, according to Sinclair’s evidence.

The evidence also apparently showed that the registrant “was at one time a distributor of the petitioner’s goods,” permitting “a fair presumption that the registrant was, when he adopted his mark, entirely familiar with the petitioner’s mark and goods. Under these conditions if there is doubt it must be resolved against the newcomer in accordance with the usual rule.”

In defense, the registrant took no testimony, but argued that diamond shapes are a common part of trademarks, so the difference between the letters “B” and “C” should be “sufficient to establish that it is unlikely there will be confusion in trade.” Nevertheless, Sinclair prevailed:

“While the main contentions of the registrant may be accepted as correct yet the trade marks must be considered as a whole and when this is done it is thought their similarities outweigh their differences. There are some letters of the alphabet, such as B, C, D, E, P, T, etc., which are recognized as sounding alike. Confusion in using such letters in connection with messages over the telephone is a matter of common knowledge.”

“It is thought there would be confusion even in customers orally calling for the particular goods if both parties to this proceeding were using their respective marks in the same market upon the same class of goods. It is held the registrant has approached too near the petitioner’s trade mark.”

What stands out to me about this decision are a few things. In terms of procedure, nowadays, this would be a TTAB decision, probably much longer and more detailed, ruling on a trademark petition to cancel in the first instance. I’m not old enough to have experienced the so-called Examiner of Interferences or the First Assistant Commissioner of Patents, thank you very much.

In terms of substance, comparing each mark in its entirety still applies along with the notion of weighing similarities and differences, as does the concept of favoring the prior registrant and responding accordingly when the newcomer is perceived to come too close.

Phonetic similarity was important to the conclusion of confusing similarity between “Diamond B” and “Diamond C” — especially, given the closeness of the goods in question. I’m a bit skeptical though that the following quote would make or break a case today: “There are some letters of the alphabet, such as B, C, D, E, P, T, etc., which are recognized as sounding alike.” You never know though, it might be worth filing away for when a suitable use arises in the future.

Last, while neither “intent” nor “intent to deceive” were mentioned in the decision, and these factors continue to be relevant in likelihood of confusion analyses, I’m left believing that registrant’s previous relationship as petitioner’s distributor probably colored the evidence here.

Do you believe the case would be decided the same today? How would you grade it, B or C? What strikes you about this gem from Volume 1 of USPQ?

World-famous chef Wolfgang Puck recently became embroiled in a trademark battle with Elon Musk’s brother, Kimbal Musk, a venture capitalist and entrepreneur who owns The Kitchen Cafe, a family of restaurants in Boulder, Fort Collins, Denver, Glendale, and Chicago. Puck has opened new restaurants with the names “The Kitchen by Wolfgang Puck” and “The Kitchen Counter by Wolfgang Puck.”

Musk’s company The Kitchen Cafe, LLC (“TKC”) filed a trademark infringement suit in Illinois federal court against Wolfgang Puck Licensing LLC (“Puck”). TKC’s complaint alleged Puck’s restaurant names infringed TKC’s common law trademark “THE KITCHEN.” Puck filed a motion to dismiss and also filed a separate declaratory judgment suit in federal court in the Northern District of Illinois.

In the declaratory judgment complaint, Puck argued that “the phrase ‘the Kitchen’ is fundamentally incapable of protection as a standalone trademark or service mark or as an element of a trademark or service mark because it is generic, or, at best, merely descriptive of such services, and that TKC’s assertion is legally untenable and factually absurd.”

Puck further argued that TKC has not acquired distinctiveness in “THE KITCHEN” as there are “hundreds of other restaurants which use ‘kitchen’ in their names.” Puck emphasized several such examples in the Chicago area, including the Lyfe Kitchen restaurant, which is a block and a half from TKC, the Travelle Kitchen, which is two blocks away, and the One North Kitchen & Bar, which is nine blocks away.

I think it will be a rocky road ahead for TKC to show that the claimed “THE KITCHEN” mark is protectable. Even if it makes it past the genericness hurdle, at the very least it’s descriptive, and it will be difficult to show acquired distinctiveness for several reasons, including the multiple “Kitchen” restaurants in close proximity. What do you think?

Out of curiosity, I also looked around the USPTO for registrations with the word “KITCHEN” that identify restaurant services. It appears the USPTO routinely requires a disclaimer of “KITCHEN” as an unregistrable portion of marks in Class 43 for restaurant services, such as RED RIVER KITCHEN, LIVING KITCHEN, and SECRET KITCHEN. One recent Office Action for the mark SOUTHWEST KITCHEN required a disclaimer of “KITCHEN” and specifically concluded that the word “KITCHEN” is generic for restaurant services. The same conclusion was reached by another Office Action for the mark WOODBERRY KITCHEN.

 

Trademark bullying allegations are in the news again.

Not only is Forever 21 calling Adidas a trademark bully for asserting rights in the three stripe design mark, it is asking a federal court to say it has not done anything wrong and award it fees:

“Tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone, Forever 21 has decided that enough is enough. Forever 21 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.”

This is not their first rodeo together, see here and here. It isn’t our first rodeo discussing Adidas either, see here, here, here, and here.

For more on the subject of trademark bullying, please consider attending another Strafford live webinar a week from today, March 14 at noon CST, details here.

First three who comment earn a free ticket to attend, we hope you join us.

UPDATE: Looks like there is going to be a fight about where the trademark fight actually goes forward, as KOIN6 reports, here.

TraitstoAvoid

Do you wish you could have been a fly on the wall of the meeting that produced this top ten list, or more likely bottom ten list? Even for five minutes? I’m thinking it must have gotten old fast.

Hopefully there was another counteracting list too with far more inspiring attributes. While it’s important to understand negative traits, dwelling on the negative doesn’t seem likely to inspire growth or creativity. Nor does it seem likely to reinforce any of Covey’s habits of effectiveness.

Over the past weekend I was staying in a hotel out of town, and my room happened to be on the same floor as a series of conference rooms.

Minding my own business at the end of the day, as I was passing by the empty rooms, I happened upon the above whiteboard, so I couldn’t resist capturing it to share here.

What kind of conversation and meeting would you guess produced the above list?

Have you ever met a person who possessed all of the listed traits?

Have you ever experienced a brand with any of the traits above?

This post is a follow-up to my post a couple weeks ago regarding the Zenimax v. Oculus case.  As expected, Zenimax filed its motion for an injunction on February 23.  The motion itself pulls no punches.  It directly and angrily argues that Oculus’s entire business was built on Zenimax’s intellectual property.  At the same time, Zenimax also filed its motion to have judgment entered on the jury verdict, which as I mentioned in my earlier post is a first step in transforming the jury verdict into something that Zenimax can attempt to collect on.  Both documents provide interesting insights into the case.  Some highlights:

1.  While the requested injunction covers a lot of different things, the real nuclear component of the requested injunction is stated as follows:

Defendant Oculus is permanently enjoined, on a worldwide basis, from using, marketing, selling, distributing, modifying, servicing, copying, or offering for sale or license any products, in whole or in part, that utilize in any form or for any purpose any of the Copyrighted Materials, including but not limited to (i) system software for Oculus PC (including the Oculus PC SDK); (ii) system software for Oculus Mobile (including the Oculus Mobile SDK); (iii) Oculus integration with the Epic Games Unreal Engine; and (iv) Oculus integration with theUnity Technologies Unity Game Engine.

This is really the teeth of the injunction, as it would basically put Oculus’s entire business on hold.  It will also be the most difficult thing for Zenimax to obtain.  Perhaps realizing his, Zenimax requested a 20% royalty on all future sales for ten years in the event the Court did not believe an injunction should be issued.

2.  Zenimax is seeking prejudgment interest on a variety of different parts of the money judgment.  This interest is substantial.  According to Zenimax’s calculations, if judgment were entered today, the prejudgment interest should be approximately $78,797,000.  Post judgment interest would also accrue during the pendency of the appeal, although the post-judgment interest rate for federal court judgments currently sits at a paltry .83%.

3.  Zenimax is also requesting an award of its attorneys’ fees, which it estimates at $40,000,000.

Thus, as you can see, the financial and existential stakes for Oculus are only getting higher.

 

As we have discussed previously, trademark protection isn’t an exclusive club for words and pictures. Shapes, sounds, and even the tactile feel of a product can all qualify for trademark protection. And as a recent application from Hasbro shows, even the smell of a trademark might qualify for trademark protection.

The mark set forth in the application is technically the standard character mark “NON-VISUAL PLAY-DOH SCENT MARK.” After an amendment or a refiling though, Hasbro will provide a more detailed description of the mark. Hasbro did provide a miscellaneous statement that describes the scent in more detail as:

A unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.

Play Doh Fragrance

Scent marks are not unheard of, but can be difficult to successfully register. Legend has it that the first scent mark was registered in 1990, following an appeal to the Trademark Trial and Appeal Board. The mark was described as “high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” used for sewing thread and embroidery yarn (Reg. No. 1,639,128). In re Celia, dba Clarke’s Osewez, 17 USPQ2d 1238 (TTAB 1990).

Like other non-traditional trademarks, registration of a scent mark imposes additional hurdles. A scent mark cannot be inherently distinctive and therefore the Applicant must establish that the mark has acquired distinctiveness, as set forth in the Trademark Manual of Examining Procedure 1202.13. Also, the claimed mark cannot be functional. Accordingly, if the smell is the natural result of a manufacturing process or provides non-reputational related advantages over competitive products, then the mark is likely functional and non-registrable.

Other scent marks have been registered, but not many are on the Principal Register. One company owns a registration for a “bubble gum” scent mark for shoes and flip flops (don’t ask me why). Another entity owns a registration for a cherry scent for automobile lubricants.  There are many more scent marks that could not clear the acquired distinctiveness hurdle, but were not deemed functional so were eligible for registration on the Principal Register. This would include Verizon’s “flowery musk scent” for its retail stores or another company’s strawberry-scented toothbrushes.

Will Hasbro will be able to overcome the functionality hurdle? Presumably some of the ingredients are included in order to get the right consistency. However it seems less likely that the cherry and vanilla fragrances are necessary, so my best guess is that functionality won’t prevent registration. Acquired distinctiveness is the bigger hurdle for scent marks, but I can already imagine the smell of Play-Doh just by thinking about it. The mark certainly has recognition. However to be completely honest, I never noticed the “vanilla” or “cherry” overtones. But maybe my toy clay palate isn’t sufficiently advanced to pick up on those notes.

HowardMcGeeTeam

It’s not every year that participants in the William E. McGee National Civil Rights Moot Court Competition need to understand the various nuances of federal trademark law.

Yet, with the Lee v. Tam case pending before the U.S. Supreme Court, and Section 2(a) of the Lanham Act hanging in the balance, this was such a year for more than fifty competitors.

The weekend before last, yours truly had the distinct privilege of judging the final oral arguments in the McGee competition at the Mitchell Hamline School of Law in St. Paul, Minnesota. It was ever so humbling to be part of a very distinguished panel of would-be U.S. Supreme Court Justices, hearing the oral arguments and probing the Constitutional issues in the Tam case.

The very distinguished portion of the panel included: The Honorable Peter M. Reyes, Jr. of the Minnesota Court of Appeals, retired Minnesota Supreme Court Justice Esther Tomljanovich, Sharon Sandeen, Director of Mitchell Hamline School of Law’s Intellectual Property Institute, and Robert J. Gilbertson of the Greene Espel law firm.

The winning first place team hailed from Howard University (shown above), located in Washington, D.C., arguing in favor of the government’s position to uphold the Constitutionality of Section2(a). The second place finalist team came from the Illinois Institute of Technology’s Chicago-Kent College of Law, arguing in favor of Simon Tam’s challenge to strike down the disparagement clause of Section 2(a) on First Amendment and Void for Vagueness grounds.

The would-be Supreme Court Justices were not judging the merits of the case, instead we judged the teams based on the quality and organization of their oral arguments.

It was inspiring to witness such strong intellect, confidence, poise, grace, and decorum, from each of the finalists — there is no doubt in my mind, they will all make fine lawyers, and they should all be very proud of their performances and high achievement.

Learning after the event that only three of the four finalists had taken an intellectual property course before, made their mastery of the issues even more impressive, hearty congratulations!

-Wes Anderson, Attorney

Imagine my surprise and amusement to find a recent shipment of wine included a very interesting red blend. The bottle featured a name that would make any trademark lawyer do a double-take:

IMG_0630

That’s LIKELIHOOD OF CONFUSION wine, 2015 vintage (a good year for consumer confusion). Of course, the wine itself invites confusion, as indicated on the back label:

Likely to be confused with the boldest wine you’ve had, this dry red derives its riper fruit from Paso Robles’ heat, ensureing it suits heavy steak dishes. The stainless steel-aged Syrah and Petite Sirah conjure flavors that are anything but confusing: blackberry, black cherry, cocoa, clove, fig and leather.

Food (or drink) for thought on this Friday – real consumer confusion indicates trademark infringement, but that doesn’t mean consumer confusion is always marketing hot lava. Confusion – say, with more expensive products or services – can be touted in advertisements, or used as puffery. I’m willing to wager a savvy marketer, or someone acquainted with trademark headaches, came up with this name – and, of course, it’s registered. And no, I didn’t taste the leather.