Who comes to mind when I list the following character traits: lives in a dystopian metropolis, has a deceased parent, fights criminals, rides a motorcycle, has seemingly-superhero strength, is fearless, has dark hair, and–oh, by the way–his name is “Wayne.” More than that, you learn all these facts about Wayne by watching a trailer for a series about Wayne on YouTube, which informs you throughout that Wayne is a character “from the guys who wrote Deadpool,” a fictional superhero. Take a look for yourself:

It should probably come as no surprise that many people watching the trailer–myself included–thought this Wayne might be “Bruce Wayne,” the well-known secret identity of Batman. The comments to the official trailer demonstrate as much. Consider, for example, the “top comment” for the trailer:

The Bruce Wayne most consumers know is the wealthy orphan owner of Wayne Enterprises by day, crime-fighting superhero by night. YouTube’s Wayne shares many of the same traits (except, perhaps, the wealth), and one could certainly believe that the Wayne series might be an origin story for one of the most popular superheros of all time. Of course, by the end of the trailer, you get the impression that the Wayne you’re watching probably isn’t (though there’s no disclaimer):

In total there are over 7,200 comments for the trailer at the time of writing this post. Since the official trailer, YouTube has released additional teaser trailers for the series, each making it clearer that Wayne probably isn’t Batman. Yet, viewers still aren’t quite sure:

What I find interesting about these comments is that they are a readily-available (though perhaps unreliable) data set for proving, or disproving, the existence of customer confusion. Assume that DC Comics, the owner of the Batman mark and Bruce Wayne character (which does not appear to have been registered, but to which DC Comics could have common law rights and copyright protection) could sue YouTube for infringement or dilution. Arguably, the comments on the Wayne trailers show that consumers are drawing a connection between DC Comics and the Wayne series given the name, mood of the series, and common character traits with Batman. In this, YouTube may be free riding on Batman’s popularity. Depending on just how many comments reference Batman, the comments themselves could serve as strong quantitative data of confusion–akin to the kind of survey data usually used to prove that element of a trademark claim.

On the other hand, many of the comments for the series do not reference Batman or Bruce Wayne. Do non-references indicate a lack of confusion, or perhaps a confusion that is dispelled quickly after watching the trailers? This relates to the doctrine of “initial interest confusion,” which is temporary confusion dispelled before a sale or some other commercial harm, but still may be actionable because the party creating the confusion free rides on another’s mark to gain attention. Since widespread access to the Internet, initial interest confusion cases have increased tenfold, but courts disagree about the vitality of the rule. Regardless, that confusion appears to persist in this situation–as demonstrated by the comments for each new trailer–shows that the confusion here may be of the continuing and uncured variety on which many trademark claims are based.

Wayne fully releases on YouTube in January 2019. There do not appear to be any lawsuits pending at the moment. And there does not appear to be a “Wayne” trademark registration for the series. But if YouTube (or the series’ creators) file for one, DC Comics could oppose the registration–and has done so for similar marks in the past. We’ll keep you updated with any new developments! In the meantime, let us know what you think in a comment below.

— Jessica Gutierrez Alm, Attorney

Amazon’s patent (U.S. Patent No. 9,280,157) for a “System and Method for Transporting Personnel Within an Active Workspace” has been in the news recently.

The invention is described as a device for keeping human workers safe in an automated (i.e., robotic) work environment.  In the Background, the patent discusses the rapid rise of automation in inventory-handling systems.  “Technological advancements have made an ever-increasing amount of automation possible in inventory-handling and other types of material-handling systems.”  ‘157 patent at col. 1, ll. 7-9.  “However, there may be circumstances where it is necessary for human operators to traverse, or otherwise go onto, an active workspace where the mobile drive units are carrying out their assigned inventory-related tasks.”  ‘157 patent at col. 1, ll. 14-18.  An automated work environment can be dangerous for human workers.  As a solution, the patent proposes a transport device to transport a human worker safely through an automated inventory-handling work area.  The premise, and the described need for the invention, sound reasonable enough.  However, it’s the drawings of this patent that are garnering some unwanted attention.

Amazon worker cages allow users to safely traverse automated work areas.
At least there’s a bench (414) to sit on?

The patent illustrates and describes the transport device as, well, a cage for workers.  The Detailed Description describes the device as a “cage-like structure configured to substantially prevent the user from sticking an appendage through the enclosure.”  ‘157 Patent at col. 13, ll. 51-53.  Importantly, the claims of the patent (i.e. the scope of protection) are relatively broad and do not specifically require the cage-like structure.  Claim 1, for example, is directed to an inventory-handling system to transport a user within a workspace, the system including a first device to transport users within the workspace, a second device to transport users within the workspace, and a management module directing movement of the two devices.  Of course, this doesn’t render the imagery of work cages any less concerning.

A recent study conducted by two artificial intelligence researchers drew attention to the patent.  The authors referred to the patent as: “an extraordinary illustration of worker alienation, a stark moment in the relationship between humans and machines.”  News of the patent quickly reached major outlets and social media.

Amazon’s Senior Vice President of Operations, Dave Clark, responded on Twitter:  “This was never used and we have no plans for usage.”

This patent, the resulting blowback, and Amazon’s response highlight a couple of important points about patent protection.

First, patents (and, typically, patent applications) are publicly accessible documents.  At the heart of the patent system is an exchange.  The inventor obtains the right to exclude anyone from making or using the invention, but in exchange, must disclose that invention to the world.  Thus a company seeking to obtain a patent, and particularly a high profile company like Amazon, should keep in mind that every word and drawing will be viewable by the public.

Second, Clark’s statement that the company has no plans to implement the cages is a reminder of the value a patent can have.  A patent grants the owner a right to exclude others from practicing the invention.  A patent owner need not actively practice the invention herself in order to enforce it against others.  Even when a company is not looking to implement a particular invention, an issued patent on the concept may provide a leg up on competitors.  The relatively broad claims of the Amazon patent, which do not rely on the cage design, allow Amazon to exclude its competitors from employing a system for transporting humans through an automated work space.

As we move into Week 2 of the NFL, the big clash in North Country is Sunday’s Green Bay Packers – Minnesota Vikings game. All the buzz is whether the second-coming-of-Favre Aaron Rodgers will prevail over the vaunted Vikings defense. But here in my trademark bubble, I’m more interested in the Jacksonville Jaguars versus former Jaguar player Dan Skuta. This isn’t a contract negotiation battle, but instead a dispute over who owns the claimed trademark rights in the word SACKSONVILLE. The dispute is now the subject of a pending opposition at the Trademark Trial and Appeal Board.

In the Notice of Opposition to the team’s application, Skuta claims to have been the first to coin the term “Sacksonville,” back in July of 2015, but his pending application was refused based on a possible likelihood of confusion with the team’s already filed application. He created a Twitter account and hired a graphic designer to create the logo below, which appears on Skuta’s website.

 

In the team’s application to register the claimed #SACKSONVILLE mark, the Jaguars claim a first use date of September 1, 2017.  However, the team has the ability to present evidence of use earlier than the date of first use listed in the application. One article notes that the team has used the phrase as a social media hash tag at least as early as 2013. But in most circumstances, merely using a word as a social media hashtag does not constitute use in commerce.

Unsurprisingly, one local Jacksonville news outlet is skeptical, siding with the team over a “forgettable linebacker . . . who may have been better at anticipating trademark uses than he was at reading offenses.”

It is possible that Skuta may have used the mark in commerce before the team. Skuta hasn’t made his case any easier by including in the logo what appears to be a jaguar skull and the same Jacksonville Jaguar teal color. On top of this, the play on words with “Jacksonville” potentially creates association with the team, too.

It’s a bit of a mess: are there even any trademark rights and, if so, who owns them? It seems the team likely should be the owner, but perhaps they fumbled the rights along the way. We may have to wait for the Trademark Trial and Appeal Board to weight in to see who emerges from the scrum with the ball.

— Jessica Gutierrez Alm, Attorney

Trademark enforcement, particularly in an age of social media and internet shaming, is tricky business.  Some brands (I’m looking at you, Louis Vuitton) seem to have enough market share to ignore the social backlash from their heavy-handed demand letters.  But companies that lack that kind of brand power could benefit from a bit more finesse in their enforcement efforts.

Aloha Poke Co. is a Chicago-based poke restaurant.  Poke—a traditional Hawaiian dish of raw fish—has spread through the mainland in the form of fast-casual rice bowls topped with colorful veggies and sauces.  Aloha Poke opened its first store in 2016.  The company now boasts 15 locations across the U.S., including one right here in Minneapolis.  Aloha Poke holds two trademark registrations, one of which is a word mark for ALOHA POKE.  Despite the questionable trademark use of a word as ubiquitous as “Aloha,” the Trademark Office registered the mark without a single Office Action.  The Trademark Office only required Aloha Poke to disclaim rights to the word “poke.”

Recently, Aloha Poke sent cease and desist letters to various poke shops across the country having “Aloha” in their names.  “Aloha Poke would prefer to settle this matter amicably and without court intervention,” the letter read.  “We therefore request that you immediately stop all use of ‘Aloha’ and ‘Aloha Poke.’”  That doesn’t sound particularly amicable.

At least some of the restaurants receiving the letter were native Hawaiian-owned.  Tasha Kahele is a native Hawaiian and the owner of what was formerly the Aloha Poke Stop in Anchorage, Alaska.  After receiving Aloha’s letter, she changed her shop’s name to Lei’s Poke Stop.  Aloha Poke’s demands that native Hawaiian people stop using two Hawaiian terms is not sitting well with many.  Many have called Aloha Poke’s efforts a clear case of cultural appropriation.  An online petition demanding that Aloha Poke stop using “Aloha” and “poke” has garnered over 150,000 signatures.  Last week, hundreds of people gathered in protest outside the company’s Chicago headquarters.

In a statement on its Facebook page, Aloha Poke explained its reasons for sending the letters, indicated its respect for the Hawaiian culture, and apologized for “the confusion that this has caused.”

A company is wise to monitor and enforce its trademark rights.  And indeed, Aloha Poke’s potential claims against poke restaurants with similar names do not appear legally frivolous on their face.  But in terms of public image and even cultural awareness, Aloha Poke could have gone about its enforcement in a different way.

How much do I believe in federal registration of trademarks and brand names? Well, this much:

I’ve always been a big fan of practicing what you preach. Actually walking the talk. Not just talk.

That mindset helps explain why we stuck with the suggestive name of this blog, even after the experts recommended against it several times, for SEO and other reasons. They do agree now.

Anyway, the registration issued in the nick of time, given my true fortune just two days earlier:

Seriously though, obtaining federal registration of a personal brand name can be a bit challenging.

A common refusal when personal names are involved is that they merely identify a person, and they fail to function as a mark, the very refusal the USPTO initially issued in my particular case:

“Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.”

“In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because it is used to identify the author of blog posts, but does not separately indicate the source for any service. Applicant has applied for services including providing information in the field of law. The specimens shows the applied-for mark being used merely to name the author writing the posts, and to identify a particular individual and give information about him. The specimens include a short biography or “about the author” post with the name of the author or individual at the top, and several posts that show the applied-for mark included only as “By Steve Baird.” This shows the applied-for mark being used in a by-line, attributing authorship, but not identifying source. The applied-for mark is not used in association with the offering of any service in a way that would make it a service mark.”

Fortunately, I’m surrounded by really bright, passionate intellectual property and trademark attorneys, and in this case, our Tucker Chambers came to the rescue, with this winning response.

And, thankfully Tucker had some decent facts to work with, especially given kind commentary of some generous giants from both the legal and marketing fields, two of our core audiences.

Trust me, the irony has not escaped me, that one of these generous giants recently allowed the registration for his blog’s name to lapse, and the other giant likely prefers to Just TM It instead.

I’ve never professed to resemble a purple cow, but my mother and father did teach me to follow the beat of my own drum, after taking in a variety of different perspectives to settle on my beat.

So, if you have a personal brand name that truly functions beyond indentifcation to indicate the source of goods or services, my hope is that you will consider federal registration to help protect it.

Keep in mind, personal brands can go beyond an actual name to embody a non-verbal image too, where consent of the individual so identified is of record at the USPTO, hello Ralph Lauren:

Personal brands also may include nicknames, like Mr. Wonderful aka Kevin O’Leary from Shark Tank fame, who is seeking registration of Mr. Wonderful for roasted nuts, hello Wonderful:

 

So, I’m left thinking that Mr. Wonderful best get crackin’ on his anticipated response to the inevitable likelihood of confusion refusal that he’ll be experiencing in the not-to-distant future.

— Jessica Gutierrez Alm, Attorney

Twitter, the social media giant, is being sued by its internet cousin, TWiT.  TWiT, which initially stood for This Week in Tech, is a netcast network providing audio and video tech-related content.  TWiT owns the registered service mark TWIT for visual and audio entertainment performances.

According to the Complaint, TWiT founder Leo Laporte and Twitter co-founder Evan Williams had some discussions about the similar brand names in the mid-2000s.  The Complaint is available on Scribd, courtesy of TechCrunch.  In 2007, Laporte invited Williams on TWiT’s net@night show to promote Wiliams’s new company, Twitter.  Laporte alleges that although the two founders recognized their companies’ similar sounding names, at the time, they provided entirely different platforms—Twitter was text-based microblogging, and TWiT was video and audio streaming and downloading. The two founders apparently agreed informally that their companies would continue to coexist on their respective platforms.

Now, after ten years and still no formal agreement, Twitter is planning to launch original video streaming content.

Last year, TWiT sent a letter demanding that Twitter abandon its planned expansion into video content.  The parties’ subsequent attempts to resolve the dispute without legal action apparently have not been successful.

TWiT alleges twelve causes of action in total, including infringement of the TWIT mark.

Perhaps the moral of this story is: put it in writing (preferably more than 140 characters).  Presumably in Twitter’s early days, no one could have foreseen the future success of the social media platform and an eventual expansion into video content.  But maybe TWiT should have sought something more than a handshake coexistence agreement.  What do you think?

— Jessica Gutierrez Alm, Attorney

The term Comic Con has become synonymous with a certain culture.  In recent years, comic book conventions (and comic book culture), have become increasingly popular.  Annual comic book conventions are held in major cities across the U.S. and the world.  Many of these conventions are titled—officially or unofficially—“[City] Comic Con.”  One recent jury decision, however, may cause some (official) rebranding.

In 2014, the San Diego Comic Convention (San Diego CC) sued organizers of the Salt Lake Comic Convention (Salt Lake CC) for trademark infringement.  San Diego alleged that Salt Lake willfully infringed its registered COMIC-CON and COMIC CON INTERNATIONAL marks.

Salt Lake CC defended primarily on the ground that “comic con” is a generic term for comic book conventions.  The convention organizers cited to the names of various cities’ comic conventions to show the term is used generically—Motor City Comic Con, New York Comic Con, Denver Comic Con, and Emerald City Comic Con, among others.  Salt Lake CC also pointed to the usage of “comic con” in media to generically refer to a type of convention.

A sampling of the various Comic Cons pointed to by Salt Lake CC as evidence of generic use.

Throughout the case, Salt Lake CC worked to rally fans behind the view that “comic con” belongs to the public.  Eventually, Salt Lake CC’s tweets, Facebook posts, and press releases about the case prompted the federal judge to issue a gag order.  The order temporarily prevented Salt Lake CC from commenting on the case, and restricted their ability to republish public court documents.  The order was appealed to the Ninth Circuit and ultimately vacated on First Amendment grounds.

At trial, San Diego CC presented its Comic Con to the jury as a brand.  Through surveys and other evidence, San Diego CC convinced the jury that Comic Con is not a generic term for a type of event.  Instead, San Diego argued, it operates as a source designator for the San Diego convention.

The Jury found that Salt Lake CC’s use of “Comic Con” infringes on San Diego’s registered marks.  The infringement, however, was not willful according to the jury.  Thus, despite San Diego’s request of $12 million in damages, they were awarded only $20,000 for corrective advertising.  Post-trial motions will likely be filed, and the case may be appealed to the Ninth Circuit.  But at least for the time being, it seems Comic Con is (officially) off limits to event organizers without a license.  However, I suspect (unofficial) uses of the term will continue.

A few weeks ago, a Mexican restaurant in Fort Collins, Colorado, named “Dam Good Tacos,” agreed to change its name based on a settlement in a trademark dispute with another Mexican restaurant, Torchy’s Tacos.

Torchy’s Tacos owns a federal trademark registration for the mark “DAMN GOOD TACOS” (Reg. No. 4835497) for restaurant services. After learning of the Dam Good Tacos restaurant, Torchy’s filed a complaint in federal court, asserting trademark infringement based on the nearly identical use of its mark, for related restaurant services.

The re-branded name of Dam Good Tacos is now DGT, an acronym for its previous name. Some Coloradans are unhappy with the name change, and Torchy’s is facing some significant backlash on social media for initiating this trademark dispute.

For example, one social media user states that she “kinda hates” Torchy’s for suing DGT, and another stated “shame on Tochy’s” regarding its “frivolous lawsuit,” which makes them “look foolish.”

However, the lawsuit is hardly frivolous. The parties’ marks and restaurant services are nearly identical, and Tochy’s appears to have priority, in addition to all the legal presumptions that come with its federal registration. Also, the parties’ businesses are in the same market, with a Tochy’s Tacos location just a couple miles away from DGT. And before suing, Tochy’s offered DGT financial assistance with a name change, but DGT refused.

Nevertheless, the social media backlash is a reminder that, no matter how strong the case for infringement, trademark “bullying” is a prevalent topic, and it’s important to be cognizant of the potential for negative PR in any enforcement efforts, particularly when there is a significant disparity in the size and resources of the parties, and/or when either party is popular or well-known in a particular market.

There have been several recent examples in this context, where large well-known companies initiated enforcement efforts against smaller parties, but have done so in creative, friendly, and humorous ways, which not only avoided criticism, but also benefited all parties involved, with a supportive public reaction and widespread media coverage.

Two of my favorite, recent examples of this, are the Netflix “Stranger Things” demand letter (we blogged about it here), and Bud Light’s Dilly Dilly demand scroll — which was read aloud by a medieval character at the alleged infringer’s brewery (see our blog post here). Rather than face any backlash or claims of bullying, the reactions to these enforcement efforts were positive, with both companies receiving significant praise, such as “funny,” “cool,” and “super classy.”  That’s quite a feat, as those words are quite rarely applicable to legal demand letters.

What do you think about Torchy’s approach here? Do you have any favorite examples of successful enforcement efforts from a public-relations perspective?

-Mark Prus, Principal, NameFlash Name Development

A lot of entrepreneurs launch businesses behind a name they developed on their own. I get the fact that the name of the startup is intensely personal for the founders. Also money is tight in a startup and spending money to develop a name and do trademark research on it seems like a “nice to have” versus a “must do.”

But when you think about it, the company/product/service name is the first point of contact for a potential consumer and what could be more important than that?

I won’t suggest that founders abandon any hope of developing the name on their own. I will suggest that at a minimum founders need to get a “second opinion” on the names they develop.

Why is this important? Founders tend to have a very narrow view of the world that revolves around their particular product or service. Most entrepreneurs suffer from the “curse of knowledge” where they know a lot about their topic area and blindly assume that everyone else has a high level of understanding about their product or service.

My favorite example of this is Xobni (pronounced “zob-nee”). The company was founded in 2006 and made software for mobile and email applications. It raised millions of dollars from venture capitalists and was acquired by Yahoo in 2013. After incorporating some of its features into Yahoo Mail, Xobni was shut down. While Xobni disappeared, it remained famous as a prime example of the “curse of insider knowledge.” In other words, the founders developed the name and lived with it on a daily basis, but failed to take into account the fact that most consumers could not relate to the name in any way. The founders of Xobni loved the name because it was inbox spelled backwards. They also assumed that people would fall in love with the name in the same way that they did.

If you are interested in the science behind the “curse of knowledge” you will find more details in my book The Science of Branding which is available on Amazon.com.

There is another reason why founders should get a second opinion on their branding and that is because Google makes you stupid. OK, technically Google doesn’t make you stupid, but it does shield you from diversity. And a lack of diversity in branding will limit the appeal of your product or service.

This phenomenon is described in the book The Filter Bubble: How the New Personalized Web Is Changing What We Read and How We Think.” The internet was developed as a means for humans to gain a broader view of the world. However, the use of AI by companies such as Google and Facebook is doing exactly the opposite. Because Google and Facebook are driven by advertising revenue, they intentionally provide you with a narrow view of the world because they think that will enhance their revenues. In most cases, people will enjoy their web browsing experience if they are presented with web pages that agree with their view of the world. Over time, you are exposed to highly filtered results that tend to sound familiar because your viewing horizon is limited by your web browsing experience. You will see fewer contrary points of view because Google serves up a world that aligns with your browsing history.

That is precisely why a “second branding opinion” is necessary. When I conduct a name development project I always ensure that I have a diverse panel of freelancers working on a project. I might have an artist, a scientist, a musician, a professional name developer, a pharmacist, and a NY Times best-selling author working on a project. Sometimes the best names come from the most unexpected places!

Entrepreneurs should expand their horizons for branding and at a minimum make sure they get a second opinion on the names for their company/product/service!

Attorneys in general, and trademark attorneys in particular, have a reputation for heavy handedness. The traditional weapon of choice for these legal pugilist has been, and continues to be, ye olde cease and desist letter. A long, unnecessarily wordy letter sprinkled with “without authorization”‘s and “reserves all rights and remedies”‘s and other thinly veiled and not-so-thinly veiled threats of legal action. There are times when the traditional cease and desist letter is acceptable – Nay! – all but necessitated! But attorneys with an eye on their client’s business goals understand that there is no such thing as a one-size-fits-all enforcement communication. Indeed, the trademark tomes are jammed to the brim with tales of trademark owners whose actions have earned them the alleged label of a “trademark bully.”

But Bud Light’s recent dispute with a local Minneapolis brewery was just the opposite. Instead of creating a public relations nightmare, fanning the flames of “Big Beer” versus “Craft Beer,” Bud Light turned a trademark dispute into an advertising boon! The issue involved Bud Light’s newly adopted advertising tagline DILLY DILLY, which appeared in a Bud Light commercial earlier this year. Modist brewery chose to name its new Mosaic Double IPA “DILLY DILLY.” At the moment, the beer is still posted on the Modist Brewing website. The companies reached a friendly agreement and Bud Light even offered Modist two free tickets to the Super Bowl (which, coincidentally, will be in Minneapolis). And then, like a foam cherry on top, Bud Light hired an actor to visit the Modist taproom and “deliver” a cease and desist message from a scroll in medieval tongue. Modist plans to exhaust its current supply and then, if the beer is brewed again, use a different name. Even if the beer comes back as a new name, Modist will still have Ye Olde Scroll, which Modist has hung in its taproom.

In this instance, everyone seems to win. Bud Light received favorable press coverage throughout the country on the issue and put all other breweries on notice of its claimed rights in DILLY DILLY tagline. Modist received some great free publicity, two months ahead of the biggest sports party in the United States. I have to assume there will be more than just a handful of beer drinkers coming for Super Bowl festivities, wanting to go to the Dilly Dilly brewery and get a picture with Ye Olde Scroll.

Scrolls won’t be the next big thing in trademark enforcement. However, this is another example of how creative legal approaches can not only resolve a problem more efficiently, but end up creating other benefits for your business or clients. And with the number of breweries and beers expanding at an exponential rate the last few years, the industry will need to continue to find creative solutions to these problems. It’s great to see even the big players in the industry recognize this need.