The federal courts of appeals have split as to how to apply the doctrine of nominative fair use in trademark infringement cases. Last week, the Second Circuit endorsed the nominative fair use factors used by the Ninth and Third Circuits. At the same time, however, the court rejected the manner in which the Ninth and Third Circuits evaluate these factors, instead adopting a third approach.

The decision is Int’l Info. Sys. Security Cert. Consortium Inc. v. Sec. Univ. LLC, No. 14-3456 (2d Cir. May 18, 2016) (decision available here). The plaintiff ISC developed a certification for information security professionals, marketed as the CISSP certification program. A party who passes the program can identify itself as CISSP certified.

The defendant, Security University, passed the program and therefore was able to identify itself with the CISSP certification mark. However, Security University chose to advertise itself as “Master CISSP” and “CISSP Master.” ISC objected to Security University’s use, arguing that it incorrectly suggested that the defendant had obtained some higher level of certification. As the lawsuit suggests, Security University declined to comply with ISC’s request.

For the casual trademark fan, it is worth noting that trademark law has two general types of “fair use.” Classic fair use, or descriptive fair use, has been recognized for a longer time. If a trademark consists of a descriptive word, consumers and competitors are free to use that mark in its original, descriptive meaning. The second category of nominative fair use is more recent. The doctrine provides that if a person is using a mark to identify the products of the trademark owner, then it is not an infringement (for more background, click here and here).

Not all circuit courts have adopted the nominative fair use doctrine. Those that have don’t agree on how to apply it. The Third Circuit considers nominative fair use to be an affirmative defense to a trademark infringement claim. Under Ninth Circuit case law, a court is required to identify whether the claim of infringement involves nominative fair use. If not, the traditional likelihood of confusion factors apply. If the complained of use does qualify as “nominative fair use,” then the likelihood of confusion factors are replaced by a different set of factors.

The Second Circuit rejected both of these approaches. In rejecting the Third Circuit’s view, it concluded that Congress did not intend for there to be an affirmative defense of nominative fair use because Congress chose not to include it with the other enumerated affirmative defenses. In rejecting the Ninth Circuit’s approach, the Second Circuit recognized that many of the likelihood of confusion factors are “a bad fit” to evaluate nominative fair use. Yet the Second Circuit saw “no reason” to replace the traditional test. Instead, the Second Circuit held that a court should consider the traditional likelihood of confusion factors, the Ninth Circuit’s nominative fair use factors, and the Third Circuit’s nominative fair use factors.

Instead of providing clarification regarding application of the nominative fair use doctrine, the Second Circuit’s decision seems to add another layer of disagreement. If the parties to the lawsuit aren’t already sick of litigation, perhaps the district court can provide some clarification on remand.

I once spent 20 minutes trying to figure out whether I was installing a metal insert for an NYMÖ lamp upside down, or rightside up. I’m still not sure I ever installed it correctly, but it’s still working. So there. But a new IKEA översittare is getting a lot of attention on the internet, and it seems to be just as confusing. What is the översittare? It’s not Swedish for standing desk, sliding table, or uncomfortable couch. No, översittare is Swedish for bullies (at least according to Google Translate).

IKEA is following in the footsteps of Chick-Fil-AStarbucks, Skee Ball, New York, Nutella, and others in joining the not-so-inner circle of companies accused of bullying small businesses and individuals with “false” claims of trademark infringement. You see, for eight years “Jules” (a pseudonym) has operated a website called IKEA Hackers. Apparently people have been taking their IKEA products and modifying (or “hacking”) them to create other surprising, useful, or interesting pieces of furniture or artwork. Some are pretty impressive, some are surprisingly useful, and some… exist. Jules has been gathering and indexing these how-to instruction videos/lists at her www.ikeahackers.net website for nearly eight years without complaint from IKEA. At some point in the recent years, she also began including advertisements on the site to help compensate her for her time and costs. And then came the cease and desist letter (also, here).

While the Wall Street Journal and the Washington Post take a balanced approach, the most cited reports come from bloggers who aren’t quite so, well, “balanced.” Two main articles feature the headlines “Ikea bullies Ikeahackers with bogus trademark claim” and “It Took 8 Years for IKEA To Get Around To Being A-Holes to IKEAhackers.” In one of the writer’s eyes, “Ikea’s C&D is, as a matter of law, steaming bulls–t.” And if you think those are strong words, you should read some of the comments. With such strong opinions, IKEAHackers must be a pretty clear-cut case of bullying. Plus, shouldn’t IKEA be happy that so many people are interested in (and purchasing) their products?

That got me thinking: is it really a steaming pile of Bull? So I visited the website and noticed the large IKEA HACKERS logo, in the same IKEA yellow and blue colors, at the top of the page. I also noticed the following image :

You may recognize our little friend. You know, the IKEA man from all the assembly manuals. That link leads to an official IKEA Hackers Amazon Store (I knew that cart looked familiar), where IKEA Hackers sells “new, used, and even better” “IKEA items.”

Based on the foregoing, I ran through a checklist of common defense to trademark infringement claims:

1) Descriptive fair use: This is the “Classic Fair Use” test. If the mark has a descriptive meaning, the owner of the trademark can’t prevent others from using the mark in its primary descriptive sense. For example, even though Zatarain’s owns a trademark for FISH-FRI, they cannot prevent others from describing their “fish fry” product as “fish fry.” IKEA is not a descriptive term, so this defense does not apply.

2) Nominative Fair Use: This defense allows parties to refer to a trademark as a noun when necessary. As in, “We sell used Lexus® cars.” It is not a clear doctrine, but the use by IKEAHackers appears to go well beyond what would be a nominative fair use. The website uses IKEA HACKERS as the website name and as a mark, it does not just refer to IKEA® furniture in the nominative sense.

3) Free speech: Courts have sometimes employed the Rogers v. Grimaldi test to determine whether use of a trademark is not an infringement. It applies only to expressive works (art, books, movies, etc.). IKEA Hackers is not (at least only) an expressive work and likely would not be eligible for such protection.

None of these three defenses appear to be applicable, but that doesn’t mean that the IKEA Hackers’ use is infringing. As far as I can tell, the actual demand letter and the subsequent negotiations/agreement have not been made public. Because of this, it is difficult to determine the exact claims and demeanor involved. What is clear though is that Jules is using IKEA Hackers as a mark at least for the website, and for an online retail store that sells identical goods (although, used goods).

The website isn’t a clear infringement, but it also isn’t “steaming bulls–t” as a matter of law. IKEA had reasonable justifications to send its cease and desist letter, regardless of whether social media and bloggers agree.  We should all be weary of companies overreaching with their trademark rights – this just doesn’t appear to be one of those situations.

 

While filling up my gas tank at our local Costco last week I coudn’t resist capturing this photo of pump signage to ask our dear readers a few pointed questions:

Is there any doubt that the automobile depicted in the Costco advertisement is a Corvette Stingray? If so, HiConsumption should resolve any lingering questions.

How did you know (if you did), before checking out the 2014 Corvette Stingray photos on HiConsumption? Perhaps the federally-registered Stingray logo on the front quarter panel behind the wheel? The barely visible Corvette logo on the wheels? The overall shape and configuration of the automobile?

Although GM has a long list of non-traditional trademark registrations to sift through on the USPTO database, I was unable to locate one covering the current shape of the Corvette Stingray (I suspect our friends who are also patent types could probably locate some design patents covering the ornamental design of the vehicle, so I didn’t bother going there), but I did locate a few trademark configuration registrations covering earlier Corvette model shapes of actual vehicles and toy replicas (here [cancelled], here, and here).

Marketing types, how would you go about obtaining the Corvette image to incorporate in the above advertisement? Would you feel the need to obtain permission from GM to display these ads at point of sale? I hope so.

Legal types, is there any legitimate basis for Costco claiming fair use here? I’m thinking not — assuming this use is not authorized or licensed, it appears to appropriate the goodwill of GM to attract attention to and help sell Kirkland Top Tier gasoline. Remember this little gem from five years ago in our archives? The Costco ad above — depicting the entire profile of the vehicle shape and design — seems even less justified than the partial Corvette image in the Schlitz ad, at least from where I’m sitting.

Last, do you suppose this ad on signage slipped by Costco’s legal department or might there be an aggressive stand on fair use, or perhaps if questioned, an attempted defense to challenge GM’s underlying rights — I’m assuming GM can establish acquired distinctiveness in the shape if it had to, even without a federal registration (but a single piece of paper as proof would be much better).

Remember what happened when Tiffany (the jewelry company, not our Tiffany) complained about Costco’s unauthorized use of the Tiffany name?

Costco counterclaimed for cancellation on genericness grounds, so what might we expect here, assuming the point of sale advertisement was not authorized or licensed by GM?

I’m thinking this signage is going bye bye, how about you? So, why don’t we just start the count-down now?

Unable to resist a good trademark story, I snapped this photo in one of the countless gift shops along Hollywood Boulevard, as my family searched for various stars and did the "Walk of Fame," a week or so ago. What drew us into this particular shop was a striking wall full of shelves displaying what appeared to be rows upon rows of mini-Oscar gift statuettes.

Unlikely, however, as the Academy of Motion Picture Arts & Sciences "has carefully limited reproductions of the Oscar statuette . . . ." In fact, the Academy has a pretty controlled press-kit full of legal regulations, and the only trinkets that the Oscar trademark is federally registered for appears to be clothing, books and pamphlets; and the non-verbal two-dimensional depiction of the Oscar statuette is federally registered as a trademark for only clothing, pre-recorded videotapes, and books and pamphlets, no trophies or other gift items, it appears.

Indeed, upon closer inspection, the shop’s sign appropriately reads: "Small Trophy $8.99." It struck me that this is literally the sign of an effective trademark enforcement program. Left to their own devices, it wouldn’t be surprising to see shopkeeper’s signage reading "take home your very own Oscar style trophy," or "Oscar style trophies for sale," but the well-trained sign makes no such mentions and it does not utter the words "Oscar" or "Academy Awards," presumably because the Academy’s Oscar trademark police frequently patrol these parts. Or, perhaps when you’re positioned on Hollywood Boulevard, tourists get the picture, so to speak, without the use of another’s probably famous trademark.

What about when your gift or trophy shop is not on Hollywood Boulevard, but instead, somewhere along the Information Superhighway or beyond?

Continue Reading The Sign of a Successful Trademark Enforcement Program

  

The Easter Bunny eats lettuce, right? OK, not a very substantive tie-in for today’s Easter Day post . . . .

Anyway, about five weeks ago the United States District Court for the Northern District of Illinois rendered a trademark decision in Lettuce Entertain You Enterprises,Inc. v. Leila Sophia AR, LLC, d/b/a Lettuce Mix, granting plaintiff Lettuce Entertain You a temporary restraining order and preliminary injunction against defendant’s use of Lettuce Mix in connection with restaurant services, offering, among other items, lettuce salads.

The likelihood of confusion analysis was let us say, garden variety, so I thought I’d nibble instead, at least a bit, on the classic a/k/a descriptive fair use defense, asserted in the defendant’s prayer for relief, which was correctly denied.

Defendants argue that their use of “Lettuce mix” is fair. To prevail on their fair use defense, defendants must show that (1) they are not using Lettuce mix as a service mark; (2) they are using the mark in good faith merely to describe their services, and (3) the mark is in fact descriptive of their services.

                                                              *  *  * 

[D]efendants in this case are not using “lettuce” solely in the ordinary sense. Rather, defendants are using it as a pun to indicate that it is a restaurant that mixes salads to-order for its patrons, not that it sells their main ingredient, lettuce. Because defendants cannot meet the first element of its fair use defense, their fair use defense must fail.

Let us say, this decision serves as a good reminder that one cannot succeed on a classic or descriptive fair use defense when the words at issue are being used by the accused infringer in a service mark manner. Use on signage above the entrance to a restaurant typically will fall into this category of no fair use. The fact that defendant also made a commercial use of the words Lettuce Mix in a pun sense, not solely in their ordinary sense, caused this use to be considered an attention-getting service mark use, outside the reach of a successful fair use defense. Accordingly, the defendant’s prayer for relief was correctly denied.

Bloggers are, of course, free to make liberal use of puns in their posts, without those puns being labeled service mark uses, even if they heppen to attract some attention.

  v.     

Texas Toast is the generic name for a type of bread, you know, the big thick double-cut slices. Anyone can call their bread Texas Toast if that is what they are selling, and, by the way, it doesn’t have to be toasted for the name to fit.

But, what if you’re selling a product made from bread, say, croutons? Can Texas Toast be owned and registered as a trademark for croutons? What if they are big, thick croutons, with a "Texas Toast" cut? And, if you market your croutons as "New York " brand, "The Original Texas Toast" croutons, does that not imply, if not admit, that others are free to compete by selling their own brand of, perhaps, non-original "Texas Toast" croutons? What if you didn’t start using a TM designation until after you noticed your competition selling Texas Toast croutons? Interesting questions, no doubt.

Well, ten days ago, a federal district judge in Ohio denied cross-motions for summary judgment in a trademark infringement case over an Ohio company’s claimed common law unregistered rights in "Texas Toast" for croutons and a Grand Rapids, Michigan company’s claimed descriptive fair use of "Texas Toast" also in connection with croutons. As an aside, having spent two years in school there, when I think of Grand Rapids, Michigan, and bread, sorry, all that comes to mind for me, are the wonderfully and perfectly steamed hot dog buns at the world famous Yesterdog.

In any event, back to Texas Toast, here is a pdf of the decision in T. Marzetti Co. v. Roskam Baking Co. , indicating that it is too early to decide the Texas Toast trademark infringement case because there are several disputed issues of fact, including, among others, the meaning and the term’s placement on the all-important Spectrum of Distinctiveness, i.e., whether "Texas Toast" is generic, descriptive, or suggestive for croutons.

Now, since the case wasn’t cut short and decided on summary judgment with a limited record, we’ll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but  I’ll have to say, at this point, "Texas Toast" sounds to me like a category of croutons — those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza — each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn’t matter if you’re the first to use a generic term, if found generic, it is available for use by all, even direct competitors.

So, this is probably one of those trademark cases where who wins will come down to the proper placement of the claimed mark on the Spectrum of Distinctiveness. If generic, case over, defendant wins. If suggestive, plaintiff acquired rights based on its first use, two years prior to defendant’s use, and will likely win, provided a likelihood of confusion can be shown. If descriptive, plaintiff will be in the difficult position of proving that it acquired distinctiveness in "Texas Toast" prior to defendant’s first use, so within a short two-year period of time. If so, good luck with that.

No doubt, when it comes time for trial (or perhaps another summary judgment motion prior to trial), the plaintiff will make the most of the fact that the Trademark Office did not issue a descriptiveness or a genericness refusal on TEXAS TOAST for croutons, see the USPTO details here. Seems like an oversight to me, at least with respect to descriptiveness, after all, the plaintiff has the number one selling brand of texas toast style garlic bread, and it now has expanded that use into the field of croutons.

Ironically, to put its TEXAS TOAST trademark application in condition for publication by the U.S. Trademark Office Marzetti had to argue, and did so successfully, that it wasn’t likely to be confused with the prior federally-registered TEXTOAST trademark for bakery products. In doing so, it narrowed its description of goods from "croutons" to "croutons sold in a salad toppings section of grocery stores and supermarkets." Given that Marzetti’s mark will now be published for opposition, it is probably safe to assume that Roskam Baking will now oppose registration of Marzetti’s claimed TEXAS TOAST mark for croutons, so it doesn’t become registered prior to trial, but we’ll see.

So, what do you think about the critical Spectrum of Distinctiveness questions?

  1. Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
  2. Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
  3. Is Texas Toast suggestive of croutons, because, a consumer’s imagination is required to understand the connection between the mark and the goods, or as plaintiff argues, "everything is bigger in Texas."  

Is plaintiff Marzetti’s suggestiveness argument all hat and no cattle?

Now, vote again, after reading plaintiff’s own description of its croutons below the jump.

Continue Reading Texas Toasted? How to Slice the Trademark Spectrum of Distinctiveness

A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M’s permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M’s trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

Continue Reading Does Your Eye Spy A Canary?

This billboard ad has appeared in various locations around the Twin Cities for some time now. 

Each time I saw it, I wondered whether it would be the last, given how vigilant 3M is in protecting its various trademarks and other intellectual property. This time, I had a camera handy to capture it.

Now it’s time for some questions.

Is there any question that this Accountemps billboard advertisement prominently features a Post-It brand note?

After all, 3M owns a non-traditional single-color trademark and federal trademark registration for the color canary yellow "used over the entire surface" of "stationery notes containing adhesive on one side for attachment to surfaces." In case you’re wondering, at least one dictionary defines "canary yellow" as "a light yellow." Other 3M trademark registrations related to the Post-It brand refer more broadly to "yellow," and are not limited to "canary yellow," here, here, here.

This billboard ad appears to be yet another example of a well-known, if not famous, non-traditional trademark being used in another’s advertising, not for comparison purposes, but as a prop to help sell goods or services totally unrelated to those of the non-traditional trademark owner. Is the use necessary? Is it appropriate? Should it be considered a fair use, if made without permission? Why didn’t Accountemps make the stationery note prop appear in a color that is not trademarked?

Is the use likely to cause confusion, keeping in mind that actionable confusion is not limited solely to confusion about origin or source, but also protects consumers against likely confusion about affiliation, connection, association, sponsorship, or approval?

Is the look of 3M’s Post-It note a famous trademark? If so, it is entitled to dilution protection too. Section 43(c) of the Lanham Act protects against "dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." If everyone started to depict a Post-It note in their ads would that tend to blur the distinctiveness of 3M’s trademark or strenghten the brand? I’m thinking that trademark types and marketing types might have different takes on this question.

As you may recall, we previously have discussed the implications of using another’s non-traditional trademark in advertising: Levi’s Double Arcuate Design trademark and the shape of a Corvette from the 1960s.

So what do you think, does Accountemps need 3M’s permission for this billboard advertisement?