Photo credit: G. Baird

Another Creative Brand Protection event is in the books, thanks to our incredible panel of experts:

  • Karen Brennan, Senior Director, Intellectual Property, Best Buy
  • Anne Hall, Technology Strategy Manager-Life Sciences, University of Minnesota
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Tim Sitzmann, Trademark and Brand Protection Attorney, Winthrop & Weinstine

Their insights and perspective on launching new brands and refreshing mature ones were priceless.

Aaron Keller, Tim Sitzmann, Karen Brennan, Anne Hall (Photo credit: G. Baird)
Anne Hall’s storytelling gifts were on display for all to learn from and enjoy (Photo credit: G. Baird)
Photo credit: G. Baird
Photo credit: G. Baird

Despite tricky last minute weather with a rainy metro area, an engaged audience still joined us.

Photo credit: G. Baird
Photo credit: G. Baird
An engaged audience with excellent questions (Photo credit: G. Baird)
Matt Smyth reading the fine print with encouragement from Kyle Kroll (Photo credit: G. Baird)
Kyle Kroll working the room and sharing the DuetsBlog wealth (Photo credit: G. Baird)

In typical DuetsBlog-style, we avoided legalese, to bring trademark and branding types together.

Photo credit: G. Baird

If there are topics you’d like to have us cover next time, please let us know, we’d love your input!

Yeah, we usually mean this Apple, when we spill digital ink, not today, instead the edible varieties:

Hat tip to Erik Pelton who tweeted about the federal registration of LUDACRISP for fresh apples.

We know something about non-ludicrous trademark protection for apples > First Kiss and Rave.

They are newly minted brands for the MN55 Apple, a cross between HoneyCrisp and MonArk.

As it turns out, Honeycrisp might have been a trademark, but for its inclusion in a plant patent.

If an apple a day keeps the doctor away, does that include juris doctors who are into trademarks?

Or, would it be ludicrous for Apple, you know the iPhone XS one, to name a device Honeycrisp?

If only Honeycrisp could be a University of Minnesota apple trademark; Apple still has a chance.

To grasp lessons learned from the Honeycrisp story, and fully digest the Best Buy brand refresh, join us in Minneapolis on Thursday, a few seats remain for our Creative Brand Protection II event:

Winthrop & Weinstine’s Trademark and Brand Protection practice group will host a few hours of trademark and brand protection education, food and drink, and networking!

For the educational portion of the evening, we’ll share valuable insights and guidance for those who love brands and want to learn creative strategies for maximizing their value.

Yours truly, will moderate a panel discussion joined by:

  • Karen Brennan, Senior Director, Intellectual Property, Best Buy
  • Anne Hall, Technology Strategy Manager-Life Sciences, University of Minnesota
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Tim Sitzmann, Trademark and Brand Protection Attorney, Winthrop & Weinstine

The panel will share best practices and creative approaches to both launching new brands and refreshing a mature brand. The panel will develop a robust discussion using the University of Minnesota’s MN55 apple launch and Best Buy’s brand refresh to explore the following themes:

  • Transforming a commodity into a valuable brand
  • Strategies for selecting and owning names and marks
  • Carving a path for global trademark and brand protection
  • Legal considerations for refreshing a brand’s visual identity

Reserve your spot now, space is limited. We hope you will join this lively and informative event!

And, I’ll say it again, if only Honeycrisp was an apple trademark, or an Apple trademark . . . .

In the meantime, since Honeycrisp is generic for fresh edible apples, is this stylization distinctive?

Nope, the pedestrian style is not striking enough to be trademark ownable, contrast Miller’s Lite.

If you want to learn how to see around corners when it comes to doing battle on the IP landscape, the 2016 Midwest IP Institute is just around the corner in downtown Minneapolis.

Like last year, a full two days of excellent programs, but this year on Thursday and Friday September 22 and 23. Here are details for how you can register to attend.

And this year, for the Annual Trademark Review, I’ll be teaming up with a former colleague and one of our founding writers on DuetsBlog, Karen Brennan, now in-house counsel at Best Buy.

On that note, here are a few of my favorite Karen Brennan DuetsBlog posts from the not-to-distant past:

Enjoy all, thanks again Karen, and we hope to see many of you next Thursday September 22 at 11:15 AM, at the MN CLE Center, for a full hour of trademark energy.

As we look forward to experiencing, enjoying, accomplishing, and sharing great things together in 2015, I wanted to reflect for a moment on how we got here, and give some hearty thanks to — and remind our readers of — four talented DuetsBlog alumni who helped pave the way:

  1. Dan Kelly was here in the beginning, six years ago, guiding our vision of DuetsBlog and helping it become a stunning reality. As one of our founding writers, Dan consistently showered readers with his clever wit, valuable insights, and his gifted keyboard. He penned our second blog post on a topic that remains relevant (my son’s pocketknife Christmas gift left me needing a refresher to avoid confusion), and here is his farewell post nearly four years later. While he offered so many gems between the alpha and omega, my personal favorite remains I See Blue Ovals (inspired by a family road trip). You can access all of Dan’s posts in order, here.
  2. Karen Brennan was here in the beginning too, and a key contributor and founding writer. She happily wrote our fifth blog post during her self-described “incredibly slow” third trimester, awaiting the birth of her first child. Karen went on to write about the influence of Mommy Bloggers. Although there are so many fun posts to pick from, my personal favorite remains One Great Tub Deserves Another. You can access our previous farewell to Karen, nearly four years ago now, and all of Karen’s posts here.
  3. Sharon Armstrong brought a certain, distinct and entertaining flair to our early blogging with culinary gems like Don’t let them eat bonbons!, Discriminating Palettes,and Intellectual Property for Cocktails? She certainly had her finger on the pulse and the topic of the day, especially if it involved cease and desist manners. But, my personal favorite remains this non-traditional trademark classic: What is Maker’s Mark’s Mark? You can access all of Sharon’s posts here.
  4. Susan Perera was not with us in the beginning, but she contributed an amazing body of work on DuetsBlog during the nearly three years with us. As an avid soccer fan, we anxiously awaited Susan’s trademark insights in covering the World Cup. Susan actually covered a wide range of intellectual property and advertising topics, including puffery, but she is perhaps best known for her substantial work in connection with color trademark protection. You can access Susan’s previous farewell here, and all of Susan’s other posts here.

As much as we miss each of them here on DuetsBlog, we couldn’t be more proud of each of them — all four now hold impressive intellectual property in-house positions at some of the top publicly traded companies and brand owners located here in Minnesota.

Please join me in thanking our distinguished DuetsBlog alumni for their self-evident passion for brands, and their generous and valuable contributions during our early and formative years!

Happy New Year too!

— Karen Brennan, Attorney

Patricia Day, the lead singer of the HorrorPops (Danish band), recently filed a lawsuit against Mattel and Hard Rock Café International for violation of the right of publicity and false association (download a copy of the complaint here) over a Barbie doll released last year.

According to the complaint, Day is the lead singer of the HorrorPops, a “critically acclaimed and innovative pioneering band known for its unique brand of rockabilly music.”  Last year Mattel released a series of rock-n-roll themed Barbie dolls that included named musicians, such as the “Debbie Harry Doll,” the “Joan Jett Doll,” and the “Cyndi Lauper Doll.”  Day claims the final doll in the series, named the “Hard Rock Café Barbie Doll,” is based on her likeness, but “lacks any direct acknowledgement of the female musician – Patricia Day – whose likeness it appropriates.”

Day claims to be renowned and recognizable to fans for her distinctive appearance and look which combines the following elements: (1) black hair meticulously done in 50’s pin-up fashion; (2) heavily applied black eye shadow and deep red lipstick; (3) form-fitting ‘50s- style pencil skirts that go just past the knee; (4) sleeve tattoos on both upper arms; and (5) her giant tattooed upright bass.   The doll, depicted below next to a picture of Day, includes many of these elements.

 

One question to consider is how common are these claimed signature “elements”?   While I have not heard of the HorrorPops, quite a few other well-known women with very similar images come to mind when I see this doll such as  Kat Von D, Dita Von Teese and the original, Betty Page.

Hard Rock is still selling the doll, listed as Rockabilly Barbie, but the Mattel web site, which lists the doll as the Hard Rock Café Barbie Doll with a “rockabilly” look, is sold out.  I guess we will all have to spend our $80 somewhere else.

Day is seeking injunctive relief and damages.

— Karen Brennan, Attorney

The Supreme Court heard the appeal of Costco v. Omega, a copyright decision from the Ninth Circuit regarding the application of the first-sale doctrine to a foreign manufacturer who did not manufacture the goods in the U.S. or sell the goods directly to Costco.  The outcome?  The Supreme Court’s entire decision (available for viewing here) consisted of nine words: “The judgment is affirmed by an equally divided Court.”  No comment;  no indication of how individual Justices voted; no precedential value.  According to Answers.com, it may be the shortest Supreme Court opinion in history.

By way of brief history of the Costco v. Omega case, the Ninth Circuit found that the first-sale doctrine was unavailable to Costco as a defense to Omega’s copyright infringement claims (dealing with the distribution of copyrighted goods), allowing the foreign manufacturer of watches to use copyright law to stop Costco from selling its actual products (not knock-off products), originally sold to another party and resold to Costco, in the United States without Omega’s direct authorization.

Under the well-established first-sale rule, once a copyright owner sells a copy of a protected work, he may not thereafter exercise the distribution right with respect to those copies and  subsequent owners can essentially do with the purchased copy as the please – such as sell it or lend it out.  In Costco v. Omega, Omega claimed, and the Ninth Circuit agreed, that the defense was not available in a situation where the goods were not manufactured or originally sold in the U.S..  In this case, watches bearing the copyrighted design (registered in the U.S.) were made in Switzerland and sold to authorized dealers in Latin America who then sold them to gray-market distributors who imported them into the U.S.  Costco purchased the Omega watches from the gray-market distributors and was then able to sell them at a price lower than Omega’s U.S. dealers.

In a previous decision, Quality King Distributors, Inc. v. L’anza Research International, Inc., 523 U.S. 135 (1998), the Supreme Court ruled that the first-sale rule can provide a defense in a situation where goods are imported into the U.S. from another country for resale. However, the Ninth Circuit distinguished that case on the basis that the goods in Quality King had been originally manufactured in the U.S., but were shipped out and back in prior to the “unauthorized” resale in the U.S.

The federal government filed an amicus curiae brief in Omega v. Costco listing several adverse policy consequences with the Ninth’s Circuit’s decision including the end of secondary markets, higher unemployment and encouraging companies to move manufacturing overseas.

Obviously, this case was probably not the best candidate for the shortest opinion in history.

—Karen Brennan, attorney

I found Fig. 1 (from what I am sure was a very valuable patent, although I could not locate it) to be very fitting for this post.  After three and half years, four Office Actions, a Petition to the Director and finally an appeal, our client’s product configuration mark for the PPK handgun design (below) will finally take its place on the Principal Register.

Mark Image

Although the design mark application originally faced a functionality refusal as well, the only issue on appeal was whether applicant had established that the PPK design had acquired distinctiveness.  Despite the Board’s less than favorable track record with product configuration marks (the TTABlog noted two reversals in the last four years), the Board reversed the registration refusal for the PPK design mark, finding the applicant had proven acquired distinctiveness in the design.  In re Carl Walther GmbH, Serial No. 77906523 (Oct. 26, 2010) (download decision here).

By way of brief summary, the Board recognized the direct evidence submitted in support of acquired distinctiveness, including an online survey where 54% of the relevant consumers surveyed associated the PPK design with a single source and 33% correctly identified the source.  The decision also emphasized a declaration from the author of the Blue Book of Gun Values as direct evidence.  In addition to the direct evidence, the Board carefully considered the extensive circumstantial evidence submitted, including unsolicited media coverage for the PPK design as James Bond’s weapon of choice for forty years, as well as evidence of advertising expenditures and licensing of the design for replica products.  Additional evidence submitted, but not mentioned in detail included other industry declarations, blogs and websites dedicated to the PPK design and its fame, advertising and promotional pieces emphasizing the PPK design, evidence of expansion of the design mark into other products such as replicas, use of the mark on promotional products, and unsolicited use of the PPK design in other movies, television shows and video games.

A few blogs (here and here) have commented that the “cinematic fame” was the reason for the reversal.  In my opinion (admittedly biased), the Board once again reiterated a totality of the evidence approach for product configuration marks.  While the Board did appear to focus on the online survey, after evaluating its results, the Board clearly noted that no single piece of evidence was determinative; rather each was “considered in conjunction with the entire record before us.”  As for the Bond evidence, the Board questioned whether Bond’s obvious effect on the public’s PPK recognition was carried over into evidence of a similar effect on the relevant consumers (handgun owners or potential owners as compared to movie fans), but found that some of the survey responses clearly demonstrated that the films have “influenced handgun consumers and their recognition of the PPK handgun design.”

Check out the TTABlog and The Hollywood Reporter blogs for more on the PPK Design decision.

— Karen Brennan, Attorney

This is a departure from my typical blog, but it is a good opportunity to provide some basic information.  As part of my practice I often have clients or referrals for clients seeking copyright protection for something they have created or plan on creating. What I have discovered is that there are some common misconceptions surrounding copyrights in the United States.  Below are a few of the most common.

1. Misconception: You must register a work with the Copyright Office to obtain a copyright. 

A copyright automatically exists the moment a new work is created (sufficiently original content fixed in some tangible form). No additional action is required to obtain a copyright in the United States.  While it is not required, it is a good idea to register a work with the Copyright Office for numerous reasons (to be discussed in a later blog). If a work is published, the work should be registered shortly after publication (for reasons that will also be discussed in a later blog). “Publication” has a broad definition; a work is published for copyright purposes when copies are sold, given away, posted, distributed or made available in any other way to the public. “Public” is equally broad and can include very few people.

2. Misconception: If there is no copyright notice, it is not copyrighted and/or copyright notice is required in the United States. 

As noted above, all works of sufficient originality are protected by copyright in the United States upon creation. If the work was created after 1978, notice (© symbol with owner’s name and publication date) is not required on a published work to be protected by copyright in the United States.   While not required, it is a good idea to place a copyright notice on a published work to put others on notice of your copyright claim and to deter potential infringers.   If another party copies your properly noticed work, it would be difficult for that party to claim the infringement was innocent (that he or she did not know the work was protected) and the infringer will more likely be treated by a court as a willful infringer. Willful infringement can lead to a greatly increased damage award for the copyright holder.

3. Misconception: A copyright merely prohibits another party from copying the work or a portion of the work word for word. 

Copyright law provides the creator of work with a bundle of rights over their work, including the right to reproduce the work (to make copies of a protected work), the right to create derivative works or adaptations (new works based upon the protected work), the right to distribute the work (in any manner), and the right to publicly perform or display the work (i.e., perform on stage or display in public). The author or owner of the copyright may enforce any of these rights against a party who is wrongfully using a work.

I hope this is helpful.

— Karen Brennan, Attorney

Over the Labor Day weekend, my family traveled to a cabin in northern Minnesota, as many families must have done, based upon the amount of traffic coming back into Minneapolis on Monday.  On our return trip, our caravan of cars decided to look for a Perkins for breakfast (I grew up in Iowa and for my sister and me, Perkins = childhood.  Remember the wishing well?)  Rather than using our phones to locate one, we simply looked for a large American flag.

My husband asked an interesting question – could Perkins stop other restaurants from using a large American flag since “everyone knows it means Perkins?”  While Perkins could not claim exclusive rights to the American flag itself, could they claim trade dress rights in the size of the flag or the placement of the flag, if done consistently for each restaurant?  Even if Perkins couldn’t actually protect its use of the flag, it appears they are gaining a “trademark” benefit since I would have to agree that the public, at least the Midwestern public, associates its use with Perkins.

 

— Karen Brennan, Attorney

Unbelievably, the MTV show Jersey Shore has presented even more material to blog about (see Sharon Armstrong’s previous blog Trademark Lessons from Jersey Shore here).

Jersey Shore cast member Nicole “Snooki” Polizzi is attempting to federally register her nickname “Snooki” as a trademark for books.  Unfortunately, the United States Patent and Trademark Office has initially refused registration based upon a prior registration for “Adventures of Snooky” in connection with a series of children’s books.  The Smoking Gun reports the Snooky books feature a cat who gets knocked overboard on a family fishing trip.  Interestingly, the authors of the Adventures of Snooky books reside in New Jersey (check out the link here – isn’t that the Jersey Shore behind them?).

I am going to go out on a limb and guess that Snooki from Jersey Shore is not going to write children’s books.  Thus, perhaps she could simply amend her description of goods to read “books, specifically excluding and most definitely not for children.”