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

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

Credit: Houston Chronicle

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

Credit: Yelp

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

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

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

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

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

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

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

If you’re a video game fan like me, you’re probably familiar with Blizzard Entertainment and their assortment of popular games, such as Starcraft, Diablo, and World of Warcraft. One of Blizzard’s newest games is Overwatch, a multi-player, first-person shooter game. One aspect of this game is the Overwatch League, a series of tournaments and live events involving Overwatch players around the world, eventually culminating in the Overwatch League World Championships.

Blizzard recently applied to register an Overwatch League design mark, shown below, for various goods and services, including entertainment services in the nature of organizing and conducting eSports and video game contests and video game tournaments.

Major League Baseball Properties, Inc. (I’ll abbreviate as “MLB”) decided to file a request for an extension of time to oppose Blizzard’s application, presumably based on their various Major League Baseball design marks, such as the one below.

Significant press coverage has followed this development, which is somewhat unusual, as this is merely an extension request, i.e., it simply buys MLB more time to consider whether to file a Notice of Opposition and/or to reach out to the applicant to attempt to resolve a dispute informally. Filing extensions of time to oppose are relatively routine in the trademark field. Often times, in borderline cases where a party might not necessarily follow through with an opposition proceeding, simply filing an extension of time to oppose slows down the prosecution of an application and provides extended leverage during informal negotiations between parties.

So this extension of time might not lead to any formal dispute. One might question how likely it is that MLB would really follow through with an opposition here based on the differences in the marks. Both marks have a two-tone background (though in different colors), split diagonally by a white silhouette of a figure. However, the figures are quite different, one being a baseball player about to hit a ball, the other being a figure leaping forward with some type of gun, apparently about to shoot someone (the species of the Overwatch figure is also unclear–Overwatch has a variety human and non-human characters, such as a genetically engineered gorilla).

On a quick search, I’ve come across several design marks with two-tone, diagonal color splits, and white figures in the middle, some of which are in related sporting or entertainment fields. As one obvious example, see the NBA’s well-known logo:

As another example in the video-game field, see the MLG (Major League Gaming) design mark:

I wonder whether the Overwatch League design will end up being of any significant concern to MLB. Perhaps the extension of time to oppose simply provides some leverage over informal talks between the parties towards modifying the Overwatch League design? What do you think?

Google changed its logo this week, and the Internet is not happy about it. In the new design, the name appears in thicker, cleaner letters. Specifically, the new design eliminates serifs—the little tails at the bottom of each letter in many fonts, like Times New Roman.

Google’s new logo and small icon image feature wider text, without serifs, and more rounded, geometric letters. Compare to the old logo and lowercase ‘g’ icon.

The announcement Tuesday, featuring a short animation sequence, revealed changes to both the primary “Google” name, as well as the small icon symbol. Google stated that the change would allow for better transitioning among various platforms and interfaces. The new font may shrink easier and translate on different screens better than the old font.

It’s the first time the company has made a major change to its logo in several years. For the most part, it seems design and branding experts are hailing it as a sleek, modern, and much needed redesign. Graphic designers have noted that the new logo, with its emphasized circles, has a friendlier vibe. The lack of serifs suggests a more modern feel, but the new logo retains pieces of its predecessor with the crooked ‘e’ and iconic color scheme.

The social media public, however, feels a bit differently about the change.

 

 

I’ll be honest. The new design does remind me a little too much of refrigerator magnets. What do you think? Sleek new design, or did Google miss the mark on this one?

 

 

There is a brand new exposer of potential intellectual property violations on the scene, meet LogoThief:

“We exist to name and shame logo thieves and all others who plagiarise the work of logo designers.”

Here is what prompted the start of the website just last week: “We started this website because we are sick of seeing our own work and the work of our peers ripped off by unscrupulous designers in an effort to make a quick buck.”

Here is their concept and the ask: “If you know of any logo thieves out there help us to name and shame them by letting us know as much as you know and we will document the case and share it with the world. Hopefully by documenting each case in a public place we can make it less attractive for these thieves to steal others work.”

Here is a pretty compelling story and an excellent example of what can be found on LogoThief:

I’m not sure what goods or services are offerred under the LUUCA logo, but given the striking similarity of the original and the logo copy, I’m left wondering if there are some logo sellers (note, I didn’t use the word creators or designers) who think if the offered goods/services are different from those of the original there is no intellectual property claim?

 

If so, they have not only ignored or forgotten about the existence of trademark dilution claims for famous logos, but even more importantly, what about copyright?

Even if an admission could not be obtained as to Wellness Travel copying the LUUCA logo, there is little doubt in my mind the Wellness Travel logo is strikingly similar, and when there is access to the original, striking similarity is sufficient to establish copyright infringement.

It will be interesting to watch the LogoThief website develop over time. I suspect it will be closely monitored by trademark and other intellectual property types.

The professional and public shaming, appears to be bringing prompt results, here is the Wellness Travel Global logo (related?) only a week after the LogoThief exposure:

Bravo, LogoThief!

Last week I stopped at a local wine and beer store to pick up a bottle of wine to bring to a friend’s dinner party (but also couldn’t resist purchasing a 4-pack of Surly’s Bitter Brewer. I had never seen it before, but highly recommend it). As I walked back to my car I noticed a pile of buttons lying on the cement portion of the street light, right near the front end of my car. I picked one up and brought it home with me. Please excuse the slight discoloration, it had been raining that day (and just about every other day in Minneapolis during May, unless it was snowing).

I (heart) YN

Do you get it? Don’t worry if you don’t, it took me a second, too. And no, it’s not I ♥ Your Nose. Try sounding it out. No, not I ♥ Yen. Remember the location… Yeah! I ♥ Wine. Clever, no? I thought so.

Of course, beyond thinking it was an interesting slogan, I didn’t think much of it at the time. I knew that it was a reference, modification, wordplay, etc. of the I♥NY t-shirt. But not once, not even in the most dense and confused portion of my mind, was I under any impression that somehow the State of New York had sponsored this button.  In fact, I hadn’t ever even considered the I♥NY to be a trademark. A copyrighted image, sure. But not a trademark.

So imagine my surprise when I learned from a New York Times article, that just recently the New York State Department of Development (owner of registrations for the multiple I♥NY marks) sent a cease and desist letter to a local coffee shop regarding its use of the logo below:

A few preliminary matters: (1) Yes, Mr. Everyman really does have that tattoo on his knuckles; (2) these are clearly distinct goods/services; and (3) if you’re someone who tends to see trademark bullying everywhere you look, could you have picked a victim with a better name than Everyman? According to the New York Times, the Department has sent 1000s of letters over the years, with over a 100 last year alone. A quick review of the Trademark Trial and Appeal Board’s previous proceedings confirms the aggressive approach, with the Department opposing applications for: I♥WY; I♥NY BEER, I♥Chicago; among others.

Some interesting background: Milton Glaser, the man who designed the original the logo, did it for free. In his words it was intended to be “free” for everyone to use, to allow it to “permeate the culture.” And, as the Times points out, “After Sept. 11, when Mr. Glaser designed an “I ♥ NY More Than Ever” logo with a smudge on the heart, the state even threatened to (but did not) sue him.” Boy, really makes you ♥NY, huh?

There is a lot that can be unpacked from this story: while ornamental designs can be registered based on acquired distinctiveness, how much protection should we give such a basic, informational slogan? Do these practices qualify as trademark bullying? Would anyone really be confused as to whether New York was somehow affiliated with Wyoming, Chicago, San Francisco, Iowa City, your friend Ty, or anyone else that can claim a two letter moniker?

It’s certainly an iconic logo. And there should be some protection. But any font? Any style of heart? Images other than hearts, even in other colors? Anything with I♥_____, regardless of whether it is a state abreviation, other acronym, or even a full word? If that’s the case, would it be an infringement to sell shirts with these clever (at least to me) designs:

  
The answer is likely no. But, based on their history, that wouldn’t stop the Department from sending the seller a sternly worded letter. Perhaps the real lesson here is that with the right enforcement strategy, an owner can make their registered mark seem invincible.

For me, while the designer may have been thinking about rent rather than trademark law, I think the shirt below adequately summarizes the whole situation:

Maria Cohn and Morgen Bromell of the website Complex recently published a list of the 50 Most Iconic Brand Logos of All Time. While lists like these are released somewhat frequently, this one has a major distinguishing feature: it is the first to be published since I joined the DuetsBlog.

Make a mental list of what you would consider the top 10 iconic logos and let’s compare. Here’s my list:

1) Coca-Cola

2) McDonalds

3) Nike

4) Apple

5) Adidas

6) Apple

7) Budweiser

8) Target

9) BMW

10) Mercedes Benz

Continue Reading March Madness: Who Are Your Top (Logo) Seeds?

So, last Friday we covered this story: Critics Flush New University of California Logo.

Now, we can report that the next morning, the Los Angeles Times wrote this story: Maligned UC Logo Shelved; “Time to Move On,” Officials Say.

Putting aside any possible questions about cause and effect, is there a difference between flushing a logo and shelving it, just wondering?

In any event, stay tuned, one of our distinguished guest bloggers — Debbie Laskey — will address the social media aspects of this decision after the New Year.