It was another star-studded event in Seattle last night, enjoy some pics from Meet the Bloggers:

The Ironmongers are Reunited:

Friendly Ron Coleman, John Welch, Steve Baird
Skeptical Ron Coleman, Steady Welch and Baird
Concerned Ron Coleman, Steady Welch and Baird
Animated Ron Coleman, Mildly Amused Welch and Baird

Much Going on Under the Light of a Full Moon:

Marty Schwimmer Focusing as Carl Oppedahl Howls at the full Moon?

The Ayes Have it, About What I Don’t Recall?

Ron Coleman, Carl Oppedahl, and Pamela Chestek, in Favor, Among Others

More Celebration Under the Full Moon?

Tara Aaron Sticks Her Landing, and the Crowd Applauds

Karaoke? Maybe a Little Jackson Browne, Running on Empty?

Eric Pelton Lead, with Backup Vocals by Carl Oppedahl?
Above all the Nonsense? Pleasant and Bright Susan Montgomery and Marty Schwimmer

Ron Continues to Steal the Show With Multiple Facial Expressions:

Friendly Tiffany Blofield, Confident Ron Coleman, Friendly Erik Pelton
Friendly Tiffany Blofield, Amplified Ron Coleman, Friendly Erik Pelton
Steady Tiffany Blofield, Say Cheesy Ron Coleman, Steady Erik Pelton

We look forward to Meet the Bloggers VX in Boston, next year, around this same time, stay tuned.


We wrote about the above trademark warning ad a few years back, and the claimed trademark owner likely recognizing vulnerability as to validity:

The idea generally is, let’s show and create a record that we are educating the public about our trademark rights and hopefully deterring misuses that otherwise might find their way into the public eye and influence the relevant public’s understanding of a term or symbol as being generic and part of the public domain, free for anyone to use, even competitors.

Now, the validity of Car-Freshner Corporation’s federal non-traditional trademark registrations for the shape, configuration, and silhouette of a tree design, are seriously being questioned.

Sun Cedar, a non-profit based in Lawrence, Kansas, with the able pro-bono assistance of Marty Schwimmer of the Leason Ellis firm, has filed an answer and counterclaim in federal district court in the Northern District of New York, denying Car-Freshner Corporation’s allegations of trademark infringement, dilution, and unfair competition, and seeking cancellation of U.S. Reg. Nos:

on functionality grounds, and the ‘016, ‘233,  ‘888, and ‘854 registrations on abandonment grounds.

You can read more about this trademark dispute here at Techdirt — calling it another example of trademark bullying.

Here is an image of the Sun Cedar product that is alleged to infringe and dilute Car-Freshner Corporation’s federally-registered trademarks in the so-called Little Trees design:


A few questions come to mind.  Would you have put your non-traditional trademark rights at risk for the above alleged infringement?

Will the registrations be exposed to have ticking time bombs inside them?

If so, will Marty declare timber! as they fall and then gather up the debris to stack like cord-wood?

Or, will there be a mixed result, and if not chopped down altogether, might the registrations simply be chopped down to size.

Endless possibilities abound, so stay tuned, this is sure to be an interesting one.

Not every day does the United States Supreme Court weigh in on a topic impacting the trademark world, but it did so yesterday in Already, LLC v. Nike, Inc., a case illustrating what can happen when a trademark plaintiff wants to pull the plug and end the lawsuit it started in a walkaway (or as martial arts instructor Rex in Napoleon Dynamite might say, “break the wrist, walk away“).

Eight months into Nike’s trademark infringement lawsuit against Already (a footwear competitor and maker of “Sugars” and “Soulja Boys” shoes), Nike wanted out — this was also four months after Already counterclaimed against Nike, asking the court to invalidate the non-traditional trademark rights claimed by Nike in the appearance and design of the Nike Air Force 1 shoe.

To remove itself from the lawsuit, Nike voluntarily dismissed with prejudice its asserted trademark claims against Already. And, in an attempt to moot the counterclaim and prevent the court from ruling on Already’s trademark validity challenge, Nike issued the following expansive promise and covenant not to sue:

“[Nike] unconditionally and irrevocably covenants to refrain from making any claim(s) or demand(s) . . . against Already or any of its . . . related business entities . . . [including] distributors . . . and employees of such entities and all customers . . . on account of any possible cause of action based on or involving trademark infringement, unfair competition, or dilution, under state or federal law . . . relating to the NIKE Mark based on the appearance of any of Already’s current and/or previous footwear product designs, and any colorable imitations thereof, regardless of whether that footwear is produced . . . or otherwise used in commerce before or after the Effective Date of this Covenant.”

Already was content to have Nike pull the plug on its trademark infringement claims against Already, but being “once bitten, twice shy,” Already nevertheless wanted to continue with its claim to invalidate the trade dress for Nike’s Air Force 1 shoe. To justify continuing with a one-way fight, Already expressed concern about investors who testified they would not invest in Already until Nike’s Air Force 1 design trademark was struck down. In fact, Already took its penchant to continue the fight to invalidate Nike’s trade dress all the way to the Supreme Court, being told by both the District Court and the Court of Appeals along the way, that the counterclaim could not go forward since there was no longer a justiciable case or controversy.

Chief Justice Roberts writing for the Supreme Court affirmed the Court of Appeals decision, agreeing that there was no longer an actual controversy between Nike and Already to justify further court involvement:

“Given our conclusion that Nike has met its burden of demonstrating there is no reasonable risk that Already will be sued again, there is no reason for Already to be so shy. It is the only one of Nike’s competitors with a judicially enforceable covenant protecting it from litigation relating to the Air Force 1 trademark. Insofar as the injury is a threat of Air Force 1 trademark litigation, Already is Nike’s least injured competitor.”

Already even attempted to play the “trademark bully” card in justifying a continued one way fight over the validity of Nike’s Air Force 1 trade dress registration:

“According to Already, allowing Nike to unilaterally moot the case ‘subverts’ the important role federal courts play in the administration of federal patent and trademark law. It allows companies like Nike to register and brandish invalid trademarks to intimidate smaller competitors, avoiding judicial review by issuing covenants in the rare case where the little guy fights back. Already and its amici thus contend that Already, ‘[a]s a company engaged in the business of designing and marketing athletic shoes,’ has standing to challenge Nike’s trademark.”

But the Court was not moved with the “trademark bully” concern or alleged justification:

“Already’s arguments boil down to a basic policy objection that dismissing this case allows Nike to bully small innovators lawfully operating in the public domain. This concern cannot compel us to adopt Already’s broad theory of standing.”

“First of all, granting covenants not to sue may be a risky long-term strategy for a trademark holder. See, e.g., 3 J. McCarthy, Trademarks & Unfair Competition §18:48, p. 18–112 (4th ed. 2012) (“[U]ncontrolled and ‘naked’ licensing can result in such a loss of significance of a trademark that a federal registration should be cancelled”); Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Assn., 651 F. 2d 311, 316 (CA5 1981) (finding that “extensive third-party use of the [mark was] impressive evidence that there would be no likelihood of confusion”). In addition, the Lanham Act provides some check on abusive litigation practices by providing for an award of attorney’s fees in “exceptional cases.” 15 U. S. C. §1117(a); cf., e.g., Gwaltney of Smithfield, Ltd. v. Chesapeake Bay Foundation, Inc., 484 U. S. 49, 67, n. 6 (1987) (explaining that an award of litigation costs can protect “from the suddenly repentant defendant”).”

“Accepting Already’s theory may benefit the small competitor in this case. But lowering the gates for one party lowers the gates for all. As a result, larger companies with more resources will have standing to challenge the intellectual property portfolios of their more humble rivals—not because they are threatened by any particular patent or trademark, but simply because they are competitors in the same market. This would further encourage parties to employ litigation as a weapon against their competitors rather than as a last resort for settling disputes.”

“Already’s only legally cognizable injury—the fact that Nike took steps to enforce its trademark—is now gone and, given the breadth of the covenant, cannot reasonably be expected to recur. There being no other basis on which to find a live controversy, the case is clearly moot.”

So, it appears the Court agrees Nike has promised to “walk away” — I suppose it remains to be seen whether any wrists actually have been broken in the process.

For your further reading enjoyment, Marty Schwimmer’s Trademark Blog covered the original filing of Nike’s case back in July 2009, and more recently the SCOTUSblog did a nice write up on the case just prior to the oral arguments before the Supreme Court.

So, how do you think this decision will impact the ongoing trademark bullying discussion?

Something like 8,000 trademark attorneys are wandering loose on the streets of San Francisco for the International Trademark Association’s annual meeting.

Once again, the main attraction was "Meet the Bloggers" — this edition happened to be "Meet the Bloggers VII" — where a record crowd crammed into Swig Bar a few hours ago, from 8:00 – 10:00 PM. Thanks Marty, John, and Ron for another great event!

For details and commentary leading up to the main event, see Marty Schwimmer’s Trademark BlogJohn Welch’s TTABlog, and Ron Coleman’s Likelihood of Confusion Blog. I’m looking  forward to seeing the photos that Ron was diligently flashing of the various riveting conversations.

In between counting the hours leading up to the main event, and in between some meetings here and there, I strolled the streets in the vicinity of the Moscone Convention Center, in search of single-letter-branding examples, also known as our very own AlphaWatch, and here are a few:

 A half a block from . . .

I’ll have others to share with you in the near future — I had a problem downloading the images.

So, until then, what do you think about the growing trend toward single letter brands and marks?

Since we have descended upon Boston, like just about every other trademark attorney in the world, for the annual meeting of the International Trademark Association (INTA), I’ll attempt to keep my remarks short and sweet today.

Basically, I’m confident that the highlight of the INTA annual meeting (that has been observed to require an overhaul, to put it mildly) will be the unsponsored, unendorsed, and unaffiliated, yet real, official, and authentic "Meet the Bloggers" or "BlogFest" event, hosted by Marty Schwimmer (Trademark Blog), John Welch (TTABlog), Ron Coleman (Likelihood of Confusion), and Pamela Chestek (Property, intangible).

See you tomorrow at Lucky’s Lounge, probably closer to 10pm than 8pm!