Florida start-up entity BAD MOMS, LLC beat the producer of the movie with the same name to the punch! Specifically, the company sued the producer for declaratory judgment and an injunction preventing the movie producer from using the mark in connection with any of the Florida company’s goods and services or those related thereto. Both parties have pending applications for BAD MOMS and related trademarks. The lawsuit came after the movie producer sent demand letters to the Florida entity asking it to abandon its applications for BAD MOMS trademarks and cease using the mark. The movie producer brought counterclaims against the start-up company.

The Florida start-up company was founded by a single mom working her way through college and law school. The company organizes and hosts events for single-moms to share experiences, provide education and create a network. In addition, the company sells wines and spirits under the BAD MOMS mark.

Earlier this month, the dispute heated up when the movie producer asked a federal judge to sanction the start-up company for failing to follow a discovery order. The attorney founder of the company denied that the motion is warranted and asked for an extension of time to respond to the motion. The Court granted her request. The hearing on the motion is scheduled for Monday, October 29, 2018.

I have not seen the “BAD MOMS” movie but it was popular enough to spawn a sequel. Many of my friends told me it is a fun movie to watch, even if it is predictable. I heard that the following movie scenes were hysterical:  (1) grocery store scene; (2) limping dog scene and (3) the meeting to discuss the school board.

We will have to wait to see who wins the lawsuit and if the trademark dispute spurs more interest in the movies and/or the Florida company’s events and products.

With the Oscars coming up in less than a month, it seems like the issue of “celebrity” trademarks is a hot topic in the media.  For example, many news outlets (such as here, here, here) are covering Meryl Streep’s application to register her name.  Her application (Serial No. 87765571) was submitted last month for a variety of services, including entertainment services, personal appearances, speaking engagements, and autograph signings.

It has become increasingly common for celebrities to seek federal trademark registrations for their names, often in connection with entertainment services, to provide greater protection and enforcement ability against authorized third-party uses.

Another recent example is Sean Connery’s application to register his name (Reg. No. 5015683), which was covered in the news over the past couple years.  He had to overcome some obstacles, including two Office Actions rejecting his specimens of use (here and here), but he was finally able to reach registration after submitting a third substitute specimen.

Interestingly, trademark rules and precedent allow registration of personal names as inherently distinctive, without the need to show “acquired distinctiveness” (i.e., evidence, such as longtime exclusive use, showing consumers recognize the mark as a unique source indicator).  This rule differs from the common law rule, in which acquired distinctiveness is required. Christopher Brooks, 93 U.S.P.Q.2d 1823 (TTAB 2009); McCarthy on Trademarks §13:2; TMEP § 1301.02(b).  It also differs from the bar against registering mere surnames (i.e., just the last name, rather than the full name), without acquired distinctiveness. TMEP §1211.01.

Nevertheless, it makes sense to take advantage of this unique rule for federal registration of personal names, if there is a good business reason for doing so–which there often is for celebrities.

What do you think about trademark registration for personal names?  Do you think celebrities have gone too far with trademark applications in connection with their name (see a list here)? For example, Taylor Swift has over 50 trademark registrations for her name or her initials.

Any predictions for the biggest winners at the Oscars? (I’m betting Shape of Water wins Best Picture and Best Director.)

Laurel Sutton, Principal at Catchword Brand Name Development

Being a Make Mine Marvel type, I am of course very excited to see the Avengers movie, which will feature all of the Marvel heroes together! In one place! With Nick Fury (Samuel L. Jackson) there to help them save the world.

I was disturbed, however, to find out that one of the myriad tie-ins to the movie (fine examples of co-branding) is something called the “Limited Edition Avengers Magtitan Neo Legend“: it looks like a fancy bracelet and is in fact based on something that Tony Stark (Iron Man) wears in the movie. They’re made by Colantotte, who have set up a whole mini-website for the Avengers movie that lets you download an interactive comic, take quizzes, view profiles of each Avenger, and (most important) buy the Limited Edition Avengers Magtitan Neo Legend things, which are made from titanium, stainless steel, and carbon fiber. They’re pretty, but manly enough that guys could wear them and feel Tony Stark-ish (although, to be fair, Robert Downey Jr. makes any jewelry look pretty good).

The name is, of course, designed to make you buy it immediately – “Limited Edition” means they’ll only be selling it for 5 years instead of 6 – and I don’t know what “Magtitan Neo Legend” is supposed to convey. It sounds like manly words thrown into a blender. Marvel is lucky they were able to squeeze the word Avengers into the middle.

So why is this worse than the Harry Potter wands and Sauron’s One Rings that you see advertised in the back of Sky Mall? Well, the Limited Edition Avengers Magtitan Neo Legend bracelet actually promises to *do* something for you – just like superheroes, it helps you “maintain [your] edge while fighting off arch rivals!” Digging a little deeper in the press release, we find that what this actually means is

The natural power of the Colantotte’s magnets restores the negative impact today’s lifestyle imposes. The human body absorbs positive ions from electronic equipment, cell phones, electrical wiring, and machinery. Colantotte, with its negative ionic technology combats these destructive positive ions for regeneration.

Oh. They have magnets in them. But not just any magnets, these are sciency magnets:

All Colantotte products are created with axially magnetized magnets in a unique Alternating North-South Polarity Orientation (ANSPO™) to maximize the magnetic field flow.

(FYI, alternating poles are what make refrigerator magnets stick so well to the surface of your fridge but lose their effectiveness when they get about a half inch away.)

This is not a science blog, so I won’t take the time to go through all of the reasons why bracelets with magnets don’t do anything for you, but it’s safe to say that the preponderance of evidence has shown that magnet therapy has no basis in reality and is likely a result of the placebo effect; that human bodies are not absorbing positive ions that are destroying us; and further, that even if the theory were true, the bracelets could not emit negative ions without a power source, which they clearly do not have.

Of course there are dozens of magic bracelet bracelets, magnetic or otherwise, on the market, including Q-Ray (sued by the FTC for false advertising), Power Balance (shut down in Australian by the Australian Competition and Consumer Commission), and Balance Bracelet (ordered by the FTC to pay a $400k settlement into a global settlement fund for consumers).

I guess what bothers me most is that Marvel and Joss Whedon are implicitly endorsing pseudoscience by allowing this kind of product as a tie-in. I realize I am talking about a movie that features an Asgardian God of Thunder as well as a gamma-ray created green Hulk, but that’s a movie. This is real life, and magnetic bracelets won’t turn you into a superhero, or cure your arthritis, or help you “maintain your edge”, whatever that means. And what if Colantotte gets shut down or sued? Won’t that tarnish the Marvel/Avengers/Whedon brand by association?

But hey, if you want to look like a superhero, you can buy one and pretend it makes you super. Only $200.

Trademark law is unique. Unlike other intellectual property regimes where the primary concern is protecting the rights holder, trademark law is all about protecting the consumer and maintaining the integrity of the communication exchange between producer and consumer. (That’s why the test for infringement is “likelihood of confusion.”) Unlike patent or copyright laws, which simply create a bundle of rights to protect, trademark rights are fluid and the rights you have depend on the right a consumer has to rely on your mark as the source or origin of your goods or services. 

Because we’re involved in branding and trademarks, we (attorneys and mark holders) have a vested interest in maintaining the integrity of the information exchange. Trademark law provides a broad sword to carve out the egregious offenses between competitors (such as where a competitor passes its goods or services off as the trademark holders), but sometimes the biggest offenses are perpetrated by the mark holders themselves. Steve had a great post on Monday about mark holders “verbing up” their marks. Some mark holders make a habit of using their marks in a generic sense as the name of the good, which could have disastrous consequences down the road.

Then, there are the more subtle malfeasances; the employment of branding and advertising strategies that, while failing to run afoul of applicable legal concepts, nonetheless damage the integrity of the communication exchange between consumer and producer.   As lawyers, we’re frequently asked by clients whether they can do certain advertising. However, the corollary question that often needs to be asked is, regardless of whether you can, should you

The answer to the "should you" question is, of course, something about which reasonable minds can disagree.  But, I see at least two advertising strategies which you can do, but I don’t think you should do (personal opinion only). The first of these is the overuse of superlatives: Good, Better, Best, Greatest, America’s Finest, Number One (and on and on and on). While the use of such words is legally okay (it’s considered non-actionable “puffing”), I disagree with their efficacy as a branding strategy.  As a consumer, I always feel that talk is cheap (apologies for that hyperlink), and a resort to words like this is an admission that you don’t have anything more interesting to say about your product. (That’s not to say that some companies, like beer companies, can’t do great things with superlatives – see here (radio spot) and here.)

Another thing that I see is advertisers depicting a product in a way that, while technically accurate, does not give the consumer the most accurate information. Movie previews are my favorite example of this malfeasance. How often does it happen that you see a preview and go to a movie expecting to see a kick-ass action movie, only to find out the primary plot line is some tired romance story (I’m looking at you Top Gun). The entire experience makes me feel duped and less likely to trust that particular director/studio/producer in the future. Any preview can make any movie look like something that it’s not, and assuming the preview contains actual movie clips, there’s probably nothing legally wrong with it. The question, though, is how will the customer feel when comparing the preview to the product? To me, the additional interest you may generate by putting together a flashy, but misleading preview, simply isn’t worth alienating customers when they realize what they bought wasn’t precisely what was advertised.  I think this example can carry over to product branding as well.  Credibility matters.    

This summer has seen popular icons pass away such as Michael Jackson and Farrah Fawcett as we have discussed in earlier blog posts. With the recent passing of “Dirty Dancing” star Patrick Swayze last week, I am reminded of his famous saying “Nobody Puts Baby in a Corner” :

Two years ago this famous saying was embroiled in a trademark suit. Lions Gate Entertainment Inc. owned a trademark for the famous saying in connection with its merchandising surrounding the iconic film. It sued fifteen clothing companies, including a Denver company called Real Baby for selling baby clothes with the trademark, including onesiesThe parties settled the case before the merits were reached.  

Other movie quotes, or adaptations of quotes, have been registered as trademarks. One of the best known movie quotes was uttered by Clark Gable in the Oscar winning “Gone With the Wind.” The trademark “Simply Scarlett Frankly My Dear You Look Divan” was registered in connection with clothing, likely in an effort to capitalize on the success of the movie. However, this trademark was ultimately cancelled because the registrant failed to file appropriate documentation (in legal jargon Declaration of Continued Use under Section 8).  

Other famous Patrick Swayze movie lines have not been registered for trademarks yet; such as his “ditto” response to Demi Moore’s “I love you” in the movie “Ghost” or “Pain don’t hurt” that he uttered in “Roadhouse.”   Who knows if these lines will ever become registered trademarks.

As discussed above, movie studios such as Lions Gate Entertainment Inc. sometimes register trademarks for famous movie lines. But, if you can beat the studio to the punch and register a famous movie quote (or adaptation of a quote such as the above one for “Gone With The Wind”) in connection with a product, you might hit the marketing jack pot.   

Unfortunately, there will be no more such iconic phrases from Patrick Swayze.

–Sharon Armstrong, Attorney

This past Thursday, John Hughes—the mind that created every slumber party-worthy movie of my youth—passed away from a heart attack. Whenever I hear John Hughes’ name, my mind, taking some sort of odd word-association trip, automatically shifts to “The Breakfast Club,” which then makes me think of the Simple Minds song “Don’t You Forget About Me” (the anthem of the movie), which then makes me think of the lead singer of Simple Minds, whose name I can’t remember but who I’m convinced has red hair…

In short, the consumer associations I have with John Hughes—and with the film “The Breakfast Club” specifically—are particularly strong, meaningful and positive. I would venture to say that, given the sheer number of pages devoted to quotes from John Hughes’ movies, I’m not alone in these associations. At the heart of trademark protection is the goal of protecting consumer associations—or “goodwill”—which is so precious to businesses building their brands. While a movie title such as “The Breakfast Club” is not technically a brand under which John Hughes technically sold goods and services, that movie, along with numerous others in his repertoire, collectively showcase John Hughes’ “brand” of narrative, wit, juvenile humor, and outlook on Gen-X adolescence.

And yet, titles of works such as “The Breakfast Club” are not protected by trademark law. The Lanham Act prohibits the registration of a title, or portion of a title, or a single creative work, because, according to the Lanham Act, a single title can’t function as a source-identifier.   See 15 U.S.C. §§1051, 1052 and 1127. However, a title used in a series, such as HARRY POTTER, is considered capable of acting as a source-identifier and may therefore achieve a trademark registration.

Continue Reading Goodbye, Mr. Hughes