Happy Halloween from DuetsBlog! I write today regarding a scary subject: unregistered intellectual property. The horror! Ask any IP professional about registration, and you’re likely to hear that registration is one of the most important steps in protecting IP. Whether it is a patent, trademark, or copyright, registering IP often provides the IP owner greater rights than if the IP was unregistered. There is sometimes an exception for trade secrets, but that’s for another time…

A scary place for some; credit: Gen. Progress

Registering IP, specifically copyrights, may become even more crucial in the future. One of the most important upcoming U.S. Supreme Court cases this term–which begins in October (coincidental?)–is Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. The appeal addresses the question of whether the creator of an unregistered work may sue for copyright infringement so long as the creator has applied for a copyright on the work, rather than requiring the creator to wait for the Copyright Office to register the work. The dispute comes down to 17 U.S.C. § 411(a), which provides that:

no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

Currently, the Fifth and Ninth Circuit Courts of Appeal have held that creators may sue for infringement as soon as they file the appropriate paperwork and fees for registration. Importantly, the Ninth Circuit encompasses Hollywood, providing greater protection to many of the nation’s creators. I ran into this issue myself on a case in these venues, and thankfully the law in these jurisdictions supported bringing a claim for copyright infringement without awaiting registration.

The Tenth and Eleventh Circuits have held that filing for registration is insufficient; a creator must have obtained preregistration or actual registration to sue for infringement. It’s the stuff of nightmares for procrastinating creators in Wyoming, Utah, Colorado, Kansas, New Mexico, Oklahoma, Alabama, Georgia, and Florida!

But creators around the country, especially in Hollywood, let out a collective shriek when the federal Government filed a brief in support of the Tenth and Eleventh Circuits, arguing that “a copyright-infringement suit may not be filed until the Register of Copyrights has either approved or refused registration of the work.” Beyond the statutory arguments in support of this position, the Government argued that  “although…the registration requirement may temporarily prevent copyright owners from enforcing their rights, that is the intended result of a congressional design to encourage prompt registration for the public benefit.”

Maybe the Government is right; requiring registration will certainly encourage registration. But on the other hand, many small creators either do not have the time or resources to seek registration for every work. However, even in cases in which there is copying, a creator can file an expedited application for registration, which sometimes results in a decision in less than a week.  So perhaps the rule from the Tenth and Eleventh Circuits isn’t that scary after all. A non-expedited application can take months, though. Thus, the rule from the Fifth and Ninth Circuits provides greater protections to creators who may face copying immediately after creating a work and who do not have the ability to file an expedited application. We’ll see what’s in the Supreme Court’s candy bowl this term. To be continued…

–Susan Perera, Attorney

Media spectacle, train wreck, or marketing bliss, it’s up to you, but you can’t escape the news about Charlie Sheen’s rambling webcasts, or the overnight success of his Sheen-isms. If you haven’t had your fill, feel free to take a moment at this website dedicated to sharing some of Sheen’s memorable statements.

Last week multiple news sources reported that Jimmy Buffett has applied to register the trademark “Tiger Blood” in connection with vodka and energy drinks. The Indiana IP & Tech Blog has a comprehensive discussion of the Tiger Blood mark.

Not surprisingly, there has been an explosion of other Sheen-isms at the Trademark Office too, including: WINNING, UH WINNING, WINNING!, and BI WINNING for a range of goods from rubber wristbands and tanning products, to T-shirts, hats, and athletic apparel.

So are Sheen’s catchy phrases marketing gold?  Will these trademark “trolls” ruffle Sheen’s “assassin feathers” and will we see litigation over these new marks? Stay tuned for trademark developments in this media roller coaster.

Until then… “Just sit back and enjoy the show.”

Thumbnail for version as of 15:21, 6 September 2009           Thumbnail for version as of 14:28, 28 October 2007  Thumbnail for version as of 05:55, 3 December 2007

Last September, in my blog post entitled "What Does Trademarked Mean to You?," I wrote:

More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “’Trademark’ is not a verb. There is no such thing as ‘trademarking’ a word or phrase." Similar views are expressed here, here, and here.

Well, a couple more of the cringers have raised their hands.

Our good friend John Welch over at the TTABlog reported yesterday that he doesn’t like "seeing the word ‘trademark’ used as a verb," and he republished a recent article by Daniel Kegan entitled "The grammar of intellectual property: Copyright is a noun, trademark is an adjective," originally published by the Illinois State Bar Association, linked here. In his article, Mr. Kegan similarly writes: "Trademark is an adjective, not a verb."

Actually, according to the English dictionary, "trademark" is both a noun (you know, a person, place or thing?) and a verb (an action):

trade·mark

–noun

1.

any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A trademark is a proprietary term that is usually registered with the Patent and Trademark Office to assure its exclusive use by its owner.
2.

a distinctive mark or feature particularly characteristic of or identified with a person or thing.
–verb (used with object)

3.

to stamp or otherwise place a trademark designation upon.
4.

to register the trademark of.

Indeed, even this quote from Mr. Kegan’s article confirms the proper use of "trademark" as a noun: "A trademark is obtained by use." This is a correct statement of fact and law, but the word "trademark" is clearly the object — the thing — of this sentence, i.e., the noun. Furthermore, with respect to the proper use of "trademark" as a verb, as I have previously written:

[T]he words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; ‘trademarked goods’".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Given the various definitions for these words, the speaker might mean labeling a product or advertising material, utilizing or marking such materials with the appropriate trademark notice or symbol, registering a trademark or service mark, or perhaps, all of the above. Since the described actions (labeling and registering) are quite distinct, it becomes important to seek clarity on the speaker’s intended meaning.

So, again, really, what’s the big deal?

No need to cringe, in my humble opinion, this is just another example of where the use of a word in the English language begs for some follow-up questions by the listener to clarify the speaker’s intended meaning. Seems to me this potential for confusion is an opportunity for us trademark types to engage the speaker by asking some questions and then offering to explain and enlighten.

Where do you camp on this issue? Are you a cringer when it comes to IP grammar?

–Sharon Armstrong, Attorney

California media outlets reported yesterday that Oakland recently joined a boycott against Arizona due to the latter state’s passage of a new immigration bill, which requires police to question people about their immigration status if there’s reason to suspect they’re in the country illegally.  Other cities considering boycotts include Seattle, Los Angeles, and San Francisco.  The boycotts include calls to stop purchasing goods and services from companies located or based in Arizona.  A recent article in Gawker listed some enterprises that might be affected by individuals who choose to boycott, including P.F. Changs restaurants, the GoDaddy domain name registrar, and the Alcor Life Extension Foundation, among others.

 

The aforementioned businesses are located in Arizona and therefore, whether one believes such a boycott is a bold reaction to the law or is just plain wrong, they are correctly included in boycott lists.  Some products and businesses, however, may feel an economic pinch that they don’t deserve – particularly businesses that seem to be based in Arizona but actually have no connection to the state whatsoever.

The most-discussed example thus far is the Arizona Iced Tea, the makers of which own four trademark registrations for or incorporating ARIZONA for use in connection with iced tea beverages.  Arizona Iced Tea is made in New York.

The Trademark Manual of Examining Procedure provides that a mark should be refused registration if it consists of matter that is primarily geographically descriptive of the goods and services offered under the mark (e.g., CALIFORNIA CLOTHIERS for tailoring services based in California) or is primarily geographically deceptively misdescriptive of them (e.g. KETCHIKAN SALMON SURPRISE for frozen salmon entrees originating from the Atlantic ocean and not from Ketchikan, Alaska).  In determining whether a mark is primarily geographically deceptively misdescriptive, the Trademark Office looks to whether  (1) the primary significance of the mark is a generally known geographic location, (2) the goods or services do not originate in the place identified in the mark, (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark, and (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.

Here, the Trademark Office registered the ARIZONA trademarks on the Principal Register, thereby indicating that it did not find the ARIZONA trademarks to be either primarily geographically descriptive or primarily geographically deceptively misdescriptive of iced tea goods.  This would seem to be cold comfort, however, if consumers ultimately boycott this non-Arizona product.

–Sharon Armstrong, Attorney

Last Friday, a federal court in Kentucky ruled that Fortune Brands, the maker of Maker’s Mark bourbon, enjoys exclusive rights in the dripping wax seal that adorns each bottle of the spirit. (You can read about the case in earlier stages in Dan’s post, here.). Fortune had sued Diageo, another beverage giant and maker of Casa Cuervo Reserva tequila, which also uses a dripping wax seal on its bottles, as shown here:

 

    

Now, legend has it that each Maker’s Mark employee on dipping duty has a different dipping style, such that the trained eye (or bourbon aficionado) can tell which bottle has been dipped by which dipper, based on the way the wax drips down a bottle’s neck. Indeed, due to the fact that the dipping process is not mechanized, no two bottles are alike.

In general, the Trademark Office will not allow registration of more than one mark. TMEP 807.01. The Trademark Office also will not allow registration of what it cleverly calls “phantom” elements in marks – that is, a word, alpha-numeric designation, or other component that is subject to change. TMEP 1214. The reason is to prevent applicants from obtaining the benefits of registration for multiple marks under the guise of one mark. (That would be like having your Manhattan and drinking it too.)

Nonetheless, Maker’s Mark owns a registration for its dripping wax seal; the mark description is “The mark consists of a wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern” (emphasis added). As a bourbon-drinker myself, I think it’s more than reasonable that consumers associate a dripping wax seal with Maker’s Mark. But given the irregularity of Maker’s Mark’s mark, and the state of the Trademark Rules, should Maker’s Mark have obtained a registration? What do you think?

 

Are you shopping for a trademark? Stores spend lots of money branding their names. Accordingly, many register their store names as trademarks.   Over Thanksgiving while shopping in Turkey,  I saw the store front sign Inci®.

I thought it was unique because you do not often see the ® on a store front sign. For example, you do not see bloomingdale’s® or Neiman Marcus®.  Although I am not quite to the shopping level of Isla Fisher’s character in the movie “Confessions of a Shopaholic,” I still have never seen the Inci® store anywhere in the United States, or even on the streets of Paris or London. 

When I returned to the United States, I checked the United States Patent and Trademark Office (USPTO for short) website and found that there is an abandoned trademark for Inci in the United Statesand two live trademarks for Yeni Inci

and Inci Fatih.

According to the USPTO website, “Inci” means pearl. Although I cannot fully understand the Turkish registration website, I was able to determine that the same trademarks are owned by the same entities in the United States and Turkey. The registrations are for clothing. It is unclear, however, if this trademark owner is associated with the Inci® store that I saw in the Turkish mall.

Could the owner of the Turkish store Inci® receive protection in the United States even if it did not have a valid  registration? Possibly. The “famous marks” doctrine could provide such protection. This doctrine was born in my favorite city Paris. Article 6bis of the Paris Convention for Protection of Intellectual Property protects marks within a nation where it is well-known even though it is not actually used or registered in that nation  So, if Inci® can show that it is well-known in the United States it may receive additional protection. 

The courts are far from uniform in applying the “famous marks” doctrine. A New York court ruled in favor of Cutabaco, the company producing the favorite cigar of Cuban President Fidel Castro.  The court held that Cutabaco had a legally protectable right to COHIBA because the Cuban brand was well known among United States premium cigar smokers before the American company General Cigar resumed use of the COHIBA trademark. Accordingly, the court granted Cutabaco an injunction prohibiting General Cigar from continuing to sell cigars under the COHIBA trademark and cancelled General Cigar’s COHIBA. On the other hand, the Second Circuit refused to recognize the doctrine in connection with the famous Bukhara restaurant of New Deli. The Second Circuit explained that Congress had not incorporated the doctrine into Federal Trademark law so it would not recognize the doctrine.  

Whether Inci® or other such European stores would receive protection in the United States without registered trademarks will depend upon how famous the stores are and what court they land in. With the international nature of the economy, this is a topic that the Supreme Court will likely take up in the years to come.

Yesterday, Under Consideration’s Brand New Blog discussed the redesign of the Nickelodeon trademark. Nickelodeon has decided to drop the well known splat design that encapsulated the NICKELODEON term. As reported by Under Consideration, Nickelodeon’s “splat” has existed in one form or another for over 15 years. Although the orange “splat” has evolved over the years, it was a recognizable symbol of a Nickelodeon product. 

This leads to an important issue, designs are important branding tools. Trademark law argues that the words are the most dominant portion of a trademark because it is the element that consumers use to ask for the goods or services. However, this is not always true. Often times, the word portion of a mark is subordinate to the design component and consumers rely on the design or other matter to identify the source of the goods or services. Good examples include the Nike swoosh or the Under Armour “UA” design. But a design or non-traditional trademark does not need to reach the status of Nike of Under Armour to have a significant market affect. A good example is Christian Louboutin women’s shoes. Most people do not know the brand of any women’s shoe at first blush, but most people recognize the red sole. Well, Christian Louboutin has federally registered the red sole of these shoes. Therefore, it is important not to overlook or discount the branding power a design can have and it is worth considering the highest level of protection for this element of a trademark.