We continue to have Super Bowl LII on our minds here in the Twin Cities. It’s hard to avoid thinking about the upcoming “Big Game” with ads like these blanketing our skyway maze:

Turns out, everyone wants to have a little piece of the action in this upcoming event, even without the formality and cost associated with sponsorship, some call it ambush marketing:

Ambush marketing is not necessarily unlawful. It’s tricky, but I’m guessing the above ad may have cleared a legal review. No obvious conflicts with federally-registered rights, it appears.

Having said that, does this little guy change your view on things? Look familiar? It appears to be the same Wilson NFL Pee Wee Touchdown football without the name brands shown:

I’m thinking the JB Hudson ad employed a little airbrush strategy, or at least some strategic and highly precise palm expansion and placement in hiding the Wilson and NFL logos.

Actually, if so, it’s a good move, but will it be enough — especially given this website link — to avoid the aggressive NFL Super Bowl sponsorship police?

Who owns rights in TOUCHDOWN for footballs, if anyone? Anyone?

Neither Wilson nor the NFL appear to own federally-registered rights in TOUCHDOWN for footballs, but do common law rights exist?

If so, who owns them, the NFL or the maker of the NFL’s official game footballs, Wilson?

Moreover, did legal review consider non-verbal marks? What about the stitching design bordering the football laces? Non-traditional trademark? Functional? If not functional, fair use?

So much to think about as we anxiously await the Big Game in our own chilly backyard . . . .

sidebysideoxytmobile

Techdirt is crying foul (again) and this time, wrapping the “trademark bully” mantle around the magenta-colored neck of the T-Mobile brand for enforcing its color trademark against OXY.

While I certainly don’t have the details of the dispute (and it appears Techdirt doesn’t either), and OXY hasn’t produced the actual demand correspondence, given the distinctiveness of T-Mobile’s identity and branding, it’s not surprising it’s viewed as an asset worthy of protection.

T-MobileMapWhat is surprising (to me) is that I was unable to find any single color trademark registrations for “magenta” on the USPTO’s Principal Register owned by Deutsche Telekom, the parent company of the T-Mobile brand — only a pair of Supplemental Registrations (here and here).

With more than a dozen years of prominent use of its “magenta” branding, you’d think it is long past due for an upgrade to the Principal Register. It also seems to me that having a Principal Registration for a claimed mark should go a long way to quieting trademark bullying skeptics.

Then again, maybe not. Some view the ownership of a single color as a trademark as ridiculous, dumb, and silly. So, having the USPTO validate such a claim with registration would probably not quiet the concerns of those folks.

Admittedly, sometimes the single color registration issued by the USPTO needs trimming, but single color trademarks have been legally validated for more than three decades now (ask Owens Corning what pink means to their consumers). Color trademarks aren’t going away any time soon, so long as they perform the three critical purposes of a trademark: (1) Identifying the goods or services at issue; (2) distinguishing the goods or services from those of others; and (3) indicating the source of the goods or services.

As I’ve said before and written before here, while so-called trademark bullying does exist, it is frequently a misunderstood and misapplied pejorative label, based on a heavy dose of skepticism and belief of what the law should be, not what the law actually protects.

According to Techdirt:

“What moves the needle on most of these stories from ‘trademark-gone-too-far’ to ‘trademark bullying’ is that these actions tend to be brought against other groups that aren’t even operating within the same industry as the offended. That’s key in trademark disputes where, in most cases, the two parties must be competing with one another for infringement to occur.”

As loyal DuetsBlog readers appreciate, for trademark infringement, i.e., likelihood of confusion to exist, it is black-letter-law that no competition between the parties is required, only likelihood of confusion (based on a balancing of multiple factors) — and not only likely confusion as to source, but also as to sponsorship, approval, affiliation, or some other sort of connection.

So, the lack of direct competition is not determinative of a likelihood of confusion analysis. And, Techdirt and OXY’s focus on the lack of direct competition actually misses the point and oversimplifies the analysis: “We are making a smartwatch – nothing that would eventually compete with Telekom’s products and services.”

OXY’s own marketing materials admit the complementary nature of their smart watch to a smart phone: “OXY is an Android running Smartwatch that is fully customizable and works with virtually any phone.” T-Mobile sells lots of smart phones, and I’d expect that selling smart watches is well within their natural zone of expansion. If so, it’s hard to blame T-Mobile for its concern.

My hope for 2016 is that we’ll see fewer trademark color calamity cliches; the so-called “trademark bullying” mantle will be much more carefully draped; and uninformed skepticism about the validity of trademark rights in single colors will subside.

Instead, hopefully we’ll see much more well-informed focus on the virtually unlimited subject matter of trademarks that identify, distinguish and indicate source, and we’ll look forward to seeing an intelligent application of the likelihood of confusion factors and standard.

How about you, what do you hope for in 2016?

So, tomorrow is the big day, the big game, or whatever else other intimidated advertisers might call it. I just want to find the best deal on a flat screen television today!

But, more to Mike Masnick’s point on Techdirt about the NFL’s reputation as a “trademark bully,” and his challenge to advertisers — “It’s the Super Bowl. Call it the Super Bowl” — just today, Robert Channick of the Minneapolis Star Tribune writes how “football ads tiptoe around trademarks.”

As Channick points out, significant sums of money are at stake for the NFL, and when that is the case, I suspect it won’t be difficult for the NFL to continue to convince others that their trademark rights in the SUPER BOWL mark are far more important to them than it ever could be to any individual advertiser to defend a trademark infringement case to conclusion, at least on their own dime.

The power of the “it’s-far-more-important-to-me-than-it-ever-could-be-to-you” position should not be underestimated — even in legitimate trademark enforcement efforts.

Paul Alan Levy, writing for Public Citizen, incites “Brand Name Weenies: It’s Time to Stand Up to the NFL and Call it the Super Bowl.”

Here’s a thought, and one possible way to ensure a good, vigorous trademark fight over the SUPER BOWL mark and to counter the “it’s-far-more-important-to-me-than-it-ever-could-be-to-you” imbalance (assuming you can’t convince our good friend Ron Coleman over at Likelihood of Confusion to take on your defense — just for the sport of it) — make sure your commercial liability insurance policy covers advertising injury and there aren’t any exceptions that exclude coverage for trademark infringement claims.

Just saying too, it probably makes sense to confirm that your policy permits you to select your own trademark defense counsel when the NFL comes knocking.

Your usual trademark counsel happily will explain why that is so important.

In the end, I’m skeptical that the question of nominative fair use of the words SUPER BOWL in an ad published by a non-NFL sponsor will ever be litigated to conclusion or decided by a court, unless the cost of the defense is on someone else’s dime.

Unless someone else is bound to pay for the fight, the cost of defending on principle is probably just too high, and it’s simply easier to continue to tiptoe around the SUPER BOWL mark.

There aren’t too many things I enjoy more than speaking about the legal implications of branding.

Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here.

Some of the topics I discussed include:

I’d love to hear any feedback on the talk.

I’d also love to hear from you if you have a group or team that might be interested in having me deliver a talk on trademarks and the legal implications of branding.

Guys and gals on the street waiving orange flags aren’t the only parking lot lures in Twins Territory:

We’ve talked before about how some of those doing business or advertising in close proximity to Minneapolis’ brand new Target Field — home to the Minnesota Twins — appear to see advantage in using the Twins name (and now logo, and/or trade dress) in their signage and advertising.

We’ve talked about how this use, and I would add, association, appears designed to capitalize on the enormous goodwill represented and enjoyed by the Twins brand. Can you say, free ride?

We’ve also talked about whether such brand bait may or may not constitute nominative fair use of a trademark. 

In preparation for (hopeful and long-lasting) post-season play for the Minnesota Twins, I thought it might make sense to share a collection of parking lot sign photos I snapped just prior to a recent home game, within about a ten block radius of Target Field, illustrating a number of points:

  1. There is a lot of parking lot competition on game days;
  2. There is a variety of types of signage in use to lure drivers heading to the game;
  3. As one might expect, the closer one gets to Target Field the more it costs; and
  4. As one may or may not expect — or even notice — many of the parking lots furthest from Target Field (yet within walking distance) appear to be the most loaded with Twins brand name references or other Twins branding indicia, i.e., trade dress.

It seems to me that those who operate surface lots or ramps furthest from (but still walking distance to) Target Field seem to appreciate that they may need a little something extra (besides lower cost) to make the case for their parking lot or ramp. Looking at the wide variety of signs in this collage of parking signs, I suspect all would agree that the "Twins Parking EZ IN EZ OUT" signs with the Twins’ red/white/blue TC logo must require permission (i.e., a license) from the Minnesota Twins. These are clearly the most blatant (or, perhaps, authorized) uses.

But, what about the other signs that employ less brand indicia, either the Twins brand name in simple type, or perhaps the Twins underlying trade dress or color scheme without using the brand name? Are drivers likely to be confused about an association with the team by these uses? Are drivers likely to be deceived into thinking they are closer to Target Field than they are, especially for those coming from out of town? Here is how the Twins see the parking options for home games.

Does the fact that some of the closest parking ramps to Target Field employ no Twins brand bait help prove the point that convenient parking to attend a Twins baseball game is "readily identifiable" without the need for any Twins branding references?

And, how do you come down on the question of nominative fair use when the brand is reflected in cyberspace and in domain names, for example, www.twinsparking.net?

You may recall, Dan asked a similar question a couple of weeks ago, in Nominative Fair use of Trademarks in Domain Names.

We’ve talked a lot about the nominative fair use of trademarks.

Remember the Cars.com billboard that used the Minnesota Twins name as brand bait?

We had some discussion in the comments, where I said this about the Cars.com ad:

Although the billboard doesn’t use the Twins script or logo, I still believe the stronger argument may be that saying "Hey Twins Fans" goes beyond what is necessary to communicate with this class of consumers (important in nominative fair use), especially when the physical context of the ad is in close proximity to Target Field, where the Twins play ball. Seems to me a reasonable expectation, at least under a nominative fair use analysis, that Cars.com should have said something like "Hey Baseball Fans" — that avoids a direct free-ride on the goodwill and emotional ties consumers have to the Twins organization.

Just so you know, I hadn’t seen the above "Baseball Fans" signage on a storefront window in Block e, just around the corner from Target Field and the former location of the Cars.com billboard, but it seems to validate the same point in a picture, so I thought I’d share it.

To quote the first element of the nominative fair use test, do you think referencing "Hey Twins fans" in unsponsored ads is legitimate because "the product cannot be readily identified without using the trademark," or do you think the unbranded use of "baseball fans" on signage in close physical proximity to the only baseball venue in downtown Minneapolis, i.e., Target Field (where the Twins play home games), does the job?

So, really, where do you come down on the trademark fair use issue?

The newest fare at the Minnesota State Fair is not Camel-on-a-Stick, Buffalo-on-a-Stick, or any other kind of Food-on-a-Stick, but rather, Trademark-on-a-Stick.

Earlier this week, the Minnesota State Fair (owned and operated by the Minnesota State Agricultural Society, a Minnesota State Agency) was hot to skewer the unauthorized use of its nearly three-decade-old and more recently trademarked logo, by incumbent Republican U.S. Congresswoman Michele Bachmann, in a political ad targeting DFL challenger Tarryl Clark’s record on tax policy.

This trademark objection has generated quite a bit of publicity, with coverage being reporting by MinnPost, The Minnesota Independent, the New York Times (blog), Politics Daily, MPR News, TPM, and Politico. The Bachmann ad referenced the MN State Fair and used its official logo while suggesting that Clark has voted to increase taxes on what foodies covet at the fair, including their favorite corn dogs, deep fried bacon, and beer.

Central in the debate over the lawfulness of the Bachmann campaign’s use of the logo is a question we have pondered on DuetsBlog before (e.g., here, here, and here), namely, whether the use of another’s logo crosses the legal line and is likely to cause confusion as to sponsorship, affiliation, approval, or endorsement, or whether it may constitute lawful nominative fair use. So, it should be no surprise to readers of DuetsBlog, that in the end, it is consumer understanding of the use in the ad that controls whether or not it is lawful.

The Minnesota State Fair’s objection certainly is not frivolous and is rooted in a common and traditional trademark concern over likelihood of confusion. Bachmann for Congress political ads begin with the statement: "I am Michele Bachmann and I approve this message." According to Minnesota State Fair officials, Bachmann’s use of the above Minnesota State Fair logo is likely to lead viewers to incorrectly believe that the Minnesota State Fair approves Congresswoman Bachmann’s message or has endorsed her campaign. What do you think, is that what viewers will believe?

Bachmann’s campaign denies that the logo use was unlawful, but without explaining why no confusion is likely and without specifically articulating what would likely be a nominative fair use defense, it voluntarily has decided to drop use of the official logo and instead opted to switch to a more "generic" image. Apparently what the campaign means by "generic" is not that it lacks the look of a trademark and/or logo, but rather is one not specifically used or owned by the Minnesota State Agricultural Society.

Bachmann for Congress’ revised television advertisement may be viewed here, showing no use of the trademarked official logo, but I’d hardly call the use "generic" — it remains a  logo use, even if it is a fake one that swaps fireworks for a ferris wheel, and alters the color scheme and typeface. Do you think that consumers will notice or recognize the fake logo as being fake or just believe it is an additional logo used by the MN State Fair that they haven’t seen before?

Interestingly, the change may not be enough to satisfy the MN State Fair. Apparently, it continues to have concerns about the revised Bachmann ad, and it has asked the Attorney General to look into the question of whether the change is sufficient to avoid confusion as to endorsement of the Bachmann campaign. Having said that, with only a few more days left before the close of the 2010 MN State Fair, one must wonder whether the campaign will move on and moot this lingering concern too, leaving the State Fair ads behind, as it continues to run new ads down the final stretch of the campaign.

Stay tuned, tomorrow I’ll attempt to make the case for why the State of Minnesota needs to hire an experienced trademark attorney.

Bonus political speech consideration below the jump:

Continue Reading Fair Logo, Fair Use & Fair Politics? The Minnesota State Fair’s Trademark-on-a-Stick

Someone who is in the business of repairing Volvo brand automobiles has the right to say so, in advertising, and elsewhere — without obtaining advance permission from Volvo — provided consumers aren’t likely to understand the advertisement or communication to mean that the repair services and/or the business providing them is authorized by, affiliated with, or otherwise connected to the Swedish automobile manufacturer. So, as is often the case, the devil is in the details of the advertisement or communication and how it is likely to be perceived by consumers.

Indeed, over the years, there has been much litigation over the trademark fair use right and defense of independent repair shops, but suffice it to say, for our limited purposes here, using the Volvo logo on signage or in advertising would most likely cross the fair use line. (Interesting history of the Volvo logo, here). Doing so takes more than necessary to communicate the simple truth and probably implies authorized status. Of course, other activities that fall short of logo use may too, but activities simply and truthfully representing that one repairs Volvo automobiles, without more, should be fair use — nominative fair use of a trademark, that is.

Over the last year and a half, we have written a lot about trademark fair use, both classic fair use and nominative fair use doctrines (Levi’s Double Arcuate Design, Corvette Shape, Rapala-Google Billboard, Google Fortune Kit, 3M’s Post-it Note, Wal-Mart Gift Cards, Match.com For Car Lovers, Cars.com/Twins Fans BillboardSummit Beer/Twitter Billboard), nevertheless, it is probably worth repeating the necessary elements of a successful nominative fair use trademark defense here:

(1) The product cannot be readily identified without using the trademark;

(2) Only so much of the trademark is used as is necessary for the identification; and

(3) No sponsorship or endorsement of the trademark owner is suggested by the use.

So, given these key elements of a successful nominative fair use defense, imagine my surprise each time I hear the ad — from a Relevant Radio sponsor on AM 1330 in Minneapolis — refraining from use of the two syllable Volvo brand name in the ad; instead, using precious airtime to read this cumbersome mouthful: "We Repair Automobiles From Sweden Starting With The Letter V," or something similar to that effect. This may very well define the need for the first element of the defense in being not "readily identified without using the" Volvo trademark.

Given that, each time I hear it, I’m left wondering why? As a trademark type, I’ll have to admit, it’s a bit annoying, since this extra verbiage is totally unnecessary and not legally required. So, here are a few ideas on the possible reason for the mysterious and puzzling substitution for the Volvo brand name:

  1. Engage (and hopefully not annoy some) consumers by communicating with a verbal puzzle;
  2. Avoid a possible unfortunate enunciation and unintended meaning [warning, graphic Urban Dictionary definition, I just discovered] of the Volvo brand name; and/or
  3. Serious misunderstanding of trademark nominative fair use principles.

Other possible explanations?

And, how many of you believe overzealous lawyers are responsible for this unnecessary verbiage?

 With the brand new outdoor Target Field located in downtown Minneapolis, the buzz is palpable, and there is certainly more foot and other forms of traffic, especially on the end of town closest to where the Minnesota Twins now play their home games. Given that increased traffic I suppose I shouldn’t be surprised that some businesses will try to capitalize on that increased traffic and compete for the eyeballs of passersby in the vicinity of Twins Territory.

Exhibit A, shown above, is a very large billboard positioned on the roof of First Avenue (known as "Your Downtown Danceteria Since 1970"). It won the attention of my eyeballs.

When this billboard caught my eye, positioned squarely on the path to one of the parking ramps connected by skyway to Target Field, it struck me as, well, not the most "well-articulated ambush marketing campaign," to borrow Susan Perera’s phrase in her recent posts on Ambush Marketing.

It seems to me that it lacks being "well-articulated" because it actually uses the Twins brand name and trademark in the advertisement, by calling out: "Hey Twins Fans! Car Shop With Confidence" positioned above the Cars.com logo and on the background of what appears to simulate a baseball. Can you say, sponsorship?

My assumption, of course, is that if Cars.com actually were paying for the right to be a Twins sponsor, they’d say so, and neither the billboard nor their website give any such indication.

So, what do you think?

Nominative Fair Use of the Twins trademark? Ambush Marketing? Or is this simply another form of questionable brand bait?

Who is responsible for this billboard ad? Is it a Google advertisement? Verizon? Motorola? Droid?

Whatever the answer, it helps make the point visually that trademarks require protection beyond mere confusion as to source; basically, the same point we made a while back (in response to Seth Godin’s trademark position and then during a friendly sparring match with Ron Coleman), as we discussed the breadth of the Likelihood of Confusion test for trademark infringement:

With respect to what trademark law was designed for, and while I don’t consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

Back to the question of who is behind the "Droid Does" billboard advertisement. No doubt, the tangled and intertwined business relationships illustrated in the billboard ad likely have employed a lot of lawyers to keep them all straight.

For what it’s worth, the DroidDoes.com domain redirects to a page on Verizon Wireless’ website, but I suspect each one of these heavyweight brand owners (Google, Verizon, and Motorola) had a say in the "Droid Does" advertising campaign, clearly designed to compete face-to-face with Apple’s popular iPhone. So, Apple is being triple-teamed here? I wonder if Steve Jobs is flattered?

Oh, I forgot, one more heavyweight brand owner appears affiliated, connected, associated, sponsored, or otherwise involved in the complicated approval process here. Lucasfilm Ltd. (yes, Star Wars and George Lucas) is the record owner of the DROID trademark for wireless communication devices and apparently has licensed those trademark rights to at least Motorola, the brand name on the actual wireless communication device being promoted by Verizon and Google. According to DomainTools.com, LusasFilm Ltd. owns the DroidDoes.com domain too.

Do you suppose that Motorola actually manufactured the device or is that part of some hidden OEM relationship?