It’s not every day you’re presented with the unique opportunity of seeing and hearing the Chief Justice of the United States Supreme Court live in your own backyard, thanks very much Caleb!

Tuesday was that day, Chief Justice John G. Roberts, Jr. was here in Minneapolis for the 2018 Stein Lecture at the University of Minnesota’s Northrup Auditorium, as the Star Tribune reported.

SCOTUSBlog had this to say about the Chief Justice’s remarks. To listen to a recording of the event, to a sell out crowd of 2,700, check out MPR’s coverage, here.

Others reporting on this event don’t appear to care about trademarks as much as we do, so this may be the only place you’ll learn about Justice Roberts’ remarks relating to trademarks.

As you can imagine, knowing the vast body of legal subject matter confronted by the Supreme Court, clearly my ears perked up in hearing Justice Roberts utter the word “trademark” five times!

Moderator Robert Stein, former University of Minnesota Law School Dean, asked Chief Justice Roberts whether any highly technical subject matter might be unsuited for the Court to decide.

My mind went to the creation of the CAFC in 1982, specifically designed to hear all federal district court patent appeals, yet the Supreme Court has repeatedly reversed the CAFC since 2005.

Justice Roberts never mentioned the CAFC, instead he waxed a bit about trademark expertise:

“My answer, I think is, no, because usually no matter how complex and involved the legal issue, the case may seem, it implicates a broader legal question about, you know, the statute may be complicated, but the question is going to be, well, how do you go about reading the statute, what sources do you look at in a particular case. We don’t take technical legal cases because we like technical legal cases. They’re usually because they implicate a broader question. When I was practicing law, this is a speech I gave a lot of times, because I was not an expert in any area of the law. I like to think of myself as somebody who was good arguing in a particular court, in the Supreme Court, and so I’d have to, you know, convince someone who comes in with an important trademark case, who could hire the world’s leading expert in trademark law, or me.  And, I would tell them, look, the Supreme Court does not think your case is a big deal for trademark law. It thinks your case is a big deal for how regulations relate to the statute, how particular provisions in the statute should be read. So, you need somebody who, you know, can look at it in that broader perspective that the justices do, and you know, I would say, half of the time, they would say, well, I actually want somebody who knows something about trademark law, and that was understandable, but, then it would be, and, you know, they would get there in front of the Court, and they’re too expert in trademark law, and the justices just aren’t that interested in a lot of those nuances, and sometimes they would just be speaking over each other.”

My ears also perked up with Justice Roberts’ remarks about the Court’s fewer decisions:

“We have particular criteria for the cases we want to take. Obviously, if any court finds an Act of Congress unconstitutional, we will take it, we think as a matter of comity to the branches across the street, we should be the ones to say that, if any court is . . . .”

Do you see where I’m going with that remark, dear readers? I’m thinking about Erik Brunetti.

As you will recall, presently before the Supreme Court, is whether to hear the Brunetti case, and the issue presented in Brunetti is:

“Whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of ‘immoral’ or ‘scandalous’ marks is facially invalid under the free speech clause of the First Amendment.”

Given the clarity of Justice Roberts’ statement, “if any court finds an Act of Congress unconstitutional, we will take it,” I’ll be amending my prediction otherwise, since the CAFC did just that, in Brunetti.

There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).

If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued “in the name of the United States of America” — won’t be some uninteresting and ignored “nuance” of trademark law to the justices.

uberUber, the popular brand that helps people arrange prompt ground transportation, is now also being called a verb. The Star Tribune recently reported that the founder of iHail, a recent competitor of Uber in the Twin Cities market, would like to achieve the same anointed status: “I want iHail to become a verb, just like Uber.” So, let’s say trademark types might be cringing.

Let me know if you’re still cringing after reviewing these gems from the archives on the risk of trademark genericide through trademark verbing:

Hat tip to Joel Leviton, who by the way did a very nice job earlier today presenting “Key IP Issues in Advertising Law” at the Minnesota IP Institute in downtown Minneapolis.

My question, has Uber become the brandverb über alles? (the link exists for those of you who didn’t get the pun in the title of my post or take German in high-school)

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.

Neil F. Anderson, Founder/President, The Courage Group, Inc.

Having already discussed Why Publicity Matters last week, the most effective publicity strategy is to position yourself as an expert in your field. Notice how the media, especially television, seems to have the same experts come on shows to comment on stories etc. This did not happen by accident and did not come easy for these experts early on. They successfully positioned themselves in the media as the "go to" expert in their field. Then when they got the chance, they shined. They shined so much that the media invited them back again and again.

Once you are a proven expert resource, the media will come to you vs. you going after the media. You now begin to establish and build a rewarding, win-win relationship with producers, editors and others.

What are the best ways to be positioned as an expert in your field?

# 1-Get published.

Write a feature article for a newspaper, trade publication or a website. Or write a book. People tend to believe and trust what they see in print. I was able to strengthen my reputation as an expert with articles I wrote, or with profile pieces that were published in The Minneapolis StarTribune, Chicago Tribune, The Wall Street Journal/ Center For Entrepreneurs, CNNMoney.com, Fortune Small Business, USAToday.com, and The Canadian Business Owner etc.

Plus, when a potential client or customer reads your work, it gives you immediate credibility in their eyes. An in turn, helps close the sale or deal.

# 2-Get on television or the radio.

Despite the perception, it’s not impossible. Producers and reporters are always on the lookout for experts in many fields that they can draw from for timely input on newsworthy stories. For example, although I have many competitors, I was able to appear regularly on WGN Radio and on Chicagoland Television. And was featured as an guest expert on entrepreneur/small business owner topics for their stories.

# 3 Give speeches.

Volunteer your time for talks and lectures. A great venue is your local chamber of commerce, networking groups and libraries etc. When you speak in public, people perceive you as an expert in your field. 

My first speaking opportunity was with The Chicagoland Chamber of Commerce. This high profile "gig" opened up new speaking doors and opportunities with other venues including;The Minneapolis Chamber of Commerce, The Chicago Bar Association, Celebrity Cruise Lines, Macy’s, Motorola, The University of Chicago/Graduate School of Business, several U.S. outplacement firms and other organizations.

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Writing a News Release

At the heart of any publicity campaign is the news release or is often called, the press release. A news release is simply your news story, written in a journalistic style. A well-written, newsworthy release is a helpful tool to get on television, radio or in newspapers. The news release may be used as the basis for a report in the media. Or can trigger a call from a producer or reporter wanting to find out more information. No publicity tool is as simple to use or as effective as the news release.

Keep in mind, at all times, that the release needs to be written in a journalistic style and must answer the "Five W"s?: Who? What? Where? Why? And When? And one H: How.

The news release is not a sales document or advertisement. A simple rule to keep in mind, as your draft your release; why would readers, viewers or listeners be interested in this story? A key tip, focus on a strong headline.

The media today, like all of us, live in a headline driven world. You only have a few seconds to grab the attention of an editor or producer. The harsh truth is that these folks only glace at the headline of a news release. And 97% of rejections are made at this point.

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Sending Your News Release

The best way to send your news release, by a long shot, is emailing. 

It is tough to beat its speed, efficiency, effectiveness and cost advantages. Plus, journalists and media producers generally prefer emailing.

There are also two key ways to send out the release, do it yourself or hiring a news release distribution company. Here are some popular new distribution service companies I would recommend; www.prnewswire.com, www.businesswire.com or www.prwebdirect.com.

If you decide to email the release yourself, don’t worry if you don’t know anyone in the media. The Internet has made it easy for you to get the names and email addresses of media personnel that you are targeting, by simply going to their respective websites and doing some homework. It might take a little digging, but chances are, the email address for these folks are available on the website.

A key tip, since the media gets tons of emails, put your headline in the subject line of your email note. Again, we live in a hurry-up, headline driven world today. The key is to get the journalist to be immediately interested in your email note.

If you can’t get them interested in the subject line, chances are they will delete the email note, even before glancing at the body of your note and attached news release.

In part 3, I will write about:

1. Being your own PR firm

2. Famous PR quotes

3. Using the power of free publicity

James E. Lukaszewski, ABC, APR, Fellow PRSA, President, The Lukaszewski Group Division of Risdall McKinney Public Relations

I’m sitting here at 7:45 a.m. moving very slowly in what is the first of four daily rush hours in this lane of eastbound I-494 in South Minneapolis. One has to wonder what all the media excitement is about. I’ve just listened to Lori Sturdevant, an opinion writer for the Minneapolis Star Tribune, talk on CNN about how upset, angry, and distraught Minnesotans are over the government shut down.

I may be missing something, but it seems to me that from the traffic in this part of town, there are an awful lot of people struggling to get to work, as they do every day, and probably not giving too much of a hoot about the state being shut down.

Seems to me the only people upset, angry, and distraught are reporters who are trying to make something out of this, and those who have temporarily lost their jobs, while the public goes about their business, raising their eyebrows at the media coverage with that increasingly common expression, “There they go again.”

In fact, my guess is sooner or later we’re going to begin wondering the reverse: Why do we have so much government? Why all the time, and what does it really accomplish?

Things are working. Nine out of ten people who want to work are working. Most of us seem more worried about our personal future than what a bunch of politicians are busily not doing wherever they happen to be during the shut down.

In the good old days before air conditioning, the legislature would meet once every two years for about three months and take care of the State’s business. Now the State has 24,000 employees, each of whom is presumably doing something important every day. But Minnesota’s shut down graphically illustrates perhaps how dramatically the government could be streamlined and operate far less frequently, on a much smaller number of levels.

The only thing that truly changes the direction of a democracy is catastrophe. What we’re learning from the current government shut down is that far from being a catastrophe, it’s an object lesson in how poor leadership can accidentally reveal some powerful and important insights about how the State should actually be run, or not run, depending on your perspective.

What Governor Dayton should be doing at this moment is proposing an entirely new government structure for Minnesota involving a radically reduced, far more efficient and effective State organization. He can start doing this by only inviting certain departments, agencies, and offices back into operation when government function resumes. Clearly, one of the major ways to resolve a deficit in the family budget, as well as the government budget, is by reducing expenditures and simplifying how things are done. The question should really be “How much government do we really need?”, rather than “How do we resolve the deficit issue?” The longer the State remains shut down the better the illustration of how badly basic change is needed.

Let’s be clear, I believe in government. I served in the Wendell Anderson and Rudy Perpich administrations. I believe that government is not a “business” subject to business rules. Government is an entity designed by the people to serve the peoples’ interests and needs. Those needs should be provided directly at the level closest to the populations being served.

This is an opportunity to develop a much better government rather than simply start up the old big one, all over again. Think what an inspiration this would be if something like this came from the mouth of the political leader.

One thing we know for sure, the media’s purpose is to irritate, agitate, and aggravate, and foster contention, confusion, and consternation.

It is an example of the “Murdoch Effect”. If the news isn’t juicy enough, spice it up. If things aren’t happening, make something happen. If something irrational is happening, blame it on those who are acting responsibly and make them explain those who aren’t.  

Last Friday Twin Cities Business and the Minneapolis Star Tribune reported on 3M’s recent trademark infringement case filed against online retailer Shoplet.

In case you haven’t seen it yet, here is a pdf of the complaint.

It asserts a variety of violations of 3M’s exclusive rights in the federally-registered POST-IT trademark, including federal trademark infringement, false designation of origin, federal dilution of a famous mark, dilution under Minnesota law, deceptive trade practices under Minnesota law, unfair trade practices under Minnesota law, various common law claims, and unjust enrichment.

According to the complaint:

"Shoplet operates a website, www.Shoplet.com, offering for sale office supplies made by a variety of manufacturers. This website has a search function allowing consumers to search for products."

"Searches of the Shoplet.com website for the mark "Post-it" consistently return repositionable notes manufactured by Universal, a 3M competitor, as the first results, labeled "featured" products . . . ."

"These competing products are displayed under the POST-IT Mark, which appears near the top of the page in large red type. 3M’s POST-IT products often are not included anywhere on the first page of results under the POST-IT Mark although the default search results are represented as sorted according to relevance."

"On information and belief, Shoplet asks manufacturers to pay for ‘featured’ and/or otherwise prominent placement of its products in results for searches for the manufacturers’ trademarks, but does not inform consumers that results of searches of its site include paid advertisements."

One might wonder, a week later now, if Shoplet would have stopped having Universal brand notes appear more prominently than the obviously more relevant 3M POST-IT notes upon a search for "Post-it" — but, not so.

It makes me wonder whether Shoplet is positioning itself to stick it out and defend Google-style, or whether it will decide to reposition its website search results upon further reflection.

What do you think about 3M’s lawsuit?

Who says that being a large corporate trademark owner is one of the prerequisites to earning the emotionally-charged, pejorative, and ill-defined label “trademark bully“?

Well, the original directive to the USPTO appears to assume that “trademark bullying” is a one-way street, disfavoring only large corporate trademark owners, and ignoring the possibility that individuals and small businesses are equally capable of deserving scrutiny for their abuses of the trademark system, by originally focusing on “the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

Interestingly and easily overlooked, IPO noted in its January 7, 2011 submission:

[O]n December 9, 2010, the Copyright Cleanup, Clarification, and Corrections Act of 2010 was signed into law, becoming Public Law No: 111-295. It contained a provision removing the “by corporations” language from the Trademark Technical and Conforming Amendments Act of 2010, such that the law now requires the USPTO to examine “(1) the extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner. . . .”

Indeed, for some reason, even the USPTO’s most recent restatement of the directive, here, fails to note what IPO indicated Congress has deleted from the directive.

In addition, IPO also commented that large size isn’t necessarily a good predictor of bad behavior:

“In addition, the pejorative and emotionally charged term “bullies” suggests that the trademark owner in question is a large organization that is using its greater size and economic power to unjustly “push around” a smaller organization or individual. In the experience of IPO members, this is rare, and most large organizations take action in cases upon careful reflection of the facts and development of a strong business case analysis and justification for the litigation expense.

Indeed, several IPO members noted a trend towards more aggressive assertion and defense of trademark claims by individuals and small organizations, particularly where they represent themselves or have obtained legal representation on a contingency basis.”

This all leaves me wondering whether IPO had in mind, at least as one example of this apparent role-reversal, a recent trademark dispute between 3M (an IPO member) and a pro se individual defendant named Pradeep Mohan, wherein Mr. Mohan was found liable for willful trademark infringement of 3M’s well-known Littmann stethescope brand and mark, operating an “unethical” Internet business out of his Santa Cruz residence.

Susan Feyder of the Star Tribune reported on 3M’s win back in December, and the decision is here.

A couple of weeks ago the U.S. District Court for the District of Minnesota (The Honorable Ann D. Montgomery) ordered Mohan to pay and granted to 3M $838,000.00 as reasonable attorneys fees under the exceptional case provision of the Lanham Act, reducing 3M’s original request of $942,063.48 by $104,063.48. A pdf of Judge Montgomery’s January 19, 2011Order is here.

Any bets on whether 3M actually banks any of this award?

And, what do you think about size, does it matter? In other words, are small businesses and individuals also capable of earning the “trademark bully” label, what ever that may mean?

–Dan Kelly, Attorney

As reported by the Star Tribune, the first B. Dalton Bookseller bookstore will be among the last to close:  the B. Dalton bookstore at Southdale Center in Edina, Minnesota closes tomorrow after a 44 year run.

Even if a bit sad for the sentimentalists among us (and I am one) to watch another relatively longstanding brand go down in chains, so to speak, this was not altogether unpredictable given modern book retailing.  The B. Dalton brand has virtually no online presence whatsoever.  The domain names bdalton.com, bdaltons.com, bdaltonbooks.com, bdaltonbookseller.com, and bdaltonbooksellers.com, all appear to be parked with pay-per-click pages.  Of the thirty or so trademark registrations in which B. Dalton had an interest at one point or another, twenty-six of them have lapsed or been canceled.  Parent company Barnes & Noble has openly discussed the “controlled descent” of B. Dalton stores in recent annual reports.  The store closing at Southdale is not even the original store that opened there–it moved to a more remote locale within the mall years ago.

Karen’s recent posts on the death of the Tavern on the Green have raised some of the same issues at play here:  whither the B. Dalton brand?  One thing that distinguishes the two cases, in my mind, is that the Tavern on the Green brand is reportedly valued at $19 million.  (Query:  how does a company with one business location and a $19 million asset go bankrupt?)  At its height, the B. Dalton brand might have been worth millions, but now it is probably synonymous with “mall-based bookstore with slow sales.”  Perhaps it might appraise at a few hundred thousand dollars, but an estimate is not worth very much if there is no buyer.  So long B. Dalton!

A couple of hours ago Kare 11 News in Minneapolis reported "Lions Tap wins settlement with McDonalds."

Absolutely no details about the settlement were provided, so it’s hard to understand how Kare 11 is able to pronounce this as a "win" for Lion’s Tap over McDonalds, although it certainly plays into the seductive David and Goliath theme of the case. The attorney for Lion’s Tap apparently is quoted as saying the parties reached a "mutually beneficial amicable resolution," and Kare 11 further reports that McDonalds did not "immediately return a phone message seeking a comment" today.

Perhaps even more troubling than the unsupported "win" characterization, is the repeated failure of the traditional media covering this story to get the facts straight — facts easily discernible by reading the federal court complaint that is so often recited in the stories, but apparently very few actually have undertaken to read it. In case you’re interested, here is another link to the actual complaint.

As we have documented before on DuetsBlog, Lion’s Tap did not register the "Who’s Your Patty" slogan until after McDonalds began use and only days before filing suit against McDonalds, and it did not register — even in Minnesota — four years ago, as repeatedly and incorrectly reported ad nauseam by the media.

In fairness, although local CBS affiliate WCCO also republished the significant error on the timing of Lion’s Tap’s Minnesota registration of the "Who’s Your Patty" slogan, at least it didn’t assume the settlement to be a "win" for the Tap: "Lion’s Tap Settles With McD’s Over Catchphrase."

Our coverage of this case is here (9/3/09), here (9/8/09), here (9/21/09), and here (10/17/09).

In case we have not heard the last word on this case, stay tuned, and we’ll let you know more as we know more about this Lion’s Tap "win" and "mutually beneficial" resolution.

UPDATE: Is the Star Tribune reading DuetsBlog? It appears so. A Google search shows the Star Tribune’s original story title on the settlement was: "Lion’s Tap wins trademark suit against McDonald’s," but now the story is titled: "Lion’s Tap settles trademark suit against McDonald’s," with no mention of the Minnesota State registration.

Now we just need to get USAToday, NPR, Newstin, Daylife, and NewsSpider, on the bandwagon.

The Minneapolis Star Tribune finally reported on the Who’s Your Patty? trademark infringement lawsuit filed in August by self-proclaimed "David" (Lion’s Tap) against "Goliath" (McDonald’s), here. Our previous coverage is here, here, and here.

The Star Tribune reports that McDonald’s has not yet answered the complaint filed by Lion’s Tap. That’s true, but all that means is that Lion’s Tap filed, but has not yet formally served the complaint on McDonald’s. Had the complaint been formally served on McDonald’s, as the rules require before an obligation to answer arises, then McDonald’s would have twenty days in which to respond. So, the parties continue to negotiate for an amicable settlement. 

No doubt, "David" would prefer not to have to formally serve the complaint because that is when the federal court’s machinery starts to turn and more significant money begins to be spent in pursuing the case. Of course, Lion’s Tap will need to formally serve the complaint on McDonald’s within 120 days of filing the complaint or risk the suit being dismissed, so, just before year end. We previously have discussed the strategy of filing, but not immediately serving federal court complaints, here.

The Star Tribune story also reports: "The Lion’s Tap says it has been using the phrase for at least four years and has had it trademarked in Minnesota. It also has a federal trademark application submitted." The use of past tense "had" appears to repeat the same incorrect fact that most of the media ran with when the story originally broke, namely, that Lion’s Tap had registered Who’s Your Patty? as a trademark slogan before McDonald’s began use of the same slogan, implying McDonald’s knowingly "stole" something of Lion’s Tap.

As you may recall, we already pointed out how nearly all the media outlets got this critical fact wrong, as Lion’s Tap did not register until ten days before it filed suit against McDonald’s, and well after McDonald’s posted billboards bearing the slogan. All the Hamburglar references don’t stick to McDonald’s if it knew nothing about Lion’s Tap’s discrete prior use of the Who’s Your Patty? slogan, an entirely plausible scenario, as we have already discussed, here.

Most interesting, at least to me, are the scores of reader comments to the Star Tribune story, here.

For the time being, they reveal that, for just about every enthusiastic Lion’s Tap fan who loves to support the small fry and is cheering on "David" there is a pretty harsh critic of Lion’s Tap, some even taking pot shots at the quality of its food. Indeed, it appears a substantial number would endorse Jason Voiovich’s caution: "Here’s the problem, instead of coming off as the victim (which you could argue Lion’s Tap is), they come off as another coffee-in-the-crotch, show-me-the-money, lawsuit-happy opportunist." So, you might say that PR can cut both ways.

The comments also understandably reveal more confusion between Lion’s Tap and Lyon’s Pub than between David’s and Goliath’s respective uses of Who’s Your Patty?

Also, I learned from the comments about another reportedly great burger joint that appears to be worth the extra drive: Hopper’s Bar in Waconia. I’ll make sure to let you know how that goes. So, beware, PR efforts can unintentionally inform even loyal patrons of competitive alternatives too!

More on the legal claims, after the jump, in case you’re interested.

Continue Reading Update: Who’s Your Patty? Lawsuit and Reverse Confusion