Starbucks is moving away from green straws, actually any plastic straws, to live a little more green. So, we’re unlikely to see any straw trademark filings, despite decent look-for advertising.

While Starbucks appears to have drawn the short straw at the USPTO on its efforts to federally-register a pair of green dot marks, appeals to the TTAB are currently pending, here and here:

Let’s stay tuned to see whether Starbucks gets cooking at the USPTO by filing any service mark applications for its distinctive green colored aprons, can you say look-for advertising?

What do you think, does this GREENER APRON word-only mark filing move Starbucks closer?

Starbucks certainly seems to have a lot of brand equity wrapped up in the color green, so I’m left wondering why this coffee shop in San Francisco Int’l Airport chose its name and green letters?

Is it ironic that I’m writing and publishing this Starbucks post remotely on my lap top from here?

Starbucks, thanks for the great coffee, tasty blueberry muffin, and most importantly, the free wifi!

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The company instituted an opposition (which I cannot help but note is #999,999), arguing that “Trader Schmo” will confuse consumers because consumers will naturally switch “Joe’s” with “Schmo,” given the popular phrase “Joe Schmo.”

This is not the first time Trader Joe’s has taken legal action to protect its brand. Notably, just a couple years ago the company sued “Pirate Joe’s,” a counterfeiter with a backstory almost too unbelievable to be true. Pirate Joe’s was a “rebel Canadian grocery operation,” which bought Trader Joe’s products in the United States and “smuggle[d] them across the border to Vancouver” to sell them. Pirate Joe’s eventually ran aground under the immense pressure of its legal fees.

Pirate Joe’s Comes Crashing Down, Credit: Georgia Straight

This new dispute reminds me of the famous “Dumb Starbucks” experiment by comedy TV series Nathan For You. Over one weekend in 2014, the show opened a coffee shop that looked just like a real Starbucks, except that its name and every drink it sold was preceded by the word “dumb.” The comedian behind the prank (or “art“) claimed that “Dumb Starbucks” was permissible fair use because both the use of the Starbucks mark, as well as the store itself, was one big parody. One cannot help but notice some parallels to Trader Schmo; the latter word refers to a hypothetical “dumb” person.

Comedian Nathan Fielder, Credit: New Yorker

Dumb Starbucks and Trader Schmo raise difficult questions about permissible comedic use under trademark law. On the one hand, the marks free ride on the notoriety of other marks, bringing attention. On the other, it seems unlikely the marks would cause actual consumer confusion, making them harmless jokes. Whether Trader Schmo runs afoul of the Lanham Act will likely depend on two major inquiries: (1) whether it constitutes infringement or dilution, and (2) whether statutory fair use defenses apply.

InfringementPreviously on this blog, I explained that infringement usually centers on likelihood of confusion, which is evaluated using a variety of factors:

whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines.

The factors could support a finding of infringement here. The uses are related (food). The strength of the Trader Joe’s mark rides the line between arbitrary and fanciful to descriptive; who is Trader Joe in the abstract, and what does he sell? Surely the marks are similar…sounding. But on the other hand, would an average Joe really mistake Trader Schmo for Trader Joe’s? As a counter, though, it seems reasonable to infer that Trader Schmo was selected because it is similar to Trader Joe’s.

Dilution: So there might be infringement. How about dilution? This occurs when the similarity between the accused mark and a famous mark is likely to impair the distinctiveness or reputation of the famous mark. Dilution does not require any actual or likely consumer confusion. Depending on how good Trader Schmo’s Baba Ganoush, Gefilte fish, Matzo ball soup, and Borscht taste, Trader Joe’s could have an argument for dilution–especially if Trader Schmo’s grows large enough to undermine the distinctiveness of Trader Joe’s as a famous brand.

Fair Use: Generally speaking, the fair use provisions for infringement and dilution both require: (1) that the accused mark be used in a descriptive sense and not as a mark, and (2) that use of the accused mark be fair and in good faith. However, fair use does not provide a defense to infringement if there is likelihood of confusion–but we’ll gloss over that for now.

First, Trader Schmo could arguably be descriptive, delineating traded products. And the word ‘schmo’ has Jewish roots, which could describe the Kosher foods the mark designates. On the other hand, Trader Schmo isn’t inherently descriptive in that it actually describes a product or a characteristic or quality (e.g., Vision Center, a store for glasses). And it’s being used as a mark. So fair use might not even apply.

Assuming descriptiveness, the second element (the ‘fair’ aspect of the doctrine of fair use) often implicates the kinds of First Amendment interests that protect parody, satire, and criticism. But there’s no indication that Trader Schmo is intended to comment on Trader Joe’s. Moreover, courts have rejected the idea that a use is “fair” or in good faith if its similarity to a protected mark is deliberately concocted to garner attention. Trader Joe’s could have a good case for that here–just as Starbucks likely had against Dumb Starbucks.

A high-level analysis of the Trader Schmo mark suggests it could constitute infringement or dilution and is not fair use. This conclusion underscores trademark law’s general distaste for humor when it comes to commerce, as opposed to actual social commentary and comparison.

-Wes Anderson, Attorney

Exult, lovers of autumn and decorative gourds – the air is crisp and the leaves are changing. And, in the treasured annual tradition, this week marked the release of Starbucks’ Pumpkin Spice Latte – or PSL® as they may prefer to call it.

In the spirit of the season, I sought to see if any zealous trademark applicants had sought to claim ownership over the phrasing “PUMPKIN SPICE” or “PUMPKIN SPICE LATTE.” Sure enough, there are a couple of notable marks – PUMPKIN SPICE CAPPUCCINO (a composite mark disclaiming all of the wording) and a pending application for YOU HAD ME AT PUMPKIN SPICE chief among them.

For its part, Starbucks itself seems to recognize the descriptive (if not generic) nature of the name for its most popular drink, a crucial spark to fall sales. But, it does hold a rather curious registration for PSL. The registration identifies “dairy-based food beverages; soy-based food beverages used as a milk substitute” and “coffee and espresso beverages; beverages made with a base of coffee and/or espresso.”

For its part, the Trademark Office did issue an information request during examination, asking Starbucks to “specify whether the letters ‘PSL’ have any significance in the foods or beverages trade or industry or as applied to the goods described in the application, or if such letters represent a ‘term of art’ within applicant’s industry.” Starbucks answered honestly enough, stating in its response:

The Examining Attorney has requested whether the letters PSL have any significance in the foods or beverages trade or as applied to the goods described in the application, or if such letters represent a “term of art” within Applicant’s industry. Applicant notes that the letters PSL stand for Pumpkin Spiced [sic] Latte.

Generally speaking, acronyms that connote descriptive wording are not registrable. According to the Trademark Manual of Examining Procedure:

As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be “substantially synonymous” with the merely descriptive wording it represents.

[. . .]

A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents.

So here, Starbucks has made of record evidence that PSL stands for Pumpkin Spice[d] Latte. And there’s replete evidence online of Starbucks creating an association between the acronym and the descriptive wording. But what did the Trademark Office do? Nothing – it approved the application for registration. And come 2020, the registration will no longer be eligible for cancellation on grounds of mere descriptiveness.

Are there PSL lovers at the PTO? Quite possibly. We’ll have to keep our eyes out this fall to see if Starbucks finds any enforcement targets for its (arguably) descriptive acronym.

Love the simplicity and honesty of this sign, captured on vacation, in a cozy crepe spot (had to get out of my chair and walk across the dining room to read the smaller print, well worth the steps):

LessisMore

As Seth recently noted, there can be room for improvement when it comes to making signs (we have too), and he further notes, depending on your approach, it is possible and can be best to have more and less (although not of the same things).

As a late and gentle kick-off for the New Year, and after a long weekend of some pretty amazing NFL football games, here are a few additional thoughts about more and less (no particular order):

Less Single Letter Brands, Especially When it Comes to Equis:

MaxDosEquis

(Photo Credit and Hat Tip to Maxwell)

More Showing, Less Telling:

Especially With Effective Non-Verbal Brand Signals:

StarbucksSirenLogo

“Show, don’t tell . . . . the value of design.”

More Naming of Distinctive Product Design Features:

LexusSpindleGrille

Less Unnecessary Touting of Function Over Form

 More Creative Signs That Move Us to Be Better and Engage More

Less Pavlov in Your Hands, Especially During Meals:

Calypso

More Creative Wifi Passwords:

CalypsoWifi

(Calypso Grill Photo Credits and Hat Tip to Maxwell)

Here’s to all of us having more amazing collaborations, connections, and relationships in 2017.

A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle:

StarbucksCannabisOne of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few years back, against a New Hampshire coffee roaster, who lawfully continues to sell its Charbucks coffee blend of beans.

It also brings to mind the difficulty of predicting the outcome of a trademark parody defense, especially since the case Tim wrote about earlier this year, highlighting Louis Vuitton’s inability to prevail in the recent My Other Bag case.

Last, at least for now, it also brings to mind the moving target of the legality of marijuana, at least at the state level, especially recognizing that Starbucks’ backyard happens to be a safe haven for doobie lovers.

Back in the day, associating the visual identity of a famous brand owner with an illegal product, was quite helpful in proving up tarnishment type damage, remember the Enjoy Cocaine posters?

Yet, with the ever-changing environment of what is legal and where, at what point will the tarnishment argument become tainted, especially with the apparent growth of First Amendment defense successes in trademark cases?

In the end, given the utter prevalence of Coca-Cola script inspired Enjoy Cocaine t-shirts available for sale online (a substance legal in no state), is the most logical explanation for a famous brand owner’s apparent tolerance best explained by the Wack-a-Mole pest and problem?

Today is Veterans Day, and we all owe veterans (and their families) a debt of gratitude for their service and their sacrifices to ensure our freedom.  Veterans are our friends, our family, our neighbors, our co-workers, and probably even the person ahead of you in line at Starbucks today grabbing a red cup of coffee.  Thanks to all our veterans for their courage and their efforts to keep us safe.

There are many symbols used to show support for veterans and active military, including yellow ribbons and service flags.  Now a group wants to make green lights another one of these symbols.  I was touched by the message and sentiment behind this ad that I recently saw for the Greenlight a Vet program.  The idea is to turn on a green light at your home to show support for veterans.  At the end of the ad,  it mentions that it’s “supported by Walmart.”

https://www.youtube.com/watch?v=yDrH341M0Kk

Last month, four applications were filed for the GREENLIGHT A VET word mark, a black & white version of the logo, a green version of the logo, and a black & white version of the lightbulb alone.

Mark Image

The applied-for services in each are identified as “promoting public awareness of social issues, namely, supporting and hiring of veterans of the armed forces.”  And, all four of the applications were filed by Wal-Mart Stores, Inc.  Based on the ad, I expected some veterans organization to own the marks, not the #1 company on the Fortune 500 list.  But this seems to be part of Wal-Mart’s larger initiative to hire 250,000 veterans by 2020.

Social movements seem to be growing, especially as participation in social media has increased rapidly.  However, a search for active applications and registrations on the USPTO’s website reveals only 21 applications or registrations with a description including “promoting public awareness of social issues.”  Aside from the four for the Greenlight a Vet marks, the rest were filed by individuals or small entities.

Trademark protection provides a trademark owner with an exclusive right to use a trademark when use of the mark by another is likely to confuse consumers.  Should corporations like Wal-Mart be granted an exclusive right to use a trademark not for lightbulbs or retail store services or veterans services, but rather for a trademark for promoting public awareness of a social issue?

When my daughter walks into a Starbucks (given her avid fan status, she does so often with her spending money in hand), she is typically greeted by an employee who says, “I love your shirt, where did you get it”?

Her response, “I made it” (turns out that is pretty easy), frequently prompts a flattering comment about my daughter’s fashion sense — by the way, she has some street cred, as she was recently voted by her class as the most likely to be a fashion designer living in Paris:

Starbae1Starbae2

Starbae3

 

 

 

 

 

 

 

As it turns out, Paris or not, my daughter’s co-creation efforts are not limited to making her own t-shirts (don’t worry Starbucks, she doesn’t sell any, she wears them herself, like a free and flattering traveling human billboard for the brand) to express her passion and creativity for the living Starbucks brand, but she also has coined a nickname for the brand, namely, Starbae.

Apparently, it is her truncation of Starbaby or Starbabies (other endearing nicknames) — an endearing co-created brand name to demonstrate loyalty for her favorite Starbucks brand. As Geoff Gower, executive creative director of ais London, recently wrote for The Guardian:

“By giving millennials the opportunity to co-create, you’re automatically encouraging brand loyalty. By becoming directly involved with a brand, they gain a feeling of influence and control, while seeing that their input actually matters – thus this encourages them to continue to engage.”

Given how my daughter’s ideas tend to spread, I’m thinking Starbucks might want to get out in front of this one, and Starbae appears to be available, only one phonetically equivalent registration for wooden furniture.

Perhaps my daughter will design Starbae uniforms when she is old enough to work for them . . .

My recent trip to St. Louis for the Public Relations Society of America Midwest District Conference yielded another example of co-created branding symbols worth sharing:

RoyalCard

As you might imagine, the woman wearing this home made shirt (who agreed to pose for my photo) can’t decide whether to root for the Kansas City Royals or the St. Louis Cardinals (her other family members were solidly in the Royals camp, given their attire). And, does that make her a RoyalCard fan, if she were to co-create a blended brand name for her favorite team(s)?

Marketing types, what do you think of these examples of co-creation, do you embrace them, or do they make you nervous?

Trademark types, same questions . . . .

-Wes Anderson, Attorney

Famous brand owners, take note: a Turkish artist and designer named Mehmet Gozetlik recently released “Chinatown,” a mesmerizing series of photographs in which neon lights depict famous design marks, with the word mark replaced by its generic wording in Chinese.  Is your brand one of them?

The Pepsi logo, for example, has been recreated in a meticulously crafted neon light, with the Chinese characters for “diet cola” appearing in the spot reserved for “PEPSI.”  See for yourself in the video below:

Chinatown / The Chinese translation of the trademarks from Mehmet Gözetlik on Vimeo.

According to the artist:

‘Chinatown’ pushes viewers to ask themselves what it means to see, hear, and become fully aware. ‘Chinatown’ also demonstrates our strangeness to 1.35 billion people in the world, when you can’t read Chinese.

In other prints, “Car” replaces “FORD,” and (my favorite) “Caramel Macchiato” replaces “STARBUCKS.”

You can see the full gallery of photographs on Gozetlik’s website. In all, 20 famous design marks are featured, each with generic Chinese lettering.  Twelve of the prints are currently for sale at “Eyestorm,” a gallery with locations in London and New York.1

If you’re considering parting with $740 for a print, I suggest getting an order in now — if the brand owners fortunate enough to be featured take action, this could be a limited time offer.

Things get dicey where artistic works use trademarks, and the Lanham Act intersects with the First Amendment. The Lanham Act prohibits the use of a word, term, name, or symbol that “is likely to cause confusion, or to cause mistake, or to deceive as to the . . . origin, sponsorship, or approval of his or her goods, services, or commercial activities.” 15 U.S.C. § 1125(a)(1)(A). In other words, the central question is whether consumers would be confused as to whether Pepsi et al. sponsor or approve of Gozetlik’s artwork.

On the other hand, courts have found that the public interest in free expression can trump consumer confusion. The University of Alabama learned this three years ago, when it sued an artist who painted and sold images of Alabama Crimson Tide football games. These images, which sought fidelity to real-life events, contained the Tide’s iconic uniforms and designs. The Eleventh Circuit found in favor of the artist, and held that courts “should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark.” These so-called “artistically expressive” works do not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever.”

Other brand owners choose to embrace artistic use of their marks. In response to Andy Warhol’s iconic Campbell’s Soup Cans painting, the Campbell Soup Company wrote Warhol a glowing letter in 1964 wishing him “continued success and good fortune” — and sent him some tomato soup to boot!

This presents brand owners with an interesting choice to make: pursue, or praise? No doubt, the photographs (and accompanying video, which earned a Vimeo “Staff Pick”) are gorgeous, and present a provocative message on globalization and language.  The rave reviews from other corners of the Internet suggests that we trademark lawyers are just wet blankets.

But no one can deny that the photos’ recognizability — and indeed, their entire premise — starts with appropriating famous design marks. Nowhere on Gozetlik’s website (or Eyestorm’s) is there any mention of a license to use these marks.2 The commercial nature of Gozetlik’s work is clear — and by selling to U.S. consumers through a gallery with a U.S. location, the Lanham Act directly applies.

Gozetlik’s replacement of the respective word marks with generic wording is another troubling issue: aside from the general aversion to generic wording, would English-speaking viewers believe they were looking at the Chinese transliteration for “PEPSI,” rather than the accepted translation for “diet cola”?  I must admit that, at first glance, I assumed the former.

So, what do you think? Should the brand owners featured in the collection take down “Chinatown”? Or should they back off entirely?

Perhaps most importantly, should Starbucks “pull a Campbell’s” and send some Caramel Macchiatos to the artist?

 


  1. The remaining eight prints — featuring logos for 7-ELEVEN, Lufthansa, and Chiquita — are not listed for sale, but it’s unclear whether any of these companies have taken any action.
  2. I’d be very impressed indeed if Mr. Gozetlik had actually obtained all 20 licenses!

 

This past weekend one of my sons said, “Dad, I have a good blog topic for you.” After he explained, it was clear, yes, son you do! So, he sent me the photo to the left. It is one that he recently snapped at a place that sells Halloween costumes.

 

As an aside, I love it when family members, friends, colleagues, our wonderful guest bloggers, and you dear readers, send potential blog ideas and topics! So, please keep them coming!

Anyway, my son’s photo reminded me of a similar t-shirt and I now remember seeing it worn by some folks during the Minnesota State Fair a few weeks ago. Since I captured no photos at the time, I had forgotten about it until now. As it turns out, you can buy the shirt I saw online.

The Etsy site where it is being sold describes the above shirt to the right this way:

“This t-shirt reads Zombies Eat Flesh and is shaped like a very famous sub logo. This decal measures approximately 11 x 13 inches and is great for all you zombie lovers!”

So, I’m left wondering why hasn’t Subway jumped on this zombie with both boots? After all, we don’t only have a famous mark targeted by this parody, but a very famous mark, thanks Etsy.

And, Subway ought to have some free time on its hands now that the FOOTLONG trademark debacle is behind it, unless it is still working on removing those millions of false TM notices.

Or, perhaps Subway just hasn’t gotten around to Etsy yet, as another online seller has indicated his Eat Fresh parody shirts are: “NO LONGER FOR SALE DUE TO THE MAN.”

I’m thinking that whoever created and is using the stylized ZOMBIES EAT FLESH trademark has zero chance of successfully registering it (no surprise, no application has been filed, to date), I just can’t see the USPTO allowing it, can you?

TTAB cases involving a discussion of parody — in the context of likelihood of confusion — include at least the following:

  • Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012) (sustaining oppositions to applications for the mark CRACKBERRY, for a variety of online computer services and clothing items, on the bases of a likelihood of confusion and likelihood of dilution by blurring with the mark BLACKBERRY, for handheld devices, including smartphones, and related goods and services, noting that “likelihood of confusion will usually trump any First Amendment concerns”);
  • Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (holding contemporaneous use of applicant’s mark, LESSBUCKS COFFEE, and opposer’s marks, STARBUCKS and STARBUCKS COFFEE, for identical goods and services, likely to cause confusion, noting that “parody is unavailing to applicant as an outright defense and, further, does not serve to distinguish the marks”); and
  • Columbia Pictures Indus., Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981) (holding CLOTHES ENCOUNTERS for clothing, and CLOSE ENCOUNTERS OF THE THIRD KIND for t-shirts, likely to cause confusion, noting that the “right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another”).

As if that isn’t enough, couldn’t you see this well-settled TTAB precedent being relied on by the USPTO during ex parte examination or by the TTAB during an inter partes proceeding?

  • When present, the fame of a mark is “a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods.” Recot , 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that “a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark” and that “the fame of a registered or previously used mark can never support a junior party”); and
  • If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. See In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1372 (TTAB 2009).

But, if Subway were to actually bring a trademark infringement and/or trademark dilution action in federal district court, would that be a walk in the park with this zombie, or the cemetery?

I’m thinking that the federal district court takes a much closer look at the parody defense and pays more attention to First Amendment concerns. Do you agree that the zombie has a better than zero chance of successfully defending on parody grounds?

If so, doesn’t this example help make the point, again, about the difference between the right to use and the right to register? They aren’t necessarily coextensive rights are they?

Shouldn’t a federal district court who is asked to decide likelihood of confusion and likelihood of dilution — with injunctive relief, damages, and other monetary relief hanging in the balance (instead of just the right to register) — have the authority and obligation to consider these issues fresh, without having its hands tied by a earlier TTAB decision affirming a registration refusal or granting an opposition to register on likelihood of confusion grounds? There is simply more at the stake when the right to use is challenged and monetary relief is sought, it seems to me.

Moreover, I can’t believe that the TTAB wants the pressure of having its decisions also determine liability for trademark infringement and trademark dilution claims in the federal district courts.

So, let’s hope the U.S. Supreme Court gets it right and recognizes the difference between the right to register and the right to use, in the upcoming B & B Hardware case!

Please join me and the renown Bill Barber of the Pirkey Barber firm discuss these important issues at the Midwest IP Institute in Minneapolis on Thursday.