Since launching almost ten years ago, we’ve focused on helping and guiding marketing/branding professionals, as we seek to facilitate their graceful collaborations with trademark professionals.

Our approach has strived to deliver valuable information, without the typical jargon and legalese.

It seriously borders the obvious to say that folks who connect with us here know the importance and value of brands and trademarks, and probably know far less about patents and patentese.

Could novelty be shown, sharing this with patent folks wanting more comfort with trademarks?

In a month, on September 28, at 10:15 AM, I’ll be sharing some of this knowledge at the Midwest IP Institute, in Minneapolis, with a brand new session specifically designed for in-house patent and intellectual property counsel, especially those who may believe that patents are more important than trademarks, called: Trademark Survival Guidance for In-House Patent and IP Counsel.

I’m not saying that one is more important than the other. Nor are there any equivalents here.

What I am saying is that over the last quarter century intellectual property expertise has become far more subspecialized. I’ve witnessed this development first hand over the course of my career. Yet, not all companies have dedicated in-house trademark counsel, so in-house patent counsel often is expected to have at least a working knowledge of the ever-changing trademark landscape.

I’ll be leading a discussion with a very talented group of patent and intellectual property counsel:

  • Paul Sherburne, Associate General Counsel and Intellectual Property Attorney, Graco Inc.
  • Greg Smock, Patent Counsel, Teleflex Incorporated
  • Kirsten Stone, Assistant General Counsel – Chief Intellectual Property Counsel, H.B. Fuller Co.

If you have a strong patent background and want more trademark footing, this session is for you.

If you know patents inside-out, but search for more comfort in trademark matters, this is for you.

If your knowledge of the patent landscape is vast, but you seek to be much better than simply dangerous, when it comes to navigating thorny trademark issues, you won’t want to miss this.

Why? Because we will help you improve your handling and supervision of trademark matters.

In fact, you will learn and apply valuable trademark knowledge to your day-to-day work, and take away the top six trademark tips that will improve and strengthen your trademark advice to business leaders and marketing professionals. Are we speaking your language yet?

If you’re wanting to learn how to translate patentese into valuable trademark skills, here you go.

By the way, I’ll be expanding my patent knowledge and learning more patentese later today (and more than I knew yesterday) at the USPTO China Intellectual Property Road Show at the University of Iowa College of Law, hosted by Dean Kevin Washburn and Professor Jason Rantanen.

These lime green building sites caught my eye and jogged my trademark memory. First, the future home of the University of Iowa College of Pharmacy, at beam signing, on May 4, 2018:

Second, the expansion of the Metro Transit headquarters near downtown Minneapolis, on June 12:

Of course, the obviously common element of both building sites, besides my iPhone, is the same lime green sheathing, both also branded with the USG and SECUROCK word trademarks.

Then poof, they’re gone, after being covered by some black-colored sheathing, on August 2, 2018:

What’s my point? Actually, I have a few that immediately come to mind, so bear with me.

First, do you suppose United States Gypsum Company views the lime green color of its gypsum panels to be a trademark? Apparently there are no look-for statements on the product itself:

In looking for look-for ads that might draw attention to this particular shade of green as a brand, Green Means Go (scroll down after linking), is the closest I’ve found.

Let’s just say, USG has been far more effective in owning the color red as a band or stripe applied to packaging for plaster products, and the supporting look-for-like TOP RED word mark.

Still, it’s difficult to tell what USG thinks from the general legend used in its online brochures:

“The trademarks USG, FIRECODE, SECUROCK, IT’S YOUR WORLD. BUILD IT., the USG logo, the design elements and colors, and related marks are trademarks of USG Corporation or its affiliates.”

It’s even harder to tell, despite the “colors” mentioned in the legend above, after searching the USPTO, since USG allowed its Supplemental Registration — for what I’m calling the “lime green sheathing” — to expire without first obtaining, or at least, filing for Principal Registration.

The Supplemental Registration described the mark as “the color yellow green (Pantone 375) as applied to the goods.” Namely, “non-metal water-resistant boards and panels for construction.”

Why let it go?

I’m sure the color green is considered difficult to protect for sustainable building materials, but this color mark was narrowed down to the particular Pantone shade. Perhaps the shade changed?

Typically, a Supplemental Registration is considered valuable to a brand owner, while it works to build the evidence necessary to establish acquired distinctiveness for Principal Registration.

In addition, the Supplemental Registration for Pantone 375 was some indication that the USPTO did not view that shade of green as being functional even for sustainable building materials.

We’ll keep watching to see if Principal Registration is pursued.

In the meantime, let us know if you discover any better look-for advertising for USG’s SECUROCK gypsum panel sheathing. Loyal readers know how important look-for ads are for trademark colors.

Last, the now-you-see-them-now-you-don’t green gypsum panels remind me of the lavender color registration I convinced the USPTO to issue for spray in place insulation in 1994, oh the memories!

Last week, I enjoyed the privilege of returning to Iowa City (where it all began) for Executive Leadership Board Meetings at the University of Iowa College of Pharmacy. Great meetings there!

During a stroll through downtown, I was reminded of Deadwood, a legendary Iowa City tavern, so I snapped a few photos, having long forgotten the creative tagline — Institute of Higher Learning:

Deadwood has special meaning in the trademark world. A federally-registered mark no longer in use and legally abandoned, is considered deadwood, making it ripe for and subject to cancellation.

We’ve written before — here and here — about the challenges of trademark deadwood that face brand owners, and we’ve also highlighted the USPTO’s proposed help on the way, here and here.

Yet, until there is perfect alignment between every federal registration and corresponding actual use, the problem of deadwood will remain, even if it is less frequently seen by brand owners.

What we haven’t discussed much before is how to guage whether a registration is deadwood. The most common approach is to have a routine, professional, factual investigation conducted.

Turns out though, even reputable, professional investigations that reasonably seem to point to non-use and abandonment are not perfect, nor are they a guarantee of all the relevant facts.

For example, years ago, we received a petition to cancel our client’s federal trademark registration on abandonment grounds. Petitioner’s counsel was overly-confident in the assertion of non-use.

The investigation even noted that the mark no longer appeared on our client’s product packaging and labeling. Sadly for the Petitioner though, the mark was still in use on point of sale materials.

As a result, the matter resolved very differently than expected for Petitioner. Our client ended up selling the registered mark and receiving a royalty free license back to continue using the mark.

Back to the Deadwood mark shown above, technically it is not deadwood at all, first, because it is not federally-registered, and second, it is very much in use, posing a very different kind of issue.

Undoubtedly there are unregistered rights in the Deadwood mark, and the owner could come out of the woodwork to oppose or cancel another’s registration even up to five years after issuance.

Given the uncertainty of when and if the owner of an earlier unregistered mark wakes up to the importance of federal registration, it is pretty risky to ignore these kinds of uses during clearance.

Finally, given the uncertain and imperfect nature of trademark investigations, it’s best to think ahead and have some alternative leverage in mind before chopping at wood assuming its dead.

I’m not talking about those kinds of four letter words (by the way, we’re still awaiting the Brunetti decision to learn their fate), so today I’m talking about this wholesome kind:

Inquiring minds may wonder (and interested alumni) how the University of Iowa might go about owning federally-registered rights in the word IOWA to convert that ™ symbol to an ® symbol?

The easiest place to start would be to claim the word has acquired distinctiveness for the typical clothing offerings of a Big Ten University athletic program in combination with the distinctive color combination, gold on black:

 

 

And, black on gold:

But, what about the word only, without being limited by font or the distinctive color combination?

No problem. Judging from another four letter truncation of a University name, it’s doable with a showing of acquired distinctiveness too.

And some may be surprised to know this remains true, even when the truncation constitutes the complete name of a State.

Go ahead and ask Indiana, Michigan, Illinois, Wisconsin, and Nebraska, to name just a few.

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it all started for me in the law, to share some thoughts on this topic with the Iowa Intellectual Property Law Society on Friday September 15, here are the details to attend.

In the meantime, here is my second installment on the important topic of Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II.

I’ll call it part of a continued, controlled Tam catharsis, with more food for thought and discussion of where the law is heading, especially with forthcoming Part III, exploring the implications of the Supreme Court’s Tam decision, especially the future of federal trademark dilution law.

As you may recall, Part I questioned the Supreme Court’s characterization of Section 2(a) as banning speech and the Court’s conflation of the federal government’s issuance of a trademark registration (and corresponding meaning of the resulting Certificate of Registration, issued in the name of “The United States of America,” and corresponding meaning of the federal registration symbol — ® — which cannot be used lawfully unless granted federal registration unlike © and ™) with the meaning of the underlying trademark subject matter sought to be registered.

As it turns out, the learned Professor Christine Haight Farley of American University Washington College of Law similarly recognized: “A broader critique is that the [Tam] court seems often to be speaking of trademarks when the issue before it is limited to the registration of trademarks.”

With Part II, while admittedly not having all the answers, I thought it might be productive to ask some probing questions about the Court’s decision to provoke further discussion and guidance:

  • Why didn’t the Tam Court acknowledge that the normal and historical operation of trademark law actually facilitates the complete suppression of certain speech, perhaps justifying special treatment and a unique approach from its typical First Amendment and Free Speech cases?
  • Why didn’t the Tam Court acknowledge the material difference in kind struck by Congress between denying registration on the one hand and enjoining and/or punishing trademark use on the other hand, as only the latter truly qualifies as a ban on speech?
  • Why didn’t the Tam Court acknowledge that our entire federal trademark law flows from the U.S. Constitution too? In particular, the Commerce Clause (Article I, Section 8, Clause 3), granting Congress the power: “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.”
  • Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?
  • Did the Tam Court gloss over the language in Walker v. Texas Division, Sons of Confederate Veterans, Inc., noting “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas”?
  • Why did the Tam Court not feel compelled to explain how and why the government actions of approving or disapproving marks for registration somehow does not take the form of speech?
  • Was it disingenuous for the Tam Court to say “trademarks are private, not government speech,” when it was apparently unwilling to specifically and directly say that the government’s act of registering a trademark, issuing a Certificate of Registration (in “the name of the United State of America”), and placing a trademark on the Principal Register, is not government speech?
  • Isn’t the proper comparison in Walker and Tam, the state government’s direct control over specialty license plates and the federal government’s direct control over Certificates of Registration and the Principal Register, so isn’t it a red herring to emphasize that the federal government doesn’t “dream up” the applied-for marks, since Texas didn’t “dream up” the multitude of specialty license plate designs either?
  • Doesn’t the federal government, through the USPTO, edit, modify, and amend applied-for marks (through required disclaimers, description of goods/services changes, description of the mark changes, and drawing changes, etc.), at times, to place them in proper condition for approval, making the Tam Court’s attempt at distinguishing Walker v. Texas less compelling?
  • Why was the Tam Court more willing to limit Walker v. Texas to its facts than upholding the disparagement bar in Tam as facially constitutional, and then limiting Tam to its facts, in the unlikely event the hypothetical concern of Congress attempting to amend the Copyright Act to refuse similar matter ever would arise in the future?
  • In other words, why was the Tam Court so willing to embrace the hypothetical concerns of the false Copyright comparison with a multitude of ways to fairly distinguish from trademark?
  • As to the concern of chilling speech by denying federal registration, isn’t it telling that during the entire more than 100 year history of federal registration in the U.S., only some 5 million federal registrations have issued, which most certainly is a drop in the bucket to the number of eligible unregistered marks in use throughout the same period of time?
  • The Tam Court relied, in part, upon a perceived “haphazard record of enforcement” of the disparagement bar, how difficult would it be to develop evidence showing a similar “haphazard record” in applying other statutory bars found in federal trademark law?
  • How can the Tam Court actually resist saying that trademarks are a form of commercial speech, when it previously held in Friedman v. Rogers that the use of trade names “is a form of commercial speech”?
  • Why didn’t the Tam Court ever once mention “public policy” or the “unconstitutional conditions” doctrine in its decision?
  • Did the Tam Court focus its sights on “viewpoint” as a way to avoid implicating too many other content based restrictions in the Lanham Act as becoming vulnerable to First Amendment challenges?

Stay tuned for Part III, as the Tam Court’s focus on “viewpoint” is the likely key to unlocking what additional portions of federal trademark law are vulnerable to future First Amendment challenges.

It sure feels like fall already. Apart from the fifty degree walk with my dog this morning, we’re now entering the second week of college football. Regular readers might have noticed that our blog has a couple of Iowa Hawkeye fans among the writers (Exhibits 1, 2, and 3). This week Iowa takes on their in-state rival, the Iowa State Cyclones. Without a professional sports team in Iowa, the college teams are the big draws throughout the state. While the rest of the country probably couldn’t care less, the game is a pretty big deal to native Iowans. For that reason, the rivalry creates some strong (and often pointless) arguments. The most recent argument involves two competing slogans around the state’s ties to agriculture that, at least according to some fans, borders on trademark infringement.

Although I’m sure you came here for an Iowa history lesson, I’ll keep the background brief. Beginning in the late 1970s running into the mid-1980s, farmers began suffering significant economic problems. Oil prices and interest rates rose while export volume and prices for farm commodities fell. Farmers’ debt rose, with significant numbers of foreclosures. It was against this backdrop that Hayden Fry, then head coach of the Iowa Hawkeye football team created the slogan “America Needs Farmers” or ANF for short. The ANF logo was placed on the Hawkeye helmets (image below):

 

More than thirty years later, the logo still appears on Hawkeye helmets, as well as in pretty impressive card stunts on select game days:

 

Like all “awareness” promotions, the ANF program has its detractors. The program is run in partnership with the Iowa Farm Bureau, which assists in the sale of a wide variety of merchandise. A portion of all the proceeds goes to Iowa’s food banks.

Some Iowa State Cyclone fans feel that the awareness and food bank donations are insufficient support for farmers. As one of the world’s top agricultural schools, the fans felt that Iowa State does a lot more to help farmers than the University of Iowa. A few years ago this led to one fan site to create the phrase “Actually Helping Farmers,” or AHF. It seemed that not much came from the phrase, until earlier this summer when second-year head coach Matt Campbell latched onto the #AHF acronym in a tweet, raising the ire of an Iowa Hawkeye fan site. Even making the Des Moines television broadcast.

Some fans have suggested that the dispute may cross the line into trademark infringement. I’ll set aside the importance of deciding which school helps farmers more (spoiler: there is nothing important about doing that), but I couldn’t not leap at a chance to spend my blog post writing about trademarks and my alma matter.

While there are only so many letters in the alphabet (26, to be exact), acronym marks are still subject to trademark protection. So does the University of Iowa have a case? It isn’t clear what exactly Iowa State is using the AHF acronym for, if anything. The coach’s inclusion of AHF as a hashtag in a tweet is unlikely to be actionable. The acronym seems to have been used for primarily for merchandise like t-shirts. For our sake, let’s assume Iowa State were to begin using AHF in the same way: a sticker on its helmets, widespread merchandising on everything from tree ornaments to window blinds. Would that create a problem, are the acronyms sufficiently similar?

Acronym marks are not given the same level of protection is non-acronym, inherently distinctive terms. However a party can assert an acronym mark against a third-party for use of similar acronym, even if a letter is different (they can even win, too!). For example, courts have found that VDS was confusingly similar to VCDS, both for video duplication services; CSC was found confusingly similar to CCC, both for electric wiring components; and I.A.I. was found confusingly similar to ISI, both for printed publications in similar scientific fields. As one court reasoned, ” it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, or phrases, and that the difficulty of remembering such multiple-letter marks makes the likelihood of confusion between such marks, when similar, more probable.” Dere v. Inst. for Sci. Info., Inc., 420 F.2d 1068 (CCPA 1970).

As a result, the fact that ANF and AHF have different middle letters does not mean that there is no likelihood of confusion. The marks could, in fact, be confusingly similar depending upon the overall context in which they appear. But a lawsuit seems unlikely, as neither school likely wants to get dragged into a dispute over helping farmers. It’s not the best public relations event. Plus, we haven’t even touched on the possibility that Iowa State might prevail on an argument that the use of AHF is a parody. Although I haven’t considered the legal support for a parody claim, Iowa State has some experience in parody, having pretended to be a real football team for the last three decades.

Yet when the fourth quarter hits zero, I’d expect this debate to die down – until September 2018, that is.

Go Hawks!

 

Brand owners and managers may wonder, is a trademark license required when another’s unregistered color scheme is used? Depending on the facts, it may very well be.

About four years ago brand owners scored a major victory in LSU v. Smack Apparel, when the Fifth Circuit Court of Appeals agreed to the existence and successful enforcement of non-traditional and unregistered trademark rights in color schemes when combined with “other identifying indicia” (indirect references to the brand owner — in this case, Louisiana State University), prohibiting the sale of t-shirts like this (absent a license from the brand owner), pursuant to Section 43(a) of the Lanham Act:

Smack Apparel’s arguments in defense of its unlicensed status and against the lower court’s “likelihood of confusion” determination were not successful:

“We hold that given the record in this case and the digits of confusion analysis discussed above-including the overwhelming similarity between the defendant’s t-shirts and the Universities’ licensed products, and the defendant’s admitted intent to create an association with the plaintiffs and to influence consumers in calling the plaintiffs to mind-that the inescapable conclusion is that many consumers would likely be confused and believe that Smack’s t-shirts were sponsored or endorsed by the Universities. The Universities exercise stringent control over the use of their marks on apparel through their licensing program. It is also undisputed that the Universities annually sell millions of dollars worth of licensed apparel. We further recognize the public’s indisputable desire to associate with college sports teams by wearing team-related apparel. We are not persuaded that simply because some consumers might not care whether Smack’s shirts are officially licensed the likelihood of confusion is negated. Whether or not a consumer cares about official sponsorship is a different question from whether that consumer would likely believe the product is officially sponsored. For the foregoing reasons, we conclude that a likelihood of confusion connecting the presence of the Universities’ marks and the Universities’ themselves was demonstrated in this case.”

The decision was not without criticism from academics and others concerned about what they may consider to be an unwarranted proliferation of trademark rights that may stifle free speech and competition in the marketplace. So, what ever happened to Smack Apparel, you might ask?

A recent trip to the legendary Iowa Book & Supply Store (more recently truncated to Iowa Book), revealed to me that despite its loss at the Fifth Circuit Court of Appeals, Smack Apparel is still very much in business, and remains quite proud of its unlicensed status — representing itself as being “licensed ONLY by the first amendment” — in selling college rivalry t-shirts like these now:

Apparently Smack Apparel is operating under the belief that these t-shirts contain no “other identifying indicia” — unlike the enjoined purple and gold t-shirts having more than simply the colors to identify LSU — since the only statements on these rivalry t-shirts are anti-Nebraska Cornhusker for the black and gold (colors for the University of Iowa) or anti-Iowa for the red and white (colors for University of Nebraska). Incidentally, this same style of t-shirt appears available for just about any college team you might follow.

The Smack Apparel website displays this warning when you’re considering an online order: “This shirt is not licensed or endorsed by any institution or organization.  Its sole purpose is to enable the individual wearing it to express the message contained on it.”

Part of the Smack Apparel story claims this about its unlicensed status: “It is not that we are averse to being licensed; we are just averse to the CREATIVE RESTRICTION that would come along with being licensed.  If we couldn’t do “CHOKE…The Official Drink of Michigan Football” or “C.U.B.S…Completely Useless By September” it just wouldn’t be any fun (Sorry Michigan and Cubs fans)!”

Putting aside the question of whether Smack Apparel hears from The Most Interesting Man in the World, it will be interesting to see whether the Universities take another shot at Smack Apparel.

If so, perhaps Indiana University should be the lead plaintiff, given the “other identifying indicia” present on this currently available example:

What do you think, has Smack Apparel successfully evolved its business model to avoid further trademark infringement problems or is it likely to get the smack down again?

Finally, while we’re on the subject of collegiate color trade dress, remember this blast from the past? “Sit Down Michigan State,” A Collegiate Trade Dress Tale

Mark Image

To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:

Continue Reading Surface Level Branding Runs Deep on This Athletic Field