I’m counting down the minutes to leaving my office later today to begin my favorite weekend of the year – the first weekend of the NCAA Tournament!  Even though my bubble was bursted on Selection Sunday – my team didn’t make it this year – I am always thrilled by the drama of tourney time and watching unpaid athletes play their hearts out hoping to bask in their one shining moment.  Incidentally, not a single team from Wisconsin made the tournament?  When was the last time that ever happened?  To take that even a step further, when was the last time not a single team from Minnesota, Iowa, or Wisconsin was in the tournament?  That must be a rarity.

There have always been a number of trademark issues surrounding the tournament – whether it’s a team’s name or mascot, the rights of a student-athlete, or using NCAA marks in any advertisement.

I’ll just get this well-worn recommendation out of the way – MARCH MADNESS, unless you’re a paid sponsor of the NCAA, don’t use it.  Not on an ad.  Not on a beer-themed bracket, like this one from last year (and I didn’t find one yet for this year on the site).  Not even as MARKDOWN MADNESS for something as seemingly unrelated to basketball tournaments as automobile dealership services or MUNCH MADNESS for providing information about restaurants; restaurant reviews; and an online tournament allowing people to rank restaurants.  (Psst…the NCAA even owns the mark MUNCH MADNESS, after it was transferred from a NY Times entity).

Unless you’re an official NCAA bracket game, you may even want to avoid using the word BRACKET in advertisements during this time.  Yes, the NCAA recently challenged a filing for DON’T LET ONE TEAM BUST YOUR BRACKET only on the basis of their alleged continuous use of “images of brackets, and marks consisting of or referring to the term BRACKET, in commerce in connection with entertainment services, and related promotional and sponsorship services.”  After two years, the applicant withdrew the application.

Since the NCAA purchased the trademark registrations, and associated rights, to MARCH MADNESS in 2010 (yes, can you believe DuetsBlog has been around longer than that?) purportedly for about $17 million, the NCAA has taken legal action against more than a dozen other marks, like MARCH WAGNESS, and likely many others through demand letters and discussions.

Aside from not using the NCAA’s marks and purchasing rights to protect your marks, there are a couple other important trademark considerations that the NCAA tourney tips off:

Meddle with unitary marks with caution (and preferably not at all). Despite all they hoopla (haha) about MARCH MADNESS, the NCAA filed an application for MARCH TO THE MADNESS, inserting two small but critical words into the well-known MARCH MADNESS mark.  It’s a clever play on the mark, but in some circumstances could ultimately could serve to weaken the strength of MARCH MADNESS.

– Employment contracts can impact trademark rights.  A CBS Sports reporter and online columnist filed an application for THIS IS MARCH. for apparel.  Employment agreements – as well as legal precedence with respect to the employee-employer relationship – often deem any intellectual property related to the employee’s work for the employer as being owned by the employer.  Given the discussion about paying student athletes (and the scandal surrounding payments or favors surreptitiously made to court high school players), could players potentially be “employees” thereby creating questions of ownership of player-related trademarks like Anthony Davis’ UNI-BROW?

Enjoy the games this week – the best week of the year!

 

Tis’ the season for football, not just on the gridiron, but also at the U.S. Patent and Trademark Office. Shortly after the “Minneapolis Miracle,” as we reported this week, the Minnesota Vikings applied for registered marks on the phrase. And with the “big game” approaching, teams have titles on the mind–even those that aren’t in contention (ahem, Green Bay Packers).

Just one week ago, the Green Bay Packers initiated an opposition proceeding with the Trademark Trial and Appeal Board (the “TTAB”) against McClatchy U.S.A., a publishing company associated with the Fort Worth Star-Telegram. The dispute stems from the Star-Telegram‘s use of “Titletown, TX” as the title of a 20-short-video documentary series chronicling “the story of the 2016 Aledo [TX high school] Bearcats and their quest for a sixth state [football] title in eight years.”

Courtesy: PBS

The Packers have owned registered competing marks, such as “Titletown U.S.A.,” “Titletown,” and “Titletown Towel” since as early as 1993 (though, the Packers assert they have “made widespread and continuous use” of the marks since the 1960s). The Packers appear to have only begun policing the Titletown name at the TTAB since the start of this decade, however, filing five oppositions against related marks, such as “Title Town Talk Show” and “Titletown Brewing Co.”

The Titletown mark has acquired additional meaning and value to the Packers since the organization opened a development district by the same name outside Lambeau Field last year. The Packers invested almost $65M to complete the first phase of the district by this fall. The Titletown District includes a hotel, sports medicine clinic, ice skating rink, restaurant, and artificial tubing hill. And this summer, it got its own logo:

Courtesy: Twitter

The Packers allege that the “Titletown, TX” mark and use in the Texas video documentary series creates a likelihood of confusion and dilutes the “Titletown” and related marks. Why? Because the Star-Telegram uses the mark in connection with football. And that conflicts with the general public’s wide recognition of the mark “as being associated with a single source, and further recognizing the single source as [the Packers].” And the Packers allege that the Titletown name is distinctive with regard to entertainment, video, news, and commentary related to football such that it has acquired secondary meaning. Not only that, but the Packers consider the mark “famous and exclusively associated with [the Packers] in the mind of the consuming public.”

Setting aside the high likelihood that several fanbases and regions across the United States would likely dispute the Packers’ allegations as to fame and widespread recognition and acceptance, the primary questions before the TTAB are whether the use of the “Titletown, TX” mark in the short-video series is likely to cause confusion, mistake, and/or deception as to the source or origin of goods and services. And, further, whether use of the mark is likely to dilute the distinct quality of the Packers’ marks.

Generally, the strength of a mark depends on whether it is arbitrary or fanciful, suggestive, or descriptive. Because the Packers argue distinctiveness and secondary meaning, the organization appears to contend that the mark is descriptive (the lowest strength outside of generic), implying that the Packers are title winners. And historically, this is true; the Packers have been league champions a record 13 times (9 more than the nearest rival team, the Chicago Bears). And the Packers have won three consecutive NFL titles twice. Interestingly, though, the Aledo Bearcats have also won three consecutive state titles twice. This could set up a descriptive fair use defense for Star-Telegram.

When it comes to likelihood of confusion, the primary factors include: 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 Packers might have a case, but not a very strong one. Star-Telegram‘s use may be related to how the Packers use the Titletown mark in some contexts. But the Packers use the Titletown mark in multiple ways, only one of which relates to reporting about football. Indeed, the Packers are beginning to use the mark more in connection with the new Titletown District. Star-Telegram‘s use is in a very different market: Texas vs. primarily Wisconsin. The use relates to different football leagues: high school vs. the NFL. And the marketing channels are different: online newspaper vs. broadcasts. Ultimately, it seems unlikely that a typical consumer would confuse the two uses: think cheeseheads vs. longhorns.

When it comes to dilution, the primary inquiry is whether the use of a mark is likely to impair the mark’s distinctiveness or harm the reputation of the famous mark. The Packers allege that “[a] recent survey concluded the term TITLETOWN is known to virtually the entire population of consumers surveyed and a substantial majority of those who are aware of the term TITLETOWN, associate it specifically with the Green Bay Packers.” This may demonstrate distinctiveness. On the other hand, it is difficult to see how a short-video series on successful high school football teams in Texas would harm the Titletown mark’s distinctiveness as to the Packers and professional football or harm the reputation of the mark.

McClatchy has until February 26, 2017 to answer the Packers’s opposition. By then, there will be a new reigning NFL titleholder, much to the envy of the allegedly-undisputed Titletown team. But even more to the Packers’s envy, the new titletown (or place of the title game) will technically be Minneapolis.

Here’s hoping your 2016 brackets did better than mine last week, but this has been quite a crazy and exciting tournament thus far.  As a Marquette fan, the IndianaNotre DameWisconsin area of the bracket has been quite disheartening.  And the buzzer beaters galore this tournament have left many faces looking somewhat like Indiana coach (and former Marquette coach) Tom Crean’s from a few years ago:

tomcreanimage

We’ve had a number of postings on here regarding March Madness (at least here, here, and here) and particularly the NCAA’s prolific enforcement of its MARCH MADNESS marks (see at least here).

Much to my surprise the other day, I encountered the following allowed trademark application for MARCH CRAFTNESS for use in connection with “providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of brewing beer.”  The applicant merely needs to put in a Statement of Use, and a certificate of registration will issue.  Surprisingly given the NCAA’s history on the mark, there was no opposition by the NCAA.

Beer and the NCAA don’t publicly mix for the tournament (well, except when viewing the games at the bar with your buddies).  The NCAA’s alcohol policy bans sale of beer during the tournament at venues and encourages sales to be banned near campus throughout the regular season.  They even cover up beer advertisements in the arena during the tournament in venues that often do not host regular season games.  It would be interesting to see how the Applicant for MARCH CRAFTNESS uses it in a way that dispels any likelihood of consumer confusion or dilution of the MARCH MADNESS mark.

But there are other registered marks or allowed marks at least as similar to MARCH MADNESS as MARCH CRAFTNESS, including MARCH RADNESS for skiing and snowboarding services.  There is also a registration formerly owned by Heifer International and transferred to the NCAA for MARCH MATCHNESS for charitable fundraising services.  Might the NCAA adjust their alcohol policy and decide to participate in the craft beer craze with MARCH CRAFTNESS?  Even if they purchased the mark from the applicant, the NCAA would still have to use it in order to retain rights in it.

Incidentally, there is already sort of a “Big Dance” of beer on the Washington Post called BEER MADNESS so I am curious to see how the applicant for MARCH CRAFTNESS ultimately uses the mark.   Unlike the tournament, really good beers from Northern Iowa, Wisconsin, Iowa, Green Bay, and other parts of the Upper Midwest where teams didn’t make the tournament (e.g. Minnesota), seemed conspicuously absent from the Beer Madness bracket.  Upon review of the bracket, my face probably looked a little like Tom Crean’s above.  I hope that’s not a sign that “Fly Over Country” is “Drink Over Country” because breweries in this region routinely win top awards at major beer festivals.  What would be in your March Madness Final Four of beer?

 

-Wes Anderson, Attorney

As Kentucky prepares to square off with Wisconsin in the NCAA Final Four and move one step closer to an undefeated, 40-win season, the University of Kentucky has been dueling with one of its own – a fan and attorney claiming he has already secured trademark rights to “40-0.” But can such a term even function as a trademark, or is it just information?

40and0

As ESPN reports, a Louisville-based lawyer named David Son is the owner of www.40and0.com, which sells blue-and-white t-shirts and apparel bearing the term “40-0.”  That term just happens to coincide with what Kentucky’s record will be if it wins the national championship next Monday. Son received a cease-and-desist letter from the University of Kentucky asking it to cease all sales on the site.

Nevertheless, Son believes he has the upper hand on Kentucky —  a pending trademark application for “40-0,” filed in February 2015. He also claims that his use of the mark dates back to 2013. Son registered the entity “40-0 LLC” on October 25, 2013, having registered the 40and0.com domain name three days earlier. (Interestingly enough, according to Son’s LinkedIn page, Son is a Kentucky fan but also a law graduate of the University of Louisville, the undisputed arch rival of Big Blue Nation.)

The crux of Kentucky’s complaint is likely not just Son’s use of the “40-0” mark but the entire premise of his site, which seeks to capitalize on Kentucky’s bid for perfection. The site may suggest a sponsorship or affiliation with the University of Kentucky based upon the colors of the bulk of apparel featured on the site (blue and white) and the clear association between “40-0” and the Wildcats’ run to an undefeated season.

To Son’s credit, he has taken a few steps to attempt to establish a unique identify for the mark.  The site now states that apparel bearing “40-0” in a colors aside from blue-and-white is “coming soon,” and includes the disclaimer “Not affiliated with any university or any professional organization.”  But an archived version of Son’s site from 2014 reveals a long meditation on the highs and lows of Kentucky fandom, suggesting his original intent was to sell apparel exclusively for Kentucky fans. And even the more generic “Who We Are” page that currently appears closely associates the term “40-0” with basketball:

Going undefeated and winning a championship is the ultimate goal of a team and its fan base.  “40-0” might as well read ”WE BELIEVE IN PERFECTION”.  It is the Holy Grail.  It is the Fountain of youth.  It is an expression of unwavering belief, even in the face of ridicule, that perfection can be attained.

Son’s lawyer told ESPN that Son “took all the steps he needed to take to establish ownership of 40-0,” and that “[t]here’s no evidence that the University of Kentucky owns any rights to 40-0.”

Unfortunately for Son, he may not own any rights either. The question left out of the ESPN’s article is whether anyone can obtain rights to what amounts to a win/loss record. The U.S. Patent and Trademark Office does not permit registration of “merely informational” slogans or terms.  According to the PTO, “the critical inquiry in determining whether a slogan or term functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public.”

In other words, if the public believes a term merely conveys information or conveys support for something, it is not a source-indicating trademark and cannot be registered, nor can a user obtain exclusive rights to the term.  As this blog has previously noted, no one can obtain rights to the term “MADE IN USA,” for example.

Son’s trademark application for “40-0” won’t be examined for at least another month, but it appears that Son’s chances of obtaining a registration certificate are not nearly as promising as the Wildcats’ prospects for an unblemished season.

Following a nice evening out chatting with Kevin O’Keefe, it’s time for my favorite weekend of all – the NCAA tournament.

Now this post isn’t necessarily about basketball, but rather rivalries. In particular, rivalries between the state of Michigan and the state of North Carolina. Michigan v Duke, Michigan State v. North Carolina…there’s plenty of rivalry there.

Within the last week, Michigan-based brewery Bell’s Brewery, which brews one of my favorite transported ales – the Bell’s Two Hearted Ale, has challenged the name of North Carolina-based brewery Innovation Brewing, which brews about 500 barrels a year.

Anything striking a chord for trademark issues yet?  Any idea why Bell’s might be challenging a company like Innovation Brewing?

Well because, unbeknownst to me likely because I have only ever purchased Bell’s off of a tap menu, apparently Bell’s has an unregistered tagline “bottling innovation since 1985” – a tagline that I couldn’t find use of in a very cursory search of its websites and labels.

Bell’s has faced some considerable consumer scrutiny over this challenge, even being labeled a trademark “bully.”  North Carolina loyalists are pretty upset that Michigan-based Bell’s would challenge this.

What do you think?  Is it madness? Do you have any innovative strategies to combat this issue?

No opinion on this?  Well, who do you have winning it all for the NCAA basketball tournament?

 

 

 

Brent Carlson-Lee 

Like a growing number of consumers, I pay attention to where my food comes from. For most products, quality and price still rule but food miles can break a tie.

But when I’m searching for specialty products, authenticity plays a big role. And country of origin is a key attribute, so much so that the European Union has jumped into the fray.

Do I trust Spanish wine? Of course. Do I trust Norwegian lefse? Yep. Do I trust Italian pepperoni? Sure do…but where exactly is THIS pepperoni from?

Let’s break it down.

The packaging is reminiscent of the Italian flag, but Jefferson is a decidedly un-Italian name. Must not be Italian.

And that outline looks a lot more like Wisconsin than the Italian “boot.” Maybe it’s from Wisconsin? It does say “Wisconsin Quality.” Must be made in Wisconsin.

But wait a minute, just below “Wisconsin Quality” it states “Made in Kansas.”

So apparently this is Italian-inspired, Wisconsin-quality pepperoni made in Kansas…by a company with a mailing address in Arkansas.

I’ll pass.

– Derek Allen, Attorney –

It’s the end of February, which by my calculations means its almost the beginning of March, which means OH YES FINALLY MARCH MADNESS ASDFNLEKLDFNDF!!!!!!!!!!!!!   (Apologies, I just get a little excited thinking about it.)  This is without a doubt my favorite sporting event of the year.  Once you include the conference tournaments where each of the winners get a bid to the Big Dance, starting next week every team in college basketball has the opportunity to win the national title if they can string together enough wins.  Time to get hot Grambling State!

Excitement is building here in the Twin Cities as the Gophers knocked off #1 Indiana last night, all but assuring its spot in the tournament.  Excitement is building here in my office as the Wisconsin Badgers moved to within a game of first place in the Big Ten with a team that looks a lot like the Winthrop & Weinstine rec league team.

While the tournament itself is widely regarding as the most exciting in American sports (I’ll hedge so I don’t offend the rest of the world and the World Cup, although I prefer the Euros myself), anyone who has attended the first weekend’s games knows the atmosphere in the arenas is often lacking.  A combination of teams travelling hundreds and thousands of miles from campus for opening round games, the small fan base of many lower seeded teams, and the cavernous arenas that play host to many of the games all combine for lackluster crowds.  The notable exceptions are, of course, North Carolina and Duke who somehow always get their opening round games scheduled about 10 minutes from campus.  The lack of atmosphere at non-Tobacco Road games is especially unfortunate when regular season college basketball games probably feature the most boisterous crowds in American sports (again, hedging for those abroad because I’ve never been hit with a bag of urine at a college basketball game and bonfires in the crowd are usually absent).

My partial solution is to stop scheduling these games at large, NBA (and in some cases, NFL) stadiums.  For example, when the tournament is here in Minneapolis, the opening round games have been held in the Metrodome.  The stadium gets filled to 20% of capacity and the atmosphere is terrible.  Meanwhile, the Barn is perhaps my favorite arena in the Big Ten and sits idle about two miles away.  NCAA, schedule the games at the Barn!  Not to leave my home state out, opening round games should be played at the Kohl Center (or better yet, the Field House), not the Bradley Center where they usually occur.

For those interested (I’m looking at you NCAA!), my 16 suggestions, which would host the opening games ever year, are below the jump:

Continue Reading Tweaking March Madness

 

Last month I came across this enormous, larger than life, banner advertisement hanging from the exterior of a casino on our way to the backwoods of Wisconsin.

Of course, this promotional piece took me back to my early childhood and called to mind my long lost enormous collection of Matchbox brand Hot Wheels toy cars and racetrack, but it appears there is no connection with the miniature toy vehicle maker — the winning prize was not a toy replica, but a genuine 2011 Ford Mustang.

Continue Reading “Hot Wheels” Casino Promotion: Apparently Not a Toy Story

Snapping a photo with a great trademark story is hard for me to resist. Thankfully my family is growing more and more patient with my brand-related photographic diversions and even they were amused with what we found on the way home from a camping trip this weekend.

Until the tree shown in the above photo hit its taproot, this local pharmacy in Spooner, Wisconsin, was probably best known by its full name "Red Cross Pharmacy," but now it appears nature has truncated the name more simply to Red Cross.

Given how vigorously the American Red Cross protects its name and symbol, I was more than a bit surprised to find a Red Cross Pharmacy, much less a Red Cross, in the backwoods of Wisconsin.

Moreover, there appears to be another Red Cross Pharmacy in Forest City, Pennsylvania, and an entire (and growing) Red Cross Pharmacy chain operating in a number of towns across Missouri. According to the Missouri chain, since their roots predate the 1905 Trademark Act, their use has been "grandfathered" by Congress as a lawful name, and is "one of about twenty organizations world-wide that have been granted lawful use of the Red Cross name and emblem since we were established prior to January 5, 1905."

Does that mean their fortunately timed lineage permits them to "go public," and then proceed to go "coast to coast" with the name Red Cross Pharmacy, simply because it all began with a single location prior to 1905? That would be a curious form of grandfathering that could easily have the exception swallow the rule. It doesn’t appear that the American Red Cross reads the law the same way, since they seem to believe grandfathering only blesses what was in place at the time when the grandfathering occurred.

Back to the Red Cross Pharmacy located in Spooner, Wisconsin, apparently it began business in 1893 as Spooner Drug Company, with no indication of when it renamed and, quite frankly, traded-up to Red Cross Pharmacy, but presumably it did so prior to 1905.

Beyond the interesting question of the appropriate scope of grandfathering for the Red Cross Pharmacy name, here’s another less serious question for the day: If the American Red Cross can’t do anything about use of the name Red Cross Pharmacy in Spooner, Wisconsin, does it have the right to require the cutting down, the truncating of the trunk, or at least, the trimming of the tree, that currently truncates the Red Cross Pharmacy name to Red Cross?

We’re not talking about Phantom of the Opera, and we’re not talking about the kind of phantom trademark issue discussed by Sharon in her compelling What is Maker’s Mark’s Mark? post from April of this year. No, we’re talking today, on this day for celebration, and on this wonderful 4th of July, about a Phantom trademark and brand that apparently has been around for more than twenty years in connection with fireworks. 

Phantom, by the way, strikes me as a nice arbitrary trademark for fireworks, probably landing it on the inherently distinctive side of the Specter, I mean, Spectrum of Distinctiveness. With respect to scope of rights, note how it coexists on the federal trademark register in Int’l Class 13 with other identical third-party Phantom marks for airguns and center fire cartridges.

After seeing the above billboard advertisement, I’m left wondering, with my tongue in my cheek, whether there also could be a suggestive quality to the meaning of the mark? Why? One meaning of "phantom" is an appearance or illusion without material substance, as a dream image, mirage, or optical illusion. Here me out.

This billboard advertisement is currently located on I-94 E, just prior to approaching downtown Minneapolis, Minnesota, but there are no physical brick and mortar locations, nor any businesses of material substance, at least for Phantom Fireworks in Minnesota, given the elevated class of fireworks they sell. That’s right, you need to cross the St. Croix River and enter Wisconsin to find Phantom Fireworks, conveniently located in Roberts, Wisconsin.

Note how the billboard sign doesn’t tell you that you need to enter Wisconsin to buy fireworks at Phantom Fireworks, despite the advertising in Minneapolis — the sign simply refers to Exit 10 on I-94 E. I’m guessing there must be some Minnesota law in place that caused the cryptic reference to location, one that regulates the advertising in Minnesota of fireworks that are illegal in Minnesota.

One other thought and question for the day, which do you suppose is more valuable, the inherently distinctive Phantom trademark and brand, or the generic fireworks.com domain?

Have a great 4th of July!