Congratulations to Stanford University’s Women’s Volleyball Team, winning the NCAA DI National Championship this past weekend in Minneapolis’ Target Center, defeating Nebraska in Set 5:

The competition was incredible, a real seesaw battle, Stanford winning Set 1 (28-26), Nebraska Set 2 (25-22), Stanford Set 3 (25-16), Nebraska Set 4 (25-15), setting up the Set 5 tiebreaker.

Even from our elevated vantage point, it was a challenge to ignore Stanford’s wild band, erratic cheerleaders, and bizarre dancing tree, during the many breaks in the action.

The Stanford Tree, not in the University’s official logo and seal, instead the spastic and gyrating Tree mascot, is simply “a member of the band” — as the University has no “official” mascot.

 

As the Sets progressed, an interesting pattern emerged, but not related to the random, spontaneous, and irrreverent motions and defiant gestures of the merry band of cheerleaders and Tree mascot. Any choreography appeared impossible to script.

No, the pattern I noticed was that each of the first 4 Sets was won by the team that had its back to the band, in other words, turned 180 degrees away from the Stanford Tree.

 

 

In contrast, the losers through Set 4, always faced the Tree, in defeat, coincidence, I think not.

The teams switched sides at the close of each Set. During Set 5, with its back to the Tree, Stanford was up 8-7 at the half, then switched sides again to face the Tree, but somehow was able prevail, in the end, while facing the Tree, winning the 5th and final Set: 15-12.

So, with all this turning away from the Tree mascot, positioning the team to win a National Championship on the one hand, and disavowing the Tree mascot on the other hand, specifically rejecting it as not the University’s mascot, I’m left wondering, who owns it?

In other words, clearly there is intellectual property wrapped up in the Tree mascot costume, I’m seeing both trademark and copyright at work here, but really, who owns it?

Put yet another way, who should Reese’s call for a co-branding opportunity to have the Tree mascot appear on packaging for these little gems, or perhaps, the gems themselves?

Can the University automatically own the intellectual property in an “unofficial” mascot? What are the legal distinctions, if any, between official and unofficial mascots?

For what it’s worth, disavowing the Tree, and its unofficial status, apparently hasn’t prevented the University’s payment of NCAA fines against Stanford when the Tree is especially unruly.

At Stanford, it appears that the student selected by the band to perform as the Tree for the academic year, wears the costume created by his or her predecessor from the previous year.

As to copyright, do you suppose there is a work for hire arrangement in place? So, who would you call to license the IP associated with the Tree? Here is a list of the apparent creators.

Who comes to mind when I list the following character traits: lives in a dystopian metropolis, has a deceased parent, fights criminals, rides a motorcycle, has seemingly-superhero strength, is fearless, has dark hair, and–oh, by the way–his name is “Wayne.” More than that, you learn all these facts about Wayne by watching a trailer for a series about Wayne on YouTube, which informs you throughout that Wayne is a character “from the guys who wrote Deadpool,” a fictional superhero. Take a look for yourself:

It should probably come as no surprise that many people watching the trailer–myself included–thought this Wayne might be “Bruce Wayne,” the well-known secret identity of Batman. The comments to the official trailer demonstrate as much. Consider, for example, the “top comment” for the trailer:

The Bruce Wayne most consumers know is the wealthy orphan owner of Wayne Enterprises by day, crime-fighting superhero by night. YouTube’s Wayne shares many of the same traits (except, perhaps, the wealth), and one could certainly believe that the Wayne series might be an origin story for one of the most popular superheros of all time. Of course, by the end of the trailer, you get the impression that the Wayne you’re watching probably isn’t (though there’s no disclaimer):

In total there are over 7,200 comments for the trailer at the time of writing this post. Since the official trailer, YouTube has released additional teaser trailers for the series, each making it clearer that Wayne probably isn’t Batman. Yet, viewers still aren’t quite sure:

What I find interesting about these comments is that they are a readily-available (though perhaps unreliable) data set for proving, or disproving, the existence of customer confusion. Assume that DC Comics, the owner of the Batman mark and Bruce Wayne character (which does not appear to have been registered, but to which DC Comics could have common law rights and copyright protection) could sue YouTube for infringement or dilution. Arguably, the comments on the Wayne trailers show that consumers are drawing a connection between DC Comics and the Wayne series given the name, mood of the series, and common character traits with Batman. In this, YouTube may be free riding on Batman’s popularity. Depending on just how many comments reference Batman, the comments themselves could serve as strong quantitative data of confusion–akin to the kind of survey data usually used to prove that element of a trademark claim.

On the other hand, many of the comments for the series do not reference Batman or Bruce Wayne. Do non-references indicate a lack of confusion, or perhaps a confusion that is dispelled quickly after watching the trailers? This relates to the doctrine of “initial interest confusion,” which is temporary confusion dispelled before a sale or some other commercial harm, but still may be actionable because the party creating the confusion free rides on another’s mark to gain attention. Since widespread access to the Internet, initial interest confusion cases have increased tenfold, but courts disagree about the vitality of the rule. Regardless, that confusion appears to persist in this situation–as demonstrated by the comments for each new trailer–shows that the confusion here may be of the continuing and uncured variety on which many trademark claims are based.

Wayne fully releases on YouTube in January 2019. There do not appear to be any lawsuits pending at the moment. And there does not appear to be a “Wayne” trademark registration for the series. But if YouTube (or the series’ creators) file for one, DC Comics could oppose the registration–and has done so for similar marks in the past. We’ll keep you updated with any new developments! In the meantime, let us know what you think in a comment below.

Earlier this year I posted about a trademark dispute regarding the use of the term “Square Donuts” for square-shaped donuts. The case involved proceedings both in federal court and at the Trademark Trial and Appeal Board (TTAB), between the Square Donuts cafe in Indiana (which claimed decades of prior use and a trademark registration); and the Family Express convenience-store chain (which sold square-shaped donuts called “square donuts,” claiming the term is generic). As we discussed, the case raised the interesting question of whether the term Square Donuts is generic for cafe services that feature square-shaped donuts (which still look delicious by the way, see below).

Perhaps fortunately for the parties involved, but unfortunately for our curious readers, it appears there will never be a decision answering this question, as the case is headed to a settlement and dismissal. A docket entry on August 30, 2018 in the federal court proceeding states “Settlement Reached,” following a settlement conference between the parties.

However, the case has not yet been dismissed, as the parties have not yet finalized the settlement and dismissal documents. After the court recently granted a joint motion for extension of time, the deadline to file dismissal papers is by the end of this month. In the meantime, there do not appear to be any public updates or press releases yet, regarding the nature of the settlement, on the parties’ respective websites (here and here). However, I do note that the Family Express sub page, “Our Brands,” no longer features “Square Donuts” as one of their “our proprietary brands,” as it did at the time of my previous post in May.

Therefore, just a guess, but perhaps the parties have reached a licensing agreement, in which Square Donuts will maintain its registration and claim to trademark rights, and Family Express will have a license to continue using the Square Donuts name for its donuts. Alternatively, perhaps Family Express has agreed to entirely give up calling its donuts “Square Donuts.” Based on the deadline for dismissal at the end of this month, I’m sure there will be more significant news soon, regarding the nature of the settlement and any changes to the parties’ branding and websites. What do you think will happen — any predictions? Stay tuned for updates.

I was not caught up in the wizardry of Harry Potter until last April when I saw “Harry Potter the Cursed Child” on Broadway.

Now I understand the importance of wizardry and the Harry Potter brand.

The most recent battle for Warner Bros. Entertainment Inc. (“Warner Bros.”) is related to nine (9) applications it filed for the WIZARDING WORLD word mark and design mark for various goods and services.  Specifically, the company Wizard World, Inc. opposed the nine applications based on a likelihood of confusion with the company’s WIZARD WORLD® mark for “conducting entertainment exhibitions in the nature of conventions for enthusiasts of pop culture genres (e.g., games, toys, media, comic books)” in International Class 41.

Warner Bros. has already successfully obtained fifty-two (52) registrations for marks with “HARRY POTTER,” including eleven (11) registrations for THE WIZARDING WORLD OF HARRY POTTER® mark.  Warner Bros., or related entities, also own registrations related to other characters from the Harry Potter series including: five (5) registrations for marks with DUMBLEDORE and three (3) registrations for the HERMIONE GRANGER® mark.

Will Warner Bros. be able to register the WIZARDING WORLD mark along with its other Harry Potter related marks?

As I mentioned last week, Apple’s present iPhone Xs billboard advertising campaign is ubiquitous at the moment, especially this image, totally flooding the Minneapolis skyway system, and beyond:

Putting aside whether the unique lighting and reflective nature of the indoor billboards do justice to the art of the iPhone Xs ad, I’m also questioning whether the Xs repetition might be, excessive?

See what I mean? Above and especially below, with stretches of hundreds of feet — in the frozen tundra of our Minneapolis skyway,  nothing in sight, but the same, glaring and reflective Xs ad:

A few questions come to mind. Repetition in branding, yes it’s important, but are there no limits?

In other words, we know Apple can afford to dominate our skyway billboard space, but should it?

And, if so, with what? Apple’s user-generated content campaign was welcome, brilliant and unique.

But, what is the end goal of covering the Minneapolis skyway, with a train of identical Xs boxcars?

Isn’t the art of the ad lost when it is the only thing in front of you, or should I say Outfront of you?

A boring train of Xs boxcar ads builds no momentum to a destination, like Wall Drug ads on I-90.

Where is this train of repetitive ads supposed to take us, online to drive more holiday unit sales?

That seems doubtful, the ad doesn’t explain why one should replace an earlier version with the Xs.

Ironically, Apple’s current struggle is distancing itself from the stock market’s focus on unit sales.

Billboard advertising is said to be effective for brand awareness, but Apple hardly struggles there.

I’m not seeing the point of this ad, and repetition won’t solve the problem of a saturated market.

I’m just left feeling like I paid too much for my Xs, because Apple wasted too much on these ads.

If you’ve paid attention to any billboards in the Twin Cities over the last year or so, you’re probably wondering why I haven’t discussed this one yet, knowing my passion for billboard ads:

The Kris Lindahl billboard ads — especially this one —  are hard to ignore. They are almost as ubiquitous as a certain iPhone Xs ad. Plus, this one strikes a pretty distinctive wingspan pose.

Apparently there is an art or science behind poses for real estate agents, but as far as I can tell from a Google search, none appear to cry out “wingspan” like Kris’ does, so is the pose ownable?

Seems pretty clear from how his name is used as a mark on this billboard that Mr. Lindahl’s eponymous Lindahl Realty firm is on the way to registering his personal name as a service mark.

While it isn’t always a cake walk, in obtaining federally-registered service mark rights in a personal name, what I’d really like to see Mr. Lindahl attempt next is registration of his wingspan pose.

What would you rate his chances, putting aside whether you like the above billboard ad or not?

— Jessica Gutierrez Alm, Attorney

The Boy Scouts of America (BSA)’s decision last year to end its boys-only policy was met with mixed reactions.  Some lauded it as a progressive victory.  Others, including former Girl Scouts, viewed it as a thinly-veiled corporate strategy and a loss for girls.  As part of an early adopter program, more than 3,000 girls have already signed up to be BSA Cub Scouts.

To help solidify its more inclusive policies, the Boy Scouts also announced a new branding strategy.  Beginning in 2019, the organization will be known as Scouts BSA.  The rebranding efforts include a new tag line: “Scout Me In.”

The Girl Scouts of the United States of America (GSUSA) has been openly and decisively against the Boy Scouts’ policy change.  In a public letter to the Boy Scouts, the GSUSA expressed its concern regarding what it perceived as the “short-sightedness of thinking that running a program specifically tailored to boys can simply be translated to girls.”

In a blog post on its website, GSUSA wrote, “We believe strongly in the importance of the all-girl, girl-led, and girl-friendly environment that Girl Scouts provides, which creates a free space for girls to learn and thrive.”  It continued, “The benefit of the single-gender environment has been well-documented by educators, scholars, other girl- and youth-serving organizations, and Girl Scouts and their families. Girl Scouts offers a one-of-a-kind experience for girls with a program tailored specifically to their unique developmental needs.”

The Girl Scouts are now suing the Boy Scouts for trademark infringement, trademark dilution, and unfair competition.  The GSUSA asserts that its right to use the SCOUT and SCOUTING marks in connection with development programs for girls has been long recognized by the TTAB and the Boy Scouts.  GSUSA notes that the two organizations’ use of the SCOUT, SCOUTS and SCOUTING marks have, until recently, “either been preceded by words like BOY or GIRL . . . or appeared in a context making clear that the programs at issue were developed by one organization or the other.”  In the complaint, the Girl Scouts provide evidence of confusion among the public resulting from the Boy Scouts’ use of the ungendered terms.  Cited examples include cases of girls accidentally signing up for Boy Scouts programs and parents believing the two organizations have merged.

The GSUSA seeks an order blocking the Boy Scouts from using SCOUT, SCOUTS, SCOUTING, or SCOUTS BSA without “an inherently distinctive or distinguishing terms appearing immediately before it,” in connection with services directed to girls.

This is not the first time the two groups have fought over branding.  Prior to 1917, the Girl Scouts were instead known as the Girl Guides.  When the change to “Girl Scouts” was announced, the chief executive of the Boy Scouts accused the group of “trivialize[ing]” and “sissify[ing]” the term.  According to the Atlantic, the Boy Scouts even sued over the name change.

You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

The anticipation is building for this inaugural battle of the bands to raise money for a great cause:

“The Twin Cities advertising and communications industry lacks diversity. It’s a serious challenge. And it’s a problem that won’t be solved overnight. But there’s no reason we can’t have a little fun as we work to ensure our industry better reflects society as a whole.”

“The local marketing community will descend on First Avenue on December 6 for a friendly battle-of-the-bands competition that will raise scholarship money for diverse students seeking a career in the advertising and communications field. The scholarship fund is part of a new collaboration between the University of Minnesota’s College of Liberal Arts, CLAgency, its student-run agency, and The BrandLab.”

We look forward to spending time with our very creative friends in the Twin Cities advertising and communications community — thrilled to be the law firm sponsor of this incredible event, please join us at First Avenue Thursday December 6, from 5 – 11 PM ($20 tickets are available here).

OK, we won’t be singing the notes, strumming the guitars, pounding the keyboards, or blowing on any horns ourselves, but we’ll proudly beat the drum hard for this awesome competition and fundraiser event, as we sip on our signature cocktail for the evening, please come, see you soon:

Loyal readers know that trademark rights are dynamic, use-it-or-lose-it intellectual property rights.

So, when signage announces a name change, it jumpstarts the question of trademark abdonment:

The above signage and reporting around the sale and rebrand of SuperAmerica convenience stores seem to suggest the SuperAmerica name will cease to be used, bringing Speedway coast-to-coast.

Time will tell though if there is a plan in place to avoid legal abandonment of the SuperAmerica trademark, so that it does not become part of the public domain, available for others to adopt.

We explored this important question a few years ago, when we discovered Chevron’s efforts to maintain exclusive rights in the Standard trademark:

“Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because ‘token use’ of a trademark was rejected as a ‘use in commerce’ in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing ‘token use’ as a now failed way of developing trademark rights, the definition of ‘use in commerce’ was amended to add this critical language, requiring the use to be: ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.’

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made ‘merely to reserve a right in a mark.’ Congress did indicate that what constitutes use ‘in the ordinary course of trade’ will vary from one industry to another. It also noted that ‘use in commerce’ should be ‘interpreted flexibly’ so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.”

It appears most of the SuperAmerica trademark registrations recently have been renewed, so with ten year terms, it likely will be several more years before we begin to see what, if any, use is relied upon at the Trademark Office to maintain registered rights in the SuperAmerica mark.

In the meantime, what do you think, is there a plan in place to maintain rights in SuperAmerica?