Hawaii seems to be on the mind here at DuetsBlog lately. Last week, I had the pleasure of visiting three Hawaiian islands for the first time. While there, I quickly became acquainted with Hawaiian life and language. It’s a beautiful place; I recommend everyone visit.

When I first landed on Kauai, the “garden island,” I was quickly greeted with “Aloha,” in sound, sight, and mind. Although most understand “Aloha” to be a friendly greeting, the word has much greater meaning. It also means love, affection, peace, compassion, and mercy. In one word, it embodies Hawaii–and, indeed, the State of Hawaii has declared that Aloha is its official spirit. It is “more than a word of greeting or farewell or a salutation. . . . ‘Aloha’ means mutual regard and affection and extends warmth in caring with no obligation in return. ‘Aloha’ is the essence of relationships in which each person is important to every other person for collective existence. ‘Aloha’ means to hear what is not said, to see what cannot be seen and to know the unknowable.” Haw. Rev. Stat. § 5-7.5(a). All government employees are instructed to “contemplate and reside with the life force and give consideration to the ‘Aloha Spirit.'” Haw. Rev. Stat. § 5-7.5(b). I guess they don’t call it the “Aloha State” for nothing!

With such importance to native Hawaiians, citizens of Hawaii, and the state themselves, it is no wonder that “Aloha” has also become a popular company, place, product, and service name on the islands. Throughout my journey there, I began to notice Aloha almost everywhere I went. See, for example, the following:

And the list goes on… In fact, a basic USPTO search revealed almost 500 live Aloha marks, and a search on the Hawaii Department of Commerce and Consumer Affairs revealed over 10,000!

Seeing Aloha used so frequently caused me to ponder the potential risks of choosing a word like ‘Aloha’ for use in a brand. On the one hand, the word used in connection with most goods, services, and places is arbitrary or fanciful. What is, for example, “Aloha Tofu?” And the word may be suggestive or descriptive of Hawaiian roots. But on the other hand, the word “Aloha” is so ubiquitous that it can hardly be said to be inherently distinctive. Its common use, standing alone, does not immediately identify a single source and seemingly undermines the ability to develop secondary meaning in the minds of at least a Hawaiian public constantly bombarded with the word. Tying additional words to Aloha (e.g., “Aloha Fridays” or “Liquid Aloha”) might create more distinctiveness. But there seems to be an overarching risk that the mark’s initial generic non-distinctiveness will never be overcome. This risk is akin to genericide, but not due to expropriation–rather, widespread appropriation.

I enjoy the Aloha spirit and hope it spreads far and wide. But its ubiquitous adoption could turn a word which means quite a bit (see above), into a word which means very little when it comes to trademark law.

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.

One of the biggest issues facing electric car manufacturers is how quiet they are.  So quiet in fact that 60 Minutes edited in an engine roar to its Tesla story.  The quiet can have dangerous consequences for pedestrians and others.   Riding my bike, I often listen for the sound of an engine roar near me before turning my head to see if it’s safe to move into the adjacent lane.

Tesla

Notwithstanding the electric car issue, some manufacturers are even adding sound to smaller engine vehicles in an effort to promote fuel economy.  I mean, who doesn’t like to rev up their engine a little bit?  Ford has even patented a method of generating engine noise during a period between “two successive ignition events of an internal combustible engine.”

fordenginenoise

So with this modification of engine noise disengaged from the car’s actual function, or an enhancement thereof, are we entering the era of cars with distinctive engine sounds as a trademark?   Historically, obtaining trademark protection for engine noises proven difficult.  Harley-Davidson tried to get one for their distinctive “potato”-like sound.  If you own a Harley, or if you’ve ever been to Harley Fest another Harley rally, you know that sound well.    Part of the issue with Harley’s application was that the sound mark was a function of its V-Twin design.  Unlike other fixed sounds like the NBC chimes, it also varied depending on the type of motorcycle, the way the rider revved the engine, and potentially even in the use of aftermarket parts.  But in the case of a sound applied to an electric car or as suggested by the Ford patent application, the particular sound may have distinctive qualities, would be fixed, and would not be purely a function of its design.  A user would likely be able to upload sounds so that it’s Prius sounded one day like an Audi R8 and another day like an early 20th century roadster.  If not available for trademark protection, the recorded sounds would certainly be eligible for copyright protection.

Keep listening for this trademark trend soon.

 

 

To the extent you’re also all about brands and trademarks, and you imagine a trademark story with each brand you might encounter, I suppose there are an infinite number of ways, right?

One of the Peace Coffee shops in our office building offers K’UL chocolate, and the point of sale display caught my eye, so I snapped this cool pic, to engage in a little trademark storytelling:

 

KULChocolate

K’UL Chocolate appears to be a new brand, founded in Minneapolis, so that’s also pretty cool. Actually, even more than cool today, since it’s been downright frigid here the last few days!

So, as I suspected, the brand name is intended to be pronounced the same as “cool” — and it has an interesting and creative origin, according to the company’s website:

“We create great tasting, good for you, functional chocolate and energy bars with the finest all natural ingredients. The name, K’ul (pronounced cool), comes from the Mayan word for energy, which is what our bars provide you with – the ability to do more and do it better.”

A review of the USPTO’s file history for the K’UL trademark application for nutritional supplement energy bars and cocoa based energy bars is as surprisingly simple as the product’s ingredient listings. The only issue that the USPTO flagged related to the description of goods; no mere descriptiveness refusal based on foreign equivalency (Mayan languages apparently aren’t dead); and no likelihood of confusion refusals, despite these other phonetically similar federally-registered marks for similar goods (so, perhaps a crowded field with narrow individual rights):

  1. KÜL FUEL for sports drinks;
  2. COOL MINT CHOCOLATE for grain-based ready to eat energy bars (MINT CHOCOLATE disclaimed);
  3. COOL ENERGY for nutritional supplements for boosting energy;
  4. COOL RUNNINGS for energy drinks;
  5. COOL CONFIDENCE for energy mints; and
  6. ICE COOL for energy drinks.

I’m thinking K’ul Chocolate probably thought it was pretty cool the USPTO’s assigned examining attorney didn’t gum up the chocolate with arguments like these that prevented registration (just last year) of KÜL HANDBAGS for fashion handbags, based on the prior registered mark for COOL HANDBAGS (stylized) in connection with backpacks, beach bags; book bags; and gym bags:

“Applicant’s mark and the registered mark are similar in sound, appearance, and commercial impression. In this case, the marks contain terms that look and sound similar. KÜL and COOL look similar because the terms seem to suggest the same word – “cool”. The marks also sound the same, as the KÜL is pronounced the same as “cool”. Thus this term and COOL paired with the term “Handbags” as the main components of the marks. The commercial impression created by the marks is also similar in that the combination of terms immediately names the type of goods identified, as well as suggesting a quality of the goods. Consumers would experience confusion when speaking about or observing the marks based upon the similarities detailed above.”

KULHandbagLet’s just say, it would be even cooler for K’ul Chocolate, if the other COOL energy food and beverage brands were to view their rights narrowly, and chill on raising any objections as well.

Perhaps there’s an added intentional and subliminal benefit of K’ul Chocolate being for sale in the ever-so-tranquil Peace Coffee shops?

Suppose you’re a brand manager or trademark counsel for one of the previous COOL brands, would you chill or start to melt down, and why?

-Wes Anderson, Attorney

A bit belated, but I finally caught a screening of Star Wars: The Force Awakens. Unbeknownst to me, the film was missing a part of the Star Wars experience many fans hold dear. And it’s all about branding.

Note: No spoilers of the film itself follow here, unless you consider a discussion of the pre-opening titles a “spoiler” unto itself. A further note: I do not hold myself in any way to be a competent Star Wars nerd, so please excuse any missteps or general unfamiliarity with the lore surrounding the films.

When most people think of the Star Wars opening titles, they probably think of the John Williams score’s opening flourish and a giant yellow STAR WARS outlining flashing on the screen before zooming into space to make way for the iconic scrolling text to introduce the film’s story. But many fans also immediately think of what precedes all of that – the 20th Century Fox “spotlights” logo and its associated fanfare.

20thcentury

 

It turns out that prior to the release of the first Star Wars film in 1977, 20th Century Fox had abandoned the logo and fanfare in the opening titles for films it distributed. But George Lucas loved it so much he insisted that it precede the Star Wars opening titles. It’s said that John Williams went so far as to record the soundtrack’s opening titles in the same key as the Fox fanfare, so as to truly integrate 20th Century Fox’s branding into the fabric of Star Wars. The Fox fanfare was reborn.

This all changed in 2013, after Disney purchased Lucasfilm and the rights to the Star Wars franchise. When releasing the library of Star Wars films in digital download format, Disney removed the 20th Century Fox fanfare from the opening titles. A logical move, it would seem, but it irked many Star Wars fans who considered it an indispensable part of the films. Many worried that Disney’s first new Star Wars film, “The Force Awakens,” would feature an amalgam of Disney / J.J. Abrams branding that would clash with history, as conceptualized in this YouTube video.

Screen Shot 2016-01-15 at 6.57.37 AM

Some even wondered if it would be possible for Disney to license the 20th Century Fox fanfare. While all things are possible in trademark licensing, this would likely be a step too far for 20th Century Fox, which now uses the fanfare and spotlights logo for all of its films.

Fortunately, these Disney-fication fears did not come to fruition – The Force Awakens begins silently, displaying only the Lucasfilm logo, before the iconic text “A long time ago in a galaxy far, far away…” appears on screen, and the John Williams score takes over. The Disney logo never appears (at least I didn’t notice it, unless it snuck into the film’s closing credits). And yet, despite its visual absence, I was acutely aware that this movie had Disney’s fingerprints all over it.

In making branding decisions, sometimes less can be much, much more.

Let’s suppose you conduct sightseeing tours using a tram car, maybe on the boardwalk in New Jersey. Maybe even a famous tram car service you’ve operated since 1949?

Let’s further suppose your passengers may get on or off anywhere along the route, as it travels along Wildwoods Boardwalk.

Would you think you could own a sound trademark, if your tram played, since 1971, a sound recording saying these cautionary words over and over again: Watch the tram car, please!“?

Back in June, during the heat of the season, it appears the operator of the tram car service believed it did, filing a federal service mark application for a sensory mark described this way: “The mark is a sound. The mark consists of the spoken phrase, ‘Watch the tram car, please’.”

I’m guessing the operator is having second thoughts now, given the USPTO’s registration refusal issued just last week, sounding the death knell to this baseless trademark claim:

“Registration is refused because the applied-for mark merely conveys an informational warning/cautionary message; it does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others.”

“Because consumers would regard the phrase as indicating an important command to give attention to the tram car so that nothing bad or unwanted happens, they would regard the phrase as informational rather than as a source indicator. This notion is reinforced by applicant’s specimen, which shows that the mark is presented to consumers as the tram car approaches, in the fashion of a warning. The specimen does not show the mark being presented to consumers at other non-warning times, such as when purchasing tickets or visiting a website. Instead, the sound is played when the consumers are in need of a safety warning that a heavy vehicle is moving toward the vicinity.”

Honestly, I’m mystified by this trademark claim. Really, putting aside the merits, what’s the point? What’s the purpose, the ultimate goal? Prevent others from issuing similar cautionary messages on competing transportation methods?

I suppose if there was some distinctive music in the background to carry the merely informational words, there might be some possibility of disclaiming the words and still having something left to own as a mark, but the spoken words alone, I’m not seeing it.

Perhaps the applicant confused “look for advertising” with their cautionary and merely informational “watch the tram” message?

I’m thinking there is no amount of evidence that can turn the Watch the tram car, please! phrase into a mark for tram car services, do you agree?

Is this a good reminder to watch the informational refusals, please, at least when making silly, overreaching non-traditional trademark claims?

Aaron Keller, Managing Principal, Capsule

How fast are you getting at typing with your thumbs? My high school typing instructor would be so proud of my advancements. I’d say 60 words a minute if I am humming along with an idea of what to write. Not bad, proud to say I am writing this post on my Apple iPhone 6, and though my thumbs are manly, the letters are accommodating.

Now, what makes me curious is the rewarding outcome for all this work. The sound when I have finally completed my effort and this message is sent. I know the sound, it feels like a small jet taking off from my desk.

The sound brings a little rush and a mental reward for all my effort and tired thumbs. To me the sound has a feeling attached, the feeling of accomplishment.

So, in my searches for the entity owning this sound, I have explored the world of Apple intellectual property. I’ve found a registered trademark for the Mac startup chime and a trademark for the store design layout, both I have enjoyed and agree there should be some attribution and ownership.

But, nothing on the sound rapidly approaching as I finish this blog post. Perhaps it has been filed and just not obtained yet, or maybe this is a gap in the legal department at Apple (not likely).

I also have to admit to an anterior motive for finding the intellectual property behind this story. As an author of our next book on The Physics of Brand, we are seeking stories of brands protecting intellectual property surrounding the less considered sense (sound, taste and touch).

So, if you’re also getting excited about finishing this blog post and wondering, “what stories do I know about non-traditional trademarks,” leave a comment. Perhaps we will be able to share your name and story.

Love the recent holiday billboard ad for the beloved Coca-Cola brand!

Having said that, whenever I see branding around the sound Mmm, for food and beverage products, even if it is only one Mmm, and not back-to-back Mmm, Mmms, I’m thinking old school: Campbell’s Soup.

No wonder, Campbell’s M’M! M’M! GOOD! slogan has lasted nearly 80 years, and it likely has inspired many others to perpetuate the Mmm sound in their branding, and even sing about it.

With that memorability, heritage and long-standing success it’s hard to understand how anyone could think differently about the M’M! M’M! GOOD! slogan, oh well.

The Star Wars series is truly an exceptional franchise, having broken box office records, creating legions of fans, and bringing the idea of collateral merchandise licensing to an unprecedented level. Also, how many other films are top hits at the box office in three different decades, even when all you’ve done is add a few minutes of extra scenes and made the explosions better?

Star Wars also made headlines in 2012 after the franchise was acquired by Disney, who promptly announced that they would begin work on the third and final trilogy of the nine episode story.

Although Episode 7 is not slated for release until December of 2015, there is new Star Wars content out for mass consumption. Just yesterday, LucasFilms released a trailer for Empire Strikes Back: Uncut through the website Mashable.com. The full film will be released today.

In case you didn’t know, 2 years ago director Casey Pugh sent out an internet call to action to Star Wars fans: film your own version of any scene from Star Wars: A New Hope, and I’ll use it to make a fan-made version. The result is a full length feature film that is at times intentionally hilarious, actually impressive, or other times, so terrible it is hilarious. The full movie can be viewed on this officially sanctioned and licensed YouTube page.

Below is the official trailer for the new Empire Strikes Back: Uncut film

There are so many levels of derivative work and licensing issues involved that I think any release would require a flowchart and possibly a power point presentation. This isn’t the first time companies have embraced user-generated content, but it is certainly one of the more ambitious uses. But it is wonderful to see a major player in the entertainment industry embrace new technologies and fan participation. The underlying copyright issues may be difficult, but they’re not insurmountable and, for me, the result is worth it.

But Star Wars hasn’t been focused solely on copyright law, they’ve been making strides in trademark law too. Although there has been an increasing interest in the registration of sound marks, LucasFilms was a pioneer in the field, having obtained a trademark registration for the sound of Darth Vader breathing. The registration was issued in 2009 and covers “Halloween and masquerade costumes incorporating masks” and “costume masks, voice altering toys, toy computers, action figures, electronic games” and similar toys and figurines. You can listen to the sound mark here.

Although Darth Vader’s breathing is perhaps the most distinctive sound to emerge from the Star Wars series, it isn’t the only one that might be worthwhile protecting. R2-D2 has some distinctive noises as well as Chewbacca’s roar. It might be a bit harder to obtain, but the sound of a light saber might have a chance, too. And who knows what else may come out of the final three episodes?

While the last year has been relatively quiet on the Star Wars front, I think these new stories are just the beginning of what will surely be a 2015 filled with “sneak peeks,” fan complaints and, yes, legal issues surrounding the Star Wars franchise as we gear up for the first Disney-produced installment of the saga. Here’s hoping that the majority of these are fun stories like Star Wars Uncut in the coming year.

Can you feel it? All around the country, fields are being groomed, stenciled, and painted. Tonight, the college football season begins with Georgia State taking on Abilene Christian in what could be a preview of one of hundreds of games that most of us don’t really care about. But like so many fans around the country, I’ll probably still watch it, at least for a quarter: I missed you Football.

Football certainly hasn’t been gone from the news though, as lawsuits addressing scholarships, unions, and additional antitrust violations have all made headlines. But one headline caught my attention, an article discussing the University of Southern California’s head coach Steve Sarkisian filing a U.S. Trademark Application for his moniker SARK. Sark joins a number of other college football coaches who have applied to register their names.

Just last month, we covered the University of Arkansas’s registration of the SOOOIE RAZORBACK cheer. There was also the Oregon/Oregon State CIVIL WAR, too. This got me wondering, if trademark law can protect coach names, chants, and intrastate rivalry games, what other fun ways can I think about work while watching football?

How about stadiums?

Check. Well, technically only the turf is claimed as a feature of the mark. Steve discussed this registration back in 2009. Also, the red version for Eastern Washington. Not the stadium itself. But still.

Uniforms?

 

Check. Oh, and better get one for the away uniforms, too.

And speaking of uniforms, if you were considering launching a business that sold perfume or deodorant in the form of a football jersey, well. Don’t. Not just because its a terrible idea, but because you might be infringing on the trademark registration below:

 

And since we’re on the subject of product trade dress, don’t forget about football shaped brownies:

 

And you definitely won’t want to forget about your football shaped “alcoholic beverages except beers:”

 

And let’s see if you can guess what kind of goods or services this is a trademark for:

Yes, it’s a kicking tee. And yes, it’s registered on the Principal Register in connection with kicking tees.  How? Well, apparently, the texture on the tee is so unique that it has acquired distinctiveness in the minds of consumers as identifying a particular source. Right.

There’s even a trademark registration for this logo:

 

Which is apparently in no way associated with this registered trademark of Nike:

 

Or how about this trademark:

Yep, that yellow line is a trademark of Sportsvision. Martha covered that here around Super Bowl time – Oh, sorry Roger –  The Big Game time.

And if you’re attending a game at Texas A&M, not only will you be surrounded by trademarks, but you will BE a trademark, way to go 12TH MAN®!

There are certainly many more that we could cover, but I think it is pretty clear that this Saturday, whether you’re in the stadium, on the LA-Z-BOY® at home, or at the BLUE 42 SPORTS GRILL in Winter Garden Florida, you will be surrounded by trademarks. And football. Glorious, but possibly not-very-competitive, football. Enjoy it! – I know I will (GO HAWKS!!).