Can a gang become a brand? This is a question asked in the new Netflix show, Trigger Warning,  produced by and starring Michael Render, AKA Killer Mike, one half of the Grammy-nominated rap group Run the Jewels.

Killer Mike of Run the Jewels performing at Pitchfork Chicago on July 19, 2015 (Photo Credit: Me)

In episode three, “White Gang Privilege,” Mike explores America’s love of the Outlaw, real and imaginary, and typically white: Al Capone, Tony Soprano, Tony Montana, Michael Corleone, Johnny Cash, Gordon Gecko, and Hells Angels, to name a few.  The episode begins with Mike asking: How is it possible for Hells Angels, a known biker gang, to sell t-shirts on Amazon? And what’s stopping black gangs from doing the same thing?

As Mike drives to a trap house in Atlanta to find out, he comments that “even though black gangs … are as well known as the Hells Angels, they haven’t been able to cash in and trademark their brands in the same way.”  So he meets with Crips gang members Yayo, Murdo, AC, and Newny to discuss legitimate business ideas, like zipper and button manufacturing, and, eventually, the gang lands on a new brand of soda: Crip-a-Cola.

Crip-a-Cola packaging as shown on The Late Show with Stephen Colbert

Spoiler alert: The episode proceeds to follow the gang through all of the typical startup business challenges: getting a loan (or at least trying), creating a minimum viable product (needs more sugar), working with a graphic designer (his first time working with a gang), consulting a beverage industry expert (impressed by the polished product), focus-group testing (everyone is afraid or skeptical at first, especially Mario!), advertising (a music video like commercial), and making that first sale (at a local farmer’s market), all while handling a new market rival (Blood Pop soda produced by the Crips’ rival gang, the Bloods).

Considering everything that went into the episode, and the seriousness of the effort, I was left scratching my head over the obvious, and perhaps true-to-life, startup oversight:  where’s the trademark lawyer?  I spotted at least four issues where a good trademark lawyer could have really helped.

Trademark Notice

Do you see the little circle-R next to the word Crip-a-Cola on the product packaging?  That means “registered trademark” and indicates that Crip-a-Cola is federally registered in the United States.  The only problem is that it’s not registered.  In fact, there isn’t even an application pending!  We’ve blogged before about misuse of the trademark registration symbol here (fraud?) and here (false advertising?).  A good trademark lawyer would have corrected that to a “TM” and filed an intent-to-use application before going live on Netflix (or even to that first farmer’s market).

Clearance

Another possible problem a trademark lawyer could have helped with: Clearance.  Can the Crips actually use “Crip-a-Cola?” despite at a minimum, perhaps calling to mind Coca-Cola?  While “calling to mind” is not infringement, does Crip-a-Cola step to closely to Coca-Cola, since Coca-Cola is a famous brand, and able to wield the full power of anti-dilution law?  What has Coca-Cola done with similar attempts?  A good trademark lawyer would investigate and find out: of course, Coca-Cola will protect its corner, just take a look at the mark CropaCola, which popped up in 2014, and which Coca-Cola quickly opposed, on likelihood of confusion and dilution grounds, asserting the following:

[Coca-Cola] is the world’s largest beverage company, serving more than 1.6 billion consumers each day, in more than 200 countries around the world.  [The] COCA-COLA brand is the cornerstone of its portfolio, which presently includes fifteen billion dollar brands.  COCA-COLA and DIET COKE are the top two soft drink brands in the world. . . .[T]he ‘CROPA’ term in [CROPACOLA] is confusingly similar in sight and sound to the ‘COCA’ term in [COCA-COLA], containing the same number of syllables and a similar phonetic impression, which is compounded by the addition of the ‘COLA’ suffix, in and identical manner as the use of [Coca-Cola’s] COLA suffix.”

Seems plausible that Crip-a-Cola could expect the same treatment from the largest beverage company on Earth.  This is where having a trademark lawyer in your gang would really help.  For one, to identify issues like these (never mind taste infringement) and identify strategies for going forward, but more importantly, to look for defensible legal positions and creative solutions, for example, perhaps seizing on this line in Coke’s opposition: “Furthermore, the ‘CROPA’ term has no independent meaning, further failing to distinguish it from [Coca-Cola].”  (emphasis added).  Here, Crip-a-Cola may have an advantage: unlike “Cropa”, the term “CRIP,” does have several independent, distinct meanings (perhaps the most helpful is the possible backronym: “Common Revolution In Progress.”) and is likely famous, or infamous, in its own right.

Ownership

What else could a good trademark attorney help with?  How about determining ownership?  Absent a legal entity to own the CRIP-A-COLA mark and the related business, Yayo, Murdo, AC, Newny, and Killer Mike would own Crip-a-Cola jointly as individuals in a general partnership, the worst form of legal entity, due to the shared, personal, and unlimited legal liability each partner shoulders. Better to form an LLC at least, not only to more cleanly own the trademark, but also to remove personal liability, formalize ownership, management, and tax decisions, and adopt buy-sell provisions.

Furthermore, what about competing claims of ownership? Is there an official Crips entity that could claim false association?  Maybe – one trademark application filed July 5, 2018 for the mark CRIPS for “association services” and “Organizing chapters of a Community Revolution In Progress club and promoting the interests of the members thereof” suggests that an entity called Crips, LLC, may have been formed to claim leadership of the Crips.  This would be something any good trademark attorney would investigate, and develop a strategy for dealing with.

Legal Notices

Finally, the last issue in the episode I spotted, where good trademark lawyer would lend a hand, arises from the fine print claim made at the end of the Crip-a-Cola commercial (NSFW):

The fine print states that “unauthorized use of the Crip-a-Cola font is prohibited by law.”  The problem? Fonts, or typefaces, are only indirectly protected by law, and not in gross.  Sure, if your typeface is displayed as a result of computer software code operating on a device, then copyright protects the computer code necessary to display the typeface as a font. This is the main reason why certain fonts are licensed. But if the typeface is “copied” or used without authorization through other means, there is no recourse under copyright law.  Instead, one would have to turn to trademark protection of the stylized mark, which, absent a federal registration would be limited geographically by common law rights based on use, perhaps as narrowly as Atlanta or the State of Georgia.  And except for the famous typefaces of famous brands (for example the Coca-Cola script), such rights would be further limited by the goods in connection with which the typeface is used, to prohibit use on only identical or related goods (for example, complimentary goods, or goods within the likely “zone of expansion”), in this case, rival beverage or food products. So the claim that the “unauthorized use of the Crip-a-Cola font is prohibited by law,” while not entirely untrue, is mostly inaccurate.

Outlaws are known for having their criminal defense attorneys on speed dial.  Maybe it’s time to add the number for a good trademark attorney.

Better Call Saul? Only if he practices trademark law!

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

What do you think of when you hear the word Velveeta? Me too, childhood — complete with piping hot Campbell’s tomato soup — and perfectly melted grilled cheese sandwiches. Later in life, at least for me, came liquid gold and RO*TEL queso dip, usually on weekend game days. And, my daughter might add to the Velveeta memory mix, perfectly smooth shells and cheese.

Velveeta can conjure up some less than innocent and charitable thoughts too. Eventual trips to the doctor. Perhaps cardiac stents. And, even probing medical questions like, is that yellow loaf or brick really cheese? Turns out, it’s technically not real cheese, rather the box even calls it “Pasteurized Prepared Cheese Product.” What does that even mean?

Yet, Kraft apparently has felt no shame, remorse, or even second thoughts in continuing to maintain the original 1923 Velveeta trademark registration for “cheese,” despite an FDA warning letter some fifteen years ago that apparently led to the more accurate “Pasteurized Prepared Cheese Product” appellation.

As a trademark type though, and putting aside the interesting trademark abandonment question of whether Kraft actually uses the Velveeta mark in connection with the recited goods, “cheese” — the notion of a coined trademark comes to mind with Velveeta too. The kind of trademark that is invented, or let’s say, made up, or produced for the exact purpose of functioning as a trademark indication of source.

Some other examples of coined marks include Exxon, Rolex, and Google. Some call those types of marks the gold standard since they are the strongest trademarks along the Spectrum of Distinctiveness. They are often singular in meaning, and ripe for dilution protection.

So, imagine my surprise seeing a “room” dedicated to Velveeta, as I walked 6th Street with one of my sons, this past weekend, in Austin, Texas, inspiring me to capture the image shown above to further document and discuss it: The Velveeta Room.

My surprise was especially fine-tuned since the apparently-non-eponymously named room did not appear — at least, on the surface — to be promoting liquid gold, yellow bricks, golden loafs, queso, or even shells and cheese, much less the almost century old Velveeta “cheese” brand or distinctive box.

Mind you, there was a day when Kraft appeared to give a serving of some serious trademark enforcement attention to the likely famous Velveeta trademark, even when the target showed up selling comedy as opposed to calories.

Back in the day, circa 1993, Kraft opposed registration of Blue Velveeta for “entertainment services in the nature of comedy and musical acts.” It appears the improv act melted away in the mid-90s — not sure whether it was voluntary or not.

The Velveeta Room apparently began around the same time as Blue Velveeta, circa 1988. Perhaps either of their fans can help explain their branding, because I’m at a loss. Did the improv group or does the comedy lounge specialize in cheesy humor? Pasteurized jokes? Fake laughter and chuckles? Or perhaps, unhealthy routines and the need for medical attention?

The irony has not escaped me that the Velveeta product was invented to solve the problem of “broken cheese” and the Velveeta brand and trademark was invented or coined to identify, distinguish, and indicate the source of an engineered — or to some, fake cheese product.

It remains to be seen whether the Velveeta trademark registration is itself “broken,” whether the brand simply melts away over the next century, whether its meaning will further evolve and blend into a smoothly-delivered butt of jokes, or whether Kraft will laugh all the way to the bank.

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend:

NASCARGasolinePump

So, what do folks think, does this photograph of a gasoline pump constitute “use in commerce” of the NASCAR trademark and brand in connection with gasoline, classified in Int’l Class 4?

NASCAR has all sorts of stuff that can be purchased online with it’s brand name and trademark on it, but to serve a trademark function (identify, distinguish, and indicate the source of gasoline), and to demonstrate proper use in commerce of a word mark (as opposed to non-traditional subject matter like colors and scents — we’ll pass on the possibility of taste for this one though), applying the mark directly on the goods isn’t possible given the liquid state.

NASCAR also has an impressive trademark licensing program and more than a semi truckload of federal trademark and service mark registrations to protect its licensed brand, but interestingly, none presently covering Int’l Class 4 or gasoline.

It appears the closest NASCAR has come to protecting gasoline in Int’l Class 4 is through this expired NASCAR registration for motor oil and automotive greases in Int’l Class 4.

Yet, I’m thinking TMEP 904.03(c) contemplates the issue and fully supports using the above photo as an appropriate specimen to demonstrate use in commerce of the NASCAR mark for gasoline, by showing the mark directly on the containers or packaging for the goods: “gasoline pumps are normal containers or ‘packaging’ for gasoline.

Why do you suppose NASCAR hasn’t taken this step (yet)?

-Martha Engel, Attorney

“Forties at 4” was a time-honored Friday tradition among my engineering classmates in college.  After our last class, several of them would purchase Miller (if we could find it in a 40 oz) or Old English or some other malt liquor that provided the most bang for the buck.  Cracking one open always signaled the beginning of the weekend.

With the growing number of brewery acquisitions, not to mention yesterday’s approved merger of the two largest brewing companies in the world, many breweries may be thinking about the beginning of their weekend – an exit strategy.

An acquisition of a brewery can provide significant marketing, production, and sales resources otherwise unavailable to the brewer.  They can expand a brewery’s brand availability and marketshare.  They can free the founders up to return back to whatever brought them to start that home brewery in the basement without worrying as much about the day-to-day operations.  I often hear from brewers that they love what they do, but “it’s starting to feel like work, and I didn’t anticipate feeling like that.”

2015 saw 19 acquisitions of craft breweries worth $13 billion, and there’s no doubt that number will be even higher in 2016.  When valuing companies for craft brewery acquisitions, besides their balance sheets, there is a clear emphasis on the strength of the brand and making sure the brewery’s intellectual property is in order.  Every brewery has essentially the same equipment, the same assets, and the same costs.  It’s the brand and the quality of the beer that can push it ahead of similarly positioned breweries, attracting an acquirer.

When it comes to most breweries’ intellectual property, there are Four T’s that breweries, or any craft beverage manufacturer for that matter, should be thinking about to best position themselves for a strong valuation in an acquisition when the time is right.

  1. Trademarks are clear – Have you conducted a proper clearance search of your brewery name, your flagship brews, and any specialty brew names?  Before releasing any new beer, search at least the U.S. Trademark Office Records, the internet, and beer resources such as Untappd or BeerAdvocate to see whether the mark is available.
  2.  Trademark registrations for at least your brewery name and your flagship brews.  Have you filed federal trademark applications to protect your brands nationwide, even if your sales territory has been more limited?  Are you enforcing the scope of your trademark rights in your brands to continue to keep your rights broad?
  3.  Trade dress – Maybe it’s a consistent theme in your product packaging.  Or the unique way you serve a flight of beer in your taproom.  Distinctive trade dress can complement a creative set of trademarks, and can be protectable itself.
  4.  And, most importantly, Taste.  “Quality” has been a strong focus of brewer’s guild and Brewer’s Association presentations over the past few years.  Consistently brewing high quality beer is important for your brand.  Are you taking the necessary and appropriate precautions to ensure that your beer recipes remain trade secrets?  Have you made sure in any employment agreement with a brewer that the brewery owns the recipes?  Are you investing in the proper equipment and necessary training for your staff to ensure high quality beer production?

Some breweries decide to forego the expense of properly protecting the brand initially, making it potentially less attractive for an acquirer and without as big a payoff when they may be ready to make this transition.

-Wes Anderson, Attorney

Another for the file of newly-registered product configuration marks: acquired distinctiveness, sold by the gallon.


LB_1_percent_lowfat_gallon

According to 2014 numbers released by the U.S. Department of Agriculture, Americans drink 37 percent less milk than they did in 1970. Whole milk consumption has plummeted by 78 percent during the same period. The dairy industry has spent countless millions on advertising, and don’t be surprised if you see the MILK LIFE campaign featured prominently in the upcoming Olympics (sadly, the “Got Milk” campaign was discontinued in 2014).

For its part, it looks as though HP Hood LLC decided to shake up the humble gallon-sized milk bottle, and it recently obtained a registration for the configuration shown below.

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Named the “LIGHTBLOCK Bottle,” the design actually made its debut in 1997, and, as the name suggests, the primary function of the bottle is to block light “to protect against off flavors and vitamin depletion.” But Hood also made some changes to differentiate its design from the typical milk bottle, and filed an application for the configuration in June 2014.

The application identifies “Dairy products, namely, fluid milk” — I probably shouldn’t even ask if there are other types besides “fluid”? The mark description is also a doozy:

The mark consists of the three-dimensional configuration of the size and shape of a plastic jug-type one gallon container for milk products, having four vertical sides of equal width and a rounded, rather than pyramidal top. The vertical panels are proportionally taller than in commonly used one gallon milk containers. The overall dimensions of the container are approximately 6 1/4 inches wide by 6 1/4 inches deep by 10 inches high. The jug-handle of the container is placed at the middle of one side rather than at a corner. There are four horizontal ribs indented in the two side panels which are adjacent and perpendicular to the handle side. There is one vertical rib indented into each corner of the container where the vertical panels are joined. There are two horizontal ribs indented in the back panel below the handle.

It’s highly uncommon to see actual measurements of the product configuration within a mark description, as brand owners generally like to make subtle changes in their overall packaging while maintaining the distinctive features of the design. Given the standardized gallon size for the bottle, this may be less of a concern for Hood.

Thanks in part, perhaps, to a correctly-tailored mark description and a specific drawing (with prodigious use of the dotted lines to indicate what is not claimed as part of the trademark), Hood avoided a functionality refusal for the specific features identified in the mark.

The main objection for Hood to overcome was a non-distinctive trademark refusal, and Hood’s claim of over five years’ use of the mark was insufficient. Hood overcame this refusal with a simple, concise declaration containing sales figures (in the hundreds of millions of bottles). Hood also included a “comparison chart” showing the differences between its bottle design and its competitors — specifically, a “rounded top (not pyramidal),” a handle centered on the side, and “horizontal and vertical ribs.”

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So, what do you think? Is it worth the cost of registration? Would this milk jug catch your eye in the dairy section?

-Wes Anderson, Attorney

It has not been a great week for oatmeal.

The Quaker Oats Company (a subsidiary of food and beverage giant PepsiCo), on the heels of a recall for its Quaker Quinoa Granola Bars, has also made a rather embarrassing gaffe on the trademark enforcement front. And unfortunately, demand letters are far more difficult to recall.Screen Shot 2016-05-20 at 8.02.49 AM

Evidently, an in-house trademark attorney at Quaker Oats recently discovered a Christmas tree farm in Visalia, California using the (rather odd) name “Quaker Oats Christmas Tree Farm.” The attorney sent a somewhat perfunctory template demand letter to the farm, citing Quaker Oats’ various registrations for the QUAKER trademark:

It was therefore quite a surprise to discover that you are operating a business under the name “Quaker Oats Christmas Tree Farm.” Your use of our trademark is likely to mislead consumers into believing that your business is associated with the Quaker Oats Company. It is also likely to weaken our very strong trademark. In light of the foregoing, we hereby demand that you immediately stop all use of the “Quaker Oats” name. [. . .] While we would like to settle this matter amicably, we will take all steps which are necessary and appropriate to protect our name.

Seems reasonable enough. Diligent enforcement is, after all, an essential facet of a robust trademark portfolio. But there are two problems here: first, the farm in question is owned and operated by people of the Quaker faith. And second, the farm’s actual name is the Quaker Oaks Christmas Tree Farm, a “sustainable agriculture and environmental education center in the Kaweah Delta of California.”

cropped-quaker-oaks

And as tends to occur when big companies send flimsy demand letters, things went public fairly quickly. The Religious Society of Friends (Quakers) in Irvine, California soon posted the letter, along with its truly entertaining response (which you should read in full at the link):

My breakfast this morning—rolled oats by the way—was interrupted by the arrival of your letter via FedEx, which was delivered to us despite the fact that you have misspelled our company name which is Quaker OAKS Christmas Tree Farm. Our farm was so named because religious services were held outdoors on this farm under a great oak tree until about ten years ago when we were able to move into our new Meetinghouse on another corner of our farm.

Our business is 100% owned and operated by Quakers. I suspect that your firm employs considerably fewer, if any, Quakers. We trace our Quaker ancestors back 320 years and they were mostly farmers, but I don’t know how many of them grew oats for your company. My guess is that you may be selling far more Lutheran oats, Methodist oats, or maybe atheist oats. Could your company be guilty of product source misrepresentation?

When it comes to enforcement, I’m quite certain Quaker Oats has a lot on its plate (pardon the pun), but here’s another reminder to wield the power of a demand letter with caution, and to always double-check the details of a potential infringer’s use.

– Mark Prus, Principal, NameFlash

Creating fictitious names for products is standard practice in many industries. Creating a brand that evokes a certain image or feeling is so commonplace that most of us don’t think twice about it.

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Consider Genova Tonno. In the Italian language, Genova is the city of Genoa, and Tonno is tuna. So you might infer that a can of Genova Tonno contains tuna caught in the waters off Genoa. Actually, Genova Tonno is a specialty brand of tuna owned by Chicken of the Sea. The label says:

Genova Tonno© Premium Yellowfin Tuna. Wild caught from deep waters, Genova Select Yellowfin is all natural with no additives or preservatives. Genova is packed in the Mediterranean tradition with olive oil, which provides a rich and delicious flavor.

Chicken of the Sea is owned by a Thai-based company called Thai Union, which has its own packing facilities in Thailand. While the source of its tuna is never identified beyond “deep waters” it is believed that those deep waters are not off the coast of Italy, but rather are off the coast of Thailand.

By all reports, this is very tasty tuna. Do you really care that the manufacturer is positioning its product as being Italian when its heritage is clearly not Italian? If so, perhaps you should buy Asdomar which claims that its tuna is “100% processed in Italy.” Note: even this does not mean that all of their tuna is caught near Italy

Need another example? Would you be upset to know that Häagen-Dazs was born in the Bronx, New York in 1961? Its creators were not Scandinavians but rather two Polish immigrants, Reuben and Rose Mattus. Why did they choose the name Häagen-Dazs? The name was created to look Scandinavian for Americans because the European cachet radiates craftsmanship, tradition, and wholesomeness, thereby justifying the higher price.

Recently in the UK, Tesco has been drawing flak from consumers because they created seven fictitious farm names and are using them in marketing their products. Fake farm names such as Rosedene and Nightingale now provide a cachet to their product lines.

“Authenticity” is a traditional buzzword for marketing. Studies have shown that brands should be authentic to build trust among consumers. At what point does a “fictitious” name cross the “authenticity line” and become a “fake” name?

The Tesco example shows one flash point is food sourcing. Consumers want to know where their food comes from and apparently once people discover that “Rosedene Farms” isn’t a real place they no longer trust that those apples sold under that brand name are of high quality. Critics in the UK are calling this practice “legal deception.”

The US Patent and Trademark Office has a fairly broad definition of what they consider to be “legal deception” in geographic names. The policy of a name being “geographically deceptively misdescriptive” would prevent the registration of such a trademark. According to the USPTO website, “A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.”

That would seem to indicate that Tesco might be facing some storm clouds on the horizon if they try to register their set of “fake farm names” in the US.

Perhaps I am immune to this issue because I am a professional name developer with 25+ years of experience as a consumer products marketer. I long ago stopped losing sleep over the fact that Betty Crocker isn’t a real person!

-Wes Anderson, Attorney

When a company puts “DISTINCTIVE” on its own packaging, its usually a sign that it highly values its trade dress and product configuration rights. That’s certainly the case for Pepperidge Farm and its Milano cookies.

The commercial bakery giant has taken aim at Trader Joe’s, the popular grocery chain, for selling house-branded “Crispy Cookies” that borrow a few design cues from Pepperidge Farm’s MILANO cookie, the oval-shaped cookies held together with chocolate filling. See for yourself:

cookies34325

Taking umbrage at Trader Joe’s rounded-rectangle sandwich cookies, Pepperidge Farm filed a complaint in the District of Connecticut, alleging trademark infringement and trademark dilution under the Lanham Act, common law, and Connecticut state law.

While Trader Joe’s isn’t using the MILANO name, it turns out Pepperidge Farm has a registration in hand for both MILANO the word mark and a separate registration for “a configuration of a cookie comprised of a filling sandwiched between two oval-shaped cookies.” The complaint makes reference to this as the “MILANO Configuration.” Obtaining such a registration can often be a significant undertaking, but Pepperidge Farm did not receive any functionality refusals and was able to show acquired distinctiveness in its cookie configuration.

cookie

And Pepperidge Farm’s complaint meticulously claims other elements of its packaging – a “fluted paper tray” to hold the cookies, and the use of vertical, rather than horizontal, packaging – as part of its overall trade dress that Trader Joe’s mimics.

A sidenote: though they are ostensibly “for adults,” I haven’t had MILANO cookies since childhood, and in my past trips to Trader Joe’s I never noticed they were selling a similar product. Unfortunately, in doing my due diligence for this blog post, I was informed that the local Trader Joe’s was all out of the Crispy Cookies – even in the back! Evidently, they are quite the popular item in St. Louis Park, Minnesota, or there is such a thing as a “cookie-litigation hold.” In any case, my would-be taste test was foiled. I regret the omission.

Back to the merits: a likelihood-of-confusion claim may be tough sledding for Pepperidge Farm. Trader Joe’s is known for filling its stores with its own private label products in its stores, and these products frequently borrow naming and design cues from more famous brand names. What’s more, the products do not appear side-by-side in the marketplace; Trader Joe’s products are sold only in their own stores — so you won’t find the offending treats sold alongside MILANO cookies at your more conventional big-chain grocery store. In essence, it’s hard to envision a consumer buying TJ’s cookies and having any confusion as to whether they come from or are affiliated with Pepperidge Farm.

On the other hand, Pepperidge Farm’s dilution claim may have considerable merit: a dilution claim does not require consumer confusion, only that the MILANO Configuration be deemed a “famous mark” and that Trader Joe’s similar cookie configuration is likely to diminish the distinctive quality of the MILANO Configuration.

Proving the fame of the MILANO Configuration may be the sticking point, and Pepperidge Farm will need to marshal a wealth of evidence to show third-party recognition of the cookies’ shape, configuration, and packaging. The Pepperidge Farm complaint does make some reference to this, stating “the MILANO® cookies are instantly recognizable and due to their popularity, have appeared in pop culture and TV shows like Frasier, Will and Grace, Seinfeld, and Two and-a Half Men.”

I’d be shocked if this clip from Family Guy didn’t make its way into the conversation, with references to the MILANO name, packaging, and cookie shape along with an irreverent reference to the old tagline “Pepperidge Farm Remembers”:

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Remember those sweet, warm New England summers? Remember sippin’ lemonade underneath a shady tree? Remember when you hit that pedestrian with your car at the crosswalk and then just drove away? Pepperidge Farm remembers. But Pepperidge Farm ain’t just going to keep it to Pepperidge Farm’s self free of charge. Maybe you go out and buy yourself some of these distinctive Milano cookies, maybe this whole thing just disappears.

So, armed with all this public recognition, will the MILANO Configuration reign supreme? I suspect Trader Joe’s might just have a different product on store shelves once they are back in stock at my local shop.

-Wes Anderson, Attorney

A common refrain: “There must be a way to protect this idea, either by trademark or copyright.” Regrettably, in many instances, the answer is “none of the above.” Take, for example, the humble chicken sandwich.

Late last week, a three-judge panel at the Court of Appeals for the First Circuit upheld a granted motion to dismiss with a holding worthy of a double take: “the district court properly determined that a chicken sandwich is not eligible for copyright protection.”

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The plaintiff, Norberto Colón Lorenzana, was a former employee of South American Restaurant Corporation (“SARCO”), a franchisee of Church’s Chicken in Puerto Rico. During his employment as a manager, Lorenzana came up with “the concept for a new chicken sandwich that could be included on Church’s menu.” As alleged in Lorenzana’s complaint, the concept was a hit, and SARCO/Church’s began offering the new sandwich – dubbed the “Pechu Sandwich.” SARCO eventually obtained a federal trademark registration for the mark PECHUSANDWICH in 2006, though SARCO did not file a five-year declaration under Section 8, and so the registration was cancelled in 2013.

Lorenzana’s relationship with SARCO and Church’s soured from there, and Lorenzana brought suit in the District of Puerto Rico, alleging that SARCO “received economic benefits from plaintiff’s creation” without compensating him, and that SARCO “intentionally, willfully, fraudulently, and maliciously procured the registration of Plaintiff’s creation in the Patent and Trademark Office without his consent and proper compensation” — essentially a claim for fraud on the PTO. Lorenzana sought “no less than $10,000,000.00 as damages.” (You can read the full complaint here)

SARCO quickly moved to dismiss Lorenzana’s complaint, asserting that it did not state sufficient facts to allege fraud on the PTO. Ruling on the motion, the District Court for the District of Puerto Rico agreed and dismissed the claim. The court then generously read in a claim for copyright infringement (the complaint made no specific reference to copyright protection or the Copyright Act), but summarily dismissed that claim as well, holding “Neither plaintiff’s idea for the chicken sandwich recipe or the name ‘Pechu Sandwich’ is subject to copyright protection.”

Lorenzana appealed to the First Circuit, which unsurprisingly affirmed the District Court. As a quick refresher, according to Section 102 of the Copyright Act, there are eight categories of creative works eligible for copyright protection:

(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

Those categories make no room for recipes, which are functional directions to achieve a result rather than a creative work. Therefore, the First Circuit concluded that “[a] recipe — or any instructions — listing the combination of chicken, lettuce, tomato, cheese, and mayonnaise on a bun to create a sandwich is quite plainly not a copyrightable work.”

From there, the First Circuit turned “to the meat of [the] allegations” (pun presumably intended) and held that Lorenzana failed to sufficiently allege “that any false statement exists” that would constitute fraud on the PTO. So while the name PECHUSANDWICH is certainly eligible for trademark protection as evidenced by the registration, Lorenzana did not sufficiently allege factual grounds for fraud. Lorenzana did not claim ownership of or priority to the PECHUSANDWICH mark, presumably because SARCO, not Lorenzana, was the party to actually use the mark in commerce.

While Lorenzana is left uncompensated for his sandwich, we at least have the comfort of knowing that chicken sandwiches remain above the copyright infringement fray.

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.