I spend so much time and money at DSW that it’s no wonder I have been officially designated a “Shoe Lover” (duh, as if I haven’t known this since Mr. Massey’s shoe shop in Newark back in the 60s …) With me, two teenage daughters, and a husband who loves shoes too, we’re there all too often, and are all too familiar with the brands they carry.

But when I saw this one I was speechless. I don’t care how many registrations* their owner has for this mark and marks incorporating it:

Klogs

IMHO, that’s a whole lot of money spent on something that’s virtually unprotectable. Is it worth trying to buy a krazy spelling of clogs? And would you even try to enforce it? (Hint: TTABvue contains no records indicating the owner of the KLOGS trademarks has opposed any applications based on its ownership of KLOGS. I rest my case.)

___________________
*2(f), Supplemental, and with disclaimers of the right to use “clogs” apart from the mark as shown.

Thanks once again to Birchbox, I’ve got something to blog about. This month there are a couple of marks that rankle.


First, we have Mirenesse:



Don’t get me wrong – I LOVE lip pencils, and expect a cage match over this one with my daughter. However, the name troubles me because it looks like a line extension of Mirena, the intrauterine birth control device. I know they’re not related goods, and I see no likelihood of confusion whatsoever. I just know that with my fertile (heh) mind, I see Mirenesse and think of Mirena.

But this one really irks me:



That’s right, it’s “100% Pure.” Where on earth do I begin with this? Let’s start: If the product is indeed, 100% pure, whatever that means, then 100% PURE is descriptive and therefore unprotectable as a trademark. It is also therefore a lousy trademark, because you cannot prevent competitors who have products that are equally 100% pure from asserting that same fact.

And yet this raises another question, one for the false advertising attorneys among us: What does 100% pure mean? For that matter, what do “100% natural” and “100% vegan” mean? Does the latter mean I can eat this? It’s vanilla bean and coconut, after all. This company alleges that its products contain no toxins, but the lengthy list of floral, fruit, and nut extracts contained in the creams, for example, could be highly allergenic, if not toxic, to one sensitive to those ingredients. I once used a cocoa butter skin oil that contained the admittedly all-natural Brazil nut oil – and broke out in a ferocious rash, natural or not.

So enough of that. Let’s move on to the less inflammatory items. Here we have Suki:



It’s “exfoliate foaming cleanser,” and shouldn’t that be “exfoliant”? Seems that way to me.

Next, another Color Club nail polish:



Cute color, but I don’t do matte. And this makes THREE of these!

Finally, a well-established brand:



Dry shampoo (or shampooing sec, en francais) is something I tend not to bother with because I have such short hair that it takes no more than an extra minute to wash it in the shower. I guess it’d be good for overnight travel … but maybe I’ll just give it to the kids.

That’s all for this month’s haul!

Yes, I’ve been a slacker. Many apologies. Mid-April to mid-May has been a trying time this year, but I’m trying (see what I did there?) to overcome it.

Meanwhile, this is not a real post per se – no pictures or fun brands, but I just wanted to link to this article on wine tasting, since it provides an excellent example of what we trademark lawyer geeks call use of a mark (here, Big Mac) other than as a mark. 

Enjoy, and I’ll be back with Birchbox blogging soon.

I am excited – they went for “March Madness” as their theme for the month’s goodies, and I, for one, have no problem with this whatsoever. Likely to be confused with the NCAA? Nope. Likely to be viewed of as sponsored by or affiliated with the NCAA? Nope again. Is it March? Yes. Does Birchbox reference the NCAA sporting events that take place in March in its copy? Yes again. But I still don’t mind, because referring to the grand slate of basketball tournaments that takes place in March – and the ensuing frenzy – is appropriate, when the NCAA has elevated the annual tournament to holiday status. You can’t define a season – not to mention making untold millions from broadcast rights and tickets and all – and then tell the public they can’t call it what you’ve named it.


The same goes for the Oscars and the Super Bowl, by the way.

Now that I’ve hosed myself down after this rant, I’ll resume our regularly-scheduled Birchbox blogging.

Here’s my favorite naming of the bunch:



Caudalie products are made from antioxidants that are derived from the byproducts of winemaking. So I’m already predisposed to like them. Calling this new collection “premier cru,” or “first growth”? Now I love it. I’ve used their products before and have liked them, particularly since they don’t overdo it on fragrance. Read their story here; you’ll want to go there.

Next, we have another foreign import:



It’s Miss Me perfume by Stella Cadente – “falling star,” in Italian. I like the perfume name and the company name. Unfortunately, the scent is a bit too powdery for me.

Next,



Serge Normant, according to his website, is a “renowned hairstylist” with an “eponymous line of transformative hair care and styling products.” With florid prose like that, I’m intrigued. But after scouring the site I can only conclude that the wild coifs depicted on his home page are not the results I can expect from using this dry shampoo. But I’ll try my best.

Vasanti’s website is a lot less glamorous than Serge Normant’s. But since its offering, pictured here – 



 – contains the term “face rejuvenator,” who am I to refuse it?

Finally, this month’s bonus shows an example of a good old-fashioned laudatory mark:



That’s Madewell. Can any trademark geek tell me why MADEWELL is registered on the Supplemental Register for paint but on the Principal Register for clothing? I can’t come up with a principled distinction, but I suspect the PTO can’t either.
Enjoy the madness!

Not that thrilling a haul. Two wins targeted at my demographic, the rest silly stuff.

In my demographic, anything with the word Bulgari:
Another brand that works well for me, Caudalie – whose products are made with grape and vine extracts:
But then it went downhill – yet another Color Club nail polish, so my daughters can add to their collection for their home nail salon events.
Next, “The Brush Guard” “brush guard variety kit”:
I have the sneaking suspicion that these brush guards are the original wrappers cosmetics brushes came in, which someone has diligently hoarded and decided to repurpose (a word I loathe) for essentially the same purpose for which they were originally used. I suppose if I were a better person I’d treat my cosmetics brushes more lovingly … but I’m not, so I won’t. 
Trademark Geek Digression: I note that THE BRUSH GUARD has actually been registered with the PTO for “covers for cosmetics brush bristles; brush covers for cosmetics brushes.” Even with the exclusive right to “brush” disclaimed, this registration is a disgrace, IMHO, and should never have gone through. If you can ask yourself “what does this device do?” and reply “guard the brush,” then the mark should have been refused as descriptive if not generic. Once again, it’s registrations like this that clog the register and unfairly accord overbroad rights to trademark owners – which, in turn, often leads to aggressive yet unfounded assertion of those rights against legitimate descriptive use. (See KP Permanent Makeup, Inc. v. Lasting Impression I, Inc., for a broader discussion of this topic.)
Finally, of no use to me, there is a piece of elastic ribbon cut and tied and cleverly called “The Twistband.” This appears to be merely 6″ of elastic ribbon. Neither an original name nor idea here. Moreover, I’ve had short hair for all but about three years of my life. I can offer it as a bribe to whichever daughter tidies her room best, but it’s not really an item for the young 50-something.

Or does the Glo whitening device mouthpiece displayed at my local Sephora here . . . 




. . . look like a stylized representation of the female reproductive organs? Compare and contrast, if you’d like:


Image thanks to WebMD.

Once again, calling it like I see it.  Why yes, Glo was designed by a man!

Fun fact: A mall security guard stopped me after I took this photo and told me photography was prohibited in the mall.  I think he was full of it, but didn’t have a snappy comeback grounded in the law.


Substantially indistinguishable” and “diametrically opposed“?  I have to hand it to MoFo, the response to the clearly ill-advised cease and desist letter from counsel for ProtectMarriage is one of the finest I’ve ever seen, and is yet another reminder that you only want to send that cease and desist letter if you have no problems with its being published and thereafter ridiculed on the web.  Read it for yourself; I simply cannot do it justice.

(Check out the comments on the Courage Campaign site – what do you think of the commenter who nobly volunteers to detail his confusion to ProtectMarriage’s attorney?  A plant?  Trademark law exists to guard against a likelihood of confusion, not to insulate morons from their own intelligence deficits.)

H/t Dan Savage.

A happy 2010 to all!  Just a few observations here and there to get me back on my blogging feet again:

1.     Kind of liking ideeli as the name of a “members-only shopping community,” at least from a trademark perspective.

2.     Drove past a Dairy Queen recently and noticed signage is different from what I’d remembered.  Now it says DQ Grill & Chill:

Survey says: I love it!  I think it’s an excellent updating of the classic “Brazier food” designation (which I never failed to call “brassiere food”), and I think “Grill & Chill” is an excellent, suggestive slogan.  It may be old news, but it’s news to me.

3.     While I customarily counsel clients not to alter their trademarks or slogans because that can weaken them, I am not so doctrinaire that I cannot make exceptions.  As you may know, I have previously discussed my passion for the Beaver Creek ski resort slogan “Not exactly roughing it.”  Well, Beaver Creek recently opened an outdoor grill-your-own restaurant called Mamie’s Mountain Grill.  The setting is lovely, the burgers top-notch, and the drinks ridiculously strong, at least until the bartender gets a jigger.  But the best part is the banner at the entrance, where underneath the Mamie’s name, the sign reads “Slightly Roughing It.”

4.     Next, in the ever-popular and expanding “I do not think it means what you think it means” category, we have a few contestants:  (a) Sophistry Skin Care;  and (b) The Flow, “a glass journal for the flameworking community.”

5.     In the trademark overreaching event, we have – I know, shocking – the Olympic Committee, here in Canada, going after Lululemon Athletica* for marketing “a cheeky clothing line that’s named ‘Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition.'” One fine day I’ll sit myself down without the dog nipping at my feet to write the definitive post on nominative fair use, plain old fair use, sponsorship confusion, licensing, and why I have no damn problem with my local supermarket setting up a display with a sign “Get your Super Bowl party treats here!”  But until then I’ll just continue to blurt out sporadic rants like this one.

6.     Finally, as for the recent dustup over the unauthorized use by PETA and Weatherproof of photos of Michelle and Barack Obama, respectively, in advertising, I believe that both uses were wrong and actionable; I don’t see a free speech right to use a celebrity’s image, even if that celebrity is a political figure, for a wholly non-political, commercial purpose, in the Weatherproof case.  As for the PETA photo, I can think of many reasons for Michelle Obama not to want to be associated with PETA, regardless of her assertion that she doesn’t wear fur.  But all they really want is the publicity . . .

Once again, happy New Year to all. 

H/ts to Nancy and to my dear friend and jewelry-maker extraordinaire Peggy, who didn’t realize what a chuckle I’d get when I saw that she had become a fan of The Flow.

*Many moons ago, so long ago there’s no record of it in the PTO database, I worked on a trademark application for Lululemon.  Full disclosure and all . . .

          

I often find myself having to explain to clients that the first person to invent something that creates a wholly new category doesn’t also get to protect the name of the invention.  My favorite example is cookie dough ice cream – great idea, but the company that first created the taste sensation may not prohibit its competitors from calling their products by that name.

Moreover, under US trademark law, abbreviations for descriptive or generic terms are not entitled to trademark protection.  For example, “TV” is no more protectable than “television,” and “BLT” no more protectable than “bacon, lettuce and tomato.”  (Mmm . . . bacon . . . )

That’s apparently not the case in France.  One of the finest culinary joys you can experience in France is in the candy department: caramel au beurre salé


, or in English, salted butter caramel.  The caramel can be found all over France, not only in the form of candies, but also as an ice cream flavor or filling for a pastry (try the Aoki tarte featured here). 

Self-styled caramelier” and chocolatier Henri Le Roux claims to have created the delicious substance back in 1977.  But he took the creation a step further, and sought and received trademark protection for the mark “CBS” to cover “Chocolats, glaces comestibles, crêpes, biscuiterie, gâteaux, sucreries, à base de caramel au beurre salé.”  Let’s just say that that wouldn’t fly at all here in the US, and it’s a reminder that every country’s laws regarding trademark protection vary.

Nonetheless, bravo, Henri: Keep the caramel coming even though you’re overreaching on the trademark front!


H/t David Lebovitz

Rant alert!  I just got an email from Entertainment Weekly inviting me to enter a contest.  Big deal, I usually ignore these.  But my hackles went up when I saw what the prize is: “An all-inclusive trip for two to TV’s biggest awards show in 2010.”  IT’S THE EMMY AWARDS, STUPID!  And it’s idiotic to have to refer to the awards ceremony by some nonsensical generic name.  Is the public going to be confused that the Emmy Awards are sponsoring the promotion?  What if some other telecast thought it was TV’s biggest awards show?  Just as the NFL overreaches in its efforts to restrict usage of the “Super Bowl” name, and just as the Academy of Motion Picture Arts & Sciences tries to restrict use of “Oscar” and “Academy Award,” so has the Academy of Television Arts & Sciences jumped on the overreaching bandwagon.  Lawyers can come up with all the fancy trademark restrictions they want, but nothing changes the fact that Entertainment Weekly’s use, if they made it, would be fair use – that is, use other than as a trademark, or, as Judge Kosinski defined it, “nominative fair use.”  The fact that ATAS and AMPAS and the NFL have come up with their complex scheme of restrictions on such use, and the fact that they have succeeded in scaring the hell out of the public (e.g., signs exhorting you to “stock up for the big game!” at the supermarket) doesn’t mean they’ve got the legal high ground.

Just as I bitch about the blurring of logos on clothing worn by reality TV show contestants as not constituting trademark use, so will I continue to bitch about overzealous trademark owners and their counsel who attempt to restrict the legitimate flow of commerce and discourse.  Govern yourselves accordingly.

    

 

The court doesn’t call it fair use, but fundamentally the appearance of a Gottlieb pinball machine in a few minutes of a movie is fair use, IMHO, under principles of both copyright and trademark law.  And plaintiff’s argument that its product’s appearance in a movie starring noted anti-Semite Mel Gibson could harm its business reputation?  Don’t embarrass yourselves, okay?

And yes, this is a topic I’ve written about before and will no doubt write about again.

H/t Marty


(You can play the game too – I copied this image from Wikipedia.  I’m using it not to suggest sponsorship or affiliation by The Who, but rather to illustrate the term pinball referenced above, in a way that will have “Pinball Wizard” running through your brain for the rest of the day.  Oops – I’ve discussed this concept before as well!)

I consider it my duty to give credit where it’s due, and to point out accurate analyses of intellectual property rights by non-IP geeks.  Corby Kummer does an excellent job in this article about bread wars; or, what happens when collaborators in a recipe split up.  Kummer makes clear that neither a recipe nor a method of making bread is subject to protection, and that apart from a catchy and non-descriptive name, trademark protection isn’t available either.  Indeed, Kummer quotes baker Jim Lahey as saying “rather than squabble, bakers should do their best to help each other increase sales and steal back sales from the industrial producers that caught on to the idea that “artisanal” bread sells.”  Hmm . . . should the fashion industry take a slice from the bakers’ loaf instead of clamoring for protection of clothing designs?

“Change isn’t just a slogan.”  That’s Barack Obama today in New Mexico, commenting on John McCain’s recent habit of swiping Obama slogans.  It’s an interesting push-pull on the descriptiveness issue: Obama, by providing concrete evidence of the changes he hopes to make as President (e.g., on health care), uses “change” descriptively and comparatively.  McCain’s use, on the other hand, is suggestive to the extent he’s not offering proposals for change – yet descriptive if we’re looking at his flipflopping on issues

Now for a gratuitous Obama photo, taken Monday in Pueblo, Colorado:

I figure that Obama’s repeated mention of McCain’s slogan theft is a faint but legitimate excuse for introducing more political discussion on a trademark blog.  Plus, in the immortal words of Queen Elizabeth in BlackAdder, “who’s Queen?”

UPDATE: Adding this video about the change issue called “Senator Obama, closed captioned for the badass-impaired.” 23/6 is a great resource for campaign snark. 

I say this over and over again: Certain terms and ideas are not capable of exclusive appropriation by one party as trademarks.  Keith Olbermann gives a stellar real-life example of my oft-repeated maxim in the context of what he sees as one party – here, the Republican party – attempting to appropriate for itself as its brand the tragedy of September 11, 2001. 

Kudos to Keith for his grasp of what a trademark is, and more importantly, for his insightful message.