Because I am twelve

My favorite piece of swag from the INTA annual meeting:





Had a great time in Boston and only regret that I couldn’t join the gang at Meet the Bloggers.  When you’re one half of a two trademark lawyer couple, there are necessary tradeoffs.  Next year in San Francisco!

One toke over the line . . .


I don’t think that even the parody defense will save the “420 Football League,” whose goal, as it were, is that players take a bong hit, hold it as long as possible, time themselves, and advance the ball [?] one yard for every second the hit is held.

Much as I enjoy criticizing frivolous trademark claims, I have to admit that this one pretty much hits the dilution by tarnishment nail squarely on the head.  Thanks to TMZ for the tip.  See?  There is value in reading gossip sites!

Where trademark law intersects with Prop 8 . . . say what?

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.

New Year Stuff and Nonsense

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 . . .

          

The PTO is not your personal bodyguard!

When you’ve filed an intent-to-use trademark application, it’s generally unwise to make a public statement to the effect that despite having filed the application, you in fact have no such intent whatsoever. But that’s exactly what America’s most recently humiliated politician’s wife, Jenny Sanford, has done.  Politico reported yesterday that Ms. Sanford, in a clearly misguided effort to “protect [her] family’s privacy,” filed an application with the PTO for JENNY SANFORD, for “Product merchandising to be sold at on-line retail store featuring clothing, mugs and other household items; stickers, decals, notepads.”  But when questioned by Politico about the application, Ms. Sanford replied that “there was never an intention to profit off this trademark or sell merchandise.”

SAY WHAT?  Sounds like a voidable application to me.  (Check out John Welch’s warnings about bona fide intent as a possible ground for opposition.)

Jenny, let’s talk.  (I’ve got your number).  Look, your husband may be a philandering hypocritical nincompoop, but that does not give you license to waste PTO resources.  Here is the deal: filing an application with the PTO is not the way you prevent the “inappropriate use” of your name and “product placement going forward” if you have no bona fide intent to use your name as a trademark.  Having a trademark application on file when you have publicly admitted to your lack of such intent, although nowhere as titillating as saying you’re hiking the Appalachian Trail when in reality you’re shacking up with your Argentine mistress with flights paid by taxpayers, is still an abuse of public resources.

I’m sure that in reality Ms. Sanford filed the application at the suggestion of well-meaning but clueless supporters who probably said something like “you should copyright your name to protect it,” perhaps to prevent against her name appearing in a domain name, but Glenn Beck just found out the hard way that that tactic fails in the face of the First Amendment.  So please, it must have been a very troubling period for you, with everyone around you trying to give advice, but really, amid all the turmoil, I think this was pretty low on the priority list.  Now that you’ve admitted to having no intent to use the mark as required to support a registration, the wisest course would simply be to let the application become abandoned.  Just my .02.

An interesting side issue for trademark geeks is that this application provides yet another example of PTO inconsistency in prosecution.  Where the mark at issue consists of what appears to be a person’s name, and that name doesn’t match the name of the applicant, the examining attorney is supposed to inquire whether the applicant is the person identified by the mark.  (TMEP 1206.04(b) – Names Must Match. Consent may be presumed only where the name in the mark matches the name of the signatory. If the names do not match, the examining attorney must issue an inquiry. For example, if the name in the mark is J.C. Jones, and the application is signed by John Jones, the examining attorney must inquire whether J.C. Jones is John Jones. If applicant states that J.C. Jones is John Jones, consent is presumed. The statement that J.C. Jones is John Jones may be entered by examiner’s amendment, if appropriate.)  Here, the applicant is Jennifer Sullivan Sanford, but the examiner issued no such inquiry.  She was probably too excited to have found this newsworthy application on her plate.

Call it by its name, damn it!

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.

    

 

Apple? Overreaching again?

You be the judge.

As one of the commenters to the linked post suggests, Apple in the past has not been a paragon of originality.  But that’s not the point here.  In this case, it is plain to see that the two designs at issue are not remotely confusingly similar, and neither are the businesses they designate.  Had Woolworth’s adopted an identical apple as its logo, perhaps an action would lie for dilution of a famous mark (and I am not in any way purporting to address Australian law).  But that’s not the case, and Apple once again reaches too far and sets itself up for criticism like this.

The preceding post was written on an Apple computer.  So there.

Thanks to Uncle Paul for sending this my way.

Just some reminders . . .

(1) Winning a claim of trademark infringement is a lot easier when there’s some similarity between the marks; and

(2) Recipes and concepts are not copyrightable.

Rebecca Tushnet provides an excellent analysis of the court’s findings in her summary of the Jessica Seinfeld cookbook decision (and do I have to say again that I hate when copyright infringement is referred to as plagiarism?)  The side-by-side photo of the two cookbooks’ covers says it all.  I’m relieved that the court ruled the way it did.

But getting to the nitty-gritty: Camouflaging healthful foods to get nutrients into kids?  Oy, have I nothing better to do with my day?  We found that a steady diet of Food Network was the best way to get the kids to try healthful foods (Michael Chiarello was their favorite, for no identifiable reason) – as well as involving them in the cooking process.  Of course, they now count sushi, steak grilled rare and Dungeness crab among their favorite dishes, but I’d prefer that to mac ‘n’ cheese any day, with or without cauliflower in it.

P.S. though to Ms. Seinfeld – “Get your kids eating good food” is about the weakest tagline I’ve ever heard.  Did you really have to put the “tm” bug on it?

Edited to add that Marty has posted the decision at the Trademark Blog.

Complaining about the noisy neighbors on board the Titanic

If, as Slate predicts, the cupcake boom will soon go bust, why does one of the larger players in the cookie jar insist on bullying its competitors over weak trademark claims?  Honestly, “sprinkles” is weak in the ice cream and frozen yogurt field – not to mention generic of the stuff that is, ahem, sprinkled on top of cupcakes, ice cream and frozen yogurt (I’ll add a “duh” in case my teenage daughter reads this one).  Add to that what appears to be some aggressive attempts at enforcing their allegedly distinctive concentric circle design (hello? FUNCTIONAL, just look at this chart, not to mention the comments here), and you’ve got a company that’s giving itself some terrifically negative press in an already tight market.  To wit, from this blog:

It’s a giant sprinkle. If your cupcakes taste good you should have
nothing to worry about. Also – like I said – IT”S A GIANT SPRINKLE. I
mean I know we live in a day and age where branding is super important,
but when it comes down to it, the people that would mix the two
companies up aren’t coming to shop for your name anyways [sic], they’re
probably coming because they want some cake and you’re nearby.

What may really be happening here is that Sprinkles Cupcakes has no chance of stopping the most recent defendant’s actual use of Sprinkles – a Google search turns up many ice cream and yogurt shops all over the country with Sprinkles in the name, many of which I’m sure long predate Sprinkles Cupcakes’ use of the term (and could come back to bite them in the frosting when they undertake their prospective national expansion, as well as when they try to register the mark for ice cream, I might add).  IMHO, it looks like the cupcake folks may, however clumsily, be trying to protect the PTO register from the incursion of other owners.  While that goal is legitimate, there may be a gentler way to achieve it while also maintaining corporate goodwill in a competitive but risky environment.

Also, tachlis: if you want to be the Starbucks of cupcakes, choose a more distinctive name, okay? 

P.S. I recognize that I have in the past lauded one-word restaurant/retail establishment names and am trying to rationalize my reaction to Sprinkles as compared to, for example, Chipotle or Garbanzo.  I think it comes down to two things: (1) Sprinkles has been a common name for ice cream “shoppes” for years before Sprinkles Cupcakes came on the scene; and (2) THEY’RE SPRINKLES!  RIGHT THERE ON TOP OF THE CONES AND CUPCAKES!  HOW MUCH MORE OBVIOUS COULD IT BE?

Okay, I think it’s time for a break now!

H/t Leslie Blythe Miller – chef, food blogger, and longtime partner in crime.


I don’t mind if you Bing me up.

I have a confession to make.  I can be kind of  – well, rather – no, in fact, quite annoyingly doctrinaire about certain matters.  Certain trademark matters, to be precise.  So if you know me well, you’d think that I’d have recoiled in horror at Steve Ballmer’s affirmation that he wants Microsoft’s new Bing search engine to “verb up,” i.e., to be usable as a verb, as in “I Binged ‘Colorado wineries’ and came up with some good places for our road trip this weekend.”  (Stay tuned!)  Why heavens, doesn’t that violate the cardinal rule of trademark protection – Don’t use it as a verb or as a noun, but always as an adjective with a descriptor.  Yes, it does violate that rule.  But that rule could use a bit of clarification, and Bing provides an excellent example for us to examine. 

First of all, we need to look at the product or service Bing identifies.  It’s a search engine.  The search engine business is well over a decade old, and the generic term “search engine” is well-established in the industry.  Microsoft’s competitors in the search engine area won’t need to use “Bing” to identify their search engines any more than Microsoft needs to use Google to identify its search engine.  Second, Bing is an arbitrary mark, which makes it highly unlikely that its competitors would need to use it to identify any aspect of its business.  Finally, unless I’m reading them wrong, I see nothing in Microsoft’s promotion of Bing that suggests that its functionality is something other than as a search engine; rather, it merely appears to be promoting Bing as “a new breed of search engine” or as a “decision engine.”    So if it’s still a search engine, I don’t see that “Bing & decide” weakens the trademark strength of Bing. 

Where do we have these problems?  When a company creates a completely new product category, selects a descriptive mark, and fails to create a generic term for the product to take the stress of the descriptive brand name.  Yes, I’m looking at Rollerblade and Frappuccino – have “in-line skates” and “blended beverage” caught on all that well?  I may sound like a broken record but remember: Kleenex and Xerox are coined marks, and that’s why you never hear Scott Paper advertising its “kleenex” nor Ricoh advertising its “xerox machines.”  That doesn’t mean coined marks are never at risk for genericness – aspirin is a great example.  But don’t forget the generic term!  You adopt descriptive marks or portmanteau words like RollerBlade and Frappuccino as trademarks for new product categories without a generic term at your peril, regardless of how clever your marketing department may be for coming up with the term.  Whether we are talking about the Bing search engine or the cutesier “decision engine,” I am happy to grant Microsoft a lot more leeway in how it uses Bing.

So not that you need my blessing, but have at it with Bing, Steve.  It’s a good mark for a product in an established category.

(These are not Colorado cherries but they are Bing cherries; I’ll report back with what the western slope of the state offers both in terms of produce and trademarks soon.)

Ceci n’est pas une pipe

John Welch at the TTABlog (nice to have met you in Seattle, John!) posted today a discussion of the TTAB’s recent decision in In re Helen Trimarchi and Michael Merr, where the Board took up once again the doctrine of foreign equivalents.

The issue here was whether a prior registration for GO GIRL for clothing could bar the registration of ALLEZ FILLES!, also for clothing.  Heaven forbid the PTO should rely on an actual English-French Larousse to find a definition, or even on a French speaker – no, the examiner refused registration under 2(d) based on a Babel Fish translation of ALLEZ FILLES as “go girls.”  Well, technically, yes, but in actual French?  Non.  Allez does mean go, and filles does mean girls, but if you asked an actual French person (or a French major such as yours truly), you would be met with a Gallic shrug of contempt for a stupid American product name that does not translate into anything that makes sense in French.  Now, “allez les filles,” is a real phrase in French – one that I’d use, for example, in a cheery sing-song voice when attempting to herd my girls into the car in the morning, a la “Let’s go, you lazy slugabeds!”  It does not, however, mean “go girl,” or even “you go girl,” which are used more to acknowledge accomplishment, as in “You just scaled that climbing wall at REI in 20 seconds – you go girl!”

So with my actual competence in the French language, I’m mystified at Judge Drost’s dissenting pronouncements in this case of the significance the mark ALLEZ FILLES purportedly conveys to people familiar with the French language:

It should be assumed that people familiar with a foreign language will
translate the words in that language unless there is a specific reason
for not translating the term, such as the term is the name of another
noteworthy object or it has another recognized meaning in the language.

How about the fact that the term has NO recognized meaning in the language?  Thankfully, the majority opinion got this correct:

In view of the lack of equivalency based on the nonsensical translation
from a grammatically incorrect French phrase and the idiomatic meaning
of registrant’s mark, we find that any similarity due to the literal
translation does not outweigh the stark differences in sound and
appearance and does not create an overall commercial impression that is
confusingly similar to GO GIRL. Thus, taking into consideration the
vast differences in sound, appearance, and overall commercial
impression, and the lack of equivalency in meaning, we find the marks
to be dissimilar.

Where an arguable foreign language translation of a mark differs dramatically in sound, appearance, and commercial impression from the prior registration, as ALLEZ FILLES does here, I’m happy to live and let live. I’m more comfortable reserving the doctrine of foreign equivalents for preventing applicants from registering generic terms in a foreign language – the old Weiss Noodle precedent, or from preventing applicants from registering a phonetic equivalent of a competitor’s mark in another language.  And I can see an arguable dilution angle as well, say, if a company sought to register MICROSUAVE for software.

But what I think is most important here is that the PTO should rely less on soulless computer software for its translations and more on real live people who speak the languages sought to be translated.  Case in point: Babel Fish translated the title of this post as “this n’ is not a pipe.”

And everyone knows, it’s not a pipe – it’s just an image of a pipe.

 

We now resume our regularly-scheduled programming

I am still recovering from first, my eldest daughter’s bat mitzvah, and second, fast on the heels of the first, the INTA annual meeting in Seattle.  Hence the woefully-infrequent blogging.  I feel privileged to have been counted among the bloggers present at the Meet the Bloggers event hosted by Mike Atkins of Graham & Dunn, and as you can see by the photo Mike posted, being short has its perks: The vertically-challenged among us were hustled to the front of the crowd for greater visibility, so there I am in all my petite glory.  It was great to have the opportunity to meet so many fellow bloggers and enjoy Graham & Dunn’s offices and hospitality.  The conference was a good one – lots of interesting and relevant topics, and as always, a chance to catch up with old and new friends.  As I move into the second half of my twentieth year of practicing trademark law, I am grateful to INTA for providing this opportunity to ensure that these friendships remain vibrant.

And just to save this post from being embarrassingly maudlin, here’s a post by Nancy Friedman on incorrect apostrophes in brand names to which I can add nothing but “what she says.”

Hooray for common sense!

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!)

The feta cheese precedent

Found this tidbit about a Lebanese plot to attack Israel over misappropriation of tasty food items on Above the Law.  This article is an amazing example about how intellectual property rights and decisions relating to them can be misconstrued at every level – from the party seeking vindication of a right to the media reporting on the topic. 

The article and the assertions in it are simply inarticulate.  There is a reference to a “food copyright”; a reference to foods that “the Lebanese considered their trademarks”; the notion that an EU decision on feta as a geographic indication is precedential in Lebanon and/or Israel (it could be – but I couldn’t find any authority to support it); and the claim that because foods such as tabouleh, kubbeh, hummus, falafel and fattoush had been produced in Lebanon prior to Israel’s establishment, Lebanon has the right to be their sole producer.  (Since Lebanon attained statehood only five years before Israel did, and those foods were clearly being made in those lands (and others) perhaps even centuries before the establishment of today’s borders, this claim is feeble). The conclusion that “the Lebanese Industrialists Association is working on registering all the foods and ingredients and submitting a report to the Lebanese government since only it can appeal to the international courts against Israel and ‘prevent it from stealing the foods that others produce'” — well, it’s breathtaking.

Can’t we all just get along and enjoy a good meal?

What they said – and then some.

Mike Atkins points to this Inside Counsel article on the TTAB’s crackdown on overly broad — and thus fraudulent — statements of use in registrations and renewal applications.  Hallelujah, I say.  If a trademark registration in the US is to be worth the paper it’s written on, it should cover only those goods and services on which the trademark owner can show actual use.  But while everyone is worrying about audits and ensuring they’re not caught on the next renewal, how do we prevent the problem in the future?

Well, how about filing the original application only for those goods or services the mark is being used with?  Sounds crazy, no?  Alternatively, file your ITU applications broadly — but when the time comes to file a statement of use, how about knocking out those items on which the mark isn’t being used?  It could workSimilarly, when it comes time for the 8 & 15 or renewal filings, don’t just ask the client if the mark is in use, give them a checklist to tick off each item or service, and advise them of the risk involved for saying something’s in use when it’s not.  This is not magic here.

But still, how did we get to this point?  My guess is that somewhere along the way US trademark practitioners started filing unreasonably broad identifications in their US clients’ applications, maybe because of section 44 envy (oh, those class headings!), and because they could tell their clients that gave them “broader coverage.”  But that long laundry list isn’t better (and from my past experience, who really needed to include athletic supporters among the promotional items bearing a media company’s mark anyway?) if you actually need to enforce one of those registrations against a competitor — who turns around with a counterclaim for cancellation and fraud.

What I think has changed over the past few years that others haven’t yet raised is that the Internet has made it extremely simple to verify the bona fides of a particular registration.  If my client’s application is being held up by an older registration with a laundry list of goods, I’m almost guaranteed the ability to track down an item listed in the registration that’s no longer being sold, contact that registrant or its lawyer, and advise them of their registration’s vulnerability, and get a consent for my client’s application.  But that’s fine, in my book.  Nothing wrong with keeping us honest, especially where there are declarations under oath involved, right?

I always say that a trademark registration is not your corporate mission statement;  neither is its purpose to reflect the full product line to which your company aspires.  It is a snapshot of a particular state of the world at a certain time.  If there is a purge and certain party members fall out of favor, do yourself a favor and purge those members from the list of goods.

(I think I need some metaphor therapy, stat!)

Next stop in the ranting express: Registrations for promotional items.  Betcha can’t wait!

Marketing 1, trademark lawyers 0

Introducing JetBlue’s new slogan: Happy Jetting!  With website sections titled “Are you a flyer or a jetter?” “The Rise of Jetting,” and statements like “JetBlue brings humanity back to the skies with a new form of aviation called ‘jetting,'” “Explore the many ways of jetting,” and a triumphant phallic-appearing announcement that “Today Jetting Rocks,” JetBlue is clearly trying to generate enthusiasm in a hungry, thirsty, crowded, tired, smelly and overcharged flying public. 

From a trademark perspective?  Not so much.  In fact, they’ve pretty much violated every rule in the Jessica Stone Levy book of trademark selection.  JetBlue has: (a) taken a colloquial term used in the English language by consumers of the services; (b) defined their view of “jetting” exhaustively in marketing materials;  and (c) used other formatives of the word (e.g., jetter).  If,  for example, a competitor were to use a slogan like “I jet around,” or “Jetting off to Cabo was never easier,” and JetBlue sued, I’d say those three actions above would be Exhibit A in that competitor’s defense.

This campaign reeks of the trademark-antithetical “branding initiative,” launched by marketers with little concern for the practical aspects of securing trademark registration and more importantly, of acquiring and enforcing trademark rights.  Paradoxically, after reviewing Jet Blue’s full website, I think the campaign is actually quite clever and entertaining, and if Jet Blue can be the rising tide to lift planes (?) in this horrible market, more power to them.  Just don’t think that you can then turn around and be a trademark bully with the trademark rights equivalent of a pair of batacas.