Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Monday Night Football

Posted in Brands, Trademarks

Last Monday, Pro-Football, Inc. petitioned the U.S. Supreme Court to hear its case (Pro- Football, Inc. v. Blackhorse) before the Fourth Circuit Court of Appeals rules on it, but only if the Supreme Court grants certiorari in Lee v. Tam. Asking the Supreme Court to take a case before the Circuit Court of Appeals renders its decision is really rare. Almost as rare as my having anything to say about sports. Which should soon be obvious, if you keep reading.

As a reminder, here’s the line-up: Pending before the U.S. Court of Appeals for the Fourth Circuit is Pro-Football’s appeal from a district court decision affirming the TTAB’s decision to cancel Pro-Football’s registrations for various marks that include the term “Redskins” on the ground that such term violates the anti-disparagement clause (Section 2(a)) of the Lanham Act. Pro-Football’s case has been fully briefed and the parties had been waiting for the Fourth Circuit Court of Appeals to schedule oral argument.

Ms. Blackhorse et al believe this would be preferable to the current team name.

Ms. Blackhorse et al believe this would be preferable to the current team name.

Meanwhile, last week in Lee v. Tam the director of the U.S. Patent and Trademark Office asked the Supreme Court to grant certiorari to review the Federal Circuit’s en banc decision invalidating the anti-disparagement clause of the Lanham Act on constitutional grounds, vacating the TTAB’s affirmance of the examining attorney’s refusal to register the mark “The Slants” (because it violated Section 2(a)), and remanding the case to the TTAB. Pro-Football filed its petition for certiorari less than a week after the director of the PTO filed the petition in Lee v. Tam.

It is rare for a party to leapfrog a court to seek review at the highest level, but occasionally one goes directly from high school to the big leagues. Pro-Football explains why its case should be heard as a companion to Tam, and in doing so it scores some good points. But it does such a good job, the Court may be disinclined to deny certiorari to Tam.

Michelle Lee: PTO Director

Michelle Lee: PTO Director

Allowing Pro Football’s case to be heard as a companion to Lee v Tam would provide the Court with an expanded view of how and when Section 2(a) may be applied. While Tam encountered it during the application process, Pro- Football has encountered it during cancellation proceedings commenced years following registration. Moreover, Pro Football makes some arguments in support of its case that Tam did not (such as vagueness and due process arguments) and Pro-Football has preserved certain positions that Tam conceded (such as the nature of the speech at issue). Additionally, Pro-Football proposes a construction of Section 2(a) that would allow the Court to avoid a constitutional issue.

But in some respects, it seems Pro-Football simply cannot stand to be sidelined, watching someone else when it has spent so many years crafting its arguments and preparing for the highest court in the land.

I would not be surprised if the Court chose to hear Pro-Football, Inc. v. Blackhorse as a companion case to Lee v Tam. But it remains to be seen whether Pro-Football’s Hail Mary petition will mark the end the losing streak the team experienced before the lower courts in its case.

America’s Prince

Posted in Brands, Copyright, Trademarks

images

The legal legacy of The Artist Formerly Known as  Prince_logo.svg is impressive; we’ll miss his fabled stories and exploits.  Years ago, we posted about the background dispute behind Prince’s fight with his label that resulted in his name change from Prince Rogers Nelson.

But these quirky stories aren’t what I find to be so impressive.  Instead it is the lack of information available about him on the Internet, especially for someone that famous who made his living from copyrighted works.  Nowadays Google is pretty on point for most topics; but not Prince.  My searches for legal disputes involving Prince review the well-known dancing baby “Let’s Go Crazy” lawsuit and the Facebook fan suit.  In fact most of the search results are actually around Richard Prince  (intriguing, but basically antithetical to Prince).

When I started researching this topic, I expected there to be more?  Then again, it turns out that it is very difficult to find Prince’s music on current social media sites.  Is that the genius of Prince?

We know he didn’t allow reporters to video or record him.   He was also quoted as saying “if you don’t own your Masters, your Masters own you.” It would seem that Prince did a much better job controlling both information about himself and music than I certainly ever imagined.  It also means it can be done.  Few people had as much content as Prince.  It would also appear that few people as much control over their messaging as Prince did.  Certainly England’s princes do not; Prince Harry alone may be responsible for pushing Prince’s bad press to the bottom of Google’s searches.

Another interesting side effect of Prince’s nearly ten years as Prince_logo.svg is that ten years of his career is basically invisible to Internet searches (other than as the Artist Formerly Known as Prince). He also gained additional advantages over his symbol as a trademark: not only is an unusual symbol one of the strongest types of trademarks, but also it is very difficult for people to infringe or dilute.  There simply is no good way to use Prince_logo.svg in a sentence.  He also registered the symbol as a trademark to provide himself more control over it.  An added benefit is that the symbol was also protected by copyright as an artistic expression.

I’m not suggesting that you change your name to a symbol or that you adopt Prince’s level of control over his brand.  However, there are certainly some lessons we could all learn from his brand and content control.

Prince, we’ll miss your quirky ways and your unique music.

 

 

“Stairway to Copyright Infringement”- Step Two in Spirit’s uphill climb to prove Led Zeppelin’s ‘Stairway to Heaven’ infringes its copyright

Posted in Uncategorized

Trademarkology wants to give a shoutout to our sister blog OP-IP and its recent post on copyright infringement. OP-IP can be found here: http://op-ip-law.blogspot.com. We suggest you subscribe. In the meantime, check out Stephen Weyer’s most recent post:

Followers of this blog and classic rock fans everywhere with a keen interest in the nuances of copyright infringement will recall that Led Zeppelin is being sued by the band Spirit for copyright infringement based on Zeppelin’s immortal song which Spirit alleges lifted portions from its guitar instrumental, Taurus.  The judge in the infringement suit has just now cleared the way for the ‘Stairway to Heaven’ copyright case to proceed to trial next week (reported on WTOP.COM).

This morning, I again listened to both the introduction of Zeppelin’s Stairway to Heaven and Spirit’s Tarsus instrumental (links to both at the bottom of this post).  While there are similarities, there are differences as well.  As one commentary to my original post put it, the Spirit instrumental is a standard chord progression whereas the introduction to Stairway to Heaven is much more than that.

The group, Axis of Awesome, very creatively demonstrated that a series of four chords makes up hundreds of popular songs, tens of which are featured in their song “Four Chords” (link below).  Yet most would agree that each of the songs featured are themselves unique creative works.

Turning to substance of the debate, does “Stairway to Heaven” infringe Spirit’s Taurus guitar instrumental?  In order to infringe an original work’s copyright, the alleged infringing work must be deemed “substantially similar” to the original work and the alleged infringer has to have had “access” to the original work.  In this case, “access” would not appear to be an issue as Led Zeppelin and Spirit toured together in 1968 and 1969.

Below are links to YouTube clips from Spirit’s “Taurus” and  Led Zeppelin’s “Stairway to Heaven.”  See if you think that the opening notes in Stairway to Heaven are substantially similar to the middle guitar instrumental in Spirit’s “Taurus” (e.g. starting around 0:43).  Since most are familiar with the iconic guitar progression in “Stairway to Heaven,” I present Taurus first.  Please let OP-IP know what you think.

 

Unfair Competition is Such a Headache

Posted in Trademarks

This week, in Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, Appeal No. 15-2335 (March 23, 2016), the U.S. Court of Appeals for the Fourth Circuit held that the Lanham Act permits plaintiffs to bring false advertising, false association, and trademark cancellation claims in the U.S., even if those plaintiffs do not themselves own a U.S. trademark registration or use the trademark in the U.S.

While this case is of interest to trademark practitioners generally, we were especially excited to see this decision issue because it is consistent with the outcome advocated by resident Trademarkologist Jennifer Kovalcik, who prepared the amicus brief on behalf of AIPLA.

Way to go, Jen!

Way to go, Jen!

The background facts and procedural details of the case are enough to give anyone a headache, so we will cut to the chase: Bayer Consumer Care AG and Bayer Healthcare LLC (collectively, “Bayer”) petitioned to cancel the U.S. registration for FLANAX owned by Belmora, LLC (“Belmora”). Bayer owns rights in the mark FLANAX in Mexico and has made millions of dollars of sales of naproxen sodium under that mark there over several decades. It does not use FLANAX in the U.S. (here, Bayer sells the ALEVE product). Belmora began using FLANAX in the U.S. just over ten years ago, and owns a U.S. registration for the mark. Bayer accuses Belmora of engaging in deceptive trade practices and unfair competition by falsely associating its product with Bayer’s FLANAX product and by false advertising. For example, Bayer accuses Belmora of adopting packaging that is very similar (if not identical) to the packaging for FLANAX Bayer uses in Mexico, for telling consumers that “now” FLANAX is available in the U.S., and otherwise implying that the FLANAX product in the U.S. emanates from the same source as the FLANAX product in Mexico.

 

flanax1               flanax2flanax3
Bayer’s FLANAX product                           Belmora’s FLANAX product

After the TTAB granted Bayer’s cancellation petition, Bayer sued for unfair competition in district court and Belmora appealed the TTAB decision to district court. The cases were consolidated and district court dismissed all of Bayer’s claims. Bayer appealed, and this week the U.S. Court of Appeals for the Fourth Circuit vacated the judgment of the district court and remanded the case for further proceedings.

The Court held that the plain language of Section 43(a) of the Lanham Act does not require a plaintiff to use its own trademark before it can bring an unfair competition claim under the statute. Rather, it is the defendant’s acts (the ones that allegedly constitute false advertising or false association) that must occur within commerce Congress may regulate before a plaintiff can bring a claim. The plaintiff only needs to believe that it is likely to be damaged by the defendant’s acts. And if pain medicine cannot remedy the injury, the plaintiff is likely to seek relief from the court.

Having decided that ownership and use of a mark in the U.S. was not a threshold requirement, the Court then had to determine whether the acts of unfair competition that Bayer alleged fell within the Lanham Act’s protected zone of interests and whether Bayer had satisfactorily pled that those acts proximately caused it injury. The Court determined that Bayer satisfied these prongs.

The Lanham Act makes the deceptive and misleading use of marks in commerce actionable, and it protects those engaged in commerce against unfair competition, so Bayer’s claims fall within the statute’s protected zone of interests. Bayer claimed that Belmora falsely associated its FLANAX product in the U.S. with Bayer’s FLANAX product in Mexico, which encouraged consumers to purchase FLANAX in the U.S. instead of in Mexico. Bayer also accused Belmora of false advertisement by deceptively implying that its FLANAX product was the same as the one found in Mexico. This encouraged consumers to purchase FLANAX from Belmora instead of ALEVE from Bayer in the U.S. In both cases, Bayer alleged that the acts of unfair competition proximately caused it injury in the form of damage to sales or reputation. The same reasoning applied to Bayer’s cancellation claim.

In light of the foregoing, the Court found that the district court erred in dismissing Bayer’s claims. Bayer should have a chance to prove its case. So the Court vacated the district court’s decision and remanded the case to district court.

This does not mean that Bayer owns the FLANAX mark in the U.S. Rather, Belmora does. Also, the Court’s decision was not based on the well-known marks doctrine[1] or Section 44 of the Lanham Act (which implements the Paris Convention), but rather, the plain meaning of Section 43(a) (unfair competition) and 14(3) (cancellation) and recent Supreme Court decisions. In fact, the Court emphasized that this was not a trademark infringement case. So owners of trademarks outside the U.S. should not conclude from this decision that their marks will be protected in the U.S. just because they are protected elsewhere or are well-known. Registration and use of marks is still important for protection in the U.S., even if not required for bringing unfair competition claims.

The case is far from over. Having won the right to bring its claims, it remains to be seen whether Bayer can prove them.

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[1] The well-known marks doctrine is a doctrine that would protect foreign brands against harm to their reputation in the U.S., even if those brands are not registered or use in the U.S.

When Brands Go Bad

Posted in Brands, Trademark Basics, Trademarks

Have you ever looked at a product and thought, “what an awful name”?   If you did, I bet you did not buy that product.  A good name for your business or product is essential to success.  The recipe for finding this golden nugget involves equal parts creativity and research.  On the creative side, you have to have a mark that distinguishes you from your competitors.  Brands that merely describe the kind of business you are, your location, or what you do are generally too descriptive to be protected.  The more descriptive a name is, the greater the chance that the same or similar description is being used elsewhere by a competitor.  Choose a memorable, distinctive name, and leave the description to your byline or website.  If you invest in creativity, you’ll end up with a much stronger brand and greater ability to distinguish yourself in online search results.  Then, do your research and make sure your chosen name does not have an unfortunate translation or negative connotation.

For example, you might not want to name your product after a term that is associated with a global disease.  [Sorry, if I dashed your hopes of naming your new widget EBOLA.]   Tata Motors, the largest automobile company in India, announced early this year plans to launch a new car called  ZICA.  They reportedly chose the name ZICA as a short form for the phrase “zippy car.”  They failed to associate ZICA with the global spread of the Zika virus.  Despite the investment already made in commercials featuring prominent professional sports figures, Tata Motors scrambled to change gears and renamed the car.

bike

 

Here are three steps you should take to avoid this problem and find a strong, protectable trademark:

  1. Conduct a Trademark Clearance Search

Start with a trademark clearance search to make sure that your brand is not already taken.  You can conduct the first wave yourself through Google or other online search. If the mark looks clear, an experienced trademark attorney can assist you with a more thorough search, including sources from federal registrations, state trademark registrations, trade publications, online resources, and other databases.  Prior use of a similar mark for related goods or services – even if not registered – can create superior rights to a mark and present a risk of infringement to your company.

  1. Ensure Availability as a Domain Name & Business Name

You should also confirm whether the mark you want to use is available as a domain name and business name.  In this regard, make sure you are notably different than other URL’s or business names in your state.  Be aware that business names and domain names can be registered with even one character differences.  If you have a business name registered and the URL, you could still be infringing another person’s registered trademark.  They are different animals.  The fact that a name can be registered, however, is not a confirmation that it should be used.  Most state business filing offices and domain name registries to NOT perform a trademark search or make any determination of whether a trademark is appropriate.  Therefore, for best clearance results, you have to look at both.   You also don’t want to spend money on a trademark registration only to find out that some yahoo has the domain you want and is suddenly willing to sell it for $50,000.

  1. Pass the Smell Test

Finally, make sure your mark doesn’t stink because it has another unfortunate meaning or connotation you don’t want associated with your brand.  Translate your name into other common languages, and make sure your mark is not going to be associated with something negative in your current market and your likely expansion market.

nova

Chevy is reported to have flopped in Latin America with its NOVA because “no va” can be translated in Spanish to mean “it doesn’t go.”  Luckily for Chevy, this is an urban myth.  They actually had reasonable sales in Latin America.  The single word “Nova” has other meanings and connotations and is not immediately translated into the two-word phrase “no go”.  The myth does highlight translation risks which should be considered when picking a mark.  For you millennials, Chevy Nova’s were sold during the 1960’s through the 1980’s before you were born.  The Nova has made multiple appearances in movies and TV series, and is even rated by IFC as one of The Ten Coolest Cars in Movie History for its appearance in the action-horror movie  Death Proof (2007) directed by Quentin Tarantino.

death

 

The Zika virus has been associated with other horrors, and many consumers could associate the new ZICA car with those negative connotations in vast contrast to the positive messaging of the ZICA “It’s Fantastico” advertising campaign.  Tata Motors announced the new name of the ZICA car will be TIAGO –a masculine first name of Portuguese origin that translates to “James” in English.

KYLIE Who? Minogue and Kardashian Claim Rights to KYLIE

Posted in Uncategorized

Two B-list celebrities are battling for rights in the mark KYLIE. Kylie Jenner filed applications to register the mark KYLIE in connection with a large number of goods and services, and, last week, Kylie Minogue has opposed registration to Kylie Jenner’s registration of “advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others.” You’re probably familiar with Kylie Jenner. These days, how could you not be? Jenner is the up and coming fashion model and younger sister of Kim Kardashian who frequently sports some variant of turquoise hair.  kylie jenner

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Florida judge “refuses to put a bazooka in the hands of a squirrel” in uber fight

Posted in Trademark Basics, Trademarks

Judge’s words, not mine. 

UBER and UBER PROMOTIONS are facing off in Gainesville, a city rated “5th meanest city” by the National Coalition for the Homeless, twice.    

This is a sad and preventable story of a small company that didn’t bother to file a trademark registration.  The small company asked a judge to stop the big company from operating in Gainesville pending a trial on the small company’s infringement claims against the big company.  The Judge’s order his here.    

The big company is Uber Technologies, Inc. (“Big Uber”).  Big Uber arranges ride shares in private vehicles.

The small company is Uber Promotions (“Little Uber”).  I don’t really understand what Little Uber does.  A quick look at Little Uber’s website leads me to think it might be part party bus service, part event planning and part escort service, maybe?  I don’t see a clear theme from the services on the website; I see:

an odd t-shirt (Promotional Products),Screen Shot 2016-02-25 at 9.42.57 PM

a martini glass (Nightlife),Screen Shot 2016-02-25 at 9.43.37 PM

a silhouette of a dancer (Event Photos),Screen Shot 2016-02-25 at 9.44.09 PM a scantily clad lady (Modeling), Screen Shot 2016-02-25 at 9.44.18 PM

green hands typing (Web Development), Screen Shot 2016-02-25 at 9.44.37 PMa camera (Professional Photography), 
Screen Shot 2016-02-25 at 9.44.43 PMJohn’ Doe’s business cards (Printing Services), Screen Shot 2016-02-25 at 9.45.03 PMyellow school buses (Transportation), Screen Shot 2016-02-25 at 9.45.10 PMa calendar (Special Events).Screen Shot 2016-02-25 at 9.45.18 PM

Little Uber started operations in 2006 in Gainesville, but never registered a federal trademark for the services it provides under that mark.  By contrast, Big Uber registered its first federal trademark (UBERCAB) August 31, 2010.  I won’t get into the details here, but the judge decided that UBERCAB and UBER are essentially the same mark because CAB was not a protectable part of the original trademark.

Trademarks typically follow the rule that the first to use a mark has rights in the mark.  So after operating for about 4 years, Little Uber had developed some trademark rights based on its actual use in and around Gainesville.  However, a magical thing happened when Big Uber received its trademark registration: Big Uber was considered to have trademark rights across all of the United States (except for places where a prior user had existing rights). On the flipside, Little Uber was forever cut off from having rights to the mark outside of where it was operating when Big Uber’s mark issued (and its zone of reasonable expansion). Note that after the lawsuit initiated, Big Uber introduced a new UberEVENTS service, which is basically a ridesharing program where all guests at an event can use a single code to get rides home. The opinion discusses that this new service seems closer to at least one of Little Uber’s services than Big Uber’s straight ride share service. The opinion gives a lot of detail weighing the rights of the two companies and weighing the factors involved in determining trademark infringement if you are interested.

The preliminary results gleaned from the decision (until trial provides a final result):

Little Uber has no rights to the UBER mark outside Gainesville for things transportation related and must post a $10,000 injunction bond.

Big Uber must get a local telephone number in Gainesville and figure out a way to avoid reaching customers in certain specific ways on Facebook or web searches (not exactly sure how they will do this) and delay introduction of UberEVENTS service until after trial.

So what may likely have been a relatively inexpensive trademark registration back in 2006 seems to be turning into an expensive debacle for Little Uber.

Win or lose, the moral of this story is “Don’t be a Little Uber.”  Register your trademark early and don’t expect a judge to put a bazooka in your hands later if you don’t.

Jeb and Trump Duke it Out Over a Domain

Posted in Uncategorized

The Town Hall isn’t the only place Jeb and Trump are fighting this week. Go to jebbush.com. See what happens. Surprised to see this:

TRUMP website

We knew Trump fought dirty, but we didn’t know he fought with trademarks too. If you’re looking to support Jeb!, you now have to visit jeb2016.com:

JEB website

Someone in camp Jeb! forgot to renew Jeb’s domain name registration for jebbush.com when it expired last November. Team Trump noticed, registered the domain, and redirected the domain to donaldjtrump.com.

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Presidential Marks

Posted in Patents, Trademarks

President’s Day is around the corner. It is observed for only 24 hours. But those who aspire to the oval office demand our attention every day until November 9, 2016. So let’s take a look at the marks they are using to communicate with the electorate and the related applications.

Jeb Bush.

BHAG LLC (a company identified on Jeb Bush’s financial disclosure form) filed an intent-to-use application to register JEB! on January 16, 2015. Below are pins showing the mark in use:

jeb

 

 

 

 

 

 

 

I like the Spanish variation (though I’m not sure it’s official):

jeb2

Jeb Bush’s opponents criticize him for lack of energy, so it is unfortunate (if not symbolic) that since November 9, 2015, the application has been abandoned for a failure to respond to an office action. Maybe we will see a petition to revive after New Hampshire….

Hillary Clinton.

HFACC, Inc. filed an intent-to-use application to register HILLARY FOR AMERICA on April 13, 2015. Here is one variation of the mark as used on a bumper sticker:

hilary

 

 

 

Unfortunately, the application is suspended pending disposition of an application filed two days earlier to register the mark HILLIARY:

hilary2

 

 

 

 

 

 

This latter application was doomed to fail since the applicant could not obtain consent from the living individual identified in the mark. Now that it has been abandoned, the Clinton campaign’s application should move forward toward registration.

Donald Trump.

A person of extremes, Donald Trump has filed no fewer than three applications in his own name for the mark MAKE AMERICA GREAT AGAIN. The services covered include political campaign services and fundraising. Defying expectations, these applications are further along in the registration process than those identified above. They proceed undaunted, even in the face of the existing registration for the same mark used in connection with political action committee services and fundraising, which is owned by DTTM Operations, LLC.

They will be published for opposition later this month.

trumo

 

 

 

 

 

This sign greeted Trump when he visited my city last summer.

 

Bernie Sanders.

FEEL THE BERN PAPERS is the subject of a recently-filed intent-to-use application to register the mark for cigarette rolling papers filed by someone who is not running for president. This mark incorporates one of the slogans adopted by the Bernie Sanders campaign, as displayed cleverly (ironically?) on the mug below:

bern

 

 

 

 

 

 

 

But there is no sign that Mr. Sanders or his campaign has attempted to register this tag line or others they are using. They seem to have opted out of the established path to trademark protection. This doesn’t stop them from complaining about infringers. But, true to form, instead of emphasizing property rights, they may admonish the public that buying counterfeit merchandise means there is no guarantee it was made with union labor.

Each campaign slogan, like each candidate, has its own story to tell and faces its own challenges. It remains to be seen who will end up elected, and which mark(s) will end up registered.