Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Watch Out for Trademark Registration Scams

Posted in Registrations, Trademarks, Uncategorized

One of the facts of modern life is that you will be the target of scams. Sometimes it’s the son of the former defense minister of Nigeria. Sometimes it’s someone trying to trick you into paying them money to do something with your trademark.

U.S. trademark registrations have to be renewed every 10 years or they expire. Most trademark owners are somewhat aware of that fact, but many are somewhat vague on the subject and don’t know just what to expect when the time for renewal rolls around.

If your trademark is registered and approaching renewal time, you may well receive a very official-looking notice that seems like it might be from the government and has something to do with paying for renewal of your registration. It may have details about your registration, including the number, the registered mark, and the renewal date.

If you receive such a notice, you should read it carefully – at least the first time; you may get more than one and after a while you will recognize the form. Be aware that the U.S. Patent and Trademark Office will not be sending you an invoice at renewal time. If you used an attorney to register your mark and get something that looks like an invoice that’s not from your attorney, be very suspicious.

There are some common components to these bogus notices. Many of the notices come from senders whose names are tantalizingly close to “U.S. Patent and Trademark Office.” The real U.S. Patent and Trademark Office has a list on its website of “misleading notices” of which it is aware. The list is long, and includes names such as “Patent & Trademark Agency,” “Patent & Trademark Bureau,” and even “Patent & Trademark Office.” You can see the list, along with sample notices, by clicking here.

The notices usually look quite official, as if they might have come from an honest-to-gosh government agency. They typically will have actual information taken from your registration, such as the mark, the registration number, and the opening of the renewal period, all of which is available online. Often they will have a box with a large letter in it, for no apparent reason other than to give a patina of bureaucracy.

They will typically have an offer, in small print, to do something that seems close to renewing the registration. Some recite that by signing and returning the form, you authorize the sender to renew the registration, although they do not appear to have been sent by a law firm, and it’s not clear what actually happens if you return the form and pay the fee. They notably do not ask you to provide the sort of information that would be required to legitimately renew a registration. Some promise to list your trademark in some sort of registry, although since that registry is not maintained by any country or known organization such as the World Intellectual Property Organization, the value of that listing is probably close to nil. Very close. The fees, meanwhile, are typically substantial.

Here are a couple of samples of such notices that clients have received in 2018:

So watch out. And it’s not a bad idea to alert accounts payable, because sometimes these look enough like an important invoice that they wind up there.

Friendly Foes–Trademark Cease and Desist Letters Are Filled with Humor These Days

Posted in Brands, Copyright, Infringement, Trademarks

A familiar adage teaches that one catches more flies with honey than with vinegar. Without in any way implying that infringers are flies, we can apply this lesson to the trademark context. It seems that trademark attorneys enforcing their clients’ rights have really taken this wisdom to heart in recent years. With increasing frequency, trademark cease and desist letters filled with humor and whimsy fill the news.

Most recently, In-N-Out Burger sent a cease and desist letter to Seven Stills Brewery, which had just announced a forthcoming new beer in a can bearing markings very similar to In-N-Out Burger’s logo and the name “In-and-Stout.” Seven Stills also tagged In-N-Out in the announcement.

In-N-Out’s letter was filled with beer puns. Seven Stills posted a copy of it on its Instagram accounts:

Though friendly (and playful) in tone, the letter clearly alerted Seven Stills to In-N-Out Burger’s trademark concerns and invited Seven Stills to work out an amicable resolution. It appears that happened because Seven Stills’ next post about the matter involved a video announcement that its new stout would not appear in a “knock off can you think you saw once” and that the first 100 customers buying the can at the brewery would receive a free In-N-Out burger.

In-N-Out Burger’s letter was witty (note the beer puns), friendly (clearly seeking an amicable resolution), and direct. The letter not only got Seven Stills’ attention, it received the attention of the consuming public. And it offered a pathway to resolution that allowed both parties to maintain their goodwill with the public.

This style of letter seems best suited to enforcing trademark rights against someone who appears to be a misguided but well-meaning fan (or friend) of the offended brand. The first letter I remember hearing about in this genre was from Jack Daniels Properties to Patrick Wensink, the author of a book entitled “Broken Piano for President” whose cover bore a striking resemblance to the Jack Daniels label:

Though it did not contain puns or witticisms, the letter from Jack Daniels Properties was gentle and friendly, acknowledging openly that the recipient was a fan of the brand and finding common ground in his interest in protecting his own intellectual property rights.

At the time this was news (about six years ago), I recall the letter being described as the “most polite” cease and desist letter ever written. In my experience, most trademark lawyers are polite. What makes this letter stand out is how it draws on empathy, both in understanding that the author’s actions stemmed from a love of the brand, and in asking the author to understand Jack Daniels Properties’ need to enforce its trademark rights to preserve the strength of the beloved brand.

Perhaps the fame of the Jack Daniels Properties letter gave some attorneys the idea that getting published could mean more than a journal article (or a blog post). Young lawyers are often cautioned to write cease and desist letters that they wouldn’t mind seeing attached to a pleading filed in court. But did the Jack Daniels Properties letter inspire lawyers to write cease and desist letters they would like to see posted on social media?

After the Jack Daniels Properties letter, we saw cease and desist letters that upped the ante from friendly to witty. Last year, a lawyer from NetFlix sent a cease and desist letter to Emporium Arcade, which had launched a six week pop up bar with a “Stranger Things” theme. As you might anticipate, the letter made many allusions to the ‘80s (and to the show itself):

Again, the letter treats the recipients as the fans they are, trying to coax compliance in a friendly way by keeping them on the brand’s side.

Often when there’s a trademark issue, the marketing department calls the lawyers. Not to shortchange the lawyers on creativity, but in the case of some of these cease and desist letters, I wonder if the lawyer called the marketing department in anticipation that the letter could be a public relations event.

These letters are good illustrations of the old adage quoted above. By remaining friendly in tone, reminding the recipient of their admiration for the brand and enlisting them as an ally in protecting the brand, by injecting levity through puns or humor, these letters may get more cooperation (and more friendly publicity) than the traditional cease and desist and may avoid alienating a brand fan in the process.

Building Brands – LÄRABAR

Posted in Brands, Copyright, Trademarks

Trademarks are everywhere! From the Delta® faucet you use every day, to your favorite Starbucks® treat, and even your favorite G2® ink pen at work (I mean – is there any other acceptable pen?!). Everyone encounters hundreds, if not thousands, of trademarks each and every day! In a boiled down sense, trademarks are just another way of referring to brands. We all have brands that we know and love, but have you ever stopped to think about how those brands came to be?

One of my favorite new podcasts (which is not new, just new to me) is How I Built This®, hosted by Guy Raz and produced by National Public Radio (NPR). The weekly podcast is all about innovators, entrepreneurs, idealists, and the stories behind the movements they built. Since 2016, Guy Raz has had the pleasure of interviewing some big names, such as Mark Cuban, Kendra Scott, Michael Dell, Steven Madden, and L.A. Reid, and has told the stories of how some of Americas’ favorite brands came to be, including Spanx®, Instagram®, Southwest Airlines®, and Starbucks®.

During my binge-listening of the podcast, a consistent theme has emerged: trademarks can really make or break a business and the “trademarkability” of certain words or phrases are how strong brands are built.

For example, I recently listened to the How I Built This® episode featuring Lara Merriken, the creator of LÄRABAR, which Merriken herself describes as a portable and convenient energy bar made of fruit, nuts, and spices, just pure simple real foods that somehow taste indulgent like you shouldn’t be eating them. Nowadays, you can find these healthy and yummy LÄRABARs at almost any grocery or convenience store. However, it’s crazy to think that LÄRABARs almost weren’t LÄRABARs.

As it turns out, Merriken originally planned to name her bars MANABAR because “mana” refers to your vital energy or your chi. However, right before the product launch in 2002, Merriken’s trademark attorney found a problem. There was already a MANNA BREAD trademark registration and, due to both products being in the food industry, Merriken’s attorney thought there may be a likelihood of confusion and recommended that Merriken change the name.

As Merriken was coming to terms with the fact that she had to completely scratch her original idea, a friend said “you know, why you don’t call them Larabars? You make them, they are your bars, and it sounds good and has a ring.” Merriken originally thought no way. However, after thinking about it for a couple of weeks, Merriken finally thought “LARABAR . . . I guess that could work”. And boy did it work. By year two, LÄRABAR had made between $5-7 Million and big companies were taking notice. Merriken was approached numerous times by companies who wanted to acquire LÄRABAR. Then, in 2007, when Merriken was 39, LÄRABAR was finally sold to General Mills (for an estimated $56+ Million).

Merriken’s story is just one of many that shows how naming is one of the hardest and most important things when starting a business and/or launching a product. Working with a trademark attorney to vet a name on the front end can save a lot of money and heartbreak on the back end. If an entrepreneur selects a name that is already in use, common, or descriptive, they run the risk of having their trademark application(s) denied, litigation, having to rebrand, and/or perhaps being limited to a very small geographic scope (which most certainly would affect growth potential). Therefore, to all the existing companies and budding entrepreneurs out there, give us a call and let us help ensure the brands you built are built on a strong foundation.

Oh and if you were wondering where the umlaut (Ä) in LÄRABAR comes from or what it means, well, it doesn’t mean anything at all. Merriken just thought it looked pretty cool!

Registration of State Names as Trademarks

Posted in Brands, Copyright, Infringement, Patents, Registrations, Trademarks

Collegiate licensing is a big deal these days. Lots of alumni and fans of college teams want to wear clothing bearing the marks of their alma mater or their favorite team. Colleges commonly register their critical trademarks and license others to produce goods bearing their marks. Sometimes they have to pursue infringers who sell those goods without permission. Clothing makers pay good money for the right to put college marks on their goods.

The whole system is based on the presumption that the college owns the marks. Without ownership, the college can’t shut down infringers, because there is nothing to infringe. And without the threat of an infringement claim, sellers are not so inclined to pay royalties.

Ownership of the most basic mark, the name of the college, is a simple enough matter if your college has a unique name. But what if your college is the state university? Can you own the exclusive right to put the name of your state on t-shirts, sweatshirts, caps, and other merchandise?

Yes, you can, to a point. First, although people often question how anyone can “trademark” a common word, it happens all the time. APPLE is a common word that also used as a trademark, for example. Apple Inc. can’t prevent others from using the word to identify fruit, but it can prevent others from using it to identify computers and smartphones. So the fact that people get to call the state by its name does not prevent a university from having exclusive rights to use the name of the state of which it is the flagship university in specific ways, as a trademark.

But there are hoops to be jumped through. To be valid, a trademark must be “distinctive,” meaning that consumers recognize it as identifying a particular source of goods or services. One way for a mark to be distinctive is to have nothing to do with the products it is used with. That may be a made-up name, like KODAK, or a common word that is in no way descriptive of the products – back to APPLE computers.

Another way for a mark to be distinctive is for it to have been used for a long time, without substantial competing use, so that the public grows to associate the term with a particular source. Such a term can become a trademark even though it might have been descriptive to begin with. Many of that type of marks are surnames, such as KORBEL sparkling wine (U.S. Reg. No. 1125421), or names that try to convey some desirable quality of the goods, such as KWIK-KOPY for printing and copying services (U.S. Reg. No. 1115789). They can also be geographically descriptive terms, which is how state universities typically get characterized.

To register a term that appears on its face to be descriptive, you have to show that the term has acquired distinctiveness. That’s hard to show, so the Patent and Trademark Office will usually accept proof of “substantially exclusive and continuous use” of the mark for at least five years before you’re making your claim as a sufficient showing. Usually a brief declaration will do, but sometimes the PTO requires more. If you satisfy the PTO, you get your registration based on “acquired distinctiveness” – the idea being that the public has come to know that a product bearing that maybe-descriptive term is yours.

And that is how state universities typically register their state’s name as a trademark. That’s how Kansas did it (U.S. Reg. No. 2073857). That’s how Oklahoma did it (U.S. Reg. No. 4294514).

From sea to shining sea; Washington (U.S. Reg. No. 1601006) to Georgia (U.S. Reg. No. 3031191), universities are claiming exclusive rights to use the name of their state on clothing based on acquired distinctiveness.

      

And a lot of those flagship universities are putting up with other universities using that same state name on their sweatshirts – Washington State (U.S. Reg. No. 1307992) to Georgia Tech (U.S. Reg. No. 1291896). Why that works is a different story.


Credits:

Kansas sweatshirt: Copr. 2016 Laura Gilchrist, available at here (used under Creative Commons BY 2.0 license, (cropped from original).

Oklahoma sweatshirt: Copr. 2006, Bobby Acree, available here, used under CC BY-NC 2.0 license (cropped from original).

Washington and Georgia shirts: specimen files from USPTO records (cropped).

Beloved Brand Nicknames

Posted in Brands, Trademarks

One sign of a prominent, strong, and/or beloved brand is a nickname. Consumers sometimes show their affection for their favorite brands by abbreviating them, elongating them, or creating variations of them. On the flip side, sometimes brand owners create their own brand nicknames, perhaps in an effort to manufacture the desired consumer affection. And then there are occasions where it is hard to tell whether a nickname originated with the consumers or the brand owner itself.

Perhaps the most recognizable brand nickname, “Coke,” was one the Coca-Cola Company eschewed for a long time, as explained here. The company tried to adhere strictly to use of “Coca-Cola” for a number of years. When it finally embraced the term “Coke” in 1941, the Coca-Cola Company launched a marketing campaign to let consumers know that “Coke means Coca-Cola.”

When nicknames for brands develop, they can work their way into popular culture. General Motors’ advertising agency estimated that there are hundreds of songs that refer to or are about Chevys. General Motors owns several registrations for variations on the word “Chevy.” None covers cars or trucks, but one covers toy cars:

Brand owners can run into severe criticism for denying consumers the use of beloved nickname marks. Eight years ago, the marketing team at General Motors tried to pressure the business to use only “Chevrolet” and not “Chevy” when referring to cars. They went so far as to establish a curse-jar to collect quarters for every inadvertent use of “Chevy” (with funds to be used for a team building event). Ironically, the memo explaining the policy cited “Coke” as an example of brand consistency that General Motors sought to emulate. Ultimately, General Motors recognized the error of its ways and resumed use of “Chevy” to refer to its products.

As others have noted, you cannot control what consumers call your brand. So if you can’t beat ‘em, you may as well join ‘em (or at least claim the nickname as a mark for yourself). The National Council of Young Men’s Christian Associations of the United States of America observed that many of its members were referring to it simply as the “Y” (rather than “YMCA” or, as I have never heard it called, the full trade name). They embraced this nickname wholeheartedly and registered the mark. As it happens, use of the abbreviated abbreviation helped diminish the emphasis on gender (since both men and women attend the Y these days) and religion (since the YMCA is open to all faiths).

First new card in 18 years of membership.

But nicknames are not always abbreviations. One popular brand nickname is “Mickey D’s” (registered in both possessive and plural forms). I am not sure whether this is an appropriation of a consumer-generated nickname or whether it is one developed by the corporation, but McDonald’s Corporation fully embraced it and sought registration for it in the early ‘80s. McDonald’s has also embraced its nickname in Australia, where it is known as “Macca’s.” According to one article, McDonald’s even celebrated its 40th anniversary in Australia by temporarily changing signage on several of its restaurants to the nickname. Consumers in other countries have their own nicknames for McDonald’s. The fact that different groups of consumers have their own ways of expressing affection for the brand is a good reason not to abandon the full name even while embracing the nickname, and for leading with the full name when entering new markets.

Sometimes beloved products beget whole slogans and not just nicknames. Children of the 1980s will remember Nintendo’s Donkey Kong video game featuring an ape throwing barrels. Out of that sprang the phrase IT’S ON LIKE DONKEY KONG. According to various sources, the phrase was popularized (if not originated) by Ice Cube in a rap album from the early ‘90s. (Ice Cube credits his cousin with coining the phrase here.) After almost two decades of popular use, Nintendo decided to claim the phrase for itself as a mark, seeking registration for it in 2010 and first using it in US commerce in 2013 as displayed below.

After drinking a Coke with dinner at Mickey D’s, I had to drive a Chevy to the Y to work off some calories. But even in this fictional closing line, I can’t imagine myself saying “It’s on like Donkey Kong.”

Sticky Rebranding and Fluid Marks

Posted in Brands, Patents, Registrations, Trademarks

I have fond memories¹ of drowning my pancakes in all the flavored syrups on the table rack at IHOP. But, on June 4, the International House of Pancakes announced that though it had been IHOP for 60 years, it would be “flippin” its name to “IHOb” in a week:

This was enough to cause some IHOP patrons to flip out:

IHOP’s Twitter account had fun teasing the public, but remained serious about the trademark issues:

   

Note the change from ® to “sm” as the “p” changes to “B” above.

A week after the initial announcement, IHOP revealed that the “B” stood for “burgers.”

IHOP filed an application seeking to register  for use with restaurant services three days later (claiming use and submitting this image as a specimen):

Finally, last week, IHOP confirmed that it was not in fact changing its name and that on July 17, 2018, its 60th anniversary, it would be celebrating by selling short stacks of pancakes for $0.60:

This came as some relief to many of IHOP’s fans. Part of the reason consumers reacted so strongly to IHOP’s ostensible rebranding is because of the goodwill associated with “IHOP.” Usually there has to be a very good reason to risk the goodwill associated with a particular mark or brand that has a strong connection with consumers by changing it.

Sometimes there are good reasons for doing this. Companies may rebrand to start building goodwill from scratch and distance themselves from an undesired association or connotation. Merging with another company, divesting part of the business, or making major changes to the product or service offerings could also warrant a new identity. One example of a rebranding occurred when American International Group rebranded its property and casualty insurance unit after the bailout it received in 2008 to become:

IHOP did not seem to be facing any particular triggering event, so its apparent decision to rebrand was surprising. And many people predicted that the announcement was the prank IHOP later revealed it to be. But then, maybe IHOP’s mini double rebranding (from IHOP to IHOB and back again) is not entirely unique. In 2012, after repaying most of its government loans, American International Group rebranded the property and casualty insurance segment back to AIG and adopted this logo:  

Undergoing a rebranding (let alone reverting to a previous brand) is relatively unusual because of the expense involved and the effort required to ‘teach’ consumers to embrace the new identity. Of course many companies update their logos and refresh the look of their promotional materials from time to time. But a complete overhaul can be an expensive, risky process, so it does not happen frequently.

Rather than seeing IHOP’s marketing stunt as a rebranding, perhaps an alternative way to perceive it is as dabbling with a ‘fluid’ mark. Although the conventional wisdom is that marks should always be displayed consistently to facilitate consumer recognition (and attachment), there are some marks that have gained such market strength they can withstand (and perhaps benefit from) some occasional variation in presentation.

For example, Google, Inc. frequently converts its logo as it appears on its search engine page into a design that celebrates a person or event. Last weekend, the “Google doodle” celebrating the final match of the 2018 FIFA World Cup appeared on the search engine’s landing page. Because Google’s logo is so familiar and frequently seen, it can tolerate the variation in presentation, and such variation may help keep the consumers’ attention in a way that strengthens the mark. Perhaps IHOP will occasionally flip the “p” into a “b” in its logo when it wants to promote its burgers.

IHOP has redirected those attempting to follow its new Twitter account @IHOB back to its @IHOP Twitter account. It has confirmed that the campaign was a marketing effort to draw attention to its new burgers, not an actual rebranding. And hopefully those who needed to see the brand in person to be assured of its stability were able to enjoy a $0.60 short stack of pancakes at the same time.
_________________________
¹Some from childhood; some more recent.

Paraskevidekatriaphobia

Posted in Brands, Copyright, Trademarks

Friday the 13th is once again upon us. The fear of Friday the 13th – paraskevidekatriaphobia – is derived from the Greek paraskevi (Friday), triskaideka (thirteen), and phobia (fear). It has been said that fear of Friday the 13th is the most widespread superstition in the United States today and it has been estimated that as many as 21 million Americans are afflicted with some level of the phobia.

This particular phobia appears to be a product of western culture and there have many theories advanced as to how we have come fear the combination of Friday and the number 13. Interestingly, other cultures have a different take. In Spanish speaking cultures, Tuesday the 13th is considered an especially unlucky day, as it is in Greece. In Italy, it is Friday the 17th that is feared.

How has paraskevidekatriaphobia impacted trademark registrations? Well, in the United States, only one brave company claims FRIDAY THE 13TH as its mark.

You guessed it. The mark inspired by the fictional character, Jason Voorhees, who drowned as a boy at summer camp and came back with a vengeance and a hockey mask, is currently owned by New Line Cinema:

Talk about having a strong mark in an uncrowded field! Congratulations to Jason and New Line Cinema.

Enjoy your Friday the 13th.

The Trademarks of the World Cup Stars

Posted in Brands, Copyright, Patents, Registrations, Trademarks, Uncategorized

In honor of the world’s biggest sporting event, now occurring in Russia, let’s look at which of the big stars of the World Cup is winning the trademark competition. The competition, as I define it, is to show evidence of protecting the mark that is the player’s name or image.

Neymar

We’ll start with Brazilian star Neymar (Neymar da Silva Santos Júnior), the last one on our list to bow out of the 2018 tournament. (Or fall down, roll around clutching his face or an appendage, and then pop up and walk out, as Neymar’s critics would say.) A search of the U.S. Patent and Trademark Office’s database shows that Neymar is doing better on the field (sorry, the pitch) than in the USPTO. There are no live applications or registrations for the word NEYMAR, and two dead applications filed by people who are not Neymar. A look at the World International Property Organization’s brands database shows 25 international applications and registrations containing the word NEYMAR, some of which have been abandoned. None of those indicates that it is owned by the actual Neymar personally, although several are owned by the Brazilian company Neymar Sport e Marketing S/S Ltda, which may very well have a genuine connection to the soccer star. That company has 14 active applications or registrations (10 of them in Mexico, whose World Cup hopes Neymar helped to dash), all of them for the stylized letters NJR shown below (presumably for Neymar, Jr.). There is one abandoned U.S. application for the stylized NJR mark, also filed by the Brazilian company.

So Neymar, though a great player, is not killing it in the trademark protection arena.

Neymar, who really does get fouled a lot, in an all-too-familiar pose.
Photo by Ronnie Macdonald, “Neymar on the deck 2” used under CC BY 2.0.

Lionel Messi

Next on our list is the man who may or may not be the greatest player in the world, but who, at 5 feet, 7 inches, has a very strong claim to having the greatest concentration of soccer talent per inch, Argentina’s Lionel Messi (Lionel Andrés Messi Cuccittini).

Mr. Messi is ahead of Neymar in the U.S., because he has one registered mark, although not covering his name but rather the stylized letter M shown below:

That mark is registered for a variety of goods, including clothing, balls, shin guards, and mobile phone cases. There are also three abandoned U.S. applications including the name MESSI, two of which seem to have been filed by people unrelated to the soccer great.

Outside the U.S., Messi has been active, as there are 22 registrations and pending applications for marks including MESSI, many of which also use the stylized M. Most of those are in Europe and Malaysia, and also Indonesia and Chile – but, surprisingly, not Argentina. As is often the case with registrations in countries outside the U.S. (which typically do not require proof of use to support a registration), the registrations cover a comically broad list of goods.

So Messi’s performance in trademark protection is okay, but not nearly as spectacular as his skills with a soccer ball.

Messi confounds opponents with his dribbling skills.
Photo by LG전자, at Available here, used under CC BY 2.0.

Cristiano Ronaldo

Portugal’s Cristiano Ronaldo obviously has game in the trademark protection field as well as on the pitch. A search of the WIPO database shows a total of 47 active registrations or pending applications worldwide, for marks incorporating the name CRISTIANO RONALDO or CR7 (his initials plus his jersey number). Fifteen of those are in the U.S. Some are owned by Cristiano Ronaldo himself, and others owned by entities that claim to have his consent to use the mark (rather than some uninvited interloper trying to cash in on the name).

Most of Cristiano Ronaldo’s U.S. applications are “intent to use” applications, meaning he was not using the mark with all of the listed goods at the time the application was filed. As a result, those look a little like some of the overseas registrations, claiming an intent to use the mark with a long list of goods. Most of the listed goods are plausible enough, including sporting equipment, toys and games, sports camps, various generally sports-related entertainment services, along with various paper goods, soaps and personal grooming products, hair styling products, perfumes, etc. etc. A European Union registration covers clothing, footwear, various online retailing services, and educational services.

By our measure, Cristiano Ronaldo wins the trademark protection cup. Perhaps he can take comfort in that victory as he watches the last four teams battle for the World Cup. And maybe four years from now, we’ll have to consider the trademark performance of England’s Harry Kane or France’s Kylian Mbappe, both of whom have been excellent in World Cup play.

Cristiano Ronaldo, one of the world’s best, with the ball.
Photo by Jan Solo, “Cristiano y Forlan,” used under CC BY-SA 2.0.

Childhood Trademarks

Posted in Brands, Copyright, Infringement, Trademarks, Uncategorized

Maybe it’s just because I am about to go on vacation with seven children under the age of 11 (and their parents), but it seems a lot of trademarks from my childhood have been making appearances in the news recently.

Just last month, Hasbro, Inc. obtained a federal trademark registration (Reg. No. 5,467,089) for the scent of Play-Doh. The mark is described as the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.” N.B.: You don’t always have to hire a sommelier to draft the description of your scent marks. On the other hand, I’m not sure how I would have described it (though I readily agree it is recognizable). I am going to have to borrow someone’s Play-Doh to see if my olfactory senses are sharp enough to detect the ‘cherry overtones.’

Scent marks are non-traditional marks, and the examining attorney required Hasbro to prove acquired distinctiveness to obtain the registration. Generally, a substantial showing of acquired distinctiveness is required to demonstrate that a scent is a mark. TO carry this heavy burden, Hasbro introduced hundreds of pages of evidence to prove that the scent functioned as an indicator of source. The evidence included the number of units of product sold (and its weight) as well as length of use and unsolicited media coverage referencing the scent of the product. The examining attorney accepted this evidence and allowed the application to publish for opposition. Nobody opposed, so the registration issued in May.

The Play-Doh scent is recognizable enough to inspire a cologne spray, which was released under license to celebrate the compound’s 50th anniversary.

Smells like childhood spirit.

There are not many scent marks registered with the US PTO. Of those that have registered or been the subject of TTAB proceedings, most involve conventional scents readily described by a single word (eg, orange, peppermint, cherry). While Play-Doh’s scent mark includes references to vanilla and cherry overtones, the total scent is more complicated than a single word could communicate. It would be interesting to hear whether this raises any particular enforcement challenges.

In other nostalgic news, trademarks associated with two childhood television shows have been in the news recently.

Just last week “Won’t You Be My Neighbor,” the documentary about Fred Rogers and his television show, “Mister Rogers’ Neighborhood,” opened in theaters around the country. I have not seen the film, but cannot help thinking that it would make the perfect counterweight to the daily news.

It is completely reasonable to change into a sweater and sneakers at work.
Even Fred Rogers did this.

Imagine all the goodwill packed into the MISTER ROGERS’ NEIGHBORHOOD mark. The McFeely-Rogers Foundation owns federal trademark registrations for that mark for use with a variety of goods and services (including education and entertainment services) so that even though the show is off the air, Fred Rogers’ legacy lives on. Although Fred Rogers has passed away and his show is no longer on the air, generations of children who formed his television audience remember (and hopefully carry on) the lessons of his television show.

PBS is celebrating the 50th year of the program’s inception.

The other childhood television show in the news recently is Sesame Street. The trailer for the movie “Happytime Murders” was recently released. The movie, scheduled for release in August, is described by Wikipedia as a ‘puppet crime-comedy’ film and is directed by Brian Henson, the son of Jim Henson, famous for Sesame Street and The Muppet Show. The movie is rated R and puppets in the movie behave badly. The tag line on the trailer “No Sesame. All Street.” grabbed the attention of the Sesame Workshop, which sought a temporary restraining order to prevent the STX defendants from using the tag line to promote the movie.


Sesame argued that the STX defendants’ use of the tag line ‘No Sesame. All Street.’ evoked Sesame’s SESAME STREET mark and confused consumers into believing that Sesame supported the movie. The STX defendants countered by saying the tag line clearly disclaims affiliation with Sesame and does not function as a mark.

The judge denied Sesame’s application for a TRO. Though that left Sesame with the option of pursuing preliminary and permanent injunctions, it chose to dismiss the case voluntarily without prejudice.

These marks, the scent of PLAY-DOH, MISTER ROGERS’ NEIGHBORHOOD, and SESAME STREET, have been around for 50+ years. These brands exert powerful influence over the children who encounter them and that influence continues long after the children have ostensibly become adults. The goodwill of these brands continue to exert power over us, evoking creativity, kindness, and thoughtfulness. Let’s hope those lessons continue to exert power over us as well.

The Golden Knights are one step closer to securing the Stanley Cup and Federal Trademark Registration

Posted in Infringement, Trademarks, Uncategorized

This hockey season, the Las Vegas Golden Knights have been fighting to establish their name in the National Hockey League . . . and with the United States Patent and Trademark Office (USPTO). If you have no idea what I’m talking about, check out my post from January about “The Fight Over the “Golden Knights.”

The Golden Knights have had a remarkable inaugural season and have battled their way into the Stanley Cup Final – where they are currently tied in the series with the Washington Capitals 1-1. The Golden Knights have already made history as being only the third team in NHL history to win multiple playoff series in their inaugural season – but they certainly don’t want to stop there. Vegas is hoping its luck will help the Golden Knights become the first expansion team to ever win the Stanley Cup in its first season.

The team’s streak of success begs one to wonder . . . will the Golden Knight’s luck continue off the ice?

As previously discussed, both the College of Saint Rose and the United States Department of Army took issue with the Las Vegas Golden Knights’ trademark applications. The College of Saint Rose feared confusion with its prior-registered mark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE. The Army feared confusion with its parachute team, nicknamed the “Golden Knights”.

The Army filed its formal notice of opposition against the Golden Knights on January 10, 2018. The marks at issue are LAS VEGAS GOLDEN KNIGHTS (Serial No. 87147269) and VEGAS GOLDEN KNIGHTS (Serial No. 87147239).

The College of Saint Rose requested an extension of time in which to file a formal notice of opposition to the Golden Knights’ trademark application(s) back on January 8, 2018. The TTAB gave the College an extension through March 11, 2018 to oppose the marks. However, interestingly, the College of Saint Rose never filed a formal opposition.

With the College of Saint Rose out of the way, the Army is the last obstacle standing between the Golden Knights and a federal trademark registration. The most recent filing with the TTAB indicates that proceedings have been suspended through June 23, 2018. According to several sources, the parties have indicated that they are engaged in a series of negotiations as to a co-existence agreement – which would allow both parties to use the mark “Golden Knights” within their respective realms.

Will the Golden Knights be able to win this off-the-ice series? Only time will tell. Stay tuned for more updates!

P.S. Now that the Nashville Predators have been eliminated, I don’t have a dog in the Stanley Cup fight and am not pulling for one team over the other. The Golden Knights have former Nashville Predator James Neal, and the Capitals are led by none other than Barry Trotz, who coached the Predators during their first 15 seasons. If the Preds can’t win the Stanley Cup – then at least a team with Nashville ties can!