Archive for the ‘Trademark’ Category

Skins Lose Trademark Game Before the TTAB

Saturday, June 28th, 2014

If you haven’t heard by now, this past week the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office canceled several trademarks owned by Pro-Football, Inc. (“Pro Football”) for the term “Redskins” on grounds that the marks were “disparaging to Native Americans.”¬† This issue has been around for some time and has been the subject of previous lawsuits in which Pro Football has prevailed.¬† Here’s a link to the latest opinion of the TTAB, which, if you’re interested, contains a summary of the previous litigation. Rather than try to summarize The TTAB’s 177-page opinion in this short column,¬† let’s briefly examine two questions raised by the decision:

  • Under what authority does the TTAB act to cancel a trademark for being disparaging?
  • Is Pro Football free to use the term “Redskins” even though the TTAB has cancelled its marks?

When a party wishes to cancel another party’s trademark, it has two options:¬† file a trademark cancellation proceeding with the TTAB, an administrative body that has the legal responsibility of adjudicating issues related to trademark applications and registrations, or file a lawsuit in United States federal court.¬† In the Redskins matter, the “plaintiffs,” five native Americans, chose the administrative route.

Section 2 of the Lanham Act, the law that controls trademarks, spells out under what circumstances a trademark may not be registrable, the first criterion being any trademark that

Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ….

15 USC 1052(a).¬† Under this authority a court or administrative body such as the TTAB may cancel the registration of a “disparaging” trademark.¬† Actually, it’s not quite that simple.¬† The important question is how does a court determine whether a trademark is “disparaging?”¬† With respect to native Americans, the courts have devised a two-part test:


[1]  What is the meaning of the matter in question, as it appears the marks and as those marks are used in connection with the goods and services identified in the registrations?

[2]  Is the meaning of the marks one that may disparage Native Americans?

With respect to the second question, the law states that¬† whether a term such as “redskins” is disparaging to Native Americans, one must reference the views of Native Americans, not the the American public as a whole.¬† Based upon the evidence before it, the TTAB determined that, indeed, Native Americans viewed the term as disparaging and, as a consequence, it cancelled Pro Football’s trademark registrations.

Okay, so now that Pro Football no longer has registered trademarks, can it still use the term “RedSkin”?¬† The TTAB, as it noted, does not have the legal authority “to issue rulings concerning the right to use trademarks.”¬† Why?¬† That’s because trademark rights arise from use, not from registration. For example, if you have used an unregistered trademark (referred to as a common law trademark) first in time, you will prevail in litigation over a trademark holder that may own a registration but began using it later in time.¬† Because these so-called common law rights are unaffected by a federal registration, Pro Football is free to use “Redskin.”¬† A word of warning!¬† Common law trademarks are governed by state law so if state law disqualifies disparaging marks, Pro Football has a problem, particularly if it tries to enforce its trademarks in court.¬† Of course, whether continued use of “Redskins” is a good idea from a branding and marketing perspective after all the negative publicity is another question.

– Adam G. Garson, Esq.

Keeping the Cat In the Bag When Filing a Trademark Application

Wednesday, April 30th, 2014

safe One of the potential down sides of filing a trademark application with the United States Patent and Trademark Office is that the application, including the identity of the owner, is of public record, accessible to anybody.

If secrecy is important to your company’s marketing strategy then filing a trademark application is not an act to be taken lightly. So, if you are, say, Apple Computer, and you rely upon the anticipation of the product announcement to build up market hype and eventually sales, you will need to keep your trademark filings secret until the product announcement. How do you do that without spilling the beans?

The tried technique for maintaining secrecy is to create a dummy corporation that no one will recognize for filing your trademark applications.¬† Once the need for secrecy evaporates, the dummy corporation assigns the trademark to its true owner.¬† Apple, in fact, uses this technique. AppleInsider recently reported that a Delaware corporation called BrightFlash USA LLC recently filed a host of trademark applications for the iWatch trademark.¬† (Okay, everybody knows or thinks they know that Apple will be releasing a new product called the iWatch so what’s the point of keeping it secret? I guess it’s because nobody knows for sure.)

It’s not completely clear whether BrightFlash is actually an Apple Computer surrogate, however, numerous trademark filings for iWatch in the United States, the United Kingdom, the European Union, Australia, and Denmark, strongly suggest that Apple may be behind the trademark applications. AppleInsider also reported that there were numerous applications filed by BrightFlash for the iWatch trademark in smaller countries. Just an interesting tidbit from those who monitor trademark filings.

Adam G. Garson, Esq.

How Sweet it is…The Candy Crush Saga

Friday, February 28th, 2014

Have you ever played the mobile app game, “Candy Crush Saga” by King.com, Ltd. (“King”)?¬† Are you addicted to it?¬† Not me, you say.¬† More power to you because by some reports King earns a million dollars a day from users who actually pay for the chance to continue using this “free” game.¬† The way it works is that after so many moves or lives, the player has to wait a period of time before he or she can play again.¬† Some people — more than a million per day — can’t wait and opt to spend .99 to avoid the delayed gratification.¬† A brilliant business model!

In its quest to rule the mobile device game world, King filed a trademark application for the term CANDY, identifying software related products, clothing (say spin-offs), and educational services (say what?).¬† You might ask how in the world a software gaming company can claim rights to the term “candy”.¬† What about Hasbro’s Candy Land and the myriad other candy themed games?¬†¬† Apparently, the U.S. Patent and Trademark Office (“PTO”) did not see it that way.¬† No one else had applied for CANDY in the same or related product space and it was King’s to take. And so the PTO noticed the trademark for publication (the penultimate step in the registration process).¬† Apple, Inc. soon began enforcing King’s trademark rights in its App Store, demanding that developers remove copycat apps as well any game apps using the term “candy”.¬† King also embarked on a campaign to enforce its trademark rights in CANDY and the term SAGA.

Then the hue and cry!¬† Across the blogosphere, software developers called foul by the PTO for approving King’s registration of CANDY and criticized the filings as “overreaching” and “predatory.”¬† Independent game developers were so incensed that they created an online event dubbed “Candy Jam“, inviting developers to create games that use the word “candy.”¬† Participants created more than 450 games!¬† Then, two events occurred.¬† King announced that it was going public with a $500 million dollar initial public offering and, lo and behold, it voluntarily abandoned its trademark registration application for CANDY.¬† King CEO Riccardo Zacconi repented, saying that his company was “not trying to control the world’s use of the word ‘Candy’…only trying to prevent other from creating games that unfairly capitalize on our success.”¬† In another statement, King noted that its action did not affect its European registration for CANDY and that it would continue to protect its trademark rights.

So why would King abandon its U.S. trademark application?¬† A little controversy over a trademark should not deter enforcement of intellectual property rights. True, but the stakes here are enormous.¬† Apparently, game developers stirred the pot enough to cause King to worry about¬† the negative consequences of the trademark filing and enforcement furor to its $500 million dollar IPO.¬† To calm the storm of public opinion, it abandoned its trademark claim to CANDY.¬† The “saga” demonstrates the power of public opinion when trademark owners are perceived to overreach, particularly when large amounts of cash are at stake.¬† Sweet!

– Adam G. Garson, Esq.

Branding Rules While Candy Bars Wage Battle ….

Wednesday, November 27th, 2013

WIPO 2013 If you ever doubted the economic importance of branding, take a look at the 2013 World Intellectual Property Report authored by the World Intellectual Property Organization (WIPO).¬† For the¬† period from 1987 to 2011, United States investments in branding accounted for close to a quarter of all intangible asset investments!¬† Brand ranking organizations value the top 10 brands to be worth between 46 and 91 billion dollars, and between 2008 and 2013, the total value of the top 100 global brands grew by between 19 and 24 percent.¬† Paralleling the enormous rise in value of the top brands is an equivalent “unprecedented” rise in the demand for trademarks.

It should come as no surprise then that along with increased competition, brand owners are constantly pushing the envelope in their quest to attract loyal customers.¬† Here’s a great example of a major brand’s recent attempt at expanding its trademark portfolio and the push back it received from a major competitor.¬† The Hershey Company recently filed a trademark application covering the cross section of its famed Snicker’s bar.

SNICKERS

 

Hersey believes that the cross-section of its candy bar is distinctive enough so when a consumer sees it, he or she immediately thinks “Hershey.”¬† How about that for ego?¬† Hershey met little resistance by the trademark examiner whose descriptiveness objection was swept aside by Hershey’s contention that the candy bar’s cross-section had acquired distinctiveness over time. The Examiner folded and moved the application on to publication.

Looking for sweet revenge, Mars, Incorporated (“Mars”) opposed the mark on grounds that it is merely descriptive, de jure functional, generic, and fails to function as a trademark. The opposition brief is a lesson on how to disqualify a trademark.¬† Here’s what Mars says:

  • The applied-for mark is descriptive, not distinctive.¬† Candy bars with similar cross-sections are not distinctive but are widespread even among Hershey’s own products: OH HENRY!, BABY RUTH, and PEANUT CHEWS;

OH HENRY!

  • The applied-for mark is “functional because it depicts a candy bar that results from a widely used and comparatively more efficient or less expensive method of manufacture for candy bars containing similar ingredients.”
  • The applied-for mark is generic and not capable of functioning as a trademark;
  • The applied-for mark does not indicate the source or origin of the product and, therefore, cannot function as a trademark.

This is a great example of the interaction between aggressive branding, trademark law, and competitive forces.  We will follow this story and let you know what happens.

– Adam G. Garson, Esq.

Protecting the Latest Food Sensation

Saturday, June 29th, 2013

Donut OMG, I have to try one of these…. That appears to be the general consensus about the so-called “Cronut,” the new New York City food sensation.¬† Early morning lines stretch around the block with customers lining up to buy this croissant-donut hybrid two hours before the Dominique Ansel Bakery in SoHo opens.¬† It’s so wild that scalpers are selling the $5.00 (!) snack for $20.00 or more (!).¬† Most recently, there’s a black market of sorts selling Cronuts — authentic and fake — on Craigslist.¬† Cronut copies have been found in Australia.¬† Ansel’s bakery, which originally limited purchases to 6 Cronuts per person, now limits customers to 2.¬† Huffington Post wrote:

As it turns out, the baked good’s allure maybe less about flavor and more about the cachet that comes with a rarity. In less than a month on the market, the cronut has turned into the ultimate grand gesture, appropriate for any occasion, and a burgeoning form of social currency – an object proffered in a bid to ingratiate oneself with a potential business partner, perhaps, or in atonement.

The term CRONUT has not been widely copied, perhaps because the owner of Ansel’s Bakery filed a trademark application for the name with the United States Patent and Trademark Office (“PTO”) and, according to one report, in five other countries.¬† Ansel said he could justify the cost with just a couple of days of sales.¬† One of Ansel’s competitors was considering filing a trademark application for DOUGHSSANT but couldn’t justify the cost of defending the trademark if it was issued.¬† Other bakeries are considering filing their own trademarks but Ansel’s lawyer “isn’t amused” at the trademark rush and “will be taking action as she sees fit.”¬† Keep in mind, however, that trademark law does not protect the recipe or invention, only the name.¬† To sue someone for infringing the name, Ansel’s attorney would have to prove that the name caused confusion in the market place over the source of the pastry.¬† CRONUT and DOUGHSSANT are hardly confusing, so good luck challenging that.¬† On the other hand, another application filed for CRONUTS by a party apparently not related to the Ansel Bakery, is confusing and will likely be rejected by the PTO.¬† Now that’s a waste of money.

This raises the issue of how do you protect a recipe from being stolen?¬† The short answer is that it’s difficult.¬† Trademark law doesn’t work and copyright law does not protect recipes.¬†¬† One may be able to obtain a patent to protect a foodstuff or process for making the foodstuff, but only if the process or the food stuff is “novel” or “non-obvious.”¬† Novelty and non-obviousness are tough standards for food because people have preparing food for as long as there have been people.¬† Other¬† reasons not to patent a recipe are that a patent requires public disclosure and in time expires. The Coca-Cola Corporation successfully¬† protects its famous soda recipe by simply keeping it under lock and key.¬† The patent route doesn’t seem effective for a food fad.¬†¬† Look for variations of the Cronut under a different name at your favorite bakery.¬† They may be just as good (maybe better).

– Adam G. Garson, Esq.

Ask Dr. Trademark…

Thursday, May 30th, 2013

Dr. Trademark (Dr. Copyright is off this month – although some might say that he’s always been a bit off – so our very own Dr. Trademark has stepped to the plate to hit more of your burning legal questions out of the park.)

Dear Doc.:

I was given a prescription for Noroxin to treat a UTI, but when I got back from Rite-Aid, the bottle they gave me contained Neurontin, which is used to treat epilepsy and pain. Somebody messed up, and from what I read, this could have been very dangerous. Why can’t someone keep this from happening by making sure that drug names are not confusingly similar?

Signed,

Confused Patient

Dear Confused:

Unlike regular trademarks for things like tractors, condoms and laundry detergent, names used on drugs are supposed to be unique, not confusing, and truthful. There is even an office at the US Food and Drug Administration (FDA) that is supposed to approve trademarks for drugs in an effort to prevent the over 1.3 million injuries each year that result from drug name confusion. Even though a drug company may be able to register a drug trademark with the Patent and Trademark Office (PTO), that does not mean that it will be approved by the FDA.

The FDA’s Division of Medication Error Prevention and Analysis (DMEPA) reviews all proposed names for confusing similarity to the names of other drugs or drug ingredients, including both trademarks and “established” or generic names. DMEPA typically rejects about one-third of all names reviewed. Some of the issues DMEPA hopes to avoid include names that suggest potentially exaggerated efficacy claims; names that could lead to erroneous prescriptions (e.g., wrong drug or dosage); and names that look or sound confusingly similar to other drug names.

According to the FDA, there are some ways to reduce the risk that a name will be found misleading during approval:

  • Avoid names referring to an inactive ingredient in a way that suggests effectiveness;
  • Avoid incorporating a generic name;
  • Avoid names implying unique effectiveness (e.g., wonder or cure); and
  • Avoid using terms that imply maximum strength, such as “Ultra,” “Max,” “Pro,” or “Super.”

Similar precautions can reduce the risk of using a name that the FDA will consider prone to cause medication errors such as names containing numbers.¬† For example, some pharmacists interpreted “Percocet 5″ to mean five tablets per dose.¬† Similarly, companies should avoid using prefixes, suffixes, and letter combinations that may have specialized meanings in the pharmaceutical field – such as “bid”, or “PRN”.

The FDA regularly tests drug names by using volunteers to assess whether names are confusingly similar. The FDA advises that applicants consider the sound of the name when spoken, as if recording a verbal prescription into a voicemail system, consider the appearance of names as printed, and consider the appearance of a name as written by a physician.

Even after a drug name has been approved, DMEPA monitors reports of problems with marketed drugs and can order changes in drug names it has approved. Sometimes the FDA simply orders changes in labeling to eliminate confusion, rather than a complete name change.

Despite all of these precautions, there are still many drug names that are regularly confused. For a list, take a look here.¬† The Doc, though, hopes that you seldom need more than a good night’s sleep to cure what ails you.

The Naked Truth About Fair Use Applied to Trademarks

Thursday, May 30th, 2013

The Naked Cowboy We’ve written a lot about the “fair use” concept in the copyright context but did you know that there is also a fair use concept in trademark law? Here’s a case that illustrates the point.

In 2012, the Naked Cowboy (yes, you read it correctly) of New York City fame, sued CBS for trademark infringement when, in 2010, the network broadcast an episode of “The Bold and Beautiful” in which a character briefly appears dressed only in briefs, cowboy boots and hat, singing and playing the guitar just like the real “Naked Cowboy.” We’re sure you know this already, the Naked Cowboy is a New York street musician who has built a “financial empire” by performing in Times Square wearing only “briefs, cowboy boots, a cowboy hat, and a guitar.”¬† He owns a registered trademark for the words the “NAKED COWBOY” and his outfit, which is not registered, is distinguished by the “words ‘Naked Cowboy’ .. displayed across the back of his briefs, on his hat, and on his guitar…The word “Tips” or the symbol ‘$’ is painted on his boots.”¬† None of these distinguishing marks appeared on the CBS character; nor was the term “Naked Cowboy” used by the network although the terms were used in tags and Google Adwords associated with CBS’s YouTube clips of the episode.

In his complaint, the Naked Cowboy alleged trademark infringement and various other federal and state law claims.¬† CBS moved to dismiss the law suit on various grounds, including the defense of “fair use.”¬† The federal district court of the Southern District of New York granted the motion.¬† The court made three important points.¬† First, the CBS character did not use and, therefore, did not infringe the NAKED COWBOY trademark; second, without any of the distinguishing elements of the costume, the likelihood of confusion between the Naked Cowboy and the CBS character was small; and thirdly, CBS’ reference to the Naked Cowboy on YouTube was “fair use.”

The court was referring to what is known as “descriptive fair use,” which is when an unauthorized user of a trademark uses it in a descriptive sense. CBS’s use of “Naked Cowboy” merely described the contents of its video clips and not as a trademark to identify the source of the video clips.¬† Such usage created no confusion. “The fact that the Episode’s source is CBS and not [the Naked Cowboy was] clearly evidenced by the prominent display of the series’ title” and the CBS logo on YouTube.

There is another kind of trademark fair use, which the Naked Cowboy court did not address and that is the so-called “nominative fair use” concept.¬† This is an unauthorized but non-confusing use of a trademark to identify the trademark owner’s goods or services .¬† For example, Ford motors can have a commercial in which it compares a Ford Taurus with a Toyota Camry.¬† Clearly, it is using Toyota’s “Camry” trademark but it is not creating confusion over who owns the mark.¬† Similarly, a retailer can use another company’s trademark on its web site without a license if it is selling branded items from the trademark owner.¬† Pundits have written that nominative fair use is not really a fair use concept but simply another way of approaching the concept of whether trademark usage creates confusion in the marketplace.¬† In either case, the concept of trademark fair use can keep you out of court and provide a viable defense should you find yourself in front of a judge.

Ask Dr. Copyright…

Friday, September 28th, 2012
copyright question

Dear Doc:

I have heard that there is something called “trade dress” that can be legally protected, and that it’s different from trade mark and also from design patent and copyright?¬† What gives?

Signed,

Sam Sung

Dear Sam:

Trade dress is pretty broadly defined as the visual impression created by the sum of all elements used in packaging or presenting a good or service for sale, and which gives the product or service a distinctive and recognizable appearance to the purchaser. Some trade dress may even become so associated with the product and its producer that it acquires “secondary meaning” entitling it to registration as a trade mark.

You’ve no-doubt seen trade dress in stores: as you wander down the detergent aisle, if you see a bright orange box or bottle, you probably think, “TIDE”. If you see ceramic items that are light blue with white accents, you may think, “Wedgewood”, and if you see a soda bottle with a narrow “wasp waist” you may recognize it as Coca Cola. Each of these is the products’ trade dress.

In order to be protected as trade dress, the elements must be recognizable as denoting the product or its source, and must be non-functional (that is, aesthetic).  Thus, the color blue for certain little pills for men is protected, as is the shape and appearance of the Ferrari 365 GTB/4 sports car.

In a very recent case, Apple, Inc. prevailed over a certain Korean electronics company when the jury found that Apple’s iPhone trade dress had been infringed. The amount of damages awarded was many hundreds of millions of dollars. The Korean company has just filed a motion to have that verdict overturned by the judge. The motion says that the overall appearance of the Apple iPhone and its packaging is not trade dress because its function is simply to be beautiful. They claimed that the iPhone was thus unprotectable because it has “aesthetic functionality”.¬† They cited testimony that customers, “lust after the [iPhone] because it’s so gorgeous.”

Where will this end up? Who knows? Certainly not the Doc!¬† But one thing is certain…if trade dress, like design patents and copyrights, protects things that are nonfunctional, and a court finds that being beautiful is a function, then the Doc is going to have to go back to his college aesthetics professor and demand his money back!

– Lawrence Husick, Esq.

A Book By Any Other Title May not be Registrable…

Tuesday, July 31st, 2012

book From time to time, we receive inquiries from authors about registering book titles as trademarks.¬† Sounds like a good idea but can it be done?¬† The short answer is “no,” trademark law does not permit registration of a work’s title.¬† But, as with many legal rules, there are exceptions.

The complete title of a work may be registered as a trademark if the work’s title is used on at least two different creative works thereby establishing the title as a trademark for a series of works.¬† Children’s book titles are commonly registered as a series of works.¬† For example, Two Cool Doods, The Little Green School, Monster Catchers, and many others.¬† The trademark applicant must exercise care in providing evidence of a series.¬† If only the format of the work has changed, such as publishing a written and audio version of the work, the applicant will not persuade the trademark examiner that the work is a series. Similarly, the title of an abridged or unabridged version of the work does not establish a series; nor does use of the title on posters, mugs, bags or t-shirts.

An author may also register a portion of a book title as a trademark if he or she can establish that:

  • the portion of the title to be registered must create a separate commercial impression apart from the complete title;
  • the title is used on a series of works; and
  • the title is promoted or recognized as a mark for the series.

The Trademark Office states that the applicant has a heavy burden in establishing that the title is used in a series.  The mere use of the same words in more than one book title is insufficient proof.  Instead, the applicant must establish that the public perceives the title to be a mark for a series.

So, you can see that there are strategies for registering a book title as a trademark but the process is tricky.¬† If you’ve been thinking about registering a book title, we can help determine the appropriate application strategy.

– Adam G. Garson, Esq.

Trade Dress: Where Patents and Trademarks Converge

Friday, June 29th, 2012

Chevron trade dressTrademarks provide important intellectual property protection to businesses and to their products. Trademarks identify the source or origin of goods or services. A related sub-concept of trademarks that also provides broad intellectual property protection to a business is the concept of trade dress.

Trade dress protects a product’s unique design, look and feel. It covers the overall image generated by the product or package. Trade dress comprises traits such as shape, package, size, color, color combination, texture, and graphics. In general, trade dress protects the image of a product. For example, a bucket full of chicken is the trade dress for KFC, the sensual shape of a Coca-Cola bottle is the trade dress of the trademark Coca-Cola, a sophisticated blue box is the trade dress of Tiffany, a yellow and red color combination package is the trade dress of Kodak films.

Trade dress protection may also be available for products, packaging, or business forms and stationery for which a design patent, utility patent or copyright protection may not be available after its expiration. If these other types of protection were never obtained, then trade dress rights may nonetheless be available. For example, it is possible to concurrently protect a design with both trade dress rights and a design patent. Also, trade dress protection is available to protect a design after a design patent has expired.

To obtain trade dress protection for product configurations, it is required to show that the design of the product at issue is inherently distinctive, or has acquired secondary meaning. However, trade dress protection cannot be obtained for a product functional in nature if the product is utility patent protected. Furthermore, to obtain protection of a product under trade dress, the concept protected must be non-functional in nature. For example, if a disputed product configuration is part of a claim in a utility patent, and the configuration is descriptive of the inventive concept, then the doctrine of trade dress which is necessarily functional in nature is not available until the patent for that product has expired and has entered the public domain.

In one of the most important trade dress cases to date, the Supreme Court, in¬†Two Pesos, Inc. v. Taco Cabana, Inc.,(505 U.S. 763, 112 S.Ct. 2753 (1992), held protectable the trade dress of Taco Cabana’s restaurant, and described it as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead doors; the stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme”.

Feel free to drop us a line if you have a product, which may qualify for trade dress protection.

–Ash Tankha, Esq.