People in Boston are confused and it’s easy to see why:
Secret BostonTM is promoting an exhibit called “Imagine Van Gogh” through its website SecretBoston.net. (I’ll call this company “McCormack” because it was founded by Michelle McCormack.)
Meanwhile, a different Secret Boston is promoting an exhibit called “Van Gogh: The Immersive Experience” through its website SecretBoston.com. (I’ll call this company “Fever” because the website’s owned by Fever Labs, Inc.)
This sucks for customers. McCormack’s been getting calls from people who thought they were buying a ticket to her event but were actually buying a ticket to Fever’s event.
It’s also bad for the companies involved: They lose business and end up with pissed off customers.
Who’s in the wrong here? Based on the facts I can find, I’d say McCormack’s company has rights to SECRET BOSTON and Fever is infringing.
McCormack says she started using SECRET BOSTON in 2011. There are at least three facts pointing to a later use by Fiver.
As of August 2019, Fever’s secretboston.com website had nothing but a broken redirect.
Fever’s trademark registration for SECRET NYC claims first use in 2016. It’s hard to imagine its first use of SECRET BOSTON was 5 years earlier.
McCormack claims Fever tried to buy her trademark rights to SECRET BOSTON in 2016 and she refused to sell.
As of this writing McCormack and Fever are duking it out. Unless there are some key facts I don’t know about, Fever needs to find a way forward that respects McCormack’s clear prior rights.
Shout out to Bill B. who brought this to my attention.
Burlesque dancers and drag queens: DITA VON TEESE®, THE WORLD FAMOUS *BOB*SM
The name of a character in a book or movie isn’t automatically a trademark. Amanda Wallace, Viola Davis’s highly memorable character in Suicide Squad®, isn’t a trademark and is very unlikely ever to become one. KATNISS EVERDEEN® is a registered trademark but not as a character in books and movies but for merchandise like action figures and backpacks.[ii]
Stage names of singer/songwriters are trademarks and are often registered for some type of entertainment services. MEGAN THEE STALLION® is a registered trademark for merchandise but also for “entertainment in the nature of live performances by a musical artist or entertainer.” Curtis J. Jackson III has six live registrations for 50 CENT® for entertainment services and lots of products, too.
Comedic alter egos, burlesque dancers, and drag queens are trademarks and are often registered for entertainment services and/or swag. BORAT® is a registered trademark but only for shirts. DITA VON TEESE® is registered for entertainment services but also retail store service, candles, apparel, perfume, and lipstick.
There are so many of these types of names that are also trademarks. Which ones can you think of?
[i] I’m fascinated by the trademark conundrum of STEPHEN COLBERT. Not the “real” Stephen Colbert, but the Stephen Colbert who Stephen Colbert played for so many years on the Colbert Report. Is this just one trademark that changed its branding message or is there STEPHEN COLBERT as a character and STEPHEN COLBERT as an actual person?
[ii] Wonderfully, the name of the company that owns the trademark rights is District 12 LLC.
In 2012, Beyonce and Jay-Z[i], applied to register the name of their baby, Blue Ivy Carter, as a trademark for a whole bunch of stuff.[ii] That application died in 2016 because they never showed the name was being used as a trademark. They filed a second application which is alive as of this writing but still requires them to show use of the name as a trademark before getting a registration. At this point Blue Ivy Carter is still just a name of a person and not a trademark.
At what point does someone’s name become a trademark?[iii] What’s the difference between trademark rights and fame, popularity, and influence?
To oversimplify, it’s whether you can fill in this blank:
Janelle just had some [insert your name] brand ________________!
If you can’t fill in the blank line with something, your name isn’t a trademark.
If you can get a registration, should you? It probably isn’t necessary but some people do it anyway:
Harpo, Inc. has lots of registered trademarks for OPRAH® and a bunch more applications pending.
Morgan Freeman registered MORGAN FREEMAN® for “Entertainment services . . . ” in 2004.
DENZEL WASHINGTON is not a registered trademark.
There was only one registration for MICHAEL JACKSON® before his death: “sound recordings . . . and motion picture films featuring music and entertainment”
Eddie Murphy registered EDDIE MURPHY in 2002 but let the registration die in 2013.
Names can be trademarks but you need more than just fame to get there.
Thanks to Aaron A. for asking the question that led to this post.
[i] The owner of the application was actually BGK Trademark Holdings, LLC.
[ii] Fragrances, cosmetics, skin care products, namely, non-medicated skin care preparations, non-medicated skin care creams and lotions, namely, body cream, hand cream, skin lotion, body lotions, skin moisturizers, skin emollient, skin cleansing creams, skin cleansing lotions, all for adults and infants; hair care products, namely, non-medicated hair care preparations, non-medicated hair gel, shampoo, conditioner, hair mousse, hair oils, hair pomades, hair spray; Metal key chains and metal key rings; DVDs, CDs, and audio and visual sound recordings featuring musical performances; musical sound recordings; computer application software for mobile phones, portable media players, and handheld computers for use in downloading music, ring tones and video games; handheld and mobile digital electronic devices, namely, tablet PCs, cellular phones, laptops, portable media players, handheld computers; cases and covers for mobile phones and mobile digital electronic devices, namely, laptops, cell phones, radio pagers, mobile computers; downloadable web-based application software in the nature of a mobile application downloadable to handheld and mobile digital electronic devices for use in downloading music, ring tones and video games; decorative magnets, eyewear, eyeglass cases; computer bags; graduated glassware; Baby teething rings; Baby carriages, baby strollers; Books in the field of music, motion pictures, musical performers; photographs; posters; baby books; stickers; print materials, namely, art prints, color prints, concert programs, calendars, pens, post cards; gift bags; paper flags; trading cards; paper baby bibs; Bags, namely, tote bags, beach bags, handbags, diaper bags, baby carriers worn on the body, pouch baby carriers, luggage; small leather goods, namely, leather cases, leather bags and wallets, leather purses, leather billfolds, leather key chains, leather key cases; Plastic key chains and plastic key rings; small leather goods, namely, leather picture frames, leather key fobs, and leather key holders; plastic flags; vinyl banners, baby bouncers, baby changing mats, baby changing tables, high chairs for babies, playpens for babies; Mugs; beverage glassware; plastic water bottles sold empty; hair accessories, namely, hair combs; baby bathtubs; drinking cups for babies; Banners of cloth, nylon; flags, namely, cloth flags, nylon flags; towels; baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib blankets; baby blankets; Hair accessories, namely, hair ties, hair scrunchies, barrettes, hair bands, hair bows, hair clips, hair pins, hair ribbons, ponytail holders; novelty button; ; hair accessories, namely, electric hair-curlers, other than hand implements; Playing cards, balls, namely, basketballs, baseballs, footballs, kick balls, rubber balls, beach balls, golf balls, hand balls, tennis balls, racquet balls, soccer balls, sport balls; dolls, baby multiple activity toys, baby rattles, baby teething rings, baby swings; Product merchandising; online retail store services featuring music, musical recordings, motion pictures, clothing and clothing accessories, novelty items; Entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists; Entertainment services, namely, providing online video games, dance events by a recording artist, multimedia production services; Entertainment services in the nature of live musical performances; production of motion picture films, fan clubs.
[iii] This post is dealing with names of actual people, as opposed to names of characters people play. There was a post a few weeks ago on names like CAPTAIN KANGAROO.
When the NFT to Everydays — The First 5000 Days sold for $69.3 million, what, exactly, did the buyer buy? The right to print the work and hang it on their wall? The right to stop people from making copies of the digital file?
Those rights are part of copyright and the NFT didn’t include ownership of the copyright.
Does this make your brain hurt?
It shouldn’t. You do ownership-without-copyright all the time when you buy music, movies, and books. Even in situations where you’re buying a one-of-a-kind physical object, the copyright and the object don’t necessarily travel together.
For example, if you buy a painting, you own the painting but you can’t sell prints because you don’t own the copyright.[i]
Selling an NFT to a creative digital work is like selling an original painting. NFTs make it possible to record and track ownership of digital art, which couldn’t reliably happen before. NFTs may become a great way for creatives to capture the value of the non-physical items they create.
Is there a way for non-creatives to make money by creating NFTs?
If, for example, you owned an unrestricted digital copy[ii] of Everydays — The First 5000 Days, could you create an NFT and sell that for millions of dollars? Very doubtful. The Mona Lisa is valued at over $800 million but prints go for about $10. An NFT of your digital copy is more like the $10 print.
NFTs are cool and new. Analogies to the physical world can help us understand what they are and are not.
Shout out to Cassandra G. for the suggestion that led to this post.
[i] If the painting is old enough for the copyright to have expired, then you can make prints. That doesn’t mean you own the copyright, it just means there’s no copyright left. Sometimes art museums buy or license the copyright to a more recent piece of art so they can make and sell copies.
[ii] You don’t. Really. I promise you don’t. You also don’t have the right to create and sell an NFT with photos of paintings in museums. Even museums that allow photography almost always restrict photography to non-commercial uses. You could not legitimately create and sell an NFT for a photo of Van Gogh’s Starry Night that you took on your last visit to MoMA.
You apply to register your trademark. A few months later, the Trademark Office sends you a “Non-Final Office Action.” It looks like they’re refusing to register your trademark.
What should you do now? That often depends on the reason for the refusal.
Refusal for “Confusing Similar”
If the Trademark Office refuses to register your trademark because it’s “confusingly similar” to another trademark your response needs to be like a legal brief. You’ll need make legal arguments (including case law and evidence) to convince the Trademark Office it’s wrong. It takes me about 10 or more hours to prepare this type of response.
While drinking tea at a friend’s house, I noticed my mug asked the question: “Got Covenants?”
Hmmmm, I wondered, what would our friends at the California Fluid Milk Processor Advisory Board have to say about that?
Turns out the lawyers at Chadwick Washington have nothing to fear. There are hundreds of trademark registrations that take the form of the GOT MILK?® trademark. Here are a few of the more amusing ones:
GOT POO? (for dog waste removal)
GOT POOP? (also for dog waste removal, which what?)
GOT BALLS? is registered for ice cubes, dog toys and meatballs.
I think GOT MILK? is a famous mark, which means no one can use anything even remotely like it even in a completely different field. So what’s going on here?
There are two things that prevent the Milk Board from relying on its fame to shut down all the other GOT _____?
Although the Milk Board started using GOT MILK? in December 1994, it didn’t get around to filing to register the mark until 2000. By that time, there were at least twenty other companies using GOT _____?
More importantly, it looks like the Milk Board wasn’t the first to use GOT _____?
GOT A CASE OF THE SHORTS? was first used in 1990 and registered in May 1994, which is before the Milk Board started using GOT MILK?
GOT FLIES? was first used in April 1994, which is also before the Milk Board’s use of GOT MILK?
GOT LISTS? was first used in 1977
Put another way, despite GOT MILK?’s rise to fame, it just isn’t original enough to be meet the requirements for being legally treated as a famous trademark.
Dilution by tarnishment of Nike’s famous marks;[ii]
Is Nike’s suit likely to be successful (as a lawsuit, not as a PR move)?[iii]
People seem to be confused into thinking Nike is associated with MSCHF’s sales of the shoes. Social media is filled with people saying they will never buy NIKE® shoes again. MSCHF is engaged in parody and parody is a defense against a claim of tarnishment,[iv] but in order to use parody as a defense, MSCHF would need to be parodying Nike or its products. The statements made by MSCHF and Lil Nas X seemed to be focused on parodying anti-gay groups and attitudes.
But is that really the way to look at this case?
This case is different from most trademark cases: MSCHF is selling NIKE® brand shoes. In the photos used to promote the Satan Shoes, you can see the Nike swoosh but that’s because they are NIKE shoes.
Does Nike have the right to prevent people from making post-sale modifications to their shoes? Do trademark rights go that far? Can Tesla require that I keep my car clean because the image of a dirty car driving down the street with a Tesla logo tarnishes the TESLA® brand? Can Lacoste stop me from making an anti-racist speech while wearing one of their shirts?
This is a much bigger issue than trademark rights and I hope it’s treated that way.
[i] 15 U.S. Code § 1125 – False designations of origin, false descriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
(1) Injunctive relief. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
[iii] Public Relations isn’t my game, but I think Nike could have sought to distance themselves from the Satan Shoes while supporting the message of the campaign. A lawsuit is a powerful but crude PR tool not designed to make those types of subtle distinctions. I expect backlash against Nike for the suit.
(3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—
(i) advertising or promotion that permits consumers to compare goods or services; or
(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
Over the years, different actors have played Colonel SandersTM in commercials for KFC®. Some recent ads feature an animated Colonel Sanders on the side of KFC’s iconic bucket of chicken.
Does KFC need to get a separate trademark registration for each different image of Colonel Sanders?
Trademark registrations protect owners from not only exact copies of their trademarks but also from any use that’s “confusingly similar.” In the case of Colonel Sanders, no one can use a static logo, an animation, or a live actor performance of someone who looks like Colonel Sanders.
What does it mean to look like Colonel Sanders?
Each registration that includes an image also includes a description of the trademark. For example, Apple, Inc.’s logo is described as “an apple with a bite removed.”
The description of the Colonel Sanders trademark in most of the registrations owned by KFC refers to a man with one or more of the following: Goatee, glasses, and bowtie.
Does that mean no one else can use an image of a man with all or some of those elements?
Eastern Kentucky University uses an image of a man with a goatee and bowtie as a logo. The Trademark Office didn’t have a problem with it and, it appears from the Trademark Office record, neither did KFC.
Haute Diggity Dog® sells pet toys that call to mind famous brands such as:
It’s possible that Haute Diggity Dog has permission from these famous brands. If it doesn’t have permission it’s probably relying on being a non-infringing parody.
What does it take to avoid a claim of trademark infringement based on parody?
To be considered parody, you have to “convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the customer will be confused.”[i]
Producing trademark parodies requires nerves of steel because there’s no way to be certain ahead of time if you’ve successfully conveyed two contradictory messages.
Remember, also, that parodies work well only with famous brands, which usually have the money needed to defend their rights.
Do you think the toys in the basket are successful parodies? Would you be willing to take this type of risk in your business?
Shout out to Cassandra G. for both the suggestion for this post and for the photos of the actual dog toys.
[i]Cliff Notes, Inc. v. Bantam Doubleday Dell Publishing, 886 F.2d 490, 494 (2nd Cir. 1989)
Imagine a stationery company trying to register a vanilla taste in the adhesive on its envelopes. First they’d have to prove the taste wasn’t added to mask the taste of the adhesive (non-functional). Then they’d have to prove the taste isn’t just how the adhesive happens to taste (not inherent). So far, no one has jumped that hurdle.
There have been nine applications for taste marks and each has been rejected:
One for peppermint flavor for medical nitroglycerin
Six for beverages with different flavor combinations
Two for orange flavor for anti-depressant tablets and pills
What’s it going to take before we have a taste mark? It’s going to need to be like the Play-Doh® smell mark. The taste will have to serve no function, not be inherent to the goods, and it’s going to need to be as well-known as the Play-Doh smell so the owner can show the taste is actually functioning as a trademark even though a consumer can’t experience the taste before purchase.
Shout out to Cassandra G. for the suggestion that led to this post.
 The U.S. Trademark Office Trademark Manual of Examination Procedure (TMEP) §1202.13 says this: “[I]t is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function . . .”
The same section of the TMEP also says: “[C]onsumers generally have no access to a product’s flavor or taste prior to purchase. Thus, an application to register a flavor ‘requires a substantial showing of acquired distinctiveness.’”
 Here’s a list of all the reasons the applications were rejected:
The taste or flavor performs a utilitarian function;
The taste or flavor can’t function as a source indicator because consumers have no access to a product’s flavor or taste prior to purchase;
The taste or flavor failed to function as a trademark.