Got ___________ ?

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 MOHS?
  • GOT RHOIDS?
  • 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.

Nike®, MSCHF, and Lil Nas X

MSCHF is transforming Nike® Air Max® 97s into “Satan Shoes” by changing various elements of the shoes including, allegedly, adding a drop of human blood to the fluid-filled cushioning of the shoes.

Lil Nas X and MSCHF are using the sale of the 666 pairs of shoes to take a stand against public criticism Lil Nas X has received for being gay.  

Nike has filed a lawsuit to protect its trademark rights. I haven’t read the complaint but I assume it’s based on at least one or both of the following:

  • Likely to cause confusion;[i]
  • 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.

[ii] 15 U.S. Code § 1125  

(c) Dilution by blurring; dilution by tarnishment

(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.

[iv] 15 U.S. Code § 1125  

(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.

(C) Any noncommercial use of a mark.

Describe Colonel Sanders

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?

Nope.

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?

Nope.

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.

Determining whether a logo is confusingly similar is a bit of an art. That said, KFC’s Colonel Sanders logo is well-protected with the registrations it already owns.

Shout out to Liz B. for asking the question that led to this blog post.

Parody or Infringement

Haute Diggity Dog® sells pet toys that call to mind famous brands such as:

  • Prada®
  • Birkin®
  • Louis Vuitton®
  • Absolut®
  • Starbucks®
  • Budweiser®
  • Cartier®
  • LaCroix®

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)

Can You Taste a Trademark?

There are 250 U.S. trademark registrations that can’t be seen.

  • Most are for trademarks you can hear.
  • Thirteen are for trademarks you can smell.
  • One extraordinary trademark can be experienced through touch.

How many registered trademarks can you experience by taste?

None. And it’s no accident. For something to function as a trademark, it has to be:

  • Non-functional; and
  • Not inherent to the goods.[1]

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:[2]

  • One for peppermint flavor for medical nitroglycerin
  • Six for beverages with different flavor combinations[3]
  • 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.


[1] 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.’”

[2] 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.

[3]

  • Lavender, mint, lemon grass, and thyme
  • Lemon grass, mint, and vanilla
  • Jasmine and vanilla
  • Ginger and lemon peel
  • Cloves, cardamom, and cinnamon
  • Cinnamon and orange peel

Zits

Imagine starting a high-end brand using a word that brings to mind everyone’s worst memories from their teenage years.

When I first saw an ACNE STUDIO® store, I thought it was an exceptionally odd choice of trademark for a luxury fashion brand. I assumed, incorrectly, that “acne” meant something different in Sweden. Nope, the Swedish word for “acne” is . . . “acne.”

According to Wikipedia, ACNE was “initially an acronym for Associated Computer Nerd Enterprises that was later changed to Ambition to Create Novel Expressions.”

Interesting, but doesn’t explain the choice. If your inspiration were “Zeroing In To Style” you’d probably lay off the acronym.

The more I thought, the more I liked ACNE as a brand. It says it doesn’t care about your preconceived ideas. If you can’t think past being an uncool teenager, maybe you should buy your clothes elsewhere.

The approach is similar to a recent ad campaign for DORITOS® that “features no logo or brand name, to attract a younger, advertising-averse generation.” The ads feature bags in either solid red or solid blue and equilateral triangles with hashtags: #cheesy #cool #spicy #ranch.

Of course the DORITOS ads aren’t really free of logos. They’re chock full of logos: They’re just less obvious. This advertising appeals to people who think of themselves as advertising-averse. This is akin to the strategy used by ACNE STUDIOS. It says “You’re cool. So are we. Buy our stuff.”

Shout out to Liz B. for bringing the DORITOS ads to my attention and to Mary M. for making me think differently about ACNE.

Football-Shaped G

When people think about protecting a trademark, they usually think about a cease and desist letter followed by a lawsuit but there’s another way to protect a trademark. Here’s a great example of that strategy in action.

In 1960, the Green Bay Packers® starting using a football-shaped letter G as a logo.

In 1964, the University of Georgia began using a football-shaped letter G as a logo. Before adopting its new logo, the University ask the Packers for permission. The Packers said yes.

Why would the Packers give their permission? I don’t know but I can speculate. The Packers had two choices:

  • Refuse permission and:
    • Look like a bully; and, potentially
    • Spend a bunch of money to defend its rights while possibly not having strong enough rights to be defensible. After all, their logo is just a slightly squashed letter G and, in 1964, the G logo wasn’t even a registered trademark. Any legal action would be based on the Packers’ common law trademark rights.

OR

  • Give permission and:
    • Look like the good guys; and,
    • Maybe
      • Get some contractual rights for how Georgia uses the logo (colors, exact specs of the design, etc.); and
      • Set a precedent of getting people to ask the Packers for permission.[i]

Here’s the lesson: If you aren’t sure whether you can win in a legal battle and the other trademark user isn’t likely to tarnish your brand, it may make sense to give them permission rather than being oppositional.

Shout out to Julie W, a loyal reader of the Bee Blog and a frequent contributor of post ideas.


[i] Grambling State University also started using a football-shaped G as its logo in 1974. Grambling State also reached out to the Packers and was given permission.

Copycat?

CEC logo

In December 2019, Canadian Energy Center rolled out its new logo across its social media accounts.

Progress Software logo

The Twitterverse was quick to point out that the new logo was identical to the logo used by Progress Software Corporation, except for the change in color.

CEC “alternate logo”

Bowed but unbroken, Canadian Energy Center quickly pivoted and started using what a CEC spokesperson referred to as “an alternate logo.”

ATK logo

It didn’t take long for ATK Technologies to point out that CEC’s new logo was suspiciously like ATK’s logo.

Leaving aside whether the logos selected by CEC are infringing, how did this happen? Was it a coincidence? Did the agency who prepared the first logo actually copy the Progress logo? Was whoever created the second logo also a copycat?

It’s hard to know whether these are cases of blatant copying. Creatives who work on logos tend to notice logos. They may not consciously realize they’re copying something they once saw in passing.

That’s why it’s up to the client to check on what’s out there before launch. Even if you’re not infringing, it’s embarrassing to screw this up. Screwing it up twice looks like you have no idea what you’re doing.

Shout out to Liz B. for sending me the information that led to this post.

An OK Way to Use Someone Else’s Trademark

Q: My bakery sells cakes with crushed NILLA® wafers mixed into the icing. We call it the “The Nilla Nihilation.” Is that okay?

A: Nope. You can’t use someone else’s trademark like that without their permission.

Q: Then how do we tell people what’s in it?

A: You can use NILLA in the description of the cake, like this: “A vanilla lover’s dream. Moist yellow cake, richly coated with buttermilk icing mixed with crushed Nilla® wafer cookies.”

Q: What’s the difference? I’m still using NILLA. Why can’t I put it in the name of the cake?

A: Describing your cake as containing Nilla® wafer cookies isn’t using NILLA as a trademark. It’s just naming an ingredient. It’s a subtle but very real legal difference.

Q: Okay. Anything else I should know?

A: It’d be a good idea to include this in the fine print: “Nilla® is a registered trademark owned by Intercontinental Great Brands LLC.”

Q: NILLA wafers contain high fructose corn syrup, which, yuck! We found vanilla wafer cookies that don’t use corn syrup. We’re gonna use those instead.

A: Then the description of the cake can NOT include NILLA. Remember Ben & Jerry’s® Coffee Heath® Bar Crunch ice cream? That’s now called Coffee Toffee Bar Crunch because Ben & Jerry’s stopped using Heath® bars.

Q: I can’t believe Nabisco would even care.

A: They will. Many companies have licensing deals with other brands and the trademark owner has to make sure other people aren’t using the trademarks without a license.

Shout out to Ginny J. for asking questions that led to this blog post.

Trademark Bullies Strike Again

Some trademark owners are bullies:

Other trademark owners are legitimately aggressive in protecting their rights:

Here are some of the logos Apple, Inc. has gone after in one 12-month period.

What do you think? Is Apple, Inc. a bully or legitimately protecting its rights?

To answer that question, we should start with a comparison of the marks themselves and then compare the goods and services sold under the marks we’re comparing.

Here’s Apple Inc.’s logo. Would someone looking at the logos pictured above think of Apple, Inc.?

Here are the goods and services sold under the logos pictured. Which of these are similar to the goods and services sold by Apple, Inc.?

  • Meal planning app
  • Sales of computers and phones
  • Weight loss consulting services
  • Case management services to people with disabilities
  • Test preparation services
  • Sex coaching services
  • Online grocery store services
  • Speech-language pathology services
  • Occupational therapy services
  • Health counseling
  • Psychological counseling
  • Primary and secondary school education

Trademark owners should protect their rights but always with an eye toward whether there’s a genuine likelihood of confusion. So waddaya think, bully or not?

Thank you to Murray L. for the suggestion that led to this post.