Google Genericide

In 2012, Chris Gillespie registered 763 domain names that included the word “google.”[1]

A few months later, Google took ownership of all of them using a special rule called “UDRP,” which is available only to registered trademark owners.[2]

Gillespie then tried to deregister two Google trademark registrations, claiming that GOOGLE had become generic.[3]

As we’ve already seen, if your product name becomes the generic word for the product you’re selling, you can lose your rights and your registration: linoleum, yoyo, cellophane.

Gillespie submitted the results of a Thermos survey[4] to show that “a majority of the relevant public uses the word ‘google’ as a verb – i.e. by saying ‘I googled it.’”[5]

The Ninth Circuit looked at the evidence Gillespie provided and asked whether the GOOGLE trademarks had “taken the ‘fateful step’ along the path to genericness.” Was the “primary significance” of Google “the name for a particular type of good or service irrespective of its source.”[6]

The court made it clear that just because someone uses a trademark as a verb, she isn’t necessarily using it a generic word: We have to explore what’s her mind. What does she mean when she says: “I googled adorable cat pictures”?

  • I used Google to search for adorable cat pictures.[7]
  • I used a search engine to search for adorable cat pictures.[8]

If she means the first sentence, she’s not using GOOGLE in a generic way.

The court said that Gillespie’s suit “cannot survive . . . based on ‘sheer quantity’ of irrelevant evidence”[9] showing that people “verb” Google. The surveys needed to be worded in a way that reveals what’s in the speaker’s mind.

So, go ahead and Beeline that trademark. Just be sure and do it at beelinelegal.com.

 

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[1] For example: googledisney.com; googlebarackobama.net; googlenewtvs.com.

[2] The Uniform Domain Name Dispute Resolution Policy or URDP. You have to own a trademark registration that predates the offending domain name registration in order to use UDRP.

[3] Mr. Gillespie actually joined an existing lawsuit that had already been filed by David Elliot. Both the UDRP proceeding and the lawsuit involved registrations 2884502 and 2806075. Elliot v. Google, Opinion issued May 16, 2017, page 4.

[4] Gillespie’s Thermos survey asked 251 respondents: “’If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?’ Over half of the 251 respondents answered this question by using the word ‘google’ as a verb.” Elliot v. Google, Opinion issued May 16, 2017, page 15.

Google used a Teflon survey: “A Teflon survey begins with a brief lesson explaining the difference between brand names and common names. It then asks respondents to classify a series of words, including the trademark at issue, as either brand names or common names. In response to Google’s Teflon survey, a little over 93% of respondents classified ‘Google’ as a brand name. Most respondents also classified ‘Coke,’ ‘Jello,’ ‘Amazon,’ and ‘Yahoo!’ as brand names, and classified ‘Refrigerator,’ ‘Margarine,’ ‘Browser,’ and ‘Website’ as common names. Unlike [the] Thermos survey, Google’s Teflon survey offers comparative evidence as to how consumers primarily understand the word ‘google’ irrespective of its grammatical function.” Elliot v. Google, Opinion issued May 16, 2017, page 16. Internal citations omitted.

[5] Elliot v. Google, Opinion issued May 16, 2017, page 5.

[6] Elliot v. Google, Opinion issued May 16, 2017, page 7. Emphasis added.

[7] This is called a “discriminate verb.”

[8] You guessed it: This is called an “indiscriminate verb.”

[9] Elliot v. Google, Opinion issued May 16, 2017, page 20.

“Happy Talk” Law is Dead!

Today Simon Tam of The Slants won a tremendous victory for free speech.

If you’re feeling despondent about the state of the world, if you’re in need of a booster shot for enlightenment thinking, if you long to have the government bitch-slapped for stepping on civil rights, if you want to laugh out loud, read on.

The U.S. Supreme Court vehemently rejected all of the government’s arguments for preserving the “disparagement clause” that allows the Trademark Office to refuse to register trademarks that may disparage or bring into contempt or disrepute any persons, living or dead.[1]

Although the justices[2] supported different reasons for their judgment, all of them agreed that the provision is total BS, constitutionality-wise.

Government Speech Schmovernment Speech

The court starting by rejecting the government’s argument that trademark registration is “government speech,” a category of speech not subject to First Amendment protection.[3] Here’s the court explaining why government speech is not protected:

“During the Second World War, the Federal Government produced and distributed millions of posters to promote the war effort. There were posters urging enlistment, the purchase of war bonds, and the conservation of scarce resources. These posters expressed a viewpoint, but the First Amendment did not demand that the Government balance the message of these posters by producing and distributing posters encouraging Americans to refrain from engaging in these activities.”[4]

The Court then hits the government upside the head with a baseball bat for its attempt to expand what’s included in “government speech.”

“But while the government-speech doctrine is important—indeed, essential—it is a doctrine that is susceptible to dangerous misuse. If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.”[5]

Then, just in case the government didn’t feel the baseball-bat love tap, the Court took out the big ammo and blasted away.

“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

“For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)? Was the Government warning about a coming disaster when it registered the mark ‘EndTime Ministries’?”[6]

Not Even if It’s Commercial Speech

 The Court next considered whether trademark registration is merely “commercial speech,” which is subject to a lesser level of First Amendment protection than non-commercial speech. The Court chose “not to resolve” the debate about whether or not it’s commercial speech “because the disparagement clause cannot withstand even the lower level of review for commercial speech.”[7]

“A simple answer to this argument is that the disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”[8]

In his opinion, Justice Kennedy sums it all up beautifully:

“A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society. ”[9]

Rock on, SLANTS. Rock on SCOTUS. Rock on RIGHTS.

 

 

[1] 15 U. S. C. §1052(a)

[2] C.J. Roberts, J. Alito, J. Thomas, J. Breyer, J. Kennedy, J Ginsburg, J. Sotomayor, and J. Kagan. J. Gorsuch took no part in the consideration or decision of the case.

[3] The Court also rejected various related arguments about lesser levels of government involvement in speech. Read the full opinion for details.

[4] Slip Opinion at p 13.

[5] Slip Opinion at p 13-14. Emphasis added.

[6] Slip Opinion at pp 14-15. Emphasis added. Citations omitted.

[7] Slip Opinion at p 24.

[8] Slip Opinion at p. 25. Emphasis added.

[9] Opinion of J. Kennedy’s at p 8. Emphasis added.

Prada Place

Do you think I should be allowed to create a housing development with street names based on luxury brands?

  • Maserati Drive
  • Prada Place
  • Armani Avenue
  • Tiffany Circle
  • Rolex Road

Here’s what the law says: “Any person who . . . [uses] any word . . . which is likely to cause confusion . . . as to the affiliation or association of such person with another person “[1] is infringing.

It sounds like I could use those street names because no one buying a lot from me would be confused into thinking that my development is affiliated with those famous luxury brands, but . . .

If you still think this is somehow wrong, you’re absolutely right. I shouldn’t be allowed to get the benefit of the luxurious feeling these brands convey in order to sell dirt in my housing development.

In fact, there’s a separate section of the law that allows the owner of a famous trademark to get an injunction against someone like me who uses their trademark in a way that “is likely to cause dilution[2] . . . of the famous mark, regardless of the presence or absence of actual or likely confusion . . ..”[3]

Famous trademarks have special rights that other trademarks don’t have and this story explains why. Even though everyone knows that Prada isn’t associated with my housing development, people would rather buy (and would probably be willing to pay more for) a lot on Prada Place rather than Peppermint Place. I would be taking unfair advantage of someone else’s valuable asset and that’s not OK.

 

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[1] 15 US Code Section 1125(a)(1)

[2] There are two kinds of “dilution”. “Dilution by blurring” happens pretty much whenever someone uses of a famous brand to promote or sell something without permission from the owner. “Dilution by tarnishment” happens when they use the famous brand to sell something that is kind of crappy. For example, if the housing development were a mobile home park.

[3] 15 US Code Section 1125(c)

Trademark Super Powers

Futbol Club Barcelona, known to its fans as Barça, is a worldwide powerhouse of professional soccer. It holds the record for the most FIFA wins.large

In May 2015 Barça filed an application to register a trademark made up of alternating blue and red vertical stripes. The application covered a bunch of stuff including shirts, jerseys, soccer shorts, footwear, and hats.

adidas, The Brand With Three Stripes®, was having none of that.

Do you think Barça’s red/blue striped logo is “confusingly similar” to the adidas logo? In other words, if you saw a running shoe with the blue/red stripe design would you think they were made by adidas?

Do any of these facts change your mind?

  • adidas has more than two dozen U.S. trademark registrations for their three-stripe logo.
  • adidas has been using its three-stripe logo on shoes since 1952 and on other athletic apparel since the 1960s.
  • adidas “sponsors internationally famous soccer players, including David Beckham, Lionel Messi, Paul Pogba, Mesut Ozil and Gareth Bale.” *
  • adidas uses the three-strip logo on soccer cleats, soccer balls, soccer jerseys, shin guards, and goalie gloves.
  • The Trademark Office examiner didn’t find Barça’s trademark confusingly similar to the ones owned by adidas.

Q:  What do you think happened after adidas opposed the application? Take some time to think about it. I’ll wait.

Lalalalalalalala.

A: Several months after adidas filed the opposition, Barça voluntarily agreed to withdraw its application.

Was that what you thought would happen?

 

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* Notice of Opposition, page 7.

Swastikas and Red Stars

In Hungary, the government is considering a bill to ban trademarks that include symbols of totalitarian regimes, including swastikas and red stars.* This wouldn’t just prevent registration of the trademark like we saw in Mr. Tam’s case. This would make using totalitarian symbols as a trademark a criminal offense. People could actually go to jail.

Pellegrino.png

If passed, the new law would have the biggest impact on Heineken, but it could also affect other companies, like San Pellegrino.

Whatever your political bent, I think you should have a problem with this bill. Both Heineken and San Pellegrino were using a red star before it was co-opted as a symbol of Russian communism. Heineken started using the five-pointed red star in 1916 and San Pellegrino first used it in 1910. It didn’t become a symbol of communism until at least 1917.

Let’s see what you think by looking at two items I found in the U.S. Trademark Office database that contain a swastika.

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This trademark is registered:

 

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This trademark is a portion of a pending application.

 

 

Does it matter to you that in the first case, the swastika is being used as a Buddhist symbol and the second one appears to be used as a neo-nazi symbol? Would you buy products or services offered by either of these companies?

If you think that neither should be allowed, do you think people who use them should go to jail or just be prevented from getting the extra protection of registration?

It’s important to think about free speech, even when talking about trademarks.

 

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*This played out before, in 2013. The Hungarian Constitutional Court threw out an earlier law that criminalized totalitarian symbols. That law was revised to include a requirement that the person using the symbol have the intent to undermine social peace.

Examiners are People, Too

Last weekend, I rode my bike to DUMBO[1] to confirm that I’m nowhere near cool enough to spend time there. My suspicions were borne out before I even entered the local exceptionally cool coffee house (ECCHO), so I left immediately to write a trademark blog instead. When facing your lack of cool, go back to what you do well.

I knew I wasn’t cool enough because outside the ECCHO was this:

IMG_1670

From the relative safety of my LES[2] office I checked to see whether Dog Parker, Inc., the maker of the DOG PARKER, had been able to register their trademark, which seemed to me to be “merely descriptive,” which would prevent its being registered.

I was surprised that they had succeeded in registering DOG PARKER for “Pet boarding services” with only a disclaimer for the word “dog”.[3] The examiner didn’t even question whether DOG PARKER was “merely descriptive” for selling use of this temporary dog house.

So, was I wrong? Was the Trademark Office wrong?

No one was wrong. It’s just that Trademark Office examiners are individuals and trademark law is a bit of an art, rather than a science. A different examiner may have reached a different conclusion and issued an office action refusing to register the trademark.

That said, if I were Dog Parker, Inc., I would definitely come up with a good generic phrase for this sort of thing so that DOG PARKER doesn’t become the generic phrase and they lose their rights.

 

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[1] DUMBO is an acronym for Down Under Manhattan Bridge Overpass. No neighborhood is cool until it has an acronym.

[2] Lower East Side. I’m almost cool enough to have an office on the LES. Close enough to fake it, anyway.

[3] A disclaimer means that the owner of the trademark doesn’t claim any exclusive rights to a particular word, in this case “dog.”

Oh No, DŌ!

There’s a really long line outside a shop that just opened in my neighborhood. And there should be, because the product is super yummy and everything about the packaging and delivery is spectacular, except . . .

Oh no, DŌ.

The owner of the shop, Cookie Dough, Inc., filed two applications with the Trademark Office to register DŌ for:

“Cookie dough; Cookies; Bakery goods and dessert items, namely, cakes, cookies, pastries, candies, and frozen confections for retail and wholesale distribution and consumption on or off the premises; Edible cookie dough not intended for baking; Frozen cookie dough.”

Unsurprisingly, the Trademark Office is refusing to register DŌ on a variety of grounds, including that “the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.”

In other words, Cookie Dough, Inc. can’t have exclusive use of the word “dough” for selling dough because people who sell dough, need to be able to say “dough” when selling dough. And in the world of trademarks “dough” and “DŌ” are the same thing.

This is such a terrible shame, because they’re going gangbusters and I suspect they’re getting a lot of buzz. It’s just so sad to have to deal with a risk that could have been avoided, especially when everything else about the business idea and execution are so awesome.

 

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Protection of Clothing Designs

The U.S. Supreme Court recently ruled in the Star Athletica v. Varsity Brands case, which involved copyrights for designs on cheerleading uniforms.

The Court ruled in favor of Varsity Brands (the owner of the copyrights), but fashion designers shouldn’t get too excited. The ruling doesn’t expand their rights all that much.

Think of it this way:

  1. It’s always been true that a fabric design CAN be copyrighted.
  2. It’s always been true that a dress design can NOT be copyrighted.

All the Court said is that Varsity Brands’ copyrighted designs on the fabric of their uniforms are more like statement 1 (rather than statement 2) and the court should hold a trial to determine whether Star Athletica’s cheerleader uniforms infringe on Varsity Brand’s copyrights.

The ruling does NOT mean that the cut, shape, style, or fit of a piece of clothing can be protected through copyright. Here’s what the court said:

“[T]he only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. [Varsity Brands has] no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions . . .. They may prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.”

Clothing designers are going to have to continue to rely primarily on the strength of their brands, the quality of their goods, and the loyalty of their customers.

Loooooong Trademarks

We can all think of trademarks with no words, and with a few words, but can a whole bunch of words be a trademark?

One of the early loooooooong trademarks was a bunch of words mushed together owned by McDonald’s Corporation:

TWOALLBEEFPATTIESSPECIALSAUCELETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN

Lululemon.png

 

Lululemon® filed an application to register this trademark that consists of 532 words and a couple of images. It’s already passed review by the Trademark Office.

 

 

 

 

The owners of Dr. Bronner’s Magic Soap® took a different approach. They filed an application to register the layout of their label, rather than the words themselves. Their application hasn’t been reviewed by the Trademark Office yet. It’ll be interesting to see how it does.

Dr. Bronner's.pngDr. B real label.png

 

 

 

 

 

Does this mean you should get a trademark registration for all the words on your label?

No. It doesn’t mean that at all.

Each of these examples are long strings of words that are acting as a trademark.

If I showed you the Dr. Bronner’s label, you would probably tell me: “Oh, yeah, it’s that soap. Dr. Bronner’s, right?”

img_9415If you saw someone walking down the street with this bag, you would know it was a shopping bag from Lululemon®.

If I listed the ingredients of a BigMac® in just the right order, you would know I was referring to McDonald’s®.

So, unless your bunchofwordsstrungtogether is how consumers identify your company, you don’t need (and probably can’t get) a trademark registration.

 

 

 

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Trademark Scams

According to this email, Trademark Compliance Office will monitor my trademark for infringing marks and register my trademark with U.S. Customs and Border Protection. All for $385!

Also, I have this bridge, which I can let you have for the very low price of $639.99.

Artashes Darbinyan, the ostensible owner of Trademark Compliance Office, was caught[1] after bilking over 4,000 people for more than $1.6 million. He didn’t actually provide any service.

He just took the money.[2]

Don’t worry though, even though Mr. Darbinyan’s been caught, there are still plenty of scammers out there.

I know because I always use my own email address when I file applications for my clients. That means I get lots and lots of email scams, including quite a few from Mr. Darbinyan.

Not all the scam letters come through email. Some come by snail mail. Here are some examples:

They look legit, don’t they?

So, what’s an applicant to do?

  1. The Trademark Office never ever asks for money in an email. All email from the Trademark Office comes from a uspto.gov address.
  1. The Trademark Office also never asks for money through snail mail. The only thing the Trademark Office sends by mail is your registration.
  1. If you want to have U.S. Customs monitor shipments for knock-offs, you can do that yourself. 
  1. Use common sense. Be skeptical. That’s good advice for life.

 

[1] Mr. Artashes was caught in a joint operation of the U.S. Justice Department, the U.S. Postal Service, and the IRS, with an assist by the Trademark Office.

[2] “As part of his guilty plea, Darbinyan admitted that he ran a mass-mailing scam through companies called Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO).  The scam involved fraudulent offers of a service in which TCC and TCO promised to monitor an applicant’s trademark for infringing marks and to register the trademark with U.S. Customs and Border Protection (CBP) . . .. Darbinyan never registered, nor ever intended to register, any of the trademarks with CBP for the customers who paid the fee.” Department of Justice news release.