FUCT, Reprise

This is a special edition of the Bee Blog to convey some breaking news.

There’s a statute that says which trademarks can’t be registered. Here’s what part of it says:

“No trademark . . .  shall be refused registration . . . unless it— . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . .  persons . . .”

Back in 2017, the United States Supreme Court ruled that it was unconstitutional to refuse to register a trademark because it’s disparaging. Because of that ruling Simon Tam was allowed to register THE SLANTS for an Asian rock band.46051501_01

The U.S. Court of Appeals for the Federal Circuit recently used the Tam decision to support it’s ruling that it’s also unconstitutional to refuse to register a trademark because it’s immoral or scandalous. That a victory for Erik Brunetti and his trademark FUCT.

That means lots and lots of applications to register will be moving forward. The Queen Bee will definitely be following their progress.

 

 

You Aren’t Clever Enough to Get Our Trademark

Radios were once all the rage. Shacks were once a cool place to shop, but in the 21st century no one wants to shop at RADIO SHACK®.

Meet the “Radio Shack Problem“: A descriptive trademark that holds you back when markets and social trends move on.

Dress barn.jpg

This ad campaign by DRESS BARN® attempted to overcome a self-inflicted marketing wound by claiming that it’s really the customers who are too dense to get it.

OVERSTOCK.COM® is spending tons on advertising to convince customers that the word “overstock” in their name is just a great big misunderstanding and customers certainly shouldn’t think of them as an “overstock” company.

Rice Krispies

2-pound Rice Krispie Treat®

A recent trip to my local IT’SUGAR® showed they’re on track to become a Radio Shack Problem. IT’SUGAR sells candy bars the size of coffee tables. They also sell tchotchkes that aren’t made of sugar. Pretty soon they’ll be running ads to let everyone know they sell both edible and non-edible chazerei.

Non-sugar Chazerai

Tchotchkes

Don’t be a Radio Shack Problem. Pick a trademark that’s suggestive so it will stand the test of time: NEST®, ROOMBA®, APPLE®, GOOGLE®, AMAZON®. Those brands will go anywhere, anytime and do anything you need them to do.

The owners of those trademarks never have to berate customers for not understanding their brand because those companies didn’t mislead their customers in the first place.

 

Thanks to Liz B. and Max F. for sending stuff that suggested this post.

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Trademark’s Cousin: Copyright

Trademarks are my passion, but when cool stuff happens in copyright, I just have to write about it. [1]

What Happened?

Robert Davidson is the creator of the Lady Liberty statue at the New York-New York Hotel & Casino in Las Vegas.

In 2010 the United States Postal Service inadvertently selected a photograph of Davidson’s statue to use on its Forever® stamp. The Postal Service thought it was a picture of the actual Statue of Liberty.[2]

Davidson sued the Postal Service for infringing his copyright.

Everyone agreed that the image on the postage stamp was of Davidson’s statue but the Postal Service argued its use wasn’t infringing because:

  • Davidson’s statue isn’t entitled to copyright protection; and
  • The Postal Service’s use was “fair use” under the Copyright Act. [3]

The Statue is Entitled to Copyright Protection

The Copyright Act protects sculptural work derived from another work as long as its original and contains “nontrivial expressive variation.” [4] Davidson testified at length about how he had given the statue’s face a fresh look, modeling it on his mother-in-law.

The court found that the Postal Service used the image of Davidson’s statute specifically because of the differences Davidson made to the statue’s face.

The Postal Service’s Use is Not Fair Use

The Postal Service’s “use of the image on its . . . workhorse stamp, printing billions of copies and selling them to the public as part of a business enterprise . . . so overwhelmingly favors a finding of infringement that no fair use can be found.”[5]

This little mistake cost the Postal Service $3,554,946.95 + interest + legal fees.

Bottom line: Using someone else’s intellectual property is a really big no-no.

 

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[1] Trademark rights protect your brand. Copyright protects original works of authorship.

[2] Judge Eric G. Bruggink of the U.S. Court of Federal Claims described the selection process like this: Terry McCaffrey, the manager of stamp development at the time, “initially narrowed his selection to . . . three images . . ., one of which was of plaintiff’s statue, a photograph of the [statue’s] face taken by Raimund Linke. Mr. McCaffrey . . . did the subsequent culling by himself over the course of a single afternoon. He then . . . obtain[ed] digital image files that he could work with to make his final selection. The photograph of plaintiff’s sculpture came from Getty Images (“Getty”). Mr. McCaffrey did not realize that it was not of the New York statue. The other two pictures, from other vendors, were of the original statue.” Opinion of the U.S. Court of Federal Claim, Case No. 13-942C at page 10 (July 29, 2018).

[3] 17 USC §107. Here’s a great way to understand “fair use”: Everyone always thinks their use is fair use but it almost never is. Literally, not once has it been fair use when one of my clients has used copyrighted materials thinking it was “fair use.”

[4] 17 USC §102(a)(5). Shrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 521 (7th Cir. 2009).

[5] Here are the reasons the court gave for finding that the Postal Service’s use was not “fair use.”

  • The “purpose and character” of the Post Office’s use was commercial.
  • The “nature” of the copyrighted work as a “replica” favors neither party.
  • The “portion used” was only the face of the entire statue but that was the part that was most original.
  • The “effect of the use” did not result in any revenue lost to Mr. Davidson because there was no ready market for images of the statue’s face. For the Post Office.

Opinion at pages 21-24.

 

Featured image By user: Flicka [GFDL or CC BY-SA 3.0 ], from Wikimedia Commons

Battle of the Bottles

There are hundreds of registered trademarks for bottle shapes, but using a bottle shape as a trademark is subject to all the same issues as word trademarks: If other companies are using something the same or similar, then it’s not a trademark because it can’t serve to identify a single source of goods.

For example, these bottle design trademarks are distinctive:

Screen Shot 2018-06-05 at 12.05.24 PM.pngScreen Shot 2018-06-05 at 12.03.08 PM.pngScreen Shot 2018-06-05 at 12.04.11 PM.png

Drawing for bottlw

S’well’s bottle.

Contrast those distinctive designs with the registered bottle design of Can’t Live Without It, LLC, dba S’well Bottle, which is more pedestrian.

S’well has had some success enforcing its bottle-design trademark rights, but it recently lost a case. Here’s what went down.

S’well sued ETS Express, Inc. for infringing S’well’s bottle design. The jury found that ETS was not liable on any of S’well’s claims. It’s likely that ETS submitted evidence that it was able to purchase “S’well-like bottles from various stores and websites . . .”* which helped the jury conclude that S’well’s design is not distinctive enough to serve as a trademark.

In May 2017, ETS filed to have S’well’s registration for the bottle design cancelled. Now that the lawsuit is over, the cancellation proceeding can move forward. I’ll keep an eye on it and let you know how it turns out.

MVIMG_20180601_203923

Not S’well’s bottle.

The moral of the story: If you want people to know you by your trade dress, pick something that really sets you apart. For long-time readers, you’ll no doubt recognize this as the same advice as I give for word marks and logos.

 

 

Thanks, Cody B. for another great sighting and for letting me use his photo!

 

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*I’m quoting an Opinion and Order of District Judge Rakoff from January 2018, in which Judge Rakoff granted ETS’s motion for summary judgment on some of the claims brought by S’well and denied the motion for summary judgment on other claims.

Judge Rakoff denied ETS’s motion for summary judgment in connection with claims that would have required him to conclude that the shape of S’well’s bottle is generic. Those claims were then argued in front of a jury as part of the trial. I’m assuming that ETS submitted evidence at trial that was similar to the evidence ETS submitted in support of its motion for summary judgment.

Famous Joe’s Original Carmine Street Pizza of New York

If you’re planning on opening a pizza parlor, for the love of mozzarella, please don’t name it JOE’S.

Or FAMOUS JOE’S PIZZA.

Or FAMOUS JOE’S ORIGINAL PIZZA.

Or FAMOUS JOE’S ORIGINAL CARMINE STREET PIZZA.

Or anything else with JOE. Or any other Italian or quasi-Italian name. Or Heinrich, for that matter. Just no names. Whether it’s your name or not.

Because ORIGINAL is unoriginal. And FAMOUS . . . do I really have to explain why that should never appear in a trademark?*

And because there are already plenty of people fighting over the rights to those names and banal words. Presumably, you’re opening a pizza place because you want to make pizza and/or money. If you use those words, all you’re gonna make are trips to the courthouse and payments to your lawyer.

I’ve said it before and I’ll say it again:

  • Don’t use your name (or any other name) as your trademark.
  • Don’t use lame words like WONDERFUL or TASTY or EXPRESS or BEST or FRESH or HOT or PRIME or GREATEST. No matter how you spell it.
  • Don’t use the name of the street you’re on, or the neighborhood, or the city or BIG APPLE or PIKES PEAK or BAY AREA.

The whole point of a trademark is to distinguish your business from other businesses so your customers will remember you and be able to tell their friends.** If you pick words that everyone else is using, that will NOT work.

Thanks for listening. I feel better now.

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*Because places that are famous don’t put that in their name.

**I found this great pizza place. It’s called Joe’s. No not that Joe’s. This one’s on Spring between Mott and Elizabeth. No, not that one either. That one’s on Prince between Broadway and Mulberry. Yeah, that one. Oh, it closed already. I wonder why?

Wings on Cars

In 1937, Bentley Motors Limited registered this trademark for automobiles.

Bentley logo.png

In 2017, Hyundai Motor Company registered this trademark for automobiles.

Genesis logo.png

It isn’t too far-fetched to think that Hyundai’s trademark is infringing on Bentley’s trademark: They’re both for cars and have stylized wings as the dominant feature.

So why is this OK?

It all comes down to the du Pont factors.

Regular readers may recall a case involving E. I. du Pont Nemours & Co. The court in that case set out factors that trademark attorneys use to decide whether two trademarks are confusingly similar. Here are some of them:

  • The similarity of the marks as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services.
  • The number and nature of similar marks in use on similar goods.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

Bentley and Hyundai can each use its stylized-wing trademark because of the last bullet.[1]  A car buyer is unlikely to accidentally buy a Genesis®  instead of a Bentley® because of the similarity of these two trademarks. Car buyers are engaged in “careful, sophisticated purchasing” and unlikely to casually mistake one for the other.

Imagine, though, this type of similarity on bags of potato chips. Someone is likely to grab a bag of chips while simultaneously talking on the phone and popping a Binky® brand pacifier back in his baby’s mouth. In other words, an “impulse” purchase.

Now you know why these trademarks can co-exist.

 

Cody B. gets the shout out for asking the question that sparked this post.

 

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[1] I think the final bullet (care of the purchaser) is the most important du Pont factor in this instance, but the third bullet (number and nature of similar marks in use on similar goods) is also important. There are lots of car companies using similar wing designs.

Wings on cars.png

Big Ass Trademarks

Delta T is clearly the BIG ASS® trademark leader: It owns twelve trademark registrations* including ones for BIG ASS, most of them for fans and lighting.

Plenty of BIG ASS corpses litter the Trademark Office database. Between May 2016 and December 2017, nine applications died because of the registrations owned by Delta T. Those applications were for a huge variety of goods, most of them having nothing to do with fans and lighting. Here’s the info on those dead applications:

Trademark Goods What happened Date of Death
Big Ass Pizza Clothing Trademark Office refused to register because of Delta T’s registrations. December 2017
Big Ass Bulbs Light bulbs Trademark Office refused to register because of Delta T’s registrations. November 2017
Big Ass Bowl Bowls Delta T opposed the application. Applicant abandoned. July 2017
Big Ass Candles Candles Trademark Office refused to register because of Delta T’s registrations. May 2017
Big Ass Floors Retail store services Applicant abandoned the application before it was ever reviewed. November 2016
Big Ass Bar Soap Soap Delta T opposed the application. Applicant abandoned. December 2016
Big Ass Flask Flasks Trademark Office refused to register because of Delta T’s registrations. October 2016
Big Ass Air Freshener Air freshener dispenser Delta T opposed the application. Applicant lost because he never responded. October 2016
Big Ass LEDs Electronic signs Delta T opposed the application. Applicant abandoned. May 2016

What are the lessons here?

  • You don’t necessarily have to be selling the same or similar stuff to be considered “confusingly similar” to another trademark. It depends on the strength of the other trademark.
  • Delta T’s ability to fight off new applicants is enhanced by the rareness of its mark. Delta T would NOT be having as much success with its oppositions if it had stuck with HVLS Fan Co., its original name.
  • Delta T is committed to protecting its mark and is willing to spend the time and money to fight when necessary.
  • It’s rarely a good idea to go up against a company that’s as committed as Delta T to fighting for its trademark rights.

All excellent lessons.

 

Big shout out to Irv L. for the suggestion that led to this post. Photos courtesy of and © Big Ass Fans.

*Twelve registrations as of August 2018. Several of the registrations are for HAIKU®, the fan in the featured photo for this post and another great trademark. Delta T also has trademark rights in the yellow on the ends of the blades of their industrial fans. This is a company that really understands branding and trademark law.

Big-Ass-Fans-Industrial

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Aloha Is a Toothpick

Aloha Poke Holdings, LLC of Chicago sent out a bunch of nastygrams to all sorts of people who were using ALOHA as a trademark. Aloha Poke was called out on social media and apologized, which is entirely appropriate because they seriously overreached.

Owning a trademark doesn’t give you the right to stop people from using the trademark for stuff that’s sufficiently different from your stuff.

How different is “sufficiently different”? That depends. If your trademark is used by lots of people, then the stuff doesn’t have to be very different at all:

  • If your trademark for cabinets is used in lots of trademarks, then someone could probably get away with using it for furniture.
  • If your trademark for cabinets is really rare, then no one else could use it for most stuff that goes into houses.

How commonplace is ALOHA? There are 1100 applications and registrations that contain the word ALOHA, including these for restaurants and restaurant services:

ALOHA CUP BAP Application
ALOHA SNACKS Application
ALOHA FRESH Application
ALOHA HAWAIIAN BBQ Application
ALOHA MAUI YOGURT Application
ALOHA KITCHEN Application
B ALOHA Application
ALOHA SALADS Registration
ALOHA HAWAIIAN BBQ Registration
ALOHA INSIDE Registration
ONE OHANA SHARING ALOHA Registration
ALOHA WOW WOW HAWAIIAN LEMONADES Registration
TASTE THE ALOHA Registration
ALOHA TABLE Registration
ALOHA GRILL Registration
ALOHA BAGELS Registration
OCEAN ALOHA Registration
HALE ALOHA Registration
ALOHA SERVED DAILY Registration
ALOHA SALADS Registration
ALOHA SPOKEN HERE Registration

Aloha Poke chose to go to bat with a toothpick instead of a baseball bat. How do you make sure your trademark rights are baseball-bat strong? Easy. Don’t pick commonplace words:

  • No names of gods, trees, constellations, familiar animals.
  • No common words in any language: ALOHA, CIAO, SHALOM, ADIOS, SALUD.

Anyone can have a strong trademark. You just have to pick the baseball bat over the toothpick.

 

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No Drawing is Possible

There are over 234 U.S. trademark registrations for “situations for which no drawing is possible” which means just what it says.

Of those, 219 are for sound marks: Mostly human voices singing and speaking and musical instruments, but there are also gongs, buzzes, beeps, big cats growling, little cats meowing, insects chirping, and ducks quacking. Here are the written descriptions of two of my favorite sound marks. Can you guess what they are? (Answers below.[1]):

  1. “Rhythmic mechanical human breathing created by breathing through a scuba tank regulator”
  2. “A crescendo beginning with a snapping sound followed by a hiss sound”

The next biggest category (13 registrations) is for scent marks. Here are some cool ones:[2]

  • A scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough (Play-Doh®)
  • Flower musk scent for retail phone sales.
  • Chocolate scent for retail jewelry sales.
  • Bubble gum scent for shoes.
  • Piña colada scent for ukuleles.

Right now there’s only one visual trademark that falls into the “no drawing possible” category:[3] “A pre-programmed rotating sequence of . . . columns of light projected into the sky” for search lights.

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But the one that really wows me is a touch trademark: A “leather texture wrapping around the middle surface of a bottle of wine” for The David Family Group wine. That’s an amazing way to stand out from the crowd.

Novelty is incredibly important in the world of trademarks. In what unique way can you promote your business?

 

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[1] Here’s what the sound marks are:

  1.   That’s Darth Vader® breathing. The trademark is for toys and costumes.
  2.  That’s the sound of a lightsaber®. The trademark is for a bunch of stuff, including toys.

[2] Here are the rest of the scent marks:

  • Coconut scent for retail sales of beachwear and goods.
  • “High impact fragrance primarily consisting of musk, vanilla, rose, and lavender” for hair care products
  • Rose oil scent for advertising or marketing services.
  • Strawberry scent for toothbrushes.
  • Grape, strawberry and cherry scents for motor lubricants.
  • “Minty scent by mixture of highly concentrated methyl salicylate (10wt%) and menthol (3wt%)” for medicated transdermal patches.

[3] There are other non-traditional trademark where the applicant was able to create a drawing.

  • Amazon’s light sequence on Alexa.
  • Bad Robot production credit sequence.
  • Samsung’s colored light sequence.
  • Fee intake lights on USA Technologies vending machines.
  • Sequence of lights on Zenith vacuum cleaners.

 

Images of David Family Wines used with permission of The David Family Group LLC.

It’s Harder Than You Think

Beeline®_fullcolor_h Buzzfeed.jpeg“I already checked the Trademark Office and it’s OK for me to use FELINE as a trademark for legal services.”

Sigh.

Figuring out whether your trademark is available isn’t easy.

Suppose you want to use WAISTED TALENT as a trademark for weight loss services. You go to the Trademark Office website and search for WAISTED and TALENT.

  • False Negative: You find nothing but your search missed the registration for WASTED TALENT for weight loss services, a complete bar to your application and use of WAISTED TALENT.
  • False Positive:: Your search found a registration for WAISTED TALENT for spark plugs so you decide to think up another trademark. Actually,  you’d probably be fine.

“The domain name is available, so I’m good to go.”

Double sigh.

The availability of the domain name (or the name for a legal entity) doesn’t mean anything.

  • False Negative: The domain name waistedtalent.com may be available, but you’re still going to have trouble with WASTED TALENT weight-loss services.
  • False Positive: The entity name Waisted Talent, Inc. is being used by that spark plug company but you’re still probably fine.

The spelling of a trademark also doesn’t matter. The former mayor of New York City can’t use his name to sell soda because some people pronounce KOCH as COKE.

There are no easy answers when it comes to trademark availability. It takes me up to three hours to check for availability. It you did it in 10 minutes, you probably don’t have the full answer.

 

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