San Francisco International Airport (SFO) and Oakland International Airport (OAK) both serve the San Francisco Bay Area in California.
The Port of Oakland voted to change the name of OAK to SAN FRANCISCO BAY OAKLAND INTERNATIONAL AIRPORT. The name change was meant to help in marketing the airport to people who don’t know Oakland is by the San Francisco Bay.
The city of San Francisco sued the Port of Oakland claiming the new name infringes on the city’s trademark rights.
My initial reaction to this news: “That’s insane. OAK is practically in the San Francisco Bay and isn’t much farther from San Francisco than SFO.1 How can the city hope to prevent OAK from using the words SAN FRANCISCO BAY?”
After digging and thinking, I’ve changed my mind.
The city of San Francisco owns a U.S. Trademark registration for SAN FRANCISCO INTERNATIONAL AIRPORT for airport services.
The registration gives the city exclusive rights to the words SAN FRANCISCO for airport services even though those words are “merely descriptive.”2 The city was able to get exclusive rights by showing “substantially exclusive and continuous use [of the words SAN FRANCISCO for airport services] for at least five years.”
OAK is free to use the words “San Francisco Bay” to describe its location: “Oakland International Airport is on the San Francisco Bay and minutes from downtown San Francisco.” It just can’t call itself SAN FRANCISCO BAY OAKLAND INTERNATIONAL AIRPORT.
Shout out to Liz B. for letting me know about this brewing controversy.
Image of the Bay Area by Erp, CC BY-SA 4.0, via Wikimedia Commons. Cropped and revised to show location of airports.
SFO is 13 miles from San Francisco. OAK is 18 miles away. ↩︎
The registration doesn’t give the city exclusive rights to the words INTERNATIONAL AIRPORT because those words are the “generic” for the services and no one can own the rights to generic words for what they sell or provide. ↩︎
Gladiatrix, LLC operates a pillow fighting league and presents pillow fighting at some pretty impressive venues. Yes, you read that right: Pillow fighting.
In August 2021, Gladiatrix applied to register its logo:
Zuffa, LLC operates UFC, which is also in the fight business, operating mixed martial arts contests and running a championship program. Zuffa owns multiple trademark registrations for ULTIMATE FIGHTING CHAMPIONSHIP and UFC including a bunch of registrations that use this imagery:
Zuffa is opposing Gladiatrix’s application to register PFC logo.
Who will win this ultimate trademark battle?
In this corner wearing orange and black, presenting the contender, PFC.
In the other corner wearing red and black, the reigning world champion, UFC.
Ding ding ding ding.
PFC notes the "F" in its logo isn't depicted with a horizontal opening. UFC counterpunches pointing out a similar horizontal opening the letter "P".
PFC takes a quick jab claiming the letters in its mark are straight, not slanted.
UFC blocks the jab noting PFC originally used slanted letters and follows up with a quick combination noting that UFC switched to orange only after first using the same color red as UFC.
UFC proves PFC is doing everything it can to benefit from the fame of UFC's mark. PFC is on the ropes because its use is DILUTING.
Oh! PFC is down . . .
UFC isn’t a bully. It’s fighting to protect against genuine infringement of its trademark rights.
Shout out to Phil K. for the tip that led to this post.
“Can sandal companies trademark the distinctive tan line pattern their shoes leave on people’s feet?”
I love when readers ask questions that leave me scratching my head.
A trademark indicates the source of goods. A consumer doesn’t experience tan lines created by sandals until after the sale, so how can tan lines function as a trademark?
It’s possible that someone looking at tan lines on someone else’s feet might think, “Oh, that person must own Teva® sandals.” That means tan lines can act as a source identifier but, weirdly, only in the absence of the actual product, since no one can see tan lines when the sandals are in place.
Crocs, Inc. kinda created exclusive rights to tan lines by registering the arrangement and shape of the holes in a pair of Crocs®. Because no other shoe can have those same holes, no other shoe can create the same tan lines.
Since the Teva strap pattern is functional, it can’t be registered in the way Croc holes are registered.
If I were Teva and wanted to capture some rights to tan lines, I’d use an image of the tan lines in ads and on labeling. That wouldn’t prevent someone from making a sandal that creates the same tan lines, but it would prevent another company from capitalizing on the cachet of having a Teva tan.
Shout out to Eric B., who asked the question that inspired this post.
So, for Patagonia to win it will have to prove that, at a minimum, consumers who see the Gap product think it’s a Patagonia product.
Let’s start with a simple test. Who made these pullovers? (The answer is at the bottom of this post.*)
How well did you guess? What element(s) did you focus on? The contrasting piping or snaps? The shape or contrasting color of the pocket flap? The look of the label over the pocket?
The Gap label. The Patagonia label is the featured image.
Let’s take a look at those labels.
The Gap label looks like it was created by the design and legal teams to make something that looks like the Patagonia label from a distance while preserving the ability to argue that the labels are quite different close up. But how close up should people have to be before they stop being confused?
Gap designed its fleece to seem like a Patagonia product because the Patagonia product has a big following. Is that something we should allow? What do you think? Should Gap be allowed to keep producing and selling its look-alike product?
Medieval Times U.S.A., Inc. is suing Medieval Times Performers United and the American Guild of Variety Artists for trademark infringement.[1] The ridiculousness of this lawsuit is boundless.
In June 2022, individuals who work for Medieval Times organized a labor union and called it Medieval Times Performers United.[2] Medieval Times says the “purchasing public is likely to believe” the union is “affiliated with, sponsored by, or endorsed by Medieval Times.”[3]
To win this case Medieval Times will have to actually prove that people are likely to be confused. It can show that by, for example, conducting a carefully designed and administered consumer survey to see whether people become confused. How many people in a survey are going to report believing they can get a night of food and entertainment by contacting Medieval Times Performers Union?
Medieval Times also says the union “acted . . . intentionally for the purposes of deceiving the public . . ..”[4] Really? And that confusion will help the union how, exactly?
Medieval Times continues by claiming the union’s actions “have caused . . . Medieval Times to suffer substantial irreparable harm.”[5] I can’t wait to see the proof of this alleged harm. Tickets Medieval Times would have sold were bought, instead, from the union?
Just to seal the deal on the hilarity of this lawsuit, Medieval Times claimed that “Defendants’ actions have been in bad faith entitling Medieval Times to treble damages, attorneys’ fees and cost of suit . ..[6]
Puh-lease.
Shout out to Cody B. for letting me know about this ridiculous law suit.
[1] Complaint filed 10/13/2022 in United States District Court for the district of New Jersey.
Bullards Holding Company Limited applied to register BULLARDS in the U.K. The application covered a bunch of goods and services including energy drinks, non-alcoholic beverages, and events.
Word marks opposed by Red Bull
That was not OK with Red Bull GmbH, which is now opposing Bullards application.
To date, Red Bull has filed over 300 oppositions in the U.S. They appear to go after anyone using the word BULL or RED or an image of a bovine.
Logos opposed by Red Bull
I’m all for protecting trademark rights but brands should have a strategy firmly based in trademark law for deciding whether or not to oppose.
Here’s a solid strategy for Red Bull for word mark oppositions:
One of the words in the mark being opposed would have to be RED (in English or another language commonly spoken in the U.S.) or a word similar to RED. Hint: Not every color word is similar to RED.
Another word would have to be BULL (in English or another language commonly spoken in the U.S.) or a word similar to BULL. Hint: Not every word for an animal is similar to BULL.
The goods and services covered would need to be similar to goods and services sold by Red Bull.
Red Bull logos registered in the U.S.
It’s harder to create criteria for logos but, at a minimum, a logo worthy of opposition should be:
Full body or front half of;
A stylized, silhouetted bull;
In an aggressive charging posture; and
Depicted from the side.
If Red Bull did that, I’d stop calling them a bully.
I’ve been lucky enough to see the brilliant magician and actor, Teller, perform his “Shadows” illusion. Twice. It’s astonishing.
The stage is set with a single flower in a vase. A shadow of the flower and vase is projected onto a sheet of paper. Teller uses a knife to stab individual petals of the shadow-flower on the paper and the corresponding petal of the real flower flutters to the ground.
Every bit as brilliant as the illusion was Teller’s decision to register the copyright to “Shadows” in 1983.
It’s almost impossible to create legal protection for the work of variety performers. Most variety acts rely on trademark law to protect their stage names but that doesn’t stop others from copying their acts.
Teller was able to protect “Shadows” by categorizing his illusion as a pantomime, one of the types of work protected by copyright.[1]
The copyright registration paid off when Teller discovered a video on YouTube® showing Gerard Dogge performing the “Shadows” illusion. Teller sued. Dogge was permanently enjoined from ever performing the illusion and ordered to pay Teller damages and attorney’s fees.
Teller may have been the first U.S. magician to win a legal action based on a copyrighted pantomime but he probably won’t be the last to find a way to protect what he created. Pretty cool.
[1]17 U.S. Code Section 102 says that copyright protection extends to “original works of authorship fixed in any tangible medium of expression . . . from which they can be perceived, reproduced, or otherwise communicated …. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.
Artists, authors, and Getty Images have already sued generative AI companies.
In December 2023, The New York Times joined the fray and sued Microsoft and OpenAI companies. The complaint is quite damning. And comprehensive.
There are three main claims in the complaint:
Copyright infringement based on OpenAI’s use of NYT content to train the model.
Copyright infringement based on OpenAI’s copying vast portions of NYT content when responding to queries.
Trademark infringement when the model incorrectly attributes “hallucinated” content to the NEW YORK TIMES®.
Because the complaint is so robust, this post will be longer than usual.
Copyright Infringement – Training OpenAI
The NYT complaint characterizes OpenAI’s business model and based on “mass copyright infringement.”
“Despite its early promise of altruism, Open AI quickly became a multi-billion-dollar for profit business built in large part on the unlicensed exploitation of copyrighted works belonging to The Times and others.”
Complaint at page 17
The complaint notes that the method of training OpenAI leads to memorization: “Given the right prompt, models will repeat large portions of materials they were trained on.” Complaint at pages 23-24.
OpenAI’s ability to quote huge chunks of NYT copyrighted content shows that OpenAI “encode[s] retrievable copies of many of those training works.” Complaint at page 24. That retaining of retrievable copies is the basis of the first bulleted claim: OpenAI infringed on NYT’s copyrights by making copies used for training.
“The process of setting the values for an LLM’s parameters is called “training.” It involves storing encoded copies of the training works in computer memory, repeatedly passing them through the model with words masked out, and adjusting the parameters to minimize the difference between the masked-out words and the words that the model predicts to fill them in.”
Complaint at page 23.
Copyright Infringement – Responding to Queries
Unlike the other cases brought to date, the NYT is claiming not just that its content was used to train OpenAI but that OpenAI will regurgitate huge sections of articles from the NYT.
This image from the complaint shows output from OpenAI on the left and a NYT article on the right. The red portions are identical.
There are multiple examples of this behavior in the complaint. It goes on for page after page after page.
If that weren’t bad enough, OpenAI gleefully helps a user bypass the NYT’s paywall as shown by this exchange.
The complaint makes it clear that the copyright issues were known to OpenAI and they went ahead anyway.
In late 2023 Sam Altman, OpenAI’s CEO, clashed with a board member over “safety and ethics issues related to the launches of ChatGPT and GPT-4, including regarding copyright issues.” Complaint at page 47.
OpenAI’s well known hallucinations falsely attribute content to the Times.
“In response to a prompt requesting an informative essay about major newspapers’ reporting that orange juice is linked to non-Hodgkin’s lymphoma, a GPT model completely fabricated that ‘The New York Times published an article on January 10, 2020, titled Study Finds Possible Link between Orange Juice and Non-Hodgkin’s Lymphoma. The Times never published such an article.” Complaint at page 54.
“At the same time as Defendants’ models are copying, reproducing, and paraphrasing Times content without consent or compensation, they are also causing The Times commercial and competitive injury by misattributing content to The Times that it did not, in fact, publish. In AI parlance, this is called a ‘hallucination.’ In plain English, it’s misinformation.”
Complaint at page 52.
I don’t know when I’ve read a more thorough and well-written take down. It’s hard to imagine how OpenAI will be able to rebut these claims.
If you are among the many people using generative AI to create content, you may want to consider whether that still feels like the right thing to do.
Here, for your consideration and eye-rolling, are some of the best/worst punny marks out there:
The manufacture, rental, and sale of portable toilet relies heavily on puns for trademarks. In 1967, Thetford LLC registered PORTA POTTI and the line was drawn in the kitty litter for punny potties:
LEPRECAN
DEAR JOHN
MOVABOWL
STOP AND GO
2 PEES IN A POT and, for the nautical among you,
MR SHITHEAD
Taking a break from potties, let’s move on to some other industries.
Whirlpool owns the registration for INSINKERATOR, which was first used in 1938.
Eyedetec Medical owns a registration for EYEGIENE for warm eye compresses.
If none of those bug you, maybe some of these, for pest control, will:
LARGER THAN LICE
NITORIOUS B.U.G.
LICE KNOWING YOU
METICULICE
LICESTYLE
MIRACLES ON LICE and, my personal favorite,
A LOUSY BUSINESS
Hair care seems to be another industry that likes to cut up their customers.
HAIRRIBLE
HAIR JORDAN
BARBERIZM
HAIR COMES THE BRIDE
GOT IT ON LOC
TRIM & PROPER
THAIREPY
Two final groans to fracture your punny bone:
There’s a U.S. trademark registration for MEDIUM RARE for blogs in the field of psychic awareness.
There’s a lawn care company that uses the mark LAWN AND ORDER.
Shout out to Irv L. who took the photo of Doodie Calls . Additional punny marks from Rachel D. and Tessa M.
Your avatar buys virtual footwear with a swoosh on the side. Do you think those virtual sneakers are affiliated with Nike?
Most people would assume their avatar just bought a pair of virtual Nikes but, in many cases, virtual branded goods have nothing to do with the companies associated with the brands.
“Wait a minute,” I hear you say. “Doesn’t Nike have dozens of trademark registrations for the word NIKE and the swoosh? Why isn’t Nike suing those infringers for big buckets of money?”
As of the writing of this post, Nike’s registrations are for footwear and a bunch of other real-world stuff. Virtual sneakers aren’t footwear in the trademark world. Virtual sneakers are a computer program.
Nike and other big brands have already begun filing applications to register their brands for “computer programs” to cover virtual goods. Nike filed the application in the featured image in October 2021.
Nike and other owners of famous brands can use their status as “famous marks” to get the virtual infringers to stop (injunction) but the “famous mark” part of the Lanham Act doesn’t allow for serious money damages. Once Nike has a trademark registration, they’ll have a much bigger stick to go after existing infringers and discourage potential infringers.
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