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.

 

bl_brandfooter

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.

 

 

 

bl_brandfooter

 

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.

 

Rugby, the Geographical Center of North America

Way back in the ‘30s, the U.S. Geological Survey determined that Rugby, North Dakota is the geographical center of North America.[1] Rugby wasted no time in promoting that distinction to tourists. They erected a 21-foot high cairn and started selling postcards and memorabilia. They first registered their trademark in 1967.[2]

William Bender is the mayor of Robinson, ND, a town about 100 miles south of Rugby. He heard that Rugby’s trademark registration had expired,[3] so he decided he’d go ahead and register GEOGRAPHICAL CENTER OF NORTH AMERICA and capitalize on their mistake.[4]

Gosh, gee, this is all so exciting!

Has Mayor Bender managed to beat Rugby at its own game?

How will Rugby survive without its 85 year-old claim to fame?

Except it isn’t exciting.

We already know the ending to this story. Just because a trademark registration is dead, doesn’t mean the trademark rights are dead. Mayor Bender can’t register a trademark unless he owns the rights and he can’t own the rights unless Rugby’s rights died.

This graph demonstrates my point.

rugby-graph

Do you see a gap in the “Common Law Rights” line? Mayor Bender said in his application to the Trademark Office that no one else has the right to use the trademark he’s trying to register.[5] I guess he forgot about Rugby.

It’ll take a little legal work to make Mayor Bender’s registration go away, but Rugby has owned the trademark since the ‘30s and it still does.

 

bl_brandfooter

 

Featured image of obelisk by Siego (Gerhard Gorges, 1976) CC BY-SA 3.0 or GFDL

[1] The USGS stated in its bulletin that the “geographical center on an area may be defined as that point on which the surface of the area would balance if it were on a plane of uniform thickness, or in other words, the center of gravity of the surface.” The USGS found that point to be Latitude 48° 21’ 19′ longitude 99 59 57 West.

[2]RUGBY, N. DAK. GEOGRAPHICAL CENTER OF NORTH AMERICA

Registration number: 0828358. Originally registered in May 1967

[3] Rugby hasn’t been great at keeping track of its trademark registrations. It’s actually allowed three different registration expire. The registration in footnote 2 expired in 1989, it has also allowed both of these registrations to expire:

Registration number: 2210163. Originally registered in March 1989. Expired: March 1997.

Registration number: 2210163. Originally registered in December 1998. Expired July 2009.

[4] Mayor Bender is quoted in the Wall Street Journal as saying: “[Rugby] dropped the ball. Snooze you lose, you know?” Wall Street Journal, December 16, 2016.

[5] The applicant has to make this statement:

“The signatory believes that to the best of the signatory’s knowledge and belief, no other persons . . . have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, . . .”

Meatballs and Worms

Logos are like pets. Their owners give them cute little names or, sometimes, when their owners don’t bother, other people give them not-so-cute names.

NASA_Worm_logo.svgNASA stopped using the “worm” . . .

Meatball

 

 

. . . and started using the “meatball.”

 

BMW Roundel

 

BMW® calls the symbol on its hood, the “roundel”, which is pretty boring, because it’s a . . . roundel.

 

 

pixar

 

 

This little guy from Pixar® is called “Luxo, Jr.” Luxo® is a registered trademark for lamps owned by Glamox AS.

 

 

standing-eagle

The United States Postal Service® went from using the “standing”eagle to the “sonic” eagle in 1993.sonic-eagle

 

 

 

The “Diving Girl” has been used on Jantzen® swimwear since 1920.diving-girl

Chevy Bowtie

 

Chevrolet® refers to its logo as the “bowtie.”

Amtrak pointless arrow

 

Then there’s the hilariously named Amtrak® “pointless arrow.”

Beeline®_fullcolor

 

And what roundup would be complete without a visit from the Beeline® “happy bee”?

 

 

 

 

bl_brandfooter

The Right to Poke Fun

My Other Bag prints sketched images of iconic handbags onto canvas totes. The bags are brilliant, funny, and flattering.

Louis Vuitton sued My Other Bag for trademark infringement.[1] The courts ruled for My Other Bag.[2]

It’s incredibly hard to properly parody a trademark. For the joke to work, the image of the trademark being parodied has to be recognizable. But, if it’s too convincing, you’re infringing. As the Court of Appeals said, My Other Bag managed 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.”[3]

A few years ago, Louis Vuitton sued Warner Brothers over a joke in a movie. The Hangover: Part II included a scene where a character was established as an uncool wannabe by showing him carrying a knockoff of a Louis Vuitton bag. Louis Vuitton lost that case, too.

If you own a famous trademark, it’s important to protect your rights, but it’s equally important to have a sense of humor so you can tell the difference between infringement and permissible parody.

In both the Warner Brothers and the My Other Bag cases, the viewer had to acknowledge that Louis Vuitton was a highly desirable, iconic, luxury brand and that the thing she was looking at wasn’t an actual Louis Vuitton. That’s the key to the distinction.

If Louis Vuitton had a sense of humor, it could avoid looking like a bully and get free favorable publicity. Sounds like a good outcome for everyone to me.

 

bl_brandfooter

 

[1] The suit also included a claim for copyright infringement. I’m not going to discuss that here, except to say that it was shot down by the court, too.

[2] The United States District Court for the Southern District of New York (Jesse M. Furman, Judge) granted My Other Bag a summary judgment on all claims on January 8, 2016. The United States Court of Appeals for the Second Circuit affirmed the judgment as to all claims on December 22, 2016.

[3] Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989)).

Photo copyright My Other Bag. Used with permission.

Mr. Tam Goes to Washington

Yesterday I was privileged and awed to attend oral argument in Simon Tam’s quest to register the trademark for his band, The Slants. Listening to great minds debate the First Amendment is powerful and inspiring in the way that few things are.

I arrived at 6:00 a.m. and was #2 in the line for attorneys admitted to the U.S. Supreme Court bar. Within minutes we were joined by three more attorneys who, unsurprisingly, were the attorneys for the Redskins.

Oral argument was spirited, probing, and intense. Justice Kagan asked Assistant Solicitor General Malcolm L. Stewart to explain why the statute prohibiting The Slants from getting a registration is not just flat out impermissible viewpoint discrimination. Justice Breyer pressed Mr. Stewart relentlessly to explain how the purpose of the trademark law is advanced by prohibiting registration of disparaging trademarks. Justice Ginsburg was troubled that the Trademark Office appeared to be so arbitrary, letting some disparaging trademarks to be registered, while denying others.

When Mr. Tam’s attorney took his turn, the Justices probed the upper limits of what should be granted a registration.

We can’t know how the Court will rule based the questions that were asked and how the argument went, but we can take heart that our rights and freedoms are a matter of utmost importance to the Court. If I were on the bench, I would strike down the “disparaging” clause as unconstitutional.

How would you rule?

First Amendment v. Trademark

Simon Tam named his band The Slants “to make a statement about racial and cultural issues”[1]. Now he’s the front man for the First Amendment before the United States Supreme Court with his first gig on January 18.

How’d that happen?

Mr. Tam’s application to register his trademark was rejected because it “consists [of] matter which may disparage” people.[2] That particular section of the Lanham Act doesn’t come up very often. Its most famous use to date was to de-register the Redskins trademarks.

Now Mr. Tam is fighting the Trademark Office and this law.

The First Amendment prohibits the government from regulating speech because of its content or the message conveyed. This isn’t like the government saying you can’t have a march because there’s already another group having a march in the same place that day. This is the government saying you can’t have a march because some people don’t like what you’re marching about.

That’s the very essence of the First Amendment. The government can’t stop us from speaking because it doesn’t like what we’re saying.

The courts recognize that invalidating the disparagement clause “may lead to wider registration of marks that offend vulnerable communities.” If the Supreme Court rules for Mr. Tam, the Redskins will also be allowed to register.

But, there’s no need to protect popular or harmless speech. It’s speech on the edge that needs protection “to ensure that we do not stifle public debate.”[3]

That’s why the “First Amendment [should protect] Mr. Tam’s speech . . ..”[4]

 

 

bl_brandfooter

 

Photo of Supreme Court building used under Creative Commons license: CC-BY-SA-3.0/Matt H. Wade.

[1] In re Simon Shiao Tam, at page 4

[2] 15 USC 1052, subsection (a), also know as Section 2(a) of the Lanham Act.

[3] Snyder v. Phelps, 562 U.S. 443, 461 (2011)

[4] In re Simon Shiao Tam, at page 50

(N0) Hidden Meaning

Getting your message across in a logo can be like talking on a cell phone with bad reception. It may end up a little garbled or your audience may not hear you at all.

The Procter & Gamble® logo featured above was used for 60 years before being scrapped in 1995. For most of the time it was used, it was the subject of a ridiculous urban legend about P&G’s supposed ties to the devil. Probably not the message P&G was going for.

Here’s one that tends to get through. What do you think of when you see the vertical lines in the Cisco® logo?

Cisco

It’s a stylized Golden Gate bridge, a call out to the city that gave the company its name.

Here’s one that often isn’t noticed at all. Can you spot it?

FedEx

Did you see the arrow in the negative space between the “E” and “X”? It’s cool when it gets across.

How about the message in the Amazon® logo?

Amazon smile

The curved line is both: a smile with a dimple; and a callout to the A to Z guarantee when you buy on Amazon.

Some logos are meant to playfully mislead. For example, this mark, where Hooters® is pretending that no one is thinking about breasts:

Hooters

It’s great to include a hidden or overt message in your logo as long as you can avoid an unintended negative interpretation. What hidden messages have you seen in logos lately?

 

bl_brandfooter