MCUTO: Marvel® Cinematic Universe Trademark Office

Movies and TV rarely get legal stuff right, which is okay because they’re telling stories not giving legal advice.

Still, you can imagine my excitement when She-Hulk: Attorney at Law nailed trademark law in Episode 5. Here’s how it went down.

Jennifer Walters, She-Hulk’s alter-ego, was not amused when her nemesis, the evilly self-absorbed Tatiana, started selling a “luxurious line of skincare, wellness, and beauty products” under the trademark SHE-HULK. Jen hired Mallory Book, a lawyer who specializes in trademark litigation.

Mallory knew that no one can register a trademark that includes the name of a living person without having the written consent of that person. She also knew that the rule applies to shortened names, pseudonyms, stage names, titles, and nicknames.[1]

Tatiana claimed Jen wasn’t actually known as SHE-HULK and presented as evidence a TV interview where Jen rejected the moniker. Mallory countered with evidence that showed She-Hulk is Jen, including:

  • Recordings of another, later, broadcast where Jen embraced She-Hulk as her pseudonym; and
  • Testimony of people who know Jen as She-Hulk.

Did the show get everything right? Of course not. For example, Mallory should have introduced testimony of Jen’s friend and boss, both of whom were actually confused into thinking Tatiana’s beauty line was associated with Jen.[2]

Watching TV and movies is no place to learn the law but it’s really cool when the writers can get it right and tell the story.

Shout to to Bill B. for letting me know about Episode 5.


[1] Trademark Manual of Examination Procedure Section 1206.01.

[2] Here’s some other stuff they got wrong:

She-Hulk’s friend told her whoever gets there first with trademarks wins. That’s often true but not in this situation.

She-Hulk asks Mallory if Thor or Dr. Strange had trademarks. Mallory says: “You just named two people her use their actual names.” That’s a true statement but irrelevant for trademark law. You couldn’t register DR. STRANGE without his consent either.

The procedural stuff was insanely wrong. The legal action was an argument over summary judgment but the whole thing was based on a factual determination, which is the exact opposite of how summary judgment works.

Also, obviously, Marvel owns all the trademark registrations for SHE-HULK. Apparently, neither Jen nor She-Hulk are real people.

The Great British Bake Off

Bringing a British television show to the U.S. can be complicated.

How complicated?

Really complicated.

Pillsbury owns two registrations that include BAKE-OFF for “arranging and conducting cooking and baking contests.” The earliest registration dates from 1972 and Pillsbury’s first use of the BAKE-OFF trademark was in 1950. In other words, Pillsbury has a deadlock on BAKE-OFF for baking contests.

In order to air the THE GREAT BRITISH BAKE OFF in the U.S., the show had to change its name to THE GREAT BRITISH BAKING SHOW. That wasn’t just a matter of changing the opening credits.

For episodes from earlier seasons, the show’s producers had to edit out mentions of the show’s name during introductions and when awarding prizes.

For later episodes, the hosts did separate takes, first calling the show THE GREAT BRITISH BAKE OFF (for airing in the U.K.) and then calling the show THE GREAT BRITISH BAKING SHOW (for the U.S. market).

But the crazy didn’t stop there. At the end of each contest, the winner is awarded a glass cake dish engraved with the name of the show. Footage showing winners holding the trophies had to be visually modified to make it appear that the cake stands say THE GREAT BRITISH BAKING SHOW.

At 2:28 of this video is an explanation of the visual artistry that went into making the change on the glass cake stand.

Doesn’t knowing this just flat out make your day?

Shout out to Max F. for bringing this to my attention.

I ❤️ Trademarks

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The New York State Department of Economic Development owns 13 live registrations for I ❤️ NY in a variety of colors and orientations and for a bunch of different services and goods, including promoting tourism and a slew of swag.

The NYDED first used the mark in 1977.

Is it OK for someone to use I ❤️ BURLESQUE?

The answer to that question explains why I can’t know whether a trademark’s available without doing a comprehensive search. I can guess, but my guess isn’t always right.

Before digging into the Trademark Office database, I thought: The NYDED’s trademark is famous so anyone using something similar for any goods or services is going to be in a world of hurt.

Image for Reg 6390592

When I started digging, I was surprised to find there are lots of other registrations using the same design with the same color, orientation and font.

For example, there’s this trademark, which was registered in 2021 for T-shirts and other swag. The Trademark Office didn’t refuse to register this trademark and, even more surprisingly, the NYDED didn’t try to oppose it.

Based on that, I’d guess the I ❤️ ____________ motif is fair game as long as what’s in the blank isn’t already being used by someone else.

But, of course, I’d have to check the specific use for the specific goods just before filing, because it’s easy to be wrong when I guess.

Thanks for another great question from Cassandra G.

Bootlegging and Trademark Infringement

Between 2017 and 2020, Washington DC’s Fraternal Order of Police Lodge bought over 3,000 bottles of Jack Daniel’s® whiskey, engraved the bottles with the Lodge’s logo, and resold them at a mark-up.

A Washington Post article correctly points out that the police were running an illegal interstate liquor sales operation, which is certainly newsworthy, but . . .

What about the trademark infringement!!!!!!!!!!!!

Logo used by the Lodge in ads.

Infringement 1: I’ve written about after-market additions to goods and packaging before. Engraving the Lodge’s logo on the Jack Daniel’s bottles falls on the wrong side of that line and is probably infringing.

Infringement 2: The Lodge ran Facebook® ads featuring the stylized version of the JACK DANIEL’S trademark at the top of the ads. A non-infringing use would just have mentioned that the whiskey is Jack Daniel’s brand in the same size and style of font used for the rest of the ad copy.

Infringement 3: The ads read:

“The Fraternal Order of Police D.C. Lodge #1 has partnered with The Jack Daniel’s Distillery in Lynchberg, TN to create very limited edition bottles . . ..”

Any reasonable consumer would think Jack Daniel’s was officially participating in the illegal sale of alcoholic beverages. It’s hard to imagine a more clear-cut case of tarnishing.

Way to go, D.C. police lodge: Illegal interstate sales of alcohol and trademark infringement.

Shout out to Liz B. for the heads up on the WaPo article.

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.

Acquired Distinctiveness

If your trademark is “merely descriptive,” the Trademark Office will reject your application to register it. You can’t register:*

  • Tears In a Bottle for eyedrops
  • Two Drawers On Wheels for a rolling file cabinet
  • Fresh Brewed & Hot for a coffee shop

But, if you start using that trademark, make sure other people don’t use it, and reach the point where consumers associate what was once just a descriptive word or phrase with you and only you, then you can get a trademark registration.

Trademark lawyers refer to that as “acquired distinctiveness.” Your trademark was “merely descriptive” but it “acquired distinctiveness” and now you can get the exclusive rights to use it.

That happened recently with CHUNKY for soup.

In 2013, CSC Brands LP (Campbells Soup Company) filed two applications to register trademarks that included CHUNKY and in both cases the Trademark Office examiner refused to grant CSC Brands exclusive rights to CHUNKY because it was “merely descriptive” of soup.

In 2018, CSC Brands tried again and were able to get a registration because they were able to show that CHUNKY, once merely descriptive, had acquired distinctiveness: People now associate that word with a particular company for soup and not just any soup that happened to be chunky.

I don’t usually recommend going with a “merely descriptive” trademark but it can sometimes work out.

 

 

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*This isn’t entirely true. Sometimes you can register the trademark on the “Supplemental Register” of the Trademark Office. You get to use the ® symbol and it sets you up to get a registration on the Principal Register later on.

Scam Scam Scam Scam

You know scammers are out of control when they start sending trademark scams to trademark attorneys.

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Everything about this notice screams “official”.  It has a UPC code.  It’s from the “Patent and Trademark Bureau.” It says: “Form approved: OMBE 328-0119/”.

Anyone opening this and reading it would assume that she needs to write a check to the Patent & Trademark Bureau for $890.

The fine print says the sender is “not endorsed by the U.S. government” and that this is an “optional offer,” while in the bold print near the top it says:

“Your trademark is about to expire. Renewal date 01-05-2019.”

This trademark registration is NOT due for renewal. In fact, it’s impossible to file a renewal for this registration until the 5th anniversary of the registration date. The actual due date for the renewal is the 6th anniversary of the registration date. That means you can first file the renewal on January 5, 2021 and it isn’t due until January 5, 2022.

Other scam notices I’ve seen actually lie about the registration date just in case you know about the 5-6 year rule.

Someone would be hard-pressed to spend even an hour doing this filing. $890 for one hour’s work is insane. The fee is too high even if I give this scammer the undeserved benefit of the doubt and assume that the quoted fee includes what the Trademark Office will charge.

Please please please don’t be taken in by these scammers.

 

Thanks to Julie W. for sending me the fake notice she received and suggesting this blog post.

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Women March . . . And Also Oppose

What do you call it when a group of women get together to protest and advocate? A women’s march?

That’s the big question before the Trademark Trial and Appeal Board.

After the 2016 presidential election in the United States, women began organizing protests. Two of those groups filed to register the trademark WOMEN’S MARCH:

  • Women’s March, Inc. in Brooklyn (WMI) filed first in March 2017.[1]
  • Women’s March Los Angeles Foundation filed two applications in April 2018.[2]

The Trademark Office examiner approved the WMI applications. After an application is approved by the Trademark Office, it’s “published for opposition.” That means anyone who thinks the trademark shouldn’t be registered can oppose the application.

And oppose they did. Fourteen different organizations expressed an interest in opposing the WMI applications.[3] Of those, four actually opposed:

  • We March On Chicago
  • March On
  • Women’s March Alliance
  • Women’s March Los Angeles Foundation

The oppositions all say the same thing: Lots of people started using this phrase right after the election so it doesn’t refer to one specific group. Here’s how you say that in legalese:

  • WOMEN’S MARCH is “merely descriptive.”
  • It fails to function as a trademark.
  • It was independently adopted by numerous grassroots organizers so it’s incapable of distinguishing one group from another.

What do you think? Before you read this, did you think there was only one organization using WOMEN’S MARCH? Now that you know there are a bunch of different groups, do you think just one of them should be allowed to prevent the others from using that phrase?

 

 

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[1] Both WMI applications were filed on March 1, 2017. The first one is for WOMEN’S MARCH based on use dating back to November 2016. The second one is for WM WOMEN’S MARCH and is based on intent-to-use. Both include these goods and services:

“T-shirts; shirts; sweatshirts; hoodies; one-piece infant wear.”

“Promoting public awareness of the need for protecting women’s social, economic and political rights; promoting public awareness of the need for racial equality, LGBTQ rights, economic and reproductive rights; public advocacy to promote awareness of the need for protecting women’s social, economic and political rights; lobbying services, namely, promoting the interests of women in the fields of legislation and regulation concerning reproductive rights, equal pay, paid family leave, and to the end of violence against women.”

[2]WMLA filed its applications on April 12, 2018 and both were based on use dating back to November 2016. Both of the WMLA applications are on hold until the WMI applications either go away or reach registration.

The first WMLA application is for: “Educational services, namely, conducting conferences and workshops in the field of civic engagement and community initiatives; Providing a website featuring non-downloadable publications in the nature of photos in the field of community cultural events; Providing information regarding current and cultural events via a website; Organizing community cultural events; Providing information and news regarding community outreach services.”

The second WMLA application is for: “Providing a website featuring information about social justice, human rights, and political issues; Providing information regarding political issues, knowing how to vote, and knowing how to register to vote; Promoting public awareness of the uniqueness and diversity of humanity through a national annual day event; Promoting public awareness of LGBTQIA rights; Promoting public awareness of police brutality, gender and racial inequities within the criminal justice system; Public advocacy to promote awareness of gender, racial, social, and economic justice; Public advocacy to promote awareness of the need to protect women’s social, economic and political rights; Online retail store services in the field of clothing, books, and buttons; Retail store services in the field of clothing, books, and buttons.”

[3] Women’s March DC; March Forward Massachusetts Educational Fund; Women’s March Alliance; Women’s March Los Angeles Foundation; Women’s March SLO; Women’s March Contra Costa, Inc.; March On; Santa Cruz Women’s March; March On Arkansas; We March On Chicago NFP dba Women’s March Chicago NFP; March On Hudson Valley; March on Maryland, Inc.; Women’s March San Diego, Inc.; and Women’s March Colorado.

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 started 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.