kennethmullins

[kennethmullins]

Public shaming is not a solution to trademark bullying. Let’s build one.

–Jason Voiovich

Last week, we saw the latest installment in the “trademark bullying” saga. But this time was different. Instead of lawyers fighting amongst themselves, DuetsBlog brought out the big gun: Seth Godin. You can read the entire piece here. I like Seth Godin, and so do lots of other people (hence, the “big gun”). I read the comments (over 30 from my count). It seems to make people feel better to have someone with credibility give voice to their frustration.

I’m not against feeling better; mental health is a big deal. But as I read situation after situation, I am struck by how cases of trademark bullying almost always turn out: The small business loses.

Perhaps they don’t lose in the legal sense, but they lose in nearly every sense that matters to a small business: Time, Energy, Money, Resources, and Attention. Every moment addressing a trademark issue is a moment not invested in their business. Small businesses do not have any of those assets to spare. Large organizations do. They have legal teams that shield their workers from the ongoing drama. They have marketing budgets to drown out negative publicity. If all else fails, they have the resources to outlast you. In over 10 years of public attention, is it any wonder their behavior hasn’t changed?

Public shaming feels good, but it is not working.

It’s time to act.

To act, small business owners need reliable information about their risks. They need that information in advance of a trademark filing, and even in advance of first usage – after-the-fact litigation or advertising insurance don’t solve the problem. And finally, they need accessible and affordable information – calling your lawyer before each decision is not realistic.

In other words, small business owners need an ounce of (affordable) prevention, not a pound of cure.

Here’s my proposal.

To explain it, I am going to adapt Guy Kawasaki’s new business pitch format. At the end, I am going to ask you to invest. Let’s go.

Define the problem.

Trademark owners rightfully defend what they’ve built. However, when they overstep, there is no downside for their behavior. Even if they “lose” in court, they don’t really lose. They create a “chilling effect” for future conflicts. Additionally, they can restrict the distraction in their organization to only their legal team (who, to them, this is not a distraction). By contrast, there is plenty of downside for the small business owner. An unfavorable result in a lawsuit can put a small company out of business. But even if you win, you lose. Distractions are killers.

How does your product solve that problem?

Prevention is the best cure. Imagine a “Trademark Risk Score” much like a credit score. At “1” might be a name you completely invent from random characters. At “100” might be naming your tech company “Big Apple Computers” – an algorithm automatically scores everything in between.

Underlying magic or technology.

Building the algorithm seems easy, but it is not. Factors could include the number of existing trademarks, the size of the companies with those marks, matches in categories of use, length of trademark ownership, recent court decisions or filings, etc. But those factors don’t make an algorithm any more than ingredients don’t make a recipe. The “magic” here is using professional attorneys to “train” the algorithm and improve it.

Business model.

Small business owners could buy access to the system as a one-time purchase (like a “risk check”) or as a subscription (like a “regular checkup”). Accelerators and angels offer this subscription as a service to their startups. I could even see entrepreneurial publications (cough, cough) providing this to their subscribers as an add-on. Lawyers could advertise their services. You get the idea.

Go-To-Market plan.

Aggregators of small businesses are key to the strategy; reaching them 1:1 is cost prohibitive. Fortunately, there are plenty of accelerators, gig economy supporters (e.g. WeWork), and trademark lawyers in the world.

Competitive advantages.

The biggest competitor to this idea is a data aggregator named Trademarkia. However, their service still relies on you as the small business owner to know what you’re looking for (and I don’t think their search functions or aggregation is all that “smart”). If you’re confused, they offer expensive add-on services ranging in cost up to $10,000. That’s not going to fly for the average small business owner. They need something easier to understand and digest.

In this proposal, you plug in a few details, the algorithm spits out a risk score. Is it perfect? No. Will it protect you? No. But it will give you critical information you need to make an informed decision on next steps based on your risk tolerance.

Management team.

This solution will require three key groups of people – tech (to write the learning algorithm), lawyers (to train it), and marketers (to promote it). I wonder if I know any of those people who might be reading this?

Financial projections.

Based on the 300,000 (or so) new businesses started in the United States each year, and a 20% penetration rate for my TAM, and a $100 subscription price, I calculate about $6 million in annual revenue. Back of the napkin, but it’s a business.

Rollout plan and milestones.

I am putting my money where my mouth is – with hard cash. I am committing publicly to the first $1,000. That’s (obviously) not enough to get started, and there is hardly enough detail in this “proposal” to make a formal investment decision, but perhaps it’s enough to get others interested and begin the conversation.

Hate this idea? Awesome! Use it (copyright free) to come up with your own idea.

Just don’t keep public shaming. That’s not helping anyone.

The post Public shaming is not a solution to trademark bullying. Let’s build one. appeared first on DuetsBlog.

[kennethmullins]

What Does Entrepreneur Mean Anyway?

Let’s be very clear, today is April Fools’ Day, but this is not an April Fools’ Joke.

It’s not every day Seth Godin volunteers a guest post, but Thursday was that day.

Friday we published Stop Bullying the Entrepreneurs, 33 comments and counting.

This isn’t the first time Seth has spoken out against trademark bullying, he’s on record before noting: “When a brand becomes a bully, it loses something vital.”

And: “If you want to keep the taco place down the street from infringing on your business, don’t hire lawyers to hate on their slogan. Make better tacos instead.”

On Friday Seth went to public bat for kindred spirit and entrepreneur Jen Lehner:

Seth called out Entrepreneur Magazine for going after the name and mark for Jen’s podcast, “The Front Row Entrepreneur” — described by Jen this way: “The Front Row Entrepreneur gives you a front row seat to all of the most exciting people and happenings in online marketing and entrepreneurship.”

To Seth’s point, it’s difficult to create a podcast designed for an entire class of people known as entrepreneurs and not have the ability to include “entrepreneur” in the name, because it is: “One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.”

Actually, that’s a fair point, given the special meaning of the word — no other word that I could find with a thesaurus really captures the same and complete essence of the word “entrepreneur,” not “administrator, contractor, executive, manager, producer, backer, businessperson, founder, industrialist, organizer, promoter,” etc.

In fact, the Examining Attorney who approved Jen’s application to register THE FRONT ROW ENTREPRENEUR as a mark for podcasts, recognized the special meaning of the word, noting it to be descriptive of Jen’s podcasts: “A person who organizes, operates, and assumes the risk for a business venture.”

So, the USPTO told Jen to disclaim exclusive rights in the term ENTREPRENEUR in THE FRONT ROW ENTREPRENEUR mark for podcasts, and she did, but to satisfy Entrepreneur Magazine she also apparently needed to withdraw her registration application and, in terms of future use, contort the more efficient name into the more wordy mouthful: THE FRONT ROW PODCAST FOR ENTREPRENEURS.

So, what does ENTREPRENEUR mean anyway? Clearly much more than a particular magazine or other offerings of that magazine. Might it even designate a category or perhaps a subgroup of magazines — those about and for an entrepreneur?

If Entrepreneur Magazine is not careful, one of these days, it might find itself in a position tangling with an enforcement target willing to go the distance, finding out the hard way, if ENTREPRENEUR has become generic (part of the public domain).

The post What Does Entrepreneur Mean Anyway? appeared first on DuetsBlog.

[kennethmullins]

The State of the Hat

One of the most justifiably ridiculed type of blog posts is the "hey guys I haven't posted in a long time" non-substantive blog posts, but nonetheless, here I am with a hey-guys-I-haven't-posted-in-a-long-time blog posts. (Like that? That's lampshade hanging.)

I'm pretty busy. My creative outlets are my new gig as a contributing writer at The Atlantic and the weekly All the President's Lawyers radio show and podcast on KCRW. And, though it seems I have abandoned the Make No Law podcast, I haven't — those podcasts are just incredibly time consuming to produce.

If I judge there is interest, I may start posting links to the Atlantic pieces and ATPL podcasts here for debate, in part so I can hear more regularly how much the site sucks now that I am Deranged By Trump/In The Tank For Trump. And I may develop some projects to write about here more regularly. So: though the site slumbers, it is not dead.

Copyright 2017 by the named Popehat author.

[kennethmullins]

Stop bullying the entrepreneurs

– Seth Godin

It’s not good marketing and I’m pretty sure it’s not good law, either.

It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.

And yes, it’s a word.

Not a fanciful or inherently distinctive trademark, a word. Almost 800,000,000 matches in Google.

One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.

Without that word, it’s hard to describe the work.

Poignantly, it’s interesting to see that they’re not going after people with a ton of resources. If Brian Koppelman, David Levien and Showtime started going after billionaires for using the word ‘Billions’, I’d call it a fair fight. A dumb fight, but a fair one.

But deep in the bowels of the Latham offices in San Diego (which, fortunately, hasn’t been sued by the producers of Anchorman for trademark infringement) there are young lawyers, early in their career, sending nasty letters to entrepreneurs (there’s that word again) like Jen Lehner. You can see her work here: jenlehner.com/blog

Apparently, the powers that be decided that her podcast called “Front Row Entrepreneur” somehow infringed on a magazine that hit its peak in 2013. How?

“Front Row” modifies the noun. The trademark is the modifier, not the noun. Front Row

is a trademark. Entrepreneur is simply a word.

With great cost and hassle, fledgling entrepreneurs (there’s that word again) who have finally gotten their business off the ground now have to dig in to either fight a huge law firm and their misguided but well-funded lawyers–or spend the money to change what they already built.

Who, exactly, does this help?

By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.

Better, I think, to spend the time and the money building something that entrepreneurs actually like and respect.

The post Stop bullying the entrepreneurs appeared first on DuetsBlog.

[kennethmullins]

Cardi B, You (Probably) Can’t Trademark “Okurrr,” Okay?

The saltiest trademark news in the last week surrounds singer Cardi B’s application to register the marks “Okurr” and “Okurrr,” both slang for “Okay???”–but pronounced in a hip, rolled-r trill, sometimes with a shady tone. Or, as Cardi describes, it: the sound of a “cold pigeon in New York City.” If you haven’t heard it said before, search no further than these humorous and fully-extra renditions by a few popular drag queens:

As with most seemingly-overreaching trademark applications, Cardi’s registration of these popular words–particularly in the drag queen community–has been met with criticism. The public backlash is understandable; it brings to mind the concern that trademarking a term will take it out of the public domain and inhibit free speech and fair use. Though, to be fair, Cardi’s applications only seek to preclude use of the word on clothing and merchandise. But she acknowledges the registrations are, essentially, a cash grab.

Indeed, trademarking common words appears to be a regular strategy for celebrities seeking to capitalize on words’ popularity. I’m reminded by the recent example of singer Will.I.Am attempting to trademark the phrase “willpower,” which was cancelled by the Trademark Trial and Appeal Board because the mark was too similar to other existing marks and had no source-indicating distinctiveness. That is, the public did not strongly associate the word “willpower” with Will.I.Am, so Will.I.Am cannot claim exclusive use of the mark in commerce. But Cardi argues that “Okurrr” has become her famous slogan, buoyed by a Superbowl Pepsi ad featuring her using the phrase and instructing others on how to pronounce it correctly.

And that brings me to the “T”–the truth–of the enforceability of Cardi’s registrations: it is unlikely that the general public would identify Cardi as the source of goods beat with “Okurrr” or similar marks because, in fact, “Cardi can’t honestly make the argument that she created the word.” Rather, according to the fiercest drag queen of them all, RuPaul, the credit goes to Broadway actress Laura Bell Bundy–even though RuPaul and other drag queens brought the phrase, which may have roots in African-American culture, to the runway, where it was picked up by the Kardashians and, now, Cardi B.

The contextual history of Okurrr is important and cannot be overlooked in the distinctiveness and goodwill analysis. It not only undermines Cardi’s legitimate claim to exclusive nation-wide use of the mark in commerce, but also seriously calls into question the appropriateness of restricting use of the word by all others, including the communities from which it originates–and which much of the public likely identify as earlier or actual sources of the word. Thus, trademarking “Okurrr” is likely to lose from both a legal and PR standpoint. That’s a sickening realness, but not in a “feeling the fantasy” kind of way.

Whether Cardi’s tuck-under will be allowed to stand, or the gag will be up, remains to be seen. At least one drag queen, Alaska, who is also known for her rendition of “Okurrr,” plans to clock Cardi’s conduct, potentially by challenging the registrations in court. Time will tell whether Cardi’s gambit will stay, or be asked to “sashay away.”

The post Cardi B, You (Probably) Can’t Trademark “Okurrr,” Okay? appeared first on DuetsBlog.

[kennethmullins]

More DuetsBlog Accolades, Thank You!

It’s that time of year again, and we’re honored to share some wonderful news — hot off the press today — concerning the 2019 JD Supra Readers’ Choice Awards:

For the third year in a row, we have been recognized as the Top law firm writing on Trademarks (incredibly, four of us made the Top Ten listing out of more than 1,200).

Of course, we couldn’t achieve these lofty accolades without you, our dear readers, followers, and those who generously provide their valuable insights and comments.

However you have found us, whether through JD Supra, LinkedIn, Twitter, or if you’ve been with us since the beginning, more than 10 years ago, we’re thrilled you have joined us on this journey, and thank you for your generous contributions! Each one of you inspire us to write clearly, also thanks to Jimmy John’s, for this reminder:

The post More DuetsBlog Accolades, Thank You! appeared first on DuetsBlog.

[kennethmullins]

What is Uninsured/Underinsured Motorist Coverage and Should I Have It?

Ask the next person you see – it could be a stranger: “Do you know what UM or UIM automobile coverage is? Chances are the person will give you a bewildered look and ask: “What is it?” Uninsured and Underinsured Motorist coverage, known as UM and UIM coverage, is a form of insurance that protects you against drivers who choose to drive without insurance or only bare minimal policy limits. If such a driver negligently causes an accident, your ability to recover from your injuries and secure compensation for damages is put at severe risk. You may be forced to pay for your own vehicle repairs, medical bills, lost wages, co-pays, and deductibles. You cannot even be compensated for the pain and suffering the other driver caused no matter the extent of your injures. To protect against such a nightmare scenario, drivers are offered UM/UIM coverage that allows you to make a claim against your own policy when the other driver does not have enough insurance to pay your reasonable losses. In areas of the country containing especially aggressive drivers, like Las Vegas, you should have UM/UIM coverage to protect you and your family. UM/UIM is not mandatory in Nevada so it must be specifically requested. In fact, your insurance agent must have you sign a document to affirmatively decline this coverage. Many people decline without understanding the potential consequences. According to USLegal.com, uninsured motorist coverage is defined as follows: Additional coverage in a policy of insurance on an automobile which provides that if the owner (or a passenger) of the automobile is injured by a negligent driver of another vehicle who does not have liability insurance, then the insurance company will pay its insured’s actual damages. Not having UM/UIM coverage could carry heavy consequences and result in the following scenario: You are driving to work, as you do every morning, when someone runs a red light and t-bones your vehicle. Your air bags deploy, you are hurt and disoriented, and you are fault free. After calling 911, you exchange insurance information with the other driver and secure a police report then immediately seek treatment for your injuries. The next day or so after the accident, you meet with an attorney and learn the consequences of the negligent driver having no insurance or only minimal coverage. Your attorney then reviews your own auto policy to learn that it does not contain UM/UIM coverage. You are now left without recourse or remedy – you must pay your own damages, often out of your own pocket. This consequence is potentially devastating depending upon your level of injuries and the extent of damage to your vehicle. Unfortunately, the above scenario is all too common. If you do have UM/UIM coverage, your attorney will negotiate with your insurance company regarding that coverage to ensure you receive compensation for your loss. Each case is different, but the one constant should be that you have UM/UIM to rely upon. The lawyers at vegas west attorneys strongly recommend that you immediately call your insurance agent or pull your written policy to verify UM/UIM coverage. If you do not have this coverage, consider adding it. If you, or someone you know, is injured by the negligent driving of another, whether it be in your car, ride-share, or company vehicle, do not wait to consult with an attorney. First, seek treatment for your injuries, then immediately meet with an attorney to discuss your rights. Do not speak with the adverse insurance company or give a recorded statement until you have “lawyered up.” The insurance companies have teams of defense attorneys and adjusters that diligently aim to pay you the least amount possible for your injuries and damages. Do not fall victim to their tactics. At vegas west attorneys, we have defense attorney experience which allows us to meet and beat the insurance companies at their own game. We will protect your rights while you undergo appropriate treatment and recover from your injuries. Once the extent of your losses are known, we will aggressively seek a fair recovery that properly compensates you for the inconvenience you have suffered, property damage, medical treatment, lost wages, and the pain and suffering you had to endure because someone chose to act carelessly at your expense. By not reaching out to a legal professional after suffering an injury, you risk not knowing the answers to the following important questions: • Should I provide the insurance company with a statement and, if so, when?

• Do I call my insurance company to make a claim or call the person’s insurance who hit me?

• Who do I call to fix or replace my damaged vehicle? Is a rental car available?

• I cannot miss work to attend doctor appointments. What should I do?

• If I don’t know a doctor who can provide treatment, how do I find one?

• If I do not have medical insurance to pay my medical bills, what other options are available?

• How much should I expect in a settlement or judgment following trial? At vegas west attorneys, we work directly with you to provide proper legal advice to answer these important questions and others. Our experienced attorneys and case managers provide aide in different aspects of your accident case as well. We are your injury advocates and will speak with the insurance companies, so you don’t have to; instead, you can focus your attention on getting better. It is most important in any accident case that you recover from your injuries and pain to the greatest extent possible. This requires that you receive all the health care that you need and deserve, including, if necessary, physical therapy, proper imaging, orthopedic services, pain management treatment, neurological analysis, and sometimes neuropsychological treatment in cases involving closed head injuries. Often, various experts are required such as accident reconstruction engineers, biomechanical experts, vocational rehabilitation experts, and others. Hopefully, your injuries will not require such extensive treatment and analysis, but if it does, vegas west attorneys are equipped to handle every aspect. Often, an accident can involve forces that cause your head to whip so violently that your brain collides with the bony interior of your own skull. This contact can cause bruising to your brain tissue and tearing of blood vessels. Not every head injury is immediately followed by a loss of consciousness and, often, the symptoms from a brain injury do not manifest until later. Other injuries, such as spinal injuries, may seem minor at first but ultimately require extensive treatment, including surgery. Seeking proper treatment for injuries that you might not even suspect initially is crucial to recovery. Waiting to seek legal advice may prove detrimental not only to your accident case, but to your health and ultimate outcome. At vegas west attorneys, we evaluate our client’s insurance policies when injured in an accident, along with all potential insurance policies that may be applicable, so we may provide you the best chance of returning to your pre-accident condition. UM/UIM is just one benefit that many people do not secure when obtaining automobile insurance because they want to keep their monthly premiums low. However, UM/UIM coverage is not overly expensive and can prove extremely valuable in case of an accident. We recommend asking your insurance agent about the cost of adding this coverage with the hope that you’ll never need it, but if you do, you will be thankful to have it.

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[kennethmullins]

The Death of the Supplemental Register?

Let’s all hope that the Supplemental Trademark Register is not on the death watch.

It appears though to be on life support, at times, and especially with the USPTO’s heightened focus on “merely informational” matter, including laudatory messages.

This is a common basis for registration refusal nowadays: “Merely informational matter fails to function as a mark to indicate source and thus is not registrable.”

Don’t all valid trademarks communicate information? Exactly. How does the USPTO know when at least one of the bits of that information is not about the source?

It cannot be fatal to validity that a mark communicates more information than simply source, see a suggestive mark or a descriptive one that has become distinctive.

Although not a laudatory example, the first precedential decision from the TTAB in 2019 denied Wal-Mart’s application on the Principal Register, for INVESTING IN AMERICAN JOBS, a slogan for retail store services, calling it “merely informational,” incapable as a mark:

Wal-Mart recognized that its claimed mark communicated descriptive information, yet it argued that its evidence was sufficient to show acquired distinctiveness.

What’s striking about the Wal-Mart decision is that evidence of descriptiveness was used to support the fatal conclusion that the slogan can never function as a mark.

It relied on a series of prior cases holding certain phrases incapable of functioning as marks (THINK GREEN, GUARANTEED STARTING, DRIVE SAFELY, and others).

It used evidence typically supportive of a descriptiveness refusal to say that Wal-Mart’s slogan would not be perceived as a mark to indicate the source of services.

It also pointed to several examples like “ONCE A MARINE, ALWAYS A MARINE,” “PROUDLY MADE IN THE USA,” and “THE BEST BEER IN AMERICA,” as merely informational or laudatory slogans, incapable of serving a trademark purpose.

Laudatory terms long have been considered merely descriptive (not generic) for the provided goods or services, so they’re ideally suited for the Supplemental Register.

The Supplemental Register exists as a holding cell for merely descriptive phrases not yet distinctive, but capable of becoming distinctive, maybe at some future time.

Incapable matter — subject matter that cannot serve as a trademark — like generic terms and phrases are impossible and hopeless of ever functioning as a valid mark.

TMEP 1202.04(a) actually blends laudatory and informational: “Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark.”

So, now we’re going to differentiate between garden variety laudatory claims that are descriptive, and “highly laudatory claims of superiority” — the latter being incapable, and the former holding out some hope of having at least a chance?

This unfortunate approach is reminiscent of the widely criticized approach of the “so highly descriptive” category as to be incapable of serving a trademark purpose.

All the way back in 1989, I went on the record, questioning the “so highly descriptive as to be incapable” line of cases in “Putting the Cart Before the Horse in Assessing Trademark Validity — Toward Redefining the Inherently Generic Term,” published in the University of Iowa College of Law’s Journal of Corporation Law.

The problem with the “so highly descriptive” category is it treats descriptive matter as incapable and generic without the rigors of an actual genericness determination.

The poster (or coaster) child for the eerily similar approach is the Federal Circuit’s 1999 decision rejecting Sam Adam’s THE BEST BEER IN AMERICA slogan as incapable, blurring the distinction between descriptive and generic designations:

In that decision, Sam Adams had “not met its burden to show” that the slogan THE BEST BEER IN AMERICA for beer, had acquired distinctiveness/secondary meaning.

Had the TTAB and Federal Circuit stopped there, fair enough, doing so would have allowed Sam Adams to seek a Supplemental Registration and try again later (with more evidence of acquired distinctiveness) for a coveted Principal Registration.

But instead, both the TTAB below and the Federal Circuit on review, went on to editorialize that no amount of evidence could ever turn THE BEST BEER IN AMERICA into a trademark, not because it’s generic, but because it’s incapable.

That’s what courts routinely said about single color marks, they’re impossible and incapable of serving a trademark purpose, until Owens Corning came along with the Pink Panther, to reverse decades of thinking against single color trademarks.

And, if “highly laudatory claims of superiority” are actually incapable of a trademark purpose and outside the possible definition of a trademark, then how can Principal Registration of AMERICA’S BEST BEER DRINKING CITY be explained, or these?

Let’s be honest, since the stated test is really to discern how the claimed mark would be perceived by the relevant public, too easily dismissing evidence going to that question, doesn’t help and starts to feel more like an impossible shell game.

I’d rather see the evidence of descriptiveness (which provides information) used to support a descriptiveness refusal, allow a Supplemental Registration, then the USPTO can wage the real evidentiary battle with claims of acquired distinctiveness.

Last week was an incredible opportunity to share some of these thoughts in NYC with those attending Practicing Law Institute’s Advanced Trademark Law 2019 seminar, thanks to PLI, Kenneth Min, and co-chairs Kieran Doyle and Dean Eyler!

In the end, let’s all hope that the USPTO reins in its hyper-focus on expanding the “merely informational” and outcome-determinative category of incapable subject matter, so we don’t have to kiss the Supplemental Register goodbye.

Additional hat tip to Sam Adam’s and its vintage painter’s cap:

    The post The Death of the Supplemental Register? appeared first on DuetsBlog.

[kennethmullins]

Food Fight in NYC!

Famous celebrity chef Chloe Coscarelli (“Chloe”) and Tom Colicchio (“Colicchio”) started a new pop-up restaurant called “Supernatural” that is in the midst of a “food fight” or lawsuit with owners of the By Chloe restaurant Chloe originally founded but no longer has an ownership interest in.  After receiving cease and desist letter from BCH Hospitality Group LLC (“BCH”), Chloe and Colicchio sued BCH in a declaratory judgment action for a judgment that they do not infringe on the CHLOE® trademarks and did not breach Coscarelli’s Name, Face and Likeness Agreement (“NFL Agreement”) with BCH.

Chloe was the first vegan chef to win Cupcake Wars, a national cooking competition, on the Food Network.  She is a published author of four popular cookbooks.  She is known as “Chloe” and “Chef Chloe” and worked at gourmet vegan restaurants in New York and San Francisco.  She has been recognized as “America’s favorite vegan chef” and featured on the “30 under 30” series by  The New York Times, Zagat and Forbes.  However, I must confess that although I am a pescatarian (meaning a vegetarian that eats fish) I had not heard of Chloe or her vegan restaurant until I learned about her lawsuit.

However, I have heard of Chef Tom Colicchio.  He is a James Beard Award winner and also known as “Top Chef.”  Colicchio received an Emmy Award for his work as a Judge on the show Top Chef.  I have had the pleasure of eating at Colicchio’s New York restaurants:  CRAFT (located by the fabulous Flat Iron Building), Gotham Bar & Grill and Gramercy Tavern.  I am hoping to check out The Quilted Giraffe on my next trip to New York (but I digress).

Their Complaint includes the following picture of the chefs:

Chloe founded “by CHLOE” and then partnered with BCH’s predecessor.  BCH is associated with James Haber and ESquared Hospitality.  She claims in her lawsuit that BCH ousted her from the restaurant and she has not been involved for two years.  BCH has a different story, alleging among other things, that she was “grossly negligent” related to losing leases and sabotaging deals with partners.  I have not delved into this messy business “divorce” so I will comment no further.

After Chloe left, BCH started “Sweets by Chloe bakery” pictured below:

am starting to get hungry so I better get back to the legal dispute.  In their Complaint, the chefs included the following picture related to their vegan restaurant:

The chefs argued that the restaurant’s name is “Supernatural” which is not similar to By Chloe at all.  The name highlights that the food is super natural.  According to the Complaint, the two chefs collaboration arose from Colicchio writing “An Open letter to (Male) Chefs” on the platform Medium about rampant harassment in the restaurant industry.  It sounds like Colicchio is on the right side of the Me-Too movement.

In contrast,  BCH focuses on the lower portion that identified the two chefs involved with the new SUPERNATURAL restaurant.  Specifically, the lower part of the sign is “CHLOE COSCARELLI X TOM COLICCHIO COLLABORATION.”  The chefs will likely argue that their names are informative and the trademark and certainly any dominant mark for their restaurant is SUPERNATURAL.  Further, the chefs argue their fame as chefs will not be confused with BCH or its By Chloe marks or restaurants.

I have not seen the NFL Agreement.  It may have a non-compete, but it would likely have some sort of time limit rather than preclude her from working for life.  Chloe asserts the agreement is terminated.  Further, I would doubt that the NFL Agreement required her to change her name or not be able to truthfully state who she is in connection with a restaurant.  The more likely prohibition would be to not use the name “CHLOE” for the restaurant.  But, I have not seen the NFL Agreement, so there may be other arguments that BCH will have against the chef.

This will be an interesting case to follow.  As there are allegations about a dip in quality at By Chloe, the judge and jury might want to sample food from the restaurants involved.

The post Food Fight in NYC! appeared first on DuetsBlog.

[kennethmullins]

Penn State Hits a Speed Bump with Plans to Protect HAPPY VALLEY Trademark

If you have heard of Penn State, you have probably heard the phrase “Happy Valley.” The school, the students, and the media regularly use “Happy Valley” in reference to the school and the surrounding community. The school considers the association so strong that Penn State recently applied to register HAPPY VALLEY as a trademark for clothing – and received a refusal to register.

The Trademark Office examining attorney assigned to the application refused registration on the ground the phrase “Happy Valley” is geographically descriptive. This means that the examining attorney concluded the public will see the phrase simply as describing the geographic area where the school is located. The school’s own website seems to confirm the examining attorney’s concerns, as it describes “Happy Valley” as an “also known as” name for the town, State College.

But don’t worry Penn State fans. The university has a strong chance to overcome the refusals so long as Penn State can demonstrate the HAPPY VALLEY trademark has acquired distinctiveness in the minds of consumers. Marks that may initially be considered geographically descriptive or may become distinctive after sufficient use of the mark in commerce.

For example, use of a trademark for five years or longer may be sufficient to overcome a refusal on this ground. In fact, the examining attorney expressly references this option in the Office Action. Accordingly, chances are good Penn State can overcome this refusal simply by submitting a declaration that the university has used the mark in commerce for more than five years. However, the Trademark Office will also consider other evidence such as widespread advertising efforts, significant sales numbers, and substantial media attention and publicity.

As a fellow alum of a Big Ten university (which university isn’t important), I wanted to provide some assistance in gathering evidence in support of Penn State’s potential claim of acquired distinctiveness for the HAPPY VALLEY trademark.

If you’ve heard of Penn State, you know they receive a lot of publicity for their college sports teams. For example, this ESPN article prominently uses HAPPY VALLEY to refer to Penn State with its headline “Iowa silences No. 5 Penn State in Happy Valley.”

The Penn State wrestling program is also among the best in the country. Historically, the Happy Valley-based wrestling squad has the third-most successful program in the country, with 8 (!!) NCAA national championships , just slightly trailing Iowa’s 23 national championships.

Last, but certainly not least, Penn State can point to a visit last month from the Big Ten Tournament Champions and presumptive NCAA ’s basketball player of the year Megan Gustafson. Yet again Penn State received some great publicity associating the claimed HAPPY VALLEY mark with the University, as media ran with the headline “Iowa Cruises in Happy Valley.”

With all this evidence, Penn State fans should feel good about the likelihood they’ll soon be able to purchase HAPPY VALLEY t-shirts with a ® symbol adjacent to the phrase (exclusively from a licensed retailer). Of course, if they need more evidence, I’m sure I can find some fellow Big Ten organizations that would be happy to add some new headlines in 2019.

The post Penn State Hits a Speed Bump with Plans to Protect HAPPY VALLEY Trademark appeared first on DuetsBlog.

[kennethmullins]

Rivian’s F-150 Masquerade: Fair Use or Trade Dress Infringement?

A little over one year ago, I blogged about Tesla’s Roadster being launched into outer space, asking who owns the right to the “Spaceman” rider’s mark? Today I post a differnt thought-provoking question about electric car company Rivian: Does Rivian’s use of a Ford F-150 body when testing its electric truck technology in public risk trade dress infringement?

If you haven’t seen the recent headlines, startup electric truck company Rivian has been testing its 100% electric truck technology under the hood of a Ford F-150 body:

Credit: AutoBlog

In these photos of a Rivian masquerading as a Ford at an electric charging station, you can make out the modified chassis underneath. You might also notice there are no tailpipes, and the wheels seem just a little too small. Surprisingly, the Ford logo is still present on the truck body in both the front and back, along with the F-150 mark on the side. I sure hope Rivian has a licensing agreement…

Compare the above look to the distinct headlight and sleek design advertised by Rivian:

Credit: Jalopnik

For the past few months, consumers have been reporting sightings of strange F-150s with missing features, speculating that the trucks might be prototypes for an electric Ford. Here’s another example of one seen in the wild, although it’s unclear whether this is a genuine Ford electric prototype:

Credit: AutoBlog

However, recently Rivian CEO R.J. Scaringe confirmed that the company has been secretly testing its “skateboard” chassis architecture underneath Ford F-150 bodies on public streets. And he also suggested the company may be testing under other masks: “They’re all over the place, but nobody knows. We’re very quiet about that.”

When I learned about Rivian’s clever camouflaging, it immediately brought to mind trade dress protections. The Lanham Act protects a product’s design, shape, and configuration when such features serve as distinctive identifiers of the product’s source. Note, however, that functional aspects of trade dress are not protected–only ornamental features are. Just like trademark infringement claims, to prevent others from using a specific trade dress, the plaintiff must show that the use is likely to cause confusion. The Lanham Act also protects against trade dress dilution, which includes weakening of the distinctiveness or fame of trade dress or use of trade dress in connection with inferior products. In either case, the plaintiff can seek both damages and an injunction barring further infringement and dilution.

Arguably, Rivian’s masquerading as a Ford F-150 risks liability for trade dress infringement, as well as dilution. As to infringement, there are already reports of confusion on the streets. Though, the harm from infringement is probably minimal because Rivian is not selling any counterfeit electric F-150s.

Rivian’s use of the Ford F-150 body may also dilute the distinctiveness of the F-150’s overall design and Ford’s marks. Indeed, with knowledge of Rivian hiding under the hoods of F-150s, consumers and commentators may be starting to wonder if the F-150s on the road were actually made by Ford. And depending on your view of electric vehicles, use of the Ford and F-150 marks, in addition to the model’s trade dress, could be seen as use in connection with inferior, unrefined products. On the other hand, if you’re like me and are excited about electric vehicles, the use could elevate Ford and the F-150’s overall image to high-tech chic.

But Ford would likely face an up-hill battle arguing the F-150’s trade dress is famous enough to be entitled to protection from dilution. In fact, it appears Rivian chose the F-150 body precisely because it is ubiquitous and generic enough that hiding under it would likely not draw attention. Moreover, Rivian could argue its use of the F-150 trade dress is fair, and therefore statutorily protected, because Rivian is not using the trade dress to designate itself as a source. Rivian’s use also doesn’t seem to fit the mold for what is typically considered “commercial” (or transactional) use. On the other hand, Rivian could probably take simple steps to modify the body of its testing vehicles to reduce the trade dress risks created by its masquerade.

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[kennethmullins]

Opinions on Opinions on Opinions

At DuetsBlog, we never shy away from sharing our opinion.  It’s part of what makes us not Dr. No.  For over ten years, this has included opinions about interesting trademarks, non-traditional trademarks, boring trademarks, and controversial trademarks, and those are just from me, as well as our opinions on the opinions of others (Ron Coleman, especially), and we love when others share their opinions of our opinions (Ron Coleman, especially).

Well, on March 12, 2019 at 1:00 PM ET, this opinion fever may reach its peak.  As part of a Strafford webinar with Karen Lim of Fross Zelnik about Structuring Trademark Clearance Opinions, I’ll be sharing my opinions about crafting a well-written trademark clearance opinion, and long the way, providing my opinions on the judicial opinions on trademark clearance opinions.  That’s right, opinions on opinions on opinions.  This reminds me of the ever-entertaining and valid English sentence: Buffalo buffalo Buffalo buffalo buffalo buffalo Buffalo buffalo.

Once again, Strafford has generously provided a limited number of complimentary passes, which I’d like to make available to you, our dear opinionated readers.  So, if you’d like a complimentary pass for the webinar, please send me an email at [email protected].  In fact, I recall benefiting from the very same offer, about six years ago: Thanks, Steve!

My only request is that, afterward, you provide me your opinions of the webinar, to which I will reply with my opinions of your opinions, and you could counter-reply with your opinions of my opinions of your opinions.  With your help, we can get to at least opinions on opinions on opinions on opinions on opinions on opinions.  Still short of what buffalo can accomplish, but fun to try.

The post Opinions on Opinions on Opinions appeared first on DuetsBlog.

[kennethmullins]

DuetsBlog: Avoid Sitting on the IP Fence

Well, here we are — a mere ten years ago today — when we dove head first, or at least, dipped our collective toes into the vast intellectual property blogging pond.

Intellectual Property — IP — is italicized today, because there is currently a belief among some of those we respect, that trademarks aren’t intellectual property.

According to our friend Ron Coleman of the Likelihood of Confusion blog:

“[N]othing about trademarks is brain-born other than what we might fairly call the ministerial choice to associate a given trademark with a good or service. That process may involve, and often does, a lot of thinking, creativity and intellection. But none of that invests the trademark itself — which may, in fact, be completely lacking in creativity (“Best,” “Ford,” “American”) — with the quality of intellectual, mental, creative or original content such that it should be deemed ‘intellectual property.’”

There’s a lot to unpack there, but until then, just so you know, I’m firmly on the other side of the fence, viewing trademarks as being a recognized subset of the convenient category label commonly referred to as “intellectual property.”

Stay tuned on this topic, there is much more to say, much more than there is time left in this 10th birthday to do the topic justice, but for now, I’ll simply rest with a notable quote from branding icon, Walter Landor:

“Products are made in the factory, but brands are created in the mind.”

While trademarks aren’t brands, not only can trademarks be bought, sold, licensed, and leveraged as property, trademarks protect brands, and they embody all the intangible goodwill of the portion of a business associated with a particular mark.

Dare I say there is nothing ministerial about the brain-born brilliance Landor brought to his craft as a designer, nor is there mere ministerial contribution to the brilliance and creativity that our many non-lawyer guest bloggers have brought to their work over the last decade. Aaron? James? Mark? Agree?

We’ve written a lot over the years about picking a side, the art of taking a position, not waffling; one of the things we love about Ron is he is unafraid to take a position, to plant his flag firmly in the ground — that’s what we’ve tried to do too, and what we intend to do going forward.

    Here’s a question, what purpose is served by excluding trademarks from the definition of what constitutes intellectual property?

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[kennethmullins]

Registration of Copyright Needed to Sue

Many years ago, as a young lawyer, I experienced the utter joy of helping a client dismiss a copyright infringement lawsuit against it, because the plaintiff’s claimed copyright hadn’t yet been registered with the Library of Congress.

Seemed like an obvious error for the plaintiff to file when it did, since the federal copyright statute, according to my reading, required that registration be made (or denied) before a lawsuit could be brought, mere application was not enough.

Over the last twenty-five years, I’ve observed creative lawyers convince some courts that the language isn’t that clear, leading to a split in the various federal courts, some courts allowing suit based on the mere filing of an application.

So, imagine my surprise this morning, to read that the U.S. Supreme Court has decided the issue once and for all: It is actually pretty clear from the language of the statute, mere applications to register are not enough to allow filing a lawsuit.

That’s right, earlier today, the U.S. Supreme Court issued its decision in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, Justice Ginsburg delivering the unanimous decision of the Court:

“Impelling prompt registration of copyright claims, 17 U.S.C. §411(a) states that ‘no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.’ The question this case presents: Has ‘registration . . . been made in accordance with [Title 17]’ as soon as the claimant delivers the required application, copies of the work, and fee to the Copyright Office; or has ‘registration . . . been made’ only after the Copyright Office reviews and registers the copyright?”

“For the reasons stated, we conclude that ‘registration . . . has been made’ within the meaning of 17 U. S. C. §411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.”

So, with that, at least two takeaways emerge.

First, those who create copyrightable expression have yet another incentive to promptly register the copyrights in their creative works.

Second, issues that seem obvious on their face can nevertheless, through creative lawyering, tie the courts up in knots for decades.

The post Registration of Copyright Needed to Sue appeared first on DuetsBlog.

[kennethmullins]

This Is How You Do It

– Mark Prus, Principal, NameFlash

It’s that time of year! Baseball Spring Training is here! In honor of this, I’m looking at the fun names in Minor League Baseball. Some of them demonstrate the key principles of name development!

Minor League Baseball team names can be dull and boring. For example, there are some that just reflect the name of the parent Major League Team (e.g., Oklahoma City Dodgers, Syracuse Mets, Springfield Cardinals or Iowa Cubs). Yawn.

Or maybe they use a traditional animal such as the Burlington Bees or the classic Durham Bulls. These are a little more interesting, but not especially engaging.

Some teams are “swinging for the fences” with their names. When you think about what is important in naming your minor league team, you should focus on 3 things. Team names should be fun, relevant to the local population, and quirky enough to be memorable.

Here are some examples of team names that are “hitting it out of the park.”

The Madison, Alabama, Rocket City Trash Pandas – Yes, there is a large NASA facility nearby (that includes Space Camp) in Huntsville so the “Rocket City” moniker is no surprise. The Trash Pandas came from a consumer contest and won the public vote by a large margin. The previous team name was the uninspiring Mobile BayBears. For the record, the other finalists were space-animal combinations: Moon Possums, ThunderSharks, Space Chimps, and Comet Jockeys. Even though the Trash Pandas won’t start playing until 2020, they broke the three-month sales record for merchandise sold by a rebranded Minor League Baseball team with over $500,000 in merchandise moved in nearly 3,500 online orders.

The El Paso Chihuahuas – When the former Tuscon Padres moved to El Paso in 2013 the team ran a naming contest and fans chose between these finalists: Aardvarks, Buckaroos, Chihuahuas, Desert Gators, and Sun Dogs. While Team Management was initially a little apprehensive about the name, their focus on fun drove sales of Chihuahuas merchandise to record setting levels.

The New Orleans Baby Cakes – According to a team PR release, the Baby Cakes name is “A tribute to the Mardi Gras king cakes where small plastic babies are sought after.” In the 2017 rebranding, the former New Orleans Zephyrs held a name-the-team contest and the finalists were Baby Cakes, Crawfish, King Cakes, Night Owls, Po’boys, Red Eyes, and Tailgators. Although the Baby Cakes name was initially met with mixed reactions, the team reported increased merchandise sales after the announcement and the rebrand set a record for online merchandise orders. Of note, the team awarded a free lifetime pass to any baby born in the state of Louisiana during 2017 and was entered into a raffle to win a full four-year tuition to a state college in Louisiana upon their 18th birthday in 2035.

In 2019 the Amarillo Sod Poodles begin play – Per the team, Sod Poodles is a “pioneer’s nickname for ‘Prairie Dogs.'” This name emerged victorious in a “Name the Team” contest, triumphing over other selections rooted in Amarillo’s Texas Panhandle location: Boot Scooters, Bronc Busters, Jerky and Long Haulers.

The Jacksonville Jumbo Shrimp – Previous renditions of teams in Jacksonville included the Jacksonville Expos (referencing the parent Montreal Expos) and the Jacksonville Suns. You’ve got to admit that the Jacksonville Jumbo Shrimp is an upgrade, even if it is an oxymoron. And speaking of oxymoron, the Jacksonville Jumbo Shrimp was an answer on Jeopardy earlier this year!Jacksonville Jumbo Shrimp

@JaxShrimp

Hey @thereal4smo – we loved your work on @Jeopardy tonight. Can we interest you in to coming to Jacksonville for a ballgame this season? Follow back and message us if you’re interested!

  If you want to check out the bible of the weird team names of Minor League Baseball, check out this book: Root for the Home Team: Minor League Baseball’s Most Off-the-Wall Team Names and the Stories Behind Them.

Someday I’d like to work in the “Funnest” brand name category in America–Minor League Baseball Teams!

The post This Is How You Do It appeared first on DuetsBlog.

[kennethmullins]

Q and A: Q, Another Single Letter Brand?

Welcome to another edition of Single Letter Brands. This one was uncovered in the far southwest corner of the country, if you haven’t been, I highly recommend a visit:

Q is a casino/resort near Yuma, Arizona. Here’s a question, what does Q stand for?

In this context, near Yuma, we’re not talking this Q casino, but rather, The Quechan, a Native American tribe, living on the Fort Yuma Indian Reservation, located on the lower Colorado River in Arizona and California, just north of the Mexican border:

The Objects in the Rear May Appear Closer Than They Are, Really.

Here’s another question: Why do you suppose The Quechan haven’t pursued registration of Q at the USPTO? Perhaps this federally-registered Q casino mark?

Here’s yet another question: Is there room on the Principal Register, for multiple differently stylized Q casino marks? I’ll answer that one with another question: Would you rather have really thin national rights or broad, but more local rights?

And, your Answers?

The post Q and A: Q, Another Single Letter Brand? appeared first on DuetsBlog.

[kennethmullins]

Will Daenerys or Sansa Sit on The Iron Throne?

Does Sanas Health Practice Ltd. (“Sanas Health”) think that Daenerys or Sansa will win at the end of the wildly popular Game Of Thrones series and ultimately sit on the Iron Throne?  Sanas Health filed two applications for the mark “QUEEN OF THRONES” with the United States Patent and Trademark Office (“USPTO”). Interestingly, the Applicant’s name Sanas is extremely similar to the Game of Thrones show leading character Sansa Stark. This may be merely a coincidence but could be argued to enhance confusion between the GAME OF THRONES® marks and the applied for “QUEEN OF THRONES” mark.

I guess there could even be those out there that think Cersei will not die in the final season (not me) and instead will end up on the Iron Throne at the end of the series. But, I am thinking most people agree with me that she will not survive (and will likely be killed by one of her brothers – my bet is on Jaimie).

Not surprisingly, Home Box Office (“HBO”) believes that Sanas Health is trying to capitalize on the goodwill of its famous GAME OF THRONES® mark and brand; and thereby, diluting its distinctive and famous GAME OF THRONES® marks. HBO further believes that the “QUEEN OF THRONES” mark is confusingly similar with its marks. Accordingly, HBO has filed a Notice of Opposition against these applications (No. 91246195).

By way of background, HBO has thirty-one (31) registrations and applications for GAME OF THRONES marks (including design marks and GAME OF THRONES with additional words such as GAME OF THRONES CONQUEST®, GAME OF THRONES THE THREE-EYED RAVEN®, GAME OF THRONES ASCENT®, and GAME OF THRONES BEYOND THE WALL) in connection with various goods and services.

Sanas Health applied for its “QUEEN OF THRONES” mark in connection with:

“Castor oil for medical purposes,” IC 5 (Ser. No. 87/839,043); and

“Nutrition counseling; Dietary and nutritional guidance; Providing a website featuring information about health, wellness and nutrition; Providing information about dietary supplements and nutrition,” IC 44  (Ser. No. 87/922,698).

This is not HBO’s first time seeking to protect its marks related to the Game Of Thrones series and brands. HBO has three (3) trademark registrations and an application for WINTER IS COMING®, which is the House of Stark-centric premiere episode of the Game of Thrones series. The Purple Wine Company attempted to register the “WINTER IS COMING” mark in connection with wines. HBO opposed the application and the Purple Wine Company failed to respond. The mark is now abandoned.

The Examining Attorney found the recent application for “WINTER IS COMING” filed by Chen Yufang to be confusingly similar with HBO’s WINTER IS COMING® marks and issued an Office Action preventing registration. We will have to see if Mr. Yufang serves a response to this Office Action or abandons the application. If he does not abandon the Application and is able to overcome the Office Action, I would anticipate that HBO would file a Notice of Opposition against his application for the famous “WINTER IS COMING” mark.

Fans of the Game of Thrones series are aware of the fanciful word “Dracarys” as a command to Daenerys’ the fire breathing dragons. HBO opposed an application filed by Hangzhou Wanry Imp. & Exp. Co., Ltd.  (“Hangzhou”) to register the “DRACARYS” mark in connection with numerous automobile related accessories. HBO opposed the application and Hangzhou failed to respond. The mark is now abandoned.

Fan favorite Tyrion Lannister proclaimed, “That’s what I do. I drink and I know Things” in season six of Game of Thrones, and HBO’s official trailer for the sixth season included this saying. When Francis Collins from Florida tried to register this mark in connection with t-shirts, HBO relied upon its common law rights associated with its sale of t-shirts having the “That’s what I do. I drink and I know Things” mark to oppose the Application. Ms. Collins defaulted and her application for the mark is now abandoned and dead.

DuetsBlog has featured other posts related to the famous show and its brand, including Martha’s post here, and mine here.

The wait is almost over.  The final six episodes of Game of Thrones start on April 14.  We will have to see if there is a King or Queen who ends up on the Iron Throne and what happens to the “QUEEN OF THRONES” applications.

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