The was a lot of discussion recently about the episode of NBC’s This is Us, which implicated a faulty switch on a Crockpot® in the death of the family’s beloved patriarch, Jack Pearson. The manufacturers opened a Twitter account to respond to angry fans, and it issued a lengthy statement defending its product and asking NBC for some help to correct the record.
This is probably as good as the manufacturer could do. This unfavorable depiction is not trademark infringement or even dilution. The use, while unfortunate from the trademark owner’s standpoint, is protected by the story tellers first amendment rights. While a disclaimer would be a nice gesture, it is not a legal requirement.
Other trademark owners facing abuse or misuse of their products have similarly found that there is not much legally that the brand owner can do. Several years ago, the Emerson Electric, the manufacturer of Insinkerator waste disposers was upset when the heroine of the TV series Heroes (also by NBC) deliberately put her hand in their waste disposal to demonstrate her recuperative power. Emerson sued to mixed public reaction, and while it did get a concession by NBC to edit the depiction going forward, it eventually dismissed the case.
Many years ago Caterpillar, upset with the use of its bulldozers by the villains in the movie George of the Jungle II to destroy the jungle, sued Disney. However, the suit did not get far. See, Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003). Around that same time, Wham-O, maker of the iconic Slip ‘n’ Slide, sued Paramount Pictures for the misuse of the toy by the title character in the film “Dickie Roberts: Former Child Star,” and didn’t get very far. See, Wham-O, Inc. v. Paramount Pictures Corp., 2003 WL 2300526 (N.D. Cal. 9/29/03).
Trademark protection offers scant protection when bad things happen to good brands. Trademark owners are best off fighting bad percent at the court of public opinion, rather than a court of law.
In In re Brunetti, [2015-1109] (December 15, 2017), the Federal Circuit reversed the Trademark Trial and Appeal Board, which affirmed the examining attorney’s refusal to register the mark FUCT because it comprises immoral or scandalous matter under
15 U.S.C. § 1052(a).
While the Federal Circuit found substantial evidence supported the Board’s findings and that the Board correctly concluded that the mark comprises immoral or scandalous matter, the Federal Circuit held that the bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.
After its en banc decision In re Tam, 808 F.3d 1321, 1333–34 & n.4 (Fed. Cir. 2015), which held that Section 2(a)’s prohibition against registration of disparaging marks unconstitutional under the First Amendment because it discriminated on the basis of content, message, and viewpoint, which the Supreme Court affirmed, the Federal Circuit determined that the prohibition against scandalous marks was similarly unconstitutional.
The government conceded that § 2(a)’s bar on registering immoral or scandalous marks is a content-based restriction on speech, subject to strict scrutiny review. However, the
government contended § 2(a)’s content-based bar on registering immoral or scandalous marks does not implicate the First Amendment because trademark registration is either a government subsidy program or limited public forum. The Federal Circuit examined both of these arguments in detail, and rejected them.
It seems ridiculous to assert that the First Amendment creates a right to register a trademark, but the Federal Circuit has held otherwise and the Supreme Court agrees. One has to wonder which other of Section 2’s prohibitions are likewise improper restrictions on speech.
On May 3, 2017, Montauk Juice Factory Inc. sued Starbucks Corporation in the Eastern District of New York, [1:17-cv-02678] alleging that Starbuck’s “UNICORN FRAPPUCCINO” infringed its “distinctive and famous” UNICORN LATTE. Montauk also complained that Starbucks’ Unicorn Frappuccino shares visual similarities to the Unicorn Latte in that both were brightly colored and featured the colors pink and blue prominently.
Montauk claims that it began selling the UNICORN LATTE in December 2016 (although their trademark application claims a first use of October 1, 2016. Peculiarly, Montauk acknowledges that the Unicorn Latte fits with the current trend of colorful foods—a relatively recent interest, particularly on the Internet, with multi-colored foods, and even specifically identifies UNICORN NOODLES and UNICORN POOP.
So is UNICORN a trademark, or is it simply a trend? Recipes for UNICORN LATTES and UNICORN FRAPPUCCINOS abound on the internet. There is UNICORN hot chocolate, UNICORN tea, UNICORN shakes, and UNICORN smoothies, UNICORN toast, UNICORN doughnuts. While there is plenty of press about Montauk’s UNICORN LATTE, there are plenty of indications that UNICORN is descriptive if not generic, and that UNICORN food and drink are a trend. Montauk may not even the originator of the trend — Toronto’s CutiePie Cupcakes & Co. has been selling a UNICORN LATTE since last summer.
Can Montauk show that it is likely that consumers will believe there is a connection between UNICORN LATTE and UNICORN FRAPPUCCINO, or is the only connection between the products in the minds of consumers that both are brightly colored, like other UNICORN food and drink? If in fact Montauk is the owner of UNICORN LATTE, it may be the victim of genericization — a common fate for product innovators whose choice of brand name for a new product becomes the name for the product. When naming a new product, it behooves the innovator to select both a generic name and a brand name, so that brand is not lost.
In Oaklawn Jockety Club, Inc. v. Kentucky_Downs, LLC, [16-5582] (Sixth Circuit April 19, 2017), the Sixth Circuit affirmed a district court dismissal of plaintiff’s trademark infringement action because defendant’s use of plaintiffs’ trademarks in its electronic horse racing games was not likely to cause confusion. Although the case was designated “NOT RECOMMENDED FOR PUBLICATION,” it makes an important point about trademark infringement: defendant must use plaintiff’s trademark as a trademark.
The district court found, and the Sixth Circuit agreed, that defendant’s marks in its animated video recreations of actual historic horse races, in order to identify the location of the race, was not a trademark use.
The Sixth Circuit noted that the term “Location” preceding the trademarks sufficiently explains to consumers that the trademarks are being used in a wholly descriptive
manner and does not cause a likelihood of confusion as to the source of the video. The Sixth Circuit added that the fact that the replay is entirely generic and does not visually depict the plaintiffs’ facilities further supports this conclusion.
Because this was a non-trademark use of plaintiffs’ trademarks, the Sixth Circuit did not have to reach the question whether the fair-use defense applied. As the Supreme Court said in Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924). “When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.”
The prevailing defendant in Louis Vuitton v, My Other Bag, LLC (blogged about here: Louis Vuitton Left Holding the Bag) in a Motion filed on April 7 in the Southern District of New York (Case 1:14-cv-03419-JMF Document 154) is seeking $802,939.05 in fees and costs for defending Louis Vuitton’s claim that MOB’s parody bag infringed or diluted Louis Vuitton’s rights:
MOB argues that a fee award is justified because Louis Vuitton is a trademark bully. “Trademark bully” is a term that is being used with increasing frequency. See Three Stripes and You’re Out. MOB used the term “bully” at least 13 times in its motion for fees.
Trademark Owners are put in a difficult position. The failure to aggressively enforce their rights, can allow third party uses that either weaken the mark in a likelihood of confusion analysis, or lessen its fame and distinctiveness in a dilution analysis. A trademark owner may (rightly) feel forced to take actions that it might otherwise be inclined to tolerate. And outside of the costs of enforcement, there has been little consequence to bringing such a claim.
An award of attorneys fees and costs in appropriate cases, may be exactly what is needed to tip the scales when enforcement decisions are being made. It is up to the Southern District of New York to judge the propriety of Louis Vuitton’s enforcement efforts, and decide whether or not the name “bully” is appropriate.
There are still a number of entities out there trying to trick trademark owners into spending money to list their marks in various on line and print directories by sending official looking invoices and other paperwork. In the last month, one client received ten such solicitations, from six different entities:
- IP Direct International Patent & Trademark Directory
- Patent & Trademark Office
- Patent & Trademark Bureau
- International Catalogue of Trademarks
- TPP Trademark & Patent Publications
- GLOPAT Global Patents & Trademarks
The practice is so pervasive, that this same client also received a warning letter from the UK Intellectual Property Office, warning about “unofficial trade mark renewal services” and identifying two such agencies in particular:
- Patent and Trade Mark Agency Limited
- Trade Mark Renewal Services Limited
Not only to trademark owners have to watch out for infringers, they need to watch out for scammers as well.
Recently in Silverhorse Racing LLC v. Ford Motor Co., [Civ. Action No. 6:16-cv-00053] (M.D.Fla. January 30, 2017) the Court granted Ford Summary Judgment that the act of sending Demand Letters to Silverhorse’s distributors was litigation contact that is immunized from civil liability under the Noerr-Pennington doctrine.
Judge Conway found that the doctrine extends not only to petitioning of the judicial branch (i.e., filing a lawsuit), but also to acts reasonably attendant to litigation, such as demand letters. Judge Conway instructed, however, that the Noerr doctrine is not absolute, and that to receive immunity the acts must no fall within the sham exception — i.e., the litigation activity must be genuine.
Silverhorse argued that because it had defenses to Ford’s claims, the demand letters asserting the claims were a sham. Judge Conway was unpersuaded. She said that the subjective strength of the claims are not determinative of whether the letters were a sham. Because there was no evidence that Ford’s letters were objectively baseless, the Court did not have to examine Ford’s subjective intent.
An interesting phenomenon is the use of trademarks to own current events. Every major event seems to be followed by a series of trademarks applications by those who seek to claim ownership of history, or at least the tchotchkes of history.
It wasn’t surprising, then, that Donald Trump’s surprising run for the presidency, spawned a number of copycats trying to own a piece of the event. Donald Trump filed his first application on MAKE AMERICAN GREAT on November 19, 2012, just two weeks after the previous Republican nominee, Mitt Romney, lost to Barack Obama.
Since then, there have been nearly fifty applications filed on the MAKE ______ GREAT AGAIN format, including applications on nearly identical marks: Serial No. 86765056 on MAKE AMERICAN GREAT AGAIN for audio and video recordings; Serial No. 86958684 on MAKE AMERIKKKA GREAT AGAIN for on-line store services; Serial No. 86956810 on LET’S MAKE AMERICA GREAT AGAIN! for shirts; Serial No. 87062839 on MAKE AMERICA GREAT AGAIN for patches; Serial Nos. 87231017 and 87231035 on MAKE AMERICA GREAT AGAIN for beds and linens.
Then there are those that have capitalized on the phrase by adapting the slogan to their own purposes, such as: Serial No. 87016324 on MAKE OIL & GAS GREAT AGAIN; Serial No. 87054734 on MAKE MY BODY GREAT AGAIN; Serial No. 87042380 on MAKE SOCIAL MEDIA GREAT AGAIN; Serial No. 87234750 on MAKE OUR PRESIDENT GREAT AGAIN, and Serial No. 86754667 on MAKE YOUR HAIR GREAT AGAIN.
The trademark register is an overlooked resource tool for seeing what has caught America’s attention. Whatever it is, someone will make a T-shirt or bumper sticker, and try to own it, by filing a trademark application. Own a piece of history, just $225 per class.
In D.C. One Wholesaler, Inc. v. Chien, [Opposition No. 91199035/Cancellation No. 92053919](TTAB October 4, 2016), the TTAB was called upon to resolve a dispute over the ownership of the trademark I ♥ DC. The TTAB held in a non-precedential opinion, that I ♥ DC was not a trademark — not for being deceptively misdescriptive, as one might expect, but simply because it did not function as a mark.
The TTAB reminded us that the Trademark Act is not an act to register mere words, but rather to register trademarks. The Board said that before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify. The Board found that the record before it indicated that I ♥ DC has been widely used, over a long period of time and by a large number of merchandisers, as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C. The Board further found that the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term.
The Board concluded:
We find that the phrase I ♥ DC on apparel and other souvenirs, whether displayed in the stacked format shown in the Registration or in the horizontal format shown in the Application, would be perceived by purchasers and prospective purchasers as an expression of enthusiasm for the city of Washington, DC. Under such circumstances, customers would not perceive I ♥ DC as an indicator of the source of the goods on which it appears.
Thus, the Board held that I ♥ DC fails to function as a trademark. The Board sustained the opposition, and cancelled Opposer’s registration.
The Board’s decision is non-precedential, perhaps because the Board did not want to to encourage a close look into the many registered trademarks that function like I ♥ DC. When someone buys a shirt or other trinket with a short sentiment (or even a sports team name) do they really think about, or even care about, the source? In the vast majority of cases they couldn’t care less about the source, they are buying the message. Ever since Dallas Cap & Emblem, the dirty little secret of trademark law is that we routinely bend trademark protection to protect the message and not the source. However, when you bend trademark law too far, it occasionally snaps.
A new year is upon us, and we suggest that trademark owners make it a brand new year, by resolving to use their marks correctly going forward. Proper trademark use is important to creating and maintaining trademark rights, and the rules are relatively simple — just follow the ACID test: Adjective, Consistent, Identified, and Distinctive.
A mark is an adjective identifying a particular kind of product or service, and it should be used as such. A trademark should be paired with a generic term for the product or service. “Buy an ACME™ widget.” is preferred over “Buy an ACME™.”
A mark should be used consistently so that it is more readily recognized by consumers. In Reebok International Ltd. v. Kmart Corp., 849 F.Supp. 252, 31 USPQ2d 1882 (S.D.N.Y. 1994), the Court noted the limitations on the strength of Reebok’s trade dress “because Reebok has used the Stripecheck inconsistently.”
A mark should be identified as a mark and not a normal word. Registered marks should be identified with the ® symbol, and unregistered marks with a ™. This is pretty straight-forward, but many trademark owners drop the ball when the mark appears multiple time on a package or advertisement. Should the mark be identified every time it appears? Yes is should. However at the very least the most prominent use of the mark should be identified on every “sight” – each page or each face of the package. That way every one encountering the mark will be apprised of its trademark status.
Finally, the a mark should be used distinctively. The mark should stand out from other words in an advertisement or on a package. The mark should be bigger or bolder or in color. Anything that draws attention to the fact that the mark is special.
Applying the ACID test to your trademark use will help you build and maintain strong trademark rights. This year resolve to use your marks properly, and make this a BRAND new year!