Ten years of CONFUSION



I had grand plans, in my head, for this post noting the tenth anniversary (I think people stopped saying “blogiversary,” thankfully) of LIKELIHOOD OF CONFUSION®.   I am very pleased to say, however, that life and the practice of law got very stubbornly in the way.

They were some pretty funny ideas, too!

But unlike in the past — I probably last marked the blog’s birthday five years ago — these days I don’t even have time to tell you what those great ideas were.  Life is too rich, full, exhausting, interest-bearing, scary for a lot of navel-gazing, and coming from LIKELIHOOD OF CONFUSION®, that’s saying something. Read More…

Best of 2009: I can’t stands no more!

Well blow me down!

Well blow me down!

Published on January 6, 2009.

The Popeye copyrights are now in the public domain in Europe. That’s copyright, not trademark.  As Mark Owen, an IP lawyer at the UK firm of Harbottle & Lewis is quoted as putting it:

The Segar drawings are out of copyright [yes, that’s how they put it over there — RDC], so anyone could put those on T-shirts, posters and cards and create a thriving business. If you sold a Popeye toy or Popeye spinach can, you could be infringing the trademark.



I assume he means “anyone may put those on T-shirts, posters and cards and create thriving business,” or otherwise why would he be practicing law? But I do think he illustrated the distinction between exploiting copyright and trademark rights nicely, and in a manner quite a few lawyers could do to comprehend. Read More…

Best of 2008: MasterCard card. Card card. Card.

Originally posted 2008-12-17 12:21:30. Republished by Blog Post Promoter

First posted December 17th, 2008.

Mastercard Card

A reader writes to New York Times Q&A guy Stuart Elliot with a question that’s on a lot minds:  What’s with this “Mastercard card” stuff you hear on the commercials?



There are, evidently, two answers, the second of which was LIKELIHOOD OF CONFUSION®’s guess and the first of which is… well, here, read it for yourself:

“Essentially, many times it’s because we’re driving consumers to use their physical payment card,” says Jon Schwartz, a spokesman for MasterCard Worldwide in Purchase, N.Y., “so we must distinguish between our brand and the MasterCard-branded credit or debit cards that consumers utilize to make purchases.”

You must, eh?  Well, in this humble marketing-and-branding-savvy-law-blogger’s opinion, you’re not.  We can barely follow what you’re talking about, and that’s because what you’re talking about, Jon — can we call you Jon?, thanks — is incoherent.  MasterCard may think consumers understand this distinction via a 30-second spot, but how can they when it doesn’t even make sense no matter how long you stare at it in black and white? Read More…

Best of 2008: Color me infringing

Originally posted 2008-12-04 11:44:28. Republished by Blog Post Promoter

First posted on December 8, 2008.

Trademark law continues to slip from its moorings in subtle ways.  From Inside Higher Ed (hat tip to its editor, Doug Lederman, for sending it along):

On Wednesday, the U.S. Court of Appeals for the Fifth Circuit — ruling in a case involving an apparel manufacturer that made T-shirts that incorporated the colors but not the names or logos of major college football programs — declared that the use of “color schemes along with other indicia” that have come to be strongly associated with a university can be enough to trigger a finding of trademark violation when they create a “a probability of confusion” in the mind of consumers.

What’s the thinking here, exactly?



A federal court in 2006 endorsed the universities’ arguments that Smack’s products were purposefully similar enough to their own licensed products that they were likely to mislead consumers into believing that the company’s goods were produced by or associated with the universities’ own. . . . The three-judge panel of the Fifth Circuit appeals court took very much the same stance as the lower court. . . .

“[W]e conclude that there is no genuine issue of fact that Smack’s use of the universities’ color schemes and other identifying indicia creates a likelihood of confusion as to the source, affiliation, or sponsorship of the t-shirts. As noted above, the digits of confusion — particularly the overwhelming similarity of the marks and the defendant’s intent to profit from the universities’ reputation — compel this conclusion,” the court’s opinion states.

I hadn’t entirely assimilated this “digits of confusion” terminology, though it’s been out there for a while, but, bigger picture — what’s really going on is somewhat troubling.   Read More…

Best of 2008: Tackiness not grounds for refusal to register

[Posted December 1, 2008.]

Otherwise, why would John Welch be reporting this appeal?:

December 4, 2008 – 10 AM: In re Chippendales USA, LLC, Serial No. 78666598 [Refusal to register the apparel configuration shown below for “adult entertainment services, namely exotic dancing for women in the nature of live performances” on the ground that the design is not inherently distinctive].

Frankly we would have relied on tackiness for the refusal if we were the PTO, because when we see this classy outfit we think “Chippendales” every time.  “Inherently distinctive?” I’d say!



Then again, that’s how we worked our way through law school, so we’re biased. (UPDATE: Marty raises an eyebrow — obviously doesn’t remember what LIKELIHOOD OF CONFUSION® himself  used to look like.)

More interesting is the concept of apparel configurations as the subject matter of a trademark.  Indeed, as the applicant’s brief by friend Stephen Feingold (of our former firm Day Pitney — didn’t realize he’d handled my favorite Yiddish IP case!) makes clear, that question is indeed a matter of first impression. Read More…

Best of 2008: Fool’s gold

Originally posted 2008-11-16 14:31:19. Republished by Blog Post Promoter

Crystal Energy Reading, Horatio StreetPosted on November 16, 2008.

The Internet changes everything right? Not this: A fool and his money — especially the kind paid to consultants — are still soon parted:

Pre-Internet, lawyers would do their best to flesh out the backgrounds of people who might sit in the jury box. “We used to drive by the juror’s house and take a picture just to get a snapshot of, who is this human being?” recalled Robert Hirschhorn, a Dallas-based attorney and jury consultant.

Yet picking the panel whose judgment could send a client to prison or direct the disposition of millions of dollars often came down to intuition. Today, for a growing number of attorneys who want to take the guesswork out of the process, a Web search is a required first stop.

In one recent patent case he consulted on, Hirschhorn says an Internet search revealed that a potential juror owned a business helping beauty pageant contestants find costumes. According to her Web site, she wouldn’t sell certain clothing lines because the designs were patent-protected — “a gold nugget,” he said. “It told us she understood the value of proprietary information.”

It told you that, did it, Robert? Some patent! What did you charge for that brilliant advice? Did this gold nugget tell you perhaps her confusion between patents and copyrights or something else that may or may not govern what clothing lines she could sell could hurt your client rather than help it? Did it tell you whether and how much she perhaps resented not being able to sell those “patent-protected” clothing lines “because of some legal technicality”? Did it tell you anything useful at all? It gets better:

More often, scouring a juror’s postings is an exercise in online psychoanalysis. Social networking sites and blogs can be particularly useful.

“Facebook tells you how people perceive themselves,” Hirschhorn said. “Blogs allow you to peer inside their minds. It’s like tapping a phone call: You’re finding out unfiltered what a person is thinking or feeling.”

Wow. Sounds like the usual amateur psychoanalysis, actually — wild speculation — but with one difference. Unlike other armchair psychologists, this guy actually charges more than a therapist. Read More…

Best of 2008: Someone dropped in an extra zero, right? RIGHT?

Posted on October 16, 2008.

It’s a month-old story, and how it got past us here notwithstanding, it’s not getting past us now.  Per the ABA Journal, remember the Bratz litigation?  Well, you haven’t read half of it yet:

Two toy companies battling for rights to the Bratz dolls-with-attitude have racked up legal fees of at least $93 million in the case.

MGA Entertainment has spent $63 million in fees since 2004 defending a lawsuit by Mattel Inc. that contended the doll’s designer conceived of the idea before leaping from Mattel to MGA, the Daily Journal reports (sub. req.). Plaintiff Mattel has spent $30 million in just the first half of the year, the story says.

Mattel was awarded $100 million in the case, far short of the more than $2 billion in damages it had sought.

The Daily Journal got MGA’s figures in a lawsuit it filed against its insurers seeking full payment of the Bratz fees, while the publication got the Mattel figure from a stock analyst.



The ABA item quotes a Jones Day litigation partner who is flummoxed at the idea that there is any conceivable way to get to $93 million for a trademark case, even over the course of four years.  We sure are, too.  And re-read this ‘graph: Read More…

Best of 2008: Which exit did we get off, again?

Posted on September 7, 2008.

Well, maybe we’ve been too hard on the Democrats here at LIKELIHOOD OF CONFUSION®.  Perhaps unlike the GOP, they’ve got good, progressive IP counsel out there, and maybe an Obama Administration will take a more realistic view of what you can and can’t do on the Internet.  At least we know they don’t have any hangups about “deceptive key word advertising” or “Internet traffic diversion,” the modern bugaboos of Internet trademark litigation.  Turns out they think those things are pretty keen!



Above is a screen shot (click for full size) of a search result you got if you searched Google for SARAH PALIN SPEECH on Saturday night — note the sponsored link on top, in color, that links to the Democratic Convention website, DemConvention.com:

The link tells Internet users they’re going to a page called DemCovention.com/RNC.  Wow, are they showing the Palin speech in order to get you to compare it critically to what the DNC has to offer?  It’s comparison shopping, right?  A modern-day Miracle on 34th Street!

Well, no.  Here’s what you actually get: Read More…

Best of 2008: Cowboy rules

Originally posted 2008-12-28 01:30:17. Republished by Blog Post Promoter

nakedcowboy m&MFirst posted June 24, 2008.

From the National Post, trademark news about a lawsuit brought by New York’s charming Naked Cowboy against the makers of M&M’s and its ad agency. The story is in Canadian, but you can still more or less make it out:

Robert Burck, a New York street performer who entertains the crows in Times Square by strumming a white guitar and wearing little more than white cowboy boots, has been given a green light to proceed with a US$6-million trademark suit against the maker of M&Ms candy.

Burck, who has trademarked [sic] his look and who licences his name and likeness for endorsements, claims Mars ran video billboards that improperly depicted an M&M wearing an outfit similar in skimpiness to that favoured by the cowboy.



Mars denies the allegations and tried to get the case thrown out of court. Mr. Justice Denny Chin of the U.S. District Court for the Southern District of New York in Manhattan refused, ruling that whether Mars infringed the trademark is a question of fact, not law, and as such can only be decided at trial. You can read his judgment here.

Judge Chin’s opinion (which I assume reflects “his judgment”) actually has the relevant pictures right in it. I like that kind of thing. The lawsuit also included a claim for infringement of Burck’s right of publicity, as it would be called elsewhere, or what New York calls the (statutory) right of privacy. It was dismissed. From the opinion:

Burck’s right to privacy claim (denominated as a right of publicity claim) is dismissed, for the New York statute [N.Y. Civ. Rights Law § 50] protects the name, portrait, or picture of a “living person,” not a character created or a role performed by a living person. Burck may proceed, however, with his false endorsement claim, for he plausibly alleges that consumers seeing defendants’ advertisements would conclude — incorrectly — that he had endorsed M&M candy.

Read More…

Best of 2008: Bring out The Best?

Originally posted 2008-06-06 00:01:12. Republished by Blog Post Promoter

Hellman's mayo

I’ve always been fascinated* with the concept of the lookalike packaging of “house brands” or private labels, which are usually priced a good one-third cheaper than the most popular version of the same product sitting right next to the house-brand version on the shelf. Sometimes they’re more or less the same thing, as in the case of over-the-counter pharmaceuticals. Sometimes, though, there are serious quality and, in the case of food, taste differences between the real thing and the store brand in the similar, clearly allusive packaging.

And I’m not the only one interested in this topic.  Yet people who are little more than strangers have asked us about whether or not copycat packing like this is “allowed.” (Why strangers? It’s a kind of magnetism I have, the way some people are just always being stopped by people who need directions. But I digress.)



Indeed, I blogged about a development in this area earlier this year, in which the Third Circuit Court of Appeals said, well, no, that kind of copying is not really allowed, and if you push it we just might have to pull this car over and come back there and then you will most assuredly be sorry.

So unwinding after a hard day of what I do here, I followed a link to James Lileks’s blog from Instapundit, and couldn’t but be struck — given my … unusual … interest in this topic — by this picture, and James’s unusual and, as ever, brilliant presentation (emphasis added) of the presentation:† Read More…

Best of 2008: The Long and Rocky Road

Originally posted 2008-12-27 20:06:57. Republished by Blog Post Promoter

This was first posted on May 7, 2008.
beatle_icecreamIrvin Robbins, the co-founder of the Baskin-Robbins ice cream chain, died yesterday. Here’s how much time has passed since just about the time your blogger was born, in ice cream marketing years:

When the Beatles were to arrive in the United States in 1964, a reporter called to ask whether Baskin-Robbins was going to commemorate the event with a new flavor.

Robbins didn’t have a flavor planned but quickly replied, “Uh, Beatle Nut, of course.”

The flavor was created, manufactured and delivered in just five days, according to the Web site.



Hah! Can you imagine? Without a sponsorship deal!

“Diversion!” “Free riding!” “Initial interest confusion!” “LIKELIHOOD OF CONFUSION®!” And, of course, “Dilution!”

No…. none of those things. Just tribute. And, yes, a little profit too. The Beatles… probably didn’t miss it. They were a musical act, and song writers, interested in rhythm and blues, not sprinkles and scoops.

We’re not against intellectual property here.

Read More…

Best of 2008: The Color Purple

Originally posted 2008-12-26 13:41:06. Republished by Blog Post Promoter

This was first posted on April 14, 2008.
Cadbury-PurpleCadbury is purple in the face over not being able to secure the wordlwide exclusive rights to the use of the color purple in association with the sale of chocolate — even as against an Australian company that’s been using the two together for almost a century:



Cadbury tells me it is “vigorously appealing” against a judgment over the use of purple. In a case that it has pursued for five years, Cadbury has tried and failed to stop Darrell Lea, an Australian chocolate manufacturer, from using the colour.

Despite the fact that Darrell Lea was established in 1927 and has been using purple for most of its existence, Cadbury insists that it has no right to the colour. Cadbury has registered one shade of purple in relation to block chocolate in tablet form in Britain but it has not been as successful elsewhere.

Purple, actually, may be the oldest legally-protected “trademark” color, of sorts. The color was, at certain times during ancient times and antiquity, permitted to be worn only by the nobility. To which, in the chocolate sense, Cadbury may or may not have a claim. I do like the stuff, and perhaps it is among the elite in the chocolate hierarchy. Certainly compared to virtually anything else the English make it is uniquely edible — but regal?

UPDATE: Cadbury’s claim melts in its hands, not just in our mouths.

UPDATE II:  Settled, dismissed, whatever. It’s all over but the calories!  Via @IPThinkTank.

UPDATE III: Yes.  But no.  I mean yes.

Best of 2008: No Social Networking Privilege

Originally posted 2008-12-24 11:00:19. Republished by Blog Post Promoter

On Point reports that a New Jersey federal magistrate has, to the surprise of no actual attorney I could imagine, ruled that MySpace and Facebook postings and other social networking communications are discoverable in civil litigation.

A New Jersey judge has allowed an insurance company being sued for denying benefits to children with eating disorders to conduct a “cyber-investigation” into the children’s postings on social networking websites.

Such investigations are becoming more common in lawsuits and U.S. Magistrate Judge Patty Shwartz’s decision isn’t likely to calm the fears of privacy advocates. The potential injury to the children from disclosure of their postings, she ruled, did not outweigh Horizon Blue Cross Blue Shield of New Jersey’s need for the information.

Shwartz is handling discovery issues in two insurance coverage cases brought against Horizon by the parents of children suffering from anorexia or bulimia. The cases are Beye v. Horizon and Foley v. Horizon.



“The Court will require production of entries on webpages such as ‘MySpace’ or ‘Facebook’ that the beneficiaries shared with others,” Shwartz said in a Dec. 14 order.

According to a Seattle TV station, Chrysler has taken a similarly intrusive approach by requesting access to the MySpace account of a woman who is suing the auto giant over injuries suffered in an auto accident. Marissa Schneider’s MySpace page includes an admission that she smoked pot in the past.

“To say that anything posted on MySpace is gospel is ludicrous and it really paves the way for you to say, ‘I can never post anything on this site because it’s going to be used against me,'” her attorney told KING 5 News.

I’d consider sanctioning that attorney if he admitted making such a stupid and, really, contumaceous remark.

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