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January 31, 2012 | 12 Comments

Char’ed, I’m sure (updated, January 2012)

Updated version of the post first found here on December 8, 2009.  See update at the end.

starbucks logo 150x150 Chared, Im sure (updated, January 2012)Poor Starbucks.  So much trademark trouble they have!  Other trouble, too.  And now the people who gave you five-dollar coffee in a paper cup had lost another one — one they thought they had won, namely the Starbucks v. Charbucks case (decision here, posted by Marty; the real name of the case is Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.) involving trademark infringement and its genetic freak of a cousin, trademark dilution.

In fact, Starbucks lost this case a lot.  They lost and lost and lost.

Then, they won.  Starbucks won!

At least, they won a shot at winning.  Which, given their litigation luck these days, must be like a double espresso administered intravenously, juridically speaking.  And, brand-wise.

black bear coffee insidesmall 123005 Chared, Im sure (updated, January 2012)That Law.com piece by Mark Hamblett in the last link is a good summary of the docket-slaloming.  For the law lesson, let’s just skip to smart person Rebecca Tushnet, who may or may not be fueled by caffeine when she blogs but all the same has done all the heavy lifting here:

As we all know, Starbucks is big and famous. Wolfe’s does business as Black Bear, a small business that sells coffee via mail order, the internet, and a limited number of New England supermarkets. In 1997, Black Bear began selling a dark roasted blend, Charbucks Blend, and later Mister Charbucks. The Charbucks Blend package showed a picture of a black bear above BLACK BEAR MICRO ROASTERY in large font, with the large slogan “You wanted it dark … You’ve got it dark!” Mister Charbucks had Black Bear’s name on it, a picture of a man walking, and the slogan “Roasted to the extreme … for those who like the extreme.”

Starbucks demanded that Black Bear stop using the Charbucks marks, but Black Bear declined. Its principal testified: “[m]y main objection was that basically this was a large corporation coming at me and saying, telling us what to do, and, oh, by the way you’re going to pay for it, too…. [S]ome of the requests that they were making were really off the wall.” . . .

Okay, stop here.  [UPDATE:   But read Rebecca's clarifying comment below. -- RDC]  You know, LIKELIHOOD OF CONFUSION® loves to represent Davids against Goliaths (and really therefore does not at all mind that Goliath keeps losing my number), and, yes, if this blog is about nothing it’s about overreaching in copyright and trademark.

But.

“Black Bear declined”?! Read More…

People who looked at this item also looked at…

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January 30, 2012 | 0 Comments

You mean after the attorneys buy new houses?

Originally posted 2007-03-15 11:37:03. Republished by Blog Post Promoter

daffyduck2 You mean after the attorneys buy new houses?

Robert Scoble asks, “What happens after Google loses?”:

Viacom wants to play “force folks to play on our turf.” Does the Internet reward that kind of behavior?

It hasn’t in the past. PodTech tried that strategy. To watch my videos you used to have to go to PodTech. Then in January we let go a little bit of our controlling attitude and made a player that you can embed on your own site. What happened?

Traffic tripled.

So, if I were a smart content guy (hint, I’m not) I’d be opening my video archives and saying “post them where you want.”

If I were even smarter I’d say “cut them up, edit them, mash them, do what you want with them.” I’m not that smart either.

And, if I really were blessed with a brain like Douglas Engelbart’s I’d make video for where the big audiences are (hint: it’s YouTube, StumbleUpon, Digg, Flickr, Blogs, and search engines like Google/Yahoo/Live).

I’m not that smart, but other people in this industry are.

Does the technology stream really flow into the revenue stream, though? I understand that YouTube made a lot of money — well, by selling itself; I am not sure I understand how it actually makes money as a business — but I haven’t heard of too many people getting too rich by uploading their content onto YouTube. Have you?

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January 30, 2012 | 0 Comments

Knockoffs — nu?

Originally posted 2006-06-26 22:34:43. Republished by Blog Post Promoter

You’ve got to pay your dues if you want to sing the blues

Websites with fake junk: too-good-to-be-trues!

So many fakes out there — if you want honest schmooze,

Click Counterfeit Chic for this week’s “Knockoff News“!

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January 30, 2012 | 3 Comments

Nomenclature matters

Originally posted 2008-10-27 20:44:42. Republished by Blog Post Promoter

It matters what you call things, and how you use words.  Why?  Because if enough people who should know better use the word “trademark” as a verb enough times, you’ll get stupid stories like this:

Although Microsoft Corp. registered the Web site for its new Windows Azure more than 14 years ago, it has not trademarked the name of its new cloud-based operating system, Windows Azure, Internet searches revealed today.

Do tell!

According to searches conducted by Computerworld, Microsoft has not applied for a trademark for either “Windows Azure” or “Azure Services Platform” with the U.S. Patent and Trademark Office. Microsoft used both names to describe its Software + Services technology.

Help us out here:  Do LIKELIHOOD OF CONFUSION® readers need a refresher course on what Computerworld doesn’t get about trademarks?  Or should we just dare someone from that august publication to start their own little enterprise — say, a “Software + Services technology” — and name it AZURE, WINDOWS AZURE or even WINDOWS ASSURE and see if they learn how trademark rights are acquired… the fun way?

UPDATE:  Is this, to some extent, what the Intent to Use trademark procedure has wrought?

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January 30, 2012 | 0 Comments

Likelihood of opposition

Originally posted 2006-11-12 00:34:24. Republished by Blog Post Promoter

They’re having trouble assimilating the concept of worker Yao Ming in the People’s Republic of China. Of course most of us have trouble assimilating someone who’s 7’5″ (or so); all the more so in China, I suppose. Not that they haven’t tried.

But this is ridiculous.

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January 30, 2012 | 5 Comments

SUPER BOWL® trademark post XI: Consumer Reports and the super-duper exemption

Yes, it is that time of year again — the SUPER BOWL® trademark overreaching (dare I say bullying?) time of year.  This January I’m focusing on this article from, of all places, Consumer Reports, which focuses on the BIG GAME non-trademark aspect of the NFL’s X’s and O’s on this:

[I]f you’ve been searching the Web for an amazing Super Bowl deal on an HDTV only to find the pickings slimmer than a runway model after a three-day fast, we have another suggestion: Try substituting the term “Big Game” for “Super Bowl” in your search engine.

Get a bit more action? That’s because retail ads and promotions can’t legally use the phrase “Super Bowl”—or even “Super Sunday”—unless the companies have paid big bucks (really big bucks) to the NFL, which owns the trademarks to the two terms. Fortunately, exceptions are made for news organizations like Consumer Reports, or this article would have a different headline.

Good idea on the search strategy. But not quite sure I get that last line.  Yes, they’re right about the application of the fair use doctrine to news and commentary, but mistaken (and surprisingly, given Consumer Reports‘ supposed mission) in suggesting that non-profit organizations are per se entitled to assert the defense without regard to the nature of the use in question.  They are not.

Non-profit use of a trademark is indeed a factor courts consider when analyzing fair use.  Now, the fact is there is no way on earth this article (but wait, there’s more!) constitutes a prima facie copyright or trademark infringement such that fair use would have to be asserted in an action by the NFL.  But even if it did, there is no bright-line “exception for news organizations.”

I sure hate to think that, laboring under such a misapprehension, Consumer Reports is actually refraining from giving accurate, descriptive names to its publications that happen to be someone’s copyright or trademarks.

In fact, Consumer Reports’ misunderstanding of the fair use doctrine is so profound, from how I understand it, anyway, that this next part is not too surprising, though it is pretty amusing (sorry, it just is) — and it clearly does not look at all like fair use!:

Find all of our Super Bowl coverage in one place on ConsumerReports.org: Super Bowl XLVI game plan helps you pick out the best TVs for watching the game, how to find those TVs, apps that’ll augment your fun, the tastiest TV-watching treats, and lots more.

Consumer Reports Super Bowl page 889x1024 SUPER BOWL® trademark post XI: Consumer Reports and the super duper exemption
Really?!  Maybe there is a super-duper blanket exception for Consumer Reports!  We’ll see.

I do like this from the piece:

But just as it’s done in years past, regional retailer H.H. Gregg is once again pushing up against the NFL’s Super Bowl advertising restrictions—this year with a website that sports a very Super Bowl-looking logo, complete with the words “Super Sale” and the Roman numerals “XLVI.” I guess some retailers figure “Big Game” promotions call for some big-time gambles, and not just on the outcome of the game.

Perhaps other retailers will also adopt more creative end-arounds to help promote football-oriented TV sales without violating the NFL’s trademarks. As we get closer to game day, let us know if you see any local ads that tie in to a “Big Game” promotion, or if you notice any especially creative ways a dealer is finding to promote “super” sales without getting flagged by the NFL for trademark encroachment.

Ah, the old SUPER BOWL® trademark contest promo, eh?  Maybe it will work better for CR than it did for LIKELIHOOD OF CONFUSION®.  Could be that super-duper exemption thing?

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January 26, 2012 | 0 Comments

Privacy rules!

Barney Google Privacy rules!

Barney Google: Just looking to not be evil!

Everyone is going nuts over the changes to the Google privacy rules — so much so that the cool article to write now is, whoa, why is everyone going crazy over… you get it.

The fuss is just something people write about.  Google already owns us.  Until something gives, it hasn’t decided to destroy us… well, at least not anyone I know.  Yet.  What’s the news here?

Oh, I know what you’re worried about!  No problem –

The LIKELIHOOD OF CONFUSION® privacy policy is solid as a brick — as ever!  There will be no changes.  Yet.

 

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January 25, 2012 | 5 Comments

Don’t be evil, much

Originally posted 2009-02-07 21:57:09. Republished by Blog Post Promoter

It was bad enough that the government has gone “in house” on copyright issues.  Now not only is the government looking more and more “bought” on this, but the “Don’t be evil” kids — again, via Glenn — also continue to confirm everyone’s worst fears.  (No they’re not the government… not yet…)  First it was the turnover of YouTube to the RIAA.  Now it’s Google’s Blogger empire. This from TechDirt:

[M]any music bloggers are now fighting a much more invisible menace, with posts they’ve written suddenly disappearing from their sites (via Tyler Hellard) hosted on Google’s Blogger platform. An RIAA source says that the group sends Google a list of URLs it doesn’t like, and Google “then deals with the problem.” Google says that it notifies bloggers after their posts have been taken down, in accordance with the DMCA. But it should hardly be surprising that many of those affected say they’ve gotten no such notice, nor that the offending material was either legally posted and/or supplied by the labels themselves.

Maybe.  Let’s see if this ends up getting confirmed.  I can only say two things:

  1. My professional dealings with Google Legal have been mainly an exercise in being treated like something meant to be scraped off one’s shoe.  So nothing would surprise me.  They’re the new New York Times, after all.  Only faster and, maybe, more powerful than the Times once was – hence, more arrogant.
  2. If you’re wondering why Google is all of a sudden acting increasingly like a bought-and-paid-for whore of the copyright industry, think “slow ad sales.”

Meaning it should get a lot worse before it gets better.  And if you were hoping for help on this from “progressive” government… keep “hope”-ing.

UPDATE:  If there is indeed hope… it’s this.

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January 25, 2012 | 2 Comments

He’s got the situation well in hand…

Originally posted 2009-10-09 00:01:54. Republished by Blog Post Promoter

On August 8th, 2005, I blogged the following, which I’m updating tonight:

mighty mouse Hes got the situation well in hand...

Travis brings our attention to a new Apple product called the Mighty Mouse. (Sorry, but I’ve been a PC person since the beginning. I am sure this is old news to the creative types.)

Mighty Mouse? Ah — don’t even ask. They’ve licensed the name from Viacom!

UPDATE:  Not so fast, Mr. Jobs!

We brought you the news of the lawsuit, way back in spring 2008, and can now reveal the verdict. Apple has lost the right to call its own-brand Mac mouse the “Mighty Mouse”.

Man & Machine, American medical hardware specialist suppliers, has now been granted the trademark on “Mighty Mouse” from the United States Patent and Trademark Office.

In the lawsuit, Man & Machine says Apple began selling its Mighty Mouse over 1 year after it began selling waterproof and chemical resistant mice under the same name in 2004.

Not real waterproof mice, mind you — for the rodents are pretty darned water-resistant out of the box — but “mouse devices,” or, if you will, mouses.  And, yes, Apple lost.

Yep:  Looks like Man & Machine moved Apple’s cheese!

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January 25, 2012 | 0 Comments

Blog hurts

Originally posted 2009-05-01 10:19:30. Republished by Blog Post Promoter

Do you read blogs so much it hurts?

The Government is here to protect you!

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January 25, 2012 | 0 Comments

Aargh.

Originally posted 2006-07-31 11:35:07. Republished by Blog Post Promoter

blackbeard Aargh.Marketplace from PBS recounts a confused phone interview with a bona fide trademark pirate. Aargh.

(Three-cornered — or is it a coolie? — hat tip to Bill Heinze.)

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January 25, 2012 | 2 Comments

Survey says….

Here’s a very good article by Arnold & Porter’s Randy Miller, strictly for trademark lawyers and those who encamp around them, on the Advertising Compliance website run by my old friend John Lichtenburger about an important development:  The Third Circuit’s decision in Pernod Ricard USA, LLC v. Bacardi U.S.A., known as “the Havana Club case” and won, well, by my even older friend David Bernstein, concerning the use of surveys in unfair competition claims under the Lanham Act.  Excerpts:The Ron of Cuba 285x300 Survey says....

The Third Circuit’s recent decision in Pernod Ricard USA, LLC v. Bacardi U.S.A. about “Havana Club” rum establishes a new battleground in Lanham Act cases. In Havana Club, the defendant successfully urged the court to disregard a survey because the advertising claim (arguably) was unambiguously truthful on its face (the “Havana Club” defense). Prior to Havana Club, the only case that stood for such a proposition was the Seventh Circuit’s decision in Abbott Labs. v. Mead Johnson & Co., which was corrected, criticized as an outlier, and not followed by other courts. Now, Havana Club has revitalized Mead Johnson and given the defense greater credibility, not only in the Third Circuit, but in all Circuits. The “Havana Club” defense is sure to spawn new battles in future Lanham Act cases and litigants should anticipate these issues. This article reviews (1) the use of survey evidence in Lanham Act cases; (2) the Mead Johnson and Havana Club cases; and (3) the significance of Havana Club to litigants in future cases. . . .

Until Havana Club, Judge Easterbrook’s decision in Abbott Labs. v. Mead Johnson stood alone as an exception to the survey rule.  In Mead Johnson, the challenger used a survey to show that consumers interpreted the advertising statement “1st Choice of Doctors” to mean that a majority of doctors preferred the product, which was allegedly false claim because only a plurality of doctors preferred the product with many not expressing a preference. Judge Easterbrook refused to even consider the survey, because he determined that the phrase “1st Choice of Doctors” was unambiguous and simply meant that more doctors preferred the advertiser’s product to the competitive product. Having made this determination, Judge Easterbrook would not allow a survey to be used to offer a different meaning to the advertising statement, holding that surveys should not be “used to determine the meaning of words or to set the standard to which objectively verifiable claims must be held.” Judge Easterbrook’s decision was grounded in First Amendment principles, and the opinion noted that a contrary ruling would have the effect of chilling commercial speech. The opinion also indicated that there must be a limit to the use of surveys. Mead Johnson has not been followed, and many judges and commentators that cite to Mead have distinguished or criticized the case.

Bookmark, read and know.  Also read Rebecca Tushnet‘s thoughtful, academic commentary.

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