Truvia and friends

Truvia and Friends

Is there really something new to add on the topic of private labels and confusion?  After all, I’ve explored various aspects of this phenomenon, through:

Same thing, too, in the Reese’s Peanut Butter Cups quasi-post (you’ll see what I mean), which didn’t involve private labels as such but rather, in a dilution context, the even broader issue as in the mayo post:  The concept of “official mayonnaise colors” or “official peanut butter cup” — or, in that case, “official ‘Reese’s'” colors, the bittersweet reward collected by the category originator (Reese’s) or overwhelmingly dominant brand (Hellman’s).

You get my point.

What, then, is my point now?  Well, look at the picture I took today at my friendly neighborhood Stop and Shop.  What do you see?   Read More…

Darth Vader versus the United States of America! (Okay, not really.)

Originally posted 2012-08-06 17:28:23. Republished by Blog Post Promoter



This post discusses what by all rights should be the most exciting case ever heard by any court anywhere. One of the plaintiffs is Darth Vader, and the defendant is none other than the most powerful entity in this solar system, the United States of America…! Okay, no, that isn’t quite true. Neither part of it. One of the plaintiffs is Hayden Christensen, the actor who played Anakin Skywalker (and, for about three minutes, Darth Vader) in two of the Star Wars prequels… and the defendant is the USA network (or, rather, Universal Television Network, Inc., of which USA Network is a division). In fact, in complete contradiction to what I touted at the outset, Forest Park Pictures v. Universal Television Network, Inc. is possibly the least sexy copyright decision of all time. It barely has any copyright law in it! So I’m challenging myself to find something interesting about the 23-page June 26, 2012, decision of the United States Court of Appeals for the Second Circuit—as I write about it. At issue was whether the plaintiffs’ breach-of-contract action was preempted by the Copyright Act. If you’re still awake, let’s begin.

Circuit Judge John M. Walker, Jr. framed the lone legal issue thus: “This dispute over the concept for a television show presents the question of the extent to which the Copyright Act… preempts contract claims involving copyrightable property.” The United States District Court for the Southern District of New York had granted the defendant’s motion to dismiss on preemption grounds. If the Second Circuit disagreed with the District Court… well, then the case wouldn’t even be a copyright case! Oh, the suspense…

 â€¢             •             •

In 2005, Forest Park Pictures—the production company owned by brothers Hayden and Tove Christensen—“formulated the concept of a television show” (in Hollywoodspeak) styled “Housecall,” the main character of which was to be a doctor who, “after being expelled from the medical community for treating patients who could not pay, moved to Malibu, California, and became a ‘concierge’ doctor to the rich and famous.” The brothers Christensen created a written “series treatment” for the concept, “including character biographies, themes, and storylines.” They mailed this written material to an employee of USA Network, then requested a meeting between a representative of Forest Park Pictures and a representative of USA Network. And, since one does not lightly deny the requests of a Sith lord, a meeting was arranged. Or it might have been because the concept was a good one, as it turns out. Read More…

PLEASE TAKE NOTICE: BOSTON* just got real (Boston 3)

Originally posted 2013-06-26 14:54:53. Republished by Blog Post Promoter

*Preliminary note: I know that the band BOSTON is not a party to Ahern v. Scholz, but all the same I like thinking of this case as the BOSTON case, because it involves BOSTON songs, and I like typing BOSTON in all caps, so I hope you’ll forgive me this impertinence/indulgence.

What was until this week a simple federal copyright action is now being brought to the attention of the Attorney General of the United States (who might or might not have other things on his mind just now). Plaintiffs Ahern and Next Decade Entertainment have given notice to Eric Holder of the presence of a constitutional question raised in the pleadings of the suit. (For a refresher of the allegations, see this post and then this post.)

Holder? You brought ’er!

Holder? You brought ’er!

In turn, the United States District Court for the Southern District of New York has issued an order certifying the matter to the AG. “In the parties’ Joint Pretrial Statement, filed with this Court on June 7, 2013,” the order reads,

the plaintiffs… asserted that, should the Court interpret Section 203 of the Copyright Act to allow termination of certain grants of copyrights, such application of the statute would constitute an unconstitutional taking of private property under the Fifth Amendment to the United States Constitution.

Whoa. That’s heavy. And that’s the sort of thing that 28 U.S.C. 2403(a) and F.R.C.P. Rule 5.1. mandates be brought to the attention of the AG.

The constitutional question as framed by Ahern:

Whether an author of musical compositions, written in whole or in part after January 1, 1978, whose copyright ownership had been transferred by him to a third party pursuant to a grant in the form of a five-year agreement entered into in 1975 encompassing all songs written by the author through 1980 [“Gap Works”], can invoke the termination of copyright assignment provisions of Section 203 of the Copyright Act….

Permitting Gap Works to qualify for the provisions of [S]ection 203… would result in [the plaintiffs]’ copyright ownership… being reduced from the fifty-six years set forth in Section 304… the law in existence at the time the 1975 [agreement] was executed… to only thirty-five years. Such a reduction… constitutes a violation of the Fifth Amendment to the United States Constitution in that it is an unlawful taking of private property without compensation to promote a public purpose (i.e., the public policy decision to afford composers the opportunity to reclaim their copyrights).

So now, if we’re lucky, we’ll get to read what Mr. Holder has to say about all this.

Google Takes Offense, Takes Offensive (for a change)

Originally posted 2013-08-20 13:18:08. Republished by Blog Post Promoter

According to Search Engine Journal, perennial trademark infringement defendant Google has filed suit against, an online shopping site. The New York federal complaint is here. Google has already lost against Froogles at the ICANN level, the site reports. Don’t confuse with with, which is a Google site. Does that figure into the claim now? Take a look and let me know!

UPDATE:  After more than two years of pretrial stuff, according to PACER the case was settled on undisclosed terms.  Either way, is still in business and Richard Wolfe remains its “sole proprietor.”

Best of 2011: Ninth Circuit. Keywords. Trademarks. Hike!

Originally posted 2011-12-21 08:40:46. Republished by Blog Post Promoter

First posted on March 11, 2011.
Here’s a roundup of what other people are saying about the decision in Network Automation, Inc. v. Advanced System Concepts, Inc. involving keyword advertising using other folks’ trademarks (a form of the dreaded “diversion“!) and perhaps implicating secondary liability for trademark infringement:

Well, that’s almost all the roundup you need!  In fact, here’s the “takeaway” of Eric’s post:

Read More…

dot… Pineapple?

Originally posted 2013-04-01 00:01:28. Republished by Blog Post Promoter

LoC got wind—and then a copy—of this letter, dated as of the date of this post, to ICANN in support of the creation of a new top-level domain. Further updates as events warrant.

An excerpt:


The undersigned respectfully present this white paper to the Internet Corporation for Assigned Names and Numbers (ICANN) in order to advance the case for the creation of a new top-level domain (TLD), to wit: “.pineapple.” The creation of such a TLD would without question help resolve the longstanding debate over what Internet content is pineapple-related, and thereby aid service providers in discharging their responsibility under the Tropical Plant Communications Act of 1996.

View the entire white paper here.


Merchant of Baloney

Originally posted 2014-10-26 19:37:36. Republished by Blog Post Promoter

Hilarious posting on John Welch’s TTAB Blog about what looks like PTO connivance in the wild and wacky career of would-be trademark king Leo “Likelihood of Derision” Stoller.

There is a Merchant of Venice restaurant out there, though, John. Doesn’t sound so kosher, but I wonder what they charge for the quarter-pounder of flesh?

Update: No Go for Shmoe’s Ho’s

Originally posted 2010-12-31 13:25:30. Republished by Blog Post Promoter

In January we blogged about the trademark dustup concerning the high-class Mustang gentlemen’s establishment. Now we learn that, as expected, Lance Gilman bought the ranch but not the good will. Lance Gilman can put his tarts in the old pink-stucco building that housed the Mustang Ranch but he can’t use the name.

Lance’s momma must be real disappoin’et.

NB: Yes, I know about the extra apostrophe. I’m open to suggestion as to a better way to pluralize the neologism, “ho.”

Best of 2009: “Keeping it real — the ultimate use in commerce”

Originally posted 2009-12-27 16:56:22. Republished by Blog Post Promoter

This was first posted on May 7, 2009.

The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.

Ron ColemanI have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?

Read More…

Upper crust: the POCKET SANDWICHES (and maybe croissants) saga (Part 2 of 2)

Originally posted 2011-07-18 13:32:48. Republished by Blog Post Promoter


Last week I told the story — as told through this TTAB opinion — of Carl Vennitti’s seven-year tug of war with Nestlé, maker of Hot Pockets food-type product and owner of the HOT POCKETS trademark.  The battle was over Carl’s attempt to use and register the trademark SANDWICH POCKETS.  I promised that part 2 would consist of Carl telling his own story, because I believe, as a blogger, in the Freedom Principle.

Trademark lawyerWhat is the Freedom Principle?

I, as a blogger, have an obligation to use material submitted to me for free if there’s any rationale way it fits with the editorial and I can thereby get a post out of it.

There is no greater freedom than this.

There’s an extra surprise, because this guest submission comes with its own introduction by another trademark blogger, Benjamin Ashurov, who writes a blog called Trademark Bully.  I have added some explanatory links to his introduction to the SANDWICH POCKETS saga, regarding which, you may have noticed if you read this and the prior post carefully, I have actually offered no opinion.  I also take no responsibility for any factual claim in this post or this introduction and in fact welcome any opportunity to correct or clarify the record if appropriate.  I defer, instead, to the Freedom Principle along with a good-faith belief that the narratives published here are materially correct.  I have copy-edited the introduction and Carl’s magnum opus, but very lightly; readers familiar with this blog will see that both guest contributors here are speaking in their own voices.

Cue music, please — first, Benjamin:

After seven years of agonizing litigation, this forum shall allow us to present the over-reaching conducted by one of the world’s largest food companies, foreign owned, and the havoc that they can wreak on a family owned American business, what the results are, and how it affects individual family members who toil at manual labor.

His name is Carl.  He owns and operates a food manufacturing company in Warren, Ohio. He makes a great “pocket sandwich,” the term mandated by the USDA Food Safety and Inspection Service, that has found its way into schools throughout the midwest.

Not everyone thinks that he makes an outstanding product. According to a claim by Nestlé Prepared Foods, Hand Held Products’ division in Colorado, he made an inferior product! At the onset of the attack he was quite surprised at that published statement, because in fact he used to use a lot of Nestlé  products in his (he doesn’t use any more). It’s a ridiculous scenario, so you will have to use your own best judgment about the quality issue.

The whole purpose of the “quality” claim, of course, was to suggest that Carl’s use of a trademark claimed by Nestlé  was harming its reputation.  Yet just recently one of Nestlé’s Hot Pockets employees was arrested — for war crimes in Bosnia. Inferior products? Higher standards?

Most importantly for purposes of this forum, Nestlé also claims to have exclusive right to the word POCKET in a trademark. Left un-addressed, the consuming public may have to quit calling those extra pieces of fabric on clothes “pockets,” or Nestlé may accuse them of infringement, too!

Regardless of these claims, Carl, his family and his company are still supposed to call their food products “pocket sandwiches” by the USDA FSIS definition, and by the former definition in the USPTO’s “Trademark ID Manual.” Today he can.

Here, now, Carl’s story in his own words.  You may want to stick something in the microwave — it’s a long one!

I owe this essay to everyone who believed in creating a dream, and helped build his or her own company into the company we almost were. The following is truthful and factual, which makes it hard to dispute unless, alas, you possess, and are willing to spend, untold amounts of good money to destroy dreams and hard labor, credit, business, integrity and family, such as Nestlé did to me and my family. Read More…

If infringement falls in a forest….

Framing the Marshall courthouseCan there be “infringement” of a trademark without confusion? As she is so apt to do, and to do so well, Pamela Chestek asks that question in this post, entitled Infringement Without Confusion?, which is about something completely different from what I thought it was going to be about, because I know that, in New York at least, the answer can be yes. That’s not the question Pamela is asking.   But this is a great opportunity, and given the name of this blog and what I say up in the right-hand-corner there, a good place, to unpack a few things about this thing, and address what I thought she meant before proceeding to what she meant, as well as to what’s going on in the comments to her post.   The … confusion on my part is not, in fact, irrelevant. What was I thinking of when I read the question?  New York’s famous, or perhaps infamous, state-law tort of unfair competition by “wrongful misappropriation,” of course.  To wit: In New York, the “essence of unfair competition . . . is the bad faith misappropriation of  the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.” Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188, 212 (S.D.N.Y. 1999). To assert an unfair competition claim, a plaintiff must demonstrate (1) a likelihood of confusion, and (2) the defendant’s bad faith. Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993). Unlike a claim for trademark infringement, proof of secondary meaning ,or, indeed, of a protectable mark at all) is not required. Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 364 (S.D.N.Y. 1998). Ok, very nice.  But is “infringement without confusion” the same thing as “confusion without secondary meaning”?   Well, how would it be different?  Once you’re dealing with logical dead-ends, after all, they start to look quite similar, and end up in more or less the same place.blivet the devils tuning fork 

After all, the premise of confusion is a baseline of association — in trademark law, we call that secondary meaning, or… a protectable mark.   Same place.   Indeed, pointier heads than that of LIKELIHOOD OF CONFUSION® have long pondered what the heck it means to have a likelihood of confusion without secondary meaning, or without a protectable mark.   As one academic treatment of this odd creature put it,

Some legal theories, like the proverbial vampire, refuse to die. The common law tort of misappropriation is one such legal theory, and the recent Restatement (Third) of Unfair Competition (Restatement) may finally lead to the demise of this outdated cause of action.

Regrettably, the “recent” referred to in that quote was 1993.   Read More…

Indirect Liability and Grokster

Originally posted 2012-10-29 11:41:37. Republished by Blog Post Promoter

This post on the Marginal Revolution blog (where this blog once advertised) links to (or tries to link to) an amicus brief filed by… a bunch of guys — namely Kenneth J. Arrow, Ian Ayres, Gary Becker, William M. Landes, Steven Levitt, Douglas Lichtman, Kevin Murphy, Randal Picker, Andrew Rosenfield, and Steven Shavell. Their self-described interest as amici?

Amici are professors and scholars who teach and write on economic issues and, in particular, on the economics of innovation, the economics of intellectual property, and the economics of both deterrence and enforcement. . . . Amici file solely as individuals and not on behalf of the institutions with which they are affiliated. Amici represent neither party in this action, and write solely to offer an economic perspective on the important social issues at stake in this dispute.

Nice work if you can get it. All but two of them are University of Chicago (i.e., “law and economics”) professors; the other two are Ian Ayres of Yale (formerly a Northwestern prof, which is why his name jumped out at me) and the other is from Stanford Law.

So what do they say? Their focus in the brief is on the usefulness of the doctrine of indirect or secondary liability in intellectual property. That’s a topic of great interest to us around here, but we have always focused on trademark, where the issues can be quite different. But regarding copyright, here is the conception of the problem by these learned men (yes, all men), per their own brief:

In this dispute, the Court is being asked to clarify the conditions under which those conventional remedies should be supplemented by an additional cause of action: liability that would hold responsible a firm whose product or service facilitates copyright infringement. The argument in favor of this sort of “indirect” liability is that in certain circumstances it will be the only practical way to maintain the efficacy of copyright markets. That is, direct liability is so costly in certain situations that, without indirect liability, authors would in those settings no longer have a meaningful right to prevent unauthorized use of their work. The argument against indirect liability is that, because the products and services at issue here have both legal and illegal uses, any legal intervention must be cautious or else risk inadvertently interfering unreasonably with legitimate activity.

And here is their conclusion, based (Cliff’s Notes-like) on their legal argument headings and the summary at the end of the argument section: Read More…