McCarthy speaks

This is really something!  I always knew John Welch was the definitive resource online, and then some, for what’s going on at the Trademark Trials and Appeal Board — the TTAB, of course — via his seminal, inimitable and comprehensive TTABlog®.  But I didn’t know that his blog was now an official resource for ex cathedra pronouncements from Himself!

Check. This. Out. July 11, 2016 on the TTABlog:

Professor McCarthy Criticizes the TTAB’s Dilution Analysis

Professor J. Thomas McCarthy has been a consistent critic of the TTAB’s analysis in dilution cases, particularly the Board’s failure to properly consider the issue of “impairment” or “damage” arising from the alleged dilution. He sent me the following comment for posting:

I wish the T.T.A.B. would stop saying that dilution of a mark can be shown merely by proving that the challenged mark causes people to think of the famous mark. In its March 31, 2016 decision in theOmega case (118 U.S.P.Q. 2d 1289, 1298) it quoted from its last year’s decision in the New York Yankees case (114 U.S.P.Q. 2d 1497, 1506). It said that dilution by blurring occurs when “a substantial percentage of consumers, on seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.” That’s just a part of what dilution demands and is not what the statute says. . . .

The Supreme Court made it clear that as a matter of basic dilution theory, proof of association is itself neither proof of blurring nor proof that blurring is likely: “‘[b]lurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).

This is the best thing in the world, and the way it ought to be, because you won’t believe what happened next!

Read More…

People Endlessly Troubling All

Originally posted 2014-01-22 13:44:31. Republished by Blog Post Promoter

The Canadian Trademark Blog reports that People for the Ethical Treatment of Animals (PETA), the extremist anti-protein group,

has launched a new “spoof” website in its stated bid to convince the Vancouver Organizing Committee (VANOC) that it should help in the campaign to end the Canadian seal hunt.

PETA?  Spoof website?

Rather ironic, no?

Other First Amendment business

Spend enough time perusing LIKELIHOOD OF CONFUSION® and you might get the impression that there’s only one freedom protected by the First Amendment.

This is error.

I don’t often get to share a legal filing concerning my professional involvement in a case implicating the First Freedom — freedom of religion — but here and now I am, because it — as I once said to three scowling figures in robes (but now I’m not saying it tongue in cheek), there’s a reason it’s First.

And there’s a reason I have this platform. Terrible things are happening in our world and in our country these days; this case, too, deserves attention.

Below the break is a proposed amicus curiae brief.  For context and to give the other side the opportunity to be heard here too, plaintiff’s relevant submission, of which this is filed in support, is here; and defendants’ opposition brief is here.  The underlying papers referred to in these briefs are too voluminous to link to, so you’ll need a PACER account if you’re that motivated.

UPDATE: More context — more nastinessRead More…

Bring your discomfort bag (revised and expanded)

Originally posted 2014-06-17 16:41:08. Republished by Blog Post Promoter

Technology & Marketing Law Blog: “The keyword advertising legal roller-coaster continues.”

The roller coaster I would not ride

As someone who is on that thrill ride — at least partly on the dime of my clients (as in the Buying for the Home case) — it is of course troubling for an expert such as Eric Goldman to acknowledge this. It is somewhat of a vindication, though, not least of the fact that attorneys practicing in this area really have no business telling clients they have any idea what the outcome of cases implicating these issues might be, no matter how well we think we know the law.

That’s fine as far as it goes. But what about the law? It is distressing enough to tell your client that his case involves an unsettled area of law and that two courts faced with similar facts could well come to different conclusions about the application of the “same” law to those facts. (It can even happen in the same case, as Eric points out in his commentary on Buying.) It is preposterous, however, that your client could get slammed on damages or, in theory, attorneys’ fees — which require a finding of willfulness, mind you — because courts are still feeling their way around.

What a fine opportunity for Congress to step in and provide guidance via legislation — for these angels dancing on the heads of virtual pins are in fact not so much legal decisions at all but real, live policy decisions: Shall the Lanham Act regulate, as a trademark infringement, the utilization of trademarks as search terms in Internet or other computer-based software engines?

This is not the case every time a trademark and the Internet get involved with each other. In the context of past trademark-on-the-Internet disputes, notably involving domains (which the world once thought would be the alpha and omega of trademark battlegrounds on the Web), we have argued that the issues at stake are not novel “cyberlaw” questions but merely require the application of hoary principles of unfair competition to somewhat novel situations. But that argument simply does not stand when we consider the search engine question. It is pedestrian to observe that Congress could not have contemplated this or that application of a law when it passed it. The common law tradition abjures us from such arguments. It is the job of judges to apply the law which affects the decisions we make about conduct to new factual situations by the application of analogy tempered with equity.

Yesterday you said tomorrowBut we are in a new world. When courts make fundamentally different conclusions about a question or cluster of questions — in this case whether trademarks are even “used,” as understood in the Lanham Act, by search engines [UPDATE:  See here.  They are.] It is time to recognize that these legal questions are political questions implicating not only law but commerce at all different levels, as well as technology and the shape of the Internet to come. Not everyone has the stomach for roller coaster rides. Let those who do have their fun. The rest of us, lawyers and clients alike, are entitled to the option of standing on terra firma while conducting our affairs. This is our stop.

Oklahama! OK!

Originally posted 2012-11-13 14:24:40. Republished by Blog Post Promoter

Is it still “mainstream media” if the guy isn’t wearing a tie?

Bad for the Juice: The TTAB’s phantom tag

Originally posted 2015-05-13 15:50:58. Republished by Blog Post Promoter

New York Yankees LogoNo, not that Juice.  He’s got enough trouble already.  (And no, not the Juice that has this guy all in a froth either.)  I write, rather, about the too-clever-by-half would-be parodists recently sluiced through the ringer by a family-size panel of the TTAB in a case reported by, of course, John Welch, to wit:

An augmented panel (seven judges) of the TTAB sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark “THE HOUSE THAT JUICE BUILT” for mugs, and the design mark shown immediately below for “T-shirts, baseball caps, hats, jackets and sweatshirts,” finding the first two marks likely to cause dilution-by-blurring of the Yankees’ registered marks THE HOUSE THAT RUTH BUILT and the third likely to dilute its “Top Hat” design mark. The Board declined to consider applicant’s parody defense in its Section 43(c) analysis, because applicant asserted an intention to use the opposed marks as source indicators, which by definition is not a noncommercial use or a “fair use” exempted from a dilution claim. New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015) [precedential].

Juice BuiltThere’s a lot going on here, and John methodically mows through this Murderer’s Row of trademark jurisprudence at his post.  What John is too delicate to mention is the central gag here:  The house that “juice built,” see, is the house that “juice” — steroids — built.  As the decision notes,

Applicant makes clear that it selected its THE HOUSE THAT JUICE BUILT mark to evoke Opposer’s famous mark for parodic purposes.  Applicant’s President, Steven Lore, testified that its marks “play off of the idea that steroids are a player on MLB teams and the Yankees.”

“A player…” Lots of inside-baseball type lingo in this case.  But by now, hopefully, you get the joke.  In any event, I recommend John’s post just to help you remember a whole bunch of trademark law or to learn what you never did, as I do whenever I read his blog. I was, however, particularly interested in this bit: Read More…

The Empire strikes back

SparkleVia the Duets Blog, a trademark resolution that has been building for far too long:

It is not easy to establish fame for purposes of showing a likelihood of dilution by blurring.  Owner of the Empire State Building marks rose to the challenge in a recent decision by the Trademark Trial and Appeal Board (“the Board”).  ESRT Empire State Building, LLC v. Michael Lang, Opposition No. 91204122 (June 17, 2015) [not precedential].

NYC Beer Co’s proposed mark

Others have tried and lost.  See Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q.  Omega SA v. Alpha Phi Omega, Opposition Nos. 91197504 and 91197505 (Mar. 31, 2016) (finding that Omega had failed to show fame prior to any established, continuous use of mark with the specific goods or services in the application or registration, but allowed Omega to amend its opposition to show this evidence if it could); Virgin Enterprises Limited v. Steven E. Moore, Opposition No. 91192733 (August 31, 2012) (telling Richard Branson that his VIRGIN mark was not famous because his company failed to provide sufficient evidence or a survey supporting fame).

Specifically, in the Empire State Building proceedings the applicant was seeking to register the mark below for various beers, ales, extracts for making beer, alcohol-free beers and other related goods. . . .

Empire State Building Trademark

Opposer’s Empire State Building Mark

Not surprisingly, the ESRT Empire State Building, L.L.C. (“ESRT”) opposed the application on the grounds of dilution of its famous registrations for the EMPIRE STATE BUILDING mark with respect to “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,411,972), and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,413,667).  Further, ESRT owned the registration for the design mark below in connection with “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,429,297),  and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,430,828).

In finding fame, the Board explained that testimony and evidence established that “[f]or 40 years, the Empire State Building was the tallest building in the world, and presently is the fifth tallest building in the United States.” . . .

Of course.  And yet it I must admit I never really quite got it here at LIKELIHOOD OF CONFUSION until just now.  It makes sense, however, that it would be iconic Empire State Building — the world’s tallest edifice of most of my New York City youth, and a towering presence for much of my recent adulthood — that would, despite the shadow it casts, make me see the light.

No excuse for this, really.  Because for years I’ve been interested in assertions of intellectual property rights in connection with landmark buildings.  In a bunch of posts, I’ve written about and tried to make the following points: Read More…

Kissing trademark rights goodbye?

Originally posted 2008-05-25 19:50:54. Republished by Blog Post Promoter

Hershey muffin pan

In-tag-li-oh’d

Eric Johnson‘s Pixelization blog has a sweet insight into a sticky trademark mess that Hershey’s could be, theoretically, getting itself into:

It’s a Hershey’s-brand three-compartment silicone muffin pan. When you bake muffins in this pan, they come out – adorably, of course – in the shape of oversized Hershey’s chocolate bars – complete with the Hershey’s name and logo intaglioed in the shape of the finished muffin. The imprint of the Hershey’s name and logo is substantially the same as what one finds on a Hershey’s milk chocolate bar, after the foil is unwrapped.

Clearly, if you buy this muffin pan, there is an implied license to use it to make muffins with the Hershey’s logo. That is, there is an implied trademark license. But, as you might expect, Hershey’s exercises no control over the muffins you make with their logo in the pan you purchased.

Thus, this looks like a case of “naked licensing” – a fast way for a trademark owner to be involuntarily stripped of trademark rights.

Whoops.

“Intaglioed” — nice! But, get it? You’re making stuff that officially, permissively, persuasively says HERSHEY’S on it in official lettering and the usually IP-crazy nuts over Hershey’s have no idea what on God’s green earth you’re putting out there with their name on it! Eric elaborates:

The packaging for the muffin pan – identified as a “Hershey’s Licensed Product” – contains this legend: “THE HERSHEY’S TRADEMARKS AND TRADE DRESS ARE USED UNDER LICENSE.” This prophylactic spray of legalese is steeped in irony. How could Hershey’s put such care into making sure the muffin pan manufacturer had a license and would declare the same, yet witlessly end up issuing a license to all muffin-pan buyers to start churning out food items under the Hershey’s brand?

Ironic, indeed. My first inclination is to say, “Aw, come on!” But he’s right, isn’t he? There’s no limit on how much stuff you can put out with your official Hershey’s trademark-imprinter-on-food-thingy; indeed, how could they place a limit on the consumer’s use? And nowadays, corporations and “IP equity owners” don’t ever just have a little fun with trademarks, or let anyone else do so, either — precisely because doing so just might be construed as abandoning one’s rights!

As Eric points out, the irony, again, is that this device is meant to act as an affirmative brand-building device. Of course, in the scheme of things, it just may be shown to be a whimsical, fun kitchen toy that “no reasonable person” would think was a license to manufacture competing products with the HERSHEY’S mark.

Maybe. But Hershey’s would certainly have it coming to them if someone asserted this this as proof of abandonment [UPDATE:  or, as Rebecca Tushnet suggests, “self-dilution”] as a defense to some kind of infringement action. One can imagine such a defense at least raising a fact issue for purposes of avoiding a summary judgment or defeating an easy likelihood of success showing on an application for preliminary injunction. It would be interesting indeed to demonstrate too that Eric’s example is not the only one of Hershey doing more or less the same thing with its (great) food-borne trademarks. So, you never know.

The chocolate’s too darned sweet, too.

The heart wants what it wants

Originally posted 2011-08-24 12:55:22. Republished by Blog Post Promoter

The New York Law Journal (subscription required) reports:

Manhattan Supreme Court Justice Bernard J. Fried has ruled that under the terms of a January 2003 settlement agreement, [Woody Allen’s former producer] may develop television-and-airplane versions of Mr. Allen’s “Bullets Over Broadway,” “Mighty Aphrodite,” “Everyone Says I Love You,” “Deconstructing Harry,” “Celebrity” and “Sweet and Lowdown.”

The dispute over the final cuts of the modified films is the latest fallout of a May 2001 lawsuit Mr. Allen filed against [the producer] Ms. Doumanian, her personal and professional partner Jacqui Safra and their production company, Sweetland Films.

[A settlement] agreement [betweeen the two sides] was . . . at issue in the current dispute, over the final cut of the television-and-airplane versions of six films Mr. Allen made with Ms. Doumanian’s backing.

According to Justice Fried’s decision…, the 2003 settlement stipulated that if Mr. Allen and Ms. Doumanian could not agree on the cuts that would allow his oft-profane films to satisfy TV standards, either party could submit the matter to the Commercial Division of the Manhattan Supreme Court for resolution.

Now it has. Luckily for the plucky, morally deranged Alan Koenigsberg, no one wants to see any of the films named above, nor will anyone notice if any or all of them are diced and sliced for the back of an airplane seat. The decision in Moses Productions., Inc. v Sweetland Films, B.V. has been published here (the link provided by the Law Journal was broken never was repaired).

Mr. Allen’s . . . attorneys, Michael Zweig and Chris Carbone of Loeb & Loeb, called upon a single expert witness, Time Magazine film critic Richard Schickel.

Mr. Schickel testified that Ms. Doumanian’s methodology for satisfying television standards — primarily, dubbing over offending language — would damage the films’ “comprehensibility, entertainment value and artistic integrity,” according to the decision.

By cutting scenes and camouflaging offending language, Mr. Allen argued, the producers would trick audiences into believing they were watching an unedited film. He preferred explicit changes, such as bleeping offending language and blurring offending images.

The defense, in contrast, presented two expert witnesses, both of whom specialize in adapting films for television broadcast. Their testimony focused on the eventual salability of the modified movies. . . .

After watching the original versions of all six films at issue, Justice Fried ruled in favor of Ms. Doumanian.

“Based on the undisputed hearing testimony that networks rarely or [n]ever air films with bleeping or muting, however, and the parties’ apparent agreement that shooting alternate coverage for the films is no longer feasible, it appears that word replacement is the only way to modify the content in order to comply with the parties’ agreement to create one version of each of the films that complies with generally accepted network television censorship and/or standards and practices requirements,” Justice Fried concluded.