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Confusion ascendant

Jewish tradition teaches that on Tisha B’Av (the Ninth day of the month of Av) — which begins tonight — five national calamities occurred:

  1. During the time of Moses, Jews in the desert accepted the slanderous report of the ten spies, and the decree was issued by God forbidding them from entering the Land of Israel. (1312 BCE — traditional Jewish dating)
  2. The First Temple was destroyed by the Babylonians, led by Nebuchadnezzar. 100,000 Jews were slaughtered and millions more exiled. (586 BCE)
  3. The Second Temple was destroyed by the Romans, led by Titus. Traditional sourcest teach that two million Jews died, and another one million were exiled. (70 CE)

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THE SLANTS trademark appeal: The other side

The Slants 2I posted the en banc Federal Circuit brief of Simon Tam for the Slants, and those of the amici curiae in his support shortly after they were filed.

Well, of course there’s another side to this, and it has been heard.  Here is the brief of the PTO seeking affirmance.  Then came the brief of amicus curiae, and in particular friends of the PTO, the South Asian Bar Association; and here is the submission of Richard L. Stanley.

Amanda Blackhorse — adversary of the Redskins in that litigation — has also filed in support of the PTO, which makes sense, considering that the Redskins (i.e., the NFL) filed a brief in support of The Slants.  As soon as the clerk-approved brief is released for publication, I will add that too.  Here’s the Blackhorse amicus brief.

Wait — Richard L. Stanley?  Who?  Unlike some people, Richard is not a big Internet personality.  No website, no blog.  Richard doesn’t talk the talk but, as set out in this article (and, I assume, in his brief; I haven’t read it yet) he does walk the walk.

Let Richard explain himself here, though, as he does in the first section of the filing.  It’s at least as interesting as anything in any of these submissions: Read More…

More Legal Tsuris for Google

Originally posted 2005-04-01 15:42:00. Republished by Blog Post Promoter

Google-Logo-SquareIt’s not even funny any more. If it ever was.

I’m just saying.

Here’s the latest on the Google v. American Blinds case:

The suit claims Google’s practice of selling text ads related to keyword search terms infringes on American Blind’s trademarks, because competitors’ ads can appear on results pages delivered to users searching for the company. American Blind asked that Google be permanently barred from selling keywords.

In fact, the suit claims, Google makes it worse with its AdWords Keyword suggestions feature, which “actively and deliberately encourages American Blind’s competitors to purchase… virtually every conceivable, though indistinguishable, iteration of those marks.”

They make that sound like a bad thing. The good news for Google is that the judge granted Google’s motion to dismiss the (usually bogus) tortious interference with economic advantage counterclaim by American Blinds. The bad news is that the rest of the counterclaims are staying in the case, at least for now. Not what you’re looking for when you bring a declaratory judgment action.

Here’s the full text of the decision. By the way, in the classically California way, this is an “unpublished opinion” that everyone’s reading now. It says right on top, NOT FOR CITATION. Is there any hope for the common law?

Update: More from Kevin Heller, as usual.

New brew for Starbucks and trademark?

Starbucks Amended Drawing green dotI’ve written so much, for so long, about the branding and trademark adventures — overwhelmingly unhappy ones — of Starbucks that I’ve pretty much run out of ways of starting blog posts such as this one.  (See what I did there?  — Ed.)  Maybe that (not my blogging, but the facts on the, er, ground) is why, according to Steve Baird, Starbucks is trying to roll out something new and exciting on that score:

We’ll soon see whether coffee truly goes hand in hand with closers, at least in one famous brand owner’s quest for registration of a non-verbal, non-traditional color trademark at the USPTO. I’ve been noticing Starbucks focus on green straws lately, with the door signage shown below, offering a pretty creative use of “look-for advertising” without using those clunky words:

Starbucks Green StrawSo, my search of filings at the USPTO was expected to find at least one supporting a claim of ownership to it, but what I found instead is a brewing battle over the green dot on a white cup . . .

Read the post.  As Steve explains, it’s, well — no big surprise — not going great for the great-coffee-markup people.

Given Starbuck’s track record with its trademarks and its recent demonstratively tin ear with respect to marketing initiatives, you’d think I’d say Starbucks’ initial disappointment (which hardly means anything at this stage, of course) on this initiative is unsurprising.  But, really, how fair is this?  Starbucks is actually a brilliant marketing success at its core, building a multi-billion-dollar empire on really expensive variations of pretty good coffee sold in paper cups in cafes where the only people who can sit down are the first 20 customers and their laptops.

In other words, Starbucks is all about brand: Read More…

American Brandstand

Originally posted 2005-01-10 16:10:00. Republished by Blog Post Promoter

Marty Schwimmer (who is a brand unto himself) links to the “American Brandstand” report published by an interesting outfit called AgendaInc. The report runs down last year’s top musical questions last year to be answered by well-known brand names. This report is most useful for interpreting some of the lyrics that you’ve heard a million times but never quite “got” (“I got the Rolly on my arm and I’m pouring Chandon / And I roll the best weed ’cause I got it goin’ on” — these kids today and their nutty lyrics!). The list includes four present-or-recent clients of ours (can’t say who, but look on my site under “published cases” for a hint) and about that many “brands” we’ve litigated against over the years.

The references seem overwhelmingly to come from the gritty “urban” music sector. I am reminded, though, of a kinder, gentler era when Paul Simon sang about Kodachrome. (It’s slide film.) (Film — it’s what used to go in cameras.) Well, maybe not quite so innocent, thinking of Lola and her — his — uh, Lola’s Coca-Cola

I don’t remember Pepsi getting a pop music mention until much later.

The law on initial interest confusion: Interestingly confusing

Oh joy, 9th Cir. embraces initial interest confusion again Bad ruling over Amazon’s internal search. I’ll blog soon

Ah, my old friend initial interest confusion. How far back we go! I don’t remember anyone screaming about the way I was when I wrote this piece in 2003, though this article preceded mine by a couple of years.   Everyone in the academy who thinks about how trademarks work on the Interne “has to despise” IIC (the law profs call it IIC); the trademark plaintiff’s bar, on the other hand, is addicted to it.  There are those who seek a less black-and-white approach, too — which, to be fair, includes INTA per that last link — but it seems that most courts that accept IIC use it without the surgical level of focus that INTA suggests is appropriate.


But no one has been eagerly awaiting its demise more than Eric Goldman, who has pronounced it all-but-dead too many times for his own taste — and, again, mine, since the ups and downs have involved a lot of my own cases. Memories, memories.  Some people can just delete them, toss them away like an old rag, but not me.  They burn forever!

Sometimes they burn brightly, such as when the Eastern District of New York rejected the doctrine, though without ringing declaration of death, in Ascentive v. Opinion Corp. and Devere v. Opinion Corp.  Other times the burn was harsh, as when the Third Circuit relied on it, in part, to keep the complaint of Amerigas against the same defendant just alive enough.

It wasn’t even so long ago that Eric, who has a special obsession with the use of IIC to find a basis for liability in the unauthorized use of metatags by competitors Read More…

I Read Dead People’s Email

Originally posted 2005-01-06 22:42:00. Republished by Blog Post Promoter

When you reach a certain age you begin to wonder… what happens to my hard drive when I… you know. How do my Internet buddies find out that it’s, er, nothing personal that I didn’t respond to their IM — no, I’m just… you know. Not living any more.

And my email? Yale Law’s LawMeme blog has a great item about Yahoo!’s refusal to accede to the demand of the parents of a marine — who was killed in Iraq — that they be provided with his Yahoo! email password. (I found this blog on Instapundit’s blogroll. He doesn’t need another link.) They say they want more to remember him by. Yahoo!’s terms of service pretty clearly address this, and the company is sticking to it.

According to the item, it’s possible that the parents could get the password via a subpoena or, more likely in this case I think, a court order. Should a court grant such an order? It will have to consider California law on inheritance, contract and privacy. And those “public policy” factors that find their way into decision in any number of ways? I say that absent a specific compelling reason to get the email information — i.e., the location of his will or the buried treasure or something like that — it should die with the man. And, considering that, I would also require that the information ultimately revealed be narrowly-tailored as well. The court in camera, or a special master, or another neutral person should fetch the relevant information and then Yahoo! should blow taps on the account. A hero is entitled to die with his privacy and his secrets intact.

UPDATE:  More on the topic.

No, really — counterfeiting

Originally posted 2013-01-16 09:41:02. Republished by Blog Post Promoter

In the IP business, when you hear the word “counterfeiting,” you think — you know, fake Louis Vuitton handbags, Rolex “replicas,” that sort of thing.

Well that’s counterfeiting, yeah.  But then there’s… counterfeiting counterfeiting!  This infographic doesn’t skip over the old-fashioned, wrath-of-J.-Edgar-Hoover-type currency counterfeiting.  Enjoy it.

Just one thing — when you see assertions like the one on top of the infographic (“By 2015, [the] ICC expects the value of counterfeit goods globally to exceed $1.7 trillion”) — don’t be too too credulous.  Those estimates tend be, er, funny money — “massively overstated.”  But that doesn’t mean it’s not a problem.  Although if I don’t get some new antipiracy work myself soon it might start to not be one and I might start to say so.

Kidding!  It’s a real problem, and it’s not only China’s fault.  But I digress — as I said, enjoy the infographic!


Infographic by Camcode

Another bad season for the Redskins


Which side is he on?

The Eastern District of Virginia has ruled (link to opinion here) on the summary judgment motions in Pro Football v. Blackhorse in the NFL’s appeal to the District Court of the TTAB’s cancellation of the REDSKINS trademark registration.

The opinion is 70 pages long.  Spoiler alert:  It doesn’t come out good for the Redskins.

There will be plenty of commentary on this, an doubtless an appeal, but you’re not going to get that commentary from me.  Not here, anyway, and not before we finish up our own appeal business.

UPDATE: Christine Haight Farley is loving it; here’s reporting by the World IP Review.

WAIT, THERE’S MORE: Analysis from John Farmer.  John Welch:  “An impressive opinion.”


De gustibus non est disputandum

Russo NY Pizzeria

Russo to Judgment?

The question, per last fall’s story, was this: Can you establish trademark rights in a flavor?  The court said, unsurprisingly, “no.” As usual, I let someone better inclined to do so do the heavy lifting first — and who better than Eric Goldman?

[A]pparently Russo’s New York Pizzeria restaurant chain–which is from Texas, not New York, despite its name–. . . sued a rival chain, Gina’s Italian Kitchen, for taste infringement. Russo’s claimed trademark rights in how its food tasted, and it said the rival chain copied that taste. Fortunately for the rival chain . . ., a federal court found Russo’s claim “half-baked” (the judge’s words, not mine). Typically, trademarks are words or logos associated with a marketplace offering, such as the Coca-Cola name or its swoosh logo. However, in limited circumstances, a product’s features (in addition to the product’s “brand”) also may be protected as trademarks when consumers view those features as signals of the product’s source.

Given the expansive view of what’s potentially trademarkable, it’s not ridiculous to think that a food’s flavor could qualify for trademark protection. However, no matter how consumers view a product feature, the feature isn’t trademarkable when it is “functional,” i.e., “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” In the case of food, flavor will almost always be functional. As this court explains:

The main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs….NYPI does not allege that its supposedly unique flavoring is merely an identifier, and any such allegation would be implausible given that the flavor of pasta and pizza has a functional purpose.

Tick Tock Diner

We never close.

Right.  Good, except for Eric’s distressing repeated use of “trademark” as a verb.  But, on the merits, right, yeah? It seems that way.  Two practical concerns, after all, seem to militate heavily against “tastemarks.”

One, as Eric points out, is “the competitive implications if we allowed trademark protection for flavors. The first food vendor to popularize a flavor would get the perpetual rights to prevent all others from replicating the flavor.”

Another problem, as Robert Zelnick from McDermott Will & Emery LLP notes in this article, is enforceability.  “It’s hard to imagine how a subtle variation in a recipe for any of those dishes could be protected as a trademark,” he says. All true, but I’ve got a hankering for more on this question of trademarks for flavors.  Let’s take another look at the ingredients baked into this decision:

If the hurdle is high for trademarks when it comes to the flavor of medicine, it is far higher—and possibly insurmountable—in the case of food. People eat, of course, to prevent hunger. But the other main attribute of food is its flavor, especially restaurant food for which customers are paying a premium beyond what it would take to simply satisfy their basic hunger needs. The flavor of food undoubtedly affects its quality, and is therefore a functional element of the product.

Pull up a chair while we consider this analysis. And keep in mind that in this opinion, the court is splitting hairs.  So we can do that, too. Read More…

Google Books settlement takes it on the Chin

Originally posted 2011-03-22 18:22:23. Republished by Blog Post Promoter

I raised questions about the Google Books settlement ages ago.

Now some of them have been answered, and Judge Denny Chin’s answer is “no”:

While the digitization of books and the creation of a universal digital library would benefit many, the [Amended Settlement Agreement] would simply go too far.  It would permit this class action – –  which was brought against defendant Google Inc. (“Google”) to challenge its scanning of books and display of  “snippets” for on-line searching – –   to implement a forward-looking business arrangement that would grant Google significant rights to exploit entire books, without permission of the copyright owners.  Indeed, the ASA would give Google a significant advantage over competitors,rewarding it for engaging in wholesale copying of copyrighted works without permission, while releasing claims well beyondthose presented in the case. . . .

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Best of 2012: Apostrophe now

Originally posted 2012-12-28 10:00:05. Republished by Blog Post Promoter

Originally published October 11, 2012.

Via Courthouse News, a report of a trademark lawsuit that I’d think was merely “apostrophal” if not for the fact that that august publication says it’s for real — and because here’s the complaint off PACER.  The story:

A Philadelphia delicatessen has sued the U.S. Patent and Trademark Office over an apostrophe, insisting that its “Philadelphia’s Cheesesteak” is “so superlative” so “gloriously gluttonous,” it could not possibly be confused with the generic “Philadelphia Cheesesteak.”

Campo’s Deli at Market sued U.S. Patent and Trademark Officer Director David Kappos in Philadelphia Federal Court.

Campo’s Deli, a “Mom and Pop cheesesteak and hoagie* shop, run by Mike and Denise Campo and their children Mike and Mia,” applied for a trademark in 2009, were rejected in 2010, appealed, and were rejected again after an oral hearing in March this year. But because the appeal board reversed the PTO’s refusal of trademark under §§ 1 and 45 of the Trademark Act, “regarding sufficiency of evidence of trademark’s use by plaintiff in commerce,” the Campos appeal de novo.

The doughty family says it’s been using the trademark since at least Jan. 1, 2009 at four retail outlets, including the home stadia [sic] of the Phillies, the Flyers and the Sixers.
Getting down to brass apostrophes, the Campos insist, in their 4-page complaint: “Plaintiff’s mark is, first and foremost, the description of a particular kind of sandwich of a particular quality or standard – a sandwich so superlative, it could only be called ‘Philadelphia’s Cheesesteak.’ . . .

“Plaintiff’s mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.

The apostrophe is worth saving; and the complaint (link above) is worth reading.  Cooked up by Philadelphia’s J. Conor Corcoran, an acknowledged legal windmill-chaser, it is certainly far juicier than the standard fare, including ingredients such as:

16. The difference in the two phrases, of course, is an (’s) which demarcates a particular kind of gloriously gluttonous sandwich provided only by the Plaintiff – not just a Philadelphia Cheesesteak, but “Philadelphia’s Cheesesteak.”

17. Plaintiffs mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.

18. For example, Plaintiff needs its mark so that in pursuing its franchising aspirations, the purchasing public will know that Plaintiff provides a particular kind of Philadelphia Cheesesteak, of such a tremendous quality, such a gustatory delight, and such a propensity for myocardial infarction that it could only be called “Philadelphia’s Cheesesteak” – the very best example of what is otherwise a very common sandwich.

Now, it is odd that the TTAB did not address the myocardial infarction argument in its August 7, 2012 decision (attached to the complaint).  In such  heart-rending situations I turn, naturally to John Welch, who explains like this: Read More…