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The Garden State Parkway and government trademarks: What exit?

So, yes:  One of my many continuing series around here has long been the assertion of trademark rights by political subdivisions and agencies in stuff that they’re supposed to just do.  These include:

I even kind of did a roundup on one case where the MTA pulled back after overplaying its hand.  But across the River, New Jersey, now — as ever — begs to be heard, as reported in the N.J. Law Journal and the Newark Star-Ledger, per the tweet above:

The New Jersey Turnpike Authority wants to be clear: It is not in the restaurant business, in this state or any other.

To underline the point, the agency has filed a federal lawsuit against a Florida chain of two New Jersey-themed pizza places, claiming the restaurants’ yellow-and-green logo too closely resembles the Garden State Parkway sign . . . .

“Coming after someone down here, 1,300 miles away, is ridiculous,” [defendant] DiMatteo said.
But the authority notes that the restaurant is actively working to franchise the brand — and presumably the logo — nationally, including, the restaurant says on its website, “up and along the coast to the northeast of the United States.”

“This is not just about some pizza joint in the Florida Keys,” a spokesman for the authority said an email.

Yeah, but it is.

Waiting for the 320So yes, I was, earlier today, asked my view of the matter.  And yes, I did pass on a link to one of those earlier posts.

But, to be more specific, and as one who has lived in the Garden State for over 40 years, let me put it to the Authority Jersey-like, as I write this in beautiful Passaic County, so’s I can be completely understood:

Ya not franchising nuttin, Goddin State Pockway.

You ain’t franchisin’ no stinkin’ pizza in Flah-rida.

You got nuttin.

Hey.  You.  Yeah, you. Read More…

Aereo, FilmOn, and the “Shimmer” of maybe-unlawfully-clever digital entertainment delivery

Those of you of a certain age will remember the classic SNL parody commercial for “New Shimmer“:

New Shimmer

It’s kind of the same thing with Aereo, isn’t it?  As I said in my now-legendary-in-my-own-mind multi-part post, every next judge presented with the relevant inquiries in the Aereo case — i.e., the application of terms in the Copyright Act to technological facts not remotely anticipated by its drafters — takes a different run at judicial legislating, while contemptuously dismissing the last guy to touch this digital hot potato as the dimmest of stooges.

Yes, it’s a lot like Shimmer.  Is this digital mini-stream time-place-concept-shifting business stuff a floor wax, or is it a dessert topping?  Or, as Chevy Chase urges, could it really be both?

The latest comes in via an email from Owen Phillips , who writes as follows:

Hi Ron, I like your blog! I work with FilmOn and you’ve probably seen it’s involved alongside Aereo in a major test of Copyright Office rules. Late last week the Office turned down Aereo’s request for Compulsory License under Section 111—provisionally. At the same time it put out a request to the public to comment on the issues surrounding these decisions over 30 day period.

I think your readers would be interested to hear about this—and we’d like to maximize the public’s right the be heard in all of this.

He included this Copyright Office link for public comment.  Why wouldn’t I post that?  It’s not a spam link or something.  It’s the government!  Why wouldn’t we want to help the gummint figure out whether FilmOn is a delicious addition to the end of a special meal, or the perfect way to keep that linoleum looking great?

Well, let’s see.  What do we know? We know that Owen really likes my blog.  We don’t dismiss that as flattery intended merely to smooth the way for my consideration of his pitch, for it is entirely credible that one would like my blog, and that one would say so, too, at the slightest provocation.

What’s FilmOn?  Go look for yourself at the FilmOn website.  And before we go any further with what Owen wants you to hear about, here’s what is, more precisely, going on with FilmOn — an item from  yesterday, July 21, 2014: Read More…

INTA thoughts

Originally posted 2010-05-26 12:48:30. Republished by Blog Post Promoter

On the tail end of the annual meeting of the International Trademark Association in Boston, which I’ve used as an excuse not to post much or any new material, some thoughts:

  • I’ve heard widespread unhappiness about the quality of the programs, which in my experience seems to be largely justified.  Information is doled out as if by an eye dropper; many presenters are not competent public speakers or, in some cases, English speakers; no printed materials are distributed; and, if you haven’t been following my tweets on the subject, an inordinate amount of time is spent by panel “chairs” reciting the boring bios of panel participants to an audience that really could not care less.
  • Also on the negative side, the “exhibition” part is getting harder and harder to understand.  If you’re signed up for a full complement of programs, there’s very little time to check out the exhibitors.  Yesterday they chased us away at 4 PM.  On the other hand, maybe it doesn’t make that much difference:  It seems to be the same cats every year, or if it’s not, it still, as I said, seems to be.  Is there any commercial relevance to these hire-pretty-girls-and-set-up-a-colorful-display-and-get-business-cards-in-a-bowl things any more?
  • On the up side:  Boston!

Boston at night

Beautiful city, amazing conference center (yes, it’s a bit too sprawling perhaps, but they seem to really have thought out how space like this is to be used), just always a great experience visiting here.

  • Also, as usual, the execution of every conference-planning aspect of the annual meeting by INTA is well-neigh flawless.*  Shuttle buses worked great.
  • Trademark lawyers are mostly fun and interesting.  I’m amazed how many are “dressing up” in this unseasonably hot weather, though.  I opted for biz-cazh, myself.
  • No real excuse for grownups to go to the disco parties at night.  Certainly not if they’re married and traveling alone.  But I’m told there were fewer such parties this year, a reflection perhaps of competitive  and financial issues, or maybe a realization of how pointless these things are.

At the end of the day, INTA’s okay.  I like INTA.  Naturally it’s mainly the property of Big IP.  Committee membership, much less leadership, is mainly–mainly–about corporate and big-firm hierarchy, not thought leadership or anything scary like that.  But what do you expect?  The rest of us are treated courteously and as professionals deserving of a voice as long as we have “game.”  And, hey, we’ve got game, no?

*  One niggling exception:  Every year I indicate–on INTA’s own form–my “preference” for a kosher meal at the Table Topics luncheon meetings, and every year I end up having iced tea for lunch.  If you can’t deliver it, folks, don’t offer it!

Defending the trademark infringement defendant

It’s an art, not a science — like all litigation — and despite the best advice, well… there are some things, many of them in robes, you just can’t account for.

But still, why not at least get the best advice?

Right. So here (below) are excerpts from the Lawline program I recorded on this topic in May of this year (2014).  The excerpts are free; for the full-hour CLE program and relatively less free advice (hence worth relatively more than the cost of these excerpts), click here.

Marty Schwimmer’s blog

Originally posted 2005-01-03 21:02:00. Republished by Blog Post Promoter

By the way, let me be very clear about this:  The definitive blog on the topic of trademarks is my friend Marty Schwimmer’s Trademark Blog.

It’s funny also.

The line in the sand

Originally posted 2010-06-17 23:02:24. Republished by Blog Post Promoter

Scott Greenfield:

You write that apology, and it better be done before hell freezes over or else.  That will show him, right, Judge?

You could quote this guy every day.

Redskins’ intractable trademark troubles — or sportswriters’?

Originally posted 2012-01-04 11:22:31. Republished by Blog Post Promoter

I’ve been following the REDSKINS trademark travails since forever.

Well, they’re not over. Or are they?

Live with me in real-time, real-life blogging time.

I got excited by a link on my Google alert for trademark news, to this story in the Washington Post:

As Redskins’ struggles drag on, so does court challenge to name

By Courtland Milloy, Published: January 1

Back in 1992, Washington reigned as Super Bowl champs with high hopes for two in a row under coach Joe Gibbs. That year, a Native American resident of the District, Suzan Harjo, became the lead plaintiff in a lawsuit seeking to change the team’s disparaging name: Redskins.

As the legal battle over the name enters its 20th year, let’s review some highlights of a struggle in which moral victories by the plaintiffs often coincided with demoralizing losses by the team on the field — including dashed hopes of winning another Super Bowl.

So far, so good: Some new development!  Looks like I can post on the seemingly intractable trademark troubles of the Washington Redskins!

But… what’s the new news?  Here’s the last paragraph of the story, which refers to the earlier dismissal of the Harjo case on laches grounds:

2012: Another lawsuit to get rid of the team name, Blackhorse et al v. Pro-Football Inc., will be working its way through the courts, this one from a younger group of Native Americans who cannot be said to have “waited too long to file.”

But they have already waited too long for justice.

So, then, what is the status of Blackhorse that made it newsorthy at the Post?  Well, not much; it is kind of creeping along.  A few weeks ago, the parties filed a joint stipulation of facts in the opposition action pending in the TTAB.  Not a lot to report.

Slow news day? I guess in the sports department, it pretty much always is, in Washington.  But Happy New Year!

Bakeries, bankruptcy, BUTTERNET and … bleh!

BUTTERNUT trademarkIf the tone of my the title of this post sounds dismissive, it’s not quite that.  It is, rather, just an admission that there are some things in trademark law that are complicated in a pretty untrademark-law-like way.  Usually I manage to avoid them completely … and then along comes Pamela Chestek, who makes us sit up and take notice no matter how intellectually lazy July in New York makes me want to be.

It’s like this:

The legal significance of a “license” to the BUTTERNUT trademark has been in dispute for ten years now. I put “license” in quotes because while the document in question is called a license, it’s not your typical trademark license.

In 1996, in settlement of an antitrust suit brought by the Justice Department, defendant Interstate Bakeries Corporation (IBC) had to divest itself of some Bread Assets (land, buildings, fixtures, equipment, vehicles, customer lists, etc.) and Labels, which included “all legal rights associated with a brand’s trademarks, trade names, copyrights, designs and trade dress.”

Plaintiff Lewis Brothers Bakeries (LBB) was the company that acquired the rights Interstate Brands had to sell. The judgment was reduced a transaction that had both an Asset Purchase Agreement and a License Agreement. One of the assets being transferred in the APA was . .  . “the perpetual, royalty-free, assignable, transferable exclusive license to use the trademarks as described in Schedule 1.2(e)(the “Trademarks”) pursuant to the terms of the License Agreement (as described in Section 3.6) …” Section 3.6 described a “trademark license agreement substantially in the form of Exhibit G hereto ….”

So we have what is a very unusual trademark license agreement. Most trademark license agreements aren’t assignable, transferable or perpetual, and when you add in “exclusive” you get an agreement that looks much more like a transfer of all rights rather than a license.

Bad enough.  Then comes the other B:  Bankruptcy, under Chapter 11 of the Code of which Interstate Bakeries ends up filing in 2004.  “As part of its reorganization plan,” Pamela explains, the debtor “identified the license agreement as an executory contract that it was going to assume.”  Which is one of the things you get to do – if the contract you, the debtor, have identified is really indeed an executory contract, which in this case would be an executory licensing agreement.

But — another famous B — as Pamela noted, this business didn’t look so much like a license.  It looked like a transfer of all rights, i.e., an asset sale.

Well, which is it?   Read More…

Sewage Treatment

Originally posted 2005-05-25 08:17:00. Republished by Blog Post Promoter

The issue of companies that technologically filter the sludge that oozes out of Hollywood in order to preserve a semblance of entertainment or enlightenment in that product line, while perserving other sensibilities, is bubbling up. We addressed it earlier; naturally, it’s now being litigated. This is a fascinating topic and one that is addressed very thoroughly in an article in the New York Law Journal (registration required).

Here’s the heart of the matter:

Making copies of a movie and offering them for sale or rent, of course, is a plain violation of copyright law. To avoid this problem, editing companies buy multiple legal copies of each movie they offer so that they always retain a one-to-one ratio of ‘cleaned-up’ copies to originals. Some editing companies package the original DVD along with the edited copy — sometimes in disabled form –so it is clear that each sanitized copy is backed up by a legitimately purchased original. Under this scheme, the editing companies argue that they cannot be doing harm to content owners. In fact, they assert that, by establishing a new audience for these movies, they are actually increasing revenues to the content owners. This argument ignores the fact that a copyright owner has the exclusive right to create and sell derivative works from its content. If a market exists for cleaned-up movies sold at a premium, the studios argue that it belongs to them, not the editors.

The other solution is the use of a hardware filter. Here, again, is a powerful excerpt on what’s at stake: Read More…

Vintage PTO “fraud”?

Originally posted 2009-11-15 15:10:54. Republished by Blog Post Promoter

The TTABlog® almost breathlessly — and, quite understandably, considering — links to Seattle Trademark Lawyer, who reports on a case,  One True Vine, LLC v. The Wine Group LLC, just now being uncorked in a California District Court that could well answer a lot of the questions about application of the new “fraud on the PTO” legal standards to an old, familiar fact pattern:

This factual situation looks a lot like the facts in Medinol v. Neuro Vasx: two listed items in the identification of goods, use on only one of the two, a claim of inadvertent mistake. Of course, the Board found fraud in Medinol under the TTAB’s “should have known” standard that was recently rejected by the CAFC in Bose.No whine

What standard will the court apply? How will defendant prove fraud? Is it enough for plaintiff to say that the error was inadvertent? Suppose the two listed goods were wine and nuclear reactors, and the Registrant claimed that the inclusion of “nuclear reactors” was inadvertently overlooked? Suppose plaintiff here had never sold any white wine at all under any label? What if Defendant showed that plaintiff had made the same error in other registrations?

Well, in vino veritas, right?

We’re all looking forward to the answers, which we will no doubt learn… though not before their time.

Trademark trouble for posturing peaceniks?

Originally posted 2008-06-25 19:37:54. Republished by Blog Post Promoter

Harvey of IMAO is on top of what promises to be a huge — record-setting, perhaps — IP story:

While attempting to create the world’s largest peace sign, festival-goers in Ithaca, NY, created the world’s largest Mercedes sign by mistake.

5814 participants gathered to form the familiar symbol of pacifist activism, but – through either oversight or stupidity – only formed three of the four radii required to create a traditional peace sign. Since the missing radius was the lower center line, the symbol they formed was actually the trademark hood ornament of the Mercedes-Benz automobile – a quality German luxury car since 1926 – rather than the anti-war symbol created by a British nuclear disarmament protestor in 1958.

No doubt the Mercedes legal team is drawing up papers to protect its trademark right now.

Chanukah, here we come!

Originally posted 2009-12-11 16:16:07. Republished by Blog Post Promoter

Arthur Szyk Hannuka 1948

Tonight, that is — it’s the first night of Chanukah. That means that I’m going to be hosting the annual Blawg Review next Monday, at LIKELIHOOD OF CONFUSION® (here’s last year’s).

Just a heads-up.