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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…

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…


Archer & Greiner

Hackensack, NJ office of Archer & Greiner, PC

It’s been pretty busy for me since I moved to Archer & Greiner, PC, so I haven’t blogged all that much lately.  And, after all, blogging is dead anyway, except for maybe 25 or so blogs, right?

Well, at least there’s microblogging, which I’ve tried to keep doing on Twitter.  As it turns out, I drive 20 minutes to work now instead of spending an hour or two a day on buses or trains.  The down side of that lifestyle improvement is that I used to do most of my topical tweeting while commuting,  But what’s still here is, I hope you’ll agree, pretty choice.

You may have missed some good stuff, in fact, from the @likely2confuse Twitter feed over the last few months.  Excluding tweets about the appeal regarding THE SLANTS trademark (because, you know, enough already), here’s some the stuff I broadcast about trademark, copyright and related topics recently — there’s actually so much that I think you’d like, if you read LIKELIHOOD OF CONFUSION®, that I had to limit this post to the best of what I tweeted in May of this year (2015):

Read More…

Royal mess

Originally posted 2009-06-29 08:45:24. Republished by Blog Post Promoter

Burger King’s trademark place is kind of funny.   If you Google His Majesty’s Monicker along with the word TRADEMARK, you get this link, which not only asserts, naturally, his royal BURGER KING® registered mark, but the far more dubious BK® mark down at the bottom, yet not at all (on that page) the ancient registered mark asserted at the Google search page, to wit:


Too much paranoia?

Yeah — HAVE IT YOUR WAY.  I mean, WAY®.  Are they really still using that phrase?  Is using it in the invisible text that shows up in a Google search good enough for non-abandonment purposes?

The whole thing was raised in my mind upon a visit to James Lileks, who notes:

Burger King is a brand mess anyway. The logo looks like Speed Racer’s gallstone. The old logo got stale, but I’ll bet they want it back, because it would look totally old-school on one of those pre-distressed-for-your-convenience retro T-shirts that use lousy 70s graphics to indicate your hipness quotient. Compare all this flailing and “repositioning” to the competition: McDonald’s ads have always been bland and corporate and stuck in the soft-focus world of happy people having happy burgers; BK has had to take different tacks.

Lileks walks through them all, and links in turn to this Gawker item (not quite safe for home) which notes, in an item entitled World’s Cleverest Ad Campaign Is Big Failure, that McDonald’s has lately been eating BK’s (ah!), um, lunch.

That’s because McDonald’s runs boring ads that show All-American people enjoying their McDonald’s food, with a little jingle at the end, and Burger King runs ads that win ad awards. If only the average burger-eater were clever enough to appreciate [Crispin Porter Bogusky]’s brilliant branding techniques! You slob Americans get what you deserve, as will Burger King.

Now that sounds subversive, and treacherous too.

Of course I can’t eat in either of those places, and kosher burger wars tend to be resolved far more peacefully, and without recourse to suggestions of regicide.  But don’t get me started about the chicken…

The color purple

Originally posted 2008-04-14 08:27:01. Republished by Blog Post Promoter

Cadbury-PurpleCadbury is purple in the face over not being able to secure the wordlwide exclusive rights to the use of the color purple in association with the sale of chocolate — even as against an Australian company that’s been using the two together for almost a century:

Cadbury tells me it is “vigorously appealing” against a judgment over the use of purple. In a case that it has pursued for five years, Cadbury has tried and failed to stop Darrell Lea, an Australian chocolate manufacturer, from using the colour.

Despite the fact that Darrell Lea was established in 1927 and has been using purple for most of its existence, Cadbury insists that it has no right to the colour. Cadbury has registered one shade of purple in relation to block chocolate in tablet form in Britain but it has not been as successful elsewhere.

Purple, actually, may be the oldest legally-protected “trademark” color, of sorts. The color was, at certain times during ancient times and antiquity, permitted to be worn only by the nobility. To which, in the chocolate sense, Cadbury may or may not have a claim. I do like the stuff, and perhaps it is among the elite in the chocolate hierarchy. Certainly compared to virtually anything else the English make it is uniquely edible — but regal?

UPDATE:  Cadbury’s claim melts in its hands, not just in our mouths.

UPDATE II:  Settled, dismissed, whatever. It’s all over but the calories!  Via @IPThinkTank.

UPDATE III: Yes.  But no.  I mean yes.

Friends of the court, friends of the First Amendment

The approved and publishable amicus briefs in the appeal regarding the trademark registration of THE SLANTS are trickling in. Certainly interesting to see who is saying what.  So far, they all seem to be on the side of The Slants, though interestingly the INTA amicus brief does not take a position on the First Amendment issue (maybe because that’s usually a subject raised by defendants in infringement cases?) but instead addresses, as is appropriate given INTA’s level of trademark expertise, the issue of 43(a) of the Lanham Act.  INTA urges, understandably, that the constitutionality question “does not turn” on the availability or interpretation of 43(a) protection for unregistered marks.
The Slants - Chinatown Dance Rock
What do we have?  Here’s the amicus brief of Public Knowledge, styled as “in support of neither party”; here is Pro Football, Inc.’s (i.e., the Washington Redskins’) amicus brief very much in support of appellant; and now comes the First Amendment Lawyers Association (that’s Randazza and friends).

Here’s one we hadn’t counted on:  a submission by the Rutherford Institute together with the Cato Institute.  Cato’s blog post, authored by Ilya Shapiro, is here; the Cato / Rutherford amicus brief is here.

Hey, what happened to the ACLU, which, formerly (you should pardon the expression) confused, has now seen the light on this business?  Evidently the dog ate their ECF registration, and the ACLU amicus brief was filed a day late — today — along with a motion seeking permission to do that, for reasons set out therein.  Enough said — they are our friends (now) and, unlike those stinkers at Public Knowledge, say so right on the cover of their submission.

Okay, and what about those guys over at Public Knowledge?   Read More…

En Banc: Son of THE SLANTS Appeal Brief to the Federal Circuit

We’ve got your First Amendment right here:

Props to my partner John Connell and associates Darth Newman and, of course, the redoubtable Joel MacMull — who has now joined me at Archer & Greiner, P.C. and whose contribution to crafting the constitutional argument in the first round of CAFC briefing played a huge part in getting us here (in more ways than you will ever know).

From the Summary of Argument: Read More…

Keller & Cunard Go Deep on Copyright Law

PLI Copyright Treatise

Sell your soul to get this book.

I used to participate in a general-interest blog, back when my world was quite different, and my colleague over there, Dean Esmay (whose world and blog have changed even more), used to scold me for writing very long introductions that gave no hint of the topic of my post.  So here I’ve got a long introduction, and I can’t help but write it; but I’m telling you up front that this is a review of Bruce Keller and Jeffrey Cunard’s Copyright Law: A Practitioner’s Guide from the Practising Law Institute’s Intellectual Property Law Library.  And I’m telling you up front that if you just want to know whether to get this work, the answer is yes, and you can stop reading now.  It’s awesome — which is to be expected.  The authors are, of course, Satan’s spawn.

But before we go any further into the fiery depths of unforgivable excellence, some navel gazing.  Why bother with books?  Indeed, I shake my head in amazement when I ponder just how many CPU’s are under my control.  I’ve got far more computers, in the forms of desktops, laptops, tablets and smartphones, than I can possibly justify, no matter how far I spread them out from each other.  Still, at the end of the day I believe in the value of books for enlightenment both spiritual and professional. And, you know, around the house.

Regarding professional reading, which is the topic of the blog, everyone with experience knows that notwithstanding the seeming ease of online research, it’s just good sense to crack open a treatise and familiarize yourself with the area of law you’re diving into before starting with the Boolean logic.  A string search for cases won’t teach you the lay of the land in an area of law that isn’t second nature to you.  Not only that, but rush headlong into case research without understanding the concepts and you may very well get, as top results, a handful of cases that are in the right jurisdiction, on point, “good law” (as in not having been questioned by another decision) and just wrong, wrong, wrong.

Having said that, it seems clear that the age of the massive treatise is over.  Like many readers, I had my gargantuan, costly, personal set of McCarthy for trademarks and my titanic, expensive personal set of Nimmer for copyright laid out across yards of bookshelf in my own little office for my own little use.  And what happened to them?  The fell into desuetude in every respect except the all important function of providing marginally interesting office decor.

This happened not because the value of legal learning through dead trees changed, but because these works cost a fortune, and required a small army of support staff to insert the updates even if you did spring for them.

And what was being updated in exchange for all that gold and all that business?  No small percentage of these treatsauruses consisted of statutes, regulations and forms that certainly don’t make any sense to pay for updating, or even keeping around in paper form.  As a result, the stuff you need is so spread out you have to spend 20 minutes just figuring out which volume to dust off.  At the end of the day, both works are available online (McCarthy’s on Westlaw, Nimmer on Lexis, alas), are nominally updated regularly, and cost a lot less that way, all told, than buying and feeding old-school updates.  So, heck with that.

Read More…

Infringements of the heart

Would you ever have thought that the question of whether a party is tortiously liable for inducing another to infringe a patent depends on what is in the inducing party’s (or parties’) heart? If you did, today the Supreme Court decided in Commil v. Cisco (opinion here) that you were in error, holding that a defendant’s belief regarding patent validity is not a defense toan induced infringement claim.

Mistakes, I’ve had a few. But this wasn’t one of them. And in this 2013 brief in a patent case, we tried to address why it could not possibly be enough for a party defending against such a claim to take the position that it cannot have induced infringement because when it acted as alleged it did not subjectively believe the patent is valid.

What made this argument particularly interesting was that the defendants’ position was premised in part on the state of the law at the time, in particular with respect to the controversial, and still-evolving, matter of joint infringement under Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1313 (Fed. Cir. 2012).  Still, we argued, this legal question can’t come down to feelings.  We wrote against this subjective concept of the intent requirement for inducement, resisting the defendants’ motion for summary judgment on the ground of non-infringement, as follows:

[Defendants] argument that the pre-Akamai law made it “impossible” to form the necessary intent to infringe—which is restated in a different form in part (D) of their moving brief, which regurgitates their invalidity defense—is preposterous. By that logic, the defendant in Akamai itself, and every case that follows it, could and would say the same thing. . . .

The issue . . . is not whether a criminal-law-type mens rea to act unlawfully must be alleged or proved to show “intent” for purposes of contributory liability. Rather, it is whether “the accused inducer . . . “knew of the asserted patents”and performed or induced the performance of the steps of the claimed methods.”

Defendants’ statements regarding “good faith intent” on this score are, therefore, irrelevant, besides typically being inappropriate issues on which to base dismissal on summary judgment. . . . Read More…

Wherefore art thou trademark use?

Originally posted 2009-04-08 12:53:29. Republished by Blog Post Promoter

I wrote a couple of days ago — and once again got hit hard by a learned commenter who disagrees with my view of the matter — about the Second Circuit’s ruling in the Rescuecom v. Google case that keyword advertising can be trademark use giving rise to an action to infringement.  That decision is dated the same day as my blog post, April 6th.  I wrote, “[U]ntil now, district courts in the Second Circuit have held that the use of trademarks as a term was not ‘trademark use.'”

romeo-juliette-by-andriolloNot quite right, it turns out.  For on March 26th, I learned yesterday via the New York Law Journal, Judge Thomas P. Griesa in the Southern District of New York anticipated the Second Circuit, at least insofar as acknowledging the limitations of that broad rule, and rejected a motion to dismiss based on the “keywords aren’t not trademark use” argument.

Ruling in a case with the felicitious caption of Romeo & Juliette Laser Hair Removal, Inc. v. Assara I LLC, Judge Griesa did not anticipate the Second Circuit’s legal ruling, however.  Rather, he focused on another often-overlooked point:  The difference between a keyword that generates a competitor’s otherwise inoffensive ad, and one that results in an ad that is it itself potentially confusing because it uses the keyword itself in a way not justifiable as a fair use.

According to the opinion, when a user searched for “romeo & juliette laser,” presumably the first search someone looking for romance-enhancing hair removal would make, the result came up with an ad like this:

Needless to say, neither the Capulets or the Montagues authorized this use of their trademark by their competitor, Assara.  Nor is their any obvious justification for it under trademark law or otherwise.  This kind of use, Judge Griesa easily determined, was not immunized even under the then-current understanding of the Second Circuit’s 1-800 decision:

Defendants argue that they are entitled to summary judgment because any use of the mark in this context was non-infringing.  In support of this argument, they invoke the Second Circuit’s holding that a “company’s internal utilization of a trademark in a way that does not communicate it to the public” is non-infringing.  1-800 Contacts, 414 F. 3d at 109.  Thus if defendants had paid Google to display Assara’s advertisement in response to a search for “Romeo & Juliette,” without having the advertisement itself contain a reference to Romeo & Juliette, that would not have been a ‘use’ of the mark. . . . In this case, however, plaintiff alleges that the use of its mark was in Assara’s advertisement itself, as well as on the face of Assara’s website.  Therefore, the cases approving of the “internal utilization” of a trademark are inapposite.

So they are, and, by virtue of the Circuit’s decision earlier this week, they may be more — or less — than that, too.  The Romeo & Juliette decision is here.

Likelihood of jurisdiction (UPDATED and bumped)

Appellate courts, we see, choose what interests them, and how much.  Sometimes they surprise the parties and their counsel.

We weren’t all that shocked about the argument in Naffe v. Frey, the free-blogger-speech case involving Patterico, but perhaps the degree of the court’s emphasis on one issue as opposed to the other was a bit surprising.  We (the legal team including Ken from Popehat) were ready for it, however.

You’ll understand what I mean if you scan the brief, and then behold the oral argument:

I love my job.

UPDATE:  On June 15th the Ninth Circuit ruled.  As you may have guessed from watching the above, we got a mixed outcome, as explained by Ken at Popehat.  The heart of his post: Read More…

Out to launch