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Light at the end of the tunnel

Originally posted 2009-10-08 00:05:06. Republished by Blog Post Promoter

StationStops reports that the MTA has backed off at least part of its obnoxious “IP enforcement program” and undone some of the damage the agency caused between the company and Apple:

Finally, 2 weeks after MTA sent a priority request to re-instate StationStops for iPhone, Apple has finally put our application back for sale in the iTunes app store.

StationStops for iPhone – (iTunes Link)

My battle with MTA over the app lasted 2 months, and cost me approximately $2500 in legal fees and lost sales royalties, as well as occupying pretty much all of my work time with legal, political, and media action for 2 months.

Gosh, I wonder if anyone at MTA will feel any of the consequences for this.

Not really.

Judicial Canuck Stooges Spit in Uncle Sam’s, Barbie’s Eyes

Originally posted 2014-03-19 13:12:24. Republished by Blog Post Promoter


This guy did die in vain, actually.

A “New York judge ruled that Mattel ha[s] no jurisdiction in Canada and that [the] owner [of], Barbie Anderson Whalley, can keep the name of her store and website” — so says CTVNews, a media outlet serving the largest and most backward U.S. State.

If reported correctly (there have been questions about the the way things are done in that frosty part of the U.S.), this decision is outrageous. If this so-called jurist can, with the stroke of an ice-coated pen, declare that Mattell doesn’t have “jurisdiction” over Canada, the next thing you know some damned activist judge will say the U.S. doesn’t either.

Where will it end? Did Lincoln die in vain?!

Mooning off into the sunset

Originally posted 2010-10-12 18:56:07. Republished by Blog Post Promoter

Marlboro Man

A real man's fake cowboy

The lawsuit by the Naked Cowboy against candymaker Mars has been settled. Terms are undisclosed, the filing of a stipulation of dismissal with prejudice a sorry fig leaf over this tawdry affair.

UPDATE:  This Naked Cowboy is seems to be the black-hat kind:  He went and sued some little lady called the Naked Cowgirl.  But according to this thorough treatment by someone’s trademark attorney (with all due respect, not, contrary to his suggestion, mine*), she’s ready, able and willing to shoot back.

*Maybe he should be though, for it says here that among his other unique offerings, he addresses the number-one concern of trademark clients (scroll down):   Respecting the planet, dammit!  “Nearly 100% of our trademark search and trademark registration services consume no paper products whatsoever.”  How does he do it?!  “We accomplish such a feat by communicating with both you and the Trademark Office electronically and over the telephone whenever we can.”
I’d like to see that, let me tell you.  Man. Nearly 100%!!
Anyway, it’s all good. Anyone who goes through the trouble of slamming Legal Zoom in a special dedicated section of his blog can’t be all … green.

Trademark Fluff over Fluffernutters

Originally posted 2011-06-24 13:17:57. Republished by Blog Post Promoter


Reports a Lynn, Massachusetts newspaper:

A Lynn company known worldwide for its Marshmallow Fluff is suing Williams-Sonoma, Inc., claiming the culinary retailer is misusing the registered trademark, Fluffernutter.

I just made one of my sons a Fluffernutter tonight. You know — a Fluffernutter, which the good people at Durkee-Mower, Inc., the Marshmallow Fluff company, describe as “a wonderful concoction of Marshmallow Fluff and peanut butter in a delightfully tasty sandwich.” Legal experts agree on this definition. You might call that an odd coincidence, except that it’s almost all Avrumy eats. But I certainly didn’t know Fluffernutter (I mean FLUFFERNUTTER®) was a registered trademark.  It’s not surprising — instincitvely it seems as if it should be — and yet, and yet …

Why doesn’t the Fluffernutter page of the Marshmallow Fluff website show the circle-R emblem designating a registered trademark in FLUFFERNUTTER?  [Update:  Four years after I first posted this, it still doesn’t!]  What they do show is shown above — no circle-R. There is no notice of registraton or any other trademark rights in the mark FLUFFERNUTTER anywhere on the page, and if it is somewhere else on the site, I couldn’t find it. An odd way to protect a registered trademark.

More oddness: The word FLUFFERNUTTER is indeed registered; serial number 75175400. FLUFFERNUTTER was not registered until 1998, strange but not shocking to those of us who remember the Fluffernutter jingle (you can hear it by clicking on the Fluffernutter home page) from our own childhoods. But what’s more odd is that the registration doesn’t protect Fluffernutters! No, the goods and services listed in the registration are “printed recipes sold as a component of food packaging and cookbooks.”

Is that what I gave my little Avrumy for dinner? A printed recipe? I don’t think so! (There’s also a pending registration for … ice cream! I certainly didn’t give Avrumy ice cream for supper!)

Yes, theoretically speaking, at least, Durkee-Mower, Inc. has a problem, for as one of my other boys, Yisroel Asher, said as he saw me write this entry, “Can a name of a sandwich be a trademark?” Indeed, can it?

In fact, FLUFFERNUTTER appears to be a generic term describing a sandwich made with delicious Marshmallow Fluff — which is trademark protected, and whose makers evidently coined the word — and peanut butter. Indeed, Durkee-Mower does not sell Fluffernutters. You make them yourself with delilcious Marshmallow Fluff! So how can the company claim trademark infringement?

Think trademark dilution. The gift from Congress, wrapped by the courts (if temporarily lost in the parcel post by the Supreme Court) that keeps on giving. Or in this case, taking — taking a word right out of the English language and making someone liable under federal law for using it fairly, descriptively, accurately, non-confusingly, in favor of someone who files a federal trademark innacurately, confusingly and in a completely phony manner, to describe goods and services contrary to the manner in which the applicant itself uses the mark on its own website!

Will the court bite?

Other links on this story: Blogger Paul Harris reminisces about Fluffernutters [link is gone, not archived — RDC]; Bostonist gives some great background on the product.

UPDATE: This is almost certainly academic. It’s hard to see why Williams-Sonoma would fight this, notwithstanding that it’s winnable. How important can FLUFFERNUTTER be to a cooking equipment company? Don’t expect to hear about a decision — my guess is that the two sides will probably negotiate a walkaway.

UPDATED EVEN MORE:  Yep, PACER reports that case was settled in August of 2006.  “Terms not disclosed.”

Jews for Jesus* v. free speech: update

Originally posted 2012-12-04 12:56:40. Republished by Blog Post Promoter

The troublesome “Jews for Jesus” blog is still around, after some people had the impression that perhaps Jews for Jesus, Inc. had been succesful in shutting it down. The J4J Whistleblower is still feeling kind of conspiratorial, writing:

Take your time to read through my previous blogs and the points raised. In one of my earlier blogs I pointed out that it takes time to sort through everything to realize what is going on. My previous post to this one looks at the actual text of Jews for Jesus’ lawsuit and points out what they really want. You’ll find this is in line with Susan Perlman’s comment that Jews for Jesus believes it has a right to how their organization will be represented on the internet. That explains why they are only using this blog as a stepping stone to have Google remove any blog with the name “jewsforjesus” in it. An astute observer on a legal blog pointed out that the likely target is

Harrumph. I couldn’t find that astute observer — Whistleblower is quite stingy with the hyperlinks for a blogger — but if that were true, it would be another blow inflicted on free speech by Jews for Jesus with the help of the courts. Quite ironic considering that this group has actually extended free speech protection in a number of decisions, including one in the U.S. Supreme Court, where its own speech was threatened.

But that sort of irony is already old and tired, isn’t it? It must be, because this story is being fairly well ignored — as the Jews for Jesus v. Brodsky case was — by the usual suspects in the free speech department whose ox, for some reason, doesn’t ever appear to be gored when Jews for Jesus is doing the goring. In 1998, Steve Brodsky’s requests for amicus submissions in the Third Circuit were blown off by both the New Jersey ACLU and the Electronic Freedom Foundation, without any real explanation, for example. Here too the EFF has been silent about this case, as have been the “copyfighters” at I don’t know why now, as I didn’t know why, then. Maybe if Steve Brodsky or the Whistleblower published pornography or scandalous charactures of Dick Cheney or were uploading music files the self-appointed guardians of free speech would have something to say about what’s going on here.

Yes, the old irony is old news. I guess it’s just as well, anyway, because in the area of free speech, now we have the all new irony!

Or is irony just not the right word for plain old cynicism? Well… don’t ask me!

*(Sour grapes warning! But if you can stand the taste, come on in; the dishing’s fine!)

UPDATE: Thanks to Dean for the link. I think that one may criticize my analysis above by suggesting that because of my own personal interest in this case, I am also guilty of the “whose ox is being gored?” syndrome. This may be true, but then I do not claim a comprehensive bailiwick, as the would-be guardians of free speech on the Internet do. I am just one lawyer who has had a few clients with interest in these matters. But I will acknowledge that the experience of representing Steve Brodsky against Jews for Jesus, Inc. and The National Debate against the New York Times has affected my own views, which formerly were biased in favor of trademark and copyright holders — that, and getting beaten up on daily basis for several months on the CYBERIA-L list, largely at the hands of Mike Godwin! So you know — we grow, we learn…

Trade Dress Rights in Musical Instruments

Originally posted 2012-11-20 19:02:14. Republished by Blog Post Promoter

John Welch’s TTAB Blog — which monitors developments at the Trademark Trials and Appeals Board — picks up this recommended reading from a recent article in the Trademark Reporter journal on the topic of trade dress rights in musical instruments. John quotes authors Robert M. Kunstadt and Ilaria Maggioni commenting on the recent decision in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), which ruled in essence that under trade dress law, only a Gibson guitar can make a Gibson-looking guitar, to wit:

[H]ad the court properly appreciated how to play a LES PAUL guitar, the court would not have granted summary judgment for Gibson. At a minimum, the functionality of the alleged Gibson trade dress features presents fact issues for trial.

In other words, a Gibson looks like a Gibson because it sounds like a Gibson — and in trademark law, functional features are not granted trademark protection. (If they’re novel, you may be able to get a patent, of course.)

Ron Coleman and Flammable Dog 1980I don’t know as much about guitars as these authors, I guess, but back in the day when I used to play bass guitar on my Gibson SG — copy! — (see pic — yep, that’s your blogger, circa 1980) I sure knew that it wasn’t playing like the real thing. But it did look enough like a Gibson and, what I found most valuable, had a guitar-proportioned fret board unlike the long Fender basses that were most popular but which I found harder to play. So on the one hand I, as the consumer, was driven by functionality. On the other hand, I wanted a bass that looked like a real big-boy bass. Considering the fairly low quality of my instrument, it’s hard to imagine that the product configuration had much if anything to do with how it sounded. At the end of the day, and on a quick read of the excerpts, I might agree with the TTAB here.

UPDATE: On the other hand, the issue isn’t how my Acme guitar’s sound was affected by its shape, it’s how the Gibson was — that’s what drives the functionality argument. So perhaps I should reconsider after I read the whole opinion and the article.

The color purple

Originally posted 2015-06-19 15:13:46. 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.


Originally posted 2014-08-11 18:52:33. Republished by Blog Post Promoter

This better be, because The Force isn’t going to cut it for you these days!

Taking the IP Train

Originally posted 2010-09-06 16:08:53. Republished by Blog Post Promoter

The New York Times reported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers.

MTA Subway Train Symbols

Evidently powered by the MTA’s burgeoning licensing program, it’s not a bad idea. No question but that these and the many other powerful symbols used by the transit system are excellent communicators of source, quality and all those other trademarky things. The New York transit system, especially the subway, is an entire subculture unto itself. In other words, don’t be surprised if there’s some pushback on this new, and somewhat belated, attempt to kind of privatize, or revenue-ize, a world that generations of people think of as “everybody’s” property.

Of course, the libertarians remind us constantly, and accurately, that when something is everyone’s property, it is ultimately treated like no one’s property at all — which “everyone” ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

Slamming the DOORS

Originally posted 2010-08-10 17:08:46. Republished by Blog Post Promoter

History repeating and all, ya know.  First time, tragedySecond time — farce.