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Trademark Fluff over Fluffernutters

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

Fluffernutter

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 www.exjewsforjesus.blogspot.com.

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 Corante.com. 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.

Authorized?

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.

The shopping dead

 zombie11Says Pamela Chestek, of the Property, intangible® blog:

I haven’t written about “zombie” or “heritage” marks in a long time.

So when she does, we don’t want to miss it!  Here’s the story. As usual, I copy copiously from Pamela, who doesn’t waste a word in this post:

I last wrote in 2011, about a suit involving department store brands that Macy’s acquired and rebranded, abandoning the original names of Marshall Field’s, I. Magnin, Burdine’s, Kaufmann’s, Lazarus, Meir & Frank, Rich’s and Strawbridge’s. Macy’s created a “Macy’s Heritage Shop” where it sold T-shirts and tote bags sporting the store names. Macy’s also filed trademark applications for T-shirts and tote bags.

Defendant Strategic Marks is in the business of trying to revive “zombie” brands, or brands that have been abandoned but still have name recognition with consumers. It filed trademark applications for the department store names and started a “Retro Department Stores” website, selling T-shirts with the retro branding on them. Macy’s sued in two different lawsuits.

The opinion is on a motion for partial summary judgment, with Strategic Marks arguing that the use of the department store brands on T-shirts and tote bags is ornamental, not use as a mark.

Macy’s successfully defended the validity of the marks on a theory of “secondary source,”explained this way:

It is a matter of common knowledge that T-shirts are “ornamented” with various insignia, including college insignias, or “ornamented” with various sayings such as “Swallow Your Leader”. In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation  is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, “Swallow Your Leader” probably would not be considered as an indication of source. Read More…

Virtually Aimee

Originally posted 2012-07-24 21:10:25. Republished by Blog Post Promoter

Virtually Blind, a blog by Benjamin Duranske focusing on legal issues in virtual reality, reports (via IBLS):

Second Life’s ‘Aimee Weber’ (Alyssa LaRoche) recently became the first avatar with a registered trademark. The application for the registered mark was filed February 18, 2007 approved for publication July 7, and published for opposition August 14. According to ‘Weber,’ no opposition was filed, and she plans to immediately begin using the mark. In a sea of often silly metaverse firsts, this one could well signal a trend. ‘Weber’ runs a respected design studio in-world, has one of the most recognizable avatars in Second Life, and literally wrote the book on Second Life content creation. And now she gets to wear “TM” bling too.

A trademarked [sic] avatar, though novel, shouldn’t really be a surprise. McDonald’s trademarked Ronald, so there is no reason an avatar — for many users, a computer generated representation of their brand — could not also be trademarked. The rather distinct appearance of avatar ‘Aimee Weber’ is indisputably identified with the brand. And ‘Aimee Weber’ is as much a Second Life icon as she is a person you chat with at a virtual coffee shop or hire for design work; the little “TM” just makes that official.

Well, isn’t it the ® that makes it official?  Why, “TM”‘s aren’t official at all!  Anyway, I do appreciate the Ronald McDonald analogy.  But I just want readers to be clear that while Aimee Weber is essentially an alter ego for real person Alyssa LaRoche, by Ronald there isn’t really a traveling hamburger clown.  Take it from me.  They wouldn’t lie about why Ronald never returned my fan mail.

Ron Coleman

It does make you wonder if everyone’s “avatar” should be registered as a trademark, too, even if they’re not so virtual-worldy.  Brand equity’s not for nothing, you know!  So?

I wouldn’t lose any sleep over that.  Some of us are inimitable, and so are our animated versions.  Besides, as Alyssa LaRoche told Duranske, “It’s a general move to protect my brand. We haven’t seen any problems yet, but prior to the trademark [registration], we wouldn’t have been as well protected if somebody wanted to plaster my image all over an unrelated product.”  Right.  So, when we start seeing bad people passing off unrelated goods and services as those of LOC, we’ll have to consider our options.

Grey and not so good

Originally posted 2009-10-14 13:17:22. Republished by Blog Post Promoter

Yesterday’s Wall Street Journal had an extensive article on about companies that “borrow” trademark equity, or purported equity, from others to build their brands, pushing the edges of fair use and perhaps then some.  Marty Schwimmer has some multimedia backup (ok, well, talking heads) on this case, too.