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Footlong trademark thing

Originally posted 2011-02-22 13:25:29. Republished by Blog Post Promoter

Cap'n Crunch Cereal Premium Poster - Jean La Foote - 1969

The Notorious Foote

What’s all this I hear about a trademark registration by Subway for FOOTLONG with respect to sandwiches?

This is one of those other stories I just want to leave to other people.  Doesn’t agree with me.

Aaron Thalwitzer ably demonstrates why I am justified in doing so in this fine post on the Tactical IP blog.

UPDATE:  Speaking of foot-long, check out this extensive treatment by Ryan Gile (who should blog more often, please!).

Spam Can’t Act

Originally posted 2012-12-24 18:01:00. Republished by Blog Post Promoter

SpamThe U.K. Register reports that what would appear to be a very late in the game attempt by the original spammers — Hormel, makers of the presumably tasty canned meat — to preserve some semblance of control in the UK over the use of their trademark in the Internet space-junk context. They sued a shop that produced a product called “Spambuster.” (Query whether they have any chance of ever asserting trademark rights in that very descriptive product name? Not likely.)

According to the article, the court wrote: “Since Spambuster actually made no effort to connect its email software with the canned meat, it wasn’t much of a surprise that the judge took their word for it and dismissed the complaint.”

Bloody Vikings.

Unlovely SPAM

Hormel won’t give up.  And neither will Spam Arrrest, LLC (which makes a great product I used for years). A press release from Spam Arrest reports:

Spam Arrest LLC, which provides the popular web service software to eliminate email spam, hopes to end its four year legal battle against Hormel next month. Spam Arrest is the only company ever, except Hormel Foods Corporation, to secure a trademark including the word “spam” recorded on the principal United States trademark register. For nearly four years, Spam Arrest has defended its trademark against Hormel’s lawsuit seeking to cancel the SPAM ARREST trademark registration….

Spam Arrest has incurred almost $500,000 defending its trademark rights. “We’ve spent years fighting for our trademark, while much larger companies have simply abandoned their trademark applications after threats from Hormel,” said Brian Cartmell, CEO of Spam Arrest. “Not one person confuses our anti-spam service with Hormel’s canned meat — the average American consumer is smarter than that.”

There you have it, canned and virtually inedible. Read More…

Best of 2006: “They’re stealing the language!”

First published March 20, 2006.

Writes Boing-Boing:

“Super-hero” isn’t Marvel’s property. They didn’t invent the term. They aren’t the only users of the term. It’s a public-domain word that belongs to all of us. Adding ™ super-hero is a naked bid to steal “super-hero” from us and claim it for their own.



That’s right: According to this story, DC and Marvel — the only two companies that financially could fight over this with the other of them — are “jointly” claiming rights in the term SUPER-HERO. “Adding ™ to super-hero is a naked bid to steal “super-hero” from us and claim it for their own. . . . ,” continues BB, concluding:

Here’s a proposal: from now on, let’s never use the term “super-hero” to describe a Marvel character. Let’s call them “underwear perverts” — as Warren Ellis is wont to — or vigilantes, or mutants. Let’s reserve the term “super-hero” exclusively to describe the heroes of comics published by companies that aren’t crooked word-thieves.

(Via Slashdot.)  Well, that’s one approach. Here’s another one: I’ll represent pro bono any company harassed by this claim, if you can get me to where you are as necessary (and provide local counsel if needed). Read More…

Best of 2005: New York’s MTA Has an IP Obsession

If You See Something, Say Something
The New York Sun reports that New York’s Metropolitan Transit Authority has filed to register the phrase “If You See Something, Say Something” — its “watch out for presents from the religion of peace” campaign on the New York public transit system — as a trademark. It’s serial number 78696607 on TEAS, the trademark registration database, filed August 19th.  Says the paper:

The move has surprised officials at many transit agencies, who had assumed the phrase, which is now used in various iterations as part of transit security programs from San Francisco to Sydney, Australia, was an industry version of a free download.

It surprised them, but it didn’t surprise LIKELIHOOD OF CONFUSION readers, who for months now have known about the MTA’s obsession with trademarks and copyrights! Others have noticed, too. Someone at the agency — could it be that unfriendly C-and-D-meister Lester Freundlich, who’s also the attorney of record on this application? — has identifed IP as a possible licensing profit center.



Look, no question they need the money, and IP exploitation could offer a great return on us turnstile jockies. Why, the rat I saw scurrying across the tracks of the E train last week at what should be the MTA’s showpiece station — Times Square — was so large that it’s scandalous that it didn’t have the MTA logo smartly emblazoned on its side. No way any two-legged denizens of subterranean Gotham would get away with that.  And we don’t. Priorities!!

UPDATE:  They got it.

Best of 2005: Q the Lawyers


Q: Send in the Quowns

Originally posted on March 27, 2005.

A report in the online Financial Express says that Nissan is suing Audi over “Q.” To wit: “We are seeking to bar Audi from using any names that could infringe on Nissan’s right over the letter ‘Q’,” she added.

Quazy. It’s been ten years since the Supreme Court said that if you establish secondary meaning, you can have trademark rights in a certain color. But I guess when you can’t win back your own name in trademark litigation, you may as well try for an entire letter of the alphabet.

According to Marty Schwimmer, cited in this article, Nissan could win if it convinces the court of its right to a “family” of trademarks.



This “family” of trademarks concept is another judge-created doctrine that, in my humble mind, is a troubling per se species of trademark dilution that is allowed in through the infringement door and therefore avoids the more stringent test (e.g., fame, commercial use) required in order to prove (federal) dilution — tests which are about themselves about to become even weaker if Congress again asks only “how high?” to trademark owners in this “branders take all” environment.

Not to worry, though. If Nissan wins, there will still be 25 letters left for everyone else.

UPDATE:  Settled out of court.

got what, now?

GotmilkIf you’re reading this, then the settlement check has cleared. But you’ll never believe who paid whom for what!

My friend—whom I will call Bryan (not his real name)—has just wrapped up, with my personal and professional help, some odd dealings with the California Milk Processor Board. Yes, the “got milk?” people.

Yes, because Bryan was parodying the “got milk” registered trademark (without “permission”).

Yes, to promote a band.

Yes, that band is Neutral Milk Hotel (which might or might not have been styled by a CIA band-name-generating computer algorithm).

Bryan—aware that he’s one of many dedicated/long-suffering fans of the American indie rock band, which was active from 1989 to 1999—thought that there might be likeminded persons willing to shell out a few bucks for a T-shirt reading got neutral milk? (in the “got milk?” typeface), despite that the band has been on hiatus for well more than a decade. And Bryan was correct: after having some shirts made (at his own cost), he did sell a few. Bryan also registered the URL “” Somehow, it came to the attention of the Board (the cease and desist letter reads, in pertinent part, “It has come to our attention”) that Bryan had registered “”—but it did not appear to the Board (or its counsel) that Bryan “has rights or legitimate interests” in the domain name. Read More…

Octs in their heads

Rocktober-logo-2009The Colorado Rockies are “trying to trademark [sic]” the expression “Rocktober.”

Judge Gets the Points

Rely on a disclaimer to avoid likelihood of confusion? Fat chance. Take the Second Circuit’s decision in Weight Watchers International Inc. v. Luigino’s Inc., fresh out of the oven and full of starch, for example. I had a shot at one of the many Weight Watchers cases brought in the Southern District of New York last spring but, alas, was passed over by what I’m sure was a slim margin. (Still, I blame the avoirdupois — the cooking is extremely good where I live!) But from a quick look at this New York Law Journal report (yes, submarine required) it sounds as if they shouldn’t have tried to do it without me.

Plaintiff weight-loss services provider was granted a preliminary injunction after the district court concluded that defendant frozen food maker’s use of the term “points” was confusingly similar to plaintiff’s use of the term in connection with its diet plan. But the court declined to enjoin defendant’s use of new packaging, concluding that a “points” mark combined with a disclaimer was unlikely to confuse customers. The appellate court determined that defendant failed to establish the effectiveness of its disclaimer. Noting the district court’s conclusion that defendant’s use of “points” was likely to confuse customers into believing that plaintiff endorsed its products, the similarity of defendant’s new packaging to its original packaging, and that the new packaging’s disclaimer did not address the issue of implicit endorsement, the appellate court ruled that the court lacked a sufficient basis to conclude that the disclaimer solved the problem.

I could have told them: Logic, rationality and common sense aside, courts just don’t buy disclaimers as a tonic for likelihood of confusion. As the Second Circuit wrote in its opinion,

And while the disclaimer on the new packaging arguably dealt with the implicit claim that Weight Watchers had calculated the point values, it did not address the issue of implicit endorsement. In all the circumstances, Luigino’s did not sustain its burden, and the district court lacked a sufficient basis to conclude that the disclaimer solved the problem

They hardly ever do. And, as demonstrated here, when they do do… the Circuits will spin ’em right back around. Call it binge and purge, if you like.

Own (Up to) Your (Alleged) Infringement

The problem—as this blogger sees it—with most mass-media reports of court decisions is that they tell you the outcome, but they rarely if ever tell you what’s really interesting about a decision. Consider, for example, the May 31 decision in the Second Circuit matter of Kelly-Brown, et al. v. Winfrey, et al.

In the first place, the case might never have been reported as news if the Winfrey in question weren’t that Winfrey. But it is (a woman who “almost needs no introduction,” according to the court). So the news is that Oprah and her companies were bested (in part) in an appeal by a plaintiff claiming trademark infringement over use of the phrase “Own Your Power.

But the interesting part of the ruling is the legal development in the decision! The refinement of a rule! Indeed, the acknowledgement and redress by the court of an historical error!

mdbheadshotfinal(In articulating—or clarifying, at any rate—the rule, however, the Second Circuit panel probably could have been more articulate. Indeed, your commentator had to read the relevant discussion several times before I fully understood what the court was explaining, and I’m no dummy. My mom thinks I’m smart, anyway. Or it’s my dad. One of them. [We are all very proud of you, Matthew.  — RDC])

The relevant (“Oprah”) defendants put almost, but not quite, all of their eggs in a “fair use” basket. The District Court found the defense availing, even as that court was also persuaded by the defendants’ lone offensive defense, as it were: that the plaintiffs had failed to allege all of the requisite elements of a trademark infringement claim. Specifically, the defendants argued that Simone Kelly-Brown had not shown that the defendants had used the mark in question “as a mark.” That is, while they certainly had made use “of the mark,” they had not used the mark as a mark, and therefore could not even as an initial matter be said to have infringed the plaintiff’s rights in the mark (even putting aside having a complete defense to having done so, if they had).

You’re confused, said the Second Circuit. But we might be partially responsible for that. Read More…