Tag Archives: Best of the Year

Best of 2010: If you see something… it’s probably “trademarked”

Originally posted 2010-12-24 08:00:42. Republished by Blog Post Promoter

First published on May 12, 2010.

If You See Something, Say Something

See me, squeal me

A while ago, while obsessing about New York’s Metropolitan Transportation Authority and its obsession with turning what might have once merely been viewed as functional municipal signage or insignia into “IP ,” I made fun of the MTA’s trademark application (since approved) for IF YOU SEE SOMETHING, SAY SOMETHING.

So in light of last week’s Times Square bomb-thingy, who’s laughing now?  Not the New York Times, in an article about the phrase’s elevation to “iconic,” including an interview with sloganeer extraordinaire Allen Kay:

“The model that I had in my head was ‘Loose Lips Sink Ships,’ ” Mr. Kay said. “I wasn’t born [yet] during World War II, but I sure knew the phrase and so did everybody else.”

“In this case,” he added, “I thought it was ironic because we want just the opposite. We want people to talk. I wanted to come up with something that would carry like that. That would be infectious.”

In 2002, the transportation agency saw a need for a security-awareness campaign to encourage customers to report suspicious activity or unattended packages, and they turned to Mr. Kay, who still had the phrase on his index card. By January 2003, the slogan was on posters and placards in subway cars, buses and trains.

It has since become a global phenomenon — the homeland security equivalent of the “Just Do It” Nike advertisement — and has appeared in public transportation systems in Oregon, Texas, Florida, Australia and Canada, among others. Locally, the phrase captured, with six simple words and one comma, the security consciousness and dread of the times, the “I ♥ NY” of post-9/11 New York City.

The transportation authority received a trademark on the slogan from the United States Patent and Trademark Office, though unauthorized uses appear to outnumber authorized ones.

That’ll happen with plain old ways to say things in English–once called “phrases” or “sentences,” not “trademarks.”

Did you know, by the way, that you can “receive a trademark” from the PTO?  I didn’t.  I thought they only registered trademarks, which are otherwise earned by use that rises to the level of establishing a secondary meaning!  Silly me.

So the end of that distinction, manifested of course by the common use of “trademark” as a verb, is now official, for it is no longer recognized among reporters or their diligent, triple-checking editorial phalanxes at the Newspaper of Record.  This says it all about what “trademarking” has become, unfortunately; as to “journalism,” well, what do I know?

There’s more: Read More…

Best of 2009: “Keeping it real — the ultimate use in commerce”

Originally posted 2009-12-27 16:56:22. Republished by Blog Post Promoter

This was first posted on May 7, 2009.

The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.

Ron ColemanI have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?

Read More…

Best of 2010: “Drive-by infringement”

The last couple of weeks of the year or so I always re-post, with typical humility, the “Best of 2010.”  I arrange it in a sort of month-by-month recapitulation.  It’s like having your whole life passing before your eyes right before you die, only you aren’t going to die.  Yet.

This year is no different.  But it’s better, see?  Because I’m going to start even earlier!  I’ll still do the month-by-month, but not until starting next week, see?  This week what I’ll do to avoid having to write new posts is … re-run some other ones!   In no special order.  Ones I like.  Great ones.  Best ones.  Well, ones with a lot of words and pictures that took so much work to put together in the first place that maybe if someone reads them this time I’ll feel a little better about it.

On the merits, this post full of words and pictures (and captions on the pictures — do you …. people … pay no attention at all?!) should have caused a societal sensation when it was first published on May 4, 2010.  Inexplicably, it didn’t.  This is your second chance, society. 

Coca-Cola Host of the Highways

Commuter Host

Steve Baird says initial interest confusion is “the real thing” and in the process  seeks to “add life” to Professor McCarthy’s famous “evil highway road sign” analogy:

Wagner's Coca Cola SignWhatever the criticisms might be to the doctrine of Initial Interest Confusion, including those detailed by our friends Ron ColemanMarty Schwimmer, and Eric Goldman, in the context of keyword advertising, the road-side restaurant sign shown [at left] definitely is “the real thing” for purposes of trademark initial interest confusion, in more ways than one:

It does depict the Coca-Cola brand, in all its glory, after all, so It’s The Real Thing, by definition.

And, unlike the very hypothetical scenario relied upon in the Wolf Appliance case, the above drive-in restaurant signage is real world and in current use, designed to attract attention, and has been for years, in fact, well after the business responsible for the sign dropped Coca-Cola for Pepsi. That’s right, “no Coke, Pepsi.” To twist Sean Penn’s words in I Am Sam, Wagner’s change was a “very bad choice,” at least in my humble opinion of taste.

Yeah, me too.  I used to think I liked Pepsi better.  Crazy!  It’s one more reason Steve and I are likethis.  More:

Last, it certainly is a good example of the Initial Interest Confusion doctrine at work.

Uh oh.  Like the old “Coke brings your ancestors back from the dead” story, I’m afraid this sincere run at resuscitating initial interest confusion is a grave error.  For now Steve would take us from the brand-laden anecdote and the cultural mix-and-match moment to — as if  he were a judge in a Lanham Act case! (some day, I’m sure!) — slapping some poor sap with legal liability over what’s probably just laziness, business logic or a little bit of both.  Here’s his real-life tale of interest, initially and heartbreakingly confused:

Minneapolis drivers on Highway 81 pull off the road for a great cheeseburger and a refreshing Coca-Cola, or in my case, Diet Coke. Only to find that there is no Diet Coke, or any Coca-Cola products for that matter, only Pepsi products. Drivers likely aren’t confused at the point of purchase, however, since the menu and interior soda fountain signage refer to Pepsi not Coke. Nevertheless, the exterior sign no doubt has steered more than a few thirsty types off the road over the years to end up purchasing Pepsi products, not Coca-Cola products.

Not me, however, I’m not even initially confused any longer, just annoyed with the change, and deciding with each visit, well in advance, to enjoy a chocolate malt instead of a soft drink, since I can’t have the real thing any longer at Wagner’s Drive-In II.

I’m not the first to say that, unlike a refreshing Coca-Cola® brand soft drink beverage product, this “detour of doom” argument leaves me flat.

Coca-Cola Sign of Good Taste

Lord, just show me a sign!

Read More…

Best of 2009: “Orange you glad you’re such mullahs?”

This was first posted on April 29, 2009:

William Lozito at Name Wire writes about a counterfeiting double-cross, or is it triple-cross or something more?, that is so byzantine in its fruity dimensions that only the wretched Zionist Entity could have hatched it. So, what happens when Jew oranges infiltrate the Islamic Republic of Iran’s citrus bins, formerly believed impregnable against the Elders of Zion and their nefarious schemes?:

Fruity Jew

Fruity Jew

[T]he seemingly innocent appearance of “Jaffa Sweetie Israel-PO” oranges was enough to make one Iranian official declare that “rogue elements” were trying to “disgrace the ruling government.”

As it turns out, those “rogue elements” were unscrupulous Chinese middlemen, who illegally used the “Jaffa Sweetie” brand name on their counterfeit fruit.

The problem was exacerbated by the fact that “President Ahmadinejad inadvertently distributed the fruit during a two day goodwill visit to the town of Salam in southern Iran.”

The Chinese and Iranian investigators have counter-claimed that they actually bought the real thing in Israel and simply forgot to remove the stickers before sending them on to Iran. One then must wonder if it is the brand naming of the oranges or the oranges themselves that is the actual problem?

Jujyfruits

Jujyfruits

The Iranians claim they want no part of “Zionist” oranges, but if the Chinese investigators are correct, then they have been eating them via China, branded as Jaffa or something else, for some time.

Well this much is clear: Of all the wicked Jews controlling the world these days, it’s the Chinese ones who are the worst, you know?

Hat tip to Pamela Chestek, a known insidious fruit-handler herself.

Comments at the original post.

Best of 2010: Moral rights in Massachusetts

First published April 12, 2010.

Lee Gesmer reported last month on a pretty important decision in copyright law:  A First Circuit ruling applying the Visual Rights Act, which–well, Lee says it very well himself, actually:

At the end, he had only his "honour"

Mass MoCA is the Massachusetts Museum of Contemporary Art Foundation a contemporary art museum in North Adams, MA.  Christoph Büchell is a Swiss “installation artist.”  Think very large, very avant-garde.  The New York Times describes his work “dense, fraught creations, which compress masses of material and objects into historically charged labyrinthine environments through which viewers walk, climb and crawl.”   Wow.  Sounds just right for good old, left-leaning western Mass.  Not.VARA is the Visual Artists Rights Act, a section of the U.S. Copyright Statute that gives grants artists “moral rights.”   For example, part of the law provides that the author of a “visual work” has –

the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation

The First Circuit held that the Museum violated this right when, after installation of a work that called for, among other things, according to the Times, “a burnt-out fuselage of a 737 airliner” it displayed the work without the artist’s consent.   That is, the artist stormed off after artistic differences with the museum, and  museum prepared to present the work, entitled “Training Ground for Democracy,” like or not.  Büchel sued under VARA, lost in U.S. District Court, but prevailed in the First Circuit, which is (I suppose) more sympathetic to moral rights than U.S. District Court Judge Ponsor had been.

Hm.  Sometimes I wish I had a scorecard to figure out how libertarians, and or mere free-market magic hand guys like me, are supposed to come out on “moral rights.”  I’ll say this much:  For a country that doesn’t speak a Romance language, the idea of a federal statute that protects “honor” is problematic.  And after all, if you buy the thing, can’t you just do whatever you want with it?  If you want to limit my right to do that, then by gum let’s bargain for such a limit.  (I guess that’s the difference between a “Judge Ponsor” and a “Judge Posner“!)

And yet I too have some sympathy, as a non-visual artist (i.e., “a face for radio”) who has tasted the bitter experience of having his own “work made for hire” simply put under another person’s name by the copyright holder (and no, the fact that it was a federal judge’s name, and the ABA that did it, did not make it any less bitter) when the collective work in question was reissued in a second edition.

I have sympathy.  I didn’t say I think it’s ok, ok?  I mean this is America.  We don’t need copyrights on our money and we don’t need statutes to protect the “honor” of creative types!  I think.  In fact if you read too much into “sympathy” I’ll accuse you of dishonor!  And we can duel.  Pistols at dawn!

Ah, yeah.  Well, this should be interesting, this moral copyright visual honor stuff.  Not that there’s anything wrong with that.

Best of 2010: Forget breakfast — eBay eats Tiffany’s lunch

Tiffany's NYCThe Second Circuit, unsurprisingly according to most commentators, has affirmed the decision of the Southern District of New York refusing to find eBay liable for contributory trademark infrintgement in the Tiffany v. eBay case.  I have been following the case since before it was filed (yeah, bitter as usual!) and have written bunches of posts on it — see, look?

In terms of the Second Circuit opinion itself, you can find that here.  If at some point I have something really original to say about it–after all the blogging is done by everyone else–you’ll be the first to know. But here’s a little roundup of “takes.” First, the WSJ Law Blog on the thrust of the story:

So long as eBay takes steps to remove listings it knows are bogus — and isn’t otherwise willfully blind to fraudulent sales — it can avoid liability, the court ruled.  Judge Robert Sack, writing for the three-judge panel, seemed to hang his hat on the “market”:

We are disposed to think, and the record suggests, that private market forces give eBay and those operating similar businesses a strong incentive to minimize the counterfeit goods sold on their Web sites . . .

EBay received many complaints from users claiming to have been duped into buying counterfeit Tiffany products sold on eBay. The risk of alienating these users gives eBay a reason to identify and remove counterfeit listings. Indeed, it has spent millions of dollars in that effort. . . .

Tiffany had argued that eBay knew it had a problem with counterfeit items being listed on its Web site and did little to clean it up. EBay insisted the obligation rested with the New York jeweler to identify and alert it to auctions of counterfeit Tiffany silver jewelry.

But that’s not the whole story, exactly, though it mostly is.  As Law.com’s Corporate Counsel explains:

The court sent the case back to the district level for more discussion of whether eBay may be guilty of false advertising because it promotes the presence of “Tiffany” products on its site in both direct advertisements and paid ads that pop up when users search for Tiffany on Google and other search engines.

Those ads could be deemed false, because eBay is aware that “a significant portion” of goods advertised as Tiffany items on eBay are actually counterfeit, the court said. (The exact percentage of counterfeit Tiffany items among all those advertised is in dispute). EBay has pointed out that its site contains a special “About Me” page for Tiffany (and controlled by Tiffany) in which users are told that any Tiffany item advertised for sale on eBay is likely to be a fake.

To win a false advertising claim, Tiffany will have to produce evidence that consumers were confused by the advertisements, the court said. So far, Tiffany has not produced that sort of evidence, which usually comes in the form of consumer surveys.

Read More…

Best of 2010: Gucci v. Frontline Processing: Giving credit for infringement where it’s due

First posted July 12, 2010.

This is an adaptation of a summary and analysis of the recent decision in Gucci America, Inc. v. Frontline Processing Corp., 2010 WL 2541367 (S.D.N.Y.), discussed here casually earlier. Jane Coleman’s definitive online treatise Secondary Trademark Infringement has recently been updated and the impact of this decision integrated into the text; a full update is planned for September. The complete analysis of Gucci, including full citations, can be found here.

The essential role played by credit card companies in online trademark infringement was recognized in Gucci America, Inc. v. Frontline Processing Corp. In that case, the court allowed contributory infringement claims to go forward against companies that had established credit card processing for an online counterfeit merchant. The payment for the counterfeit goods sold on its website was part of the infringing process, the court reasoned, drawing on Judge Kozinski’s dissent in Perfect 10, Inc. v. Visa Intern. Serv. Ass’n, and most of the infringing sales – of which the companies allegedly knew or should have known – were consummated using credit cards.

Gucci v. Frontline arose out of successful trademark infringement litigation brought by Gucci, the well-known manufacturer of luxury goods, against an online merchant operator of a website called “TheBagAddiction.com,” in which the owners admitted to liability for selling counterfeit Gucci products. Thereafter, Gucci turned to the three companies that had helped the merchant obtain credit card services, alleging both vicarious and contributory liability for trademark infringement. One of the three defendants, Durango Merchant Services acted as a middleman, while the other two, Frontline Processing Corporation and Woodforest National Bank, provided credit card processing services to the merchant.

In rejecting the defendants’ motion to dismiss, the court allowed the contributory liability claims to go forward as to all three defendants, but on different legal theories in accordance with their roles. As to Frontline and Woodforest, the court found the pleadings sufficient to allege contributory trademark infringement, based on their knowledge and control over the infringing activity on the website. As to the middleman, Durango, the court found the pleadings sufficient to allege contributory infringement based on an inducement theory.

As to Frontline and Woodforest, the court also found the pleadings stated a claim for contributory trademark infringement, based on the defendants’ knowledge and control over the infringing activity on the website. Citing eBay and Perfect 10, the Gucci court reiterated the direct control and monitoring test, stating that

[e]ven if a defendant does not seek out and intentionally induce a third-party to commit trademark infringement, it may still be held liable for the infringement if it supplied services with knowledge or by willfully shutting its eyes to the infringing conduct, while it had sufficient control over the instrumentality used to infringe.

Moreover, an allegation of the defendants’ general knowledge that infringement is taking place is not sufficient. “[A] service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods,” the court emphasized, citing further language in Tiffany that “’Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.'”

Both credit card processing companies either knew or should have known that they were servicing an infringing site, under the facts alleged, the court concluded. In both cases, a Durango agent had a dual role as both an employee of his company and a sales representative for the two credit card companies, and the court consequently accepted the allegations charging the companies with his knowledge. Thus, regarding Frontline, Gucci alleged that that company was aware of customers’ written acknowledgement of purchasing “replicas” as directed by the Durango agent. Read More…

Best of 2010: An opinion to Di for

First posted on May 5, 2010.

I do a lot of bellyaching around here about how there are never any consequences for filing frivolous trademark and copyright lawsuits. What’s the worst thing that can happen to a well-heeled plaintiff that wants to use the expense of defending, even meritoriously, against a “federal case” as a way to effectuate a “business message” (namely, you’re out of business, because we say so)? Usually, nothing. Not just usually. Really pretty much a lot usually.

"Do you have Princess Di in the can?"

Not this time.  This is a little dense if you’re not used to reading judicial opinions, but the payoff is worthwhile.  Emphasis is mine:

The Franklin Mint Company and its principals, Stewart and Lynda Resnick, (collectively, Franklin Mint) appeal from a judgment dismissing their malicious prosecution action against the law firm Manatt Phelps & Phillips LLP and attorney Mark S. Lee (collectively, Manatt). Manatt represented the executors of the estate of Diana, Princess of Wales and the trustees of The Diana, Princess of Wales Memorial Fund (collectively, the Fund) in a lawsuit filed against Franklin Mint alleging claims related to Franklin Mint’s use of Princess Diana‟s name and image in connection with merchandise Franklin Mint advertised and sold. . . .

We conclude that, based on the record before us, no reasonable attorney could find tenable the false advertising claim as it was alleged and litigated in the underlying action. Therefore, we hold there was no probable cause to prosecute that claim. We also hold there was no probable cause to prosecute the trademark dilution claim because no reasonable attorney could conclude that the claim could satisfy two fundamental, long-standing principles of trademark law. First, to be protectable as a trademark, a word, phrase, name, or symbol must be used in commerce to identify goods or services and their source. Although Manatt contends that Princess Diana used her name in connection with her appearances at charitable events, that use does not demonstrate trademark use. Second, a trademark that is descriptive — such as a personal name — must acquire secondary meaning to be protectable in a trademark dilution action. In other words, the primary meaning of the mark (i.e., the descriptive meaning) must in the minds of the public be subordinate to its meaning as the source of goods or services. Because “Diana, Princess of Wales” has such an extraordinarily strong primary meaning as descriptive of Princess Diana as a person, the contention that it had acquired secondary meaning at the time of the underlying lawsuit was, as the district court in the underlying lawsuit observed, “absurd.” (Cairns v. Franklin Mint Co. (C.D. Cal. 2000) 107 F.Supp.2d 1212, 1222 (Cairns III).) Therefore, we conclude that the trademark dilution claim was untenable.

Now this is really interesting on several levels.  One is the obvious one I’ve already alluded to–a court calling attorneys out and saying, “Stop the baloney.  You knew what you were doing here was fallacious, but you just kept doing it.  If malice and damages are proved, that’s actionable.”  It’s astonishing to read that.  Don’t even ask what has happened, in my own experience in the vaunted federal courts facing just such claims, that leaves me so dumbstruck reading this.

But then there’s the substantive legal stuff.  Diana, Princess of Wales, not a “trademark”?  Just because she’s mostly really a person (no longer a living one, granted, but you get the idea)?  But what about all those other celebrity trademark names? Read More…

Best of 2009: “The LIKELIHOOD OF CONFUSION® Twitter manifesto”

This was first posted on July 27, 2009.

The authors of many of the blogs I read that are topically related to this one now use Twitter. So do a lot of other people, and mostly they seem to talk about Twitter. They not only fail to recognize this as a problem, but I have even seen evangelists point to it as as something to be excited about. (I wrote more about this here so I won’t do it again.) Even more disheartening is getting tweets from people I otherwise respect telling me to go to such-and-such site and get 400 new followers “free,” presumably merely by promising to spam my existing followers with the same message. Dumb, dumb, dumb!

But I have learned how to meticulously add to the list of those I follow so that the vast majority of my (limited) tweeting time is spent on tachlis. My new and improved understanding of how to constructively utilize that flighty medium is not simply to maximize the number of people who will call themselves your “followers” in exchange for either automated reciprocity or some other trick that adds to their “followers” count, with no regard to whether this dumb audience cares about your feed. The tweets I send are overwhelmingly either blog posts or re-tweets of blog posts that I believe will be of interest to those who are following me presumably because they are interested in the things I already write about.

Twitter, in other words, is — as far as I can see — potentially useful only as a device for targetting narrowcasting of what you have to offer to an audience that cares. It is not the big schmear. To the extent my feed audience grows it will, I hope, be because more and people who read this blog (or my other one, which I know is not necessarily an ideal match) are either subscribing to it via Twitter or are among those colleagues and, of course, prospective clients or referral sources who “get it.”

All that was by way of introduction to the following: By virtue of this shift in media, noteworthy posts that once became posts here, either with a minimum of commentary or at least a riff, are now being “retweeted” by me — hence delivering value to my topically-oriented followers — but are frequently no longer making it to the big time. “The big time,” of course, is defined as a link on LIKELIHOOD OF CONFUSION®.

Well, that ain’t right. So following this post, which by the time I wrote it appeared to be worthy of its own slot, you will find the first of what will probably be a weekly occasional roundup of the last week’s by LIKELIHOOD OF CONFUSION®* topical trademark tweets. Copyright, too, and whatever else I write about here, but that would have ruined the alliteration. You can follow the links directly to the blog posts in question, so you need not be a twit yourself to benefit — though you may want to consider it.

* Which is me. Unlike some of my bloggy friends, some of whom are pictured here, the blog doesn’t have an eponymous Twitter feed, much less one Twitter feed for the blog and one for the man. LIKELIHOOD OF CONFUSION® is me, and I am it. I am diluted enough as it is!

Best of 2009: “Intellectual property and its digestion”

This was first posted on February 20, 2009:
Back and forth in in social networking space — once Facebook, I digest some key ingredients of intellectual property as it applies to famous burgers (reprinted with Ivan’s permission):
Today at 10:35am

Hi Ron,

I had an interesting IP question/hypo that’s been weighing on my mind the last couple of days. (At at least it seemed interesting to a non-IP person such as myself- there may be well-settled law on this. This is purely hypothetical, and I’m not seeking legal advice of any sort.)

A book entitled Top Secret Recipes, written by Todd Wilbur, became a top seller some time ago. It features the recipes of same famous franchise foods, like the Big Mac, or other foods, such as the Twinkie. (http://www.thesun.co.uk/sol/homepage/features/article2165816.ece). Presumably, Wilbur reversed-engineered these foods according to his taste, and then wrote the recipe book based on his experimentation.

My question is, did the author have to obtain permission/enter a licensing agreement of some sort with the litnany of franchises (i.e., McDonald’s KFC Yum Yum, et. al.), before publishing such a work? If the author did not get permission, do McD’s, Hostess, et. al. have a viable cause(s) of action against Wilbur, who presumably has profited as a result of publishing his interpretation of the recipes? Presumably, Wilbur did not convert any “trade secrets” as it were, but it does appear that he’s using their intellectual property for his commercial gain. What would the franchises’ cause(s) of action be in such a case?

I did a Google Search; there appear to be no suits filed in connection with this book. So I remain curious.

Thanks for reading,
Ivan

My answer: Read More…