Tag Archives: Dilution

Trademark parodies and iconic marks: can foul become fair?

In 2010 I wrote this post about a now-notorious case, eventually ensconced as Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 2012 WL 1022247 (S.D.N.Y., March 22, 2012) and covered intensely (as the links there indicate) by Marty Schwimmer among others, in which the Southern District of New York ruled that the Hyundai’s use of the iconic trademarks depicted on the basketball shown was not fair use.

Going against type, I argued that the plaintiff had something legitimate to say for its litigation approach, at least, considering everything; many others found the outcome quite unsatisfactory, urging that the use should have been viewed as that often claimed, but seldom seen, species of fair use called parody.  Evidently, as Mr. Schwimmer now reports, history is moving in favor the “anti’s”:

my-other-bag-beige-zoey-tote-product-1-16432681-3-104253920-normalclassic-zoey-mono2-257x300Followers of the legal treatments of parodies of trademarks may want to skip immediately to footnote 4 of the decision.

You see the top two pictures [at right]? One side of the bag says ‘My Other Bag …” and the other side is a depiction of an LV bag. Get it? Ok, that’s fair use. LV’s causes dismissed.

You see the picture of the ‘LV’ basketball [above]? The SDNY ruled in 2012 that that was actionable. And now this SDNY court says in footnote 4 that it won’t follow Hyundai.

And what, indeed, is in the bag that is Footnote 4?:

Even if Hyundai were not distinguishable, this Court would decline to follow it. In the Court’s view, the Hyundai Court blurred the distinction between association and dilution. As discussed in more detail below, association is a necessary, but not sufficient, condition for a finding of dilution by blurring. See, e.g., Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (“[T]he mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actionable dilution. . . . [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner.”).

That’s the way the ball bounces!

Best of 2010: Dough, a dear

First posted August 11, 2010.

Pillsbury Doughboy

“TM” this, “TM” that….

The Stay-Puft Marshmallow Man wreaked some havoc in his time, but who would have thought that his inspiration — the Pillsbury Doughboy — would act the part of a veritable Gozer the Destroyer himself, at the expense of a funky new-age bakery?

A few weeks ago, the founder of a Salt Lake City-based bakery, My Dough Girl, got a letter from General Mills, the conglomerate that owns Pillsbury. To the 45-year-old entrepreneur’s surprise, the food giant had written to inform her she needed to change the name of her business — claiming it was too similar to Pillsbury’s famous doughboy mascot — or she risked facing legal action. Cromar decided, essentially, that was just the way the cookie crumbles. “I started baking cookies as a way to bring happiness to myself and others, so I really didn’t need this to become some canker on my existence,” Cromar said. “Plus, I just don’t have the resources to fight them.” The case marks the second time in recent weeks that a major corporation has taken issue with a small business over possible trademark infringement.

“The second time in recent weeks,” eh?  That must be awful.

Doughboys

Over here

Sit down, have a croissant.  Let’s talk about this. Dough boy, dough boy, dough boy… where have I heard that? Right — over here (right) — those guys. But while there are batches and batches of DOUGHBOY trademark registrations — some dead, but plenty alive — it does seem that Pilsbury is understandably sensitive about the use of the term in association with baked goods, made famous by its lovable mascot, POPPIN’ FRESH® !

Well actually, a bunch of POPPIN’ FRESH registrations seem to have gone stale, but evidently he’s still a doll (Reg. No. 72307131), and ain’t he? Anyway, back to his, uh, generic name — the DOUGHBOY thing.

Well before we even talk about whether a bakery called DOUGH GIRL is likely to be confused with a commercial baked goods company’s DOUGHBOY , did you notice the graphic on top up there?  How Pillsbury uses a “TM” instead of a ® symbol all over its site?

That is interesting, isn’t it?  Pillsbury does, after all, have a couple of registrations — though not exactly the ones you’d think:

  • Reg. No. 2832951 is for “Baking mix for cake,” in International Class 030 — Staple foods, baked goods, just what you’d think
  • Reg. No. 2764538 is for “Refrigerated dough.”  Same deal.
  • Reg. No. 2091501 is for “Clothing, namely, T-shirts [and boxer shorts].”  Class 25.  Well, sure.

Ok, still, that seems close enough, doesn’t it?  If I were Pillsbury I wouldn’t want anyone selling baked good using DOUGHBOY either, and I’ve got some good and famous registrations to help me stop them.  So why does the Pillsbury site utilize the TM — a common-law assertion of trademark rights, rather than an indication of federal trademark registration — instead of the “circle R”? Read More…

Trademark on the Left Bank

Originally posted 2006-02-05 01:40:15. Republished by Blog Post Promoter

Interesting discussion, on one level or another, among non-specialists including Matthew Yglesias of a leftish stripe on the politics of trademark infringement at TPMCafe. They’re disappointed that Democrats are going along with the proposed changes to the federal dilution statute, and they should be. Yglesias links back to a column by Atrios, who says, “The original purpose of trademark law was to protect consumers from confusion, not to protect the sanctity of a brand.” Who’s said that before?

UPDATE:  Another point of view, via Instapundit.

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 2009: Char’ed, I’m sure

First posted December 8, 2009. 
black-bear-coffee-insidesmall-123005
Poor Starbucks.  So much trademark trouble they have!  Other trouble, too.  And now the people who gave you five-dollar coffee in a paper cup had lost another one — one they thought they had won, namely the Starbucks v. Charbucks case (decision here, posted by Marty; the real name of the case is Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.) involving trademark infringement and its genetic freak of a cousin: trademark dilution.

In fact, Starbucks lost this case a lot.  They lost and lost and lost.

Then, they won.  Starbucks won!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

At least, they won a shot at winning.  Which, given their litigation luck these days, must be like a double espresso administered intravenously, juridically speaking.  And, brand-wise.

That Law.com piece by Mark Hamblett in the last link is a good summary of the docket-slaloming.  For the law lesson, let’s just skip to smart person Rebecca Tushnet, who may or may not be fueled by caffeine when she blogs but all the same has done all the heavy lifting here:

As we all know, Starbucks is big and famous. Wolfe’s does business as Black Bear, a small business that sells coffee via mail order, the internet, and a limited number of New England supermarkets. In 1997, Black Bear began selling a dark roasted blend, Charbucks Blend, and later Mister Charbucks.

Read More…

New law of trademark dilution

My old friends at Kaye Scholer (link fixed!) give you the skinny on the new Trademark Dilution Act.  Bottom line:  Good for big companies.  Not so good for defendants. 

Louis Louis

Steve Baird makes some great points about the Louis Vuittion / student activities flier kerfuffle:

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium . . . boast[s] an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach – to discuss in the first panel: ”Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors . . .

Louis Vuitton – owner of the likely famous trade dress and individual marks depicted on the designer bag shown above – objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see TechdirtAbove the LawLaw of FashionEric Goldman’s Technology & Marketing Law BlogThe Volokh Conspiracy,Johanna Blakely, and Alison Frankel’s ON THE CASE.

While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.

Now, I must say:  To me, the tone and the tack are the entire tale, and the level of coverage on that ground is appropriate.  But not the content; not all of it, because, as Steve explains quite aptly, a lot of of what everyone is saying is wrong:

[I]t seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular ”trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.

Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public. . . .

Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all – if survey evidence were pursued on these facts – to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.

I think Steve is right on every point here.   Read More…

Dough, a dear

Pillsbury Doughboy

"TM" this, "TM" that....

The Stay-Puft Marshmallow Man wreaked some havoc in his time, but who would have thought that his inspiration — the Pillsbury Doughboy — would act the part of a veritable Gozer the Destroyer himself, at the expense of a funky new-age bakery?

A few weeks ago, the founder of a Salt Lake City-based bakery, My Dough Girl, got a letter from General Mills, the conglomerate that owns Pillsbury. To the 45-year-old entrepreneur’s surprise, the food giant had written to inform her she needed to change the name of her business — claiming it was too similar to Pillsbury’s famous doughboy mascot — or she risked facing legal action. Cromar decided, essentially, that was just the way the cookie crumbles. “I started baking cookies as a way to bring happiness to myself and others, so I really didn’t need this to become some canker on my existence,” Cromar said. “Plus, I just don’t have the resources to fight them.” The case marks the second time in recent weeks that a major corporation has taken issue with a small business over possible trademark infringement.

“The second time in recent weeks,” eh?  That must be awful.

Doughboys

Over here

Sit down, have a croissant.  Let’s talk about this. Dough boy, dough boy, dough boy… where have I heard that? Right — over here (right) — those guys. But while there are batches and batches of DOUGHBOY trademark registrations — some dead, but plenty alive — it does seem that Pilsbury is understandably sensitive about the use of the term in association with baked goods, made famous by its lovable mascot, POPPIN’ FRESH® !

Well actually, a bunch of POPPIN’ FRESH registrations seem to have gone stale, but evidently he’s still a doll (Reg. No. 72307131), and ain’t he? Anyway, back to his, uh, generic name — the DOUGHBOY thing.

Well before we even talk about whether a bakery called DOUGH GIRL is likely to be confused with a commercial baked goods company’s DOUGHBOY , did you notice the graphic on top up there?  How Pillsbury uses a “TM” instead of a ® symbol all over its site?

That is interesting, isn’t it?  Pillsbury does, after all, have a couple of registrations — though not exactly the ones you’d think:

  • Reg. No. 2832951 is for “Baking mix for cake,” in International Class 030 — Staple foods, baked goods, just what you’d think
  • Reg. No. 2764538 is for “Refrigerated dough.”  Same deal.
  • Reg. No. 2091501 is for “Clothing, namely, T-shirts [and boxer shorts].”  Class 25.  Well, sure.

Ok, still, that seems close enough, doesn’t it?  If I were Pillsbury I wouldn’t want anyone selling baked good using DOUGHBOY either, and I’ve got some good and famous registrations to help me stop them.  So why does the Pillsbury site utilize the TM — a common-law assertion of trademark rights, rather than an indication of federal trademark registration — instead of the “circle R”? The reason seems to be that Pillsbury is being careful, and is well advised by its counsel.  See, as the excerpt above readily demonstrates, they’re using the DOUGHBOY™ trademark (which, contrary to what some people think — and don’t bother to confirm — is not used in a way that “always seems to include the Pillsbury name”)  far more broadly on the site, and everywhere else in creation, it seems, than the uses described in these registrations.
My Dough Girl
Well, what would happen if they used the (R) symbol more broadly than their registrations authorize?  It wouldn’t be entirely ethical, or truthful, or maybe even legal… but would it be so terrible?  Not really, as Mike Atkins explains:

The Circle-R symbol indicates that a mark is federally registered. It’s irksome when parties use it without having met the rigors needed for its lawful use. It’s even more irksome that the Lanham Act doesn’t penalize owners for displaying the symbol when they haven’t earned it. Imagine the PTO’s reaction when it got the drawing of this applied-for trademark design— sporting the Circle-R — falsely signaling it already has a federal registration. The PTO’s response? A mild office action directing that “Applicant must submit a new drawing with the ‘®’ deleted because it is not part of the mark.” What else could the PTO do? Ignorance is probably responsible for most misuse, but fraud is at the heart of some of it. I only wish the Lanham Act punished knowing misuse.

Well, they do some things right at Pillsbury.   Read More…

An opinion to Di for

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…

Inducement to contribute to infringe … to roll on

Michael Atkins:

Novel causes of action for contributory cybersquatting and contributory dilution appear to viable here in the Western District [of Washington].

On Jan. 12, Western District Judge Ricardo Martinez refused to dismiss such claims plaintiff brought in Microsoft Corp. v. Shah.

In that case, Microsoft alleges defendants, among other things, induced others to engage in cybersquatting and dilution by instructing them on how to use Microsoft trademarks to increase traffic on their Web sites. Microsoft also alleges defendants sold a product that contained software that enabled buyers to create Web sites incorporating Microsoft marks to help sell emoticon-related software, including a video narrated by defendant Amish Shah.

Defendants moved to dismiss, arguing claims for contributory cybersquatting and contributory dilution are not recognized.

The court denied the motion.

This is an interesting development, and one to watch, in light of what I see as the overall reluctance of courts to extend the law of secondary liability for trademark infringement — including with respect to domain name registrars.