Tag Archives: Dilution

New law of trademark dilution

Originally posted 2006-10-06 16:15:10. Republished by Blog Post Promoter

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

Originally posted 2012-03-13 10:54:05. Republished by Blog Post Promoter

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Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody.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…

Unlovely SPAM

Originally posted 2007-01-08 22:45:17. Republished by Blog Post Promoter

Hormel won’t give up.  And neither will Spam Arrrest, LLC (which makes a great product I’ve 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.  spamA ridiculous three-and-a-half-year crusade meant to “take back” trademark rights arguably never earned under the guise of trademark dilution, the law that made trademark a right in gross for the privileged few; a claim — quite credible — that many smaller companies have simply folded their tents rather than defend their businesses, the very essence of IP enforcement abuse; an utter absence of LIKELIHOOD OF CONFUSION; certainly no evidence of damages and every reason to believe that the coinage of “spam” for junk email has done more to build this brand than anything, including Monty Python, could ever do; and a half million dollars donated to America’s most deserving (and, I might add, most handsome) sub-class of learned professionals.

Climbing off my tinned-meat box, here’s some interesting spice for your ham from the press release:

The Trademark Trial and Appeal Board, the federal administrative court charged with overseeing the national trademark office, has decided to hold the final hearing for case number 92042134, Hormell vs. Spam Arrest, before a live audience of trademark lawyers in New York City. The hearing will take place at the Practicing Law Institute in New York on February 23, 2007.

Now that is fascinating. Here’s a link to the schedule for the PLI course featuring this live argument. I’d attend in a second if I had been one of the torchbearers for Spam Arrest’s commitment to principle, freedom and justice. Since I’m not, I’ll have to use the $1,295.00 course tuition and buy things like food. Not Spam, of course. Nothing personal — doctor’s orders.

Dough, a dear

Originally posted 2010-08-11 11:48:46. Republished by Blog Post Promoter

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…

Best of 2010: Dough, a dear

Originally posted 2010-12-31 16:15:58. Republished by Blog Post Promoter

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…

An opinion to Di for

Originally posted 2010-05-05 21:28:31. Republished by Blog Post Promoter

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 2010: Mind bobbling!

Originally posted 2010-12-22 08:00:33. Republished by Blog Post Promoter

First published on March 9, 2010.

I’ve been known to sound the alarm about the rush to register trademarks, and all the more so to register anticipated trademarks.  I argue that — oh, forget it, even I’m tired of saying this over and over again.   Here’s what I said, one of the times I said it:

Yes man?

For well over nine out of ten new businesses, the odds of your idea sinking or swimming on the strength of a trademark are slim indeed, and slim too is the war chest most entrepreneurs bring to the battle of free enterprise. Prove to yourself and the world that you have a business plan, a product or service that people want, the ability to deliver it and to scale it up, the capitalization to fertilize all that and the smile of Providence on your efforts. If in the process you develop something worth protecting as a trademark, that mark has already been storing up goodwill and secondary meaning and is enforceable as against infringers under state law and Section 43(a) of the Lanham Act. If it would be a good, business-justifiable use of what is still early-stage capital to register your trademark at this point, by all means do it.

So there’s that.   On the other hand, what exactly kind of advice is … this?!:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

It doesn’t sound so different, does it?  Well, it was written by the icon, human trademark Seth Godin™, famous on the Internet for being famous, whose name I hear all the time and seems to be a guru of some sort though I missed class the day when they taught us why.   Well, I think Seth Godin™ is pretty much just about right there.

But Seth Godin™’s bit of advice comes to me via my very agitated friend Steve Baird at the Duets Blog, who is not at all happy with Godin on Trademark.  Steve promised, in fact, to have at that last excerpt in a later post (which he did do — here).  But for the moment, it suffices for him to take umbrage, and hard, at the suggestion by Godin that trademarks are a tad overused here on the Internet:

If we’re in the idea business, how to protect those ideas?

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client ‘owns’. News flash: trademark law is designed to make it clear who makes a good or a service. It’s a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol. They didn’t invent trademark law to prevent me from putting a picture of your cricket team’s logo on my blog. They invented it to make it clear who was selling you something (a mark for trade = trademark).

“Misuse”?!  Steve says like this:

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

Yes, Steve is more accurate than Seth Godin™, who seems to be more editorializing when he says “misuse” than he is describing the actual state of the law.  Steve makes an important point.  It’s one that he made in the seminar on LIKELIHOOD OF CONFUSION in which we both participated (and to which he invited me–thanks again!)(UPDATE:  PowerPoints here!) last week in Minneapolis, and which kind of made me lose the color in my face (the color in my hair is already gone) when I heard him say it:

With respect to what trademark law was designed for, and while I don’t consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of “purchasers as to the source of origin of such goods and services.” Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

He’s right, again.  No, it’s not a news flash, but sometimes… Steve, you’ll see.  When you get old, you … you forget, sometimes.  But indeed, today’s trademark law, both in the statute and in the cases, truly reflects “the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.”

But of course I got my color back.  (The face color only.)  Because to make his legal point, Steve makes Seth Godin™ and LIKELIHOOD OF CONFUSION®’s policy point.  And when I read his words closely, the pondering of them brought me back to that golden mean between Steve and Seth Godin™ … which I mean is probably closer to the latter. Read More…

Inducement to contribute to infringe … to roll on

Originally posted 2011-01-20 22:38:14. Republished by Blog Post Promoter

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.

Best of 2012: Sing, sing, sing!

Benny Goodman website thumbnail

The King of Swing

First published August 1, 2012.

John Welch suggests the musical question, “How is Section 2(a) false association like 43(c) dilution protection?”

Great question.  In other words, are the famous — even dead — different from the rest of us?

It came up in the context of this post on the TTABlog:

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (July 11, 2012) [precedential].

. . .

The Board applied the four-part test of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), to determine whether Section 2(a) applied:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant’s goods with the “well-known bandleader, composer and clarinetist.”

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans “galore” on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO’s evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant’s business.

And as to factor (4), the Board concluded that “Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection.”

The King of Bling

“Significant segment” means fuddy-duddies (like John) and people with the cultural memories of fuddy-duddies (like your blogger, who in fact saw Benny Goodman perform live).  Seems neat and clean, yeah?

So a commenter on the post asked as follows:

Perhaps my biggest objection to this opinion is the statement that “it is commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods….” This opinion nearly states that names of famous people essentially is entitled to all the benefits of 43(c) famous mark protection. Despite the relative obscurity of Benny Goodman, whom I never heard of even though I am over 40, he is given dilution protection.

Now, I can’t help if Anonymous doesn’t know who Benny Goodman is — indeed the description of the King of Swing as “obscure” raises questions as to the validity of anything he or she might say.  But John  responds, restraining himself with his legendary gentility, as follows:

Interesting point. Maybe you should write an article: How is Section 2(a) false association like 43(c) dilution protection?

Maybe.  Who would read an article by someone who thinks Benny Goodman is obscure?  But maybe the answer is not only that the Board is not granting these rights to the “names of famous people,” but rather to the present Goodman estate, in the corporate person of CMG Worldwide, which is actively working to exploit the rights; and that it is granting far narrower rights than would be available under dilution. Read More…

Best of 2010: An opinion to Di for

Originally posted 2010-12-24 01:30:01. Republished by Blog Post Promoter

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…

Sing, sing, sing!

Benny Goodman website thumbnail

The King of Swing

John Welch suggests the musical question, “How is Section 2(a) false association like 43(c) dilution protection?”

Great question.  In other words, are the famous — even dead — different from the rest of us?

It came up in the context of this post on the TTABlog:

The Board affirmed a Section 2(a) refusal to register the mark BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized), shown below, for fragrances, cosmetics, leather goods and clothing, finding that the mark falsely suggests a connection with the late band leader, composer, and clarinetist, Benny Goodman. In re Jackson International Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (July 11, 2012) [precedential].

. . .

The Board applied the four-part test of University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), to determine whether Section 2(a) applied:

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.
As to factor (1), the Board not surprisingly found that the applied-for mark is a close approximation of the name BENNY GOODMAN.

As to factor (2), the Board noted that performers commonly capitalize on their renown by licensing their names for collateral products, and so it found that consumers would associate Applicant’s goods with the “well-known bandleader, composer and clarinetist.”

Applicant argued that no one under 40 would know Benny Goodman, and moreover that there are Benny Goodmans “galore” on Facebook. However, Applicant failed to provide any evidence to support these assertions, and thus it failed to rebut the PTO’s evidence.

As to factor (3), there was no evidence of a connection between Benny Goodman and Applicant’s business.

And as to factor (4), the Board concluded that “Benny Goodman remains a well-known figure among a sufficient segment of the population as to support finding a false suggestion of a connection.”

The King of Bling

“Significant segment” means fuddy-duddies (like John) and people with the cultural memories of fuddy-duddies (like your blogger, who in fact saw Benny Goodman perform live).  Seems neat and clean, yeah?

So a commenter on the post asked as follows:

Perhaps my biggest objection to this opinion is the statement that “it is commonplace for performers and owners of well-known marks to expand their product lines to incorporate a diverse set of goods….” This opinion nearly states that names of famous people essentially is entitled to all the benefits of 43(c) famous mark protection. Despite the relative obscurity of Benny Goodman, whom I never heard of even though I am over 40, he is given dilution protection.

Now, I can’t help if Anonymous doesn’t know who Benny Goodman is — indeed the description of the King of Swing as “obscure” raises questions as to the validity of anything he or she might say.  But John  responds, restraining himself with his legendary gentility, as follows:

Interesting point. Maybe you should write an article: How is Section 2(a) false association like 43(c) dilution protection?

Maybe.  Who would read an article by someone who thinks Benny Goodman is obscure?  But maybe the answer is not only that the Board is not granting these rights to the “names of famous people,” but rather to the present Goodman estate, in the corporate person of CMG Worldwide, which is actively working to exploit the rights; and that it is granting far narrower rights than would be available under dilution. 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.