Tag Archives: Distinctiveness

The slide to genericide

Originally posted 2006-07-24 23:38:26. Republished by Blog Post Promoter

Evan Brown writes about everyone’s favorite candidate for the dustbin of trademark history — Google.

It’s obvious to me that Google has made a conscious decision not to police the use of its trademark as a verb, because as far as I know it never does. The reason is not obvious to me, however, since Google does indeed police other trademark infringements, including dubious ones. But I am very reluctant to second guess Google, which has been very, very good to LIKELIHOOD OF CONFUSION.

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…

Likelihood of — well, no, actually. Not.

Originally posted 2010-02-10 18:10:46. Republished by Blog Post Promoter

At least in some parts of the country, LIKELIHOOD OF CONFUSION is something judges actually sometimes don’t find.  Out there, for example.  No, the other side — yeah.  The left.  As Michael Atkins explains:

In Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC — a trademark case involving companies with the same name — the Northern District of California found that northern California is big enough for both parties. . . .  For good measure, the court also found no likelihood of confusion — independent grounds to grant defendant’s motion for summary judgment:

Although Plaintiff and Defendant share the same mark, they offer completely distinct services to distinct consumers in separate markets. Plaintiff’s assertion that the parties overlap in the area of real estate services paints with too broad a brush. The record unequivocally establishes that Plaintiff and Defendant’s respective businesses share little, if anything, in common. The lack of overlap is underscored by the paucity of evidence of actual confusion, which consists of nothing more than a few misplaced calls and a misdelivered package over the course of the last ten years. Viewing the record in a light most favorable to Plaintiff, the Court finds that no reasonable jury could find that the parties’ common use of the ‘Sand Hill Mark’ is sufficient to create a likelihood of confusion.

That’s right:  ”The paucity of actual confusion”–here’s a case where there actually was confusion, which is considered to be the silver bullet, usually mythical, of proving LIKELIHOOD OF CONFUSION, and the judge says, very nice, Mr. Plaintiff, but:

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…

I enjoy being a trademark lawyer

Originally posted 2009-03-27 17:28:28. Republished by Blog Post Promoter

John Welch at the TTABlog® has up what even he acknowledges is an “excit[ing]” post, in which he both imagines himself a woman and quotes this lively Trademark Trial and Appeals Board opinion excerpt concerning the resolution of the Chippendale’s dancer-boy trademark appeal I discussed a while back:

The TTAB appeal was a washout

The TTAB appeal was a washout

Judge David Bucher . . . asked “what purpose is served by prosecuting this application in light of applicant’s [incontestable] registration,” particularly in light of the burden it placed on the PTO? “Trademark Examining Attorneys laboring under demanding production requirements cannot afford to be time travelers, and few have advanced degrees in dramaturgy and theatre arts.”

Nonetheless, he found that the subject mark “would appear to be an original creation and an immediately recognizable symbol belonging to applicant alone, and hence, inherently distinctive.”

Judge Bucher accepted [drama iconology expert] Dr. Shteir’s conclusion that “the expectations of the all-female audience to whom the show was originally presented are critical to our decision herein.”

Yay for Judge Bucher!  Unfortunately for Chippendale’s, however, as well as LIKELIHOOD OF CONFUSION®, which opined that the seedy purveyor of undercooked beefcake should (not “would,” Mr. Welch!) win this one, the ellipsis above elides the words, “in a lively dissent.”

See John’s blog for learned analysis of the opinion, as well as thoughtful consideration of the practical lawyering and IP-strategy issues originally addressed in the comments here.

Chippendales cuffs-and-collar TM “distinctiveness” claim goes “gently” into that dark night

Originally posted 2010-10-03 23:33:41. Republished by Blog Post Promoter

Reuters reports on a high-class trademark story I’ve been following since my own dancing days:

The male erotic dancer company Chippendales stumbled on Friday when an appeals court ruled that it could not trademark [sic] the bow tie and shirt cuffs that the men wear.  The US Court of Appeals for the Federal Circuit said in a ruling which included a sketch of a fit gentleman shown from the waist up wearing only a bow tie and shirt cuffs that the US Patent and Trademark Office was correct in refusing to trademark [sic] the Cuffs and Collar costume.

“A fit gentleman”?  Fit?  Yes, certainly.  But “gentleman“?

Well, “gentleman” has long ceased to mean “gentleman,” after all.  I hear radio actualities where the cop says, “Then the gentleman proceeded to pistol-whip the granny and proceeded down toity-fifth street where he encountered the officers and was apprehended.”

And then, of course, there’s the “gentleman’s club,” inside of which the one thing you are not likely to encounter is, I can only speculate, a gentleman.  There are websites like that too, I hear.

But more on that sort of thing shortly.

Yes, of course this “fit” bloke is a “gentleman”:  Didn’t you read what the story said?  Look what he’s wearing:

Chippendales Outfit Denied Trademark Protection

Not an inherently distinctive trademark. Not that there's anything wrong with that.

A bow tie!  And detachable collar and French cuffs!  Sure, the collar and cuffs are attached to nothing but air, but still — what could be more gentlemanly than that?

Which is all very well and good… but evidently not enough to constitute protectible  inherent distinctiveness [see below re this correction -- RDC].  Sliding in half a day ahead of me, Patently-O explains why (and provides a link to the opinion, here):

In particular, the Board noted that strippers often wear revealing would-be professional costumes such as a stethoscope, utility belt, or chaps with a ten-gallon hat.  In this case, the Chippendales Cuffs & Collar costume appears directly derived from a Playboy Bunny costume [which also features a bow tie, detachable collar and French cuffs attached to nothing].  Based on these facts, the Board held that the Chippendales outfit failed the test for inherently distinctive trade dress outlined in Seabrook (CCPA 1977).

On appeal, the Federal Circuit first looked to determine whether the costume is part of the product design or only product packaging.  That distinction is legally important because of the Supreme Court ruling in Wal-Mart v. Samara Bros (2000) that product design is never inherently distinctive.  Here, the court held that the costume is product packaging — with the product being “adult entertainment services.” . . .

Here, the Appellate Court rejected the Board’s implicit holding that no costume on an adult entertainer could be inherently distinctive.  However, the Appellate Court agreed with the Board that the Cuffs & Collar costume was a “mere refinement” of the well-known Playboy Bunny costume.  As a result, the Cuffs & Collar costume failed the third Seabrook element and therefore lacks inherent distinctiveness.

Well, if “gentleman” doesn’t mean what it once did, don’t get me started on “adult” . . .

Either way, though, getting aced out by the Bunnies — that’s got to hurt.  I do feel somewhat vindicated by the ruling rejecting the proposition that “no costume on an adult entertainer could be inherently distinctive.”  Because I think I said something like that in my original post on this topic, or the comments to it.

Either way, it appears that the Chippendales boys are going to have to dance their way into the sunset, and the hearts of middle-aged women everywhere, without the coveted circle-R prestige that comes with “inherent distinctiveness.”  Sorry . . . gentlemen.

UPDATE:  Speaking of gentlemen — see Welch at the TTABlog on this story, and the comments here.

Then see the gentlemen below!!

Now that is class!

Restaurant knockoffs

Originally posted 2007-07-05 16:45:27. Republished by Blog Post Promoter

Michael Atkins writes about the frustrations of a restaurant owner who seems to think — oddly, for someone who’s already hired a lawyer — he can’t stop someone from copying his restaurant decor and theme.

Of course, Two Pesos v. Taco Cabana dealt exactly with that question, and pretty definitively, and, well, it did so 15 years ago. But Michael isn’t satisfied just embarrassing the New York Times, which also doesn’t get the story straight, asking opinions of chefs but not IP lawyers.  He trots out the big guns — our friend Bob Cumbow, of course — and positively dices and slices the proposition.

South Korean court affirms ridiculous STARPREYA ruling

Originally posted 2007-01-12 11:45:09. Republished by Blog Post Promoter

Michael Atkins gives us the post-mortem on this case that demonstrates what could delicately be called the home field advantage.

MasterCard card. Card card. Card.

Originally posted 2008-12-17 12:21:30. Republished by Blog Post Promoter

Mastercard Card

A reader writes to New York Times Q&A guy Stuart Elliot with a question that’s on a lot minds:  What’s with this “Mastercard card” stuff you hear on the commercials?  There are, evidently, two answers, the second of which was LIKELIHOOD OF CONFUSION®’s guess and the first of which is… well, here, read it for yourself:

“Essentially, many times it’s because we’re driving consumers to use their physical payment card,” says Jon Schwartz, a spokesman for MasterCard Worldwide in Purchase, N.Y., “so we must distinguish between our brand and the MasterCard-branded credit or debit cards that consumers utilize to make purchases.”

You must, eh?  Well, in this humble marketing-and-branding-savvy-law-blogger’s opinion, you’re not.  We can barely follow what you’re talking about, and that’s because what you’re talking about, Jon — can we call you Jon?, thanks — is incoherent.  MasterCard may think consumers understand this distinction via a 30-second spot, but how can they when it doesn’t even make sense no matter how long you stare at it in black and white?

MasterCard, he says, wants us to distinguish between these two things:

  1. “our brand” and
  2. “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”

Well, what is “your brand” besides “the MasterCard-branded credit or debit cards that consumers utilize to make purchases”?  Can people use the “brand” at the local haberdasher while keeping their plastic in their wallets?  And, far be it from us to give out free legal advice to a company that has more than once ignored a demand letter from us (and to good effect!), but if there is such a distinction — if (1) and (2) are not the same thing — then whose “brand” is the “brand” in (2), and why aren’t you suing them for trademark infringement?

Which leads us to reason number two:  Trademark infringement.

Another reason for the seeming redundancy is trademark issues. “MasterCard is a trademark name, which should be followed by a generic noun,” Mr. Schwartz says. That is because using a trademark as a noun could weaken its uniqueness, as the trademark lawyers for brands like Band-Aid, Kleenex and Xerox could attest.

That’s what we figured, but we were hoping for something better than that.

Is there a realistic concern that in a market saturated with credit and debit cards, even an iconic brand such as MasterCard could morph into a generic term for “any credit card”?  Is it really conceivable that the following conversation could take place?:

“Marge, can you get my wallet out of my coat in the back seat and pull out a mastercard for me so I can pay for the fillup?”

“Which mastercard, Fred?  The Amex mastercard or the Visa mastercard or the MasterCard mastercard?”

“Oh, it doesn’t matter.  One mastercard’s as good as another!  But let’s use the Visa mastercard.”

Survey says:  No.  Band-Aid, Kleenex and Xerox flirted with genericness because they were early and dominant entrants in categories they actually created and “owned” for years before other brands made a dent in their domination (see here for Band-Aid; Kleenex; Xerox).  In contrast, MasterCard presently holds a mere 27% global market share for “general purpose” charge cards.  With all due respect, MasterCard is in no danger of becoming a generic term for “credit card” — even though, yes, it has the word “card” in it.

“MasterCard card” is a bad advertising and marketing idea that’s distracting to consumers and, as we put it in the branding game, just sounds dumb.   Unless the Times got Jon Schwartz wrong, it seems that poorly thought-out rationales, both brand-wise and legal-wise (as they used to say on Madison Avenue), are driving the kard-kard koncept.  It should be kanned.

I rate! And I float!

Originally posted 2007-01-12 10:36:59. Republished by Blog Post Promoter

Got my genuine, secondary – meaning – generating TTABlog Floating Key Chain in the mail yesterday — just for being me! I knew I’d float to the top in this profession eventually. Now my keys will float as well, and perhaps some of my arguments before the TTAB will, too.

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

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…

In a family way

Family of Marx

Family of Marx

I’ve written, as is my wont, at great length regarding my skepticism about the “family of trademarks” concept. Well, once you’ve digested that, you may want to head over to Property, intangible, where Pamela Chestak — as is her wont — does some pretty darned heavy lifting on what seems to me to be a related idea:

It may make business sense to put ownership of related trademarks in different subsidiaries.  Under In re Wella, one can generally register similar marks owned by sibling companies, as long as it’s done properly.

But In re Koolatron Corp. discloses a risk I hadn’t thought about before, that is, that the registrations won’t serve the function of preventing the registration of the same or similar marks. How is that, you say?

You may need a chart to follow this one, but if you register trademarks for money, it’s probably worth doing so.