Tag Archives: Likelihood of confusion

A theory of likelihood of confusion

Originally posted 2007-08-24 08:02:28. Republished by Blog Post Promoter

The Legal Theory Blog excerpts from a recent article on the the back story of trademark litigation, by one Michael Grynberg:

The plaintiff effectively represents two parties. She defends her trademark and simultaneously protects consumers who may be confused by the defendant’s behavior. The defendant, by contrast, stands alone.The resulting “two-against-one” storyline gives short shrift to the interests of non-confused consumers who may benefit from the defendant’s purportedly infringing behavior. Ignoring these consumers is especially problematic given the ease with which courts apply pejorative labels, like “misappropriation” and “free riding,” to the conduct of trademark defendants. As a result, courts are too receptive to non-traditional trademark claims, like initial interest and post-sale confusion, for which the case for consumer harm is questionable.

More rational results are available by appreciating trademark litigation’s parallel status as a conflict between consumers. This view treats junior and senior trademark users as proxies for different consumer classes and recognizes that likely confusion among one group of consumers may affirmatively harm others.

I like anyone who tries to push back harm-to-the-plaintiff-free trademark lawsuits based on “non-traditional trademark claims,” and I have not read the whole article (I don’t think it’s available on line), but I don’t quite think this works. As a practical matter I do not believe that this “two against one” burden is a meaningful one for defendants; on the contrary, it is a burden the plaintiff has to carry: He has to convince the courts that not only he, but consumers, are being harmed by the alleged infringement.

Well, that’s how it’s supposed to work. The problems is the opposite one from what it seems Grynberg is saying: Judges ignore the consumer-harm burden placed on the plaintiff, and treat trademarks as rights in gross. Or at least, some do; and the corporate trademark bar most certainly wants them to.

Thus the problem is the mirror image of the one posited.  The solution: Don’t add a factor to the defendant side; merely recognize it on the plaintiff side. It’s been there all along, feeling lonely, judges.

But it is the Dark Side? Or just plain old The Force?

Originally posted 2010-09-22 15:59:36. Republished by Blog Post Promoter

Evan Brown:  “Behold the power of in rem actions“:

In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name.  In a sense, the domain name itself is the defendant. . . .

An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com.  Plaintiff filed an in rem action and sought a temporary restraining order (TRO). . . .

The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)

The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.

Oh, when the defendant is this naughty, Evan, a question such as “was it really consumer confusion”? — perhaps we could ask, instead, “Was there really LIKELIHOOD OF CONFUSION given the sophistication of consumers?”–is, as we say in yeshiva, “not really a question.”

You’ve got a copycat domain name, a competing business and, for heaven’s sake, the Golden Ring itself — actual confusion?  Don’t give me questions!  And as Evan says, it’s for cases such as this one where the wrongfulness of the act is, not surprisingly, matched by the ethereality of the defendant that Congress gave us the in rem action.  Powerful stuff!

Some intel on INTEL®

Originally posted 2010-04-07 03:15:14. Republished by Blog Post Promoter

CIA Headquarters - intel inside

There's intel inside.

BUMPED from January 1, 2010 and UPDATED due to decision (scroll to the bottom for the stunning conclusion):

Had you heard about this one from Mike Masnick?

Chip giant Intel has a bit of a reputation for being a trademark bully at times, threatening or suing many companies just for having “intel” in their name somewhere — including a travel agency and a jeans company. Now, before anyone brings it up, yes, as a trademark holder the law requires you to enforce your trademark against infringement, lest it become considered “generic” (such as xerox machines, kleenex tissues, aspirin and other brand names that became generic).  But, the key in all of those generic situations was that the use was applied to things that directly competed with the original brand’s products. People referred to other tissues as “kleenex” and it stuck. Intel’s lawyers seem to go out of their way to find potential infringement where there obviously is none at all.

Paul Alan Levy alerts us to the latest such case, where Intel has sued the operators of the Mexico Watch newsletter, because its domain is LatinIntel.com. Of course, the reason for that is that it is using the commonly accepted abbreviation of “intel” as short for “intelligence.” It’s common shorthand, especially within government circles, to refer to gathered intelligence as simply “intel.” . . .

More importantly, no one is going to look at LatinIntel.com and confuse it for the world’s largest computer chip maker. No one is going to look at that site and wonder how come they can’t order a Centrino processor. There’s simply no confusion at all. . . .

Well, when I first read that post, I thought Mike may just be on to something there. Here’s how I see it now:

UPDATE:  Intel loses (don’t get excited about the “decision” itself however!)

Yay us!

Glory and gratitude to my co-counsel Colby Springer who nailed it at oral argument.

MORE:  Is less.

Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2006-07-11 17:14:18. Republished by Blog Post Promoter

Dooney & Bourke's pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we crioticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace. The district court reasoned:

[I]t could not be more obvious that Louis Vuitton uses the initials “LV,” while Dooney & Bourke uses its trademarked “DB” logo. Thus, a consumer seeing these trademarks printed on these bags, either up close or at a distance, is not likely to be confused. . . . [T]he Dooney & Bourke bags only use their “DB” initials; there are no geometric shapes interspersed with the monogram. . . . [T]he colors used on the Dooney & Bourke bag are noticeably toned down, and consequently fail to evoke the characteristic “friction” sparked by Murakami’s bright, clashing colors, the Louis Vuitton marks create a very different overall impression (i.e., large interspersed shapes and initials in crisp, bold colors) than the Dooney & Bourke bags (i.e., tightly interlocked initials in dulled colors).

Vuitton's pattern


We disapproved almost identical language in Burlington Coat Factory. Utilizing a side-by-side comparison can be a useful heuristic means of investigating similarities and differences in respective designs, so long as a court maintains a focus on the ultimate issue of the likelihood of consumer confusion. Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing. The district court erred because it based its determination that confusion between the Vuitton and Dooney & Bourke marks was unlikely at least in part on an overemphasized side-by-side comparison. This is suggested by the district court’s comment that no amount of expert opinion, legal analysis, or demonstrative evidence can overcome the clarity that comes from direct observation.

Read that excerpt again, then re-read it; then email it to your favorite federal judge — and your favorite client or prospective client, or non-specialist lawyer dabbling in trademark, who can’t understand why the PTO doesn’t understand the difference between his spelling that uses a “z” and the other guy’s pre-existing registration that uses an “s”.  Again:

Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing.

Got it? Read More…

Best of 2011: Upper crust – the POCKET SANDWICHES croissants saga

Originally posted 2011-12-28 07:40:21. Republished by Blog Post Promoter

First posted on July 15, 2011.

Letters, we get letters.

Sometimes people just want to share their trademark woes with me. Sometimes they want free advice, or cheap advice, or just a broad, powerful if round trademarky shoulder to cry on. I am a man, and no one’s crying towel, yet — surely even a litigator can have feelings.

Carl Vennitti is no crybaby, but he has been sharing the story of nearly seven years of trademark-registration and opposition adventures with your tender-hearted blogger. His adversary: A little outfit called Nestle, another brutal chocolate-pusher but also famous as maker of — yes –

HOT POCKETS.

Hot Pockets. Carl’s mark (no, not Karl Marx! ahem): POCKET SANDWICHES — not (as originally written) CROISSANT POCKETS, and… not too confusing at all. Or is it?

Likely to be confused?

What do I know? Let’s ask the TTAB, which after dealing with some flaky procedural business — deftly addressed, as was the substance of the case, by (of course) John Welch shortly after the decision issued in May of 2011 — pulled that yummy concoction (one imagines) out of the microwave and laid it before us on a stiff wax-coated paper plate. Starved as we are for rich, IP-blawgy goodness, we reached for our heavy-duty plastic fork and knife and …

Ah, but first we must address the substantive crust of the matter before we bite into the hot, steaming mass and taste of the LIKELIHOOD OF CONFUSION analysis within. The better to let it cool off just a tad anyway, no?

It turns out that the opposer, Nestle, isn’t exactly quite the registrant of the trademark. It is a licensee of some foreign outfit that owns that piece of paper. Well, being a licensee is the same as being the real guy, right? Well, not necessarily. Certainly not necessarily in copyright… and also not in trademarks if you are before the TTAB. The Board noted that, even in the related District Court litigation, it had been recognized that, in a regular court, an “exclusive licensee of a trademark has the right to enforce the trademark” — but that this rule does not apply in the specialized context of a TTAB opposition proceeding:

We do not interpret the definition of “registrant” in Section 45 of the Trademark Act, 15 U.S.C. §1127, to include exclusive licensees to the extent that they may rely on Section 7(b) presumptions [of priority based on a first-use date in the trademark registration]. Licensees may enforce trademark rights, but must establish priority through evidence of use and may not rely on their licensor’s registrations.

That’s something to know and remember, right there! But before the inside of this hot sandwichy-type thing cools down too much, can’t we dig into the LIKELIHOOD OF CONFUSION (LOC) question?

Not so fast, hungry boy. Look, isn’t a Hot Pocket just, you know, a hot pocket? If it is, that’s a pretty weak trademark you have there! How can the opposer even oppose registration if it doesn’t even have a real trademark — i.e., a distinctive one?

Applicant argues that opposer’s mark, HOT POCKETS, is merely descriptive and the evidence of record is not sufficient to establish that it has acquired distinctiveness. . . .

Based on [a] survey in the first quarter of 2004 the HOT POCKETS brand commanded 96 percent brand awareness, meaning that when asked if a consumer had heard of the HOT POCKETS brand 96 percent responded yes. . . This evidence is sufficient to establish, at a minimum[,] that HOT POCKETS had acquired distinctiveness for frozen stuffed sandwiches by the first quarter of 2004, prior to applicant’s filing date.

Ninety-six percent? Yes, I’d agree — “at a minimum,” that’s distinctive, at least in the acquired sense, and that’s some rights you got there.

In view of the above, opposer has shown rights in the mark HOT POCKETS prior to applicant’s filing date and, thus, has established priority. We turn then to consider whether there is a likelihood of confusion.

My favorite part! Are you going to finish yours?  
Read More…

Jews for Jesus v. Google and Brodsky – update and analysis

Originally posted 2006-01-22 12:59:35. Republished by Blog Post Promoter

Jews for Jesus

I was on a panel called “Trademark Rights vs. Free Speech” at the Fall 2000 INTA Trademarks in Cyberspace Conference with Marty Schwimmer and David Bernstein. (Five years later I’m still glowing from the reflected brilliance!) The moderator was IP superstar Brendan O’Rourke, who cruelly, on-the-record, and correctly reminded me, “Ron, you lost the Jews for Jesus case, okay? Okay?” Yeah, well, okay. But that doesn’t mean the next guy–in this case, Google–has to! The “Jews for Jesus Whistle Blower” writes, at his Jews for Jesus blog:

Google has a few more days to respond to Jews for Jesus’ lawsuit over the rights to a blog. I bet Jews for Jesus is praying ferverently (and keeping their collective fingers crossed) that Google will give in. What is the likelihood that Google will set a precedent that all anyone has to do is sue Google and they’ll give in? Seems to me that Google is principled. And if they are willing to defend themselves against the government, there’s a good chance they’ll defend themselves against Jews for Jesus.

If Google doesn’t give in, will Jews for Jesus wilt? How much money do they have to pursue the control of a simple blog?

WB, they have plenty of money, and, as you cannily point out, they’re using this litigation to raise more. Jews for Jesus claimed (off the record) during the Brodsky litigation to have raised more in sympathetic donations than they spent on Thelen Reid’s legal fees. We’ll never know if that was true, but it’s food for thought.

As far as the “other side” went, although Steve Brodsky was the sole defendant and there was nothing but the most casual (well, and virtual) link between him and Rabbi Toviah Singer, certainly the two were aligned sympathetically. Rabbi Singer later told me that as a result of the controversy and the traffic that was generated as a result of the publicity for his website, a number of Messianic Jews (i.e., Christians with gefilte fish) returned to the Jewish fold. Maybe he was able to raise a dollar or too himself.

It is fair enough to say that the litigation was more helpful for J4J than it was for either Steve Brodsky, Rabbi singer or anti-J4J missionaries. The real loser, of course, was the law of trademark infringement, which still has not fully recovered. The most egregious aspect of J4J’s arguments on this point (as opposed to the even worse arguments–such as the cooked up “commercial use”–in the opinion) is the very premise that there is, with respect to these website cases, anything even approximating LIKELIHOOD OF CONFUSION.

As we put it in the Third Circuit brief which, among others, future Supreme Court justice Samuel Alito by all indications did not read (although he was on the panel that rubber-stamped the District Court decision with one sentence of affirmation):

Liability under the Lanham Act requires a showing, inter alia, of likelihood of confusion as to source. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). But, appellee has submitted no admissible proof to support a finding that confusion is likely.
. . .

[I]t takes virtually no time for even self-described “unsophisticated” users to quickly realize they are at Mr. Brodsky’s site, not that of appellee. The honesty of the non-confusing message on Mr. Brodsky’s website is in stark contrast to the defendant’s website in Planned Parenthood:

Because the words on the top of the page load first, the user is first greeted solely with the “Welcome to the Planned Parenthood Page!” It is highly likely that an Internet user will still believe that she has found plaintiff’s web site at that point.

42 U.S.P.Q.2d at 1438. That kind of confusion is simply impossible in the case of Mr. Brodsky’s website . . . In response to this argument, the District Court found that an individual may be a sophisticated consumer of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization.

The last two clauses in the excerpt above constitute a non-sequitur. They also make no sense in the context of the actual website at issue, which explicitly states its opposition to “the Jews for Jesus cult” and disclaims any affiliation with appellee. Concluding that Mr. Brodsky is not part of a Jews for Jesus organization does not require any particular “sophistication.” It only requires the ability to read.

In fact, the courts routinely define “sophistication” in much less “sophisticated” terms than did the court below, where a simple grasp of the obvious is all that is required to negate confusion. Thus, in Girls Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), the court ruled that “rational analysis” precluded confusion about whether the Girl Scouts were the source of a poster depicting a pregnant girl in the well-known uniform of the Girl Scouts appearing with the caveat “BE PREPARED.” Similarly, in Stop the Olympic Prison v. United States Olympic Committee, supra, 489 F. Supp. at 1123, a poster reading “Stop the Olympic Prison” was held not to violate the trademark of the United States Olympic Committee. The court reasoned as follows:

On the basis of its own examination of the poster, the Court finds it extremely unlikely that anyone would presume it to have been produced, sponsored or in any way authorized by the U.S.O.C. While at a fleeting glance, someone might conceivably mistake it for a poster advertising the Olympics, nobody could conceivably retain such a misconception long enough to do any harm: for example, there is no danger that anyone would purchase or display it as such.

Id. . . .  As in Girl Scouts and Olympic Prison, no rational person could believe that Mr. Brodsky’s message was in any way affiliated with appellee. The District Court nonetheless held that confusion is likely because Mr. Brodsky’s site is “related” to that of appellee [and that the use of the trademark was in fact more, not less, protected for this reason, on fair use grounds!-- RDC]. The court below inexplicably rejected the inescapable conclusion that consumers can dispel any confusion if they merely trouble to read Mr. Brodsky’s message, the way Chellathurai, Kalstein and Sanchez did.

If you’re still with me, here’s a last nail from the Third Circuit reply brief:

In defending the District Court’s likelihood of confusion analysis, appellee comes again to its prized exhibits: the three “confusion affidavits” of Chellathurai, Kalstein and Sanchez. There is little left to debate regarding whether these affidavits demonstrate confusion, or, more likely, the absence of confusion. This Court will simply have to read them. A076, A080, A257. Appellee suggests that the District Court found “initial interest confusion” here. Opp. Brief. at 37. But this doctrine is mentioned nowhere in the opinion below. Developed in a sales context, it has been applied only where “a potential purchaser is initially confused [such that] the [senior seller] may be precluded from further consideration.”

Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Thus it does not apply here. In fact, in Girl Scouts the Southern District of New York rejected transient confusion as proof of trademark harm in a social-commentary context:

Even if we hypothesize that some viewers might at first believe that the subject of the poster is actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.

304 F. Supp. at 1231. As the Girl Scouts court recognized, ephemeral moments of confusion that do not threaten to divert sales are not evidence of actionable harm under the Lanham Act. Real harm must be shown to overcome the constitutional protection of free speech:

No evidence is found anywhere in the record before the court that the poster has to date damaged the plaintiff in any way. No facts are presented to show that contributions to the organization have fallen off, that members have resigned, that recruits have failed to join, that sales . . . have decreased, or that voluntary workers have dissociated themselves or declined to support the honorable work of the organization.

Id. at 1235. Similarly, there is no evidence in this case of any actionable or even discernible harm that appellee has suffered as a result of Mr. Brodsky’s website. Even the court below admitted that the publicity surrounding this dispute was, far from harmful, undoubtedly a boon for appellee. A436-37. And all three supposedly confused affiants found their way to appellee’s website, undeterred by Steven Brodsky and more zealous than ever in their devotion to appellee. In fact, their reports to appellee negate the suggestion of confusion; again from Girl Scouts:

[I]ndignation is not confusion. To the contrary, the indignation of those who [reported the offending use] would appear to make it clear that they feel that the Girl Scouts are being unfairly put upon, not that the Girl Scouts are the manufacturers or distributors of the object of indignation.

Id. at 1231. This passage perfectly describes the three “confusion” affidavits here: indignant, yes, but certain that appellee was not the source of Mr. Brodsky’s website. They were not confused.

They were not confused. Unfortunately, a lot of people were, and are–about what the Lanham Act is, and is not, meant to protect, and don’t get this key point:  Indignation is not confusion. We can survive that, as long as too many of them aren’t judges.

It’s a good bet, as Whistle Blower suggests, that Google will get a better hearing than lone idealist Steve Brodsky did in his case, and not just because it is better heeled. (My old firm, Pitney Hardin, handled the Brodsky litigation pro bono.) And the issues are somewhat different.

Still, Whistle Blower says that the Reverend David Brickner, the pleasant, non-Jewish head of Jews for Jesus, thinks this is the second coming of the Brodsky case. Jews for Jesus attorneys Thelen Reid probably hope so (though perhaps not every Thelen Ried partner is singing from the same sheet of music on the topic of God and intellectual property). WB beleives that from a legal point of view this seems like somewhat wishful thinking. (Not to mention the fact that this case was filed in the federal court in New York, not New Jersey, and that Judge Lechner of the former court has retired and moved onto bigger and better things.)

Then again, the Rev. Brickner’s statement is hardly the first instance of wishful confusion to eminate from the the precincts of Jews for Jesus–not hardly.

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…

The Defenestration of Bayport

Originally posted 2007-07-17 14:38:05. Republished by Blog Post Promoter

Hardy Boys Footprints Under the Window

Detectives, defenestration -- delightful!

This item’s title would be a good name for a “Hardy Boys” book, but no, we’re talking about Bayport, Minnesota, home of the Anderson Corporation, not the home town of those All-American detective brothers. Still, a mystery remains: Is it easier to convince yourself an argument passes the “red-face test” or “smell test” before the Trademark Trial and Appeals Board than in “regular court”?

You’d think so from this stinker: the company that makes Anderson Windows, in a failed cancellation proceeding, trying to convince the Board that its trademark for PERMA-SHIELD windows is likely to be confused with the same mark for “coatings sold as a component part of power saw blades.” The blades are made by a tool company called Freud. Anderson’s argument: Well, they sell both of them at Home Depot, right?

Wrong. John Welch explains:

Andersen posited two situations in which a consumer might purchase both products: first; a small contractor who buys both products, cuts a hole in a wall with a saw, and inserts a window, while being exposed to both marks; second, a building contractor who sees both products displayed in a small lumberyard showroom. The Board, however, found Andersen’s claim of likely confusion to amount to “only a speculative, theoretical possibility.”

We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.  Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1391 (Fed. Cir. 1992).

Finding the connection between petitioner’s goods and respondent’s goods to be “so tenuous that the public would not view the goods as having a common source, even when sold under identical marks,” the Board dismissed the petition for cancellation.

I’m sorry, I have to repeat this one: “a small contractor who buys both products, cuts a hole in a wall with a saw, and inserts a window, while being exposed to both marks.” That is classic.

defenestration-of-prague.jpg

Now that I’ve had my fun and Freud has reaped this joyous result, what, really, can we learn from this?

I don’t believe the Anderson lawyers ever really thought this argument was a winner. I’m not suggesting bad faith, Heaven forfend, but I am suggesting this flimsy claim was filed in the anticipation of a “business solution.” In other words, Anderson’s guess was that Freud would fold. Freud, wisely, relied on its analysis, and enjoyed the catharsis.

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…

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…

Not quite Christie’s, not quite Sotheby’s

Originally posted 2007-12-12 13:15:54. Republished by Blog Post Promoter


“Christi Sothers”

Originally uploaded by Ron Coleman

But so very close to both! A branding mashup one block east of the Hyatt on East 42nd Street.