Which came first… the CHIKIN or the KALE? (Trademark Infringement Claim)

Would you confuse a dude wearing a T-shirt that says “EAT MORE KALE” with a Chick-fil-A product sold under the slogan “EAT MOR CHIKIN”?

…I’m guessing there is a 99.9% chance that you wouldn’t confuse the two.  (Ask any 3 year old… they NEVER confuse a leafy green or healthy snack of any kind, with a chicken nugget.)

Evaluating how likely you are to be confused as to the source of the products is a fundamental aspect of evaluating a trademark infringement claim.  In this EAT MORE KALE vs. EAT MOR CHIKIN trademark infringement claim, Chick-fil-A sent a cease and desist letter to Mr. Bo Muller-Moore who hand-prints and sells  “EAT MORE KALE” T-shirts.  The letter challenged the EAT MORE KALE mark by claiming that it is likely to cause consumer confusion and have a negative impact on the Chick-fil-A trademark.  (Chick-fil-A allegedly sells 537 sandwiches a minute under the EAT MOR CHICKIN mark.)

Since the likihood of consumer confusion is slim, in this case, Mr. Bo is challenging Chick-fil-A’s infringement claim… and doesn’t have any plans to cease and desist his T-shirt printing business.  (As of today… his website says he cannot fill any more orders for EAT MORE KALE shirts before Christmas.   It seems the media coverage of this dispute may have boosted Mr. Bo’s business.)

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

For more information: http://eatmorekale.com/ and http://www.nytimes.com article on 12/5/11 Chicken Chain Says Stop But T-Shirt Maker Balks and USPTO Serial No. 85412053 – “Eat More Kale”; USPTO Reg. No.  2197973, 2240326  – “Eat Mor Chikin”

FAME is a game changer for Trademarks

Registering trademarks with the USPTO helps strengthen brands by giving brand owners exclusive use rights as well as defensive powers to block similar marks.  FAMOUS trademarks are stronger and have broader defensive blocking powers against other trademarks.  One example of a strong, famous trademark is APPLE.

The iconic Apple logo is widely recognized by consumers and this FAME grants Apple Inc. the power to block the trademark registrations of other logos that include a confusing similar apple graphic.   Defining what is a confusingly similar trademark… is the million dollar question.  A few years ago APPLE challenged a “Green NYC” apple logo.

Would you have been confused by the two marks?  Would you have thought they were from the same corporate or municipal source?  (Take a look and see what you think.   If this logo had a leaf on the stem… would you be confused? http://www.nyc.gov/html/greenyc/html/home/home.shtml vs. http://www.apple.com/)  The end of the story, is that NYC had to remove a leaf from the stem of its “Green NYC” apple logo… and then it was granted trademark registration.

How about them apples….

BY: Vanessa Kaster, Esq.

For more personalized legal services contact me at vk@kasterlegal.com

For more information see: http://www.bloomberg.com/apps/news?pid=newsarchive&sid=aS6kWpRRWe9U&refer=us and USPTO Serial number 77975167 and Registration number 3753302.

Trademark Law: Using someone’s trademark in your book, blog or website

Using someone’s Trademark in your book, blog or website is something that you need permission to do.  Generally, trademark owners monitor use of their registered trademarks diligently and will often send cease and desist letters asking that unauthorized uses of their trademark be removed.  (For example the NFL and POPSICLE trademarks are heavily monitored and policed in this way.)

How do you figure out if a word is a registered trademark?  Sometimes you can tell by doing a quick GOOGLE search, or for a more definitive search look on in the USPTO’s list of registered trademarks.  Here are instructions for running a basic USPTO (US Patent and Trademark Office) search to see if a word is a trademark:

• Click – http://tess2.uspto.gov/
• Then Click on – New User Form Search (Basic)
• Enter your business name in the ‘Search Term’ field
• Click – ‘Submit Query’
• To be really comprehensive, Back-page and search the key words in your business name separately

If you discover that a word is a trademark, it is possible that the trademark owner will give you permission to use their mark… ask em.

You might enjoy knowing that the inspiration for this post came up last night while I was talking to my mom.  She is currently writing a children’s story about a horse that likes specific types of candies as treats.  So, in order to list the candies in the text of her story, it’s important to know which ones are trademarks and which ones are not.  This way she can acquire the needed permissions to use the trademarks.  (my mom’s site –  http://www.bayouponytales.com/ )

A monopoly over Red-Soled shoes denied to designer Louboutin

In the US, color alone may be protectable as a trademark when it identifies and distinguishes a particular brand.  This type of color, trademark protection is most common with industrial goods like fiberglass insulation that must conform to strict regulatory standards.  For example, ‘pink’ fiberglass is a trademark of Owens Corning.

FASHION, however, is another world entirely and the high-end shoe designer, Louboutin, was recently denied a monopoly over the color RED used on the soles of designer footwear.  Even though Louboutin was granted a US trademark registration for red soled shoes in 2008, a Manhattan judge recently held that Louboutin could not prevent Yves Saint Lauren (and other designers) from designing and selling red-soled shoes.  The judge also stated that Louboutin’s ‘Red Sole’ trademark registration was likely to be cancelled.

Wouldn’t it be strange to think of only one designer or fashion house owning an exclusive right to use a particular color?  The court thought so and held the fashion industry is a highly creative industry dependent on access to the full spectrum of colors.

(Interestingly, the judge did create a distinction between Louboutin’s Red Sole mark and other fashion color marks like the Burberry Plaid because the plaid is an arrangement of different colors and not a specific, single color.)

Enjoy this new freedom to paint your soles red.

BY: Vanessa Kaster, Esq.

For more personalized legal services contact me at vk@kasterlegal.com

For more information: NY Law Journal: http://www.law.com/jsp/nylj/PubArticleNY.jsp?id=1202510810474  and Judge Marrero’s 8/10/11 Decision:  http://www.nylj.com/nylawyer/adgifs/decisions/081111marrero.pdf.  Red Sole USPTO Registration # 3361597

Launch of .XXX domain puts Trademark Owners on Defensive

An adult entertainment domain .xxx (instead of .com / .net / .gov)  has been given the green light (or red light, rather) to launch later this year.  Evidently, the domain will promote ‘responsible business practices’ within the universe of on-line, adult entertainment.  The launch of .xxx has been received with mixed levels of support both from within the adult entertainment industry and without.

As .xxx primes itself to shimmy into existence, trademark owners are playing defense.  Obviously, there is concern that the launch of the .xxx domain will put trademark owners at risk of having their REGISTERED TRADEMARKS incorporated into unauthorized .xxx domains that divert traffic to porn sites.  This will impact all types of businesses, municipalities, non-for-profit organizations, educational institutions and blogs who own registered trademarks.  For example, TOYS R US which is a famous, children’s brand would take on a wildly different dimension if attached to an .xxx domain.  Not only would an unauthorized .xxx domain potentially tarnish the reputation of the brand but it could also divert internet traffic if it is not safeguarded against.

To minimize this risk, a defensive registration system has been set up for registered trademark owners to BLOCK the use of their marks in .xxx extension domains.  The defensive registration system is called SUNRISE B and it opens September 7, 2011 and closes October 27, 2011.  The initial registration fee with SUNRISE B is free, open to owners of registered trademarks (registered by 9/1/11), and will involve a verification process for approval. (Fees are anticipated to complete the defensive registration process.)

For more info –>  http://www.icmregistry.com.  Paid pre-registration is also available  through several providers.

BY: Vanessa Kaster, Esq.

For more personalized legal services contact me at vk@kasterlegal.com

Trademarks are a defense against cybersquatters

Popular internet domain names are a hot commodity… and brands and business names are often used as internet domain names.  (for example: www.coca-cola.com and www.nike.com )

Businesses often seek to register and own their business names and brands as internet domain names; however, it’s not uncommon for cybersquatters to beat them to the punch and register internet domain name out from under them.  What can be done if this happens?  If the domain name purchased by the cybersquatter contains a trademark owned by another party, then there a good chance that the cybersquatter will be forced to surrender the domain name.   A cybersquatter can be forced to surrender a domain name if: 1) the cybersquatter who registered the name has no legitimate business interest in the name; 2) the domain name was registered in bad faith; and 3) the trademark owner’s trademark is confusingly similar to the registered domain.

If all three of these points can be proven, then the domain name can be cancelled or transferred to the trademark owner.

For more info on TRADEMARKS and Exclusive Use Rights –> http://t.co/llWyfhN

 

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

Trademark Bullying: use common sense when enforcing your trademark

Enforcing and policing a trademark against unauthorized use is an important part of keeping a trademark alive, healthy, valuable and strong.  However, as with all things… there is a fine line between being strong and being a bully.  It’s important to use common sense to discern these two categories… because, not only is bullying unattractive (in any context) but it can also be counterproductive when policing trademarks.

Trademark enforcement is often based on ‘the likelihood of customer confusion’ …ie will folks at the store or shopping online be confused when making purchases and inadvertently buy one product instead of the other or think that the products are made by the same company.  If there is no way that folks could possibly be confused about the two products or the source of the two products… then Trademark Bullying begins.

For example, would you be confused when buying a $9 ‘Chewy Vuiton’ dog toy and think that you are actually buying a Louis Vuitton handbag?  …No.

For example, would you be confused when buying couch potato ‘South Butt’ loungewear and think that you are buying ‘North Face’ mountaineering gear?  …Probably not.

Not only are consumers not confused, but they think it’s funny and often rush to purchase the spoof brand once news surfaces of the alleged infringement.  Trademark Bullying in situations like these often increases the popularity of the alleged infringer.  What’s the moral?  Use common sense when enforcing a trademark and avoid Trademark Bullying.

BY: Vanessa Kaster, Esq, LL.M.

“Super Bowl” is a registered Trademark and permission is required to use it in advertising and promotions.

“Super Bowl” is a registered Trademark and permission is required to use it in advertising and promotions.

The NFL owns the registered trademark “Super Bowl” and using their trademark in a commercial context requires authorization.  For example you must get permission from the NFL to use the term “Super Bowl” in commercials, promotions and advertising of any kind, including ticket giveaways.  By contrast, the term “Super Bowl” can be freely used in news stories, commentary or discussions.  The difference in these two examples is commercialization.  If a trademark is used for a commercial purpose, then the use must be authorized by the trademark owner.

Many trademark owners aggressively police their trademarks and it is important to keep in mind that commercial use of a trademark term requires authorization.

See also USPTO registrations #3138590, #3343714, #76572704, #0882283, and #0846056 at www.uspto.gov and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com