Famous Trademarks Have Broad Protection (royal treatment) Reply

Famous trademarks are treated like trademark royalty and have broad protection against similar trademarks used on both related and unrelated goods and services.

For example, a winery applied for USPTO trademark registration of the term “PINK FLOYD” for wine and was refused registration because:

the applied-for mark consists of or includes matter which may falsely suggest a connection with PINK FLOYD the music group.  Although PINK FLOYD is not connected with the goods and/or services provided by applicant under the applied-for mark, PINK FLOYD is so famous that consumers would presume a connection.

The USPTO’s refusal to register the applied-for PINK FLOYD trademark for wine includes a four-part test used to evaluate the existence of a false connection:

The following is required for a showing of false connection under the Trademark Act Section 2(a)[in the U.S.]:

1. The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution;
2. The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
3. The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and
4. The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

This is one example of the broad protection granted to famous trademarks.  (Find another way to pay tribute to a favorite band or music group).

BY: Vanessa Kaster, Esq., LL.M.   

vk@kasterlegal.com

See also: a copy of the USPTO’s final office action for the PINK FLOYD application above [Serial No.77588367]; an earlier post on new business trademarks at http://wp.me/p10nNq-B; an INTA fact sheet on Famous and Well-Known Marks at www.inta.org; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a link to U.S. Federal Trademark Law at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

 

 

 

Dueling Noodle Trademarks: CHUBBY NOODLE vs FAT NOODLE Reply

CHUBBY NOODLE has challenged FAT NOODLE for using a trademark too similar to its own to sell noodles to folks in San Francisco.  Evaluating whether these two trademarks are “confusingly similar” will be key to the outcome of this lawsuit.  In trademark law, evaluating if two marks are “confusingly similar” is critical.  For example, will noodle-loving patrons be confused by the similarity of the CHUBBY NOODLE and FAT NOODLE trademarks (pictured below) and think these two separately-owned restaurants are related, affiliated or have the same owner?

Curiously, do you think the two trademarks look so similar that you would assume the two restaurants are related?

Are the CHUBBY NOODLE and FAT NOODLE trademarks more or less “confusingly similar” to you than these registered trademarks for other noodle shops?

In the lawsuit filed by CHUBBY NOODLE they also claim that, since the words “CHUBBY” and “FAT” are synonyms consumers are more likely to be confused and think the restaurants are related.  It will be interesting to see how this duel between the noodle shops pans out.

A copy of the complete complaint filed by CHUBBY NOODLE against FAT NOODLE is available at: http://insidescoopsf.sfgate.com/files/2015/01/11329862-0-48091.pdf

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

vk@kasterlegal.com

See also: other blog posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; the U.S. Patent & Trademark Office website at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

One can love chicken & Bob Marley tunes (ONE LOVE trademark dispute settles) 2

The ONE LOVE trademark dispute between Bob Marley’s estate and Raising Cane’s chicken finger restaurant raises some interesting trademark and copyright issues. According to Louisiana newspapers, the trademark dispute recently settled on undisclosed terms; however, the issue at the heart of the dispute is interesting.

THE ISSUE: Trademarking someone else’s song title for restaurant services.

THE STORY: In 2005, Raising Cane’s chicken finger restaurant obtained a USPTO registered trademark for ONE LOVE to be used to sell “restaurant services” (Reg. No. 3033511).  This same phrase ONE LOVE is part of the title and refrain to the famous Bob Marley tune, “One Love/People Get Ready,” recorded with his band The Wailers.  In 2007, Marley’s estate (represented by Fifty-Six Hope Road Music) applied for a USPTO trademark registration for ONE LOVE for “hotel, bar, and restaurant services” but was refused trademark registration because of the pre-existing ONE LOVE trademark registered to Raising Cane’s for similar services.  (A likelihood-of-confusion refusal).  The dispute escalated, the courts became involved and evidently the parties recently settled on undisclosed terms.

THE SCOOP: As demonstrated by this series of events, the title of a song will not necessarily block or cancel a USPTO trademark application or registration.  Songs and original music are protected by copyright laws; however, copyright protection does not extend to short phrases and titles.  The USPTO trademark registration system is available for protecting short phrases.  Timing of a USPTO application is also a determinative factor.  For example, if Bob Marley’s estate had applied for a ONE LOVE trademark to be used with restaurant and related services BEFORE Raising Cane’s applied for it, then the outcome would likely be reversed and Marley’s estate would have blocked Raising Cane’s trademark application.

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

vk@kasterlegal.com

See also: “One Love” dispute transfer order at http://www.scribd.com/doc/206584538/One-Love-dispute-transfer-order; an earlier blog post: Title Copycats; News articles: Raising Cane’s, Bob Marley estate reach agreement by Joe Gyan Jr, Bob Marley’s estate’s legal saga over Raising Cane’s ‘One Love’ to play out in Louisiana by Emily Lane on 2/11/14, and Raising Cane’s, Bob Marley’s estate settle ‘One Love’ slogan dispute by Diana Samuels on 5/23/14; the USPTO trademark search at http://www.uspto.gov/ @iplegalfreebies and www.kasterlegal.com.

MoveOn.org lawsuit- Trademark Infringement or Free Speech? Reply

Did you know that it’s a trademark infringement issue that Louisiana’s lieutenant governor has sued the nonprofit MoveOn.org over? (I gotta tell you that the defense of “free speech” keeps coming to my mind).

The trademark at issue is PICK YOUR PASSION [likely USPTO Reg. No. 4022761] which is owned by the Louisiana Department of Culture, Recreation & Tourism for the purpose of “promoting culture, tourism and business in Louisiana.”  The claimed infringement is an alleged misuse of the tourism trademark PICK YOUR PASSION by MoveOn.org which criticizes Louisiana’s governor for refusing to expand Medicaid with the following slogan, “LOU!SIANA Pick your passion! But hope you don’t love your health. Gov. Jindal’s denying Medicaid to 242,000 people.”

The complaint filed in the lawsuit alleges that MoveOn’s “political statement” (which is on a highway billboard, YouTube videos and television commercials) is a trademark infringement, because, it “confuses the viewing public as to the source” of the billboard message.

Confusion, specifically, the likelihood of confusion as to the source of goods and services is paramount in evaluating trademark infringement (codified in the Lanham Act).  However, the free speech protections granted by the First Amendment can be a defense to allegations of trademark infringement (parody is one type of free speech).  The general rule, regarding the free speech defense, is that “anyone, competitor, critic or comedian” is permitted to use a trademark to criticize the policies of the mark owner.   Here, MoveOn is using non-commercial speech to criticize the governor of the State of Louisiana and not the State’s Department of Culture, Recreation & Tourism (who owns the PICK YOUR PASSION trademark) with their political statement.  It will be interesting to see how this lawsuit develops.

It seems the lawsuit has already launched a whirlwind, national campaign for MoveOn.org to raise money and awareness about their political agenda.  It’s hard to say how many folks noticed the billboard on the I-10 interstate approaching Baton Rouge, Louisiana before the lawsuit was filed…. it’s getting attention now.

The MoveOn.org billboard was still up yesterday (3/25/14), when my mom took the photo above.  (And as a humorous post script, the next billboard on I-10 after the “pick your passion” billboard at issue touts a steamier message).

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

vk@kasterlegal.com

See also: The case, Dardenne v. MoveOn.org, case number 3:14-cv-00150 available at http://media.nola.com/politics/other/Dardenne%20Complaint.pdf; McCarthy On Trademarks, vol 4 and vol 6 on parody and free speech defenses; MoveOn.org which features the lawsuit on their website’s homepage at http://front.moveon.org/; The Louisiana Office of Tourism’s website at http://www.crt.state.la.us/;  photos by Pam Kaster at www.pamkaster.com; @iplegalfreebies and www.kasterlegal.com.

 

“DUMB STARBUCKS” – a fake parody Reply

Did you hear that a “DUMB STARBUCKS COFFEE” shop opened in California recently?  (AND this fake parody was a comedian’s publicity stunt)(AND the shop has already been shut down by the LA County health inspectors)?  In addition to branding the pop-up cafe with a mocked-up Starbucks logo that added the word “dumb” into the logo, the cafe also featured a virtually identical menu to Starbucks and added the word “dumb” onto the menu boards.  (For example selling “Dumb Iced Espresso” in a “Dumb Tall” size cup).

How was this permissible?  Short answer, it wasn’t.  Parody was being claimed although this was not a parody.  Folks often think that just because something is FUNNY it is legally a PARODY.  This is a not the case.  FUNNY ≠ PARODY.  Because this is such a common assumption it’s worthwhile to mention it again (and again, and again).  For a terrific analysis of the DUMB STARBUCKS parody claim see on my friend Ron’s blog www.likelihoodofconfusion.com (post written by Matthew David Brozik).

Not surprisingly, a spokeswoman for Starbucks Coffee said that despite the humor, the store cannot use the Starbucks name.

A few other interesting elements raised by this DUMB STARBUCKS parody claim:

• Dumb Starbucks made a claim that their parody was similar to Weird Al Yankovic’s music.  However, they left out a critical detail – permission.  Weird Al Yankovic ALWAYS gets permission for his music.
• The fact that the shop was closed down by county health inspectors is an interesting detail in this Dumb saga.  In fact, it’s not uncommon for various local inspection agencies to become involved when counterfeit merchandise is being sold (technically, the Dumb Starbucks scheme was a misappropriation of the Starbucks brand akin to counterfeiting).  If a trademark-infringing business is violating health or building codes in addition to selling counterfeit products, nipping them in the bud for applicable health or building code violations can quickly close the doors.  Hence this was the case with the Dumb Starbucks shop being shut down by health inspectors.

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

vk@kasterlegal.com

For more information see, TMEP on trademark parody section 1207.01(b)(x) at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e5036.xml; another blog post on parody; for other blogs posts on trademarks; @iplegalfreebies and www.kasterlegal.com.

Trademarks as Membership Marks – Hells Angels, Fresno Bulldogs Reply

Trademarks are often used as membership insignia for various organizations, groups and fans… like the Hells Angels and the Fresno State Bulldogs football team.  In fact, one of the primary reasons why a trademark registration is so valuable is because it can create a clear link between brands and their members and fans.  Members and fans generally want to be associated with brands and will wear merchandise bearing their favorite brands.  (The exclusive rights granted to an owner of a trademark registered with the USPTO helps make this happen.  By granting an owner exclusive rights to use a trademark on particular goods or services, then it’s easier to avoid customer confusion as to the source of the goods and services. This in turn often strengthens brands by increasing brand awareness and public recognition).

Using trademarks as Membership Marks can raise some interesting situations regarding trademark use and infringement.  Here are two interesting situations raised by membership marks that are registered USPTO trademarks:

• Hells Angels, Example #1: The Hells Angels motorcycle club owns registered   trademarks which are valuable membership insignia and the Hells Angels, like all trademark owners, have the right to pursue folks and businesses who use their trademarks without permission (ie trademark infringers).  In a recent NY Times article, the trademark attorney for the Hells Angels addressed the issue of pursuing trademark infringers by stating that, “[t]he intent is not just to punish the infringers but to educate the public that the Hells Angels marques are well guarded and not generic and that they must not be infringed upon.”  This statement relates to a strategy for dealing with other folks or businesses who use the Hells Angels trademarks without permission or who use confusingly similar trademarks.
• Fresno State Bulldogs, Example #2: Fresno State University in California owns registered trademarks featuring their bulldog mascot.  Wearing merchandise produced by the University featuring the bulldog mascot and team name displays allegiance to the team – ie “fan membership insignia.”  A recent NY Times article reported that it’s not only wholesome football fans who are flocking to buy and wear jerseys, shirts, hats and other merchandise produced and sold by the University bearing the registered bulldog trademark… but that a violent street gang has also adopted the Fresno State Bulldogs trademark and apparel as a gang symbol.  Evidently, the gang is purchasing and using legitimate University shirts, jerseys and other merchandise bearing the registered Bulldogs trademark as a gang symbol indicating gang membership.  Buying legitimate University merchandise is obviously not trademark infringement; although, it will be interesting to see how the University develops a strategy for dealing with upholding its brand image.  Unfortunately, the University’s registered trademark is now playing a double “membership” role… indicating two drastically different types of membership.

These two situations highlight two vastly different circumstances involving membership marks that are registered USPTO trademarks.  Reading NY Times articles on both situations described above that were printed only 20 days apart inspired this blog post on trademarks that are used as membership insignia.

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

vk@kasterlegal.com

For more information see, USPTO Registration 1136494 for one of the Hells Angels’ trademark registrations; USPTO Serial Number 86050169 for one of Fresno State’s trademark applications;  Pride and Peril of a Logo, published in the NY Times on 11/9/13 by M. Wollan and Despite Outlaw Image, Hells Angels Sue Often, published in the NY Times on 11/29/13 by S.E. Kovaleski, and the USPTO Trademark Electronic Search System (TESS) which is a tool for searching the USPTO’s database of registered trademarks and prior pending applications at http://tess2.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

Tory Burch vs her Ex – a Fashionable Trademark Dispute Reply

Evidently a “fashionable” trademark dispute is brewing between Tory Burch and her Ex-husband, Christopher Burch, over the launch of his C Wonder store and brand. Gossipers are saying that C Wonder is a cheap knockoff of the Tory Burch brand… and potentially infringes Tory Burch trademarks. (gotta love trademark gossip!)

The C Wonder store is down in Soho on Spring Street and much like its website, http://www.cwonder.com/ (which features a $44 top on the homepage)… the store is filled with fun items that are much less expensive than Tory Burch merchandise. By comparison… if you click on the Tory Burch website, http://www.toryburch.com, its homepage features a $375 dress, $250 pants and a $225 cardigan.

Do these price differentials matter? Yes… price always matters… even in the evaluation of a potential trademark claim. Interestingly, the evaluation of a potential trademark claim, like this Burch/Burch issue, includes an analysis of how likely consumers are to be confused as to the source or maker of the products and the PRICE of the items factor into the analysis. Generally speaking, consumers pay more attention to what they are buying when they purchase an expensive item. (Don’t you pay more attention when making larger purchases? Would you confuse a $44 C Wonder shirt with a $225 Tory Burch shirt?)

A trademark case that exaggerates this point regarding price and consumers LACK of confusion regarding the maker of products, involves dog toys called Chewy Vuiton (made by Haute Diggity Dog) which sell for under $20 and Louis Vuitton handbags which sell for over $900. The court noted the price differential between the items in its decision which held that there was no trademark infringement in the case. (Clearly there were other obvious differences between a squeaky dog toy in the shape of a handbag and an original, Louis Vuitton bag and the court held that the Chewy Vuitons were a successful parody of the Louis Vuitton bags).

Back to a possible trademark infringement claim between the Ex-Burches… and their brands… it will be interesting to see if and how this possible trademark infringement claim develops. Currently, as far as I know, this issue is merely a murmur of frustration that has sparked trademark gossip about a possible trademark claim. Stay tuned for more on this “fashionable” trademark dispute.

See also: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007); Jessica Pressler’s article, “His.Hers.” at http://nymag.com/fashion/12/spring/christopher-tory-burch-2012-2/; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

Come on… Coppola… don’t be a trademark bully (we love you for your movies!) Reply

You might have heard that Francis Ford Coppola and his family trust have sued a small restaurant in Novato, CA for trademark infringement over the use of the word “TAVOLA”.  THE RUB: Coppola’s restaurant Rustic (located on his winery) has a Tuesday evening dinner promoted as “A TAVOLA” and 50 miles south a small restaurant in a shopping center renamed itself “TAVOLA ITALIAN KITCHEN”.

THE PLOT THICKENS… due to Coppola’s USPTO trademark registration of “A TAVOLA” [Reg. No 4002828 for Restaurant services]. Because a trademark registration vests the owner with exclusive use of the registered mark for the designated goods and services… Coppola has a claim against the small restaurant.

BUT THE KINK IN THE PLOT… is that the dictionary definition of the Italian word A TAVOLA , as defined on Coppola’s own website, means ‘to the table’:

“Meaning ‘to the table,’ a tavola is a casual dining experience …. [a] way of enjoying a meal. Like eating at your family’s home, there are no menus. Instead, our servers will come to your table offering an assortment of dishes, from the evening’s meat, poultry and fish selections to pastas, pizzas, salads and desserts.” ( at http://www.franciscoppolawinery.com/visit/dine/rustic/a-tavola)

Since a USPTO trademark registration vests exclusive use rights in trademarked terms, any trademark application should be rejected if the applied for trademark merely describes the goods or services. In this case, A TAVOLA (according to Coppola) means ‘to the table’ which is descriptive of sitting at a table for dinner. The reasoning behind this USPTO policy for not registering descriptive marks makes sense: 1) you can’t keep other folks from using regular dictionary words to describe their own products, nor 2) can you inhibit competition by owning a dictionary word.

The USPTO defines the statutory basis for refusing registration of merely descriptive trademarks on their website:

statutory basis (Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), TMEP 1209 et seq) for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services

The major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. (at http://www.uspto.gov/main/glossary/index.html)

What happened here? How did Coppola get his trademark registration for A TAVOLA anyway? Don’t know. Perhaps there was ambiguity over the definition of the foreign word… although if the small restaurant can hang in there… it seems plausible that Coppola’s trademark registration could be revoked. I’m sure Coppola has his own side to the story and it does seems fishy that the small restaurant appears to have changed its name recently to include the word TAVOLA. If this is true then Coppola could claim that they are trying to appear associated with his restaurant. But the registration of a merely descriptive word as a trademark is a pretty serious no no. Undoubtedly the details are being hashed out now that a lawsuit has been filed.

If I lived close by to TAVOLA ITALIAN KITCHEN I’d go there for dinner to show my support (http://www.tavolaitaliankitchen.com/). Interestingly, they may be seeing a spike in business due to the lawsuit. The public is often keen to support the little guy in cases like this of trademark bullying.

See also: The case is Trustees of the Coppola Family Trust v. Torg Holding Corp., 12-cv-1646, U.S. District Court, Northern District of California (San Francisco); @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

ps: this post is dedicated to you Janet!!

The Naked Cowboy… wearing boots and a trademark Reply

It’s not optimal weather here in NYC today for wearing only a cowboy hat, boots, and briefs… in Times Square. But in better weather it’s likely that you have seen (or taken a picture with) the Naked Cowboy. He performs regularly in Times Square wearing only his cowboy hat, boots, briefs and a guitar. The words “Naked Cowboy” are emblazoned on the back of his briefs, on his hat and on his guitar…and the “$” is painted on his boots. Not only does he wear his brand… but he has also registered it as a trademark with the USPTO for Entertainment Services (Reg. No. 3792432). [Click here for photo]

In an attempt to challenge CBS for including a look-a-like character on their daytime show “The Bold and The Beautiful,” the Naked Cowboy sued CBS for trademark infringement. In an episode of the “The Bold and The Beautiful,” one of the characters appeared wearing only briefs, a cowboy hat, and boots while singing and playing the guitar…. and this prompted the Naked Cowboy to sue CBS. An interesting and critical detail to the lawsuit is that the words “Naked Cowboy” did not appear anywhere during the episode, the words were not on the look-a-like, nor were they spoken aloud. Nor did the look-a-like have “$” painted on his boots. Since the words “Naked Cowboy” were not used by CBS, the court held that there was no trademark infringement.

Additionally, the Naked Cowboy challenged the purchase from YouTube of adword advertising for the term “Naked Cowboy”… as well as the use of “Naked” and “Cowboy” as searching TAGS on YouTube. The court held that these actions did not violate the Naked Cowboy’s trademark because the words were not placed on any goods or containers or displayed in a way to indicate source or sponsorship.

If you were wondering if you would violate Trademark Law if you wore only a cowboy hat, boots and briefs… the answer is… NO. This is something you are free to add to your to-do-list. (you won’t violate Trademark Law, anyway)

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

vk@kasterlegal.com

The case: Naked Cowboy, d/b/a Naked Cowboy Enterprises v. CBS and Bell-Phillip Television – Case No. 11 Civ. 0942–BSJ–RLE. Opinion issued by the S.D.N.Y. on February 23, 2012. See also: http://dockets.justia.com; @iplegalfreebies and www.kasterlegal.com.

Lady Gaga defends her NAME as a trademark Reply

Lady Gaga successfully trumped the trademark application of a company who attempted to register her name as a trademark without permission.  Kind of sneaky to attempt to register LADY GAGA as a trademark to sell makeup and jewelry.  (Celebrities often get big bucks to endorse products).

Can a name be used as a trademark?  Yes!  If it’s your own name… or if you have a signed written consent to use another person’s name.  When submitting a trademark application to register another person’s name as a trademark, a signed consent must be submitted along with the trademark application.  In this case, a signed written consent would be needed from Stefani Germanotta to use her stage name, Lady Gaga, as a trademark.  (Could also be different if a common name like JOHNSON were at issue.. but LADY GAGA is unique name of a mega-superstar).

What happened?  The unauthorized LADY GAGA trademark registrations were cancelled.  (The unauthorized applicant filed for express abandonment of the trademark applications).  …and a lawsuit was filed in Manhattan.

For more info on this topic see also —> http://wp.me/p10nNq-4F .  The trademark applications at issue were serial numbers 85032486 and 85033835 filed by Excite Worldwide LLC. @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com