Give me original British Cadbury or give me death Reply

Easter chocolates (and the Easter chocolate trademarks) are big business.  It’s estimated that 50 million Cadbury Creme Eggs will be sold in the U.S. this year.  Who is selling the Cadbury Creme Eggs in the U.S. and how they taste on this side of the pond is at issue.  Evidently, Hershey owns the rights to make and sell Cadbury Creme Eggs (probably via an exclusive trademark licensing deal with Cadbury U.K.).  As per a recent PBS article, Hershey paid $300 million dollars for these trademark rights back in 1988 and has been enforcing the exclusive distribution rights to the dismay of British Cadbury loyalists.  Hershey’s enforcement has ruffled feathers of small shops that import and sell the British Cadbury chocolates.

Hershey’s position is that small shops (or shops of any size) should purchase the Cadbury Creme Eggs through them because they “own” the right to make and sell the chocolates here in the United States.  The British Cadbury loyalists who import and sell Cadbury made in the U.K. want to have their British Cadbury and eat it too!  It will be interesting to see how this dispute plays out.

The International Trademark Association provides a fact sheet on trademark licensing at: http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkLicensing.aspx

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

vk@kasterlegal.com

See also: Why some Cadbury-lovers are bitter that they can’t buy their favorite sweets at http://www.pbs.org/newshour/tag/hershey/; more posts on exclusive trademark rights at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademark-exclusive/ @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.

Imitating Others On Social Media Reply

Social media sites generally frown upon users who imitate others and list impersonation as a no-no within their Terms Of Use and Privacy Policy.  By using, joining or registering with a social media site, folks “agree to” and “accept” the terms and policies of the social media site.  Note, that the terms and policies of a social media site (that you should, although, may have never read) apply merely by the simple act of using the site, joining or registering.

Imbedded within these terms and policies are several common elements that relate to impersonation and the treatment of imitators.  Often, these are listed as things that a user is permitted to do and not do.  “Shall not” language is commonly used in these lists (perhaps modeled off the Ten Commandments).  Here are a few examples:

THOU SHALT NOT (as per terms and policies of various social media sites):

• provide any false personal information on Facebook, or create an account for anyone other than yourself without permission [excerpt from Facebook’s Statement of Rights and Responsibilities]
• create any account for anyone other than yourself without such person’s permission [excerpt from Foursquare’s Terms Of Use]
• use a User Name that is the name of another person with the intent to impersonate that person [excerpt from Foursquare’s Terms Of Use]
• post content or take any action on Facebook that infringes or violates someone else’s rights or otherwise violates the law [excerpt from Facebook’s Statement of Rights and Responsibilities]
• upload, download, post, submit or otherwise distribute or facilitate distribution of any Content on or through the Service, including without limitation any User Submission, that:
  • infringes any patent, trademark, trade secret, copyright, right of publicity or other right of any other person or entity or violates any law or contractual duty;
  • you know is false, misleading, untruthful or inaccurate;
  • impersonates any person or entity, including any employee or representative of Foursquare  [excerpt from Foursquare’s Terms Of Use]

These are short, illustrative excerpts from the Terms and Policies currently posted on the Facebook and Foursquare sites.  The Terms and Policies also include information on how to report imitators.  Generally, a valid imitation claim will result in the imitator being removed from the site and possibly forfeiting other privileges and use of the site as well.  While Terms and Policies are subject to change, discouraging imitation will likely remain standard protocol.  Social media sites have a vested interest in discouraging imitators on their sites, because, this keeps their sites user friendly for original celebrity users.

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

vk@kasterlegal.com

The Terms of Use and Privacy Policy for various social media sites can generally be found with a Google Search or are available on the social media site, often at the bottom on the login page. 

See also: a related post on What to do if someone is using your stuff on social media sites; The Terms of Use and How to Report Claims of Intellectual Property Infringement posted on Facebook at https://www.facebook.com/legal/terms and https://www.facebook.com/help/www/39922488347420; @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.

 

Maasai Trademark – Maasai tribe wants control over commercial uses of its name 2

The Maasai tribe in Tanzania has a unique identity, name and culture that various companies use to sell products.  For example, Diane von Furstenberg sold pillows and necklaces using the Maasai name and Jaguar Land Rover sold a limited-edition vehicle named after the tribe.  Presently, the Maasai tribe is seeking control over commercial uses of its name.   Seems fair for the Maasai tribe to share in the profits earned by folks using their name, especially, since the Massai name is used to invoke the integrity, sensibility and style of the tribe members.

Personally, I find the arguments against granting the Maasai tribe ownership rights, trademark rights, and licensing rights to their name offensive.

CLAIM 1 AGAINST THE MAASAI OWNING THEIR NAME: because the tribe has never made an effort to enforce ownership of its culture and name until now, the rights have been lost.

COUNTER THIS CLAIM: To me, this is a rather colonial, imperialistic view of rights and ownership; however, tribes and indigenous people all over the world continually fight against this claim.  In an effort to set a global standard for respecting indigenous peoples’ rights in their names, culture, trademarks, traditional knowledge and other intellectual property, the UN has adopted a Declaration on the Rights of Indigenous Peoples.  It may take a high profile challenge by the Maasai to raise international awareness regarding the rights of tribes and indigenous people to their name, trademarks, customs, traditional knowledge and other intellectual property.

CLAIM 2 AGAINST THE MAASAI OWNING THEIR NAME: “It’s a nice idea, but if it would work, the French deficit would be gone by asking for royalties on French Fries.”

COUNTER TO THIS CLAIM:  A more accurate comparison than the french fry comment (which I don’t believe the French have ever claimed and may not even want) is the French zeal and persistence in successfully laying claims to and defending the right to use the word CHAMPAGNE as a regional indicator of bubbly wine from the Champagne region of France.

Evidently, the Maasai have launched a campaign to reclaim their name, traditional knowledge and other intellectual property so that they can share in the profits made off their name and likeness.  (They also have an attorney and a USPTO grant for support).

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

vk@kasterlegal.com

For more information see, The United Nations Declaration On The Rights Of Indigenous Peoples at http://www.un.org/esa/socdev/unpfii/documents/DRIPS_en.pdf; WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore at http://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_26/wipo_grtkf_ic_26_inf_8.pdf;  article by Stephan Faris in Bloomberg Businessweek magazine titled, For Years, Companies Have Been Making Millions Off The Maasai Name, Now The Tribe Wants Its Cut; @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.

Keep Calm and Carry On (#$&!@!) a Trademark Dispute 4

A trademark dispute is brewing around the phrase “Keep Calm and Carry On.” Contrary to the intention of the phrase… folks in the UK are fighting over the exclusive right to own the phrase as a registered EU trademark.

The phrase originated as part of a government propaganda campaign in the UK during World War II (not very popular at the time) and has morphed into a marketing phenomenon within the last decade. Evidently, a long-forgotten propaganda poster was rediscovered by a bookshop owner in England thirteen years ago. Upon discovery, the bookshop owner framed and hung the poster in his shop, Barter Books… and customers began noticing the catchy phrase on the poster… and the bookshop owner began creating and selling merchandise. Then along came another Englishman who trademarked the phrase within the EU and began creating and selling more merchandise. (See Application No. 010494441). Hence the brouhaha begins.

Barter Books has challenged the EU trademark registration of the phrase “Keep Calm and Carry On”… claiming that the trademark registration is an unjust monopoly over a piece of history. The legal opposition to cancel the trademark registration should be decided soon. In the meantime… please remember to heed the warning to Keep Calm and Carry On.

For more information: Check out Barter Books at www.barterbooks.co.uk and www.keepcalmhome.com; EU Community trademarks can be searched at:http://oami.europa.eu; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq. LL.M

vk@kasterlegal.com

Haunted House movie raises a ghostly trademark dispute – WINCHESTER MYSTERY HOUSE Reply

The spooky and haunted WINCHESTER MYSTERY HOUSE is the source of a trademark dispute. Last week, a California appellate court affirmed a grant of summary judgment against Winchester Mystery House, which had claimed that a movie production company had infringed its trademark by making a film, “Haunting of Winchester House,” based on the haunted tourist attraction.

QUESTIONS: Does the movie title, “Haunting of Winchester House,” infringe the trademark “WINCHESTER MYSTERY HOUSE”? Does the use of a sketch of a fictional representation of the Victorian-style mansion on the DVD cover infringe the design trademark of the house?

The court held that there is no infringement. Here is an excerpt from the court’s holding:

Here the plaintiff’s marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. There was an actual Sarah Winchester, who, according to legend, created a Victorian-style mansion to fend off ghosts. A film that is based on a “true” story will inevitably have a more powerful impact on those who enjoy ghost or horror films. Thus, defendant has used “Winchester House” in its title and a Victorian-style mansion on its DVD cover, which are similar to plaintiff’s marks, and created a fictional work based on the historical figure Sarah Winchester and her allegedly haunted mansion. In our view, where marks have historical significance and similar marks are used in the title of an artistic work or advertising, the Rogers test adequately ensures protection of both the public interest in avoiding consumer confusion and the public interest of free expression.

The Rogers test is a two prong test, applied by the court in this case, to test trademark infringement. The first prong requires that the title of the film have artistic relevance to the content of the film (low threshold of minimal artist relevance). Here in this case, both the Victorian-style mansion on the DVD (which is not the actual Winchester House) and the title “Haunting of Winchester House” have some artistic relevance to the film. The second prong of the test requires that the title and cover of the DVD do not “explicitly mislead as to the source or content of the work.” Here in this case, since there is no suggestion that the film was endorsed, authorized or produced by the plaintiff (Winchester Mystery House or Winchester Mystery House, LLC) there is no misleading nor misrepresentation as to the source or content of the film.

Happy Halloween! Read more about the spooky legend of the Winchester Mystery House –> http://www.winchestermysteryhouse.com/

See also: the holding for the California Court of Appeal, 6th Cir; USPTO trademark registrations 85294333 and 3749783; and www.kasterlegal.com; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

White flag raised in Louboutin Red Sole lawsuit Reply

The legal battle between designer shoe makers Christian Louboutin (known for his signature red sole shoes) and Yves Saint Laurent (who started selling a monochromatic red-soled shoe to match an all red outfit) has come to an end with YSL agreeing to dismiss its lawsuit against Louboutin.

After two rounds of trials ending with NY Judges questioning and narrowing the scope of Louboutin’s trademark for ‘red-soled shoes’… YSL has decided to end what was left of the litigation and dismiss the case.

YSL considers the case a victory and YSL’s attorney has reportedly stated the reasoning behind this decision as the following: “[b]y dismissing the case now, Yves Saint Laurent also wishes to ensure that the Court will not make any further rulings that put at risk the ability of fashion designers to trademark color in appropriate cases.”

The Louboutin ‘Red-soled trademark” lives on!

See also: YSL Drops Louboutin Suit at http://www.wwd.com/business-news/legal/ysl-drops-louboutin-suit-6418160 by A. Steigrad; Red Sole USPTO Registration # 3361597 @iplegalfreebies and www.kasterlegal.com

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

vk@kasterlegal.com