The New Dan

Dearest Readers,

Dan Corbett set an impressive standard for this site.  When you ask this young man who his favorite bloggers are in the field, he delivers a spreadsheet.  Ask him, “what is a blog?” and he patiently indulges your willful technophobia.  It seems he grew up without a speed-limit on the information highway.  I was young in a simpler time, when kids were not allowed to touch the computer.  That said, I hope to stay relevant and keep everyone coming back for more.

Owner: Coca-Cola Co.

My first recollection of trademarks involved customer confusion and a cola company trying to protect its brand.  You may already know this story, but when I was a kid growing up in Kansas, one could walk into a restaurant, order a Coke®, and get any number of cola brands in his cup. For many good reasons, the cola companies required servers to disclose what brands, in fact, were served if a customer asked for a cola by brand-name.

Imagine a cola company’s point of view; surely they want to protect their brand’s reputation for taste, to leverage their advertising and sales efforts, and to prevent a phenomenon known as “genericide.”  Genericide will get its own blog-post one day, but in short:  it is the death of a trademark due to the fact that it is now a generic term and no longer indicates the source of a product or service.

My first formal education in the law of trademarks was in 1991.  Freshman-year, studying journalism and creative writing at IU in Bloomington, I learned that brand-names were off-limits for print.  The concept that some words were off-limits grabbed me as a challenge.  I grew enthused with the idea that I would write a novel chocked-full of as many brand-names as I could imagine.  Let’s face it, a character wearing sunglasses, using a cotton swab to remove the red chili pepper sauce from his right nostril, begs the question:  What brands does this guy buy?

Fear not, I’ve grown to appreciate the rules of capitalism since then.  Fourteen-years of legal practice have set me straight.  I aim to continue to do the following, but not limited to:

1. Contribute reliable information,
2. Stay relevant,
3. Entertain readers about the wily adventures of trademarks,
4. Humbly accept underwriting in any form, including brand-placement (we’ll talk terms later),
5. Listen and respond to reader-inquiries as efficiently as humanly possible.

Stay tuned, the next blog will explore the certification mark: “Made In USA” and we’ll see what reports come from the holiday marketing campaign this past season?

In the meantime, please enjoy this game for the bored:  As an experiment, try to go 2 days without using a brand-name.

Daniel T. Friedson

2013, Jan 6th

Signing Off (and Turning Over the Keys)

After more than three years of blogging at Pittsburgh Trademark Lawyer, this will be my last post.  I am leaving Elliott & Davis (the firm that has graciously indulged my blogging habit this entire time) to pursue other professional opportunities.

I have enjoyed the last three years, and, as someone who firmly believes in learning through teaching, this blog has been an incredible learning tool.  It’s forced me to stay current on developments in the law and has kept me armed with interesting cocktail-party-type anecdotes (e.g., the legal implications in Mike Tyson’s face tattoo) that have hopefully (at least to some degree) dispelled the notion that lawyers are boring or square.

I want to thank everyone who has read the blog (regularly or casually) of the past three years.  I’m grateful to have developed a steady flow of traffic that I wouldn’t have thought possible back when I was just getting started.

Finally, I’ve made some really good friends in the process.  Special thanks to Jim Singer, Tom Galvani, Ron Coleman, Ryan Gile, and Jack Greiner for their sharing links, thoughts, and experience.

But my departure doesn’t mean the end of Pittsburgh Trademark Lawyer—not in the least.  (Insert appropriate “the end is the beginning” type clichés here.)

I’m happy to announce that Daniel Friedson will be taking the helm in my absence.  Dan will roll out his first post early in the New Year, but I am confident that I’m leaving you in more than capable hands—another Dan, another journalism guy, and (a credential I can’t boast, but is definitely a nice one) a former clinical law professor.    Meet the new Dan, (kinda the) same as the old Dan.

College Football, Cookies, and Finding a Balance in Trademark Protection

College football season is upon us.  This weekend, a lot of eyes will by on my alma mater as they take on Penn State in its first game in the wake of the recent scandal.  A lot of eyes will be glued to TV sets and filling the stands in stadiums across the country. And that means huge licensing money, especially for high-profile teams.   According to the Collegiate Licensing Company, collegiate licensing is a market currently valued at $2.7 billion a year.

With this much money at stake, it’s not surprising that universities are going to great lengths to make sure the valuable brands that underlie their sports teams are protected.  But as readers of this blog know, there have been numerous accounts in the media over the last few years of “trademark bullying” — instances where brand owners are seen as going too far in protecting their rights and risk alienating potential customers.

So where do we draw the line between good enforcement and “bullying”?  As with most legal questions, there’s often a lot of grey area, but I think consumers themselves provide a nice feedback loop.  (Which perhaps lines up with or could be explained by a consumer theory of trademark law.)

The University of Alabama came under fire recently after it sent a cease and desist letter to a local bakery demanding that it stop making cakes and other desserts bearing the university’s logos.  After a widespread show of support for the bakery, Mary’s Cakes & Pastries, the university changed its tune and (get this!) apologized to the bakery for sending the letter.

This might leave some lawyers scratching their heads, but marketing and PR folks would see this as a no-brainer.  Why would you want to alienate the very people you’re hoping will fill the stands each fall and buy your official merchandise?

I think it’s fair to draw a distinction between the Alabama cookies dispute and, say, an instance where someone is selling knockoff t-shirts that compete unfairly with officially-licensed merchandise.  But what about the “zone of expansion” argument and the “duty to police”?  Even though I think Alabama did the right thing from a PR standpoint, would they have an argument that baked goods are a market to which they’re likely to expand or that they can’t acquiesce to the bakery’s use for fear of losing their rights?  Should they?

Those are the thoughts to chew on.  But, thankfully, what could have been another story of trademark bullying had a happy ending.

 

 

 

Newton Running and the Importance of Effective Branding

Not all lawyers think and write about branding strategies. Tom Galvani does, and he offers us some nice observations on Newton Running.  After a few minutes of impromptu guilt for being behind on the Sisyphean Runners World training schedule I’m currently using, I thought about Newton and what it takes to make the move from good branding to great branding– the kind of branding that’s so effective that people order wedding cakes that look like your running shoes.

Newton is a relatively new player in the high-end running shoes market. Interestingly, Newton started out with no intention of becoming a shoe company.  The founders’ original plan was to develop new technologies around the idea of “barefoot” running and license the technologies to a larger company like Nike or Adidas.  But when the large shoe companies passed on the idea, Newton kept going and became what it is today– a very successful niche running shoe company.

I first learned of Newton at a race expo, and my interest was piqued, in large part, because they were something different– a highly-touted (a shoe’s presence at an expo is some signal as to quality/seriousness) shoe with an unfamiliar logo.

There’s always been cache in being new or different, and I think Newton is a great example of this. In a strange way, the ubiquity that most brand-conscious companies seek can actually drive away (at least some) consumers.  This consumer segment tires of established brands and seeks out something novel.

(I’m curious if someone can think of other examples of brands that succeeded by virtue of being a fresh face in a market with a lot of bigger, older players.)

Tom duly notes, in his post, the importance of trademark protection for brand owners.  I’ll be the first to second that thought.  If I didn’t believe in it, well, I guess I’d be blogging about something else entirely– or maybe just using the internet for its true purpose: circulating cat memes.

In any case, what are the branding takeaways here?  Here’s what I have so far:

• Innovation matters.  Newton got its start (and finds a rabid base of fans willing to pay their $175 price tag) because they’ve focused on new technologies and other ways of setting themselves apart in the market.
• Timing is everything.  Newton got into a market at time when participation in marathons and other running events was on a dramatic rise.
• Focus on one thing and do it well.  Newton only markets shoes and apparel for runners.  This signals to consumers that Newton makes better running shoes than, say, a company with a similar history that’s trying to market multiple sports.
• Engage your audience.  Newton has a really cool blog where they provide interesting content (videos, running tips, etc.) and interact with their fans.

Anything I missed?

N.Y. Court Rules That “INSTANT HEART ATTACK” Can Stay on Menu, Despite Trademark Claims

There’s been a lot of talk on blogs and in the media on the recent decision by the Southern District of New York in a case involving a Las Vegas burger joint and a New York deli’s dispute over sandwich names that pay tribute to their cardiac side effects (the TRIPLE BYPASS BURGER and the INSTANT HEART ATTACK SANDWICH, respectively).

Applying the likelihood of confusion factors, the court held that the New York deli can continue using its name.  Tim Buker and Ron Coleman offer some nice analysis of this case at their blogs.

Tale of a Trench-Coat

Luxury retailer Burberry has made excellent use of Facebook’s Timeline feature, using the tool to showcase advertisements and other photographs showing their products over the years.  (If you scan down to the 1910s, you can check out some Burberry-brand aviator suits which I’m pretty sure would be tough to track down today.)  This all sounds well and good, but this is a law blog and not a paid endorsement for Burberry, so you know there’s conflict ahead.

When Bogart, LLC, the company that manages Humphrey Bogart’s celebrity rights, got wind of the fact that Burberry had included a photograph of Bogart wearing a Burberry trench in the film Casablanca they threatened Burberry, claiming violation of right of publicity as well as trademark infringement and unfair competition. Burberry fired back, requesting declaratory judgment of non-infringement.

So who’s correct here?  It’s first important to note that copyright and ownership in the photo itself is not an issue here– Burberry had obtained a proper license to use the photo.  With copyright off the table, the question then becomes whether Burberry’s use of the photo constituted a trademark infringement or, failing that, a violation of Bogart’s right of publicity.

Burberry should have a fairly good argument as to the trademark issue.  It’s not as though they’ve launched a retail campaign with advertisements, signage, and other media that trades on the image.  The use in the Facebook Timeline, they’d argue, when taken in context, is one of many factual statements the company is making about its history.

When it comes to the right of publicity claim, things are less clear.  As the Bose Media Law Blog explains nicely, when it comes to these claims, it’s good to be in California.

Looking past the legal analysis under these doctrines, this case raises much larger questions that brand owners, marketing professionals, and lawyers will want to watch closely.  Depending on how this case proceeds, the court may address important issues regarding social media, advertising, and free speech.

Right now, the lines are a bit blurry (which could help or hurt Burberry here).  It’s clear that Burberry enjoys some commercial advantage by being on Facebook (oh, and it probably doesn’t hurt to have 12 million fans).  But does that mean that all of the company’s activities on Facebook are strictly commercial and not legitimate instances of story-telling or commentary (thus entitled to First Amendment protection)?

Courts are going to face more and more difficult determinations such as this one and must be careful to craft rules that provide clarity, fairness, and workability to all parties involved.  There’s no question that the law should recognize and protect the rights of celebrities as relates to unwelcome endorsements or false sponsorship, but the law should be careful, too, to leave room for story-telling.

Western PA Company and Captain Morgan Square Off on Trade Dress

For many years, Capri Sun had the pouched-beverage market cornered.  As children, we were attracted to shiny, colorful packaging and the novelty of drinking from malleable pouch (despite the repeated frustrating experiences trying to insert the drink’s plastic straw without punching a hole in the side of the pouch).

Fast forward to today.  Not all beverages served in pouches are sugary kids’ drinks– adult beverage companies have jumped on the idea.  Which brings us to a recent IP dispute of local interest.

As the Pittsburgh Tribune-Review reports, American Beverage Corp. (based in Verona, PA, just outside of Pittsburgh) filed a federal trademark lawsuit recently, claiming Diageo, which owns Captain Morgan, copied its single-serve frozen cocktails design, constituting patent and trade dress infringement.  The Complaint is available here.

I’m not a patent attorney, so I won’t go into the question of whether the Defendants’ design infringes on Plaintiff’s patent.  But this case does present an interesting question about trade dress.

Here’s a look at the products, side-by-side.

Generally speaking, trade dress will not be protected if it’s “functional.”  If trade dress didn’t have this limitation, competition would be inhibited.  The first person to think of serving beer in a bottle would “own” that concept, and so on and so on.

But trade dress protection is available to reward producers for creating innovative product designs (and to protect consumers from confusion when they rely on the distinctive appearance of a product to make a purchasing decision).  Most people can recognize a bottle of Coca-Cola by its shape, even if the label were removed.  So the question is, how unique, how distinctive, is the American Beverage pouch? Is it like the Coca-Cola bottle, or is it just another pouch?

Pumped Up Kicks

I’ve always been fascinated by the outer reaches of trademark protection.  These examples of weird things (e.g., Boise State’s blue turf, or the sound of MGM’s roaring lion) make great anecdotes in social settings, and I like using these examples to get clients to think creatively about their branding strategies and what trademark law can protect.

Erik Pelton’s IPelton® blog has a nice post on one example of non-traditional trademarks: shoe designs.

A picture is worth many, many lawyerly words - "Description of Mark: The mark consists of a stylized checkerboard design positioned around the sidewall on the sole of a shoe. The design of a shoe represented by dotted lines is not part of the mark and only serves to show placement of the mark on the goods."

Under the Lanham Act, a  trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.  See 15 U.S.C. § 1127.

In a lot of ways, the sky’s the limit in terms of the subject matter that can serve as a trademark.  It all comes down to whether something serves as an indicator of source.  You see blue turf, you think of Boise State football.  You see a robin’s egg blue jewelry box, you think of?

In the case of footwear, there are a lot of ways for brands to signal the uniqueness of their product, and for consumers, in turn, to signal their brand loyalty.  But when product designs carry as much (sometimes more) cache than the brand name on the tag or box, there is an increasing risk of copycat designs and, thus, litigation.  See Christian Louboutin’s woes over red bottom heels and Adidas and Wal-Mart’s dispute over three-stripe designs as examples of how these disputes can play out.

Which is why, for brand owners large and small, it’s important (1) to think creatively about how to expand the scope of their trademarks and (2) to secure the proper protection for these design (or other) marks through trademark registration.

New Tech Blog: Pittsburgh Cyberlaw

Good karma and name-dropping (though not necessarily in that order) will get you everywhere in blogging (and perhaps in life in general).

So it is with much gratitude to the bloggers who gave me that initial street cred every blogger needs in the early days, that I introduce the Pittsburgh Cyberlaw blog (part of my firm, Elliott & Davis, PC’s new Cyberlaw site), that Megan Costello (see introduction below) has recently rolled out.  (It’s a tumblr, which makes it prima facie much cooler than yours truly’s humble blog.)  Welcome to the club, Megan!  Happy blogging!

Book ’em, Danno: Facebook Updates User Agreement to Protect Trademark Rights in “Book”

Much of the discussion around Facebook’s changes in policy have revolved around privacy.  But a recent revision to the company’s Statement of Rights and Responsibilities has people talking about Facebook’s inclusion of a term designed to protect its trademark rights in the word “book.”

Jon Brodkin over at ars technica breaks it down nicely:

So, what exactly is Facebook changing? If you view the current Statement of Rights and Responsibilities, you’ll find this sentence:

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.”

If you’re wondering, 32665 is the number allowing Facebook users to update their pages through text message. The newly revised user agreement reads as follows (emphasis ours):

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.”

Not accepting the terms isn’t really an option for anyone with a Facebook account. “By using or accessing Facebook, you agree to this Statement,” the document says.

This isn’t the first time the company has asserted rights in the word “book.”  There have been disputes (involving “Teachbook” and “Lamebook,” among others), but the move to include “book” among marks protected in its new terms is seen as newsworthy because “book” is not among the company’s extensive list of marks registered by the USPTO.

According to the ars technica piece, “Facebook has a pending trademark application on ‘book’ listed in the European Union’s trademark database, but the current status is ‘application opposed’ with ‘likelihood of confusion’ listed as the reason for opposition.”

Most readers of this blog already know that you don’t need to have a registered mark in order to have enforceable trademark rights in the United States.  And by incorporating this mark into its user terms, Facebook (potentially, depending on what a court would say) is adding breach of contract claims to its menu of options in enforcing its trademark rights.  And when you have, oh, 845 million or so contracts out there, well, that can’t hurt either.