You didn’t have to venture too far beyond a simple Google search (which we, as a planet, only do a billion or so times a day) to notice something strange was going on today.  Visitors to a laundry list of sites including Google, Wikipedia, and Twitter were greeted by blacked-out logos and missing content in protest of SOPA and PIPA, two IP reform bills currently in Congress.

And, according to the Los Angeles Times, this protest might have already had an impact as three co-sponsors of the SOPA and PIPA antipiracy bills have publicly withdrawn their support for the legislation.  From the Times:

Sen. Marco Rubio (R-Fla.) withdrew as a co-sponsor of the Protect IP Act in the Senate, while Reps. Lee Terry (R-Neb.) and Ben Quayle (R-Ariz.) said they were pulling their names from the companion House bill, the Stop Online Piracy Act. Opponents of the legislation, led by large Internet companies, say its broad definitions could lead to censorship of online content and force some websites to shut down.

In a posting on his Facebook page, Rubio noted that after the Senate Judiciary Committee unanimously passed its bill last year, he has “heard legitimate concerns about the impact the bill could have on access to the Internet and about a potentially unreasonable expansion of the federal government’s power to impact the Internet.”

This is an interesting question, and it’s likely that bars in other states will be watching to see what happens with attorney Horace Hunter’s appeal.  Hunter contends that the names of his clients are not “confidential information” within the meaning of Virginia Rule of Professional Conduct 1.6, and he said that the blog posts with clients’ names are based entirely on open court proceedings and other matters of public record, which he said include clients’ names.

So what’s the takeaway for attorneys?  Regardless of how this plays out, it can never hurt to err on the side of caution and ask permission first.  A lot of clients (especially in IP, nonprofit, and business counseling settings) would be flattered to have you blog about them.  And the ones who wouldn’t be so flattered, I’m sure, would let you know.

(Originally posted November 24, 2010)

For some people, tomorrow’s Thanksgiving holiday means not only time spent with loved ones over a turkey dinner– it means waking up at the crack of dawn and running.

Pittsburgh Trademark Lawyer is not one of those people.  Admittedly, I am a runner, and a somewhat avid one, at that.   In fact, I just ran my first marathon in my second-favorite city in Pennsylvania this past weekend.  But, on Thanksgiving, I eat.

In any case, people all across the country will lace up their running shoes tomorrow and participate in what, in many instances is called a “Turkey Trot.”   These races often raise money for charity, and participants no doubt enjoy the benefit of burning some extra calories on Turkey Day.  But it probably goes without saying that I’m more interested in the trademark law issues surrounding the phrase “Turkey Trot.”

Evidently, the tradition of hosting public footraces on Thanksgiving Day dates back farther than I would have guessed, with the first Turkey Trot taking place in Buffalo, New York in 1896.

The Usual Suspects

And while some Thanksgiving Day races bear monikers such as “Stuffing Strut” there are “Turkey Trots” taking place all across the country, which begs the question: does someone collect a licensing fee for all these uses of “Turkey Trot,” or is the phrase more or less descriptive of a Thanksgiving Day race?

The USPTO weighted in on this in an Application for (you guessed it) the proposed mark “TURKEY TROT.”

The applicant applied to register the mark TURKEY TROT in connection with organizing running races, charitable fundraising and community cultural activities on or around Thanksgiving Day.  This mark is merely descriptive of the services because it immediately tells consumers that the services involve a “turkey trot.

TURKEY TROT is the common, generic name given to running races and surrounding cultural and sporting activities performed on Thanksgiving Day across the country. The examining attorney has attached ten sample websites found using the GOOGLE search engine that show widespread use of this term by others to name their similar races and fundraising activities.  The evidence shows that others have been using TURKEY TROT to name such activities far longer than the applicant’s claimed dates of first use.  In  the interest of brevity, the examining attorney has attached only ten such sample uses of TURKEY TROT.  Given this widespread use, consumers who encounter the applicant’s proposed mark would perceive the wording TURKEY TROT as the name of the activity, and not as a source identifier for the applicant.

Therefore, the examining attorney refuses registration on the Principal Register on the basis that the mark is merely descriptive of and appears to be generic for the services.

There are a few other applications and registrations that include the phrase “Turkey Trot” and the Office appears to generally suggest a disclaimer of the phrase “Turkey Trot” when it is part of an applied-for mark.

All this talk of running is working up an appetite, however.  Could someone please pass the cheddar and jalapeno stuffing?

Happy Thanksgiving!

From the New York Daily News, a Long Island, N.Y. couple has recently applied for a trademark registration for (you guessed it) “OCCUPY WALL ST.”  The application was filed on October 18 as an intent-to-use (ITU) application, listing a variety of products including clothing, bags, and bumper stickers.

Depending on your outlook on things, it’s temping to be cynical (perhaps even from both “sides” of the aisle) at first, and I’ll admit that was my first reaction.  Moving beyond that reaction, though, I think that both the protesters and their critics can (at lease hopefully) agree that small business and entrepreneurship are vital to our economy.  And Robert Maresca (who appears to have filed under his wife’s name) is certainly an entrepreneur.

But I think there’s even more going on here.  Take a look at what Mr.Maresca, himself an injured ironworker and union member, told the Daily News of his idea to register the mark:

“People are calling this a crass attempt to profiteer off a social movement, but that’s not it [.] I do believe there’s a possibility it could become a global brand. I could maintain control to keep it from someone trying to undercut the 99% [.] [The trademark] “isn’t about me getting rich. If it turns into a big moneymaker, I would like some of it to go back to the group.”

Sometimes, it’s not about the money (as UK pop-singer Jessie J so catchily reminded us 156 million times or so, according to YouTube).  Sometimes it’s about principle.

Much of my non-trademark work centers on working with nonprofits.  And when nonprofit clients ask me trademark questions, I try to distinguish the sort of interests nonprofits and for-profits would have in trademark protection.  For nonprofits, there’s not such a clear “good branding equals more revenue” correlation.  For them, it’s about their message and making sure that that message is protected and not tarnished, maligned, or confused by those with conflicting values.

The marks themselves are generally the most obvious source of humor, but I sometime get a kick out of design codes (e.g., The iconic MR. PEANUT logo gets the following designation: “Monsters (not robots); Other grotesque including men formed by plants or objects”).

Self-proclaimed BRAND GEEK® Lara Pearson shares some trademark-related humor at her blog by the same name.

I recently had a great conversation about the trademark rights in the Terrible Towel at breakfast with my former professor, Michael Madison.  He has some excellent analysis over at Madisonian about the possible naked licensing issues involving the Towel.

I’ve blogged on the the Towel in the past, but here’s the quick background for those unfamiliar with the Towel’s origins.

Myron Cope, a Pittsburgh sports announcer known as the “voice of the Pittsburgh Steelers” for many years, is credited with inventing the Terrible Towel.   Cope assigned the Terrible Towel trademark to the Allegheny Valley School (AVS), a Pittsburgh-area institution specializing in intellectual developmental disabilities that has cared for Cope’s son, Danny, who has severe autism.  Proceeds of the Terrible Towel’s sales benefit the School.

I suspect that a lot of non-Pittsburghers reading this post might  not have known that back story, but that virtually everyone reading this post associates that Towel with the Steelers.

And that is precisely the problem here, from a trademark doctrine standpoint.

When consumers associate the mark with the licensee (the Steelers) and not the licensor/owner (AVS), it creates a risk of “naked licensing” and a possible forfeiture of the owner’s rights in the mark.  For a nice general overview of naked licensing in the context of a recent Ninth Circuit decision, check out Jim Singer’s post from last winter.

It’s tempting to simply say “OK, so consumers think the Towel comes from the Steelers and not the AVS– so what?”.  From a practical standpoint, it’s probably not a big deal.  People buy the towels (we’ve got one at my house), they wave them at games, and the school gets money.  Everyone wins.

But this scenario does raise an interesting question about the internal architecture of trademark law– why the statutory language says what it says and what the purpose(s) of trademark law is/are (e.g., protecting investments in marketing, preventing consumer confusion, etc.)

I agree with Professor Madison that one of the fundamental purposes of trademark law is consumer protection.   A quick look at some of the language in two historic trademark decisions provides some support for this position.

From Dawn Donut Company, Inc. v. Hart’s Food Stores, Inc. (1959):

“If the licensor is not compelled to take some reasonable steps to prevent misuses of his trademark in the hands of others the public will be deprived of its most effective protection against misleading uses of a trademark. The public is hardly in a position to uncover deceptive uses of a trademark before they occur and will be at best slow to detect them after they happen. Thus, unless the licensor exercises supervision and control over the operations of its licensees the risk that the public will be unwittingly deceived will be increased and this is precisely what the Act is in part designed to prevent. See Sen. Report No. 1333, 79th Cong., 2d Sess. (1946). Clearly the only effective way to protect the public where a trademark is used by licensees is to place on the licensor the affirmative duty of policing in a reasonable manner the activities of his licensees.”  (Emphasis mine.)

And from Taco Cabana International, Inc. v. Two Pesos, Inc. (1991): 

“The purpose of the quality-control requirement is to prevent the public deception that would ensue from variant quality standards under the same mark or dress. Where the particular circumstances of the licensing arrangement persuade us that the public will not be deceived, we need not elevate form over substance and require the same policing rigor appropriate to more formal licensing and franchising transactions.”  (Emphasis mine.)

It’s hard to imagine a public outcry when Towel wavers “find out” that the Steelers are not the the “real” source of the Towels.  But it is important for trademark owners to exercise care to avoid “naked licensing” when entering into a licensing deal.

Trademark law recognizes the value of providing flexibility for licensees/licensors and relieving them of statutory formalities (where possible), but it must do so while remaining grounded on one of its key commitments — to prevent consumer confusion in the marketplace.

Updated October 5, 2011: 

Considering Bernard Schneider’s comment below and having done a bit more digging into the “naked licensing” doctrine, I think I should try to flesh out my thoughts a bit more here.

The license between AVS and the Steelers for the Terrible Towel is not a “naked license.”

There are a couple of reasons for this.  First, AVS “does controls the nature and quality of goods sold by the Pittsburgh Steelers under its trademarks. [AVS] periodically examines those goods and has the right under its license agreement to demand quality enhancements if necessary (See first comment below).

Second, there’s the “inurement” doctrine.  As Prof. Madison explains in an update to his post:

The Lanham Act provides, in connection with registration, that use of a mark by a “related” company “inures to the benefit” of the mark owner (registrant).  […]  The public policy behind the “inurement” rule closely parallels the public policy behind the “naked licensing” rule:  so long as consumers get a consistent product/service experience associated with the mark, then consumers are not deceived.  The mark is valid; actual ownership of the mark is, for this purpose, not relevant.

[...]

If the AVS and the Steelers have a licensing relationship that in fact grants the AVS the power to monitor and control the quality of goods produced under the TT mark, then the consumer goodwill associated with the TT inures to the benefit of the AVS.

I think these two doctrines (quality control and inurement) square with a consumer-protective theory of trademark law.  If consumers are confused as to the “real” source (i.e., the record owner of a particular trademark), a close relationship between licensor and licensee and the presence of quality-control mechanisms should obviate any theoretical harm to consumers.

Put differently, these doctrines make sure that consumers get what they think they’re getting.

It’s interesting to try to unpack the statutory language of the Lanham Act and try to puzzle out trademark law’s key functions in society.  And I think there’s good evidence to suggest that consumer protection is a big part of it.

But it’s also important for brand owners to have a clear set of rules that allow them to enter into licensing relationships freely in order to capitalize their brands (and, in the case of the Terrible Towel– for an incredibly good purpose).

And as the Steelers wrestle with injury problems as they prepare for this week’s home game against Tennessee, one thing’s for sure.  Come Sunday afternoon, Heinz Field will look a little something like this:

It requires creativity– from both a legal perspective and a marketing perspective.  It involves a delicate balance between recognizing your client’s business goals on the one hand and informing them of legal risks on the other.

And Mike Atkins sums it up nicely here.

But what happens when a company approaches you asking you to stop wearing their clothes?  Mike Sorrentino (no stranger to this blog and best known to us a “The Situation”) found that out recently when Abercrombie & Fitch (A&F) offered to pay Sorrentino to stop wearing the company’s clothes publicly.   An A&F spokesperson issued the following statement:

“We understand that the show is for entertainment purposes, but believe this association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans.”

In flagrante delicto

El Sitcherino has, for his part, responded– and by what other means than Twitter, and A&F is now characterizing its offer as a PR Move.

Whether it’s a good PR move or a bad one is up for debate.   (For what it’s worth, A&F’s stock price took 10% dip yesterday, though that may have been caused more so by the company’s recent earnings report.)

This situation (the PR one, not the abdominal one) raises an interesting question about companies seeking to police the quality of their brand.  Trademark law recognizes this concept in a legal doctrine known as “dilution by tarnishment,” which basically involves an unauthorized use of a someone’s trademark that either creates a link between that mark and products/services that are low quality, or portrays that mark in an unwholesome or unsavory context.  Legally speaking, A&F’s possible claims for dilution here are pretty weak.  However, a contract’s a contract, and A&F and Sorrentino are free agree on any terms they want.

While A&F might be worried about Jersey Shore and its characters’ antics (personally I find them entertaining– somewhere right in that sweet spot between contemporary morality play and train wreck), the company may have acquiesced to the dilution of its “aspirational” brand back in 1999 when a band called LFO released their song “Summer Girls.”   (Out of mercy, I opted not to include the video in this post or link to it. )

Interestingly, A&F isn’t the only company trying to distance itself from what it sees as undesirable consumers.  The marketing bloggers over at Cream have some excellent thoughts on this story as it relates to the recent rioting in England and its implications for Research in Motion (RIM), the makers of Blackberry phones that figured into the organization of the riots.

Don’t worry, I haven’t reverted into bizarre free-word-association mode.  This is a list of words which once were the subject of someone’s exclusive ownership, which have since lost their trademark protection through a process commonly referred to as “genericide.”

The basic idea here is this: a word only functions as a trademark to the extent that it is distinctive of someone’s goods or services.  Put differently, a good trademark will make consumers think of a particular type of product or a specific company that provides goods/services.

As Tom Galvani notes, in a recent post pondering the trademark implications of online search provider DEX‘s marketing activities, “Typically, use of a trademark as anything other than an adjective weakens the rights in that mark.  Supplanting the mark for a noun or a verb in a sentence changes the mark’s meaning and its understanding.”

I’m a grammar nut (no kidding– in college, I participated in an event called Grammar Smackdown!), so naturally, I find Tom’s shorthand formula appealing.  But, as Tom and others (see Evan Brown’s thoughts on Google’s entry into the Merriam-Webster dictionary) note, there’s more at play here.  

There is no doubt that businesses who invite consumers to use a trademark as a verb or a noun are running a risk of genericide.  So the question then becomes: (a) how great is this risk; and (b) in light of the marketing opportunities (word of mouth, “buzz” associated with your service, e.g.) is it worth taking this risk nonetheless.

Steve Baird over at DuetsBlog makes a key observation– it’s all about what consumers think:

To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?

Only time will tell which of today’s popular brands will go the way of Escalator and company.  Brand owners have a lot to consider in the meantime, and they want more information, they can always just Google it.

Pinchers registered the name with the USPTO in February of 2010 and has been using the name since 2004.

Wendy’s use of the slogan is part of its recent campaign that touts the freshness of the restaurant’s offerings.

Pinchers also alleges that Wendy’s use of a second slogan “You can’t fake real” (which, at least to me, seems a little redundant) constitutes an infringement of its mark as wel  Here, the marks themselves are identical, or in the case of Wendy’s second allegedly infringing mark, they are at least very similar.  This obviously works in Pinchers favor.

The big question will be how similar/different are the two restaurants’ respective services and how much care would likely be exercised by the consumers here.   There is probably something to Wendy’s likely argument that the restaurants occupy different markets.  As Rene Dial over at TacticalIP notes, he doesn’t see a likelihood of confusion “unless Wendys decides to start seling crabs at their restaurant.”