by Jason Fischer
iPhone application developer, InfoMedia, Inc., filed a complaint last week, seeking a declaratory judgment from a U.S. District Court in Colorado. The pleading seeks to end a dispute that has been bubbling up between InfoMedia and one of its competitors, Air-O-Matic (AOM). What are these two companies fighting over? Dominance in the cutthroat realm of iPhone flatulence apps. (source)
Late in 2008, Apple decided to relax its draconian content censorship rules which govern the kinds of applications that could be offered for sale in its iPhone application store, allowing novelty applications that simulate farting noises. The app store quickly filled up with new entries into this niche market. Currently, a search for the term “fart” in the app store yields nearly 150 results, including such classics as “iToot”, “Fart Box”, and “Fart Piano” – to name a few.
AOM’s current offering is entitled “Fart Lighter – Pull My Finger, Pro Edition” and sells for 99ยข. On December 18, 2008, they filed an application with the United States Patent and Trademark Office (USPTO), seeking to register the phrase “Pull My Finger” for use in connection with “[c]omputer application software for mobile phones.” (taken from Federal Trademark Application, Serial No. 77,635,715.) That application is currently awaiting examination by the USPTO, so AOM is not entitled to any presumption of validity or enforceability for the “Pull My Finger” mark, which has only been in use by AOM since December 13, 2008. But that isn’t stopping them from asserting that other fart app developers have infringed on their trademark rights.
According to emails that were attached to InfoMedia’s complaint, AOM is upset about press releases and advertising that InfoMedia has put out, which contain the phrase “pull my finger.” In particular, AOM believes that an alleged user quote that appeared in such advertising, stating that InfoMedia’s iFart Mobile application is “way better than Pull My Finger,” should be actionable as a trademark infringement. There are a few issues with AOM’s claim.
First, as stated above, the USPTO has not granted AOM’s request for registration. AOM may have a serious uphill battle in front of them before they can march into federal court, waving an allowed trademark registration. As InfoMedia’s attorney points out, the phrase “pull my finger” is arguably descriptive, if used in connection with simulated flatulence. Since a descriptive mark cannot be registered unless the marketplace has attached some association between the mark and the registrant’s goods or services, AOM will have the significant burden of proving that association to the USPTO. Their current application contains no such evidence, and given the number of competing fart app developers who are already using the phrase in Apple’s app store – all arriving near the end of 2008, AOM may never be able to prove that association, let alone that they were the first to claim it.
AOM will likely have other barriers to registration. Who’s to say that the examining attorney won’t declare the mark “scandalous,” because it is a vulgar reference to bodily functions? Even if the examining attorney does not, when the mark is published for opposition, any member of the public can make that claim. Any one of AOM’s competitors can also raise a claim during opposition, stating that they were the first to use “pull my finger.” In the end, any of these scenarios will leave AOM without a federal trademark registration. Without a federal registration, AOM is stuck trying to bring a claim of infringement based on common law trademark rights – a long and expensive process that, again, puts the burden on AOM to prove that the marketplace has come to recognize “pull my finger” as referring to their goods or services.
Even if AOM can either get a notice of allowance from the USPTO or prove their common law trademark rights, they are going to have a hard time getting around InfoMedia’s argument that the “pull my finger” mark can be used in comparative advertising, without violating AOM’s rights. Such use is commonly referred to as “nominative fair use” and is specifically allowed by the Lanham Act. Trademark law is not supposed to impoverish the English language by declaring certain words and phrases “off limits.” It is supposed to prevent consumer confusion. AOM’s trademark rights, if any exist at all, are secondary to that ultimate goal.
Perhaps there are details of this case that I am unfamiliar with. AOM is certainly welcome to spend its hard-earned fart money attempting to take down competitors, but from where I’m sitting, their trademark infringement claim against InfoMedia stinks.
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Many of the things you say are true, with the following clarifications:
(1) They don’t NEED a trademark registration to sue for infringement. Section 43(a) of the Lanham Act allows the owner of an unregistered mark to sue for federal “unfair competition.” And trademark rights are vested as soon as the mark is used in interstate commerce (and, under state law, as soon as the mark is used in commerce). Of course, you still have to prove trademark validity, priority, and likelihood of confusion, and you don’t have a nifty piece of paper from the USPTO providing you with at least a presumption of validity and presumptive date of first use, but that’s OK. I don’t think it’s that much more expensive or difficult to win on a 43(a) claim than a section 32 claim (for registered trademark infringement), because most of the time a defendant will claim that the registration is invalid anyway.
(2) I would find it very unlikely for a court to find PULL MY FINGER for a piece of computer software to be descriptive. Descriptive marks truly have to describe the good or service or an element thereof — BOUNCY for rubber balls, FAST for sportscars. If a consumer is required to take a small “leap” from the name of the product to the actual product, then the mark is “suggestive” — SNUGGLE for fabric softener. If the g&s in this case were a gag gift that comprised a hand with a finger that you pulled to get the sound, then maybe you’re in descriptive-land. But this is a piece of software, and my guess is that the USPTO will find it suggestive and thus immediately protectable.
(3) Nominative fair use only works in comparative advertising: “iFart has 30% more farts than PULL MY FINGER!” “Traditional” fair use (using descriptive words to describe your own product) may work here, but only if the competitor is not using the phrase in a “trademark sense”
This is certainly an uphill battle, but not an unreasonable one (especially if fart-boxes are profitable on the iPhone).
@ Kyle: On point #1, a valid federal trademark registration acts as a burden shifting mechanism – as a practical matter. Without registration, the plaintiff would have to prove the trademark’s validity, in order to assert either infringement or unfair competition. If they fail to do so in their case in chief, the defendant is going to succeed on a motion for directed verdict. However, if the plaintiff has a registration, he doesn’t have to prove anything at all, the defendant bears the burden of showing that the mark is invalid or unenforceable.
Also, I’m not sure I agree with you on point #2. Certainly, the examples you give of descriptive marks are truly descriptive, but those alone represent a fairly narrow reading of what the PTO would consider descriptive. Section 1209.01(b) of the Trademark Manual of Examining Procedure states that “[a] mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” Your examples are limited to characteristics (BOUNCY) and features (FAST). I agree that it isn’t a slam dunk argument that iFart’s attorney is making, but it is a valid one. If PULL MY FINGER is recognized as descriptive of fart noises, and fart noises are a function or purpose of the product, then arguably PULL MY FINGER is descriptive when used in association with a fart noise application.
Finally, with regard to point #3, wouldn’t the statement “iFart is way better than PULL MY FINGER” be legally the same as “iFart has 30% more farts than PULL MY FINGER”? Both statements are using a competitors mark to identify a product for comparison.