Chrysler vs. Lake Mary High

February 10, 2010

Seriously? They thought that this was just fine?

Lake Mary, Flori-duh was looking for a new logo for their high school sports teams. Since Flori-duh has decided to focus all of its education on teaching kids to pass the FCAT, I guess they didn’t have an art teacher at that school. Either that, or they just figured that it would be a lot easier to simply use the Dodge Ram logo. So that’s what they did. Same logo, same color, they just took the border off of it.

Chrysler was not amused. Lake Mary High has until the end of the year to change the logo.

On a happy note, a local dealership is paying for the school to come up with a new one.

I completely agree with Chrysler’s right to enforce its mark. However, I wonder if it might have been smart marketing on their part to come up with a licensing agreement for the school. Not that I think the school is being unfairly bullied — they aren’t (it was a stupid move on their part). I just wonder if it wouldn’t be great marketing to have high school teams wearing the Dodge logo all across the country.

I guess that I could insert some joke about Chrysler not wanting its products associated with an inferior product, like a Florida public school. But, Lake Mary High happens to be a pretty well-respected high school.

H/T: Overlawyered


McDonalds v. McFest: Boo Freakin’ Hoo — Journalists should talk to trademark lawyers before writing whine-pieces

January 21, 2010

Not as much of a crook as you may think.

Poor Lauren McClusky. She is a 19 year old, civic minded, kind, compassionate kid who founded an organization that puts on charity concerts in the Chicago area to raise money for the Special Olympics. She called the concert series “McFest.” You know where this is going… or do you?

The story being told is one of a big bad corporation attacking the poor little charity for using its famous “Mc” prefix.

You couldn’t blame Lauren McClusky of Chicago if she were a bit squeamish about using her last name in this story without fear of reprisal from Ronald McDonald and his legal posse.

For McClusky, 19, finds herself at the center of a thorny dispute that involves a series of charity concerts she’s put on over the past three years. She dubbed the event “McFest” (more on that in a moment) — but McDonald’s sees that as an infringement on its trademarks, something the McDonaldland lawyers refer to as “the McFamily of brands.” (source)

Good god… you mean… McDonalds, the big multinational corporation, hates retarded children? (Yeah, I said “retarded“).

Oh, it gets worse. Listen to the tale of woe… of poor Ms. McClusky having to spend $5,000 on lawyers, battling the big bad clown who is trying to get her to change the festival’s name. Well that just sounds mean-spirited. It isn’t as if she named it McFest for an ill-intended reason.

Her original co-chair for the first McFest also shared the “Mc” prefix in her surname, so it seemed a natural. And indeed, not a single McDonald’s attorney seemed to object in 2007 and 2008, when McClusky’s McFests raised $30,000 for the Chicago chapter of Special Olympics.

So why, oh why, would McDonalds attack this noble charity?

The fact is, they didn’t, and the howls and cries in McClusky’s corner are coming from uneducated morons who don’t understand the first thing about trademark law — or they hope that their readers don’t. McDonalds did not file a lawsuit against McClusky. McDonalds didn’t even try and stop her from calling her concert series the “McFest,” they merely filed an opposition to McClusky’s attempt to secure a trademark registration for “McFest.”

To understand this case, you need to understand these terms:

  1. Trademark Infringement Lawsuit
  2. Common Law Rights
  3. Trademark Registration
  4. Trademark Opposition

In a trademark infringement lawsuit, you sue the other guy. You try and get money from him. You might try and get a court order that stops the other guy from using a confusingly similar name. If McDonalds had filed one of these against Ms. McClusky and her McFest organization, then McDonalds would get the asshat award this week. They didn’t, ergo they don’t.

McDonalds filed a trademark opposition. That might, to a layperson, sound like six of one, half a dozen of the other. It isn’t. An opposition is a world away from a lawsuit. When you use a trademark, like say “Legal Satyricon,” it becomes yours just through use. The very day you start using the mark, you can use that little “TM” that you see on trademarks. You can threaten other people with trademark infringement lawsuits, if you like. You can even file a lawsuit based on the rights you gain simply by using the mark — these are called “common law rights.”

If you plan on filing a trademark infringement suit based upon your common law rights, you will need to prove (among other things) that you own the trademark and that the mark is valid. But, if you get a trademark registration then you get to go into the lawsuit with those goals already scored in your favor. It becomes the other guy’s job to dis-prove your rights. So there’s one benefit of having a trademark registration.

In addition, a trademark registration is a valuable asset for your business. When I have clients who want to buy up other companies, one of the first things I do is audit the company’s intellectual property assets. A registered trademark, especially one that is more than five years old, adds a lot of value to the company, and it shows that the prior owners had their heads out of their asses. When I audit a company that didn’t even bother to file for a trademark registration, it makes me wonder what other corners they cut, and why they were so penny-wise and pound-foolish.

Another benefit of a registration is that it will block anyone else from registering the same (or a similar) mark, for the same goods and services. The government sorta gives you a free trademark lawyer when you have registered rights, but you have to protect common law rights on your own. So, lets say that you have a common law mark, but someone else files for a similar mark to be registered. You’re out of luck. On the other hand, if you had registered your rights, the USPTO would get in the middle of the fight, and you might not even need to raise a finger to stop the other guy from getting a registration.

Lets move on to the registration process.

When you apply for a trademark, you fill out a form with the United States Patent and Trademark Office. It gets sent to an examiner, and that examiner decides whether the mark is entitled to registration. They question whether it is distinctive enough, whether it is confusingly similar to another mark, or sometimes they get a big fat stick up their ass and question whether the mark is “immoral.” Remember, when the examiner makes her determination about whether the mark is confusingly similar to another mark, she just looks at other registered marks.

If the examiner says “no,” then you can still use the mark, you just don’t get that extra business asset, and you don’t get those two points at the beginning of a trademark infringement lawsuit.

If the examiner decides that the mark is okay, then she lets it move to the next stage. That stage is called “publication.” At that stage, anyone who thinks that the registration might harm their legal interests gets to speak up. Speaking up at this point is done in the form of filing an opposition. THAT is what McDonalds filed. You can’t win money in an opposition. All you get, if you win, is this: You block the other guy from having a registration for their trademark. You don’t even get a court order stopping them from using it.

This isn’t heavy-handed, it is smart business. McDonalds has a strong brand in its “Mc” prefix, and stopping someone from securing a trademark registration inside that turf is not the same thing as stopping them from using the name. If you don’t protect your trademark turf from minor incursions, after a while, the mark can die the death of a thousand paper cuts. McDonalds has some pretty well-established trademark turf, with registrations for McPen, McBurger, McBuddy, McWatch, McDouble, McJobs, McShirt, McPool, McProduct, McShades, McFree, McRuler, McLight, etc. Allowing a McFest to enter the field would cause some ever-so-slight erosion of their McHegemony in that area, and make their trademark worth just a bit less.

Look at it this way, if Ms. McClusky got her registration for McFest, then she could potentially license that trademark to Burger King for a concert festival. Yeah, really. Either that, or she could expand her tiny McFiefdom, and eventually cause some real branding problems for Grimace and the gang. Sure, the likelihood is low, but McDonalds didn’t get where it is by being lackadaisical about its trademark rights.

So lets recap:

MsMcClusky did not get sued, her trademark was opposed. McDonalds is not ordering her to change the name of her concert — they are just trying to stop a registration from creating a legal foothold inside their turf.

I am not sure why McClusky filed for a federal registration in the first place. Is she planning on suing a competitor? Is she going to license the name to other companies? Is she looking to sell her charity? Honestly, why does an annual concert that raises money for the Special Olympics need a trademark registration in the first place? Set that aside for a moment though — because her business plans aren’t any of my concern.

My concern is that this story is being portrayed as if McDonalds is beating up a charity that supports the Special Olympics, and taking their money. That portrayal is complete bunk. All McDonalds is doing is protecting its brand, and if McDonalds prevails, the charity will not (not necessarily) need to change its name, and it won’t need to pay any damages. The fact that the McFest has spent $5,000 fighting this so far is an indication that something greater is at stake — or just that Ms. McClusky is not making rational or informed decisions.


Streisand 101

January 5, 2010

by Jason Fischer

In an effort (I’m assuming) to be hip and relevant, my alma mater (and Randazza’s previous teaching gig) has begun adding courses to their curriculum that have little to do with the law or lawyering.  One example is a course called “Popular Culture and the Law,” to which the registrar has assigned the following course description:

This 2 hour seminar will examine social attitudes toward law, lawyers, and legal institutions through the viewing and examination of Hollywood films.  Film depictions of law students, juries, and judges will also be considered.  Each seminar session will focus in as much depth as possible on a particular film or films and a particular problem or aspect of law, law practice, ethics, or the image and status of the lawyer in American culture raised by the film(s).  The majority of the films will be viewed outside the classroom and will be considered as texts providing contemporary depictions of the subject matter to be examined in class.  In addition, readings will be assigned for each film and will form the basis for class discussion.  The films will be reserved in the library.  This will be a paper course which may be used to satisfy the Upper Level Writing Requirement.

legally_blondeMy understanding is that this course is just another excuse for chicks in law school to watch Legally Blonde (2001) for the 4,821st time.  What a great way to spend your tuition dollars at a professional school!

Normally, I’m not the one in this forum to bitch about the state of legal education.  Marco & Co. do it regularly enough that I don’t have to.  (See here, here, and here.)  On the whole, my law school experience was a good one.  I took as much advantage of our externship program as I could, and I went out of my way to take classes from adjunct professors who I knew actually practiced what they were preaching.  What I object to is courses that have students watch reruns of “L.A. Law” (1986), or other fictional portrayals, as a means for teaching about the practice of law.  Aren’t there other subjects that could be presented that have more merit?

Fuck_barbara_is_that_your_faceOne subject jumps quickly to my mind, and regular readers of this blog will recognize it immediately.  I would call it “Streisand 101,” taking its name from actress and singer, Barbara Streisand, who effectively demonstrated that simply filing a lawsuit can bring about the exact opposite result from what you hoped to achieve.  It would be a skills course, aimed at training young lawyers to talk their clients down from filing certain kinds of lawsuits — the kind that end up splashed all over blogs like this one, fueling negative publicity for the client.  The intent would be to teach how to 1) determine the unintended consequences of a particular cause of action; and 2) effectively communicate those consequences to the client, giving them the opportunity to back away before doing any real damage.  The primary pedagogical tools would be roll playing and reviewing news stories about past P.R. blunders.

Finding great teaching examples would be about as challenging as falling off of a log.  Just this week, outdoor clothing maker, The North Face (TNF), is in the news again, moving forward with their lawsuit against The South Butt (TSB).  (You can find my previous coverage of the case here.)  Before TNF filed their lawsuit, TSB had a whopping $5,000 in gross sales — after months of being in business.  Now, TSB’s selling that much every hour.  Their attorney claims that, with 14 new employees, TSB has created more jobs in its home state than the Obama’s $800 billion stimulus plan.  (Source.)

The only downside that I see to so educating the next crop of attorneys is that a huge source of entertainment will be snuffed out.  What will we read about for fun when Micheal Jordan’s attorney convinces him not to sue the people who congratulate him?


Avast! The Pirate Bay’s Intellectual Property’s Been Boarded!

December 18, 2009

Hijacked!

If you haven’t heard of The Pirate Bay by now, you may want to emerge from that cave, wipe the sleepies from your eyes, and start getting caught up on your backed up WIRED magazines in the bathroom. The Pirate Bay (TPB) is a website run by a few Swedish intellectual property anarchists. TPB provides a comprehensive indexing service for BitTorrent files. In plain English, TPB is the backbone of one of the most comprehensive copyright infringement schemes to ever exist. And, TPB isn’t just about “free information,” as it makes a significant income from sponsored ads on its webpage, to the tune of about $65,000 per month. TPB denies that it makes very much money, claiming that most of the income goes to supporting the infrastructure of the site. In April of 2009, its principals, Peter Sunde, Fredrik Neij, Gottfrid Svartholm and Carl Lundström were sentenced by a Swedish court to one year in prison and a $3.6 million fine. (source) The verdict is under appeal.

In a strange case of turnabout, a commercial entity in Sweden has hijacked TPB’s iconic logo. TPB has always allowed others to use the logo, without restriction, as a demonstration of their anti-intellectual property ethos. However, Sandryds Handel, AB took the sharing a step too far.

Today news broke that a private Swedish company, noticing that the logo had no commercial protection, took the opportunity to hijack it. The outfit, Sandryds Handel AB, have officially registered the emblem as their own with the authorities, with the intention of commercially exploiting it.

While admitting they have absolutely nothing to do with The Pirate Bay, in a radio interview Sandryds Handel spokesman Bengt Wessborg defended his company’s action.

“The idea is to sell USB drives using this brand,” he told SR. “We saw that it was not already allocated to someone else. It was not registered,” he added. (source)

Although I previously worked for a Swedish intellectual property law firm, I can’t claim to know Swedish IP law all that well. But, it might be a fun exercise to think about how this might be dealt with under U.S. law.
One would imagine that TPB would try to cancel the usurper’s trademark registration, or even sue them for trademark infringement. However, under the “illegal use doctrine,” TPB would likely face more than a karmic defeat.

Under U.S. law, in order for The Pirate Bay to establish trademark rights, they would need to establish “use in commerce.” This, in itself, is not a difficult fact to establish. However, if this use was unlawful, then it would not be “use in commerce” as defined by the Lanham Act. See 15 U.S.C. § 1127; Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526 (Fed. Cir. 1987); The Clorox Co. v. Armour-Dial, Inc., 214 U.S.P.Q. 850, 851 (TTAB 1982) (”‘use in commerce’ means a ‘lawful use in commerce’”).

[T]he inquiry does not stop with use in commerce. It has long been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates trademark rights when the use is lawful. See, e.g., In re Midwest Tennis & Track Co., 1993 TTAB LEXIS 27, 29 U.S.P.Q.2d 1386, 1386 n.2 (T.T.A.B. 1993); Clorox Co. v. Armour-Dial, Inc., 214 U.S.P.Q. 850, 851 (T.T.A.B. 1982); In re Pepcom Indus., Inc., 192 U.S.P.Q. 400, 401 (T.T.A.B. 1976); In re Stellar International, Inc., 159 U.S.P.Q. 48, 51 (T.T.A.B. 1968). At least one circuit has adopted and applied this rule. See United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1225 (10th Cir. 2000). A question of first impression in this circuit, we also agree with the PTO’s policy and hold that only lawful use in commerce can give rise to trademark priority.

The rationale for this rule is twofold. First, as a logical matter, to hold otherwise would be to put the government in the “anomalous position” of extending the benefits of trademark protection to a seller based upon actions the seller took in violation of that government’s own laws. See In re Stellar, 159 U.S.P.Q. at 51. It is doubtful that the trademark statute–passed pursuant to Congress’s power under the Commerce Clause–”was . . . intended to recognize . . . shipments in commerce in contravention of other regulatory acts promulgated [by Congress] under [that same constitutional provision]. ” Id. Second, as a policy matter, to give trademark priority to a seller who rushes to market without taking care to carefully comply with the relevant regulations would be to reward the hasty at the expense of the diligent.

Accordingly, it seems that since TPB has not used its mark in lawful commerce, it would not be well positioned to enforce its trademark rights.

Nevertheless, TPB would not be without some form of redress. The Copyright Act contains no similar “lawful use” requirement. Provided that TPB went through the formalities of registration first, they would be able to enjoin further use of their logo by Sandryds Handels if they sued under Title 17, and they might even be able to collect “actual damages,” which would be hard to prove.

Unfortunately, I doubt that they would be able to collect statutory damages or attorneys’ fees, as I am certain that they did not register the copyright within the statutorily required time frame for such prizes to be awarded.

That said, if you want to see the irony meter in the roflcopter go over 9,000, file a copyright infringement suit on behalf of TPB.

H/T: Tactical IP


A Likelihood of Confusion and Cameltoe Camouflaging

December 4, 2009

By: Zac Papantoniou

H/T to Ryan Gile at Las Vegas Trademark Attorney Blog, for bringing this trademark infringement suit involving cameltoe-covering undies to light, and thus making it clearly visible for us here at the Legal Satyricon to find (Note – Due to the nature of this case, and my juvenile sense of humor, I take no responsibility for making really bad puns).

Ryan Gile wrote an interesting post yesterday, regarding a trademark infringement lawsuit filed in the U.S. District Court for the Eastern District of Michigan. The plaintiff and defendant in the suit are competing makers of cameltoe covering underwear for women, who both (at some point) have used a variation of the word “camouflage” to identify the brand of their respective products.

According to the complaint, Ruby Tuesday Designs, LLC (the Plaintiff) has been engaged in selling its cameltoe-masking undergarments under the mark KAMELFLAGE since March 2009. The Plaintiff is suing Camelflage, LLC, who registered the domain name “camelflage.com” on May 27, 2009; two days later, the Defendant also applied to the USPTO for registration of the word mark CAMELFLAGE (for undergarments and other apparel) stating that the mark’s first date of use-in-commerce was March 15, 2009. The Defendant is currently selling its version of cameltoe-masking undies through their aforementioned website using the CAMELFLAGE mark. The story leading up to the filing of the suit has some amusing twists and turns (which Gile has done a superb job of detailing in his post on the matter), not to mention plenty of references to cameltoes, so if you want a few laughs (and some case analysis) check out Gile’s take on the suit.

As for my take on the matter . . . I would give at least $100 to be in that courtroom, as the judge attempts to keep a straight face while listening to a couple of attorneys argue for/against a likelihood of confusion in the context of cameltoe camouflaging apparel.


The USPTO Embraces the Blogosphere, Lobbies for First-to-File

November 10, 2009
Kappos

Kappos: “Hey Ted, can you show me how these here tubes work?”

The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.

In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog.  In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.

The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention.  The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in.  The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention.  The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.

Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.


This post was originally published on The Tactical IP Blog.


Marc Randazza’s Arbitration Win Over Glenn Beck

November 6, 2009

Free Speech Wins Again.

The Decision is available here:
Glenn Beck v. Isaac Eiland Hall, WIPO Case No. D2009-1182

Other case documents available here:

Complaint
Request for Stipulation
Response and annexes.
Supplemental Filing
Surreply

I am delighted that I got this decision today, which is the birthday of my friend and mentor, Larry Walters. Larry, this win is hereby dedicated to you. Happy Birthday.

UPDATE: Respondent Isaac Eiland-Hall voluntarily gives Beck the domain, saying “point made, sir.”

Another Update: The Brown Tweed Society does a three part story on the case. In this discussion, the author really gets to the heart of the matter and provides strong analysis of the case and its pleadings. Heck, the BTS also criticizes some of my work, so it does not seem at all biased.

    Part 1

    Part 2

    Part 3

Sweet Home Trademark Infringement FAIL

November 5, 2009

redneck

Ah kin file this here Lannem Act violation fer ya!

The University of Alabama needs to fire its attorneys and fire its public relations department.

Daniel Moore is a famous artist who has devoted his painting career to depicting scenes from Alabama football games. Some dim wit at the University of Alabama decided that A) this violated the University’s trademarks (because Moore painted the players in their crimson and white uniforms) and B) that it might be a good idea to sue him for trademark infringement.

Moore denied violating trademark laws and claimed his art is speech protected by the U.S. Constitution.
U.S. District Court Judge Robert Propst, in an opinion issued Monday, rejected the university’s argument that Moore’s paintings violated trademark law by showing Alabama players in their crimson and white uniforms.
“This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings,” said Propst, a University of Alabama graduate. He said the purpose of the paintings was to “artistically depict and preserve notable football plays in the history of University of Alabama football.” (source)

Alabama… come for the incest. Stay for the morons.


Mattel finally learns how to “chill”

October 30, 2009

by Jason Fischer

One of the chores inherent in the practice of law is that one has to read a lot of really REALLY dry court opinions. It’s always nice when you find judges out there who recognize this, and make some effort to keep it interesting. One of my favorites from law school has always been Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). Well, this week saw an interesting footnote added to that opinion.

The Back Story

Most will probably remember that there was an annoying pop song, which was recorded back in the 90’s, called “Barbie Girl.” The group Aqua‘s single claim to fame was a huge success, despite being about as appealing to listen to as nails on a chalkboard — don’t let the number of stars assigned to this YouTube clip fool you.

If anything, I have to admit that I find the song amusing, and unlike 2 Live Crew’s “Pretty Woman,” I can believe that Aqua actually created the song to poke fun at the materialistic nature of Mattel’s Barbie franchise, instead of coming up with that justification after a lawsuit has been filed. True to form in those days, Mattel was not amused with Aqua’s parody, and decided to do what it always did back then… file an infringement lawsuit. While the case was pending, a Mattel spokesperson went on record, criticizing the defendants for not respecting their intellectual property rights, which of course spurred a defamation counterclaim.

The trial court made short work of both sides’ allegations, dismissing all with a summary judgment. The court determined that the Aqua song incorporated Mattel’s trademark as a means of identifying Mattel, not to unfairly compete with the toy company. That’s fair use.

Everyone appeals, hilarity ensues

Hon. Alex Kozinski (who is probably better known for more recent events) sets the tone for his now-famous opinion in the first line: “If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.” From there, he explores a brief history of the Barbie doll’s origins as an adult toy, modeled after a German hooker — something I’m sure that Mattel would rather not have reported on. Moving on to an expert legal analysis of the balance between the First Amendment and intellectual property rights, Kozinski concludes by boiling down the defamation claim as unsustainable:

MCA filed a counterclaim for defamation based on the Mattel representative’s use of the words “bank robber,” “heist,” “crime” and “theft.” But all of these are variants of the invective most often hurled at accused infringers, namely “piracy.” No one hearing this accusation understands intellectual property owners to be saying that infringers are nautical cutthroats with eyepatches and peg legs who board galleons to plunder cargo. In context, all these terms are nonactionable “rhetorical hyperbole,” Gilbrook v. City of Westminster, 177 F.3d 839, 863 (9th Cir. 1999). The parties are advised to chill.

Mattel slunk away, licking the wounds of its latest intellectual property litigation defeat. For the next several years, it appeared as if they had not learned their lesson (see, e.g., here, here, here, and here). However, yesterday morning, the doll maker launched an ad campaign that demonstrates that they may have finally hired a decent attorney who gives better advice grown up. (source)

New commercial with altered lyrics


This story was originally published on GaneshaFish.com


Vagina Mints

October 18, 2009
Awesome logo.  Creepy product.

Awesome logo. Creepy product.

“Linger” is a new product… the company describes them as “internal feminine flavoring.” See, get it? The little schematic va jay jay? I have to hand it to them. That is both clever and visually pleasing. Of course, given that it represents a vagina, I wonder how it will fare if they ever try and get it registered as a trademark. See posts on “Immoral and Scandalous” trademarks.

Now lets look at the product itself. Here is how the company’s website describes its utility.

Linger Internal Feminine Flavoring, was created to flavor the woman in such a manner that is safe and effective, decreases self consciousness, and increases excitement. It improves the length and quality of oral sex between a woman and her intimate partner. (source)

Wow.

Not “wow” as in “awesome.” “Wow” as in WTF?

I mean, unless there is something actually wrong going on down there, vaginas are naturally, well, umm vagina flavored. If you need mint flavoring to “linger,” well then maybe your girlfriend needs a new boyfriend (or a new girlfriend as it were).

But, I suppose that the occasional novelty of something different can’t be discarded out of hand.

The story of how the coochie mints came to be actually makes them sound exotic… erotic… exciting! The owner claims to have met some aristocratic Indian guy who introduced her to this Subcontinental erotic secret. Source.  It’s a good story. She might have gotten away with it too, if it wasn’t for you meddling kids that meddling Jen Phillips over at Mother Jones. She writes:

My tin of Linger looked a lot like one of those tins of mints that are given away at trade shows. And guess what? That’s what it is. A little digging revealed that Linger is made/distributed by a company called Admints, which just happens to make trade show mints. And the Linger samples just happen to have have the exact same shape, taste, and ingredients as Admint’s sample mints. (source)

Phillips also informs her readers that the primary ingredient in these mints is sugar, “which is not safe for the vagina. It messes up the pH and can lead to a really painful yeast infection, a condition that definitely doesn’t make someone want to “linger.‘”

So for eight bucks, you can get a 99 cent box of mints and a yeast infection. Right this way, ladies!

The logo for my new product - Baco-vajayjay!

The logo for my new product - Baco-vajayjay!

I have a better idea! We’ll call it “The Legal Satyricon Technique.” Just stuff your vagina with bacon! It is a proven scientific fact that both men and lesbians LOVE bacon. AND, it won’t change the pH in there. Put a half a pound of bacon (cooked please) in your vagina. He can’t have entry into your vagine until he makes all gone with the bacon! Of course, since he loves bacon, it won’t be a chore now, will it?

Or you could just buy some Uncle Oinker’s bacon mints and stuff those in your box.


Immoral or Scandalous Matter?

October 14, 2009

by Jason Fischer

One of the "peculiarities" of U.S. trademark law is that the government has a stick up its collective ass about recognizing trademarks that may be suggestive of dick-and-fart humor.  Section 2 of the Lanham Act (the federal statute that creates trademark rights) provides:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

  • (a) Consists of or comprises immoral, deceptive, or scandalous matter . . . .

15 U.S.C. § 1052 (2008).

epic-name-fail

Presumably, you can decide for yourself whether the above image is offensive or (as I did) worthy of a snicker or three.  It looks like, from the license plate and unfamiliar make/model of the van, this company is doing business overseas, but rest assured this mark would never appear on the principal register of trademarks in this country.  Now, don’t misunderstand me; if this business opened up an office on this side of pond, they could likely prevent others from using the same mark, based on any common law rights that could be established, but our federal government would never give them the benefits of a federal registration for the mark.

Now, you may be asking yourself, "Wait; isn’t that the whole point of trademark law — preventing others from using your mark?"  That is true, but the game gets much, MUCH easier when you have a federal registration.  Establishing common law rights is generally an extremely lengthy and expensive evidentiary process, which involves paying your attorney to prepare and file a phone-book-sized amount of paperwork in any infringement suit.  Compare that with the single sheet that must be presented by the owner of a federally registered trademark, and you begin to see some of the benefits of registration.

Lots of hardcore civil libertarians that I know pound the table and froth at the mouth while denouncing the puritanical nature of our trademark regime.  Even though I don’t get as worked up, personally, I do happen to agree.  What difference does it make that someone wants to call their business "Butt Drilling"?  Do we really need the federal government to discourage that guy from doing what he wants with his entrepreneurial humor?  Should we be shielded from this "attack of immorality" at the expense of his freedom?  Trust me, plenty has already been written on whether there is even a rational basis for Section 2(a), by people way smarter than I — enough that I won’t bore you with any more.  Suffice it to say, it is something that must be given careful consideration when choosing your brand.


This story has also been published on The Tactical IP Blog.


The North Face claims that consumers don’t know their heads from their asses

October 3, 2009

by Jason Fischer

The North Face logo

Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly. It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea. TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).

TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above). On its face, TNF’s claim is not so unreasonable. As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them. TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo. However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like. Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases. It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.

The South Butt logo

In order to be actionable as an infringement, the South Butt logo must be likely to cause confusion in the minds of the consuming public. In other words, if “an idiot in a hurry” would not be able to tell the difference between these two logos, then TNF could conceivably stop South Butt from using their logo. I think South Butt’s attorney states the issue with TNF’s claim pretty well:

I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt. (source)

The irony is that, as many other companies have learned in the past, over enforcing your trademark rights can have the exact opposite effect from the one that you intended. In this case, only a few people were even aware of the “South Butt” brand before TNF took any action. Presumably, TNF wanted to suppress this innocent gibe at their popular brand, but instead, they only managed to boost web traffic at shop.thesouthbutt.com.


This story has also been published on The Tactical IP Blog.


Glenn Beck’s WIPO Complaint

September 28, 2009

wipo logoA very interesting case that Marc is handling.

He filed this Response (don’t forget the annexes) to Glenn Beck’s Complaint (exhibits included) yesterday.

UPDATE: He has requested that Mr. Beck stipulate to the First Amendment applying to these proceedings. I will update you when Beck responds.

ANOTHER UPDATE — ROUND TWO:

Glenn Beck filed a supplemental filing.
The Arbitrator accepted it and asked for a surreply.
The surreply — (and the exhibits to it)

Marc asked that LS’s editors/writers publish no further commentary on the case until a decision is rendered. However, there is commentary and analysis here.

He has further asked that any comments to this post should be respectful to both Mr. Beck and his attorneys.


“But We’re Just An Innocent Web Host” Ain’t Gonna Cut It

September 7, 2009

Well, yes, you actually do have to worry.  If you are an online service provider, the DMCA is not a magic shield.  Do your homework and keep your eyes open, or you'll get tagged as hard as the actual infringer.

Well, yes, you actually do have to worry. If you are an online service provider, the DMCA is not a magic shield. Do your homework and keep your eyes open, or you'll get tagged as hard as the actual infringer.

Akanoc Solutions Inc., Managed Solutions Group Inc., and Steven Chen, the owner of the two companies learned the hard way that being a web host doesn’t make you automatically free from liability for copyright and trademark infringement committed by your customers. The ISPs involved hosted websites that sold knock-off Louis Vuitton goods, and they were made aware of that fact. A jury found that they knew, or should have known, that their customers were using their services for this purpose, and tagged the web hosting company for a $32 million verdict.

Chen’s lawyers argued that he and his companies were protected from being assessed damages under the DMCA, which generally does protect online service providers from these kinds of suits. However, given that Chen’s companies both provided the infrastructure for the infringement scheme and that they were made well aware of the activity, but turned a blind eye to it, they lost their immunity. See Computerworld.

The case is Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., U.S.D.C., Northern District of California, Case5:07-cv-03952-JW.
The complete case file is available here, on Justia.

Important case documents:

    Vuitton’s Amended Complaint
    Defendants-motion-summary-judgment
    Plaintiff’s Opposition to Motion for Summary Judgment
    Akanoc-Order-on-summ-judgment
    Jury instructions
    Jury verdict form

Medinol v. Neuro Vasx is Dead

August 31, 2009

In Medinol Ltd. v. Neuro Vasx Inc., 67 U.S.P.Q. 2d 1205 (TTAB 2003), the Trademark Trial and Appeal Board held that a trademark registration that contains erroneous information, such as goods and services that were never sold under the mark, would render a trademark registration as fraudulent and subject to cancellation. The TTAB imposed a constructive knowledge standard for errors in the trademark application. Calling a mere error “fraud” seemed like harsh medicine.

Under Medinol, if an applicant for a trademark says that he sells Widgets, Donkeys, and Thingamajigs under the trademark RANDUZZI, he had better actually sell Widgets, Donkey, and Thingamajigs under that mark. If the applicant only sells Widgets and Donkeys, Medinol said that he committed “fraud” — therefore the application is void. To the best of my knowledge, nobody has been prosecuted for fraud, nor perjury under this standard — it has just cost them their trademark registration.

There has been a lot of consternation over this case. Calling an honest mistake “fraud,” rubs some people the wrong way. Well, it sure rubbed the Court of Appeals for the Federal Circuit the wrong way. The CAFC just ruled that Medinol is no longer good law. See In Re Bose Corporation, Opposition No. 91/157,315.

The Board stated in Medinol v. Neuro Vasx, Inc. that to determine whether a trademark registration was obtained fraudulently, “[t]he appropriate inquiry is . . . not into the registrant’s subjective intent, but rather into the objective manifestations of that intent.” 67 USPQ2d 1205, 1209 (T.T.A.B. 2003). We understand the Board’s emphasis on the “objective manifestations” to mean that “intent must often be inferred from the circumstances and related statement made.” Id. (internal quotation marks omitted) (quoting First Int’l Serv., 5 USPQ2d at 1636). We agree. However, despite the long line of precedents from the Board itself, from this court, and from other circuit courts, the Board went on to hold that “[a] trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading.” Id. (emphasis added). The Board has since followed this standard in several cancellation proceedings on the basis of fraud, including the one presently on appeal. See Bose, 88 USPQ2d at 1334.

By equating “should have known” of the falsity with a subjective intent, the Board erroneously lowered the fraud standard to a simple negligence standard. See Ileto v. Glock, Inc., 565 F.3d 1126, 1155 (9th Cir. 2009) (“Knowing conduct thus stands in contrast to negligent conduct, which typically requires only that the defendant knew or should have known each of the facts that made his act or omission unlawful. . . .”). (Op. at 5-6)

This result seems fair. Should a company lose its trademark simply because of what could have been an honest error in its original application? On the other hand, this case might prove to be all that is necessary for sleazy companies and sleazier lawyers to make “mistakes,” under a standard that will essentially free them from any responsibility at all. Nevertheless, for better or worse, Medinol v. Neuro Vasx is dead.