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

November 10, 2009

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:

Request for Stipulation
Response and annexes.
Supplemental Filing

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


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

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)


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).


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

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