LIKELIHOOD OF CONFUSION®

The Merriam-Webster Online dictionary has a cute little feature:  The “Top Ten Words for Trademarks.”  You know, mainly the usual suspects:  Band-Aids, etc.  It’s a study in what can go wrong if you don’t “police” your trademark, yada-yada-yada.

A Webster, not a webster

Speaking of brand management and equity, when I saw this link — hat-tip to Jane Coleman! — it reminded me of how much the Merriam-Webster people need to do stuff like this to build back the primacy they ought to have online but which I have the impression has been ceded to Dictionary.com.

That, in turn, made me think of the one famous “word from a trademark” — the one damnable genericized mark — Merriam-Webster left out of the list!

Reuters reports on a high-class trademark story I’ve been following since my own dancing days:

The male erotic dancer company Chippendales stumbled on Friday when an appeals court ruled that it could not trademark [sic] the bow tie and shirt cuffs that the men wear.  The US Court of Appeals for the Federal Circuit said in a ruling which included a sketch of a fit gentleman shown from the waist up wearing only a bow tie and shirt cuffs that the US Patent and Trademark Office was correct in refusing to trademark [sic] the Cuffs and Collar costume.

“A fit gentleman”?  Fit?  Yes, certainly.  But “gentleman“?

Well, “gentleman” has long ceased to mean “gentleman,” after all.  I hear radio actualities where the cop says, “Then the gentleman proceeded to pistol-whip the granny and proceeded down toity-fifth street where he encountered the officers and was apprehended.”

And then, of course, there’s the “gentleman’s club,” inside of which the one thing you are not likely to encounter is, I can only speculate, a gentleman.  There are websites like that too, I hear.

But more on that sort of thing shortly.

Yes, of course this “fit” bloke is a “gentleman”:  Didn’t you read what the story said?  Look what he’s wearing:

Not a trademark. Not that there's anything wrong with that.

A bow tie!  And detachable collar and French cuffs!  Sure, the collar and cuffs are attached to nothing but air, but still — what could be more gentlemanly than that?

Which is all very well and good… but evidently not enough to constitute protectible distinctiveness.  Sliding in half a day ahead of me, Patently-O explains why (and provides a link to the opinion, here):

In particular, the Board noted that strippers often wear revealing would-be professional costumes such as a stethoscope, utility belt, or chaps with a ten-gallon hat.  In this case, the Chippendales Cuffs & Collar costume appears directly derived from a Playboy Bunny costume [which also features a bow tie, detachable collar and French cuffs attached to nothing].  Based on these facts, the Board held that the Chippendales outfit failed the test for inherently distinctive trade dress outlined in Seabrook (CCPA 1977).

On appeal, the Federal Circuit first looked to determine whether the costume is part of the product design or only product packaging.  That distinction is legally important because of the Supreme Court ruling in Wal-Mart v. Samara Bros (2000) that product design is never inherently distinctive.  Here, the court held that the costume is product packaging — with the product being “adult entertainment services.” . . .

Here, the Appellate Court rejected the Board’s implicit holding that no costume on an adult entertainer could be inherently distinctive.  However, the Appellate Court agreed with the Board that the Cuffs & Collar costume was a “mere refinement” of the well-known Playboy Bunny costume.  As a result, the Cuffs & Collar costume failed the third Seabrook element and therefore lacks inherent distinctiveness.

Well, if “gentleman” doesn’t mean what it once did, don’t get me started on “adult” . . .

Either way, though, getting aced out of a trademark registration by the Bunnies — that’s got to hurt.  I do feel somewhat vindicated by the ruling rejecting the proposition that “no costume on an adult entertainer could be inherently distinctive.”  Because I think I said something like that in my original post on this topic, or the comments to it.  Notwithstanding that that post seems to have disappeared like, uh, the sleeves those cuffs are supposed to be attached to.

Either way, it appears that the Chippendales boys are going to have to dance their way into the sunset, and the hearts of middle-aged women everywhere, without that coveted circle-R.  Sorry . . . gentlemen.

UPDATE:  Speaking of gentlemen — see Welch at the TTABlog on this story.

Originally posted 2007-03-30 11:08:27. Republished by Old Post Promoter

Of course it’s called the Oregon Business Litigation blog!

Originally posted 2007-03-11 10:20:50. Republished by Old Post Promoter

A Chinese company

has been refused permission to use the name of a disgraced official as a trademark to sell rat poison.  Xinhua News Agency said the Shenyang Feilong Pharmaceutical Co. applied last month to use the name of Zheng Xiaoyu, who was fired as head of the national drug watchdog for suspicion of taking bribes, as its name for a brand of rat poisons and pesticides.

These Reds are really getting soft.

Originally posted 2009-10-06 22:37:52. Republished by Old Post Promoter

How much dumb can possibly be fit into a size two?  Walter Olson rounds it up:

Ralph Lauren lawyers: don’t you dare reproduce our skinny-model photo in the course of criticizing our use of skinny models [BoingBoing]

Ralph Lauren Model

With photoshop, evidently, quite a bit!  Here’s an excerpt from the original Boing Boing post, by Cory Doctorow:

Last month, Xeni blogged about the photoshop disaster that is this Ralph Lauren advertisement, in which a model’s proportions appear to have been altered to give her an impossibly skinny body (“Dude, her head’s bigger than her pelvis”). Naturally, Xeni reproduced the ad in question. This is classic fair use: a reproduction “for purposes such as criticism, comment, news reporting,” etc. . . .

As Wendy Seltzer from the Chilling Effects project said, “Sounds like a pretty solid fair use case to me. If criticism diminishes its effectiveness, that’s different from the market substitution copyright protects against. And I’ve rarely seen a thinner DMCA form-letter.”

Yeah, but a thinner cover girl you’re not going to see either.  I fear no C&D letter but don’t do model pictures at LIKELIHOOD OF CONFUSION®; you can check it at Doctorow’s post (or just click Olive Oyl above).  Do not adjust your sets:  That picture is for “real.”

Rooby Lifshitz is selling a bizarre concept of attractive, to say the least — as is, in its own inimitable (which is to say, similar gag-reflex-inducing) way, Greenberg Traurig.  Both are bad to the bone.

UPDATE:  The latest from Marty; and now Instanpundit has picked up the story and even the ABA Journal itself.

From Dennis Crouch:

Carl Oppedahl lost his case to register the mark “patents.com.”  However, that setback did not dissuade him from continuing to push against trademark law limitations.

Recently, the USPTO issued a trademark registration certificate for his “sensory mark.” The mark consists of a sixteen-second musical introduction that Oppedahl uses for his recorded lectures on patent law practice.

During the trademark prosecution, the USPTO examining attorney initially suggested that “due to the length of the proposed mark, consumers may consider the sound to be a mere entertaining prelude to the sound recording, more suitable as a copyrightable work than as a trademarkable source indicator.”

I would have suggested that too, at least initially.  Click at the link to see how Carl overcame that objection.

As for me, when I read “continuing to push against trademark law limitations” I reach for my revolver — “trademark law limitations” usually meaning “limitations on businesses’ ability to prevent competition by using fallacious trademark claims.”

But you’ve read this blog before.  Anyway, that is not the case here.  Rather, this is the good, clean, creative kind of push of trademark as a useful, pro-competitive tool that warms the cockles of LIKELIHOOD OF CONFUSION®’s notorious icy litigator’s heart.  It’s creative, good lawyering, and in terms of the purposes of trademark law, exhibits high fidelity.

Originally posted 2007-10-11 10:09:38. Republished by Old Post Promoter

(UPDATED, revised). That’s what Bob Cox is reporting in this story in the Examiner; more here. Google said it would not run anti-MoveOn ads because they supposedly violated its trademark policy prohibiting the use of anyone’s trademarks in online advertising by a third party. But Google should know better. Courts have repeatedly held that such a “nominal” use is not a “trademark use” at all.

Bob interviewed me for the article. Here’s what I said (I’ve added some supporting links here):

Ronald Coleman . . . noted that, as a private company, Google has the right to treat different advertisers differently.

But he called Google’s removal of the Collins ads “troubling.” Coleman says that there is no such requirement under trademark law and that Google appears to be selectively enforcing its policy.

“In a recent ruling, the Ninth Circuit Court of Appeals rejected the notion that there is anything like a cause of action under the Lanham Act, the statu[t]e governing trademark law in the United States, for so-called ‘trademark disparagement,’ ” Coleman said. The courts have also rejected the notion that the use of a trademark as a search term is a “legally cognizable use” as a trademark use under federal trademark law, he added. Coleman is also general counsel for the Media Bloggers Association.

Did I really say “troubling”? Gak. Truth is, this is an emerging area of law, and you can hardly blame Google for desiring a policy that keeps it out of Lanham Act lawsuits. They made a hard and fast rule, supposedly, though the background documentation makes it seem that Google has applied its policy selectively.

Selective application of the policy is “troubling,” yes, but what’s more important is that the Lanham Act has nothing to say when a trademark is being used by an “unauthorized third party” in connection with the assertion of political or ideological ideas. That is not a trademark use, and cannot be trademark infringement. Even if the trademark law did have something to say, the First Amendment would trump it. Judges are beginning to catch on to the idea that trademarks are not private licenses to censor, but they are catching on slowly.

Again: Google is a business. But let’s not be overly impressed when it makes its business decisions about content, political or otherwise, and calls this a “trademark policy.”

UPDATE: Discussed this topic on “Fox & Friends,” an early morning television program (sounds like a cartoon!) on Fox News, this morning.

UPDATE:  Resolution, of a sort, discussed here.

Originally posted 2007-06-27 12:51:36. Republished by Old Post Promoter

The Denver Post reports a very interesting, and for trademark plaintiffs very troubling, decision that the Supreme Court has refused to review. It has to do with one of the standard criteria for the granting of a preliminary injunction in any case:   A “balancing of the harms.” In short, a court has to balance the harm that would result in not granting a preliminary injunction against a defendant, where likelihood of success has already been demonstrated by the plaintiff, against the harm that would be imposed on the defendant if it did grant the injunction.

Courts, frankly, frequently give this factor short shrift in trademark cases, and especially counterfeiting cases. Under long established precedent, as this article discusses, irreparable harm is usually presumed when a trademark is infringed, and courts and even litigants do not typically spill a lot of ink on this factor, though there are exceptions.

Here’s a big one: Where evidence of the sale of counterfeit goods — here, cigarettes — suggested such a low volume of sales that the court figured that the preliminary injunction was not warranted (links added):

After discovering the sale of the fake cigarettes, Lorillard sought a preliminary injunction early last year against I&G Liquors, to prevent future sales of counterfeit goods.But a district court refused to grant the injunction, and the 10th U.S. Circuit Court of Appeals, based in Denver, upheld the decision earlier this year.

The appeals court ruled that Lorillard failed to prove it would suffer great harm without the injunction, as required by law, and also found that as a small business, the retailer would suffer greater harm from the injunction.

The court noted that Engida said an injunction would force him to stop selling all Newport cigarettes due to the difficulty of detecting bogus packages.

NAM said in its brief that the appeals-court decision set a far stricter standard for obtaining preliminary injunctions than Congress intended.

Now, trial judges are given wide latitude on these issues, and although the Tenth Circuit opinion addressed the issues –

Lorillard argues I and G would not be harmed from being barred from selling counterfeit cigarettes, since doing so is illegal anyway. As I and G points out, however, the counterfeit packages are so similar to genuine packages that an injunction would probably require it to stop selling any Newport® cigarettes while the suit was pending, for fear that it would inadvertently violate the injunction. Further, the district court did not clearly err in taking account of I and G’s status as a small business. All of these factors indicate that an injunction would weigh much more heavily on I and G than the lack of one would affect Lorillard.

– the heart of it, really, is this sentence: Read More »

Originally posted 2009-11-10 16:00:52. Republished by Old Post Promoter

Subliminal

Okay, folks — this one is for the lawyers, pretty much.  It’s a Contract Interpretation Quiz (I’ve added the emphasis):

Interpret this contract, reproduced below in full:

In consideration of the sum of One Dollar ($1.00) and other good, valuable, and adequate consideration, the receipt and sufficiency of which is acknowledged, the undersigned does hereby sell, assign, transfer, and set over to Bridgeport Music, Inc., its respective successors and assigns, fifty percent (50%) of his interest now owned or subsequently procured in the universe-wide copyright in and to the following musical composition(s) set forth in Exhibit A attached hereto, and all of the universe-wide right, title, and interest of the undersigned, vested or contingent, therein and thereto, including all claims for infringement of the copyrights whether now or hereafter existing, for the maximum terms of copyright, including any extensions and/or renewals thereto, throughout the universe.

The assignor sues for copyright infringement. Does the assignor have standing, or did it assign all claims for copyright infringement to the assignee?

According to the Eastern District of Texas, the assignor didn’t have standing. According to the Fifth Circuit, it did.
I woulda gotten this one, I think.  Gotten it wrong, that is.
Read More »

Originally posted 2008-05-11 23:02:29. Republished by Old Post Promoter

David Donoghue reports on an interesting copyright issue blowing around Chicago, my home away from home:

The Chicago Tribune‘s Ameet Sachdev reported that an ongoing copyright dispute may be coming to a head at the corner of Michigan Avenue and Randolph Street in Chicago, click here for the Tribune article. In the 1980s, Israeli artist Yaacov Agam was commissioned to create a sculpture for what would become the Stone Container building at 150 N. Michigan Avenue.* Over time, Chicago weather faded the work and the current owner hired an expert to restore the multi-hued work to its original look. Agam is unhappy with the restoration because he believes the colors were not restored to the exact shades he originally used. . . .

But Agam claimed to hold the copyright in the work and argued that the copyright allowed him to prevent the current owner from creating a derivative work, which Agam believed the restored or reconstructed work to be because of the changed colors.

Here’s another story on the controversy, from my old pal the Chicago Reader. This one jumped out at me, not only because of the Yaacov Agam part — whose much-better preserved work I walk past in New York’s Port Authority Bus Terminal frequently — and the Chicago part (I went to law school there) and, naturally, David’s incisive coverage, but also, naturally, the issue at stake.

I had never thought of a restoration of an original work as a derivative work as such, though there is a specific statutory provision dealing with restored works. It doesn’t come that often, though — most works don’t get restored, and anyway copyrights in the U.S. used to expire way before those works that mattered enough to merit it needed to be restored. Not any more!

Evan Brown:  ”Behold the power of in rem actions“:

In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name.  In a sense, the domain name itself is the defendant. . . .

An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com.  Plaintiff filed an in rem action and sought a temporary restraining order (TRO). . . .

The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)

The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.

Oh, when the defendant is this naughty, Evan, a question such as “was it really consumer confusion”? — perhaps we could ask, instead, “Was there really LIKELIHOOD OF CONFUSION given the sophistication of consumers?”–is, as we say in yeshiva, “not really a question.”

You’ve got a copycat domain name, a competing business and, for heaven’s sake, the Golden Ring itself — actual confusion?  Don’t give me questions!  And as Evan says, it’s for cases such as this one where the wrongfulness of the act is, not surprisingly, matched by the ethereality of the defendant that Congress gave us the in rem action.  Powerful stuff!

Originally posted 2007-05-22 00:06:05. Republished by Old Post Promoter

The Trademark Blog Is Five Years Old (hat tip to Welch)! That’s the equivalent of 84 in blog years. I would never have thought he’d last this long when I first met Marty…

I was a raw recruit just being shipped to Da Nang. The year was 1969, the nasty old world was a lot crazier place than a kid from Brighton Beach could ever have dreamed, and my NCO was a grizzled, shaggy-haired Master Sergeant the other dogfaces called “Iron Hands” Schwimmer. My corporal, “Lucky” Leo Stoller, warned me to steer clear of the beady-eyed vet and his jealously-guarded, light-blue set of what the other recruits called, mysteriously, “McCarthy’s.” I soon was unlucky enough to learn why. Schwimmer didn’t just seem distant and standoffish — he was impossibly nasty, brutal beyond any trace of rationale, and he delighted in the acrid smell of battle. But no one could put together paper trademark app that could sail through the PTO like

No, it wasn’t quite like that.  How do I convey… hmm…

“You want the truth?” screamed Marty at the top of his lungs, throwing the drained cognac glass into the burning embers a full 20 feet across the room. “You can’t handle the truth!” he raged, veins popping in his forehead, the timid examining attorney cowering in the plaid wing-backed chair. Picking up the iron poker, Marty waved

No, never mind. You have to know him to love him. Congratulations, Marty!

UPDATE:   That was two years ago, of course!  Thank God, Marty’s still alive, and well, and so is the Trademark Blog.