The FTC Finally Targets an IP Troll

For any who don’t know, a “troll” is a company (and its lawyers) that sends out thousands of cease-and-desist letters threatening a lawsuit against a supposed infringer of that company’s supposed intellectual property. It’s a nasty practice that has brought the trolls (and their lawyers) many hundreds of thousands of dollars over the years. Finally, the Federal Trade Commission is beginning to protect the innocent public against these unscrupulous “licensing” demands.

USPTO and Politically Correct Speech

The US Patent & Trademark Office issued a ruling that the name of the Washington, DC NFL football team is derogatory and offensive toward Native Americans. They cancelled the trademark.

The Washington team has had its name since 1933. They started out in Boston as the Boston Braves in 1932, becoming the Boston Redskins when they moved to Fenway Park in 1933. Boston, in colonial times, had a friendly relationship with the surrounding Native American nation; the Native Americans and their new neighbors coexisted peacefully (for the most part) and helped each other out. The team’s founder respected that history when he named his team after the proud Native American.

The football team moved to DC in 1937 and was, from that day til this, known as the Washington Redskins. Their logo is a very handsome Native American brave, who signifies very well a tough and successful football team.

Evidently the USPTO is falling for the current trend toward politically correct speech, something a government agency has no business doing. This mark is almost 100 years old. It is a famous mark. And it will now cost the Redskins franchise $millions to rebrand. That, of course, will be reflected in an increase in ticket prices, which deleteriously affects the public. This is all for something I have trouble comprehending. I would think that naming a successful football franchise after the proud people who originally found this continent and helped their neighbors through tough times would be something that honors the Native American, not something that denigrates them.

A line needs to be drawn somewhere on all this political correctness; canceling an old and famous mark that honors the Native American by naming an NFL franchise after them goes, in my book, more than a little overboard.

All this politically correct speech has me flummoxed. I give up. I shall continue to simply call a spade a spade; if you find that to be offensive or politically incorrect, you’re welcome to call me whatever politically incorrect term for a white Anglo-Saxon Protestant you can come up with — the two I know of are a WASP and a honkey (a term that I find hilarious because it is actually accurate). I won’t get mad over noises.

Washington Redskins

It’s been quite some time since I posted to this blog, and I have to come back with a rant.

The Washington Redskins are an NFL football franchise. Nothing more, nothing less. However, their name is evidently a political fireball.

The pro column for changing the name is limited to political correctness, which, I’m sorry, I have a problem with. We can’t call a spade a spade these days without offending someone. I don’t even know if those who are of Native American descent are offended by the NFL’s calling their Washington team the Redskins. Me, I look at it as the team based in our nation’s capital is honoring the Native Americans. But I guess that’s not the politically popular view these days.

The con column for changing the name is legion. The team will have to spend $millions to re-brand itself. The logo will have to be changed. The colors will have to be changed. The stadium and road signage will have to be changed. The direct marketing collateral will have to be changed. And what about all those franchise-specific marketing paraphernalia — the mugs, the hats, the key rings, the sports cards, the kids’ uniforms bearing RG3’s number? Those will all have to be changed. Redskins sports memorabilia bearing the Redskins logo and name won’t exist, and that will do a number on the market for that memorabilia.

Can’t we just call a spade a spade?

Starbarks and Starbucks: A Story of a Trademark Problem

Starbucks objects to the name of a new dog daycare facility outside of Chicago. Starbarks is evidently too similar to Starbucks for the coffee chain. They’ve sent a cease-and-desist letter threatening legal action unless the owner changes the name post haste.

Andrea McCarthy-Grzybek, who co-owns the Illinois facility, can’t afford to pursue the case in court, so she, having just launched her business, says she will comply and change the name, even though she insists that any resemblance to the Starbucks name is merely coincidental.

Trademark infringement is determined by a series of factors which descend from Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961), specifically: “…the strength of his make, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant’s good faith in adopting its own mark, the quality of defendant’s product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities–the court may have to take still other variables into account.” Every circuit court of appeals in the US has adopted its own very similar list of factors that it looks at for trademark infringement claims.

If I were the judge deciding this case under Polaroid, I would analyze this as follows:

1. Strength of the mark: Starbucks is an arbitrary mark, which is strong; an arbitrary mark is a mark that uses existing words to mean something entirely out of the context of the meaning of the word or words. Furthermore, the Starbucks mark is famous; Starbarks is more suggestive for the services provided; dogs bark, this is a dog day care facility, which makes Starbarks a more suggestive mark, which is weaker than an arbitrary mark. This factor leans toward Starbucks.

2. Similarity between the two marks: Starbucks vs. Starbarks has two letters’ difference. That’s pretty similar. Furthermore, Starbucks has as one of its logos an oval or circle with the word STARBUCKS in the top side of the rim, a star on each side of the word, and COFFEE in the lower portion of the rim, with a stylized face inside; This logo, although color is not a registered part of it, is generally shown in green and white. Compare that to the logo shown on the poster made by Starbarks, shown here. To my eye, these two marks are disturbingly similar, leaning this factor toward Starbucks.

3. Proximity of the products. Coffee … doggie day care. Not similar at all. This leans toward Starbarks.

4. Likelihood that the prior owner will bridge the gap. Is it really likely that Starbucks, known for its coffee and related products, actually going into the dog-walking business? Probably not. This leans toward Starbarks.

5. Actual confusion: We know of no one who has actually confused Starbucks and Starbarks; if it is indeed the case that no consumer actually confused the two businesses, this factor leans toward Starbarks.

6. Reciprocal of defendant’s good faith in adopting its own mark: Ms. McCarthy-Grzybek insists that any resemblance to the Starbucks name and logo is merely coincidental. If that’s true, her good faith is large, which would lean toward Starbarks; if, as Starbucks would very likely maintain if the case were to go to court, this factor would lean toward Starbucks.

7. Quality of defendant’s product: We know nothing of the quality of the dog-sitting service Ms. McCarthy-Grzybek provides. Assuming it’s of a reasonable quality, this factor would lean toward Starbarks; if she neglects the dogs or otherwise does not perform her duties in the way a reasonable dog-sitter would do, it would lean toward Starbucks.

8. Sophistication of the buyers: Both companies have the upscale general public for customers. The courts have repeatedly held that the general public is not a sophisticated buyer. This factor leans toward Starbucks.

Solely on the Polaroid analysis, Starbarks, the Doggie Daycare, could win. However, there’s another prong to a trademark infringement suit. Because the Starbucks mark can easily be proved to be famous, the spectre of trademark dilution raises its ugly head. Starbucks, once it shows its mark is famous, has standing to prevent anyone, no matter how disparate the product or service, from using a mark that is similar to its own. The logic behind that is that since a famous mark is so well known among consumers, those consumers automatically assume that a mark that is similar to a famous mark is affiliated with the owner of the famous mark regardless of the product or service being sold.

Frankly, I don’t see much hope for Starbarks under the dilution doctrine. It is wise of Starbarks’ owner to decide that changing the name and the logo of the doggie daycare business to something that does not come anywhere close to Starbucks’ name and logo is the way to go.

Starbucks is Revamping Its Image

They just unveiled their new logo. See the Yahoo! story.

Companies update their logos from time to time, and the changes, as long as they don’t completely change the logo, are considered to be part of the continuous use of the logo. For example, the little girl carrying the spilling salt on the Morton Salt container has undergone wardrobe and hairstyle changes from her debut appearance in the early part of the 20th Century. Even with the changes, the mark is deemed to have been in continuous use since the spilling salt’s introduction.

Starbucks is following suit; they have modified their logo four times in the last 40 years, yet their logo is deemed to have been in continuous use.

Chinese search engine Baidu sues Register.com

…for allowing cyberterrorism against it.

Evidently, hackers got into the baidu.com website and posted an Iranian flag and a broken Star of David. Baidu claims that this damaged its reputation in the world marketplace, and perhaps it did.

It’s going to be interesting watching this battle. Is Register.com responsible for the activities of the hackers? Should they have taken further steps to protect the baidu.com domain? If so, what should those steps have been?

Stay tuned for the answers to these and other questions….

Google – in French

Trademarks are always adjectives. That is the first thing I learned in trademarks class in law school. Take that as a given. Trademarks are always adjectives. By corollary then, trademarks are never verbs.

Enter GOOGLE®. GOOGLE is a search engine that prowls the internet and Finds Things with reasonable efficiency, and it is very popular. So popular, in fact, that the name of the website and company — Google — is now defined as “to search for on the internet.”

Whoa. That’s a verb. Notice the infinitive there? “To search…” That must mean that the word being defined is a verb. “To google.” I hear “google” being used as a verb in common parlance all the time: “I googled myself” instead of “I ran a GOOGLE® search on myself.” It’s shorter. It’s easier to say. It’s wrong.

By making the mark synonymous with that which the mark is meant to identify, the English speakers of the world have admitted the verb “to google” into the English language. English does that. It gloms onto new, interesting and fun words and simply swallows them whole. It did that with aspirin, cellophane and escalator. It’s doing that with XEROX® and KLEENEX®. And, it seems, English is glomming onto GOOGLE®.

French, on the other hand, does not glom. The French language is governed and controlled by a group of word scholars in Paris called >L’Academie Française. These etymologists examine every new word that comes their way to see if the word is eligible for admission into the French language (don’t ask me about the standards they use; run a GOOGLE® search on “l’academie française” and find out for yourself). Therefore, when a new word makes it into the French language, it’s a pretty big deal.

Regardez ici — that means “Look here” for you non-French-speakers — and see what has happened in French. I even heard a rumor from a French-scholar client of mine that it’s officially listed by L’Academie.

Wow. The French have admitted “googler” (pron. “goo-GLAY”) into their language. Is this admission based on usage the death knell for the GOOGLE® mark? After all, if a mark comes to mean what the product or service is, the mark can be challenged as being generic. Even fanciful marks can turn generic with usage: the list of these is long. Escalator. Cellophane. Aspirin.

Stay tuned.

Disney to Buy Marvel for $4 Billion – ABC News

Disney to Buy Marvel for $4 Billion – ABC News.

Wow. Just wow.

Disney is already among the biggest entertainment businesses in the world, what with the movies and the theme parks and the hotel properties and the Broadway shows and all the rest of it. I believe they even have an inroad in the comics market (if they don’t now, I’m sure they did when I was a kid; I remember Mickey Mouse comics). Marvel has a thoroughly different look from Disney, so this will be an interesting evolution. I wonder if Superman will develop the Disney eyes?

Relatives barred from using Gucci brand name in U.S. | Reuters

Relatives barred from using Gucci brand name in U.S. | Reuters.

It’s not like names provide the strongest marks in the world; in fact, generally speaking, a name mark is on the weaker side. Unless it’s famous.

The Gucci® name is a famous brand. You hear it, you think of the high-end  clothing and accessories designed by the Italian designer owned by the French couture house PPR. Now, along come the designer’s ex-wife, Jennifer Gucci, and their daughter, Gemma Gucci, trying to sell clothing and accessories under the name Gucci. Well, it’s their name, too, right?

Wrong. The US District Court for the Southern District of New York has enjoined these ladies from using the famous Gucci mark or anything confusingly similar to the mark for any products or services they might want to market. The bench trial showed the judge that the products and branding were confusingly similar to the Gucci merchandise; there’s a permanent injunction now in place.

How does the judge make the determination that a brand is “confusingly similar” to a senior brand?

In Polaroid Corp v. Polarad Elects. Corp, 287 F.2d 492 (2d Cir. 1961), Judge Friendly gave us the seminal test for likelihood of confusion. The so-called “Polaroid factors” are:

  • the strength of the [original] mark
  • the degree of similarity between the two marks
  • the proximity of the products [i.e., how similar are the products identified by the senior and junior marks?]
  • the likelihood that the prior owner will bridge the gap [i.e., if the products are different, will the owner of the senior mark be likely to enter the marketplace where products/services identified by the junior mark are sold?]
  • actual confusion
  • the reciprocal of defendant’s good faith in adopting its own mark
  • the quality of defendant’s product, and
  • the sophistication of the buyers.

Judge Friendly went on to state, “Even this extensive catalogue does not exhaust the possibilities–the court may have to take still other variables into account.” Thus, the lower courts must look at the listed factors and weigh them individually and together to determine the likelihood that a reasonable consumer in the marketplace would be confused as to the origin of the junior brand.

Let’s apply these factors to the Gucci case. The Gucci ladies marketed clothing and accessories under their name. Gucci the senior user markets clothing and accessories under the name. While a name mark is not terribly strong, any mark, including a name mark, acquires strength as its fame increases. The Gucci mark is famous (heck, even I’ve heard of it); therefore it is stronger than just an ordinary name mark would be. Consumers have come to associate that brand as identifying the senior user as the source of those goods in the marketplace. The senior user wins this point.

The degree of similarity? Identical. Gucci = Gucci. The senior user wins this point.

The proximity of the products is the next factor. The senior user markets clothing and fashion accessories. The two Gucci ladies marketed clothing and fashion accessories. These products are not only proximate, they are identical. Senior user wins again.

The likelihood that the senior user will bridge the gap. There is no gap to bridge. Senior user wins again.

Actual confusion. Without having read the transcript of the trial, I don’t know whether the senior user could produce evidence of actual consumer confusion in the marketplace; this would have been done through surveys. This one’s a draw until further notice.

Reciprocal of defendant’s good faith in adopting the mark. One of our junior users is the ex-wife of the designer. Ex-wives tend to have questionable good faith in matters such as this. The other junior user is the designer’s daughter. Her good faith may or may not be in question. Either way, these ladies decided to use their own name in the marketing of their product lines. However, they were in a position to know that the senior mark exists and could not help but know that they would be riding on the coattails of the success of that mark. If I were the judge, I’d lean this one toward the senior user even knowing what little I know.

Quality of the junior user’s product. I have no information on that.

Buyer sophistication. Senior-mark Gucci buyers are generally decently educated and fairly well off financially; they would therefore probably be at the higher end of the sophistication scale. This one could actually work in the junior users’ favor.

Taking all these factors together, the weight, under my quick-and-dirty glance through this case is  on the side of the senior user. Therefore, the verdict granting a permanent injunction against the Gucci ladies is not surprising to me.

Not all marks are as clear-cut as is this one, at least in hindsight, is. A trademark infringement suit can destroy a young company’s marketing plan and cost that company tens or hundreds of $thousands. We don’t like to see that happen. Therefore, when you name your company, you should have a trademark search done as well as a search for the corporate name. The money you spend on that initial investment in your business can provide you with peace of mind that you do not tread on someone else’s intellectual property, thereby giving that someone else the power to shut you down before you even start.

Twitter attempts to trademark the term tweet

Twitter attempts to trademark the term TWEET.

Huh.

Twitter wants to register TWEET as a mark, but they’re planning to peaceably coexist with those who use the mark in the same commercial space as Twitter does.

First of all, they haven’t been using TWEET as a mark. TWEET, in the Twitter world, is a noun; trademarks are adjectives.

Second, their proposed use flies in the face of US trademark law and in the face of trademark usage. Trademarks are in place to protect the public from confusion as to the source of goods and services in the stream of commerce. If the mark is used by many to describe goods and services for many sources in the same commercial space, the public will be confused as to the source of goods and services sold or marketed under the mark. Thus, the mark would not be usable as a trademark is intended to be used.

Sorry, Twitter. If I were the examining attorney on this one, I’d deny the registration of the TWEET mark based on genericism. That’s what your own strategy makes of it.