Frisbee and Picking the Perfect Trademark

By Dave Rein

Pluto is no longer a planet.  It is also no longer the name of the flying disc now know as a Frisbee, but which was once known as "Pluto's Platter."  I stumbled upon that bit of trivia in reading about the passing last week of the inventor of the Frisbee, Walter Morrison.  But, selecting or changing a product's trademark is no trivial matter as the iconic Frisbee shows.   

I can't say whether Mr. Morrison's selection of Pluto's Platter was a good choice from a marketing view.  As a group, lawyers are not the best people to tell you what mark makes the most sense for your product.  Your marketing team or advertising agency are the experts who can help you find a unique, credible mark that will stand the test of time.  Or perhaps you came up with the perfect mark yourself.

What lawyers are good at is helping you narrow your choices to select one that you can protect so as to keep your competitors and knock-offs from using your perfect mark.  They are also good at helping you avoid ones that are too similar to those that others are already using.  Mr. Morrison's selection of "Pluto Platter" for a flying disc was probably a good choice from a lawyer's view.  

Today, a lawyer helping Mr. Morrison select a mark would evaluate which category of trademarks the proposed mark falls within:

  • Coined or arbitrary marks -- made up words like XEROX that do not have any meaning or words that do have meaning such as Apple, but not in the context of computers.  Lawyers love these because courts give them strong protection, but marketing tends to cringe at these because they do not tell the consumer anything about the product.
  • Suggestive marks -- words that suggest some quality of the product or service, but require some thought or imagination to determine the suggestion.  Pluto Platter probably fits here in that the mark suggests its shape and that it flies -- especially in the context of the 1950s UFO craze.  Courts would likely protect this mark, but would not give it as much protection as a coined or arbitrary mark.  
  • Descriptive marks -- words that directly tell the consumer what the product is or describe its attributes.  "Flying Disc" arguably falls in this category.  Marks that fall in this category generally take more effort and time before they become a trademark.  

When the name changed from Pluto's Platter to Frisbee, the mark may have climbed to the strongest category of protection. But, before making the change, someone had to determine if Frisbee was available.  Today, someone looking to see if anyone was using the same or similar mark might search:

There are any number of places to search so not surprisingly, there are professional search companies who can help in this process.  A search for Frisbee might have come up with the Frisbie Pie Company.  Indeed, one story is that college students in New England were actually calling Pluto Platter's, "Frisbies" after the Frisbie Pie Co. whose empty tins were tossed like the Pluto Platters.  Some even suggest that the name Frisbee was used instead of Frisbie to avoid a lawsuit.  A good lawyer can evaluate names like Frisbie that came up in searching for marks and advise the client accordingly.  

Whether the toy company could have used "Frisbie" or whether changing to "Frisbee" avoided a lawsuit will have to be left for another post.  Until then, tell us what you think by flicking us a comment, an e-mail or a Tweet!

Who Dat? The NFL and Trademarks

By Dave Rein

Whether you were looking for false advertising claims on the Super Bowl commercials, roving the streets of Miami looking for counterfeit merchandise or just enjoying the game, the Super Bowl had a little something for everyone.  

The NFL even threw those who have a special interest in trademarks a big meaty bone to chew on when the NFL claimed trademark rights in the chant:  "Who Dat?"  

The origins of "Who Dat" are not entirely clear, but it certainly has been used for many years and most recently by New Orleans Saints fans who chant:  "Who dat? Who dat? Who dat say dey gunna beat them Saints?" 

A furor immediately broke out when the NFL sent cease and desist letters to T-shirt shops in New Orleans selling merchandise with "Who Dat" on them.  Days before the Super Bowl, the NFL appeared to change its position when it claimed that it would only pursue those who use "Who Dat" in connection with other Saints trademarks.

But, there are plenty of others besides the NFL who claim to own a trademark in "Who Dat".  A search at the United States Trademark Office shows applications for "Who Dat" for pretty much any kind of apparel that you can think of, action figures and variations of the mark including "Who Dat!!" for more apparel, "Who Dat? Blues Band" for entertainment and "Who Dat' Je Crois" for T-shirts.  For a store owner such as Lauren Thom, the NFL's announcement that it is no longer laying claim on "Who Dat" only provides some relief given the myriad of claims on the phrase.

I thought it was interesting to review the USPTO applications for "Who Dat", "Who Dat?" and "Who Dat!!" for apparel.  The only difference between the applications, of course, being that one has no punctuation mark and the others have either a question mark or two exclamation marks.  Likewise, other applications simply added "Je Crois" to "Who Dat".  While these applications may be of limited use to one defending against claims of trademark infringement, they do give attorneys who are untangling this web a lot to talk about. 

Regardless, the Saints and their fans had a lot to cheer about this weekend.  In the space of a few days, they not only beat the Indianapolis Colts to win the Super Bowl, but they also beat the NFL itself.  Who Dat!

Correction: the earlier post incorrectly referred to registrations instead of applications. 

You Choose: Four Years of Litigation or Taking Care of the Copyright Portfolio

By Dave Rein

As one of my daughters has discovered Calvin & Hobbes cartoons, I wonder whether she'll be inspired to try some of Calvin's outlandish ideas such as barreling down a steep hillside and over the abyss in a red wagon or if she'll make the proverbial "note to self" not to follow Calvin when the last frame shows the resulting crash.

I get it.  There are metaphors and life lessons and the yearning for a more exciting life.  But, I'm not sure that casting away the "dull and boring" best practices is a good way to protect one's intellectual property.  The Seventh Circuit in Schrock v. Learning Curve Int'l, Inc. helped clarify some lingering questions about derivatives in the copyright world -- at least in that circuit.  As I mentioned in an earlier post, to do so, the parties spent four years just to get to an oral argument before the Court of Appeals.

In reading the opinion, two things struck me that might have avoided the litigation or at least kept it from being so prolonged.  First, it could have registered its copyrights in the toys.  Some of the toy maker's registrations only applied to literary works related to the toys, but not the toys themselves.  Whether the toy maker was the owner of the copyrights and whether they were properly registered (and therefore entitled to all presumptions that follow) was a matter the judges expressed considerable interest in at oral argument.  

Second, the licensing agreement between the toy maker and the photographer consisted of the terms stated in the photographer's invoices.  Leaving the determination of who owns a copyright and its licensing terms to the battle of the forms should make the true copyright owner nervous.  In Schrock, the toy maker realized what happened years after it started doing business with the photographer and asked him to sign a "work for hire contract".   He refused, but even if the photographer had signed the contract years after he first provided photographs, that may not have solved the problem.  Some jurisdictions require that the contract be signed before the work is created or at least require that it memorialize an oral agreement made before the work's creation. That may have been too high a hurdle in this case although it likely would have been effective if entered at the onset of the work.

Regardless of whether a work-for-hire contract would have been effective, the court noted that the parties could have contractually agreed that the photographer would not register his copyrights in the photographs.  Actually, it did more than note that issue.  It remanded the case back to the district court to determine if the parties agreed to such a limitation.   

Certainly keeping up with copyright registrations and thousands of contracts is a constant struggle for companies or individuals that continuously create new content.  In these times when general counsels are under increasing pressure to reduce their departments' budgets, it is even harder to do so.  The challenge then is how can they convince upper management of the wisdom to spend money now to avoid paying even more later.

The parties' ordeal in Schrock may be useful to show that even companies with good copyright practices might benefit if more resources are devoted to auditing the company's contracts and copyrights and maintaining them. Litigation is not always avoidable, but anyone who owns copyrights and enters into contracts involving copyrights might be able to avoid prolonging the litigation and save money in the long run. At least it is better than throwing your copyrights on a red wagon with Calvin and hoping that they fly safely across the abyss.