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. 

Now For Something Completely Different: Mattel Licenses "Barbie Girl" From Aqua

By Dave Rein

commercial that played this Halloween promoting a new line of Barbie Fashionista dolls reminded me of an earlier blog post in which I wrote about some of the legal lessons learned from Barbie.  One of those lessons involved the parody of Barbie in the song "Barbie Girl" by the group Aqua to which Mattel did not take kindly and sued.  In 2002, the Ninth Circuit ruled against Mattel in an opinion written by Judge Kozinski and in the process, helped shape the contours of the First Amendment and the trademark fair use defense.

The commercial shows that it took seven years, but the parties have apparently heeded Judge Kozinski's admonition that the:  "parties are advised to chill."  In a "Now For Something Completely Different" moment, Mattel and Aqua have joined forces in a series of commercials to promote the Barbie line of dolls and Barbie's first music video by using a reworked version of the "Barbie Girl" song:

I am not privy to the licensing deal, but in answer to a number of commentators and bloggers, Mattel is not using the song for free.  Aqua and MCA Records were successful in their fair use defense because the song is a parody of Barbie.  The reworked song is not.  Nor could Mattel say that it was making fun of itself or of the song.  Instead, Mattel acknowledges that is is using the song because the song has become the "epitome of Barbie" and is now "iconic."

There may be those like Charlie Brown's sister, Sally, who decry that Aqua has "sold out" (7:25 into the video clip) to Mattel, but even Sally can agree that Aqua is getting its "restitution" through this licensing deal even if she lost out on trick-or-treating this Halloween.

Fraud On The Patent And Trademark Office Isn't What It Used To Be: In re Bose Corp.

By Dave Rein

With the stroke of a quill pen pulled from their cap or with the tap of a keyboard, the Federal Circuit may have relegated an intensely litigated and debated line of fraud cases to the ancient history books.  Likewise, it may yet send the stock price of Novartis, makers of Maalox, downward.  More on stock prices and Maalox later . . . .

Starting with the seminal case, Medinol Ltd. v. Neuro Vasx, the Trademark Trial and Appeal Board has held that the trademark applicant or registrant commits fraud by claiming the use of a mark in connection with identified products or services when it actually did not use the mark on all of the claimed products or services.  The standard that the Board applied was whether the applicant or registrant made a material representation of fact that it knew or should have known to be false.  The penalty for such fraud was typically death to the trademark registration or at least to the registration of the offending class of products or services.  From 2003 until as late as June of this year with the Esprit IP Limited v. Mellbeck Ltd decision (visit Christina Frangiosa's Privacy and IP Law Blog for more on the case), this had been the state of the law with a few tweaks here and there as the Board soften the impact of the Medinol cases. 

This line of cases kept many a trademark attorney up at night wondering what would happen to their clients' valuable portfolios of trademarks registrations if subjected to a Medinol challenge.  Trademark attorneys and their clients implemented a number of creative strategies, but the concern that the registrations might be canceled must have caused many to gulp down untold amounts of Maalox that surely sent the stock price soaring.

Perhaps it was this health concern that caused the Federal Circuit in In re Bose to strongly state that the Board was applying the wrong standard to establish fraud and effectively applying a negligence standard.    The Federal Circuit was perhaps a bit harsh in its criticism given that the Board had lifted the "knew or should have known" standard from a prior Federal Circuit decision, but it is true that the standard that the Board applied was different than anyone else's standard for fraud.

Some have argued that after In re Bose, the only penalty for getting caught listing goods or services that are never used with the mark is to correct the registration because: 1) it is difficult to prove fraud and 2) it will be difficult to justify the cost of pursuing fraud claims given the limited relief that  the Board can award.  If the only realistic penalty is to correct the registration, the argument goes, then it will be much more difficult to keep applicants honest.

Even the "reckless disregard" standard that may have been left open is still a high standard to meet in a Board proceeding and although the PTO's rules prohibit an applicant from making a false statement, until the Board loosens its interpretation of this rule, it provides little comfort to those who are concerned that applicants may cheat if not checked.

John Welch of the TTABlog suggests that one way "to focus an applicant's or a registrant's attention on the issue of use would be to . . . require a specimen of use of every item listed in the application or registration."  He suggests that submitting a catalog or pages printed from the Internet could be deemed sufficient.  I am not sure of the extent legal costs might increase if registration required a specimen showing use of each product or service, but the suggestion is worthy of further discussion.

First, having to submit something -- even if the bar of what the PTO will accept is low -- will ensure that the applicant does some investigation before claiming use on a multitude of goods and services.  Second, the "I didn't know" defense to fraud becomes more suspect if the applicant submits a specimen showing use of the mark on a product when the applicant never sold such products or never used the mark on such products.  

For now, however, given that attorneys and their clients have less fear of their trademark registrations being canceled, fewer will be gulping down bottles of Maalox.  Perhaps Novartis should offer to fund an appeal of the Federal Circuit's decision?

Would You Like An OBAMA Cigar? We Think The USPTO Will Say: "No You Can't."

By Dave Rein

Co-author:  Branden Gregory (more on him later)

We admit that we love trademarks enough that we can pass time away with our feet propped up while running random searches on the USPTO's database of trademark applications.  Sure this time might be better spent working off a few more stubborn winter pounds, but that might have meant missing a few gems. 

During Barack Obama's campaign for President, there were a few applications to register various OBAMA related trademarks which were presumably filed by his supporters and his opponents.  Later, more commercial-oriented applications appeared:  OBAMA bottled water, cigars and other products that we're sure we can't live without.  The applications just keep coming.  And not just here in the U.S.  The IPKAT reported that trademark applications in Europe to register OBAMA marks have appeared in several European countries.

But, did any of these applicants really think the USPTO would register these marks? The USPTO is not going to allow registration of President Obama's name without the President's consent.  Not only will the President politely decline to consent to Obama soft drinks, but we are also willing to bet it will be nearly impossible to get past Obama's personal secretary, Katie Johnson.  As for these marks, in the words of Heid Klum, the host of Project Runway, "You are out!"

As for those marks which "merely" propose using "OBAMA" as a term of the mark, they are not likely to get much further as the USPTO will probably construe the marks as consisting primarily of a surname.  In the eyes of the USPTO, this is a "no no."  We were surprised to learn that the Obama name is relatively unusual in the U.S., but it won't be perceived as unusual any longer.  We can't come up with another meaning for "OBAMA" other than as a surname:  it does not signify a geographical area, have a secondary meaning or translate from Swahili into something other than the President's surname (we'll admit to being a bit rusty on our Swahili).

So why did attorneys agree to file these applications?  It strikes one of us as fairly straight forward that the USPTO won't register the marks, but were we missing something?  Brief interlude . . . one of the best things about summer is that one of us gets to hang around some fantastic summer associates including Branden Gregory who graciously agreed to hit the books and find a way to convince the USPTO to register these marks.   Although fully inspired with the "Yes We Can" slogan, his conclusion was that we are not going to be seeing Obama energy drinks anytime soon. 

Then what was the good-faith basis for filing the applications to register Obama marks?  Did the attorneys tell their clients that perhaps they might get lucky and catch one of the trademark attorneys in a mischievous mood?  That wouldn't be kosher so that can't be it.  Anyone have any thoughts?  Anyone?  Bueller?  . . . Bueller?

Google Takes Keywords Global -- Making Lawyers Around The World Happy

By Dave Rein

We previously wrote that the Second Circuit handed Google a defeat in its efforts to sell trademarks of competitors for its lucrative keyword advertising scheme.  Apparently undeterred by that setback or ongoing action with Louis Vuitton which is now in the European Court of Justice, we learn from our favorite blog on all things IP in the European world, IPKat, that Google announced that it will expand sales of keyword advertising (including the sale of a competitor's trademarks) to 194 more countries.

The Internet World Club reports that the move to expand keyword advertising globally is not going to make Google many friends among the companies with stables of thoroughbred trademarks and will add new fuel to the Louis Vuitton case.  The Vegas betting line is that Google will lose the action before the European Court of Justice which, according to IPKat, is expected to announce its decision on the same day that Google is expanding its keyword advertising scheme.

While I do not profess to hold a crystal ball of any renown, I can already envision IP lawyers from around the globe rejoicing and powering up their computers to prepare lawsuits against Google.  Likewise, I suspect Google has received one or two phones calls and e-mails from IP defense counsel offering their services.  Meanwhile, I suspect that Microsoft is enjoying a brief moment of respite from being the center of controversy. For the rest of us, we can watch what is sure to be some exciting clashes over the issue of keyword advertising.

Can Google Sell Trademarks As Keywords To Trigger Advertising?

By Dave Rein

If I search for "Delta Airlines" on Google so I can book my flight to Washington D.C. to see the cherry blossoms, can Google sell American Airlines the "Delta" trademark as a keyword to ensure that American's advertisement appears with my search results?  It does not appear that American Airlines does this, but other companies do and litigation ensues.

The Second Circuit waited until the American Bar Association's Intellectual Property conference and the bloom of the cherry trees to release its long-awaited decision in Rescuecom Corp. v. Google Inc.  -- the first circuit court to directly address the issue of keyword advertising. 

For the uninitiated, Google sells keywords to advertisers -- including the trademarks of an advertiser's competitors -- which it calls contextual advertising so that when a user types a keyword into a Google search, the advertiser's link will appear in an area above or to the right of the natural search results labeled "Sponsored Links."  So a business could "buy" its competitor's trademark as a keyword to trigger its own advertising in the Sponsor Links section.  

One of Rescuecom's competitors paid Google the right to use the RESCUECOM trademark as a keyword to trigger its advertising. Rescuecom sued Google for trademark infringement, dilution and other claims.  The district court ruled in Google's favor as had every other district court in the Second Circuit.  The court held that there is no cause of action because, in part,  the user never sees the RESCUECOM trademark -- the Google results do not show the trademark in the Sponsored Links section.  But, decisions outside of the Second Circuit held that selling a trademark as a keyword to trigger advertising does state a cause of action for trademark infringement.  For those of you who are a glutton for punishment, you can find the main briefs filed with the circuit court at Professor Eric Goldman's blog, Technology & Marketing Law Blog.

Apparently, the Second Circuit put a lot of thought in its decision as it took exactly one year to the day from the time it was argued for the court to release its decision.  The decision reversed the district court and held that Rescuecom did state a cause of action and could proceed with proving the rest of the requirements to establish trademark infringement.  Professor Goldman provides one early analysis of the decision.  As the Wall Street Journal noted, however, the Second Circuit decision only allows the case to go forward. 

Rescuecom still has to prove the rest of its case before it can declare victory which the Progress & Freedom Foundation (which Google appears to be a member of), does not believe is likely.  Regardless, the decision is noteworthy as the first circuit court to weigh in on whether selling a competitor's keyword to trigger advertising can be the basis for a trademark infringement lawsuit.  I suspect it will also initiate a new round of litigation against Google in an effort to claim some of the advertising revenue Google receives under this program.

One curious part of the thirty-four page decision is that on page fifteen, the Second Circuit concludes its analysis.   To what do we owe these extra nineteen pages?  An Appendix.  Usually, an appendix is the place to dump graphs, pictures and incomprehensible data.  But in this case, the court examines the real nut of the advertising keyword debate. After an exhaustive examination of the statute and legislative history, the court concludes that it can't reach a conclusion because the statute, the Lanham Act, and its history are just too ambiguous to reach a conclusion! 

The court, in the Appendix, then calls on Congress to fix the problem.  Given that Congress is preoccupied with the economic crisis, two wars and a handful of other social issues, I wouldn't hold my breath while waiting for that to happen.  Perhaps someone at the court decided that the research that they did on the issue should not be buried somewhere never to be seen again, but the Appendix still strikes me as odd.

While we wait for Congress, I suspect that someone in Las Vegas would be willing to take a bet as to which circuit court will be the next one to weigh in on this issue.  My money is on the Ninth Circuit.  What's your bet?

How Far Do You Go To Enforce Your Trademarks?

By Dave Rein

George Carlin's list of words you could not say on television is among the classics.  Although the list has evolved over time, the NCAA has another list of words that is vying for attention when you talk about men's college basketball. This list applies, not just on television, but everywhere.  

The Kansas City Star, in covering the two rounds of games held here in Kansas City, noted the great lengths that the NCAA goes to in protecting its trademarks --  from the NCAA bringing in its own basketball court (stripped of any logos other than its own), to warning area businesses not to use any of the 67 trademarks it has registered, to hiring scouts to spot potential infringers, and to keeping cups out of the Sprint Center other than those emblazoned with the official beverage sponsor's logo.

The cup sensitivity is apparently not a new thing as it even had someone replace basketball coach Roy William's cup during a press conference after his team advanced in the tournament several years ago. Apparently, his cup did not have the proper logos on it.

I don't have a problem with the NCAA enforcing its trademarks or limiting the exposure of marks of other companies who are not paying for the right to show their marks during the tournament.  

If CBS paid you $6 Billion over eleven years, you would protect your tournament as well.  And one of the best ways of protecting it is to brand the heck out of it.  For those of you who saw Eddie Murphy in the movie, "Coming to America", don't think that McDonald's won't clobber you on the head with a team of litigators if you opened up your own real-life version of McDowell's fast-food burger joint.  I would even help.

I was, however, interested in some of the trademarks on the list sent to area businesses.  Nobody should be surprised that "March Madness" is on the list.  Actually, you may want to read the Miller Small Business IP blog on who actually owns the mark and the interesting history of the "March Madness" mark.  Also not surprisingly, you cannot lure customers into your restaurant, hotel or shop using these trademarks:

  • NCAA;
  • Sweet 16;
  • Elite 8;
  • Final Four;
  • The Big Dance; or
  • The Road to the Final Four

But, there were other marks such as the "YES" mark that were not immediately obvious that a business should steer away from using.  You do hear commentators say "Yes!" through the course of a game when a player makes an incredible move that usually ends in a monster dunk.  But, "Yes" in that context doesn't strike me as a source indicator.  Nor am I aware that the YES mark was emphasized in advertising or said anymore often than in the broadcast of other sports events.

The YES trademark registration with the U.S. Patent and Trademark Office is limited to goods or services involving "organizing and conducting sports clinics for students, grades 6-12."  So can a restaurant hang a banner that simply says:  "YES!"? I doubt that anyone is claiming that the YES mark is famous so the normal trademark analysis would likely apply.  Will restaurant goers seeing the banner believe that the restaurant is somehow affiliated with a sports clinic put on by the NCAA?  

There may be some great arguments for why YES is on the list that restaurants and hotels need to avoid, but it got me thinking:  "What if there is no plausible argument of confusion?"  Would the NCAA have gone too far if it sent warning letters to businesses in host cities not to use marks that really don't apply?  What do you think?


Happy Birthday Barbie! Things I Learned From Barbie . . .

By Dave Rein

Barbie, the iconic doll who lines the shelves of big box and mom-and-pop toy stores everywhere, celebrates her 50th birthday today.  I was more of a G.I. Joe kid growing up, but I'll be the first to admit that Barbie has done more for teaching us the ins and outs of trademark and copyright law than tough Joe ever did.

While others have used her birthday to look back at her last 50 years to ponder whether she has been a good or bad influence on generations of kids, her power in the fashion world, or the enormous amount of money collectors will pay for her, I was curious as to how she has shaped our view of intellectual property.  Frankly, it is somewhat surreal that when I stand before a judge or jury to argue a point, some of my arguments have been shaped by an unusually shapely plastic doll.

There are a staggering number of cases involving Barbie or cases that refer to Barbie in courts' opinions, but the most obvious area in which Barbie's charms have had the strongest influence is on our notion of parody for both trademark and copyright law. 

Perhaps the most well-known of these cases involved the song "Barbie Girl" and probably the only song by the group, Aqua, to hit the charts in the U.S.  YouTube, probably at MCA Records' request, no longer allows users to embed video of "Barbie Girl", but you can still watch it here.

The maker of Barbie, Mattel, was not terribly happy with a song that makes fun of Barbie and sued for trademark infringement.  The Court of Appeals noted that Aqua would likely lose if it used Barbie to mock others, but because the song makes fun of Barbie herself and the values that the group claims she represents, the First Amendment compels a different result. 

The same result occurred when Mattel challenged a photographer, Tom Forsythe, who displayed nude Barbies in not so flattering poses and situations.  His defense to a lawsuit for copyright and trademark infringement was successful because he was able to show that the use of Barbie in the photographs was fair use to parody and comment on his perception of Barbie's influence.  

Don't get the impression that Barbie has not done well in court.  Her $100 million win against Bratz  last year and a long string of other victories show that she is a formidable opponent in the courtroom. 

But, let's not dwell on the number of notches Barbie has on her stylish belt.  Instead, let's wish her a hearty "Happy Birthday!" and look forward to her future exploits in the courtroom over the next 50 years.


Super Rights in Super Heroes

By Geoffrey Gerber

About two weeks ago, at Archon, I was giving an interview about comic-book law. I was talking about the different ways to protect rights in a character and during the discussion of trademarks, I was asked about DC Comics and Marvel's joint ownership of the trademark for Super Heroes. This seems to come up a great deal when you are discussing IP law with aspiring comics creators. For example, check out the post at Comics Should Be Good.

Yes, DC and Marvel jointly own the "Super Heroes" trademark. U.S. Registration No. 1179067 for the trademark SUPER HEROES in connection with comic books and some other products. 

That still leaves a question: What does that mean for everyone else?


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Owners, Borrowers & Thieves 2.0

By Pete Salsich III

Coming soon to a blogoshpere near you . . .

As regular readers of this blog know, we have often used this space as a means to follow and comment on the continuing tension that results from trying to fit new technologies, new types of content and new content delivery systems into old paradigms of intellectual property law.  Sometimes it's copyright -- for example, YouTube's assault on (or defense behind) the DMCA;  sometimes its trademark -- for example, whether Google Keyword ads constitute trademark use for purposes of an infringement claim; sometimes it's even Comics!

Recently we've realized that our mutual interest in emerging technologies and how the law practice can adapt to a changing IP environment has been prompting us to adapt our blogging to fit our own new paradigm.  We're very excited about some changes that will be coming shortly, including adding a fresh new voice or two.

We hope we've been "fairly useful" (to borrow Professor Sag's great blog title) so far, and hope you'll check in regularly as we go forward.

Stay tuned . . .  

Comic-con Repackaged with Expanded Editorial Content

By Geoffrey Gerber

Back from Comic-con. With comic-book litigation absorbing the majority of my time, it is sometimes easy to forget that not everyone sues to protect their intellectual property rights. Comic-con is a case study in the practicality of IP protection and enforcement. Just walking the exhibition floor, you can locate pirated and bootleg merchandise (just because the TV network or movie studio has not released material on DVD doesn't mean that you can sell a DVD version without obtaining rights).

Individuals and companies that own valuable intellectual property could spend all of their time and resources suing people who attempt to benefit from the goodwill associated with that property. Therefore, they need to pick and choose which thefts, misappropriations, and infringements they will attempt to stop. Sometimes, they will let obvious infringement go. A great example was just two blocks outside the Comic-con door.


Click on images to see full size menu.

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Live from Comic-Con . . .

By Geoffrey Gerber

It has been a long time since my last posting. In part, this has been because I have been trying to get enough work off of my desk to attend Comic-Con International in San Diego. Now I am here, and it is a wonderful world of fair and not-so-fair uses of intellectual property. I'll have enough material to blog about for a month. As busy as it is keeping me, I'll keep this post short.

How about a bumper sticker. Can't get much shorter.

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Trademark Trial & Appeal Board Says Internet Is Here To Stay

By Pete Salsich III

No, that's not a headline from The Onion.

In a recent precedential opinion, the TTAB held that evidence from the immensely popular online encyclopedia Wikipedia can be admitted even though -- by its very nature -- such evidence may be unreliable.  See In re IP Carrier Consulting Group, TTAB, Serial No. 78542726 (June 18, 2007).   At issue were applications to register two trademarks: "ipPICS" for online image services and "ipPIPE" for communications services.  The PTO rejected both applications on the grounds that they were merely descriptive of the services provided.  In doing so, it relied in part on numerous online and print sources showing that the abbreviation "ip" was commonly used to refer to "Internet Providers" such as the applicant.  On appeal to the Board, the applicant cited Wikipedia's entry on "Internet Service Provider" to show that the most common abbreviation for Internet Provider was "ISP", not "IP."  The Board accepted and considered the Wikipedia evidence, but still affirmed the examiner's descriptiveness finding and refused the applications.

In the process, the Board spent some time discussing the relative merits of evidence from Wikipedia and other user-edited online sources and concluded that the fact that such sources may sometimes be unreliable does not make them automatically inadmissible, provided the non-moving party has an opportunity to introduce rebuttal evidence.

Does this make sense?  John Welch at the TTABlog doesn't think so.

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Pine Tar, Stealth Condoms and Dead Fish


I am falling in love.  The object of my affection is the prose of a judge from the Seventh Circuit named Terrence T. Evans who seems equally at home in the worlds of jurisprudence, hip hop and baseball.  My infatuation began with Judge Evans' opinion in United States v. Murphy, 406 F.3d 857 (7th Cir. 2005), an otherwise run-of-the-mill drug case in which he famously paused to drop a footnote correcting the court reporter's misspelling of the term "ho":

The trial transcript quotes Ms. Hayden as saying Murphy called her a snitch bitch "hoe." A "hoe," of course, is a tool used for weeding and gardening. We think the court reporter, unfamiliar with rap music (perhaps thankfully so), misunderstood Hayden's response. We have taken the liberty of changing "hoe" to "ho," a staple of rap music vernacular as, for example, when Ludacris raps "You doin' ho activities with ho tendencies."

If that footnote doesn't make you swoon, check out his latest opinion, Central Manufacturing, Inc. v. George Brett, et al. -- a trademark infringement case in which the lead defendant is indeed THAT George Brett, now enshrined in the Baseball Hall of Fame.  The Gods of Serendipity sent the appeal to a panel that included Judge Evans, and the resulting opinion will surely please them.

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And the Keyword Beat Goes On

Eric Goldman's Technology & Marketing Law Blog offers an excellent analysis of the latest district court decision to weigh in on the question of whether the purchase of a Google keyword ad that uses a competitor's trademark or the use of that trademark in the defendant's metatags constitutes a trademark use "in commerce" under the Lanham Act (and the equivalent state trademark laws).  Better yet, Eric saves me from having to update Pete's update of my original post on the topic. This latest decision,, Inc. v., Inc., (E.D.N.Y. June 12, 2007), is the fourth one in a Second Circuit jurisdiction holding that buying a keyword ads is not a trademark use in commerce.  The lesson for would-be trademark plaintiffs: sue outside the Second Circuit.

Carol Burnett and Fox TV: Who's Fair and Balanced Now?


The rulings contained within District Judge Dean Pregerson's opinion dismissing Carol Burnett's lawsuit against Twentieth Century Fox could have been predicted the moment we heard about the case. If ever there were a textbook example of the "fair use" doctrine in copyright law and the "parody" exception in trademark and dilution law, this was it.

Burnett had sued over a short clip from Fox's animated television show, Family Guy. In the scene, Griffin family patriarch Peter Griffin and his pals visit a porn shop. Upon entering the store, Peter remarks that it is cleaner than he expected. One of his friends explains that "Carol Burnett works part time as a janitor."  The scene shifts to an animated figure resembling the Charwoman character from the Carol Burnett Show mopping the floor next to bin of life-size blow-up dolls and  a rack of XXX movies.  Judge Pregerson explains:

"As the 'Charwoman' mops, a slightly altered version of Carol's Theme from The Carol Burnett Show is playing.  The scene switches back to Peter and his friends.  One of the friends remarks, 'You know, when she tugged her ear at the end of that show, she was really saying goodnight to her mom.'  Another friend responds, 'I wonder what she tugged to say goodnight to her dad,' finishing with a comic's explanation, 'Oh!'"

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Porn Names, Part II


Geoff's musings over porn star names aroused, er, got me thinking about a related  "fair use" issue, namely, the porn industry's unauthorized use of slightly altered titles of famous motion pictures.  Such as On Golden Blonde.  Breakfast on Tiffany. Inspect Her Gadget.  And any on the Top Ten list compiled by BBspot, which begins, at #10, with Forrest Hump.

Each use is an obvious commercial attempt to cash in on the widespread awareness and recognition of the original title.  Each use is also an obvious commercial attempt to capture the prospective buyer's attention, to stand out in a crowd of titles.

But are these uses "fair uses"?

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Trademark "Use" in Metatags and Keywords: The Split Widens

By Pete Salsich III

Mike Kahn had a post recently about the growing split among courts in different Circuits regarding whether use of a competitor's trademark in metatags or keywords was a "use in commerce" under the Lanham Act.  Discussing a recent Northern District of California case that found such a use to be actionable, Mike argued persuasively that if the trademark does not appear in the sponsored link or anywhere else in relation to the competitor's products or services, it is not "used" as defined under the Act. 

Today a judge in the Eastern District of New York weighed in on Mike's side of the argument.  In Site Pro-1, Inc. v. Better Metal, LLC, No. 1:06-cv-06508, EDNY, May 9, 2007, the court found that the defendant's use of the plaintiff's trademark in both metatags and key words in a sponsored search on Yahoo! did not violate the Lanham Act because the trademark did not appear on the defendant's sponsored link, or website, or anywhere else in connection with any products or services offered by the defendant: 

"The key question is whether the defendant placed plaintiff's trademark on any goods, displays, containers, or advertisements, or used plaintiff's trademark in any way that indicates source or origin.  Here, there is no allegation that Better Metal did so, and therefore no Lanham Act "use" has been alleged.  Indeed, the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff's SITE PRO 1 trademark on any of its goods, or any advertisements or displays associated with the sale of its goods.  Complaint, Ex. B.  Neither the link to Better Metal's website nor the surrounding text mentions SitePro1 or the SITE PRO 1 trademark.  The same is true with Better Metal's metadata, which is not displayed to consumers."

As with Mike's analogy to beer billboards near baseball stadiums in St. Louis and Milwaukee, the court found such use to be simply the latest version of side-by-side advertising.  Quoting another district court case from within the Second Circuit, Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425, 427 (SDNY 2006), the court concluded: 

" . . . this use is more akin to the product placement marketing strategy employed in retail stores, where, for example, a drug store places its generic products alongside similar national brand products to capitalize on the latter's name recognition.  The sponsored link marketing strategy is the electronic equivalent of product placement in a retail store."

Once you get past the initial reaction that use of one party's trademark to drive traffic to a competing website somehow just seems wrong, this holding makes sense and is more consistent with traditional trademark principles.  This reasoning has not yet taken hold outside of the Second Circuit, however, so for now, at least, the geographic divide on this issue continues. 



Sponsored Links and Metatags: The Trademark Wars, Round 10


In the strange new world of sponsored links and metatags, when does a "use of a trademark" qualify as a "trademark use."  Or, more precisely, where does a "use of a trademark" qualify as a 'trademark use"?  Not in New York, yes in New Jersey, Illinois and Minnesota.  And now yes, at least tentatively, in California. In Google Inc. v. American Blind & Wallpaper Factory, Inc., U.S. District Judge Jeremy Fogel of the Northern District of California confronted the "use" issue when Google moved for summary judgment seeking dismissal of American Blinds' trademark infringement claim, which arose out of Google's AdWords program,  Under that program, Google sold American Blinds' trademarks as keywords to competitors.  As a result, when a user typed in a search for "american blinds,"  that search term triggered a "sponsored link" to a competitor on Google's search results pages. But because the American Blinds trademark would not appear in the sponsored link or, for that matter, anywhere in the search results other than in connection with legal references to American Blinds products, the question was whether Google's use of the trademarks was in fact a trademark "use" under the Lanham Act.

The question is hardly academic, since a "use in commerce" is a jurisdictional prerequisite under the Lanham Act. And it is hardly a settled question, as Judge Fogel's opinion makes clear.

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