As the heated (pun fully intended) public debate about gun control continues, I thought it would be fun to examine trademark applications for the term GUN CONTROL. I expected to find a roughly equal mix of applications filed by gun control supporters and opponents, and I thought there would be numerous applications, and even a few registrations, from which to choose. I was wrong on all accounts.

As of today, there are only 12 USPTO records that include the term GUN CONTROL, of which eight are DEAD and four of which are LIVE:

One application (the bottom one for GUN CONTROL) does not list any goods or services. Of the remaining eleven applications, there are is only one, or maybe two, that were filed by proponents of gun control:

The rest of the applications containing the term GUN CONTROL all were filed by opponents of gun control:

When I expanded my search to capture PTO records that included both the term GUN and the term CONTROL, not necessarily next to each other, I also found this new application:

Even though thus far GUN CONTROL has made its way into fewer trademark records than I’d imagined, some simple observations can be made:

1. Most gun control opposing brands play off of the word control ~ encouraging gun control that enables the gun owner to hit its target.

2. Gun control opponents like stickers.

3. Gun control opponents also oppose the use of proper grammar . . . perhaps its rules in general that they dislike? 

It’s always interesting (to me at least) to see how trademark applications track current events and pop-culture. It seems to me that gun control opponents get more airtime so maybe there’s a correlation between airtime and TM apps.

Photoshop credit Roger Gastman talks about everything. . .

According to NewYork.Newsday.com and the WashingtonTimes.com, today — April 20th — is a counter-culture /cannabis-culture holiday referred (or should I say reefered?) to as “four-twenty.” Apparently, it also is customary to smoke pot at 4:20 pm, which explains the frequent lines at snack and smoothie shops between 4:30-5 each afternoon (just watch, now you’ll start noticing it too).

Back in August, 2010 I questioned, “Has the PTO Gone to Pot?” Apparently not, so can the USPTO really tell us something about this cannabis cultivating counter-culture? Of course! 

Although marijuana first was classified as Cannabis sativa by taxonomist Carl Linnaeus way back in 1753, the first counter culture registration application for 420 was not filed until August, 1995 for “shirts, shorts and hats.” That mark was never registered due to the Applicant’s failure to provide evidence of use of the mark (how ironic). The next application wasn’t filed until February, 2006 for “posters, bags, shirts & hats & buttons.” That application was expressly abandoned a year later, costing the Applicant $1,300 in filing fees. The first two counter-culture 420 trademarks to become registered were for apparel and sunglasses and belonged to John Marvin Rowland of Santa Ana, California. Both registrations were cancelled in 2008 after Mr. Rowland failed to file the first ten-year renewal. The next 420 mark to become registered was 420 INDIA PALE ALE for beer, which was registered in 1997 and remains registered. Following that was 420 for watches which also ironically remains registered.

Of the 205 USPTO 420 records that have been filed since 1995, 182 of them probably pertain to pot! Of those, 63 applications are for apparel marks, 20 of which remain LIVE. Presently, there are 77 LIVE PTO records, of which 48 are registered and 29 are pending. Of those that are registered, these are my favorite:

 At least based on what we’ve seen at the USPTO, no one can accuse stoners of lacking creativity. 

Speaking of creativity, the image of the cultural icon at the top of the page is a great example of a trademark parody – poking fun at the ubiquity of McDonald’s and marijuana. I wonder which is healthier. Maybe that can be Morgan Spurlock’s next documentary adventure?

Although I don’t spend much time in casinos apart from Crystal Bay Casino, (and that’s only because it is Tahoe’s best music venue, thanks to Brent Harding & Blake Beeman!), the Reno Peppermill has just become my second favorite casino after CBC.

I visited the Peppermill last week where GreenUP! hosted Reno’s (almost) annual Golden Pinecone Ball. The first Golden Pinecone was awarded by Nevada Econet to Justice Cliff Young in 1988. The awards honor individuals and organizations for their environmental leadership. GreenUP!, which took over the awards this year, arranged for Dean Parker, Executive Facility Director of the Peppermill, to lead a group of us on a tour of the resort’s geothermal facilities before the awards ceremony.

As part of its recent expansion during 2006-2010 when the resort doubled in size the Peppermill invested $9.7 million in geothermal energy, which it now uses to heat all of the water used throughout the resort as well as the resort itself. The Peppermill began using geothermal energy to heat its pools in the 1980s. In 2007, it expanded its geothermal use to heat its Tuscany Tower, including the hotel rooms, spa & fitness center and outdoor pools and spas. During the Peppermill’s most recent and significant expansion of its physical footprint it also sought to reduce its environmental one and though the water is scalding, it doesn’t hurt that the renewable energy system also makes incredibly good economic sense.

Once operational the geothermal heating process is simple and requires very little maintenance. However, for the Peppermill the set-up was anything but simple. It involved running pipes below and through existing structures, when such systems usually are put into place before as a building is being constructed. Nonetheless, the Peppermill’s bet paid off. 

Drilling 4,400 feet into the ground, the Peppermill found a well (called a production well) that consistently pumps 164 degree water at the rate of 1,200 gallons per minute at 150 psi (pounds per square inch). The Peppermill then stores this water in giant tanks from which it gets distributed for use in the hotel and resort’s pools, bathrooms, restaurants, etc.

To heat and cool the property, the Peppermill uses a closed loop hydronic heating and cooling system. This system works with nature to keep cold water cold using cooling towers while hot water is heated by geothermal energy. The water comes up from a production well on one side of the Peppermill property and then after being used to regulate the air temperature in the building, it travels all the way across the property through lava rock before being injected back into the earth through the injection well.

Sustainable casino may seem like the Granddaddy of oxymorons, but the Peppermill really is  doing a significant amount to reduce its footprint. Whether motivated by cash, or caring, or a combination thereof, the effect is the same. The Peppermill is doing well financially by doing good for the planet.

Last weekend was the 33rd Natural Products Expo West (Expo) where 63,000 industry members and 2,430 Exhibitors gathered to sample or showcase the latest in natural and organic products from supplements to socks, with a smattering of sweets. Deals were done, friendships were forged and announcements were made: way to go Whole Foods for doing what Californians couldn’t and committing to full GMO labeling by 2018!

49 Certified B Corporations played a part in Expo West this year, taking it further in the amount they care and how much they share. B Corps lead the way on corporate environmental and social impact and I hope to help get the word out and tell the world about it.

Leading the band of Bs at Expo were four of the the Rockstars of the New Economy: Happy Family Organic Superfoods; Seventh Generation home & personal care; King Arthur Flour and Guayaki brand yerba mate. As should be expected at any good party, the lawyers were on hand — not just Brand Geek but also Expo veterans Bill and Don from Wendel Rosen. Making sure kids start out right were Plum Organics, gDiapers, nurturme, Little Duck Organics and of course Happy Family. Keeping us fresh and clean were Seventh Generation, GladRags, The Honest Company, Episencial, Elemental Herbs, Method and EO Products and making sure they have good, clean fun is Back to the Roots.

B Corps like Lotus Foods, CORE Foods, Andean Naturals, Essential Living Foods and Culinary Collective nourished our bellies and souls, while Cabot Creamery, Peeled Snacks, Love & Hummus, Home Free, ALTER ECO & Fearless Chocolate kept us smiling and full. Bad breath wasn’t a problem thanks to Sencha Naturals and we were kept well hydrated by Sambazon, Guayaki, Traditional Medicinals and Mamma Chia. There was caffeine aplenty to keep us going all day thanks to Numi, Runa, Bhakti Chai, Ethical Bean Coffee. And though Expo can be exhausting, Genuine Health and Herbalist & Alchemist kept us well balanced while ECOlunchbox, Eco-Bags, Preserve, Blue Avocado and of course, Klean Kanteen were encouraging reuse and for those (hopefully rare) instances where reuse is impractical, Susty Party and World Centric did their part to make our consumption more responsible. We had PACT to thank for making sure that we save the planet in planet-saving style and Partnership Capital Growth to help raise capital. GreenerPrinter was there too to share our messages responsibly. Topping it off by hosting the B Corp happy hour were our friends at Klean Kanteen, who educated us about plastic pollution, encouraging us to support 5 Gyres and use only reusable cups (even at Expo!) on our path to living green.

B Corps use the power of business to solve environmental and social problems. We also have way more fun. Want to see what I mean? Join us!!

The best tradeshow ever, EXPO West (a natural and organic products show held annually in Anaheim, CA) began yesterday morning with a press breakfast to introduce us to some of the new products and companies at the show this year. Hosting the breakfast was Lyfe Kitchen, which not only served us a delicious meal, but also gave us food for thought about the American food system. Lyfe has the modest goal of becoming a worldwide food brand that changes the way consumers perceive and consume food. In the words of Lyfe’s Founder and Co-CEO, Steve Sidwell, his company is the United Nations of food, offering gluten-free, vegetarian and vegan options.

The breakfast panel was moderated by Carlotta Mast from New Hope Media who reminded us that as press, we  have the influence to move the needle on health & wellness. Carlotta’s research indicates that consumers are experiencing claim-burnout: the more claims a product makes, the more overwhelming it is for consumers. That said, transparency is a constant force moving us toward healthy eating.

Alan Green is a pediatric physician whose website millions of people rely on for pediatric health information.  Dr. Greene believes that the average American’s lifestyle is killing us – what and how we eat and how (little) we move. When he began his medical practice, Dr. Greene didn’t see kids with high blood pressure, cholesterol, or blood sugars. Today 2/3 of American kids ages 8-12 have middle-aged health conditions. It is increasingly important to get kids eating healthy food early on, especially as kids are designed not to trust fruits and veggies unless something triggers their enjoyment  of such foods. Dr. Greene believes that brands can be really important in the development of healthy lifestyle habits, as kids learn to trust brands (music to my ears, of course!). Dr. Greene believes that we need to remove doubt about benefits of healthy eating & encourages brands to have focused simple messages and using social media, which has proven powerful in shifting behaviors. By way of example, Dr. Greene shared the story of a 15 year old who learned that one of the ingredients in Gatorade was a flame retardant, and in response started an online petition that garnered over 200,000 signatures, resulting in Pepsi’s removal of the ingredient from the Gatorade product. Dr. Greene has found that the easiest way to gets kids to like fruits and veggies is to involve them in growing and cooking food.

Janet Evans is a brand ambassador for Lyfe Kitchen and an Olympic gold medalist who is now a mom. As a parent you listen to Dr. Green and know the concerns, so the issue becomes how do you do it? How do parents juggle everything and keep their kids healthy, especially when the kids don’t like the taste or look of healthy food?  Janet also expressed the importance of relying on brands to identify the healthy foods without having to spend lots of time researching the products health claims. (Can you see why I loved this panel?!)

Lyfe Kitchen has 2 restaurants in California, one in Palo Alto and the other in Culver City  and his business is rapidly expanding across the country. In Steve’s world, it’s all about the taste. His company’s goal is to make good tasting, healthy food easily accessible  and affordable. If we make it easy to do the right thing, people will do so as long as healthy food tastes great and is affordable. Lyfe Kitchen’s partnership with its suppliers — farmers and others — enables affordability, as does getting to scale. The big challenge for Lyfe Kitchen is to deliver healthy food at an affordable price while still remaining profitable.

The number one myth preventing most folks from eating well is that healthy food tastes like crap, although in my experience, that’s not just a myth . . . even at Expo, lots of healthy food tastes pretty awful. However, since food fuels our lives, it is the number one thing that can drive goodness. Lyfe’s restaurants have lines out the door every day and they are hoping that their new packaged food brand will be just as successful. In Steve’s words, “it just takes one meal for people to realize healthy food can taste so good.” Lyfe kitchen has long Ingredient lists, but long lists are not inherently bad if the ingredients are healthful.

In next 5 years Lyfe kitchen hopes to be a catalyst for significant change and become a global brand hope that’s found in hospitals and grocery stores, making it easy to do the right thing. Lyfe is in the  process of becoming non-GMO certified, which causes them to have to source some ingredients globally in order to avoid GMOs, though I was stoked to hear that Lyfe sources its rice from my friends at Lotus Foods. Lyfe Kitchen also is working to teach kids how to cook, which like Dr. Greene, they’ve found to be a great way to foster healthy eating habits.

Eating healthy is not only good for our bodies, but it’s also better for our planet as well. With brands like Lyfe Kitchen making healthy food yummy and affordable, there may just be hope for us yet. So, thanks New Hope for bringing Lyfe into my life.

Last week was TED – a four day conference that feeds the heart & soul & head.

From 72 countries we convened at TEDActive, each of us different, with something different to give. We convened in Palm Springs from all walks of life, to celebrate successes and seek to solve strife. Among our friends – both old and new — we asked, “What do you love?” not, “What do you do?” For many of us those are one and the same, and at TED that type of passion can be a short road to fame. Ken Robinson’s talk alone has over 15 million views; just think if your big ideas made that kind of news! Over 1 billion TED Talk views and continually growing and each talk that we share is a seed we are sewing.

The highlights of 2013 were the talks that made me think . . .

Michigan’s 47th Governor calls herself Gov and she’s a strong believer in the sun above. Yeah, Jennifer Granholm is certain it can be done — energy independence and job creation by harnessing the sun. If states and corporations will just join forces for good we can curb fossil fuel dependence as we all know we should. Economists Robert J. Gordon & Erik Brynjolfsson debated growth & innovation. Brynjolfsson promoted the Economics of Abundance, while Gordon’s radical solutions sounded like a hallucination . . . legalize drugs, open our borders, give the inmates a vacation!?! Is that what it will take for us to save our great nation? Or is Brynjolfsson right: we must work with machines to avoid stagnation?

Bono is a musician, activist and self-proclaimed factivist. Though the work of his organization ONE, extreme poverty soon will none. Amanda Palmer says music connects artists and fans, so she sure took heat for not paying the band. But do all artists really forge such deep bonds, that their fans would step up & offer to pay for their songs? Elon Musk builds innovative companies, changing our relationship with risk, power, travel & money. SolarCity, Tesla & SpaceX are his current endeavors, all likely to go far since Musk doesn’t understand never. And speaking of never, in comes Stewart Brand, who wants to bring the Woolly Mammoth back to our land. Through the Long Now Foundation’s project Revive and Restore,  maybe Brand could bring back that pet you so adored. And if you or your pet were ever to develop cancer, then teen genius Jack Andraka just might have the answer. After a friend’s death touched him deeply, he set out to diagnose cancer accurately and cheaply. Now he hob-knobs with the Prez and he’s spoken at TED but doesn’t seem to let any of that go to his head.

So many TED speakers simply astounded me, Leyla Acaroglu demonstrated for the problem of consumption, design is the solution to both slow climate change and reduce pollution. Allan Savory surprisingly proved grazing animals not only is good for the land, but they’re actually needed, lest the earth turn to sand. Then Canadian teens trained bacteria to eat phthalates and by taking risks they created something great. And though it seems too good to be true, Alex Laskey showed that peer pressure works on adults too!

If peer pressure motivates positive action, just think of the advancement as more Ideas worth sharing get traction! Like Ron Finley’s idea to plant some shit in urban gardens in South Central LA so that no one there goes hungry, not even for a day. Or Dan Pallotta’s idea about enabling charities to thrive so they can best fulfill the missions for which they are alive. And then there’s Orly Wahba’s idea to spread kindness wide in a virtuous circle that starts from inside. And Eric Whitacre and his live virtual choir who showed the power of the internet to join voices rising higher.

TED inspires intimacy and truly genuine connections and always creates the space for deep introspection. This year I left TED with more self-awareness of the various ways in which I make a difference.

I make IP law and sustainability funny, understandable & cool, while protecting the brands that are changing the world. As a Sustainability Steward, I keep our company honest, since in your lawyers you must be able to trust. So thank you, TED for helping me see and express what I love and what’s important to me.

Tanning causes cancer . . . and court cases.

Gym, Tanning, Laundry or Sweat, Cancer, Soap (still with Exclusive DVD!)? While we have Jersey Shore to thank for confirming the lack of any correlation between skill and fame, they nailed guido marketing and cornered the college market. At the same time, they’re hammering nails into the coffins of millions of viewers by glamorizing tanning. Though the show ended with the Mayan Calendar (weren’t they surprised on December 22?!), the merchandising continues. And, it continues to harm! So says the Skin Cancer Foundation, which is taking on Jersey Shore to remain the primary promoter of skin cancer. Kidding! Quite the opposite, the Skin Cancer Foundation recently issued a press release “Urging the FTC to Investigate MTV’s Promotion of Hazardous and Potentially Deadly Behavior.” Um, isn’t hazardous behavior the whole point? MTV is like an entire channel devoted to “Do Not Attempt This at Home.” But ignore for a second MTV’s present business model, just like the Foundation did when it filed its FTC Complaint against Jersey Shore for promoting tanning, which causes skin cancer. The Foundation claims that MTV’s tanning glamorizing ways violate Section 5 of the Federal Trade Commission Act, which prohibits unfair or deceptive trade practices. The Complaint asks the FTC to require MTV to:

“clearly and conspicuously disclose the health risks associated with indoor and outdoor tanning before each [rerun] of the Jersey Show episodes, on the MTV website for the Jersey Shore, and/or before the commercials and trailers for the Jersey Shore, in all promotions for the Jersey Shore, in all sales of “Gym, Tanning, Laundry merchandise, in all electronic games related to the Jersey Shore involving tanning or which promote the act of tanning.” 

Yup. And yet, this doesn’t come close to cornering the market on recent celebrity-related IP lunacy . . . 

A dopey lawsuit over Armstrong’s doping.

Sure, Lance Armstrong isn’t as strong as we all thought. So sue him! Oh, wait. Somebody already did. Rob Stutzman & Jonathan Wheeler filed suit not only against Lance Armstrong, but also against his publishers.  And once those wheels of litigation got turning, they thought why not invite everyone who bought Armstrong’s books, ”It’s Not About The Bike,” and “Every Second Counts“ to join in on the fun? The class action lawsuit seeks damages for false advertising, negligent misrepresentation, fraud and deceit since the books contain lies about Armstrong’s use of performance enhancing substances. Holy hell! If dishonest biographies are a cause of action, we may as well start converting libraries into courthouses now. Now there’s a thought! Maybe Lance Armstrong can serve as the Chairperson of the Books-to-Barristers(TM) community service project and turn the corner towards an honest living after years and years of fraud and deceit. Armstrong isn’t the only celebrity rolling in fraud and deceit . . . 

Marilyn Manson seeks help from . . . court?!

Marilyn Manson is a mysterious man. He seems like the type of guy you’d want to avoid upsetting at all costs. He models morose makeup, belts out boisterous ballads & culls continual controversy. He is not, however, a cat killing Nazi. And he doesn’t hate black people. Although that’s not what his fake ex-fiance, Yolanda Tharpe, would have you believe. Tharpe told the gossip press that she was engaged to Manson, who broke it off after realizing Tharpe is black. The two have never, met according to the lawsuit filed by Manson (whose real name is Brian Warner). The press has broadcast Ms. Tharpe’s fantasies about Manson, causing him hurt feelings and a sex change, if we are to believe the 25th line of his lawsuit:

The lawsuit continues:

Manson asks the court to order Tharpe to stop lying about him to the press and to pay monetary damages for the anguish she caused him. Manson has this one in the bag, but unless he too is delusional he won’t be holding out hope for actually collecting any cash. Al Gore’s company on the other hand, got $500 million for Current TV, of which he gets to keep $70mm . . .

Gore, oil, slick.

Is Al Gore guilty of false advertising? Watch as he smoothly slips by Stewart’s sustainability suggestions, leaving me to wonder . . .  is climate change really of Current concern? After all, the poster boy for climate change just sold his media company to an oil baron. Or did he? Yes, he did. Al Gore is the co-founder and Chairman of Current TV, which Al Jazeera, a Qatar based media company reportedly bought in January for $500 million. No big deal, except Qatar is covered in oil and gas –the very evils Al Gore warned us all against in An Inconvenient Truth. Qatar has the highest per capita carbon emissions of any country anywhere: a whopping 2.5 times greater than in the U.S.! How is it even possible to consume more natural resources than we Americans do? Qataris must be cooking with crude oil instead of butter & olive oil, causing them to fart natural gas. While Leon Kaye reminded us that Gore also receives annual income from mining leases on his land — as reported by the New York Times back in 2000 — that doesn’t make his Current sale any less hypocritical.  And dodging the issue like Knight Rider & Kitt just makes matters worse. So much worse.  Having convinced so many of us to take responsibility for the environmental impacts of our actions, Gore now puts not only his own credibility on the line but also that of the greater environmental movement. Few doubt that the sale will make Current better at its job of delivering news, but the questions remains — how do you get all that oil covered money clean? 

Fact is stranger than fiction, by far. When you advertise fiction as fact you risk being sued for false advertising and no matter what the facts, the only ones who win in court are the lawyers.

It’s a brand. How do you know? Because the USPTO says so.  And, because every Apple store (of which there are 395 worldwide) looks essentially just like this. This overall “look and feel” is Apple’s intangible intellectual property — its trade dress. And, not just because Apple says so, but because Apple’s attorneys convinced the USPTO that it is so. And so . . . on January 22, 2013, the USPTO issued Apple a Certificate of Registration (on the Principal Register) for the layout of its stores. 

This irked some folks (like the readers of Wired), who seem to think Apple is overreaching by protecting the store design layout. As a brand owner though, Apple is wise to have as many arrows as possible in its quiver. After all, when your fortress comes under attack, you want a substantial arsenal. In this case the fortress is that in store experience that makes Apple, Apple. 

No, this doesn’t mean that other stores can no longer use wooden display tables or have big glass windows (though I can see The Daily Show segment as I write — stores across America boarding up their big glass windows and cutting their rectangular tables into small, oddly shaped tables after receiving cease & desist letters from Big Bully Apple . . . ).  Apple’s registration is limited to “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto.” Ergo, that little boutique on Main Street with all the odd knick knacks laid out on display tables will be just fine. What Apple aims to prevent with this registration is counterfeit Apple stores. And it’s not the only one.

Chipotle registered the trade dress in its restaurant layout, as did the California restaurant chain Dos Coyotes and the folks at Pub Group Investments, who protected both their restaurant layout and bar layout for The Pub restaurants (presumably because this was their only hope for brand protection, since their name is so obviously generic). The earliest retail configuration trade dress registration that remains LIVE today is for FOTOMAT drive-in photographic supply stores, which was registered in 1972 (and my guess is soon will be canceled for a failure to renew). Wawa Food Market is the second oldest, with a registration for the appearance of the outside of its grocery stores that was issued in 1984. In other retail trade dress of note, Ikea owns a registration for the outside of its furniture stores as does Walgreen for its retail stores. Apparently, consumer confusion is common at gas stations (must be all the fumes!) as most big gas companies own trade dress registrations for the layout of their gas stations: Chevron; Texaco; Hess; BP and  Shell. Even Clean Energy Corp seems to be aware of this trend, having applied to register its trade dress in its bio fueling station.

Though Apple is experiencing a bit of a media melodrama over its registration of its retail store trade dress, at the end of the day, it’s better to be well armed (with IP protection) against pirates than to find yourself a sitting duck.

Cascadia Cup Clash Continues.

Vancouver holds the Cup, but who will take the Mark? The CASCADIA CUP trademark, that is. The Cascadia Cup is a non-league sanctioned trophy that supporters (avid fans) have awarded to the top northwest soccer team annually since 2004. The contestants for the Cup are the Portland Timbers, Seattle Sounders and the Vancouver Whitecaps. During the first year of the trophy, all three teams played in the United Soccer League (USL). Now they all play in Major League Soccer (MLS). In December, 2012, MLS filed an application to register the CASCADIA CUP trademark in Canada. Once the media caught wind of MLS’s steal earlier this month, the public cried for a foul to be called. As explained in an article on Forbes, Cascadia is not just a bioregion, it’s a way of life.  And mountain men don’t take lightly to theft. But, instead of a down and dirty soccer brawl — which, admittedly might be more fun for soccer fans to watch — the Supporter Groups that created the Cup (Emerald City Supporters, Timbers Army & the Vancouver South Siders) are fighting back through the legal system. On January 8, 2013 they incorporated as the Cascadia Cup Council, and on January 8, 2013 the newly formed corporation applied to register the CASCADIA CUP trademark in the U.S.  While the Council has a clear shot to its goal for brand protection in the States, we can only hope that MLS will act nobly and forfeit its position in Canada to the Council. And in the noble halls of East Carolina University, students are totally confused about where to go for classes tomorrow. . . 

Tomorrow starts where?

East Carolina wants to make sure that you know tomorrow starts here. Not at Cisco, not in South Carolina, but right here in East Carolina. Er, I mean at East Carolina University (ECU), which just happens to be in North Carolina. Confusing, I know. But is it as confusing as a University and a tech company using the same tagline? ECU thinks so, according to the lawsuit ECU filed against Cisco alleging  trademark infringement, false designation of origin, unfair competition, deceptive & unfair trade practices. ECU claims Cisco’s recent adoption of the TOMORROW STARTS HERE tagline will cause consumers to be confused into thinking that Cisco’s services originate with or are sponsored or approved by ECU (or vice-versa in the case of reverse confusion  – when the trademark owner is perceived to be an infringer). ECU has registered its TOMORROW STARTS HERE tagline in 2011 for “education services in the nature of courses at the university level.” Cisco launched its Tomorrow starts here campaign on December 10, 2012 on the same day that it filed 3 trademark applications for TOMORROW STARTS HERE for computer hardware & software, telecommunications services and technology design and information services. According to ECU’s complaint, the university utilized TOMORROW STARTS HERE in association with its College of Technology and Computer Science and its research, software development, intellectual property licensing and commercialization of technology and software long before Cisco’s adoption of the identical mark for overlapping goods and services. No doubt the marks are identical, but are ECU’s & Cisco’s goods & services so closely related that consumers are likely to be confused or are their similarities more cosmetic . . . 

Bad karma for Khroma.

Litigation is known to cause wrinkles, so it is good that the Kardashians have a cosmetics line. Too bad they chose to name it Khroma. That choice got them sued back in November by Chroma Makeup Studio, which sought a preliminary injunction preventing continued sales of KHROMA products during the lawsuit. Although the court found the CHROMA mark to be inherently distinctive and concluded that consumer confusion is likely under the 8-factor Sleekcraft test, it also found that the territorial scope of Chroma’s trademark rights are limited to Beverly Hills and Encino, California and the surrounding areas. Thus, the court declined to enjoin the Kardashians’ continued nationwide sales of KHROMA brand cosmetics, finding that it would be unfair to do so based on localized sales of Chroma products. Enter Lee Tillett, who has a cosmetics line called KROMA and a federal trademark registration to go along with it. The Kardashians brought a  declaratory judgment action lawsuit against Tillett’s company in November, asking the court to rule that they were not infringing the KROMA mark.  As announced in a recent press release on Kroma’s website, Tillet sued the Kardashians back in a countersuit for $10,000,000.00 against each of them and their Nevada IP holding company, Boldface. And so it goes. While no amount of concealer can mask the Kardashian sisters’ lackadaisical attitude about others’ trademark rights, the depth of their pocketbooks all but guarantees that they will crush Chroma and Kroma in court and in the marketplace.  And so it goes, and so it goes. It might go better with some crushed pomegranates, which, while tasty, apparently do not do many of the things the makers of POM Wonderful advertised them to . . . 

POM health claims are full of baloney.

POM Wonderful  (POM) does not treat or cure heart disease, rather all the litigation it is involved in probably contributes to it. The FTC spent over two years litigating a false advertising case against POM, issuing an opinion just last week. In an almost incomprehensibly long sentence, the FTC ordered POM to stop advertising that its products treat, prevent, diagnose, mitigate or cure any diseases unless such claims are substantiated by competent, reliable scientific evidence. At least, I think that is what this says:

 I feel safer now. Don’t you?

At its core, trademark law is consumer protection law.  Consumers have the right to rely on brands for consistency of source and quality and to rely on advertising for truthfulness. When that’s not the case, court cases ensue (pun intended).

Bamboozled!

The FTC recently took Macy’s and other retailers to task for promoting bogus bamboo. According to the lawsuit filed against Macy’s, the retailer engaged in unfair and deceptive trade practices (also known as lying to sell things), as well as violations of the Textile Act and the Textile Rules. In English that means that Macy’s promoted bamboo items that were not, well, bamboo. Turns out they were rayon, which is not only less sexy sounding than bamboo, it’s also less environmentally friendly.  Rayon is a manufactured regenerated cellulose fiber, which means it is part natural and part synthetic (or semi-synthetic if you wanna be scientific). Most consumers choose bamboo because it is an “environmentally friendly” natural fiber and presumably less harmful to the natural environment. The FTC first harvested this issue back in 2009, going after 4 retailers with which it eventually settled. The FTC then released a short caution about marketing bamboo and later sent demand letters to over 70 companies instructing them to modify their marketing. Those who failed to comply found out just how big of a stick the FTC carries. And yes, it is made of bamboo. For those of you marketing “environmentally friendly products,” you should make sure you are familiar with this  FTC resource on environmental claims, as well as good advertising law counsel. Lawyers chiming in on your marketing claims might not be music to your ears, but just be grateful you’re not Vimeo . . . 

Will Vimeo be vanquished?

Can Capitol Records cripple Vimeo? Even if it does, will that curtail video file sharing? Probably not. A long, long time ago in a land far, far away, there lived something called record companies, aka record labels or “labels.” Labels bought Master recordings (masters) and sold phonograph records, or vinyl, made from them. Vinyl records were the primary means of music production for the majority of the 20th century. Then came 8-tracks, which had their heyday from the 1950s-1980s,  followed by audio cassette tapes in the 1970s-1990s, compact discs (CDs) in the 1980s-2000 and now digital downloads, which made Apple $1.1 billion(!) richer in the first three months of 2011 alone. In 1981 we began watching music videos on MTV (which actually used to stand for Music Television). With the help of iFilm we began to watch videos on the web in 1997. Nowadays, videos by pop stars like Justin Bieber get over 800,000,000 views (DO NOT CLICK!). So, what’s got the feisty folks at Capitol all up in arms? Way back in December, 2009 (seems like another decade) Capitol sued Vimeo for every flavor of copyright infringement there is: direct (you did it); contributory (you helped) and vicarious (you benefited) based on infringing videos on Vimeo’s site. The case recently heated up after Vimeo filed a summary judgment motion in November claiming protection under the safe harbor provisions of the Digital Millennium Copyright Act (DMCA). In response, Capitol (joined by a cadre of fellow labels) filed a summary judgment motion of its own, calling b.s. on Vimeo’s DMCA defense and claiming that Vimeo is guiltier than sin, especially in light of last year’s DMCA ruling in Viacom v Google. I wonder who the court will send home . . .

Holy Home Hijacking!

There’s no place like home — except the office, when you’re in litigation. So the attorneys for The Home Depot, Home Decorators, Home Decor Center and, um, Google  probably haven’t seen much of their homes recently (well maybe not the folks at Google whose litigation budget probably rivals the U.S. deficit).  Seven months ago, Home Decor Center sued The Home Depot and the others for trademark infringement (consumers were confused), unfair competition, contributory trademark infringement (you helped), vicarious trademark infringement (you benefited) and interference with prospective contractual relations (and I lost sales). According to the lawsuit, consumers who entered www.homedecorcenter.com or clicked on a search result for that page, they would be misdirected to www.HomeDecorators.com, which is owned by The Home Depot.  Sound familiar?  While there are some unique aspects to this case, which Prof. Eric Goldman touches on here, for the most part this is just another AdWords case. Perhaps an even less scary one for Google than its case with Rosetta Stone, given the admittedly descriptive nature of the HOME DECOR CENTER “mark,” which is federally registered only on the Supplemental Register – the waiting room for descriptive terms that hope to someday mature into marks. The Home Depot answered back in  October, as did Google (here) as the case proceeds towards its June 25, 2013 scheduled trial date. If the January 10, 2012 press release issued by Home Decor is at all representative of its case, I’d say it’s doomed.  Here’s a snippet:

I’ve no clue what a “legal trademark certification” is nor do I understand why anyone would ever sue for anything in LA Superior Court. Hopefully this one slipped by counsel and wasn’t drafted by him!

 All 3 of these cases involve liability claims against one party for the actions of another.  Make sure you — and those with whom you contract — understand and abide by IP laws when using others marks and works.