THE TRADEMARK TROLL AND SOCIAL MEDIA LAW

IF WARNER BROTHERS HAD HALF A BRAIN THEY WOULD NOT TRY TO STOP IF I ONLY HAD A BRAIN

noreply@blogger.com (dick troll) — Fri, 17 Feb 2012 14:45:00 +0000

I love the website techdirt www.techdirt.com. Mike Masnick, who runs the site, is a thoughtful commentator on the ways that technology shapes our lives. Yesterday, Mike conveyed a report from THE HOLLYWOOD REPORTER on the potentially epic battle underway between Walt Disney Studios and Warner Brother Studios over the movie The Wizard of Oz. Disney, not WB plans to make a new version of the famous classic.

What caught my eye was the aggressive trademark strategy that WB has adopted. The article states that WB has filed many oppositions in the United States Trademark Office during the past year. Many of these oppositions involved characters from the movie The Wizard of Oz.

All well and good you might say. Unless your name is Jeffrey Fannin. And you have developed a series of non-fiction books and workshops in the field of neuroscience. And you named the series IF I ONLY HAD A BRAIN. And you decided to federally register IF I ONLY HAD A BRAIN for your books and workshops.

Then you would find that WB (through its subsidiary) has opposed your efforts. Based on their federal registration? Nope. They ain’t got one. Ok so they claim common law rights in the phrase IF I ONLY HAD A BRAIN. Based on what goods or services? Glad you asked: WB claims that its licensees have been using the phrase on “ a wide variety of goods including printed materials, clothing, mugs, and related products” Any specific examples included? Nope.

If you were mildly curious you could do a Google search for the term “ if I only had a brain”.

You would find any number of places to buy an IF I ONLY HAD A BRAIN

T-shirt. Some of the sites may be authorized. Many of the others almost certainly are not. On eBay you would find dinner plates, music boxes, decorative pillows, shot glasses, and a book titled IF I ONLY HAD A BRAIN- deconstructing brain surgery.

So where are we? WB, fighting to control all aspects of its famous movie, adopts a scorched earth trademark strategy. With not much in the way of ammo to back it up. Consumers for movie memorabilia coffee cups and infant clothes likely to be confused by, or even be aware of, those seeking to improve their neurological capabilities?

You tell me.

MEMO TO THE NFL: LIKE IT OR NOT THE TERM SUPER BOWL IS SUPER POPULAR

noreply@blogger.com (dick troll) — Tue, 31 Jan 2012 17:05:00 +0000

This week is Super Bowl week here in Indianapolis. Fans, the media, and hordes of folks hoping to make a quick buck have invaded the city we affectionately call Naptown. But experiencing the Super Bowl as a live event is only a small part of the Super Bowl. All around the United States merchants will be pounding the air waves and the Internet with special Super Bowl deals on everything from TVs to shag carpet.

So what, you say? What's the big deal?

Well actually selling stuff using the term Super Bowl is a big deal. My colleague Ron Coleman, who writes the influential trademark blog LIKELIHOOD OF CONFUSION, has taken a special interest in the NFL's efforts to control all use of the term SUPER BOWL. And indeed there have been several well publicized fiasco's involving the NFL and its "bullying" tactics involving the term Super Bowl.

One would assume that because of such over the top efforts all use of the term SUPER BOWL was tightly controlled and traceable to the NFL or its licensees. That assumption would be false.

A Google search for "super bowl 2012 tv deals" unearths hundreds of different chances to buy a new television. More generally, a Google search for "super bowl 2012 deals" returns thousands of opportunities to purchase stuff from thousands of merchants.

In the cloistered world of trademark law much ink is being spilled over what it means to be a trademark bully. Indeed, I am helping to spill some of that ink. Is the NFL a trademark bully when it tries to control use of the term SUPER BOWL? Many would say yes. But, based on my brief and unscientific research, it appears that thousands of merchants are guilty of taunting the NFL by the way they are using the term SUPER BOWL without permission.

MEMO TO: TRADEMARK LAWYERS-WHEN YOU ACT AS A ME NOT WE LAWYER BAD THINGS HAPPEN

noreply@blogger.com (dick troll) — Sat, 07 Jan 2012 23:36:00 +0000

In a thoughtful and well reasoned decision, a magistrate judge in Oregon reminded trademark lawyers, and their clients, that careless legal practices can be very costly. The magistrate judge also made it clear that displaying arrogance and disdain for the court may not be be the smartest way to advance one’s cause.

The case W. Brand Bobosky and We Not Me Ltd. v. Adidas began in 2000. Mr. Bobosky, an attorney in Naperville, Illinois, created the phrase WE NOT ME. He began to use the phrase on promotional items. Four years later Mr.Bobosky hired a law firm to prepare and file a federal trademark application for this phrase. The application was based on Mr. Bobosky’s “intent” to use WE NOT ME on a laundry list of men’s and women’s clothing items. This list was prepared by Mr. Bobosky’s attorney, who also signed the application.

When it was time to file the necessary statement of use to secure the federal registration Mr. Bobosky, through his lawyer, presented a hat as a specimen. Although Mr. Bobosky could have deleted all the other goods he did not. Instead he declared that he was using WE NOT ME on all the goods set forth on his laundry list. He later claimed that he did not understand his obligation to verify that the list was accurate.

Fast forward to 2007. Mr. Bobosky, through a new attorney, wrote to adidas complaining about their use of the phrase WE NOT ME. An in house attorney for adidas challenged Mr. Bobosky’s federal registration because he could not find any evidence that Mr. Bobosky has been using WE NOT ME on clothing.

And what was Mr. Bobosky’s reply? AFTER this challenge he cleaned up his registration and had his new attorney file another application to register WE NOT ME, with a more careful list of goods. His new attorney eventually filed a statement of use and they went after adidas again, claiming infringement of a federally registered trademark and unfair competition under Section 43(a) of the Lanham Act. Adidas fought back hard, seeking to invalidate Mr. Bobosky’s registrations because he did not have the necessary bona fide intent and because he had not made any trademark use of WE NOT ME.

Based on Mr. Bobosky’s very weak testimony and other evidence of record, the magistrate judge invalidated his federally registered trademarks but allowed him to maintain his unfair competition claim.

I hear you asking: OK Mr.Trademark Troll what makes this case interesting? Two things.

First, I would bet my usual ham sandwich that thousands of federal trademark applications are handled exactly as this one was- with both the applicant and the attorney either ignorant of, or indifferent to, the accuracy of the signed statements that are part of the federal registration process. That’s an unsettling commentary on trademark attorney/client relations but not much more. Unless you build your trademark rights on such a flimsy foundation and then decide to get your lottery ticket punched by challenging a major consumer goods company.

Second, the magistrate judge went out of his way to chastise the adidas trademark counsel for displaying such a disdainful and disrespectful attitude. I can only imagine what it must be like to read comments such as:

adidas provides no authority to support this position and I find it completely at odds with the leading cases that address this issue

when asked by the court….. adidias counsel responded somewhat disdainfully that he did not even understand the question

adidas continually rebuffed the court’s questions about the size and location of WE NOT ME… and whether those factors suggested that the mark functioned as pure ornamentation or as a trademark. That, of course, is the critical inquiry

Would the unregistered trademark claim have survived summary judgement anyway? Probably. But this case is not the finest hour for the trademark bar. One can easily argue that it never should have been brought with such a questionable prosecution history and such skimpy marketing efforts. And, by displaying such a poor attitude, a litigator may now put adidas in the position of writing a check to someone who doesn’t deserve it. Or continuing a battle with two opponents. One of whom is the judge.

WHAT'S THIS SOCIAL MEDIA THING ALL ABOUT ANYWAY? THE PERILS OF PURSUING A BAD TRADEMARK LAWSUIT

noreply@blogger.com (dick troll) — Wed, 21 Dec 2011 20:23:00 +0000

Recently, I got a call for advice from an out of state colleague. His client had been sued by another company claiming trademark infringement.

Just a garden-variety trademark case? Not exactly.

Imagine (as a hypothetical) a California dentist named Jones suing a Maine dentist named Jones. The California dentist claimed that, by his actions, the Maine dentist was confusing the California dentist's patients. If you're like me your first reaction would be Huh? Even in the Internet age there are some businesses that are undeniably local. For the facts at hand the relevant radius for customers is five to ten miles.

Oh sure there are the usual trademark litigation suspects: who was first to use? who has the federal registration? how similar are the respective trademarks?

Layered on top of this are issues of personal jurisdiction, subject matter jurisdiction, improper venue and improper service. But what makes this matter most intriguing is a tidbit that my buddy mentioned almost as an afterthought.

Turns out his guy, the defendant, got an email note from one of the plaintiff's customers. The customer was very upset with his "Jones". He made it clear that his Jones had no business messing with a "dentist" so far away. And besides that, nobody should be able to make a legal claim to "Jones the dentist".

But the most amazing part of the story? The customer copied the plaintiff on the email! So, standing in the shoes of the plaintiff, I've ____off a customer. I've got a case with major problems. And if I get a slam dunk victory it won't mean a thin dime for me.

I should add that both companies are new. And neither "dentist" appears to be made of money. I should also mention the all too familiar overreaching letter by the lawyer for the California Mr.Jones. Written as though either the COKE or MICROSOFT brands was being sullied.

I gave my buddy some suggestions. With luck this matter will settle quickly with only modest amounts of money wasted. For the sake of both parties I sure hope so.

FOLLOW UP MEMO TO CHICK-fil-A: DO YOU WANT YOUR CROW XTRA KRISPY?

noreply@blogger.com (dick troll) — Mon, 05 Dec 2011 20:10:00 +0000

When we last wrote about the good folks at Chick-fil-A they had just stepped into a fresh EAT MORE KALE cowpie. And how has their sophisticated trademark enforcement program been treating them? Ever heard of the Streisand effect?

In a nutshell: act foolish and find yourself at the wrong end of a seemingly endless number of syndicated news stories. Your company is either the butt of jokes or described as a trademark bully.

An online petition telling you to stop bullying small business has over 17,000 signatures. Vermont's governor publicly throws the full weight of his office in support of the T-shirt manufacturer who has been making EAT MORE KALE shirts forever.

When the United States Patent & Trademark Office released its exhaustive( pun intended) report on trademark bullying they concluded that the problem, if there was a problem, could be addressed by an educational campaign.

As one watches this PR disaster unfold one cannot help but ask: Just who is it that needs to be educated? Wouldn't you just love to be a fly on the wall in the CEO's office at Chick-fil-A?

MEMO TO CHICK fil-A: WHEN PEOPLE THINK YOU ARE A BULLY YOU GET TO EAT MORE CROW.

noreply@blogger.com (dick troll) — Fri, 25 Nov 2011 18:24:00 +0000

Is this yet another example of the “what in the world were they thinking” hubris that often brings well-known brand owners to their knees?

Mr. Bo Muller-Moore, a T-shirt artist in Vermont, has been producing EAT MORE KALE T- shirts, bumper stickers, and paraphernalia for many years.

Somehow he showed up on the radar screen of the lawyers for Chick- fil-A, the well-known fast food restaurant chain. They contacted him several years ago and told him that since Chick- fil-A was using the phrase EAT MOR CHIKIN to identify fast food chicken products and as a domain name he should immediately stop using the phrase EAT MORE KALE for T shirts and bumper stickers.

Through his lawyer, Mr. Muller-Moore told Chick- fil-A to take a hike. Which they did.

Fast forward to August of this year. Mr. Muller-Moore had the audacity to file a federal trademark application to support his use of the phrase EAT MORE KALE, for the shirts and bumper stickers he has been producing all these years. That prompted Chick fil-A to send him another warning letter. As reported in the Burlington Free Press, Chick- fil-A’s lawyer claims that EAT MORE KALE plays off, imitates and misappropriates Chck -fil-A’s “intellectual property” right in the phrase EAT MOR CHIKIN.

I find this use of the term intellectual property to be revealing. Why? Because I believe it shows a mindset that propels the conduct of many contemporary brand owners.

Will Chick- fil-A be forced to back off or back down? I would bet my usual ham sandwich the answer is “You betcha”. The public anger and backlash is in full flower. The petition drive to get them to drop their objections is up and running. If the facts are as reported, it’s virtually impossible to see them proving that customers for their chicken sandwiches will be confused, mistaken, or deceived when they see the phrase EAT MORE KALE on T-shirts. Not only that, they made the mistake of complaining to Mr. Muller-Moore, then walking away when he pushed back several years ago.

Just another case of over the top corporate hubris? Just another classic case of trademark bullying? Yes to both.

But I believe there is an additional explanation. Whether by accident or design, brand owners like Chick- fil-A, seek to assert legal rights in words. Not words that identify goods or services. Words.

Chick- fil-A wants to own the phrase “ EAT MOR[E]____. Apparently they are willing to put up with the bad press to stake their claim. But the only way that they can own this phrase is to prove that EAT MOR is so widely recognized across the full spectrum of American commerce that they are entitled to claim it as their intellectual property.

Does Chick- fil-A have a rational basis to make this claim.

Not from my vantage point. They have fallen victim to the same internally generated view of the world that has their brands at the center of the universe.

So now Chick- fil-A must confront reality. They think that the phrase EAT MOR CHIKEN is famous. It ain’t. Not only that but EAT MORE KALE and EAT MOR CHIKEN are almost certainly going to be allowed to co-exist.

Time to EAT MOR CROW.

MEMO TO SIMON COWELL: YOU MAY BE A BULLY ON TV BUT YOU DON'T SEEM TO BE A TRADEMARK BULLY

noreply@blogger.com (dick troll) — Wed, 16 Nov 2011 21:27:00 +0000

Call me an elitist. Call me an idiot. But I have never seen the AMERICAN IDOL television show. However I do have a pulse. So I am aware of Simon Cowell's well earned reputation as a mean spirited, cynical, bordering on cruel, talent judge. Sure sounds like the personality profile of a trademark bully.

Ah trademark bully. Now there's a term that any geek would love. And sure enough she does. My colleague Lara Peterson rides herd on the brandGEEK law blog. Lara is the head of a fancy schmancy committee devoted to understanding, examining, and defining the term trademark bully(ing). You can find the committee members here:http://brandgeek.net/2011/10/10/brand-bully-basement/.

What does any of this have to do with Simon Cowell? In the UK Mr. Cowell has been labelled a trademark bully. Unfairly IMHO. Here's the basic story: Mr. Simon's company owns or manages an all girl rock band. The company decided to name the band RYTHMIX. So they filed an application to claim the name. No problem right?

Big problem. Turns out a music based charity was already calling itself Rythmix. And these folks are not fools. After some (apparent) back and forth, Rythmix started a social media campaign against Mr. Cowell and his company. They were not shy about reminding him of how wonderful they were.

And it worked. Mr. Cowell's company announced their intention to withdraw their application. End of problem right?

Wrong. The folks at Rythmix have gone public again. They are complaining that Mr. Cowell's company did NOT abandon their trademark application. Not only that, they want Mr. Cowell to pay for their legal fees. In their view these fees will take hundreds of hours of music instruction away from children.

And Mr. Cowell's response? His lawyers did not withdraw their application because they wanted to transfer it to the good folks at Rythmix. NO THANKS say the folks at Rythmix. You want us to not say a peep if you transfer the trademark application to us.

And what does all this have to do with trademark bullying. Nothing. And that's my point. This is the sort of trademark dispute that has been going on since God was new. Ironically, the potential bully was the junior rights holder. And, after initial negotiations, when faced with a possible conflict, the junior rights holder left the playing field. Were there costs? Of course. Might Mr. Cowell pay the charity's legal fees as an act of generosity? Perhaps. But, based on the many news reports describing this incident, it seems that a a savvy non profit is slinging around the loaded term trademark bully to put pressure on larger commercial enterprise headed by a well known celebrity.
Perhaps our committee will need to wrestle with a new concept: reverse trademark bullying.

MEMO TO TIFFANY: YOUR ATTORNEYS SAY: THANKS FOR THE WORK. I SAY : WHY DID YOU BOTHER?

noreply@blogger.com (dick troll) — Wed, 02 Nov 2011 20:17:00 +0000

As has been widely reported the fashion shoe company Christian Louboutin was rebuffed in its efforts to stop Yves St. Laurent from using the color red on certain YSL high fashion shoes. This despite the fact that Louboutin has developed a recognized trademark for the color red applied to the outsoles of all Louboutin shoes. I have already written a post criticizing the district court decision. And sure enough Louboutin appealed.

Now Louboutin has an ally. Tiffany, the world famous jewelry company, has filed a friend of the court legal brief that encourages the Second Circuit to overturn the district judge and enforce Louboutin's trademark in the color red. In a sense you can readily understand why Tiffany would be concerned. They too claim ownership of a distinctive blue trademark( Tiffany blue) used on boxes and bags for their jewelry.

The Tiffany lawyers rip Judge Marrerro's decision to shreds. But they fail to fully address the one fact that makes the case troublesome. The fundamental tenet of trademark law is that the verbal or non verbal symbol being claimed should stand apart from the product it identifies. Of course I cannot use Tiffany blue for a box or bag, at least not for jewelry. But I can slavishly copy a Tiffany ring or bracelet (not otherwise protected) so long as I distinguish my name and my packaging.

But the Louboutin red trademark is embedded in the outsole of its shoes. To honor that trademark means limiting how others can produce their shoes. The brand no longer stands apart from the object it identifies. In theory the functionality doctrine is meant to limit what would otherwise be deemed a trademark. Judge Marrerro takes a crack at the trademark functionality doctrine. The Tiffany lawyers propose a standard that would apparently exempt any brand from ever being functional.

I don't know if the Second Circuit will find the Louboutin outsole to be functional. But I'm certain that they will see the mischief that results when the brand and the product are intertwined. I am betting my usual ham sandwich that Louboutin will not overturn judge Marrerrro's decision.

My suggestion: rather than fudge the matter, the Second Circuit should take the chance to reign in what can qualify as a trademark. Tell brand owners that they can't use trademark law as a means of monopolizing a product feature or attribute. Not just color. But any feature or attribute that is embedded in the product at issue.

And not just the fashion industry. Which isn't, as it turns out, all that special.

MEMO TO URBAN OUTFITTERS: CAN SO MUCH BAD PRESS REALLY BE GOOD FOR YOUR BRAND?

noreply@blogger.com (dick troll) — Wed, 19 Oct 2011 18:21:00 +0000

When I was growing up it was common to hear people say, "Just make sure you spell my name right" or "There is no such thing as bad publicity". The theory behind this(I guess) is that name recognition trumps reputation.

This came to mind when I read about the latest Urban Outfitters brouhaha. The story has been widely reported over the last twenty-four hours.

The Navaho Indian nation is upset with Urban Outfitters because they are selling a "Navaho" line of clothing and accessories. The clothing includes women hipster panties and the accessories include a liquor flask. They have charged Urban Outfitters with violating their trademark rights in several Navaho designs. Separately, a Navaho woman wrote an open letter to Urban Outfitters suggesting that they may have also violated the Federal Indian Arts and Crafts Act.

I am not sure about the trademark merits. At a glance I suspect that there is no violation of the Arts and Crafts Act. However, Urban Outfitters must subscribe to the no such thing as bad publicity theory because they seem to always be embroiled in a controversy. Here is just a sample

In August, the parents of a 15-year-old model sued Urban Outfitters. They claimed that Urban Outfitters has used improperly suggestive images of their daughter on their products. Five months ago they settled a dispute with an independent jewelry designer who claimed that they stole one of her designs. Myley Cyrus weighed in on this and blasted them on Twitter.

Last year Urban Outfitters was involved in a dispute with an online T-shirt retailer. In 2008 they settled a lawsuit with the owner of the Danish Troll dolls. They prevailed against one of their competitors in a trademark lawsuit involving the TRUE PEOPLE brand. In 2009 they paid $25,000 to the owners of the legendary pine-tree- shaped air freshener trademark.

One of the facts of contemporary retailing is that your brand identity is not simply the story you tell folks, it’s what folks tell each other about you. Urban Outfitters latest dispute has fostered a “Boycott Urban Outfitters” discussion. A Boycott Urban Outfitters page was posted on Facebook after one of their previous disputes.

Perhaps name recognition still trumps reputation. But if I were a retailer I’d want my good reputation to be the basis on which my customers talked to each other about my company. Not the latest reason for folks to boycott.

DID WILLA (GIRL) WHUP P&G OVER AN IMAGINARY CONFLICT WITH THE WELLA TRADEMARK? THE TRADEMARK TROLL IS NOT SURE.

noreply@blogger.com (dick troll) — Mon, 17 Oct 2011 14:52:00 +0000

You haven’t been riveted by the world altering events now labeled as The Arab Spring? You do not have a clue about what’s going on with the European debt crisis?

Then you MUST know about the dispute between an 11-year-old girl named Willa and America’s largest consumer goods company Procter & Gamble. Willa’s mom, a wealthy, smart and savvy woman, worked for several years to create a line of skin care products, lip balms and hair care products for tween girls. She named this line of products WILLA.

This upset someone at P&G. Because P&G sells WELLA branded shampoo. P&G made their usual assumption that every (real or imagined) competitor wanted to trade on their goodwill. So they challenged Willa and her mom. Expecting them to do the sensible thing, and give up their name.

But Willa and her mom did not give up Willa’s name. They took the offensive against P&G and decisively won the public relations battle.

Now the case has settled. The settlement has been noted in the New York Times. At a glance Willa seems to have won. Willa can use her name on skin care products and a lip balm.

But when Willa filed one of her federal trademark applications she expressed her intention to use the term WILLA on a hair conditioner and a shampoo. Does Willa still have the right to use her name on these products? Were these products really important to Willa’s marketing plans?

I don’t know. So we can all watch with interest to see what Willa really does with her name

Unless we get distracted by a worldwide financial meltdown.

MEMO TO PROCTER & GAMBLE: WILLA VERSUS WELLA=LOSER

noreply@blogger.com (dick troll) — Fri, 30 Sep 2011 18:22:00 +0000

This doesn't fall into the category of "what in the world were they thinking?" It may or may not qualify as a case of trademark bullying. But I'll bet anyone a ham sandwich that Proctor & Gamble will be ( or already is) sorry that they decided to make life miserable for a wealthy preteen girl and her mother. It's never a good sign when your adversary and her mother are photographed as part of a human interest story in the New York Times. You can find a link to the story here.http://dealbook.nytimes.com/2011/09/28/a-start-up-takes-on-procter-gamble-over-a-name/?scp=1&sq=willa&st=cse

In a nutshell, Willa, an 8 year old girl complains to her mother about not wanting to use kids shampoo. This is aha moment for Willa's mom, Christine Prunier. Fast forward three years. Mom has developed a line of bath products and skincare products targeted directly at preteen girls. And the brand name for this line of ducts? WILLA, of course.
Ms. Prunier also developed a design to accompany the brand. And she sought to federally register Willa and Design with the US Trademark Office. No problem said the Trademark Office. Big Problem said Procter & Gamble. P & G owns the brand WELLA, as used on a line of shampoo products sold primarily though hair salons. P & G tried to stop Willa and her mom from federally registering their WILLA and Design trademark.
Here's where the story gets interesting. Turns out Ms. Prunier is a woman of means. After getting advice from a family y friend, she filed a lawsuit against P & G in NYC. Ms. Prunier is asking for a finding that the term WILLA used with a charming design of a young girl, does not legally infringe the term WELLA. Oh by the way, she asked for a jury trial.
When I first read this story I immediately thought of how my son kicks my butt at basketball, baseball and chess. Whenever he whips me I tell him (bursting with pride) "Son, with you, when I lose I win and when I win I win." But the reverse is also true if you are Procter & Gamble. When you take on an 11 year old girl, whether you win or lose, you lose.

STILL WANT TO SHOP AT MAY'S OR A&S OR BON MARCHE? MACY'S SAYS NO BUT WILL THEY HAVE THE LAST WORD?

noreply@blogger.com (dick troll) — Thu, 08 Sep 2011 15:03:00 +0000

Several years ago I was in charge of burying the SOHIO trademark. British Petroleum had taken over Standard Oil of Ohio. So BP it was to be. And with great fanfare.
But we were concerned that a competitor(the dreaded Marathon Oil with its SPEEDWAY and MARATHON brands) might start using SOHIO for gasoline. So we left the SOHIO brand on gas pumps at marinas selling to pleasure boaters.

I was reminded of this when I read that Macy's- the victor in America's national retail wars- is fighting to stop a company from federally registering several famous names as trademarks. Strategic Marks LLC, is attempting to register several of the local/regional brands that were folded into the MACY'S brand. These brands include: MAY, BON MARCHE, JORDAN MARSH, and FILENE's.
Strategic Marks claims that Macy's abandoned these trademarks. Macy's acknowledges that they haven't been using them but denies that they have abandoned them.

The legal standard for trademark abandonment is "use discontinued with no intent to resume use" If a trademark owner fails to use his brand for three years the law presumes that he has abandoned that brand. Then the brand owner must come forward with concrete evidence to show that she still has a legal interest in the disputed term.

Interestingly, though Macy's readily acknowledges that it is not using these brands, in their challenge to JORDAN MARSH Macy's states that it plans to begin using the brand again.

Oh really. Forgive me for being skeptical, but I would venture a guess that Macy's desire to resume use of these brands arose on the same day that they realized someone was trying to revive names they thought were dead and buried.

Strategic Marks LLC claims to have a real interest in reviving these names for retail services. I find myself wondering who is willing to make the bricks and mortar investment to compete with Macy's? Most of the local competitors in America's larger cities are gone. My guess: These names will never see retail daylight. But it won't be a cost free experience for Macy's.

IS APPLE A TRADEMARK BULLY? THE TRADEMARK TROLL IS UNCERTAIN. GASP!!

noreply@blogger.com (dick troll) — Wed, 07 Sep 2011 17:01:00 +0000

Trademarks are funny things. Protecting them can be challenging. Anyone who reads this blog knows that I have been sharply critical of many of America's most famous brand owners. In recent years those who should know better have pushed and pulled trademark law, copyright law and even the First Amendment in an effort to build a fortress around their brands. And this includes Apple. Their ongoing fight over the term App is yet another example of corporate hubris tarnishing a carefully constructed public image.

So I was prepared to cringe when I heard that Apple filed a challenge with Chinese authorities over the logo above on the left. Sichuan Fanffuo Food Co. Ltd has filed to register this logo. This company has been in the food business for many years.

To my eyes the logos are quite different. Apple has asked that the company remove the leaf from the their design. The company has refused, saying that without the leaf their apple looks like a bomb. Point well made.

But here's where things get interesting. The food company filed to register it's logo for "notebook computers" and "electronic game software" in addition to it's food products. The owner of the logo claims that he is seeking to register his logo in these categories on the off chance that someone might someday wish to use his logo for such goods.

Yeah right. Especially outside the United States, scammers have been registering trademarks and attempting to blackmail brand owners FOREVER. And, in earlier times, such scammers were often quite successful in China. Get the registration, then sell it back to the legitimate brand owner for a princely sum.

Apple has also asked the food company to remove these two non-food categories from its application.

So is Apple a trademark bully? One compromise is to let them keep the leaf on their logo but delete the non food categories.

But I'm still left to puzzle over the fact that the two logos are so different. If this were a battle over words I'm guessing that it would not matter what the Chinese company was trying to do. Or what were its motives. Legally different is legally different. Yet we seem to employ a different subjective yardstick when graphic symbols are at issue. With that in mind take a look at the logo of LG a prominent electronics manufacturer.

WE HAVE NOW ENTERED THE TRADEMARK TWILIGHT ZONE: FROOT LOOPS BEING ATTACKED BY MAYANS

noreply@blogger.com (dick troll) — Wed, 24 Aug 2011 16:18:00 +0000

Blinded by the dilution doctrine. Tone deaf to the Internet. Kellogg Co. may have reserved for itself a special place in the trademark hall of shame. Toucan Sam has been hawking FROOT LOOPS children's cereal for over 30 years. Kind of cute. Harmless enough.

Unless you are a serious non profit institute. Unless you seek to preserve the culture of Northern Guatemala by preserving artifacts and seeking to save the rain forest. And you use a Toucan, along with other Mayan imagery, as your logo. Then you will get Kellogg Co. asking you to stop using a Toucan bird, to symbolize Mayan culture. Why? Because Kellogg has immersed its FROOT LOOPS cereal in Mayan culture. And they now own the right to present that culture.

I have included the two Toucans. Suffice it to say they are nothing alike.

But that's not what qualifies this as a hall of shame candidate. It's the idea that by carefully and accurately seeking to portray and preserve Mayan culture the Institute is somehow diminishing the cartoon, sugar coated vision of that same culture that Kellogg created to sell cereal. As the lawyer for the Mayan Institute put it ( and here I paraphrase) " It's like the Washington Redskins football team complaining to an authorized American Indian foundation about how Indians are being presented."

As I have said so many times before " WHAT WERE THEY THINKING?" But I never meant it more than today.

PHISH REMIND YOU OF FIRESTONE TIRES? THE TRADEMARK TROLL SAYS : ME NEITHER

noreply@blogger.com (dick troll) — Tue, 23 Aug 2011 05:09:00 +0000

By way of Lara Pearson, author of the blog brandgeek I now know more about the band Phish than I ever expected to know. I'm a car guy so you can ask me about Firestone tires. And I am a father who remembers the Where's Waldo books and posters.

What's the connection? Not sure there is one. But let me tell you a story.
There's a guy in Vermont nicknamed Waldo. This guy has, for years been selling hats, hoodies, and baby clothes that are meant to express a loyal fan's undying support for the band Phish. Waldo's stuff isn't licensed. And it goes right up to the imaginary trademark infringement line. But does not cross that line. Or so said somebody when the band Phish sued him several years ago.

Here's where the story gets weird. Waldo brought out a hat to pay tribute to a well known Phish song called First Tube. The hat had a passing similarity to a hat sold by Firestone the tire Company. Not a slavish copy.

And the hat carried the word FIRSTUBE in a script typeface similar to the script typeface that Firestone sometimes uses to promote its FIRESTONE brand. But it also had the letters PH proudly displayed on the back. In sum: yet another tribute to Phish, using the term FIRSTUBE in a script format.

And apparently Firestone went ballistic. Of course you can understand why. When I say PHISH you immediately say Firestone tires. Oh you don't? Well how about if I say FIRSTUBE?

FIRSTUBE /FIRESTONE? They don't sound at all similar to me. But of course I'm not blinded by the Firestone light. And what about all the hard core Phish fans? Will they automatically link their beloved First Tube song with Firestone tires?

Too often, major brand owners start to see the external world through the prism of their internally generated understanding of that world. An understanding that puts their products at the center of the known universe. We're talking tires here folks.

THIS BULLLYING IS ABSURD. SOMEONE POUR A BOTTLE OF MAPLE SYRUP ON THE WAFFLE HOUSE

noreply@blogger.com (dick troll) — Wed, 17 Aug 2011 21:07:00 +0000

Keeping an eye on trademark law used to require a sense of humor. Watching fast food companies, cosmetics barons, and aging teen idols shape American law was, at times, awkward, but usually entertaining. Not exactly getting prisoners off death row. But intellectually interesting.

But trademark law has changed. The stakes are as low as ever. But lawyers who represent established brand owners now seem more and more willing to employ tactics that border on the unethical to advance the interests of their clients. Apparently professional standards have been sacrificed on the altar of greed. The only real check on such tactics is the power of the Internet to bring shame on brand owners who are guilty of misstating and exaggerating their legal rights.

And so it is with W. H. Capital, LLC.(and their lawyers). These folks own the chain of WAFFLE HOUSE branded restaurants. They have federally registered the term WAFFLE HOUSE for restaurant services. So, naturally when a new rap artist J.R. Bricks named his first iTunes rap song WAFFLE HOUSE, they set out to squash him.

What's the connection between restaurants and rap music? There is none. These folks have absolutely no business hassling this guy. And their lawyers have absolutely no business helping them.

But hassle him they did. He caved. He changed the name of the WAFFLE HOUSE song. Even though they did not have a legal leg to stand on.

I sure hope that the text of the cease and desist letter winds up on the Internet. It's hard to imagine a better candidate for a shaming campaign.

DOROTHY'S RED SHOES NOT ILLEGAL. BUT IS IT GOOD LAW?

noreply@blogger.com (dick troll) — Thu, 11 Aug 2011 18:36:00 +0000

First, let me be clear. I am no fan of color trademarks. Especially single color trademarks. Yes I know the Lanham Act says "Any word, name symbol or device” may qualify as a trademark. But, unless I get too close to your word trademark, I am free to slavishly copy your needlessly expensive designer shoes. And market them as my own.

Color trademarks can often be more powerful. Once the law allows me to claim the red soles of my needlessly expensive shoes as a trademark, you, my competitor will not be able to slavishly copy my product. Not only that, but even if your needlessly expensive designer shoe is quite different from my needlessly expensive designer shoe, you may not be able to use my “trademark/color” in your product.

Not a bad world to live in for the trademark owner. And I suspect that’s how the folks at Louboutin felt. At least until yesterday. That’s when Judge Marrero of the SDNY brought them back to the real dog eat dog fashion world.

In a very readable, clever opinion, Judge Marrero concluded that because color was such an integral part of the fashion industry, nobody, including Louboutin, could establish trademark rights in a single color.

I should be thrilled. Bucking the trend towards too much protection for brand owners, an enlightened federal judge preserves competition.
Consumers benefit.

Perhaps. But the best I can say is right result based on puzzling legal analysis.

My strongest objection to the decision is the way in which Judge Marrero conditions the very definition of what constitutes a trademark on a particular industrial setting. No such limitation can be found anywhere in the plain wording of the statute. And, to the best of my imperfect knowledge, no other judge has used such logic to define a trademark.

To support his analysis Judge Marrero cited the well-known legal doctrine of functionality. Functionality is meant to limit the reach of product features claimed as trademarks. But here too, Judge Marrero seemed to use the functionality doctrine in puzzling ways to support his decision.

M. Louboutin readily admitted that he chose red for the outsoles of his shoes because red was sexy, has energy, and is engaging. Sounds to me like the logic behind millions of brands, packages, and graphic symbols.

The plain fact is that nobody had ever thought to use a vibrant color as part of the outsole of a shoe. Louboutin did it. Louboutin promoted it. The world of needlessly expensive designer shoes strongly associates red outsoles with just one manufacturer. The judge turned a strength into a weakness.

Often a brand owner will be anxious to claim a feature as a trademark because that feature makes the product easier or less expensive to make. Again, the functionality doctrine, properly applied, preserves competition by allowing competitors to use that feature.

Typically, when a claimed feature makes an item more expensive to produce it argues for trademark protection because no rational competitor would want to spend more to produce a competing product.

Not so for Judge Marrero. While he readily acknowledged that producing red outsoles with a lacquered made such shoes more expensive to produce, in the upside down world of high fashion more costly to produce was a competitive advantage. Again, the judge turned strength into a weakness.

A thoughtful reader- that is to say anyone who has ventured this far- may be inclined to ask: What’s going on here?

Here’s the best I can offer.
The defendant in this case was the world famous design house Yves. St. Laurent. Did YSL have any interest in producing shoes with a red lacquered outsole? Nope. Does YSL want anyone to mistake their shoes for those made by Louboutin? Nope.

But YSL loves to produce needlessly expensive monochromatic designer shoes. In a rainbow of colors. Including an all red shoe with a red outsole.

IMHO the all red YSL shoes spooked Judge Marrero.
Could the good judge have upheld the validity of the Louboutin mark but then concluded that YSL’s monochromatic red shoes were not infringing the red outsole trademark?

Don’t see why not. I suspect that his will be somewhat of a hot potato for the Second Circuit Court of Appeals. Surely the decision will be appealed.

GO FIGURE. IT TOOK TOILET PAPER TO ROUSE THE TRADEMARK TROLL FROM HIS SLUMBER

noreply@blogger.com (dick troll) — Thu, 04 Aug 2011 16:30:00 +0000

Big biz battles over patents all the time. But it's not that common for titans of industry to clash over trademarks. At least industrial titans.

Oh sure I can give props to Georgia-Pacific. With the 4 billion ( with a B) dollar toilet paper market to protect they played the "let's convert out patents into trademarks so that we will always have a monopoly" game absolutely according to rules and strategy. First, they came up a quilted and raised design on their toilet paper. This design fluffed up the sheets and prevented sheets from nesting. As sophisticated players what did they do? They bombarded the United States Patent & Trademark Office with numerous utility patents.

But that's not all they did. G-P also filed design patent applications. And they sought to claim trademark status for several diamond designs. The always compliant PTO helped them play the game by issuing them design patents and federally registering these same designs as trademarks.

Long ago the famous ( later infamous) music producer Phil Spector, created a wall of sound musical effect. G-P tried to establish a wall of IP effect to scare off competitors. But it didn't work.

Some time in the early 1990s Kimberly Clark, another titan of the toilet paper industry, began producing a quilted design on its toilet paper. And so you have it. Godzilla v Rodan.
By the time the case got to the Seventh Circuit, a dozen witnesses had testified and 675,000 documents had been reviewed.

Judge Evans reviewed and dismissed all of G-P's arguments. The essence of his decision was that, by their own words, G-P acknowledged that the diamond designs helped the toilet paper function better. To summarize eons of trademark doctrine. If you make it function better you are wasting your time to claim that folks associate you with that functional improvement.

And yes the earth is still rotating on its axis. I can't help but wonder, did G-P really think they would win? Did the litigation keep Kimberly Clark from competing more vigorously? Does such litigation only serve to strengthen the view that intellectual property laws hinder rather than promote competition?

I guess from now on such questions are properly considered in the rooms where the quilted diamond designs are directly on display.

MEMO TO LADY GAGA : YOUR SHAWL AND YOUR ORTHOPEDIC SHOES ARE READY!

noreply@blogger.com (dick troll) — Mon, 07 Mar 2011 22:38:00 +0000

Think fame is fickle? Fame is FOREVER, when measured against edgy and outrageous. Ask Google. Ask David Bowie. Ask Madonna

And now ask Lady Gaga.

Lady G has filed a lawsuit against the small London ice cream boutique that has produced BABY GAGA ice cream. Made from breast milk.
You think such ice cream is gross? Well of course you do. And so does Lady Gaga. She is offended by any association with such a product. And how did she describe her displeasure? That's what is so telling.
As her lawyers put it with such irony,ice cream made from breast milk is "deliberately provocative and, to many people, nausea-inducing".

As she clawed her way to the top I suspect that Lady G's guiding star was to, at all costs, be deliberately provocative and to many people nausea-inducing. But once one is touched by fame the oh so powerful urge is to stay famous. When you can't put all your fame at risk by yet another outrageous undertaking you have begun the slow descent into obscurity. Any one for shuffleboard?

IT'S NOT SMALLLAW, IT'S NOT BIGLAW... THE TRADEMWARK TROLL SAYS IT'S FOOLISH LAW

noreply@blogger.com (dick troll) — Wed, 02 Mar 2011 16:43:00 +0000

Ah the good old days before the Internet. A brand owner could engage in foolish behavior and only a few folks might know of it. But the Internet has changed everything. Now when you do something foolish it goes viral. And you get to look foolish before many thousands. Or millions.

Just ask the folks at the Technolawyer blog. They claim "ownership" of the term smalllaw as a trademark. Recently another blog directed to lawyers, THE LAWYERIST, wrote a benign article about yet a third blog (stay with me here) ABOVE THE LAW, that has decided to expand its coverage to include smaller law firms. In the article THE LAWYERIST used terms like solo-small law or small law not big law in attempting to describe the nature and extent of the ABOVE THE LAW coverage.

In the old days, a brand owner like Technolawyer, whem faced with a perceived editorial misuse of a trademark, would simply ask for attribution. That is, the brand owner might say something like " The term smalllaw is a registered trademark of____" If you use this term could you please use it properly and acknowledge our ownership".

But no. The owners of the registered trademark smalllaw decided to bring out the big guns. ( Hulk Hogan take note). They hired the well known NYC law firm of Fish&Richardson to send an over the top take down letter to THE LAWYERIST.
Did THE LAWYERIST go quietly into the night? Did they yield to the pressure from bigiplaw? Of course not. They immediately recognized the pr free pass they had been handed.

THE LAWYERIST blog is currently conducting an informal likelihood of confusion survey. It is asking readers to vote on whether it should yield to the demands of Technolawyer. As of yesterday the vote was 81% no. There were some 65 comments, almost all negative, directed at Technolawyer and its lawyers.

But let me shift gears. Often, those immersed in cutting edge technology criticize an overwhelmed, undermanned US Patent Office for mistakenly granting overly broad patents that are then used as a club by the lucky lottery winner- I mean patent holder. These overly broad patents are eventually overturned. But the time and money involved is a severe drag on innovation.

The analogy is not perfect.But the shoe does fit reasonably well. Terms like biglaw and small law (or smallllaw) have been part of the cultural legal vocabulary for many years. In the face of this common usage, Technolawyer's parent company has sought to federally register the terms biglaw and smallaw as trademarks . I would bet a ham sandwich that neither of these terms would survive a serious challenge. But that has not stopped Technolawyer from hoping to win their own lottery. In the bad old days they might have been able to conduct this campaign quietly. But those days are long gone.

Side note to INTA and AIPLA- re your testimony to Congress. Please see the above. And the many, many, many, many examples of abuse that are a simple Google search from the light of day. It reminds me of the comment heard after a horrific drug related crime. Those living in the neighborhood are often heard to say " The only people that can't find drugs around here are the police".

MEMO TO: ZOOM INC. ( AND YOUR LAWYERS) DON'T BLAME MOTOROLA , IT MUST BE THE FAULT OF THE USPTO!

noreply@blogger.com (dick troll) — Fri, 25 Feb 2011 12:14:00 +0000

From a trademark observers outpost- this doesn't fall into the category of " what in the world were they thinking" But it's close.

It has been widely reported that Zoom Inc., an online money transfer company, using the term XOOM to identify its services, filed a lawsuit against Motorola on the day that Motorola introduced a tablet computer under the name XOOM.

The complaint that Zoom's lawyers filed has a tone of indignation. It accuses Motorola of wilfully and deliberately adopting the term XOOM to trade on Xoom Inc.'s reputation. The complaint notes that Motorola brazenly filed its own application to federally register the term XOOM even though Xoom Inc. already had secured a federal trademark registration for the identical term.

I guess if one's motive is to disrupt the introduction of the XOOM computer there is some logic to this strategy. But its not a compelling trademark story.

Yes indeed, Motorola filed to register the term XOOM long after Xoom Inc. secured its own federal trademark registration.

But guess what? The USPTO examining attorney DID NOT EVEN MENTION that registration when she reviewed Motorola's trademark application. She cited an existing registration for the term ZOOM against Motorola. But Motorola answered the examining attorney's concerns and the USPTO approved Motorola's application. In other words the federal trademark office compared XOOM to XOOM and said "no problem".

Could Xoom Inc. still have a claim against Motorola? Well sure. But to claim that Motorola has brazenly ignored their rights when all Motorola did was to successfully play the trademark registration game is a real stretch. Reminds me of a scene from a Jim Carry movie.

ARE YOU URBAN HOMESTEADING IN YOUR URBAN HOMESTEAD? THEN REST EASY.

noreply@blogger.com (dick troll) — Mon, 21 Feb 2011 22:01:00 +0000

My oh my didn't the Dervaese family step squarely into a home made cow pie. These folks have apparently been among the more well known advocates of urban homesteading. Using their website and their numerous blog sites their personal urban homestead has become very well known.

Although the family promotes a share the wealth philosophy that philosophy seems to have been a casualty of an ill conceived trademark land grab. So far it has been a pr nightmare. They have been anointed with the kiss of death label "trademark bully". Based on what I have read, they seem like trademark dunces rather than trademark bullies.

For some reason these folks secured a federal trademark registration for the term URBAN HOMESTEAD. To identify a place- as in "your urban homestead?" Nope. The putative service mark identifies a laundry list of educational services. If you visit their website you will be hard pressed to find any service mark use of the term urban homestead. Indeed, these folks kindly provide visitors with a definition of the terms urban homestead and urban homesteading. Definitions that do NOTHING to advance their claim that the terms URBAN HOMESTEAD or URBAN HOMESTEADING are exclusively associated with their educational services.

But wait they say, we only object to the commercial use of "our " terms. That's like the owner of the shoe store saying "It's ok for my customers to use the term shoe but not ok for other shoe stores to use the term shoe." Lots of luck with that claim.

In the softly worded letter these folks sent out they kindly asked those using the terms urban homestead and urban homesteading to identify them as trademarks when referring to the Dervaese family. Only problem with that request? The Dervaese family has apparently never done so when referring to their own services. Again, their website is a treasure trove of bad trademark grammar. It can be a tall tall task indeed to ask a legal tribunal to enforce your rights in a word or phrase against third parties when you have utterly failed to properly use that word or phrase.

As a final infirmity, these folks are asserting trademark rights in the term URBAN HOMESTEADING based on a Supplemental Register registration!! I won't bore the reader with insider baseball but suffice it to say that I would think very long and very hard before I started throwing my weight around using a federally registered trademark from the Supplemental Register.

I suspect that it will be the collective wrath of their own kind that will force the Dervaese family to withdraw. If not, they may learn some very painful trademark lessons.

MEMO TO INTA: ICEBERG AHEAD! ICEBERG AHEAD! YOU CAN'T AVOID IT BY SHUFFLING DECK CHAIRS

noreply@blogger.com (dick troll) — Fri, 18 Feb 2011 16:14:00 +0000

I respect Alan Drewsen, the Executive Director of INTA. He is a thoughtful man. But the comments he recently submitted to the United States Patent and Trademark Office about trademark bullying were warmed over pablum. Meant to mollify INTA's members. Mr.Drewsen's remarks can be summarized as follows:

Problem what problem? If there IS a problem it's simply that the public and small brand owners don't understand the crushing burdens faced by blue blood brand owners. And the Internet has only made it worse!! Now the misunderstandings get amplified.
And the solution? Keep everything just as it is. But educate the unwashed on the subtleties associated with the terribly complex topic of trademark law.

Ironically INTA's testimony was released on the same day that an ex employee of the Coach leather company filed a class action lawsuit against the company. When she attempted to sell her genuine Coach(R) bags on eBay, her eBay account was suspended and she received a threatening letter from the Coach lawyers. They charged her with selling counterfeit goods. They stated that she might have to pay as much as 2 million dollars for her sins. And they insisted that she send them $300.00.

And it gets better. An independent trademark blogger noticed that the the letter in question was almost certainly a form letter, since he found another letter from the same firm, with almost identical language and an identical signature, sent to a different small entity.

To summarize: highly visible, large brand owner sends over the top form letter to individual, ex-employee, selling genuine goods. Without ever bothering to check the basics. Oh yeah, highly visible, large brand owner also gets eBay to shut down ex-employees account.

And what does the ex-employee do? Unlike the old days- pre Internet- the little person doesn't simply roll over. Nope. Instead the little person go trolling( couldn't resist) for others who had suffered from such bullying.

But the courts can sort it all out? Oh really. As Professor Kenneth Port has noted in describing the "death" of trademark law, as the number of trademark cases filed has gone up the number of reported decisions has dropped by 40% in the last several years. Could it be that cases are being filed for some reason other than a need to have a court decide?

What about the PTO? Do a search for Apple, Inc. or Kelloggs at the Trademark Trial and Appeal Board. You'll find over 100 pending oppositions, cancellations or requests for extensions of time to oppose. Kelloggs filed 55 opposition actions in 2009 alone. But EVERY ONE of these supposedly infringing trademarks had cleared the PTO examination process. Can that process be so deeply flawed? Are the blue bloods really forced to file so many actions to prevent their rights from eroding?

Or could it be that some brand owners want to build legal rights using the legal system instead of the marketplace. Or could it be that the Internet has created resale headaches of enormous proportions for brand owners who don't want any such secondary sales. Or could it be that without using trademarks as a barrier to entry, its just too darn easy for David to take on Goliath?

I may not have a clue as to why. But something has emboldened or forced some brand owners to instruct their legal handmaidens to engage in a course of conduct that cries out to be understood using one word. Bully

Sarah Palin Couldn't Do It. Jimi Hendrix Couldn't Do It But Tavern on the Plaza Roused The Trademark Troll From His Slumber

noreply@blogger.com (dick troll) — Mon, 14 Feb 2011 16:46:00 +0000

When I heard that the bankruptcy trustee for TAVERN ON THE GREEN in NYC was bitching about TAVERN ON THE PLAZA in Indianapolis my first thought was: WHY DON'T THESE SLAM DUNK CASES EVER COME MY WAY?? Jealousy thy name is trademark law.

The battle over the world famous TAVERN ON THE GREEN name, for restaurant services, has been raging for several years. Two presidential candidates one real, one a buffoon have weighed in on this topic. As matters now stand NYC owns the name. Some value it at $19 million dollars. But Mayor Bloomberg has hinted that the name may never again be used on a restaurant in NYC. Other creditors are still challenging NYC over ownership of the name.

Against this backdrop, a brand new J.W. Marriott hotel recently opened in Indianapolis. The hotel was not built by Marriott but rather by a successful Indiana real estate development company. As part of their final marketing plans they sought to federally register the term TAVERN ON THE PLAZA for an outdoor patio restaurant set to open in the Spring of 2011. In doing so, they apparently raised the alarm bells at the law firm that is serving as the trustee for the bankrupt estate. This law firm fired off a cease and desist letter to the Indiana company. Of course you can see the obvious conflict; TAVERN ON THE GREEN/TAVERN ON THE PLAZA- with nobody able to claim rights in the term tavern. You can't? Neither can anyone else. Especially Hoosiers!

So what did the Indiana folks do? They went on offense and filed a declaratory judgment action against the trustee in bankruptcy. Well let's see there are only about a million "tavern on the's..." in the US. My quick check unearthed several other taverns on several other plazas in the United States. To my utter amazement the electronic phone directory contains a listing for a TAVERN ON THE GREEN restaurant in the Indianapolis metropolitan area!

But, in one sense I can understand the trustee's position. Surprising the United States Trademark Registry had no other entries for TAVERN ON THE... except the two in dispute. If I were fighting over the name TAVERN ON THE GREEN and it suddenly appeared as if the J.W. Marriott Company might( emphasis on might) be adopting the name TAVERN ON THE PLAZA for all Marriott restaurants I might take some action. I would like to think that that action would be a much better investigation of the underlying facts, combined with a much more rigorous analysis of whether GREEN and PLAZA are legally distinct.
As I said before "Why don't I ever get these cases???"

MEMO TO FIREFLY DIGITAL : IF GADGET REALLY EMBODIES YOUR PASSION DON'T GENERCIZE IT AND THEN SUE GOOGLE

noreply@blogger.com (dick troll) — Mon, 08 Feb 2010 15:49:00 +0000

First, let me state my bias. I am a fan of Google. I know they are big but the world is a better place because of what Google has done, is doing, and will do.
But the folks at Firefly Digital don’t share this POV. They have sued Google over use of the term “Gadget”. They base their claims on two federally registered trademarks and claimed use of the term Gadget since 2002.
Should Firefly have ever been able to federally register a term like Gadget? I’ll put that question aside.

Because the fundamental responsibility for anyone who claims trademark rights in a term or symbol is the responsibility to use that term or symbol properly. And proper use almost always means using a verbal term as modifier for a noun.

One shorthand test: if you are using your trademark properly you should be able to remove it from a sentence and the sentence will still make sense.

Does Firefly pass this test? Not on their website they don’t. Here’s their own language:

The Website Gadget® is the ultimate tool…

When Firefly builds a website we use the Gadget® to…

In 2001 when Firefly created the Website Gadget® it marked a turning point…

Uh oh.

And here’s the ultimate irony. If you use the Google search engine for the term “firefly digital” you will find that others who appear to be direct competitors of Firefly Digital are using the term Firefly. Surely this must REALLY strike at the essence of Firefly Digital . But perhaps these others don’t have the same visibility as Google. Or the same pockets.