What a mess. Kudos to the Boy Scouts of America for opening up its membership to girls, but the gender-specific nature of the branding, plus the undeniable existence of a competing group, the Girl Scouts of the USA, has created a brand battle that would be right at home on a law school exam.
Timothy Geigner at TechDirt has a good post about the mess, but the basic issue is simply that the Boy Scouts of America are rebranding as “Scouts BSA.” Yes, the “BSA” still presumably stands for “Boy Scouts of America,” but by dropping the “BOY” portion from the mark, it has allegedly created confusion among the scouting community as a whole and is harming the Girl Scouts.
As explained in the TechDirt article, and in other articles on this issue, The Girl Scouts have sued the Boy Scouts in federal court, claiming trademark infringement, dilution, and other unfair competition. The complaint is HERE, and it is 50 pages long – covering interesting scouting history and allegations of intentionally sowing confusion.
From the Introduction in the Complaint:
There is also corresponding activity at the USPTO’s Trademark Trial and Appeal Board. The lawsuit was filed in the Southern District of New York on November 6, 2018. However, prior to that, on October 16, 2018, the Girl Scouts of the USA filed a request to extend the time to oppose the Boy Scouts of America’s trademark application for “SCOUTS BSA,” which the BSA filed on May 3, 2018. Here is the TTAB docket:
Since there is now pending district court litigation, the Girl Scouts of the USA will likely not need to pursue opposing the application at the TTAB because the district court litigation can take care of the registrability and confusion issues, and, the TTAB typically suspends its own proceedings when there is concurrent district court litigation.
The Girl Scouts of the USA likely intended to pursue this in district court from the beginning, but the Boy Scouts’ “SCOUTS BSA” trademark application was published for opposition on September 18, 2018, which meant that the Girl Scouts had to either file a notice of opposition or seek an extension of time to file a notice of opposition within 30 days of September 18, 2018, otherwise the application would proceed toward registration. Thus, the Girl Scouts, in an abundance of caution, filed the extension request within the 30-day window to preserve the ability to oppose the mark at the TTAB regardless of the status of the district court litigation. Again, the TTAB will likely not have to get involved if the district court litigation takes off, but this is a good example of making sure all bases are covered before kicking off a litigation strategy.
Sorry, couldn’t resist.
This will be a fascinating case. Since these marks are so old and well-known, the dilution claims should be interesting.
The concept of “trade dress” is sometimes hard to grasp. It is different, yet similar, to a design patent or copyright over expressive works. Trade dress typically refers to the shape or configuration of a product or a product’s packaging. However, to be protectable as trade dress, such configuration or shape must serve a source-identifying function, just like any other trademark. That’s the distinguishing factor between a design patent and/or copyright – the source identifying role. The classic trade dress example is the iconic shape of a Coca-Cola bottle. When you see that curved bottle, you immediately think of the Coca-Cola company and its products. It is an example of trade dress and product packaging.
Trade dress becomes more difficult when venturing outside of product packaging. Some trademarks can be “inherently distinctive” due to their arbitrary nature when applied to relevant goods. For example, “Apple” is inherently distinctive when applied to computer products because “apple” is not descriptive or suggestive of computer products. When dealing with product packaging, trade dress can also be inherently distinctive. However, when dealing with product design – such as the layout of a store – trade dress can not be inherently distinctive. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000). To achieve protectable trade dress for product design, you must prove secondary meaning – which means that when the consuming public sees your specific product design, they immediately make a connection to you, the brand source. Also, trade dress cannot be “functional,” which means that you cannot take a product configuration out of the marketplace and claim it as your own if the configuration is necessary for others to compete in the market. An example of a failed trade dress claim is the Hooters girl outfit. See commentary HERE regarding the famous Hooters v. Wing House trade dress case.
I explain those basic trade dress principles in order to present the next Featured Case on Florida IP Trends.
I’ll be back in the next few days to comment on the actual case, but the basic premise is that Medieval Times has sued a local competitor who also offered a dinner show “inspired by the true medieval tradition of royal families inviting guests to a festival and feast to watch knights compete on horseback.” That quote is from the First Amended Complaint, and I have a feeling that it will come back to haunt the Plaintiff in the future…
Until Part II, enjoy some pictures from my (coincidental) recent visit to Medieval Times earlier this month:
Well this was anticlimactic. On August 21, 2012, after a notice of settlement was filed, the Court dismissed the case. No additional information about the settlement is available, but Coco Mango seems like it’s still in business.
Trade dress cases are fun. Trade dress typically refers to the visual appearance of something – such as a product’s packaging or the design of the product. The shape of a Coca-Cola bottle is an example of trade dress. When you see that distinctive bottle shape, you immediately think of the source, Coca-Cola.
One of the more popular trade dress cases (at least in Florida) was the “Hooters v. Winghouse” case. There, Hooters’ parent company sued the company behind the Winghouse chain of restaurants. Hooters claimed that its trade dress was “the Hooters Girl uniform; rough-hewn rustic interior woodwork, including light colored wooden walls and floors; dining tables consisting of red wood of varying hues, surrounded by lighter pine wood, and covered with a shiny epoxy; a table-top setup consisting of a wooden vertical paper towel
spool, wood-weave plateware, and table tents; a parchment paper menu bearing the story of the restaurant on its reverse side; surfboards; wall-mounted photographs of celebrities taken with servers; pictures of girls in attractive swimwear; road signs displaying clever sayings; hula
hoops; large-bulb Christmas lights; wall-mounted sports memorabilia; bumper stickers; and “beachy” music from the ‘50s through the ‘80s.
However, the court in that case focused on the very first item in that list – the Hooters Girl uniform. Ultimately, the court found that the Hooters uniform is “functional,” and to deny another business from being able to use waitresses in shorty-shorts and tank tops would be an “impermissible burden on competition.” Thus, you now have two places to go get wings and see girls in tiny outfits. You just need to choose if you prefer orange/white uniforms or black/red.
Now that you have an idea about what trade dress is, Florida IP Trends presents:
Yoga Berry Corporation v. Coco Mango, LLC [COMPLAINT]
This case got my attention because of the “Yoga Berry” plaintiff. My first thought was that famed catcher Yogi Berra must have gotten into the health nut business or something. But no, there does not seem to be a relationship between Yogi Berra and Yoga Berry (although I cannot confirm or deny it). That makes this a somewhat unsympathetic plaintiff for me. Before even reading the complaint I was thinking, “Gee, if these guys are trading on the name of the great Yogi Berra, what beef do they have with Coco Mango?
Well, the beef is in the yogurt. [author’s attempt at a Yogiism]
Yoga Berry is suing the operator of a “Coco Mango” yogurt store. Yoga Berry alleges that Coco Mango copied the distinctive trade dress found in the YOBE yogurt stores.
Yoga Berry has a tough hill to climb. Just as Hooters learned that even a distinctive and well-recognized decor can ultimately fail as trade dress, Yoga Berry will have to prove that its trade dress is protectable. The Complaint could be a little clearer in defining the trade dress, but it looks like a YOBE store has “futuristic white stools, chairs, table, and benches,” and “distinctive light fixtures” among other things. Pictures or exhibits would have been nice in a complaint like this. (I’m sure the judge would have appreciated them, too.) However, since there were none, I took the opportunity to find some. Having never been in either store, I just couldn’t picture what the Complaint was trying to show.
Ok, so maybe the local Scan Design or IKEA was having a sale. You have to admit – the light fixtures and stools look to be identical, if not different colors. But, is this really protectable trade dress? When consumers see those light fixtures, stools, and other items that are claimed as trade dress, do those consumers think of the source, Yoga Berry? Or is this more like the Hooters/Winghouse case where no one business should be able to lock up the “uncomfortable modern chairs and lamps” decoration?
Protectable trade dress or not, this will be the key issue in the case:
Assuming that the allegations in the Complaint are true, the operator of Coco Mango decided not to open a “YOBE” franchise as offered by Yoga Berry. But, instead of simply opening a different yogurt shop with traditionally-boring yogurt shop fixtures, the Coco Mango operator decided to simply source the same lamps, chairs, and other fixtures that Yoga Berry counts as its own trade dress. Why pay the franchise fee when you can simply duplicate the look and feel that the franchisor is selling? And how did Yoga Berry discover this smoking gun information? A Yoga Berry “representative” went to Coco Mango to ask about it, and the employee disclosed the reason for the chairs, lamps, and other decor. Oops.
Coco Mango has answered the complaint (in distinctive Arial font, not Times New Roman as Yoga Berry’s complaint) so we should have some more to write about in the future. My money is on one of the unfair competition counts. The trade dress and state dilution claims seem like a stretch. But, it ain’t over til it’s over.
It has been about one year since the last update on the Outlaws lawsuit. A lot has happened in that time, but I’m going to fast forward to April 6, which is the date that Judge Lazzara entered his order granting summary judgment to… the DEFENDANTS!
My very first post concerning this case hinted that “the paperwork” would be the key to the case. That was a reference to the license agreement that was attached to the Complaint and which allegedly gave the Defendants the right to use the OUTLAWS mark while touring. The Court carefully inspected the license agreement and noticed some major problems with it. One problem was that the license purported to be an “exclusive” license granting the Defendants the exclusive right to use the mark; but, in a different provision, the license said that the Licensees (Defendants) agree that they may not use the mark without prior written consent of the Owner (Plaintiff). WHOOSH! That’s the sound of the license agreement being sucked into a black hole of unenforceability. A trademark licensor cannot grant an “exclusive” license to a licensee and then require that licensee to ask for written permission before using the trademark. That’s not a license, and it results in “no mutuality of obligation,” meaning that the licensee has obligations under the contract but the licensor doesn’t. It’s “illusory.”
Also, the license agreement (properly) contained provisions whereby the licensor (Plaintiff) could monitor the quality of the Defendants’ services under the mark. This is necessary to prevent “naked licensing.” Since the mark is still owned by the licensor, they have to make sure that the licensee is providing goods or services that live up to the quality of the trademark or risk abandoning or otherwise harming the mark. The record in this case established that the licensor did not monitor the quality of the services being provided under the licensed mark, thus the license agreement was illusory.
It wasn’t just the license agreement that sunk the case for the Plaintiff, however. The Order is filled with references to Mary Thomasson’s deposition. That deposition provided extremely valuable information for the Defendants. It revealed numerous problems with the transfer of the Outlaws intellectual property and the corporate structure used to control the intellectual property. It’s a bit sad because a lot of the ownership problems seem to have occurred in the wake of Mr. Thomasson’s death.
This case is, at least for the Plaintiff, a painful reminder of the importance of properly assigning and licensing one’s intellectual property.
After spending pages and pages explaining how the OUTLAWS trademark was improperly assigned and licensed, the Court makes a poignant statement: “The Licensee Defendants have not infringed Outlawlessness’ [Plaintiff’s] ‘Outlaws’ trademark, to the extent it exists.” (emphasis added). Ouch. Mismanagement of the mark may have legally killed it. (The Court makes an interesting finding that a “recording company” and “live musical performances” are not related for purposes of trademark infringement. I think that’s debatable, especially with the facts in this case. However, that issue really wouldn’t have mattered given all of the other problems with the mark.)
There were some other issues in the case that I haven’t addressed (i.e. copyright), but my focus in featuring this case has always been the trademark issues.
There has been a lot of interest in this case, so I figured I would give Florida IP Trends readers an early Christmas present by uploading recent documents from the case.
A hearing was held in Miami yesterday, and it appears that Mr. Link/Lang was not in attendance. In his absence, the judge granted a temporary restraining order (TRO) which essentially kills Mr. Lang as played by Mr. Link. Oddly, the Motion for Temporary Restraining Order is sealed, so I’m unable to see the arguments and affidavit from Steve Budin that resulted in the judge granting the TRO. There is a hearing set for December 30th to show cause on why a preliminary injunction should not be ordered. A preliminary injunction would essentially extend the TRO so that the same prohibitions are in place during the case (i.e. Mr. Link is prohibited from using the BRANDON LANG trademark).
Note that this is not the end of the case. The merits of the case have not even been addressed. All of the activity thus far has been trying to stop Mr. Link from portraying himself as Mr. Lang while the case progresses. An Answer hasn’t even been filed.
So, it will take more time to solve mystery of who signed the “Brandon Lang” consent statement in the trademark application. (Which, coincidentally, was signed 3 years ago this Sunday.)
This one is a real headscratcher. I have to make an initial disclaimer before diving in – my firm is currently representing a defendant in an unrelated case brought by the same plaintiff in this case. This post reflects my personal opinions and is not related to any issues in the case I’m working on with the firm.
With that said, Florida IP Trends presents:
Stevo Design, Inc. v. Brandon Link, Case No. 1:2010cv24283 (SDFL December 1, 2010)
According to the complaint, “Stevo Design provides sports handicapping services. In general, handicapping is the practice of assigning advantage through scoring compensation or other advantage given to different contestants to equalize the chances of winning…Stevo Design operates over 7 internet-only sports handicapping brands, and services over 10,000 unique clients worldwide. This is accomplished online via pay-per-view sports analysis and selections, or what is commonly known as providing ‘Sports Picks’. Stevo Design employs more than 15 full-time sports handicapping professionals to analyze games and sporting events on a daily basis throughout the year and deliver their opinions and rated selections to clients.”
Several years ago, a movie was made about the world of sports handicappers. The film was called Two for the Money, and it starred Al Pacino, Matthew McConaughey, and Rene Russo. One of the main characters was based on a Stevo handicapper named Brandon Link. As far as I know, Brandon Link is Brandon’s real name. However, in the movie, Mr. Link is named “Brandon Lang.”
Sensing marketing opportunities, Stevo submitted a service mark application to the U.S. Patent and Trademark Office (“USPTO”) for the mark “BRANDON LANG” for the following services: “Handicapping for sporting and other entertainment events.” The application was submitted March 15, 2007, and a registration ws issued on June 17, 2008. The registration information may be viewed HERE.
It’s somewhat rare, but not unusual, for a living person’s full name to receive a trademark registration, but given the obvious boost in visibility that the movie would bring to Stevo’s services, it makes sense that Stevo would want to protect the Brandon Lang “brand.” Following the success of the movie, Brandon Link continued offering his handicapping services under the Brandon Lang name.
As alleged in the complaint, at some point the relationship between Brandon and Stevo broke down. The details are in the complaint, but ultimately, the parties decided to part ways. They signed a separation agreement, and one of the counts in the complaint is based on Brandon’s alleged breach of that agreement.
The reason that the case is appearing on Florida IP Trends is because of the unique trademark infringement issue – specifically, infringement of the registered BRANDON LANG mark. The infringement is allegedly based on Brandon’s use of the BRANDON LANG name in providing handicapping services and in the use of Brandon’s website, which is located at www.therealbrandonlang.com. Stevo runs www.brandonlang.com. [12/7/2010 UPDATE: I noticed that one of the search terms used to hit Florida IP Trends was “brandon lang, website cancelled” so I checked out both sites. It does appear that therealbrandonlang.com is currently down. Perhaps settlement talks are underway.]
Sharp readers are probably scratching their heads at this point. That’s right, The case is Stevo Design v. Brandon Link. Brandon Lang is a fictional character in a movie. (I couldn’t find any fictional name/dba’s in the Florida Secretary of State records.)
So, doesn’t Stevo still have the right to prevent others from offering services under a trademark registration owned by Stevo? Absolutely. But here’s the problem. In order to obtain a trademark registration for a personal name, the applicant must inform the USPTO if the mark does indeed identify a particular living individual, and if so, then that living individual must submit a signed consent statement indicating that he or she consents to their name being used in the trademark application.
As THIS document shows, on June 23, 2007, the USPTO Examining Attorney followed proper procedure by asking Stevo if Brandon Lang was a living individual, and if so, then a consent form was required. If Brandon Lang was NOT a living individual, then Stevo was supposed to reply as such.
Responding three days past the six month deadline for a response, on December 26, 2007, Attorney Mark Jordan submitted a signed consent form from “Brandon Lang.” You can view the form HERE (see page 3).
Say huh? Sure as heck, on Christmas Day, 2007, one “Brandon Lang” signed his name to a form indicating that he consented to his name being used in the trademark application.
I’m no Columbo, but I had a hunch. Luckily, one of the exhibits to the Stevo v. Link complaint is the separation agreement signed by Brandon Link. Let’s compare Mr. Link’s and Mr. Lang’s signatures:
Rut-ro. I’m also no handwriting expert, buuuuuuut…..
So here’s the problem. If there is no living individual named Brandon Lang, and Stevo (or the attorney handling the application) knowingly submitted a document that [cringing] falsely [/uncringing] represented that Mr. Lang does exist, then the entire trademark registration is at risk. That means canceling the registration – or perhaps the registration would be void. That means no trademark infringement as to the registration.
Stage names are registrable with the USPTO, but the “real” person should – or at least typically does – sign their real name on the consent form. For example, Mario Lavandeira signed the consent form in the trademark application for his stage name, “Perez Hilton.”
This is a fascinating issue – a real person signs the name of a fictional character loosely based on his own persona in an attempt to register the fictional character’s full name as a trademark.
Ultimately, if the trademark registration is canceled, I think hindsight will show that a simple response to the Examining Attorney’s June 23, 2007 office action indicating that “Brandon Lang is a fictional character” and/or having Brandon Link sign his real name for the “Brandon Lang” pseudonym would have prevented this entire mess.
I first wrote about this case in January, shortly after the complaint was filed. Just checked PACER for any updates, and, Wow! This one is getting expensive quickly!
As I noticed, the attorney who filed the case wasn’t admitted to the Florida Bar, and the defendants’ attorneys pointed that out in the first motion to dismiss. Yes, I said their first motion to dismiss. Three months in, and we already have two motions to dismiss with two orders! (Local counsel has now appeared, and the original attorney has been admitted temporarily for this case.)
While I called the complaint a “doozy” in my original post, the judge gave it the kiss of death by calling it a shotgun pleading (fitting for an outlaw?). This is a style of drafting a complaint where each claim incorporates all of the factual allegations preceding the claim. Many complaints are drafted this way despite the fact that they are improper. For example, if the second and third claims in a complaint both re-allege all of the preceding factual allegations, then the defendant technically doesn’t know which allegations belong to a specific claim – and that violates the federal rules of procedure.
The defendants’ attorneys picked up on this (and other issues in the original complaint) and filed a short and sweet motion to dismiss. The judge agreed (on the same day!) and gave the plaintiff permission to file an amended complaint.
Guess what happened? The plaintiff must have had a double-barreled shotgun because they did it again! Not only that, but they also added on this nugget – which makes a First Amendment attorney such as myself cringe. In the prayer for relief, the plaintiff has asked that the court to:
Order all Defendants to abstain from in any way discussing, commenting upon, or mentioning Plaintiffs in this action in public, in performances, or in any other public venue;
What!? So, plaintiff wants, say, Henry Paul, to be legally prohibited from mentioning not only the case, but the mere existence of Outlawlessness Productions in public?
Interest in this case has been very high, so I’m going to update it more often than most cases.
Invicta was served with the Complaint on April 8th. An answer or other motion tolling the time to answer should be filed in the next couple of days.
Apparently Invicta’s registered agent (the person listed with the Florida Department of State as responsible for accepting a summons) is deceased, so Invicta’s “Financial Controller” accepted service of the complaint.