Super-Bull – 2014 edition

I’m posting this year’s Super Bull post early because it seems that companies who are not official sponsors of “the Big Game”  (that’s the Super Bowl if you didn’t know) are getting an early start on publishing cute references to the Super Bowl.

I won’t re-hash the legal issues and ridiculousness of it all, you can find that on many other blogs, including this one:

https://floridaiptrends.com/2013/01/25/super-bull/

So, I’ll just present this year’s example, brought to you by my Dad, who received this e-mail from PayPal:

You really could name it if you wanted to...
You really could name it if you wanted to…

Ok, ha-ha.  But I wonder if companies are just having fun with the absurdity of it at this point.  Does PayPal honestly believe that it cannot use the Super Bowl mark descriptively?  When people run contests to win an Apple iPad, they don’t feel compelled to advertise it with, “Win a device made by a company that’s named after a fruit and makes a rectangular thing with a screen and buttons.”

Just make a conspicuous disclaimer that the contest isn’t endorsed, sponsored, approved, blessed, baptized, or otherwise supported by the NFL.  Then, let the catharsis begin – just call it the damn Super Bowl.  [CONSPICUOUS DISCLAIMER – that’s not legal advice.  If you do that, the NFL may sue you.]

Even the fine-print rules of the contest don’t call the prize for what it is – a trip to the Super Bowl:

Pssssst....  you win a trip to the Super Bowl.  That's what is happening on that day, time, and location.
Pssssst…. you win a trip to the Super Bowl. That’s what is happening on that day, time, and location.

And don’t even get me started on the NFL’s attempt to register “THE BIG GAME” as a trademark a few years ago.  It later abandoned the application, but in doing so it admitted that it was trying to prevent “ambush marketing” of the Super Bowl by using “The Big Game” instead.  With that logic, expect a trademark application for “The game we cannot name” to be in the works…  Intellectual property attorneys are usually safe from lawyer jokes, but not in this case.

National FirstAmendment Losers.

UPDATE: “College Football Playoff” Receives Initial Refusal from USPTO

Looks like I won’t have to eat my last Office Action.  The USPTO has issued a refusal to register “COLLEGE FOOTBALL PLAYOFF” as a trademark for “Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”  The Office Action was issued in July, but I only recently re-checked the docket.

The main basis for refusal was that the mark merely describes the services:

The applicant applied to register the mark ‘COLLEGE FOOTBALL PLAYOFF’ for “entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”

Applicant’s mark is merely the combination of the three descriptive words ‘COLLEGE’, FOOTBALL’ and ‘PLAYOFF.’  A mark that merely combines descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the goods and/or services and the combination results in a composite mark that is itself descriptive.  TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of “beds, mattresses, box springs and pillows”); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services).  Such a mark is registrable only if the composite creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services.  See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services.  Specifically, the wording ‘COLLEGE’ is defined as “an undergraduate division or school of a university offering courses and granting degrees in a particular field”, ‘FOOTBALL’ means “a game played by two teams of 11 players each on a rectangular, 100-yard-long field with goal lines and goal posts at either end, the object being to gain possession of the ball and advance it in running or passing plays across the opponent’s goal line or kick it through the air between the opponent’s goal posts” and ‘PLAYOFF’ means “a  series of games played to determine a championship.”  The combination of these three descriptive terms merely describe a series of college football games to determine a championship.  Applicant is providing entertainment services that will feature college football games that are played to determine a national championship.  The examining attorney has enclosed multiple news articles showing the term ‘COLLEGE FOOTBALL PLAYOFF’ used to describe games that will be played to determine the national champion of college football.  These articles use the term descriptively for a series of games to determine the national championship in college football.  Hence applicant’s mark is refused registration under Trademark Act Section 2(e)(1).

Not only was the mark deemed merely descriptive for the services, but the Examining Attorney also found that portions of the services were generic as to the mark:

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the following services “entertainment services, namely, organizing and staging college football games, exhibitions and tournaments” and, therefore, incapable of functioning as a source-identifier for applicant’s services.

Read the full Office Action HERE.  The applicant (BCS Properties) has until January 16, 2014 to respond and try to argue against the refusal.  No doubt it will be a Hail Mary…

I have a new favorite beer – Undead Party Crasher

Beer and trademark infringement.  What’s more exciting than that?  It’s the perfect example of why I chose to practice intellectual property law.  While my colleagues are valiantly embroiled in contentious family law disputes, real property nightmares, and trying to keep their clients out of jail, I get to look at “pictures and stuff,” namely, branding.

The folks at Techdirt are always on top of interesting trademark cases, and yesterday was no different.  They brought us the story of “Trademarks, Beer, Vampires, Zombies… And Lawyers.

As you’ll read in the Techdirt post, TI Beverage Group and Vampire Brands sued a small brewery named Clown Shoes over Clown Shoes’ use of “Vampire Slayer” as the name  of a Clown Shoes stout.

Vampire Brands has a trademark registration for “VAMPIRE” for use with “ale” and “beer.”  It looks like Vampire Brands uses the “VAMPIRE” mark as a primary source-identifier, so it’s “Vampire (brand) Pale Ale,” whereas the Clown Shoes product is a Clown Shoes (brand) stout, named Vampire Slayer.

Here’s an image of the bottles that Clown Shoes had on a webpage (no longer available) explaining the lawsuit:

Comparison as found on Clown Shoes website.

I don’t necessarily agree with Clown Shoes’ position that because Clown Shoes beer would be in one section of the beer aisle/store, and Vampire’s beer would be found in another aisle or section, then there would be no consumer confusion.  Trademark cases have shown that different types of alcoholic beverages, such as beer and wine, can be related goods for purposes of trademark infringement, so a stout vs. lager argument might not be too convincing (although sophistication of the purchaser may factor in).  Nonetheless, this case does seem to be a bit of a bully case given some of the facts that Clown Shoes presented.  Protecting one’s brand is critical; however, I think it is highly unlikely that consumers would be confused as to the source of the two beverages pictured above.  Looking at the VAMPIRE registration in a vacuum, maybe.  But that’s not how trademark infringement cases are sorted out.  It’s all about whether or not the consumer – as the consumer encounters the marketplace – would be confused as to the source or origin of the goods.

The webpage that Clown Shoes put together does a nice job of explaining the realities of this type of litigation.  Even if Clown Shoes had a slam dunk defense and could beat the case, it will cost hundreds of thousands of dollars to do so.  As Clown Shoes puts it: “that sounds like stabbing ourselves in the face to cure foot pain.”  But predicting who would win this case is not the purpose of this blog post.  It’s what Clown Shoes did to avoid the lawsuit and continue on making beer in the least-disruptive way possible.

Rather than fight it, Clown Shoes made a brilliant move.  They settled with Vampire Brands in such a way as to obtain a license to use the VAMPIRE name on the Clown Shoes product.  The brilliant part is that Clown Shoes still plans to discontinue the name:  “A settlement, the terms of which I am not at liberty to disclose, was reached with Michael Machat, Vampire Brands, and TI Beverage that licenses Clown Shoes to use the name Vampire Slayer. I can say that based on all factors, the Vampire Slayer name will soon be discontinued, despite the licensing agreement.”

So, they avoided the cost of litigation, licensed the mark for, hopefully, peanuts (Beer Nuts®?), and then humiliated the aggressor by saying “no thanks.”  (That move reminded me of this classic case.)

Rather than continue with the now-tainted Vampire imagery, Clown Shoes plans to rename the Vampire Slayer beer to “Undead Party Crasher.”  Bravo.

And, as soon as the name change is complete, you can guarantee that I’ll be in line at Total Wine to grab a few bottles.  How often do trademark attorneys make an appearance on product labeling, even if we’re being called monsters?

Clown Shoes renamed beer – Undead Party Crasher.  Best beer bottle label ever?

Barnacles! Spongebob grave marker denied.

This raises some interesting intellectual property issues.  When I read the headline, I was hoping that it wasn’t Spongebob’s creator/licensor/owner that caused the cemetery to go back on their prior approval.  Instead, it was the cemetery itself that had a change of heart.

Technically, this gravestone could infringe both copyright and trademark rights.  But, as the brand/copyright owner, this one would probably be best left alone.  I can’t imagine that a black market of cartoon character grave markers will spring up if this “infringement” is left unchecked…

http://www.cnn.com/2013/10/22/us/spongebob-gravestone-controversy/index.html?hpt=hp_bn1

Image from ABCNews.com

 

 

 

No Duffin For You

http://www.nbcnews.com/business/starbucks-jam-over-duffingate-8C11361420

Photo as used in NBC News article

The real irony here is that “duffin” is a weak trademark based on descriptiveness, and somebody other than the parties listed in the above article has already received a U.S. registration (on the Supplemental Register) for “DUFFIN.”  (Even more ironic is that the DUFFIN registration is on the Supplemental Register not because the Examining Attorney picked up on the “doughnut + muffin = duffin” descriptiveness, but because “Duffin” is apparently a rare surname, thus it went on the Supplemental Register.)

UPDATE: “College Football Playoff” seeking trademark registration

If the BCS’s application for “College Football Playoff” is approved by the USPTO for registration on the Principal Register, I’ll eat the last Office Action I received.

http://tsdr.uspto.gov/#caseNumber=85888738&caseType=SERIAL_NO&searchType=statusSearch

This isn’t even merely descriptive.  It’s generic.

 

See also:  https://floridaiptrends.com/2013/04/23/will-we-be-able-to-say-college-football-playoff-or-will-it-become-the-big-playoff/

Will we be able to say “College Football Playoff” or will it become “the Big Playoff?”

One of my favorite topics is how sports leagues try to censor descriptive uses of trademarks.  You’re all very familiar with the annual “Big Game” nonsense that is prompted by the NFL’s squad of IP linebackers.  If not, see THIS post.

Today, ESPN.com is reporting that the new college football playoff series will be branded as, drumroll……. the College Football Playoff.

I appreciate that the BCS executive director is quoted as saying that “It will not be cutesy. And it will be descriptive. I’ve seen too many people make mistakes by trying to be cutesy.”  Ok, as a trademark attorney, I tend to prefer “cutesy” (or arbitrary/fanciful) over “descriptive,” but I get it – the BCS wants something bold and descriptive.

But, any predictions on how long it will take the attorneys to start sending trademark cease and desist letters over people talking about the, uh, “College Football Playoff?”  I just can’t see how the IP maximalists that tend to infest the legal departments of sports leagues would green light this name unless they’re totally resigned to: a) just letting people use the “mark” descriptively without harassment, or b) sending threatening letters and trying to “educate” the public that “College Football Playoff” may not be used without the express written consent of….. blah blah blah.  My money is on the latter.

Super Bull

Chipotle ad as found in MTV.com story.

It’s that time of year again.  News stations and retailers will start advertising and discussing (shhhh, don’t say it too loudly…) “the big game.”  Careful!!!!  I know what you’re thinking, but, don’t. say. “Super Bowl.”  That there is a genuine registered trademark of the National Football League, and may the stench of 1,000 jockstraps plague your nostrils should you dare to say “Super Bowl” in your advertisement for guacamole dip and pizza.

The NFL is a notorious trademark bully, and it has managed to fool the public into believing that there is no fair use of the trademark “Super Bowl.”  Ordinarily, it would be perfectly within a retailers rights to say something like:  “Need a great deal on pizzas for your Super Bowl party?  Well, place an advance order with us the day before the game, and we’ll deliver your pizzas before kickoff…”  While that may be a “commercial” use in that the trademark is being used in an advertisement, there is nothing in that ad to suggest that the pizza place is connected with the Super Bowl in any way.  Consumers will not be confused as to whether or not the pizza is officially sponsored by the NFL.  Yet, due to the NFL’s quest to sign up “official sponsors” for everything from pizza to TV sets, the League has bullied what would likely be fair uses of “Super Bowl” out of existence.

The NFL as a trademark bully is nothing new, and I wasn’t even going to blog about it this year.  However, I found out about another interesting trademark issue related to this year’s “big game.”  (H/T mom).

While it’s not enough for me to shed a tear for the NFL, last year an enterprising citizen named Roy Fox decided to seek registration for HARBOWL and HARBAUGH BOWL on the off chance that the two Harbaugh head coaches would face each other in this February’s Super Bowl, er, big game, uh Big Game….  And wouldn’t you know it, that happened.  The Ravens and 49’ers are both coached by Harbaughs.

There is one major problem with Mr. Fox’s foxy trademark speculation.  For trademarks that refer to a living individual, the applicant must include a statement that  the person or persons referred to in the mark have consented to their name(s) being registered.  (See my post regarding the TRAYVON MARTIN applications for more on personal names in trademarks.)  Amazingly, the Examining Attorney who was responsible for the HARBOWL and HARBAUGH BOWL applications did not inquire into whether or not the marks referred to living individuals, and the applicant, Mr. Fox, didn’t disclose that fact either.  The applications may have proceeded to registration if it wasn’t for the NFL stepping in and pressuring Mr. Fox to be a good sport and immediately cease and desist before being sued to within 4th-and-inches of bankruptcy.

So, shame on Mr. Fox for “trademark-squatting,” shame on the USPTO for not inquiring about the “living individual” consent issue, and shame on the NFL for continuing it’s bowlshit tactics.

ENJOY THIS YEAR’S SUPER BOWL®!!!

(Go Ravens!  Relishing the thought of Ray Lewis sprawled out at mid-field in tears while melodramatically and megalomaniacally proclaiming that God took a break from the rest of His general duties to help the Ravens become the Divine Winners of the Big Game.)

Medieval Times Goes Medieval on Competitor – Part I

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.

Case: Medieval Times U.S.A., Inc. v. Pirate’s Dinner Adventure, Inc., et al

Medieval Times – Amended Complaint

Medieval Times – Motion To Dismiss Original Complaint

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:

Next post: Battle of the Medieval Dinner Shows

There are just too many signs to let this one slip by.

1) I recently went to Medieval Times with my wife and in-laws.

2) I love trade dress cases – especially ones in my home district.

3) The back of the Pepsi Max I just drank had a coupon for Medieval Times.

So, the next Featured Case will be:  Medieval Times U.S.A., Inc. v. Pirate’s Dinner Adventure, Inc., et al, filed in the Middle District.

I should have something posted in the next few days, complete with pictures from my recent trip.