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…

Blue Man Group Wishes You a Monotone Happy Birthday

I went to see the Orlando Blue Man Group show last week as part of my wife’s employer’s holiday party.

Candidly, I wasn’t very enthusiastic because the local Blue Man Group commercials are kind of annoying.  However, the show was absolutely amazing.  The sounds and visuals were superb – never has HD been put to better use.  And the message, although a bit forced, was relevant in today’s (un)social media environment – human interaction, it’s a good thing.

As part of the pre-show experience, several LED boards flash messages to the audience.  Most of it is just silly stuff that you would roll your eyes at if you weren’t in the theater, but one caught my eye.  I’m paraphrasing, but it was something along the lines of:

“It’s John Doe’s birthday today.  Let’s wish him a happy birthday.  Don’t sing.  Just speak.”  And then the lyrics to Happy Birthday scrolled by while the audience dutifully spoke them in a unified, monotone voice.

While I’m sure many in the audience knew the reason for such a command, I bet that many thought it was just Blue Man Group doing their artsy Blue Man Group thing.

Here’s the secret:  They ask for the audience to speak it rather than sing it because Warner/Chappell has been claiming copyright ownership over the “Happy Birthday” song and has been collecting licensing fees from those who dare to use the tune in public!

So, artsy or not, Blue Man Group simply doesn’t want to get sued for inducing an audience to infringe copyright.

There may be a silver lining though.  Some folks have challenged Warner/Chappell’s ownership claims, and a California court may begin unraveling the issue soon.

See: http://variety.com/2013/biz/news/court-keeps-candles-lit-on-dispute-over-happy-birthday-copyright-1200703048/

Until then, don’t sing, just speak.

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?

No Place Like Home

It has been a very, very busy year both personally and professionally.  Personally, I lost a very, very close family member to cancer, yet, in the process, I forged some amazing relationships that will last a lifetime.  On the work-front, I have returned to the boutique IP firm that first hired me as a law clerk during law school.  It was a tough decision to leave Walters Law Group after 4 great years, but in the end, I know that it was the right decision.

Specifically, I have rejoined the firm of Beusse Wolter Sanks Mora & Maire, P.A in downtown Orlando.  My practice includes intellectual property litigation and dispute resolution (including patent litigation), trademark and copyright prosecution, and related services such as licensing and transactional matters.  Based on my previous practice, I also have extensive experience working with Internet-related technologies and clientele, including mobile app developers, webmasters, and other content providers, and I will continue to practice in this area as well.

Feel free to contact me if you think I might be of assistance.

Here’s to an exciting and productive 2014!

 

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.)

2013 Super Lawyers Rising Stars list

Just as unexpected as it was last year:

 

Kevin W. Wimberly has been named to the Florida Rising Stars list as one of the top up-and-coming attorneys in Florida for 2013.  Each year, no more than 2.5 percent of the lawyers in the state receive this honor.  The selection for this respected list is made by the research team at Super Lawyers.

Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.  The annual selections are made using a rigorous multi-phased process that includes a statewide survey of lawyers, and independent research evaluation of candidates, and peer reviews by practice area.

The Rising Stars lists are published nationwide in Super Lawyers magazine and in leading city and regional magazines across the country.

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.