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Trending Trademarks

Comments and analysis on trademark issues affecting the fashion, high-tech, multimedia and consumer products industries

Supreme Court’s Hana Financial Holding Could Increase Costs To Assert Trademark Tacking Claims

Posted in Decisions, Trademark

In a unanimous decision, the U.S. Supreme Court held this week that trademark tacking is an issue of fact to be addressed by the jury, and not a question of law to be addressed by judges.

The doctrine of trademark tacking lets a mark holder ‘tack’ the use of a pre-existing mark to a new mark with respect to priority of use; this allows a mark holder to modify its mark over time without losing that priority. The doctrine is available in situations where the two marks in question are similar enough to be deemed “legal equivalents”.  Said another way, the newer mark cannot be materially different from the older one, but must extend the preexisting commercial impression of the older mark. The question presented before the Court was whether it should be the jury or the court who makes this determination.

As Justice Sotomayor stated in her opinion, “[b]ecause the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, we hold that a jury should make this determination… [The] application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury.”

This decision does not change the law with respect to what constitutes trademark tacking; what it does, however, is increase the cost of asserting a trademark tacking claim or defense.  Arguments presented to juries are far more expensive and difficult to prepare than those presented to judges, so litigants who seek to slow down the pace or increase the cost of trademark litigation will welcome the Hana Financial decision.  Likewise, even though the Supreme Court recognized that judges could still rule on trademark tacking claims in the context of, for example, a motion for summary judgment, the Court’s holding sends a signal to judges that, when in doubt, they should deny the motion and let the jury decide at trial.

The case is Hana Financial Inc. v. Hana Bank, case number 13-1211, in the Supreme Court of the United States.

#Hashingitout: Is It Worth Registering A Hashtag?

Posted in Consumer Products, Internet, Multimedia, Technology, Trademark

Recently, the Coca-Cola Company sought to register two hashtags as trademarks: #cokecanpics and #smilewithacoke.  For those who may wonder why: various online social networking services (like Twitter, Instagram, and Pinterest, to name a few) enable users to search a word or phrase preceded by a hash or pound sign (#) to identify postings on a specific topic.  Hashtags are used to promote brands, campaigns, ideas or events, and trending topics can be identified by frequency of use in their respective online communities.

Coca-Cola is not a pioneer in this area; other companies have successfully registered hashtags with the USPTO.  However, the hashtag’s legal status remains murky, and is considered a leading legal issue facing marketers in this new year. Plus, as with any trademark, registration can be a lengthy and potentially expensive undertaking.  So, is it worth registering, particularly when its legal status is unclear?

To start, a hashtag (i.e., not just the hash sign, but the hash sign followed by a registerable word or phrase – the hash sign alone would likely need to be disclaimed as it generally adds no source-identifying significance) can be registered just like any other mark, and the traditional rules apply.

For instance:

  1.  The hashtag can’t be generic (for example, a sandwich shop can’t trademark “#sandwich”);
  2. A hashtag cannot include a mark that is already in use (for example, if anyone but Coca-Cola tried to register #cokecanpics the trademark application would be rejected);
  3. The class of goods or services affiliated with the hashtag must be specified in the application (so, one party can’t prevent another party from using a similar hashtag in connection with unrelated products or services); and
  4. The trademark application must include acceptable specimens of use (for example, instances of the hashtags featured on packaging, labels, or in stores, catalogues or webpages where the product is sold).

Twitter’s Trademark Policy is consistent; a corporate name cannot be legally used by other Twitter users just because they throw a hashtag in front of it. “Using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation.

However, we enter a grey area when users use those trademark-protected words or phrases, even if they are subject to applicable trademark law: “[a]lthough Twitter may review reports of confusing keywords, we may not disable keywords in every case.”  This, after all, is the very basis of social media; a collaborative forum for sharing brands, campaigns, ideas or events.  By registering a hashtag, just as with any other mark, a company could prevent competition from using the same or similar hashtags, but it does not prevent social media users from using it (and in some cases, in a way that serves against a company’s interest).  Also, US trademark law permits others to use trademarks without authorization from the trademark owner for “nominative use,” in situations where that unauthorized user is using the mark to accurately identify the product.  For example, an individual who uses the hashtag #cokecanpics in connection with photos of actual cans of Coca-Cola may be protected from liability.  See, e.g., New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992).

The use of trademarked hashtags in platforms based on the culture of widespread sharing raises big questions for brands struggling to understand intellectual property rights and boundaries, particularly with respect to where intellectual property laws, and laws of privacy and publicity, may or may not apply.

So, can Coca-Cola register its two new hashtags as trademarks? Certainly.  Is it worth the time and expense for Coca-Cola to do so? That depends on how Coca-Cola plans to use the hashtags.  Realistically, there is no guarantee that social media campaigns will generate increased revenues, even if the campaign is a successful one.  That said, if there is an intellectual property interest in the mark (i.e., the mark has value – such as use on packaging and marketing materials) beyond just a temporary hashtag on Twitter, registration with the USPTO may certainly be a worthwhile effort.  To discuss this topic further, please contact the author at nlederman@sandw.com.

Protecting Your Company’s Website From Imitators

Posted in Trademark

As a follow-up to our post in October, “Better Late Than Never – 20+ Years After the Popularization of the Worldwide Web, a Court Finally Recognizes Trade Dress Rights in Website Design,” Banker & Tradesman recently published our article, “Protecting Your Company’s Website From Imitators: Federal Law Catches Up With The Times, Uses Trademark Law To Protect Websites.”

Read the full article here.

 

Graffiti Litigation Update: Settlements and Procedural Wrangling

Posted in Copyright, Litigation, Trademark

Back in October, we surveyed some developments in lawsuits over public art and protection available under copyright law in graffiti art.  There has been some movement, and other developments, in these cases.

In a Chicago lawsuit, director and Monty Python alumnus Terry Giliam faces an injunction request over his new film Zero Theorem, which the plaintiffs allege infringed on street art in a mural in Buenos Aires (here again is a comparison set out in that Complaint).

Several defendants’ first response to the Complaint was to request that the case be transferred to federal court in Los Angeles.  Their primary argument is that Illinois has no relationship to the filming or production of the movie, or to the defendants.  Such motions carry a relatively high burden; so long as a court has jurisdiction, courts will defer to the plaintiff’s choice of forum, for the most part.  And, many of the defendants’ arguments refer to the foreign components of the case (filming in Romania, production in London).  Candidly, transfer to Los Angeles makes those witnesses no more accessible than from Chicago.  The plaintiffs have since responded forcefully, point out as well that one of the defendants has pursued infringement claims before in Chicago, undermining that defendant’s claim of inconvenience.

Elsewhere, the lawsuit against American Eagle in New York by David Anasagasti (better known as “Ahol Sniffs Glue”) over his mural “Ocean Grown” has been settled, without any details available.  The lawsuit has been dismissed with prejudice by stipulation, meaning it cannot be brought again.  Similar infringement claims against Sara Bareilles and Wal-Mart have also been resolved, according to Law360.

In California, clothing designer Robert Cavalli has taken the merits of the claim head on.  “In response to the recent lawsuit brought forward by artists Jason ‘Revok’ Williams, Victor ‘Reyes’ Chapa, and Jeffrey ‘Steel’ Rubin, the Roberto Cavalli company would like to state that no official notice of such suit has been received,” a spokesperson for the label was quoted in Vogue as having told New York Magazine.  The company has not yet formally appeared in the action, however, but yesterday several other defendants moved to dismiss the claims against them that were added in an Amended Complaint filed after the initial pleading arising out of: (1) the Digital Milennium Copyright Act (DMCA), 17 U.S.C. §1202 et seq.; (2) the Lanham Act (15 U.S.C. § 1125(a), governing trademarks); (3) an unfair competition claim under California Business and Professions Code § 17200; and (4) a claim for California common law unfair competition.

Staff USA Inc., Nordstrom, Inc., Amazon.com, Inc., and Zappos.com, Inc. are all accused in some respect of contributory infringement, that is, that they are selling the items made by Cavalli that the plaintiffs allege infringe on their street art.  In this motion, these defendants argue first that the DMCA does not apply because their alleged wrongdoing has no Internet component, that is, even if they sold the items over the Internet, the DMCA speaks only to actual electronic manipulation and infringement by those defendants themselves.  Since there is no allegation they they altered or copied the graffiti electronically, they argue, they cannot be liable under the DMCA.  The Lanham (trademark) argument is that to the extent that the plaintiffs accuse these defendants of a copyright violation, that is the sole remedy under federal law.  Likewise, the state law claims (unfair competition and California Business and Professions Code) are preempted by federal copyright law, they argue.

If successful, the motion would not resolve the entire case as to these defendants (the underlying copyright infringement claim would remain to be litigated), but it is clear that these defendants intent to defend themselves actively.

 

This post originally appeared in The Art Law Report blog.

Is it or isn’t it? An app to discern whether your bag’s the real thing.

Posted in Consumer Products, Fashion, Infringement, Technology, Trademark

Recently, Japanese IT company NEC Corp. announced that it is developing an app with image recognition technology that allows its users to determine, in real time, whether or not that long sought-after Hermès Birkin bag is a knock-off or notOnce a target of aggressive piracy itself, NEC created the app in response to the increasing importance of managing the mass production and distribution of products internationally.

The app – due to be released in 2016 – lets its users compare their photos of leather goods, such as handbags and wallets, to data stored on the app’s cloud-based database.  Extending existing biometric technology, NEC’s app can recognize “object fingerprints” (similar to human fingerprints, and also undetectable by the human eye), capturing details of fine patterns on leather, metal or plastic surfaces.  By comparing object fingerprints in user photos against images stored in the app’s database with impressive accuracy (an error rate of one in one million), the app helps users determine authenticity immediately.

Currently, there is nothing quite comparable available in the marketplace to help consumers identify counterfeit products.  While there exist various markers that brands will use to designate the authenticity of their goods (for instance, integrated circuit chips, hologram stickers, barcodes or other identification tags), these means can be both impractical to customers – not all leather goods bear one of these authenticating markers – and costly to the manufacturer.  Further, accurate identification can often require either an expert’s evaluation or dedicated equipment.

In light of the significant cost of counterfeit products worldwide (most recently anticipated by the International Chamber of Commerce to exceed $1.7 trillion by 2015), NEC’s app is a potentially promising development in the battle against counterfeiters.  But will it be able to reduce the problem in any meaningful way? Certainly, the app can be very helpful for consumers who purchase at brick-and-mortar retail outlets and care about purchasing genuine products.  With the snap of a photo, any user can instantaneously determine whether an item advertised as “authentic” is what it claims to be.  The app’s impact, however, may end where the internet begins.  With e-retail on the rise, counterfeiters have become increasingly cunning, with legitimate-looking websites and price points, and photos of authentic products lifted from sites of authorized merchants.  An unwitting customer could easily end up with a much different product than what was depicted online; and while the app may be useful in identifying that newly-acquired knock-off, the customer will likely have very little success in returning the fake product to its seller for a refund.  What’s more, as the app is used only on a voluntary basis, consumers looking to purchase counterfeit products will not be deterred from doing so.  Nevertheless, the mere threat of having counterfeits more easily detected by customers may help deter some level of counterfeiting activity.

In Mile-High Trademark Infringement Fight, Hershey Bests Colorado Marijuana Edibles Company

Posted in Dilution, Food & Beverage, Litigation, Trade Dress

Just in time for Halloween, the Hershey Company has settled its trademark infringement lawsuit against a marijuana edibles company that sold candy closely resembling several of Hershey’s iconic brands.

The settlement follows Hershey’s June 2014 suit in which it alleged that TinctureBelle, LLC, a Colorado-based manufacturer of marijuana edibles, sold THC-laced knock-offs of Hershey’s famous Reese’s, Heath, Almond Joy, and York brands. As seen in the images below, TinctureBelle marketed its candy products under confusingly similar trademarks and trade dress as Hershey’s originals—it sold “Hashees” instead of Reese’s, and “Ganja Joy” in place of Almond Joy.

              

              

Hershey also claimed that TinctureBelle’s use of similar marks and packaging was likely to dilute the distinctive quality of Hershey’s famous marks and create in the minds of consumers an association between the two companies. According to Hershey’s complaint, “individuals and families the world over trust Hershey and its various brands as signifying safe and delicious treats for people of all ages.” By drawing an association with a marijuana edible company, Hershey alleged that TinctureBelle’s products would tarnish Hershey’s famous brands, reputation, and goodwill. Even though recreational marijuana is legal in Colorado, Hershey contended that its adult-oriented connotation would harm Hershey’s family-friendly brands.

As a result of the settlement, TinctureBelle agreed to destroy all remaining products that bear confusingly similar names and packaging to those made by Hershey.

This case is not the only time Hershey has sued a marijuana edibles company for trading on its brand names. Hershey filed a similar lawsuit in June 2014 against a Seattle, Washington medical marijuana dispensary, which, among other things, sold marijuana-infused peanut butter cups under the brand name “Reefer’s.” That case is still pending.

As Halloween approaches, these cases have given parents a whole new type of “sugar high” to worry about. Not only have marijuana edibles companies faced lawsuits from candy makers, but they have also raised the ire of law enforcement and parents groups that fear children will mistake the marijuana edibles for familiar, name-brand candy. As this public service announcement from the Denver Police Department shows, marijuana-infused candy frequently is indistinguishable from traditional Halloween fare:

The case is Hershey Co. v. TinctureBelle, LLC, case number 14-cv-01564-WYD, in the U.S. District Court for the District of Colorado.

Better Late Than Never – 20+ Years After the Popularization of the Worldwide Web, a Court Finally Recognizes Trade Dress Rights in Website Design

Posted in Internet, Litigation, Trade Dress

A website’s distinctive appearance, layout, and design qualities—its “look and feel”—are often the most important and effective tools with which a company can make a first impression on consumers and market its brand. Now, according to one federal court, companies can use trademark law to protect their unique website designs from imitators.

On October 1, 2014, in Ingrid & Isabel, Inc. v. Baby Be Mine, LLC, the U.S. District Court for the Northern District of California ruled that the look and feel of a website used to market and sell products and services can constitute protectable trade dress under the Lanham Act. Here, the plaintiff, Ingrid & Isabel, Inc. (“I&I”), and the defendant, Baby Be Mine, LLC (“Baby”), were both online retailers of maternity clothing. I&I alleged that Baby had intentionally copied, in an attempt to imitate I&I, many specific characteristics of I&I’s website. These included: (i) the use of a logo in a “feminine script in pastel pink-orange hue”; (ii) photographs of models posed in similar positions, “featured from head to mid-thigh, wearing white tanks with jeans, with long naturally wavy hair”; and (iii) the colors, patterns, fonts, and wallpaper used throughout the website. The court held that Baby’s arrangement of similar, non-functional design choices on its website was, in part, sufficient to create a triable issue of fact as to the elements of I&I’s trade dress claim, and denied Baby’s motion for summary judgment.

This ruling represents a significant step forward for companies looking to protect their brand’s goodwill online. For the first time, a court has recognized that a website’s design can serve an important brand-identifying purpose worthy of trademark protection even though the website is not the product itself, but rather a marketplace in which products and services are sold. Previous case law suggested that a website could constitute protectable trade dress only if the website itself was the product. Courts had called the idea of protecting the trade dress of other websites a “novel theory,” but had not ruled on the issue.

With the Ingrid & Isabel ruling, the law seems to have caught up with the times, giving the trade dress of online stores the same protection as that for physical stores. In the same way the distinctive décor of a Mexican restaurant or the layout of a physical wine store can be protectable trade dress, the court recognized that the look and feel of a website—a virtual store—can be a protectable form of intellectual property. This is particularly important in today’s economy, as this year sales in U.S. online stores are expected to top $300 billion.

As we have stated before on Trending Trademarks, a “trademarked look” is not just a popular saying. By creating and consistently using a distinctive look and feel for its website to distinguish itself from competitors, a company may be able to protect its deliberate design choices from copycats. Still, it is yet to be seen whether other courts across the country will adopt this standard. Stay tuned to Trending Trademarks for future updates as the law develops.

The case is Ingrid & Isabel, LLC v. Baby Be Mine, LLC, case number 13-cv-01806-JCS, in the U.S. District Court for the Northern District of California.

No, Your Musical Cat and Artistic Dog Aren’t Going to Make You Rich

Posted in Copyright, Internet, Multimedia

The plight of David Slater, a British nature photographer, has recently been in the news.  Mr. Slater travelled to Indonesia in 2011 in order to photograph the crested black macaque.  During the shoot, one of the animals “stole” Slater’s Nikon camera and started playing with it.  Remarkably, the monkey ended up taking several “selfies,” one of which turned out strikingly clear.  Because of what happened subsequently we feel like we’re on safe ground in reproducing the photo here:

Once the photo was published and its origin became known, the Wikimedia Foundation elected to include it in its online collection of public domain images.  Slater objected on grounds that he had spent the time and money to purchase the equipment and travel to Indonesia for the photo shoot and, therefore, was the owner of the copyright in the shot.  Wikimedia countered that the “photographer” was the macaque and that works of art created by non-humans were not copyrightable and, therefore, properly belonged in the public domain.

Fast forward to last week, when the United States Copyright Office released a public draft of the Third Edition of the Compendium of U.S. Copyright Office Practices.  The Compendium is the administrative manual of the Register of Copyrights concerning the mandate and statutory duties of the Copyright Office under Title 17 of the United States Code. See 37 C.F.R. § 201.2(b)(7).  The new draft states:

The copyright law only protects “the fruits of intellectual labor” that “are founded in the creative powers of the mind.” Trade-Mark Cases, 100 U.S. 82, 94 (1879). Because copyright law is limited to “original intellectual conceptions of the author,” the Office will refuse to register a claim if it determines that a human being did not create the work.  Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884).

As examples of non-copyrightable works, the draft Compendium cites:

• A photograph taken by a monkey.

• A mural painted by an elephant.

• A claim based on the appearance of actual animal skin.

• A claim based on driftwood that has been shaped and smoothed by the ocean.

• A claim based on cut marks, defects, and other qualities found in natural stone.

Sadly, you can add “music composed by a cat” and “soft sculpture created by a dog” to that list as well.  If you want to capitalize on your pet’s talents then you’ll have to stick to time-tested strategies like joining the circus or auditioning for a role on TV or in the movies.

IP Traps in Crowdfunding Proposals

Posted in Internet, Licensing, Registrations, Technology

The 2012 Jumpstart Our Business Startups Act (JOBS Act) opened the door to widespread use of crowdfunding for financing new projects and ideas. As a result of the JOBS Act, the use of crowdfunding platforms has increased exponentially. If you are considering a crowdfunding platform for your new venture, or if you are contemplating investing in a crowd-funded project, attention to intellectual property protection is critical. Here are a few simple ideas to keep in mind:

1.  Patents—Disclosing the details of an invention before filing a patent application may bar patent protection. For example, Kickstarter.com requires projects that involve the manufacture and distribution of “gadgets” to “show as much as they can about how they’re going to make their project, including things like a production plan, an estimated schedule, and any details you can provide for backers.” https://www.kickstarter.com/rules/prototypes. Also, with the passage of the America Invents Act, the U.S. is now a “first to file” country instead of a “first to invent.” To preserve rights, patent applications should be filed as early as possible. By filing a patent application prior to disclosing a project, the inventor can preserve patent rights and potentially avoid problems with both the statutory bar and potential conflicting applications. While U.S. patent law gives the inventor a year after disclosure in which to file, the same is not true in most of the rest of the world where a prefiling disclosure bars patent protection. Keep this in mind for projects that will rely on foreign marketing and revenue for their success.

2.  Trademarks—Use of a trademark on a business plan or project description is not “trademark use” for purposes of establishing a date of first use. Thus, posting a project with a proposed trademark could serves as an open invitation for trademark pirates in the U.S. and abroad to file for registration first. The same is true with respect to domain name registration. Consider filing a U.S. trademark application based on “intent to use” prior to making a public disclosure of your project. The ITU filing also gives you a six month priority period during which you can file for foreign protection and still obtain the benefit of your U.S. filing date. After these six months pass registration becomes largely a “first come, first served” proposition in most of the rest of the world where rights are based on who files first and not on who is the first to use a mark. For a painful example of what can go wrong, see our post on “Perfect Your Foreign Trademark Rights Early or Risk Losing Them Forever.”

3.  Copyrights—Copyright commences once a work is fixed in a tangible medium of expression. Registration is not necessary for protection, although it is a prerequisite for a domestic copyright owner who wishes to file suit for infringement in the U.S. If you are going to post copyrighted works in connection with your project disclosure or business plan, and if those works represent at least some of the value proposition for the project or business, consider filing for copyright registration. If you plan to use images, music, or other content from third-party sources in your proposal, be sure to obtain appropriate licensing/permission prior to posting such works publicly. Absent such licensing or permission there is a good chance that you are committing copyright infringement since your use of those works is obviously commercial in nature.

Depending on the project, the IP issues could be substantially more complex. Potential investors’ due diligence should include an analysis of the IP risk and/or exposure presented by the public proposal as the success or failure of the idea may well hinge on the strength and protection of those IP rights. Our attorneys are available to help with an analysis of potential IP risk and to create and implement a strategy to effectively and economically manage that risk. For more information, please contact the authors.

Trademarks, The UK, and The Rule of Threes

Posted in Dilution, Fashion, Litigation

A couple of weeks ago we wrote about recent European administrative and court cases that ended in bad news for U.S. trademark owners (Perfect Your Foreign Trademark Rights Early or Risk Losing Them Forever). Proving that bad things can happen in threes, UK Judge Colin Birss ruled last week that Victoria’s Secret’s “Pink” brand of lingerie infringes the trademark of Thomas Pink Ltd., a high-end clothier whose flagship store is located in London.

The parties had coexisted peacefully since VS introduced its “Pink” line in 2004, but Thomas Pink used VS’s opening of its first retail outlet in the UK in 2012 as justification to file suit.

Judge Birss held that VS’s use of the word “Pink” as its trademark would cause consumers to associate the two companies’ products to the detriment of the reputation of Thomas Pink. Rather than focusing on any likelihood of confusion, the judge’s reasoning was more along the lines that a U.S. court might employ in deciding a dilution case. Specifically, the court held that consumers might associate the high-end shirt maker and clothier with mass-market  underwear, all to the detriment of the reputation and cache of the THOMAS PINK brand. Similar to the court in the Glee case, this court also employed a line of reasoning similar to the U.S. doctrine of reverse confusion in finding that VS is a huge business that is likely to saturate the market with its advertising, leading to circumstances where customers might enter a THOMAS PINK store looking to purchase lingerie and to be disappointed upon discovering their mistake.

Unlike the trademark owners in the GLEE and PINTEREST cases, it is unlikely that VS could have anticipated such a dispute, especially in light of nearly a decade of concurrent use.  Nevertheless, the case once again highlights the importance of trademark due diligence prior to introducing a brand into a new geographic market.