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A BRIDGERTON TOO FAR – WHEN FAN FICTION BECOMES COPYRIGHT AND TRADEMARK INFRINGEMENT

On Christmas Day 2020, in the midst of a global pandemic, Netflix debuted “Bridgerton”, a new series based on a collection of novels by author Julia Quinn. The series is set in Regency-Era London during the social season, and revolves around the fictional Bridgerton family. The show got generally good reviews in its first season, and in it’s second season became a worldwide sensation. As with anything or anyone famous these days, this resulted in a number of fan pages and “tributes” on social media sites. Among those was a TikTok tribute by started by fans Abigail Barlow and Emily Bear in early 2021. That fandom grew into a 15 song album, The Unofficial Bridgerton Musical, which was released in September 2021 and won a Grammy Award for best musical theater album in 2022. The songs on that album include verbatim lyrics, plot elements and scenes and characters that are lifted from Netflix’s Bridgerton series.

Then, on July 26, 2022, Barlow and Bear performed a live, for-profit stage show entitled “The Unofficial Bridgerton Musical Album Live in Concert” before a sold out audience at the Kennedy Center in Washington, DC. Three days later, Netflix filed suit alleging copyright infringement and trademark infringement in that Barlow and Bear have “taken valuable intellectual property from the Netflix original series Bridgerton to build an international brand for themselves.”

There can be little argument that the Unofficial Bridgerton Musical album and the live performance are derivative works based on the copyrighted Bridgerton series. Likewise, Barlow and Bear’s use of the term “Bridgerton” in its title, absent some other justification, is clearly a violation of Netflix’s trademark rights, notwithstanding the use of the word “Unofficial”. To hold otherwise would be akin to Ricky Bobby’s argument that he could say whatever he wanted so long as it was prefaced by “with all due respect”.

On it’s face, this would appear to be an open and shut case of copyright and trademark infringement. However, there are at least three legal theories upon which Barlow and Bear could prevail – fair use, latches and estoppel.

Does the Unofficial Bridgerton Musical constitute “Fair Use”

The doctrine of fair use permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is often applied where the subsequent work is being used for purposes such as criticism, commentary, news reporting, teaching, scholarship or research. Four factors must be considered in determining whether the fair use exception applies:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • The effect of the use upon the potential market for or value of the copyrighted work.

While no one factor alone is determinative, the first and fourth factors are generally given the most weight. Looking at the first factor, the fact that the live performance was for profit makes it less likely to qualify as fair use. Unless the live musical performance can be considered “transformative” – a use that adds something new, with a further purpose or a different character”, the first factor is likely to weigh heavily in favor of Netflix. With regard to the fourth factor, Netflix alleges that the live performance adversely affects its ability to profit from its own planned release of a live event entitled “The Queen’s Ball: A Bridgerton Experience.” Given the commercial nature of the live performance, it is difficult to imagine a court siding with Barlow and Bear on a fair use defense.

Laches and Estoppel – Did Netflix waive its right to object to continued and/or further use?

Even according to the complaint filed by Netflix, they took little more than token efforts to stop the infringing actions of Barlow and Bear for more than a year and a half. The doctrines of laches and estoppel provide for the denial of claims of infringement where the claim is not acted on in a timely manner.

When asked about the impending release of the Unofficial Bridgerton Musical Album in a September 2021 interview, Barlow stated “Ask and you shall receive. Netflix was very, very supportive”  suggesting that Netflix may have given permission. Netflix’s own complaint admits that they knew about Barlow and Bear’s Bridgerton inspired TikTok posts as early as December 2020. Although Netflix alleges that they repeatedly told Barlow and Bear that their works were not authorized, Netflix did nothing to stop those unauthorized works until after the live musical performance in July 2022. The complaint specifically states that Netflix believed that it “would be consulted before Barlow & Bear took steps beyond streaming their album online in audio-only format.” Is that an acknowledgement of permission? Time will tell.

How will the outcome of this case affect fan fiction in the future?

If the case proceeds to trial, which is rare in intellectual property litigation, the court’s decision could have a significant affect on fan fiction activities in the future. If the court sides with Brown & Barlow and finds that the doctrines of laches and estoppel prevent Netflix from asserting claims of copyright and trademark infringement, you can expect movie and music producers like Netflix to be far more aggressive in pursuing posts on TikTok and social media that make unauthorized use of their materials. On the other hand, if the court rules in favor of Netflix, there may be a chilling effect on fan fiction posts on social media in the future. While this may better protect the intellectual property interests of companies like Netflix, the support from fan fiction posts is certainly good for their brand too. In the end, the best interests of both parties is likely better served by maintaining the status quo rather than having the courts draw a line in the sand that may not be good for either.

 

 

 

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HOW OHIO STATE WAS ABLE TO TRADEMARK “THE”

If you have ever watched an NFL football game on TV, you have probably heard a player introduce himself as having played college football at “The” Ohio State University. Earlier this week, the United States Patent & Trademark Office granted a US Trademark Registration for THE to The Ohio State University. It seems strange that a trademark could be granted for what is probably the most common word in the English language. Five of the first 72 words in this article are “the”.  Have I just committed five acts of trademark infringement? “The” answer is a resounding “no”. Rights granted to words by the U.S. Trademark Office are limited to the specific goods and/or services specified in the application. As such, it is not unusual for the same word to be registered as a trademark by multiple parties for different goods and services. In fact, I predict that you will see another company be granted a trademark for “The” before the end of 2022. The primary issue is whether such multiple registrations create a likelihood of confusion as to the source of the product or service.

The trademark registration for “The” was not just granted without a fight. Ohio State had to overcome two obstacles on their way to registration. For one thing, they were not the first party to file an application to register “The” in connection with clothing. Fashion designer Marc Jacobs filed his application to register “The” for a line of clothing on May 6, 2019 – three months before Ohio State filed it’s application. Also, the way in which Ohio State originally proposed to use the mark was deemed by the examining attorney at the USPTO to be ornamental, and not indicative of the source of the clothing, which is required for a word to function as a trademark.

HOW CAN TWO TRADEMARK REGISTRATIONS FOR “THE” BE GRANTED FOR CLOTHING?

Ohio State’s trademark registration for “The” for use on and in connection with clothing in Class 25 was granted on June 21, 2022. Marc Jacobs’ trademark application for “The” for use on or in connection with clothing in Class 25 was allowed on October 5, 2021, and will issue as a trademark registration after Jacobs shows proof that he is using the mark in commerce and files a Statement of Use. It is very unusual for the same word or phrase to be registered by two different entities for goods that are so closely related. A closer look at the history of each of “The” applications, however, provides a relative simple answer – the parties agreed that both marks could be registered and that the granting of such rights would not create confusion.

A suspension notice was originally issued in Ohio State’s application. Suspension notices are commonly issued when there is another pending application that would pose grounds for refusal if it were registered as a trademark. So the USPTO suspends the later filed application pending the outcome of the earlier filed one. If the earlier filed application is granted and a trademark registered, the USPTO will usually reject the later filed application at that time. However, in this case, Ohio State intervened in Jacobs’ application by filing a notice of opposition during the processing of Jacobs’ application. After a trademark application has been allowed, but before a registration issues, it is published for opposition in the Official Gazette. That begins a 30 day period where any interested party may file to oppose registration of the mark if such registration would adversely affect use of their own similar mark.

After nearly a year of negotiations, Ohio State and Jacobs entered into a Concurrent Use Agreement in August 2021. A Concurrent Use Agreement is often used by trademark owners to define the line between each other’s markets, and specifically allows for both marks to proceed to registration. In this case, Ohio State amended its original description of the clothing sold under its mark to include language that it only applied to clothing “being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics”. Similarly, Jacobs amended his original description to limit his trademark to clothing “being promoted, distributed, and sold through channels customary in the field of contemporary fashion”. The Concurrent Use Agreement almost certainly further provided that the opposition would be dismissed, that neither party would seek to oppose or cancel the other’s mark, and that each party specifically consented to the registration of the other party’s trademark. By submitting the agreement to the USPTO, Ohio State was able to overcome the objection to registration of its mark based on the earlier filed application of Jacobs.

ORNAMENTAL USE VS. TRADEMARK USE

Ohio State’s original application was also refused because THE as used on the specimen submitted with the application was deemed to be “merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” The size, location, dominance, and significance of a mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.

Original Specimen

 

Substitute Specimen

 

In Ohio State’s application, the originally submitted specimen showed the applied-for mark, THE, located directly on the upper-center area of the front of the shirt, where ornamental elements often appear. Furthermore, the mark was displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. As such, THE application for registration was refused as it appeared to be used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance. In other words, consumers would view THE as used on the t-shirt submitted with the application as a decorative or ornamental feature of the shirt, rather than as a trademark to indicate the source of the t-shirt and to distinguish them from others.

Ohio State later submitted a substitute specimen in an attempt to overcome the refusal. As you can see from the photo, the substitute specimen no longer depicted THE in big, bold letters on the front of the t-shirt. Rather, it was depicted on the inside collar area of the shirt where labels denoting the maker/source of the shirt is commonly found. The substitute specimen satisfied the examining attorney at the Trademark Office, and the refusal was withdrawn. As an aside, it is worth noting that when it submitted the substitute specimen, Ohio State did not amend it’s originally alleged date of first use of August 2005. If, as I suspect, they were not using THE in the manner depicted in the substitute specimen in August of 2005, the registration may be susceptible to challenge.

“THE” CONCLUSION

So that is THE story about how THE Ohio State University was granted a U.S. Trademark Registration for THE. Anyone out there want to try and register “A”? If you do, or if you have another common term that you want to register for a product or service, or if you just want to protect your brand before someone else like Marc Jacobs files for protection first, contact us. We are here to help you with all of your branding concerns.

 

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CRAFT BEER NAMES WORTH PROTECTING

To celebrate Craft Beer Week, we thought that we would post some of our favorite names for craft beers. But before we do that, lets take a look at how the industry has grown since our last post on beer names in 2015 (Where have all the good craft beer names gone?). According to the Brewers’ Association, as of 2021, there are 9,124 brew pubs, tap rooms, microbreweries and regional breweries in the United States. That is more than double the number (4,225) in 2015.

In 2015 we questioned whether, with such explosive growth, brewers could continue to come up with new, distinctive names for their breweries and their beers. As you might have guessed, we were dead wrong. With more brew pubs, breweries and tap rooms, we have been exposed to more new and creative names for beers and breweries. A recent search of the records of the US Trademark Office revealed over 63,000 active registrations and published applications for beer names alone. This number is up from the 22,000 we found in 2015. Registration of your brewery and beer names is vital to protecting your brand and to prevent others from using the same or similar names in a way that may confuse your customers.

It looks like brewers are not only running out of names for their beers, but they are getting more creative. And some of the more savvy brewers are registering their beer names to protect their brand. Here are some of our favorites:

10. HOPOPOTOMUS, Big Rock Brewery, Calgary, Alberta. A hazy and full bodied Pale Ale with notes of ripe mango, guava and tropical fruit coming from the hop varieties and Kviek yeast.

9. HOPPY ENDING PALE ALE, Palo Alto Brewing, Palo Alto, CA. U.S. Trademark Registration No. 4,723,684.  A great way to end the night!

8. GOATMEAL STOUT, Turoni’s Pizzary & Brewery, Evansville, IN. Every week, local goat farmer Dennis Brenner picks up our spent grain and hauls it back to his farm in Princeton, Indiana. The grain is then drained and served to his stock of Billy Goats. This partnership keeps our grain waste program environmentally sound, and those goats don’t even know they’re on our payroll. You’ll never meet some of the most important members of our team, but at least you can drink to them!

7. WEE MAC, Sun King Brewery, Indianapolis, IN. U.S. Trademark Registration Nos. and 4,064,657 and 4,176,639. A Scottish-style Ale is an enticing and malty brown ale with caramel, cocoa, and hazelnut character balanced with toffee undertones. Also, a personal friend of mine claims the beer was named after her. Not sure if I believe her or not?

mockups-design.com

6. POLYGAMY PORTER, Wasatch Brewing Co., Salt Lake City, UT. U.S. Trademark Registration Nos. 4,345,494 and 4,253,333. Why just have one? Polygamy Porter is a smooth, chocolatey, easy-drinkin’ brown porter that’s more than a little naughty. Take some home to the wives!

5. SEXUAL CHOCOLATE, Foothill Brewing, Winston Salem, NC. A cocoa-infused Russian Imperial Stout, brewed with responsibly-sourced organic Peruvian cocoa nibs. Big chocolate aroma with notes of espresso, blackstrap molasses, dark sweet toffee and dark fruit.

4.DRIVER PICKS THE MUSIC, Myriad Brewing, Evansville, IN. A crisp tangerine wheat.

3.COCOMUNGO, 3 Floyds, Munster, IN. Behold the legend of Cocomungo. This devastating Imperial Stout was aged for over a year in Willett bourbon barrels with maple syrup and toasted coconut.

2.WHEELS GOSE ‘ROUND, Left Hand Brewing Co., U.S. Trademark Registration No. 5,686,348. Refreshingly tart & crisp ale with raspberry, a twist of lemon & a hint of salt. Enjoy this tart ale brewed to raise awareness for Multiple Sclerosis, a disease millions of people around the world fight today.

1.HAZED & INFUSED, Boulder Beer Company, Boulder, CO.  U.S. Trademark Registration No. 2,784,476. A unique infusion of floral hops creates a piney, earthy, floral ascent, belayed by a complex, dank, fruity backbone. The surprisingly nimble balance of this Hazy proves sometimes the original is the best route.

In researching this blog, we even came across AI beer naming tools! Like any other branding, it’s important to protect your more valuable brands by registering them with the U.S. Trademark Office. As you can see, some of the more creative and recognizable brands above have done just that! If you need help registering your beer name or brand, contact us, we can help – and we’d love to try your beer too!

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USPTO Adds New Tools for Brand Owners to Challenge Registrations and Applications

The Trademark Modernization Act, which took effect on December 18, 2021, added three new tools for brand owners to remove USPTO trademarks and applications based on inaccurate claims of use in U.S. commerce. The new tools, letters of protest, expungements, and re-examinations, provide a faster, more efficient, and less expensive alternative to a contested inter parties cancellation proceeding previously only available through opposition and cancellation proceedings before the Trademark Trial and Appeals Board (TTAB).

Letters of Protest

A Letter of Protest is a tool that allows a third party to give the USPTO evidence about the registrability of a trademark in a pending application that belongs to another trademark owner. The third party may point out potential issues with a trademark application and make a case for rejection of the application using a Letter of Protest, before a registration is ever issued. There is no limitation on the ground for refusal – any ground upon which an examining attorney could refuse registration can be asserted. The Director is required to act expeditiously on the letter – within 2 months of submission. The Director’s decision is final and non-reviewable, but an unsuccessful challenger can still raise the issue in another proceeding (opposition, cancelation, litigation).

Expungements

While Letters of Protest can be filed during the application phase, Expungements and Re-Examinations are meant to challenge marks that have already been registered.  Any party may request cancellation of some, or all, of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services. The challenger must request Expungement between three and ten years after the registration date.

To institute an expungement proceeding, the complaining party must conduct a “reasonable investigation” and supply evidence thereof showing that the registered mark was never used for the challenged goods and services. Upon finding of a prima faciecase, the Director will provide notice to the registrant. If no prima facie case is found to exist, the petition is dismissed.

Re-Examinations

Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date. For applications that were based on actual use, the relevant date will be the filing date of the application. For applications that were based on intent to use, the relevant date is either: the date that an amendment to allege use was filed; or the date that the deadline to file a statement of use expired, including all approved extensions of time. The challenger must request Re-Examination within the first five years after registration.

To institute an re-examination proceeding, the like an expungement proceeding, the complaining party must conduct a “reasonable investigation” and supply evidence thereof showing that the registered mark was not used in U.S. commerce as of the “relevant date.” The “relevant dates” at issue all involve sworn statements that the marks were being used in commerce. As such, re-examination proceedings aim to address registrations that were obtained through false statements.  However, re-examination proceedings also apply to registrations that include innocent misstatements or misunderstandings about what is required for “use” in commerce.

How Can Brand Owners Use These New Tools?

How will these new, more cost effective tools be utilized by brand owners? Here are a few scenarios that we anticipate:

Company A has come up with a Brand Name for its hot new product, and is really excited about the Brand Name.  Before launch, Company A commissioned a trademark clearance search to make sure that Brand Name was available for use in connection with the goods associated with the new product. Unfortunately, the search came back with a nearly identical registered mark that was registered for nearly identical goods four years ago. Company A, however, has been in business for years and has never seen any products offered in the marketplace under the registered mark.  Since the mark was registered four years ago, it falls within the time frame for either an Expungement (3-10 years after registration) or a Re-Examination (0-5 years after registration).  A good strategy would be for Company A to have its attorney conduct a “reasonable investigation” to determine if grounds exist for filing an Expungement or Re-Examination.  If an Expungement or Re-Examination is successful, the path for Company A to register Brand Name can be cleared.

Company B is the owner of Registered Trademark. Company B’s attorney employs a watch service to monitor for applications for marks that may conflict with its Registered Trademark.  The watch service identified a New Trademark Application that is similar to Company B’s mark and is used for some similar goods that Company B is considering expanding its Registered Trademark to cover.  Rather than waiting for the New Trademark Application to be examined and possibly approved for publication, Company B can file a Letter of Protest to present it’s case for refusal of the New Trademark Application before it may be approved for publication.

How Can We Help You?

If you are an attorney interested in learning more about the impact of the Trademark Modernization Act, Rick Martin is teaching a live video webinar on Detangling The Trademark Modernization Act on February 28, 2022 at 10:00 am CST.

If you are a brand owner trying to figure out how to best protect your brand, we are here to help. Contact us to see how we can use these new tools to help you strengthen and protect your valuable brand.

 

 

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Why are Nike’s Air Jordan Sneakers “University Blue” instead of “Carolina Blue”?

While attending a friend’s 50th  birthday party recently, I noticed his sneakerhead son wearing these cool blue Nike Air Jordans.  The first thing that I noticed was their unique color, which I erroneously assumed was the famous “Carolina Blue” associated with the University of North Carolina where Michael Jordan played college basketball. When my friend’s son informed me that the shoes were “University Blue” and not “Carolina Blue”, it got me thinking about two of my favorite things – trademarks and college basketball. It also made me wonder how Nike could use a color that so closely resembles Carolina Blue, and why Nike called the color University Blue instead.  After hours of online research, I was unable to find an answer to my question.  However, based on my knowledge of trademark law, I have a possible explanation, which I will provide here.

The History of Carolina Blue

For more than two hundred years, the University of North Carolina has associated itself with a specific school color that has always been a shade of blue. The exact shade of blue, long known as Carolina Blue, however, has varied over the years, until relatively recently.  According to fashion designer Alexander Julian, who helped re-design the basketball team’s jerseys in 1990, Carolina Blue is not like any other blue – it’s not powder blue, not baby blue, and certainly not aqua blue.  In 2015, the University adopted a single shade of blue – Pantone 542 – as the official Carolina Blue, which is to be used in at least 10% of all designs. If you are interested in a deeper dive into the history of Carolina Blue, go check out 50 Shades of Blue: Tar Heels Seek the Truest Hue.

Color as a Trademark

Color marks are marks that consist solely of one or more colors used on particular objects. For marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. Some examples of well-known color trademarks include the color pink for Owens Corning fiberglass insulation, the color Brown for UPS trucks and uniforms, and the color “Tiffany Blue” for shopping bags and boxes for jewelry.  Carolina Blue also falls into this category as the mere use of that particular shade of blue, or the mention of the name “Carolina Blue” is almost always associated with the University of North Carolina.

Trademark Infringement

In simple terms, trademark infringement exists when a defendant’s mark is likely to confuse the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. In 1985, after a lengthy legal battle, Owens-Corning became the first company in U.S. history to trademark a color. In 1995, Qualitex defended its right to trademark its signature green-gold dry cleaning pads.  The U.S. Supreme Court ruled that color could, indeed, serve to identify a brand — and in doing so, opened up the floodgates for other companies to file their color trademarks.

Carolina Blue has long been associated with the University of North Carolina, particularly in connection with its basketball and athletic programs and athletic apparel.  As such, both the name “Carolina Blue” and the particular shade of blue – Pantone 542, are certainly protected by U.S. Trademark law. So how is it that Nike is able to use a very similar color on athletic shoes and call it University Blue without infringing on the valid trademarks of the University of North Carolina?

Trademark Licensing

First of all, there is no doubt in my mind that, absent the knowledge and consent of the University of North Carolina, Nike’s use of a particular shade of blue and probably the name “University Blue” constitutes trademark infringement.  I looked long and hard for evidence of some sort of agreement between Nike and UNC but did not find anything.  However, given their long history of working together – it is said that Nike had a hand in selecting the shade for Carolina Blue – the two almost certainly came to an agreement whereby UNC allowed Nike to use the color and agreed not to object to the use of the University Blue name, in exchange for some value (most likely a royalty on sneakers sold).  This tactic is commonly used across brands to cross-promote and sell products that are beneficial to both parties. In this case, I suspect that UNC had no problem with Nike’s use of the specific color to sell its Air Jordan shoes since Jordan has ties to both Nike and UNC.  However, I suspect the UNC did not want to go so far as to allow Nike to market the shoes as “Carolina Blue”, so the different, but similar University Blue was created.

We Can Help You

If you have questions about trademarking a name, logo, design, slogan, or even a color for a product or service, or if you are concerned that your use of a name, symbol or phrase may infringe on the trademark rights of someone else, contact us to discuss how our attorney, Rick Martin, can help you protect your valuable trademark rights!

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AVOID COSTLY BRANDING MISTAKES

The following story is fictional.  The names and places have been changed to protect the innocent and naive.  However, the scenario depicted occurs frequently (see our other posts – Damsel In Distress and A Juicy Tale, involving real live situations), and can be easily prevented.

The story of Nonna’s Kitchen (fictional)

As a child, Maria loved to cook.  She was a proud third generation Italian-American.  Her grandparents immigrated from the town of Varese in the Italian Alps to the United States in 1946 after the end of World War II.  They settled in the small town of Clinton, Indiana where Maria’s grandfather worked as a coal miner. Maria’s grandmother, her “Nonna” was an amazing cook.  Maria would spend hours in the kitchen cooking with her Nonna and learned many of her best recipes. After graduating from culinary school at the prestigious Sullivan University School of Culinary Arts in Louisville, Kentucky, Maria moved to Nashville, Tennessee and opened her own restaurant in the Hillsboro Village area near Belmont University and Vanderbilt University.  To honor her grandmother, who had passed away during Maria’s last year of culinary school, she named her new restaurant “Nonna’s Kitchen”.

The restaurant was an overnight success!  It seemed like the people of Nashville couldn’t get enough of the savory pasta dishes that Maria had been cooking with her Nonna since she was a little girl.  The restaurant was full almost every night.  After five years in operation in Nashville, Nonna’s Kitchen was mentioned by Giada De Laurentiis on the Food Network.  After that, things went crazy! Maria was approached by a group of angel investors who wanted to partner with her to franchise her restaurant nationwide.  It seemed like everything was falling into place and Maria’s wildest dreams of sharing Nonna’s Kitchen with all of America were about to come true.  But Maria was about to discover that some branding mistakes made by her early on could stand in the way of making her dream a reality.

About a month after the mention by Giada, Maria received a letter from an attorney in New York City.  The letter advised her that his client was the owner of a U.S. Trademark Registration for the mark Nonna’s Kitchen.  They had been operating an Italian restaurant also called Nonna’s Kitchen in the Little Italy neighborhood of New York City for over a decade.  On the advice of their attorney, they registered the mark Nonna’s Kitchen with the U.S. Trademark Office shortly after opening.  The U.S. Trademark Registration granted them exclusive rights to use the name Nonna’s Kitchen for restaurant services in the United States.  After the mention by Giada, the owners of the New York Nonna’s Kitchen received several calls from confused patrons who believed Giada was referring to their restaurant.  The cease and desist later was sent shortly after.

How to avoid costly branding mistakes

Maria was heartbroken.  She had spent five years and thousands of dollars building her Nonna’s Kitchen brand.  Now it looked like all of that brand building was wasted and she would have to change the name of her restaurant.  What could she have done to prevent this?

Vet you chosen name by conducting a Trademark Clearance Search

When adopting a name for a new product or service, the first thing that anyone should do is conduct a trademark clearance search. A trademark clearance search is a systematic search for registered or unregistered (common law) marks that: (1) are the same or similar to the mark you wish to use; (2) are being used by others anywhere in the country; (3) are being used for the same or similar product or service; and (4) would likely cause confusion in the mind of the customer. While there are resources available for you to conduct a trademark clearance search on your own, it is better to leave the searching, and the determination of whether there is a liklihood of confusion to skilled trademark attorney.  Had Maria conducted a trademark clearance search prior to adopting the name Nonna’a Kitchen, she almost certainly would have been aware of the existence of the previous trademark registration for Nonna’s Kitchen.  Armed with that information, Maria could have chosen another name that still honored her grandmother, but didn’t infringe on another’s registered trademark.

Register your Mark and Register it Early!

Let’s assume for a moment that the owners of the New York Nonna’s Kitchen did not register their mark with the U.S. Trademark Office.  Under this scenario, Maria may still be entitled to obtain registration of Nonna’s Kitchen with the U.S. Trademark Office.  However, if the New York Nonna’s Kitchen was in operation before the filing of Maria’s trademark application, they may still be entitled to continue using the mark, but their use would be limited to the geographic area of prior use. So, effectively, with her U.S. trademark registration, Maria would be entitled to use the Nonna’s Kitchen name throughout the United States with the exception of New York City, where the New York Nonna’s Kitchen would retain rights as a senior user. Had she filed for registration before the New York Nonna’s Kitchen begain operation, she would have been able to block their usage too.  By registering the mark early, Maria would be entitled to exclude any other uses of the mark Nonna’s Kitchen that don’t pre-date the filing of her trademark application.  This is a huge benefit for someone with a potentially national brand!

Enforce your Registered Mark!

The owner of a U.S. trademark registration has a legal duty to police the marketplace for infringement of its trademark.  If the owner fails to police the mark, it risks losing the protection granted by the trademark registration.  Affordable trademark watch services are available to search for unauthorized uses of your mark as well as attempts to register the same or similar marks.  Many instances of infringement are unintentional and, more often than not, can be resolved without the need for expensive litigation. 

Invaluable Protection for your Brand

The protection provided to your brand by a U.S. Trademark registration can be worth millions.  What is the value of the golden arches logo to McDonald’s? The value of the swoosh to Nike? Marks that achieve such iconic status are probably worth millions of dollars.  But, like you, they started somewhere.  For Steve Jobs and Apple Computers, it was in a garage.  Imagine if Jobs had not taken action to protect the Apple marks?  Protect your brand before it’s too late!  Contact us to see how we can help!

 

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UNAUTHORIZED USE OF NCAA TRADEMARKS COULD HAVE YOU RIDING THE PINE

With the annual NCAA Basketball Tournaments just days away, many people are busy filling out their brackets and getting ready to watch their favorite teams compete for the big prize. You may have noticed in my opening that I didn’t use terms such as  BIG DANCE®️, MARCH MADNESS®️ or FINAL FOUR®️. That is because those names are federally registered trademarks owned by the NCAA. The improper and/or unauthorized use of those names could result in you being called for a foul in the form of a cease and desist letter or even a lawsuit from the NCAA. So what are the rules? When can you use MARCH MADNESS®️ or one of the 70+ names, phrases and images that are registered trademarks associated with the famous basketball tournament?

As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of BIG DANCE®️, MARCH MADNESS®️,or FINAL FOUR®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NCAA. So technically, any use of such registered marks would constitute infringement.

However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.

Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.

The 70+ Trademarks are valuable assets

The NCAA reported total revenue of $1.18 Billion associated with the NCAA tournament in 2019.  Due to cancellation of the tournament in 2020 as a result of the COVID 19 pandemic, that figure was down to $519 million, which included a $270 million insurance payout for cancellation of the tournament.  While the biggest portion of that revenue comes directly from broadcasting rights ($804 million in 2019), a significant portion of the revenue associated with the NCAA Tournament is derived from licensing fees for merchandise and authorized partners who pay fees to the NCAA to be the official this or that of the NCAA Tournament.  Hundreds, if not thousands of businesses line up each year and pay fees to the NCAA to be “authorized” partners and use one or more of the 70+ trademarks associated with the NCAA Tournament.

The NCAA aggressively pursues infringers of its trademarks

With so much money on the line, it is no wonder the NCAA aggressively pursues those who use its trademarks without permission.  For example, in 2017, the NCAA filed suit against a Las Vegas-based fantasy sports sweepstakes company that was using the phrases “Final 3” and “April Madness” in its events related to the NCAA Division I Men’s Basketball Championship. While the marks were not identical to the NCAA’s marks, the court concluded that they were “obviously similar” and that the defendants “planned to use the marks in connection with contests and events related to NCAA basketball games” indicating “willful infringement.” The defendants were permanently enjoined from using the Final 3 and April Madness phrases and any other variations thereof that would be confusingly similar to the NCAA marks and were ordered to recall all infringing products.  The court further invited the NCAA to file a motion for attorney fees, suggesting that it may order defendants to pay the NCAA’s attorney fees as well.  Since January, 2020, the NCAA has filed over 25 opposition/cancellation actions against other parties who have registered or have attempted to register trademarks with the U.S. Trademark Office that the NCAA believed were similar to it’s marks.  Included in that list is was a petition to cancel a registered trademark for VASECTOMY MADNESS and a petition opposing registration of MARCH MODNESS.

Tips to avoid being called for a foul

Unless you are specifically authorized by the NCAA, the following  are things that you should avoid if you don’t want to draw the attention of the attorneys for the NCAA:

  • Advertising for your products or services that refers to the NCAA, MARCH MADNESS or any of the other 70+ marks owned by the NCAA related to the NCAA Basketball Tournament. (Example: A car dealership adveristing “March Madness” pricing on new/used vehicles in the month of March).
  • Promoting an event, gathering, party or the like by making reference to the NCAA or its marks.  (Example: A sports bar advertising in a magazine to “Come watch the BIG DANCE on our Big Screen TVs”).
  • Hosting contests, sweepstakes or giveaways that make reference to the NCAA or its marks. (Example: The “March Madness Sweepstakes”).
  •  Placement of an advertisement for your product or services within an NCAA bracket. (See guidelines by clicking here).

If you are still in doubt, the NCAA provides additional direction and guidance on the proper use of its marks here.  Or better yet, contact us for expert advice on whether your use is permitted.

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BRANDING LESSON – Copying a famous mark could lead to an un-hoppy ending

Branding issues occur in almost every type of commercially available product or service. If you know me, you know that I am a HUGE fan of micro-brewed beers.  Recently, I came across this one courtesy of my neighbors at High Score Saloon.  Hop Tarts is a golden double IPA with a slight berry essence achieved by adding raspberries, blueberries & strawberries during fermentation.  Sounds delicious, right?  I hope to get a chance to try one soon!

Pop Tarts branding similar to Hop Tarts branding

U.S. Trademark No. 4,240,604

But I can’t help but wonder if DuClaw Brewing Co., which prides itself on “Taking Brewing Risks Since ’96” may have taken too big of a branding risk with this new brew. One look at the label on the hop tarts can brought back fond childhood memories of one of my favorite breakfast treats – Pop Tarts.  Kellogg Corporation is the owner of several U.S. Trademarks associated with the Pop Tarts brand, including Registration No. 4,240,604 which is shown here.  On it’s face, the Hop Tarts logo appears to be exactly the same as the registered Pop Tarts mark except that they substituted an “h” for the “p”.

Those of you that follow my blog may recall another post from a few months back – Damsel In Distress – How Choosing the Wrong Name Can Cost Your Company Big Time – about a similar situation where Maiden’s Brewery & Pub was accused of infringing on trademarks owned by the band Iron Maiden. (I know, another blog post about craft beer?)  While there are certain similarities to that case, this situation raises some very different issues regarding trademark law.

Branding, Trademark Infringement and Likelihood of Confusion

Whether or not there is trademark infringement under U.S. law hinges on whether or not there is a “likelihood of confusion” as to the source of the products or services offered under the mark.  The thirteen so-called DuPont factors determine whether there is a likelihood of confusion between marks and therefore infringement.  Those factors are:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
  2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
  5. The fame of the prior mark.
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion.
  8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
  9. The variety of goods on which a mark is or is not used.
  10. The market interface between the applicant and the owner of a prior mark.
  11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
  12. The extent of potential confusion.
  13. Any other established fact probative of the effect of use.

The first two factors – the similarity of the marks and the similarity of the goods or services – generally carry the most weight making a determination of infringement.  Looking at the Hop Tarts case, as referenced above, the marks appear to be very similar in appearance.  Looking at the second DuPont factor, however, presents a different picture.  The goods protected by the Pop Tarts mark (toaster pastries) are very different from the goods to which the Hop Tarts mark is applied (craft beer).  The trade channels of those goods also appear to differ significantly.  Given those factors, it may be difficult for Kellogg’s to make a strong case for trademark infringement here.

Dillution of Famous Marks

However, there is another concept in trademark law known as dillution.  Trademark dillution is the use of a mark or trade name in commerce sufficiently similar to a famous mark that by association reduces, or is likely to reduce, the public’s perception that the famous mark signifies something unique, singular or particular. Dilution is comprised of two principal harms: blurring and tarnishment. Blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name. Tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name.

A “famous mark” is one that evokes an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. Examples of famous trademarks include APPLE, COCA-COLA, GOOGLE, MCDONALD’S and WALMART. Famous trademarks enjoy a broad scope of legal protection because they are more likely to be associated and remembered in the public’s mind.

According to Wikipedia, the Pop Tarts brand was introduced by Kellogg’s in 1964 and is one of their most popular brands with millions of units sold each year. In my opinion, Kellogg’s has a strong argument that it’s Pop Tarts mark qualifies as a “famous mark” and is subject to a higher level of protection than an ordinary mark.  While some may consider use of their mark in connection with craft beer to be a tarnishment (not anyone that I would associate with, but there may be some out there), the stronger argument for Kellogg’s would be blurring – that their Pop Tarts mark is somehow impaired by association with the Hop Tarts brand.  If Kellogg’s were to prevail in a suit against DuClaw for trademark dillution, they would be entitled to an injunction preventing DuClaw from further use of the Hop Tarts brand.

Do you have a new product or service that you are branding and want to ensure that you don’t make the same mistake?  Before you hop to it, let us conduct a trademark clearance search to determine if there are any trademark issues with your brand.  Contact us about your branding and trademark concerns before you hop into launching your new brand.

 

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BRANDING MISTAKES – A JUICY TALE

A new seafood and sushi restaurant, The Juicy Crab in Owensboro, Kentucky made a big branding mistake in choosing its name when it opened for business recently.

BRANDING MISTAKES MAY LAND YOU IN BOILING WATER

According to an Owensboro Times article, almost immediately Facebook users were confused as to whether this Juicy Crab was affiliated with a chain of Juicy Crab restaurants based out of Duluth, Georgia.  The owner of the Owensboro Juicy Crab apparently relied upon the availability of the name for registration with the Kentucky Secretary of State and the advice of a lawyer (presumably not one that specializes in Intellectual Property and Trademark Law) in adopting the name.  Within days of opening, Juicy Crab Owensboro received a cease and desist letter from Juicy Crab Duluth alleging infringement of their U.S. Trademark Registration No. 5,139,205 for THE JUICY CRAB which is registered for use in connection with seafood restaurants.

TRADEMARK INFRINGEMENT AND BRANDING

The owner of a U.S. Trademark has the exclusive right to use the registered name in connection with the goods or services that it is registered for, and for goods or services that are the same or similar.  Trademark infringement occurs when there is a liklihood of confusion as to the source of goods or services.  Several factors affect whether there is a liklihood of confusion.  The two primary factors are the similarity of the marks themselves and the similarity of the goods or services.  In the case of Juicy Crab, the two names are identical and the services provide (seafood restaurants) are also identical.  In addition, there appears to be actual confusion already and the Owensboro restaurant has only been open a short time.  These factors point to an almost certain finding of infringement.

HOW TO AVOID BRANDING TRAPS

So what should a restaurant owner, or anyone opening a new business, do before choosing a name for their business?  You should perform a trademark clearance search before registering the name with the state.  The clearance search will help to ensure that the name is available for use as you intend to use it. You should engage a professional familiar with the resources needed to find all potentially blocking marks for the search.  An experienced trademark attorney should render an opinion based on the search results.  Had Juicy Crab Owensboro followed this path, the registration for Juicy Crab Duluth would almost certainly have been found.  Knowing this, Juicy Crab Owensboro could have chosen a different name and avoided the conflict.  No business owner wants to have to change their brand after the business is up and running.  Customers may be confused by the name change and re-branding, which involves new designs, logos, signage, etc. can be expensive.  It’s far better to properly vet a name BEFORE you hire someone to design your logo and branding.  While there is a cost to doing so, it may just save you money, and your business, in the long run!

MARTIN IP CAN HELP

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake?  Before you spend money on a logo or designs, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. To protect your juicy brand and to avoid getting a crabby cease and desist letter,  contact us to help with choosing, protecting and registering your brand.

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DELTA SUES MARRIOTT FOR TRADEMARK INFRINGEMENT OVER DELTA HOTELS

Atlanta, GA – Earlier this month (March 2020), Delta Airlines filed suit against Marriott International for trademark infringement and dilution over Marriott’s use of DELTA trademarks as part of its U.S. expansion of it’s Canadian Delta Hotel chain.  In court documents, Delta claims that “Marriott has embarked upon a calculated strategy of not only gratuitously using the name DELTA for its DELTA HOTELS chain of hotels in the United States, but also has adopted a sans-serif font and dark blue color scheme for its DELTA HOTELS business that closely mimics the font and color scheme used by Delta” (see photo).  Delta further claims that Marriott has opened numerous “airport hotels” under the Delta Hotels name and is marketing that brand to airline travelers leading consumers to believe that the hotel chain is somehow associated with Delta Airlines.

Delta claims to be the leading airline in the world by total revenue, serving 200 million people every day.  Delta also claims to be a leader in related travel services such as hotel bookings, credit card rewards programs, and hospitality services.  Delta also partners with other companies in virtually every industry, including hotels, credit card providers, entertainment venues and stadiums, sports teams and charitable organizations.  According to Kantar, in its 2020 BrandZ report on the Top 100 Most Valuable US Brands, Delta’ Airlines’ DELTA brand is among the 100 most valuable brands in the United States.  In its complaint, Delta frames the dispute broadly as one involving the “travel industry” as opposed to airlines and hotels.

Marriott acquired the Delta Hotel chain, which had previously operated only in Canada, in 2015.  After the purchase, Marriott began expanding the Delta Hotel chain into the United States.  Marriott also made significant changes to the design of it’s logos – adopting a sans serf font, dispensing with a stylized, curling “D” design in favor of a straight “D” design, and changing to a darker blue color. Delta claims that all of these changes were intentionally designed to make the Delta Hotel marks much closer to the Delta Airlines marks, almost guaranteeing confusion when the Delta Hotels began operating in the United States.  Since the purchase in 2015, Marriott has also opposed registration of several DELTA marks filed by Delta Airlines with the United States Trademark Office.  Those oppositions continue to work their way through the system.  Marriott has also filed over 70 applications around the world to register “DELTA” as a trademark on its own.  All of this indicates that Marriott is taking a very aggressive approach to expansion of what to most in the United States is probably a previously unknown hotel chain brand.

Without the benefit of seeing Marriott’s answer to the complaint (it’s not due yet), it is difficult to understand what Marriott is thinking with its rapid and aggressive expansion of the Delta Hotel brand.  With a multitude of other hotel brands under its umbrella, from Ritz Carlton and St. Regis to Fairfield and Townplace Suites, surely there is an existing U.S. branded hotel that aligns with the level of service provided by Delta Hotels in Canada.  Marriott will almost certainly spend tens of thousands of dollars in attorney fees defending this suit, and if it loses, it could be rebrand, pay damages and possibly attorney fees to Delta.  It will be interesting to see how Delta responds to the complaint.

Has someone misappropriated your brand?  Are you starting out with a new business, venture, product or service and want to have some assurances that you won’t have to rebrand later due to an unseen infringement?  We are here to help.  Contact us to see how we can give you the peace of mind you deserve before you move forward.

 

 

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