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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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A LESSON IN BRANDING FROM THE ROCKET CITY TRASH PANDAS

In our September 2018 blogpost we raised concerns about potential trademark issues regarding the newly selected name and proposed logos for Madison, Alabama’s new AA baseball team dubbed the “Rocket City Trash Pandas”.  The concern was that the proposed branding could conflict with trademark and copyright registrations held by Marvel Characters, Inc. for Guardians of the Galaxy®️ movie character Rocket Raccoon®️.  Shortly after our post, a report indicated that those concerns were echoed by the Madison City Council.  In response, Trash Pandas’ owner assured the Council that they had “dotted our I’s and crossed our T’s on the trademark searches”

The resulting Trash Panda logos and branding that were unveiled on October 27, 2018 reflected a decisive pivot away from the mock logo that first appeared on Facebook and that was featured in our previous post.  Gone was the snarling, snarky flak-jacket wearing raccoon Rocket.  In its place is a smiling, rocket fin adorned trash can wearing raccoon Sprocket.  The marked difference in design is almost certainly attributable to the Trash Pandas’ desire to avoid a trademark dispute with Marvel.  A good move on their part.

Maybe even a great move.  In only thirteen months after the branding release, the Trash Pandas surpassed the $2 million mark in merchandise sales.  But for their late start on the 2019 season, the Trash Pandas almost certainly would have cracked the Top 25 in merchandise sales among minor league baseball teams.  Keep an eye out for them when the numbers for 2019 are released in July.  Given that the average merchandise sales for all 160 minor league teams is less than $500,000 per team, their $2 million should put them squarely in the top 25 when the figures are released this summer.

Another thing that the Trash Pandas did right was to seek early registration of their mark.  As we reported in September 2018, Trash Pandas owner BallCorps filed two applications with the U.S. Trademark Office for registration of the name TRASH PANDAS in July 2018.  On December 3, 2019 they were granted U.S. Trademark Registration No. 5,927,921 for use in connection with paper goods and printed matter, namely, autograph books, binders, bookmarks, bumper stickers, calendars, catalogs in the field of baseball, decals, merchandise bags, newsletters in the field of baseball, note pads, paper containers, paper pennants, paper game schedules for sporting events, pens, pencils, postcards, posters, printed awards, printed game tickets for sporting events, printed guides in the field of baseball, reference books in the field of baseball, score books, score cards, score sheets, stationery, stickers, sticker albums, and sports trading cards, and clothing, namely, aprons, athletic uniforms, bandanas, boxer shorts, caps being headwear, cloth baby bibs, coats, golf shirts, gym shorts, hats, jackets, jerseys, knit shirts, pajamas, polo shirts, ponchos, pullovers, rain coats, rainwear, sweaters, sweat pants, sweat shirts, socks, sport shirts, t-shirts, tank tops, ties, visors being headwear, wind resistant jackets, and wristbands as clothing.  The other application, which seeks registration for entertainment services in the nature of baseball games and exhibitions, should issue before opening day on April 15, 2020.

Selecting a brand for your business can be daunting.  It’s important to ensure that you don’t infringe on the rights of others and to properly protect your interest in the potential millions in revenue that a good brand can create.  We are pleased to see that Trash Pandas owner BallCorp did branding right!  If you need someone to help you navigate the legal issues associated with branding, we are here to help.  Contact us to see how we can help you leverage your brand!

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UNAUTHORIZED USE OF SUPER BOWL®️ MAY RESULT IN A PENALTY

With the “Big Game” between those football teams from Kansas City and San Francisco just days away, many people are gearing up to host or attend watch parties to celebrate the NFL championship game. You may have noticed in my opening that I didn’t use terms such as SUPER BOWL®️, CHIEFS®️, or 49ERS®️. That is because those names are federally registered trademarks. The improper and/or unauthorized use of those names could result in you being flagged for a penalty in the form of a cease and desist letter from the NFL, the Kansas City CHIEFS®️, or the San Francisco 49ERS®️ organizations. So what are the rules? When can I use SUPER BOWL®️, CHIEFS®️, 49ERS®️ and the plethora of other related words, phrases and images that are registered trademarks of these organizations?

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 SUPER BOWL®️ 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 NFL. 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.

Over the years, the NFL has aggressively pursued infringers in this category by sending out cease and desist letters to those commercial establishments who are using the marks without authorization. This stands to reason since many other commercial enterprises pay big money for the right to use the marks in connection with their products and services. For example, Anheuser-Busch InBev reportedly pays in the neighborhood of $250 million a year to the NFL for Bud Light to be the official beer of the NFL. This deal includes rights to use NFL trademarks, including those related to the SUPER BOWL®️.

A gray area also exists between those two extremes – private and/or not for profit entities that wish to host their own SUPER BOWL®️ party. In 2007, John D. Newland of Fall Creek Baptist Church in Indianapolis received a cease and desist letter from the NFL after promoting a church sponsored event where they planned to show the game on big screen TVs and charge $3.00 for admission. Newland ended up cancelling the party to avoid further entanglement. Arguably, notwithstanding copyright issues involved with the rebroadcasting of the game on big screen TVs, had Fall Creek not charged admission for the party, the fair use exception would likely have applied.

Whether you are a CHIEFS®️fan, 49ERS®️ fan (or a PATRIOTS®️fan licking your wounds this year), we hope that you enjoy the game with family and friends safely wherever you are and without issues of trademark infringement. If you have questions about trademarking a name 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 we can help you avoid being penalized or sacked and score a touchdown for your team!

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DAMSEL IN DISTRESS – HOW CHOOSING THE WRONG NAME CAN COST YOUR COMPANY BIG TIME

Toward the end of last month, Maiden’s Brewery & Pub in Evansville quietly changed its name to Damsel Brew Pub. It was reported by River City Weekend that the change was made in response to a demand from the legendary rock band, Iron Maiden, giving Maiden’s Brewery & Pub until the end of 2019 to change the name of its establishment and beer products.

My first reaction upon hearing this news was disbelief. How could someone confuse a simple brewery and pub in Evansville, Indiana with a legendary rock band, or somehow be lead to believe that the brew pub was somehow affiliated with or endorsed by the rock band? Impossible! But after doing just a little bit of research, it appears that Iron Maiden’s demand is most definitely legitimate.

Iron Maiden Holdings Limited is the owner of at least six (6) U.S. Trademark Registrations for the name “Iron Maiden” as both standard character marks and in stylized forms. The earliest registrations date back to September 1984 and include the words “Iron Maiden” in the stylized form as shown below. Compare that to the stylized wording used by Maiden’s Brewery & Pub, and we begin to see the basis of the rock band’s complaint

U.S. Trademark Registration owned by Iron Maiden Holdings

Maiden’s Brewery & Pub Logo

The font used by Maiden’s Brewery & Pub appears to be nearly identical to the distinctive font in the “Maiden” portion of Iron Maiden’s registered mark. The 1984 trademark registrations were for entertainment services, namely live musical entertainment performances (Registration No. 1,308,370), clothing, namely T-shirts, jerseys, sweat-shirts, hats, jackets and leather wrist bands (Registration No. 1,307,146), and posters, souvenir concert programs, stickers, calendars, photographs and decals (Registration No. 1,306,972).

When determining trademark infringement, the penultimate question is whether there would be a likelihood of confusion as to the source of the product. In other words, would the consumer of beer and related products (such as koozies) sold by Maiden’s Brewery & Pub likely think that those products were somehow produced by, or sold with the authority of the band Iron Maiden. Given the striking similarity of the very distinctive font used in both instances, in our opinion, Iron Maiden did in fact have a strong claim that confusion was likely.

You might be asking yourself at this point why Maiden’s didn’t just drop the stylized font and keep the name Maidens for its brewery, beer and related products. Surely just the mere use of the word “Maidens” without the distinctive Iron Maiden font would not lead to confusion given the products covered by the three trademark registrations. If those were the only registered trademarks for the name Iron Maiden owned by the band, Maiden’s may well have been able to do just that. However, in 2010, Iron Maiden Holdings was granted U.S. Trademark Registration No. 3,840,031 for Iron Maiden (standard characters) in connection with a number of products and services, including beverage ware, bottle openers, portable beverage coolers, barware and coasters. Then, in 2014, Iron Maiden Holdings was further granted U.S. Trademark Registration No 4,848,431 for Iron Maiden (standard characters) for use in connection with beers and alcoholic beverages.

The owner of a federally registered U.S. Trademark has the exclusive right to use the mark in association with the goods or services for which it is registered and with any other goods or services that may create confusion as to the source of the product or service. For trademarks which are considered to be famous (one could argue that IRON MAIDEN falls within this category), infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner’s mark is registered.

Maiden’s plight is an all too common occurrence. Many fledgling businesses either don’t know the risks associated with choosing a name or simply decide not to spend the money up front to properly vet the name before adopting and using it. This strategy is penny wise, but pound foolish. The business that chooses not to invest hundreds of dollars to ensure the name they want to use is available may end up spending thousand or more in damages for trademark infringement not to mention the costs of starting over with branding after Wasted Years building a brand that they may be forced to abandon.

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 Run to the Hills, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name.  Contact us to iron out your trademark concerns before you become a damsel in distress.

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FREE TACOS! LEBRON’S ATTEMPT TO TRADEMARK “TACO TUESDAY” FAILS

Here at Martin IP Law Group we love tacos so much that we celebrated Katlyn’s last day of work with our firm by hosting a taco bar, on a Tuesday no less! Thanks to the U.S. Trademark Office, we were able to use the name “Taco Tuesday” without fear of stepping on LeBron’s rather large feet.

In August, LBJ Trademarks, LLC, owned by LA Laker’s superstar LeBron James filed a U.S. Trademark Application attempting to register the phrase “Taco Tuesday” for a number of goods and services including downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services. On September 11, 2019, the USPTO rejected LeBron’s application to register “Taco Tuesday” on two separate grounds.

The primary grounds for refusal was that the phrase is a commonplace message that cannot function as a trademark or service mark to indicate the source of LBJ’s goods or services and differentiate them from the goods and services of others. The trademark examiner cited a variety of sources where “Taco Tuesday” was used to convey an “ordinary, familiar, well-recognized concept or sentiment.” Among the sources cited were several restaurants that used the phrase, and numerous newspaper articles showing wide usage of the phrase Taco Tuesday by various parties to express enthusiasm for tacos. In the end, the examiner concluded, correctly in my opinion, that Taco Tuesday conveys an informational message and would not be perceived by consumers as representing a particular party’s goods or services.

Registration was also refused based on the likelihood of confusion with U.S. Trademark Registration No. 5,505,122 for TECHNO TACO TUESDAY. In the refusal, the examiner referred to the two primary considerations for likelihood of confusion – the similarity of the marks and the similarity of the goods/services. Other than the omission of the word “Techno”, the marks are identical. The examiner concluded that, notwithstanding this difference, LBJ’s mark was “highly similar to the registered mark.” Further, the registered mark TECHNO TACO TUESDAY is registered for use in connection with a number of services including “advertising, marketing and promotion services”. As with the mark itself, the good/services need not be identical to find a likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods or services emanate from the same source.” Here, the examiner concluded that LBJ’s services are “highly similar” to the registrant’s services.

It’s also interesting to note that US Trademark Registration No. 1,572,589 for TACO TUESDAY used in connection with restaurant services was issued in 1989 to Taco John’s and is still a registered mark today. One has to wonder if, given the comments of the examiner in LBJ’s trademark application, that registration has succumbed to genericide (see our X/x/x blog post for further description on that issue).

The ball is now in LeBron’s court. He has until March 11, 2020 to respond to the refusal to register Taco Tuesday. Maybe if he spent a little more time on the court, rather than looking for ways to get into court, he could lead the talented Lakers to another NBA title.

Do you have a phrase or slogan that is of value to you or your company? If so, it might be registrable as a federal trademark which gives you several competitive advantages. Contact us to see if your phrase or slogan is appropriate for protection.

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THE GENERICIDE OF A BRAND – TRADEMARK OWNERS WHO FAIL TO ENFORCE THEIR MARKS COULD SEE THEIR RIGHTS “BANDERSNATCHED”

Genericide is the act or process whereby a trademark term becomes so commonplace for the goods or services associated with it that the owner’s rights are diminished or lost as a result. Examples of once robust trademarks that fell victim to genericide include ASPIRIN (originally a trademark of Bayer declared generic in the U.S.), ESCALATOR (originally trademarked by Otis Elevator Company), THERMOS (declared generic in the U.S. in 1963) and LINOLEUM (declared generic following a lawsuit for trademark infringement in 1878). Genericide can be devastating to a brand that a company has spent significant time and money to develop.

One way to avoid genericide of a trademark is to timely obect to other’s generic misuse of the mark. Generally, this is done through the sending of cease and desist letters, and, sometimes through litigation to enjoin such misuse. Last month, Netflix released a new interactive narrative program entitled “Black Mirror: Bandersnatch” where the viewer makes decisions for the main character. In Bandersnatch, the decisions the viewer makes range from the mundane, such as whether to listen to Thompson Twins or Now 2, to more difficult decisions, such as whether to chop up a body or bury it. Bandersnatch is set in 1984 and revolves around a young video game programmer’s development of a video game based on the interactive narrative book “Bandersnatch” that lets the user make choices that affect the outcome of the game (much like the show itself).
In one early scene in the show, the main character refers to the Bandersnatch book as a “choose your own adventure book.” Chooseco, a small publishing company based in Vermont, is the owner of several U.S. Trademark registrations for CHOOSE YOUR OWN ADVENTURE which relate to it’s interactive narrative series of books for young adults. Last month, Chooseco filed suit against Netflix seeking $25 million dollars in damage for unauthorized use and disparagement of its registered trademarks. Chooseco effectively had no choice (no pun intended) but to take action against Netflix. If it would have ignored the alleged misuse, their mark would almost certainly be sliding down that slippery slope toward genericide. However, as Bayer AG discovered in 1922, bringing suit carries risks as well. Netflix will almost certainly raise the defense of genericism to the alleged infringement. So, ultimately, the court may decree the mark to be generic despite Chooseco’s attempts to avoid genericide by filing the action in the first place.

So, other than objecting to the misuse of the mark by others, how does the owner of a trademark or service mark prevent their mark from becoming generic? Wherever possible, the mark owner should give proper notice that the mark is registered. This is typically done through use of the ® symbol for marks registered with the U.S. Trademark Office or ™️ for marks protected by common law. The mark owner should never use, nor permit others to use, the mark as a noun (Kleenex instead of KLEENEX tissue) or verb (i.e. “Google it” instead of perform an internet search using the GOOGLE search engine), and it’s always best to use the mark in connection with the generic term (i.e. BAND-AID adhesive bandages). The mark should also always be displayed in all capital letters or a distinctive font which differentiates it from the surrounding text. In addition, unless the mark is already in the plural form, it should never be made plural (i.e. not two Cokes, but two COKE beverages). Lastly, if the mark is in danger of falling prey to genericide, the owner may want to educate the public as to their rights and the proper usage. One such clever campaign conducted by Xerox advised consumers that “you can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox®️ copier.”

While it’s a great thing for a mark to be well known and widely used, don’t let your mark get so well known and widely used that it becomes the generic or common name for a particular product or service. If you follow these guidelines from the start, it is unlikely that your mark will fall victim to genericide.

We are always here ready to help you acquire, protect and enforce your trademark rights. If you need to register a brand name, or if your brand is in danger of becoming generic, contact us to find out how to best protect your valuable asset.

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