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Archive for February, 2012

Social media and the future of trademark disputes

Posted by ipelton on: February 28th, 2012

Social media is changing trademark disputes. So far, it may have only affected a few.  But the trend is growing. And as the business world becomes more and more connected with social media, the role of social media in trademark disputes is likely to continue to grow.

I wrote about this trend in 2009 (the future of trademark disputes – using social media?) and again last year (Using publicity to fight trademark cases). One would think that potential plaintiffs would be aware of the public relations issue they may have if a nasty overreaching cease and desist letter is made public and not only embarrasses them, harms their intent of stopping a small alleged infringer by giving them much more attention and changing the dynamics of the claim and the settlement negotiating stances of the parties.

EAT MORE KALE is one recent example of this. The EatMoreKale.com Facebook page has more than 8,000 fans. I imagine that the business of selling EAT MORE KALE shirts and bumper stickers has increased ten-fold since Chik-Fil-A demanded the name be changed.

The Wall Street Journal reported on these “shaming” tactics last week. New Tool in Trademark Fights: Start-Ups ‘Shame’ Bigger Companies; ‘Coming Down Hard on the Little Guy’ (Wall Street Journal). The most intersting quote, to me, in the article was:  from the founder of Chillingeffects.org, which collects and posts cease and desist notices: 

Trademarks are meant to protect your image, so it doesn’t really help to look like you’re coming down hard on the little guy,” said Wendy Seltzer, a Yale Law School fellow who founded Chillingeffects.org.”

This quote hits the nail on the head. Trademarks are part of a company’s brand, their image and reputation. Efforts to enforce trademarks should consider the not just the legal merits, but the potential affects and outcomes for the brand. If the potential harm in contacting or suing an alleged infringer outweighs the benefit, perhaps the strategy ought to be adjusted. 

The Journal’s “Law Blog” also discussed the topic today. It made a good counter-point: “shaming tactics can backfire. If the claims in the letter are legitimate, entrepreneurs wind up casting a spotlight on their own infringing conduct, according to David Bernstein, a partner at Debevoise & Plimpton. ”  This is certainly true. But the defendant, pushed with their back against the wall by a bigger richer plaintiff, often has little or nothing to lose. The risk of some embarrassment by spotlight their own conduct may outweigh the costs and difficulties of changing the name or litigating against a Goliath.

One thing is for sure, social media’s impact on these kind of disputes will continue to grow. I hope it will mean that companies think twice before sending an aggressive overreaching letter. Maybe more will try a softer approach. Maybe more will companies (and lawyers) realize that some uses are better left untouched rather than instigating a claim that will only call more attention to the use they want to stop.

Image from EatMoreKale.com

Last week saw many developments and stories related to trademarks. Since I started this blog more than two years and several hundred posts ago, I honestly cannot recall a week with so many trademark stories!

Here is a brief rundown of the key trademark stories of last week:

Justin Bieber makes trademark news – on  Friday, the celebrity gossip website website TMZ reported that Bieber’s attorneys sent a cease and desist demand to the maker of an app game called JOUSTIN’ BEAVER. The app makes filed for a trademark registration in the USPTO a few weeks ago. TMZ posted a copy of the demand letter. As a result of the coverage, the app received a lot of attention – and downloads – and broke into the iTunes top 100.  As of the weekend, the app was still available in iTunes and the Android marketplace. 

Wall Street Journal featured article on Start-Ups ‘Shame’ Bigger Companies: ‘Coming Down Hard on the Little Guy’ - the article references several trademark disputes include the one involving EAT MORE KALE and Chik-fil-A’s EAT MOR CHIKIN slogan, and noted the increasing role that social media campaigns can play for accused infringers. 

Trademark scams - the USPTO updated the trademark page of the USPTO.gov website on Friday to include a warning about solicitations sent to trademark applicants and registrants that are misleading and of questionable value: WARNING: NON-USPTO SOLICITATIONS THAT MAY RESEMBLE OFFICIAL USPTO COMMUNICATIONS: Be aware that private companies not associated with the USPTO often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.

The New York Times featured an article on trademarks as well: Trademarks Take On New Importance in Internet Era – The article does not focus as much on the Internet as the headline implies. But the article is remarkable for noting that, in the dispute over the PRETZEL CRISPS trademark, “Princeton Vanguard already has spent $1 million on legal fees” defending against Frito-Lay.

USPTO held roundtable on  “Future Plans for USPTO ID-Class Practice” - on Friday the USPTO convened a public meeting exploring some issues on the possible changes to the ID manual and other ID issues. I attended the meeting in person (it was also webcast) and some interesting ideas and feedback were discussed. My guess is that in the next year the USPTO will likely move to trim the size of the ID manual and to explore introducing a hierarchical index of the manual as an option for applicants and attorneys to use in finding the correct identification and the necessary level of specification.

Bo Muller-Moore, the owner of EAT MORE KALE, and a filmaker launched a Kickstarter project called “A Defiant Dude” – the project seeks to make a documentary film. “By helping make this documentary I want to shine a light on this issue, my battle, and other trademark bullies, too.” In less than a week, more than 200 people have signed up to contribute to fund the film.

News broke that Apple is being sued not only in China but also in California regarding the IPAD trademark- Apple claims that it  bought Proview’s worldwide rights to the iPad trademark. Proview argues that the rights Apple claims are not all valid and that Apple concealed its identity in using a shell company to contract with Proview. See Apple faces new iPad trademark challenge in California (The Telegraph).

COACH defeated at appellate court – The Court of Appeals for the Federal Circuit ruled on an appeal that the Trademark Trial and Appeal Board properly held that Triumph Learning’s COACH mark for educational software was not confusingly similar to or diluting the COACH handbag and accessories trademark.

Michael Jordan Sues Chinese Sportswear Company Over Use of Name (NY Times)

And, of course, the LINsanity continued – Jeremy Lin made the cover of Sports Illustrated for the 2nd week in a row, and the number of Lin inspired (LINspired?) USPTO trademark applications continued to grow. They now include: J Lin, LINDERFUL, LINSANE, lin-sational, LINITLESS, All LIN,  LINSPIRATION, I’M A LINNER,  LINNING IS THE ONLY THING, MARKET LINQUIDITY (filed by Nasdaq!), Air Lin

Why suggestive brand names are the best

Posted by ipelton on: February 24th, 2012

Choosing a brand name is one of the most important components in launching a new product, service , or company. Brand names can be descriptive, telling consumers exactly what it is being sold. Examples: CARTOON NETWORK, HOTELS.COM, SPORTS ILLUSTRATED, THE WEATHER CHANNEL, eFax.

 Brand names can also be arbitrary, having no real connection with the product or service or even being a made up term. Examples: EXXON, KAYAK (travel site), YAHOO!, PANDORA, STARBUCKS.

In between descriptive and arbitrary names are suggestive ones. They tell the consumer something about the product or service. But in a creative manner so that they are not plainly descriptive. In my opinion, suggestive brand names are the best. While arbitrary or coined terms can get even stronger legal protection, they are harder to market. Consumers may not connect the dots (absent a gigantic advertising campaign) and know what the name arbitrary/coined name is for. As a result, I advise those launching new brands and new businesses to chose suggestive names.

Here are some examples of great suggestive names:

the web:

PINTEREST

GROUPON

eBay

Travelocity

NETFLIX

YOUTUBE

OpenTable

restaurants:

LOX STOCK & BAGEL

LETTUCE EAT

THAI THE KNOT

TOSSED (salad restaurant)

coffee:

BREWED AWAKENING

BEAN AROUND THE WORLD

other:

SPORTSCENTER

Versus (sports TV network)

BootLeggers (footwear store)

Tiecoon

Perfumania

 

 

What are your favorite suggestive names?

In response to the tremendous feedback received lately regarding my posts and video about trademark scams, I have posted an online petition requesting the USPTO educate the public about trademark scams and to coordinate with other agencies to take actions to curb them. Click red button below review and sign the petition.

The petition is available for review and signature from anyone interested here: http://www.ipetitions.com/petition/trademarkscams/.

- Erik Pelton

I have been interested in non-traditional trademarks for several years now and I have collected information about many different types. Did you know that several lighting displays are registered trademarks? And the motion of the doors on a Lamborghini? To learn more about the protection of these and other trademarks, see the slides below from my recent AIPF webinar.
View more presentations from erikpelton.