Blawg Review #325.10
Posted on March 28, 2018 by Ron Coleman
Written by: Ron Coleman
Originally posted 2013-11-03 23:05:00. Republished by Blog Post Promoter
Welcome to Blawg Review #325 — 325-and-a-tenth, to be exact. Presumably you got here from here.
So it is, so it is. Let's review.
Dennis Crouch, of the ancient and venerable Patently-O blog, writes about a bit of international procedural wrangling that threatens to open a very big leak in the U.S.'s notional airtight approach to copyright enforcement. It seems that America the dutiful has effectively utilized the World Trademark Organization ("WTO") to push both low international trade barriers and strong IP cross-border enforcement. Outside the WTO system, however, the US — ever the world's policeman — has been undermining the market for cross-border gambling. While state-sanctioned lotteries are widely acknowledged to be a "tax on the stupid," Washington is jealous of government's monopoly on that tax as much as many others. This has displeased the sovereign state of Antigua and Barbuda, which offers the world lots of online gambling, but not so much the intellectual property. As Dennis explains,
Antigua filed a WTO dispute complaining that the US action was a trade violation and, the WTO panel agreed with Antigua. . . .
At the end of the day, the WTO authorized Antigua to suspend its TRIPs obligations with respect to U.S. intellectual property at a cost to the US. Antigua is now rapidly moving forward with a monetization scheme that would essentially create a local market for copyrighted work owned by U.S. entities, but where no royalties are paid to the U.S. copyright holders. Antiguan legislation is expected in the upcoming weeks followed by bids from private contractors to build-out the online marketplace.
Is that the IP part of that smart diplomacy we were promised? Impressive! Anonymous and company couldn't have done it better themselves.
Speaking of something we cannot do better, a couple of weeks ago, Marty Schwimmer, in a rare treat, shared more than telegraphic thoughts on a post called, The True Measure of a Trademark Lawyer, which itself riffs off an article, available online, called "Do Trademark Lawyers Matter?" Marty sets up the question, and couple of possible approaches to answering it, as follows:
The article examined PTO filing data to attempt to answer the question: "does it make sense to hire a lawyer for trademark prosecution?" The article concludes that both a law degree and experience matter. Read the whole article.
The raw PTO 'success rates' show by a statistically significant margin that applicants represented by counsel have higher success rates. The 'true' difference would likely be even greater than the number reported by the article, because, as the authors note, large filers such as American Greetings, Fox and Hasbro are coded by the PTO as pro se applicants when they use in-house staff to file.
OK, I think my audience consisting mainly of trademark lawyers is not shocked by this finding.
But, to stir up trouble, I find myself pondering now: What metric should be used to identify a 'good' trademark lawyer vis-a-vis other trademark lawyers (at least in the context of prosecution)?
The article uses the term 'success rate' but does that number tell us everything we need to know? The article correctly notes that there are various points in the life of an application where success has to occur:
The article uses the term 'success rate' but does that number tell us everything we need to know?
Marty suggests, as his question itself hints, that the answer may well not be "yes," and proposes a pretty sophisticated approach to the issue in his post. (For what it's worth, I took a much less sophisticated approach to what seems a very similar question — itself asked in a much less sophisticated way — in this post. Guess which of us does trademark prosecution and which of us does litigation.)
Now, speaking of founding fathers, I need an excuse such as Blawg Review to link to The TTABlog® — because without one, I'd be linking there even more than I do now. Excuse being present, however, I get to choose one — just one. I like this good, old-fashioned, LIKELIHOOD OF CONFUSION (i.e., Section 2(d)) slugfest:
It took only seven pages for the Board to explain its decision affirming a Section 2(d) refusal of STORM CANDLE for candles [CANDLE disclaimed], in view of the registered mark STORM WATCH for "candles and and fragrant wax for use in potpourri burners." Would you have appealed? In re Royal Wine Corporation, Serial No. 85775626 (October 16, 2013) [not precedential]. . . .
Applicant argued that the nature of the involved goods is "irrelevant," as are all the other duPont factors (except one), because the marks are so different. The Board, however, pointed out that because the goods are in part identical (candles), that factor weighed heavily against applicant.
John asks, in the title of the post, his eternal question: "WYHA?" That is, Would You Have Appealed? What, indeed, could the applicant have been thinking here? Better, he asks, "Is STORM a weak formative for candles? " In other words, just how amenable to trademark protection is, after all, the terms STORM CANDLE for candles? You'd think.
I would also rip off riff on Pamela Chestek's Property, intangible® blog every week if it weren't so darn easy and I had a molecule less of self-respect. But I like it especially when she blogs about litigation topics, because, unlike the heavy lifting in licensing that's her usual fare, I can understand it pretty much.
For example, here's a good post from a couple of weeks ago that addresses an angle on two topics I've played around with here myself — governmental claims to trademark rights and big-college-sports IP, particularly that of the University of Alabama. Pamela explains how the doctrine of sovereign immunity, which mandates that the gummint can only be hailed into court if it wants to be, :)"has ended a trademark infringement case before it got started." It's like this:
Plaintiff Richard Diaz, of Enterprise, Alabama, owns a trademark registration for this mark:
Diaz sued Glen Plaid, LLC for trademark infringement for using this elephant design:
The wrinkle is that Glen Plaid's use of the elephant logo is pursuant to a license granted by the University of Alabama as part of Alabama's "Houndstooth Program." Alabama's mascot is an elephant, and Alabama claims that the houndstooth check pattern is associated with Alabama because coach Bear Bryant always wore a houndstooth hat. After Diaz filed the lawsuit, the University filed a petition to cancel the Diaz trademark with the Trademark Trial and Appeal Board.
Defendant Glen Plaid moved to dismiss the case claiming that the University of Alabama is a necessary and indispensable party who cannot be joined.
Evidently, Glen Plaid was right. "Because the University of Alabama is a state entity, it cannot be joined in a case in federal court. And, balancing the equities, the district court found that the suit should be dismissed largely because there is another forum that might be able to resolve the claim—the Trademark Trial and Appeal Board." Yes, Glen Plaid was right.
But is that quite right? We might find out — looks like, ever ready to wash the Crimson Tide into the courtroom, 'Bama has sued a company called Houndstooth Mafia for just plain using "the Houndstooth Mafia logo with a houndstooth pattern in the background" — and "The lawsuit also seeks to overturn a ruling by the U.S. Patent and Trademark Office Trademark Trial and Appeal Board that allowed the Houndstooth Mafia's trademark application to go forward." So move those chains, boys: the very dubious houndstooth trademark question is very much in play! And thanks to blogger Gerry W. Beyer, reporting the story on, of all things, the Wills, Trusts & Estates Prof Blog — of all places! Room in IP blogosphere for everyone, Gerry! Just watch out when one of us starts blogging about dead people. (Which could happen any day, I suppose.)
There's a place, of course, for more basic fare. Sometimes clients, and prospective clients, might — you hope — find their way your IP blog. Don't you want them to have some idea what you're talking about? I suppose, though I, for one, have all but given up on that. So kudos to Staci Riordan, who explains, at her Fashion Law blog, what's all this you hear about mergers and acquisitions, what the difference is between them and why they're of particular interest to fashion-law types:
With each merger or acquisition comes the opportunity for creativity and growth! For example, it will be exciting to see how JustFab and ShoeDazzle create a cohesive market for online shoppers as they combine JustFab's personalized shopping experience with ShoeDazzle's amazing sales. Similarly, it will be interesting to watch and see if ABG maintains the look of the Juicy Couture brand (that is so recognizable to us all), or if it will pursue new ideas and directions!
See what I mean? This is not to suggest that we fashion bloggers can't wax philosophical. Because we can, and we do! F'risntance, check out this excerpt from a recent post at Case Clothed:
High fashion luxury labels have found themselves to be stuck somewhere in between our youth culture's fashion craze: streetwear parodies of well-known luxury labels, and a trademark infringement lawsuit. David Lipke, in his article, "Designer Parodies Test Legal Boundaries in Streetwear" from Women's Wear Daily, demonstrates how various streetwear designers have released clothing featuring designs bearing a strong resemblance to luxury logos, but in a humorous manner. Despite the initial appeal to this trend being founded by the underlying admiration of high fashion's luxury brands, the upshot for these streetwear designers' satisfying streetmarket consumers could be unpleasant legal ramifications.
Hermès has been the most recent streetwear target, as seen on "Homiés" sweatshirts and hats by designer Brian Lichtenberg, as well as Hotmès hats from Unif, or Hornès designs from What About Yves. But these are not the only droll-designers sharing the "streetmarket limelight." There was also Balmain, caricatured by Reason Clothing's "Nawman" T-shirts; and LPD New York's "Dream Team" designer jerseys. The list most certainly continues…
So where can the line be drawn between the freedom of artistic expression and a potential lawsuit?
These are serious policy questions; read the rest of that serious post by Andriana Chryssikos, to see how some serious people are answering them.
I could go on. And I will — but now, international-like. How could a chap do an IP-blogging-theme Blawg Review without a peek at what those stiff-uppercase Britons have to say? Mangle the American language as they will, there's always right proper blogging to be reckoned with, at the very least, at The IPKat. And the beauty of the post I've chosen by Laetitia Lagarde over there is that it elides us ever so smoothly from the British Isles to several spots on the Continent itself — and, like the famed Chunnel, does so without us having to get the slightest bit wet. That's because the post is about the Belgian battle over the rights to that dashing globe-trotting teen journalist, Tintin!:
Hergé's estate management is separated as follows: Casterman publisher (now managed by Charlotte Gallimard) deals exclusively with publication rights, Hergé Foundation manages archives and protection of the work of art and Moulinsart handles the commercial exploitation. In the 1990's, finding quality of merchandising products disrespectful of the original works, Fanny's second husband Nick Rodwell and head of Moulinsart–changed commercial strategy and starting licencing exclusively production of the derived works and memorabilia in Brussels.
Moulinsart has also been enforcing protection of Tintin's IP rights, including against unauthorized reproductions by Tintinophiles [in Captain Haddock's colourful language "Ten thousand thunderingtyphoons! Those freshwater swabs"]. In 2003, a website of Canadian fans was forced to close after refusing to enforce a Tintin's Internet users chart
Hergé's successors have in turn suffered from polemic litigation, including accused of racism ; the Court of Brussels in December 2012 refused to ban sales of 'Tintin in Congo' holding that "a book written in 1930 could not contravene the spirit of the 1981 anti racism law".
"Licencing" — you've got to love it! If you can follow that, maybe you can 'splain me this lot — Yasmin Churcher's explanation at IPso Jure of where, exactly, we stand on that Cadbury claim over the color purple. Not as of the last time we looked, when it seemed kind of simple — doesn't it always to those Yanks! — but, roh-ther, as of right now:
Cadbury has lost its five year battle to register a distinctive shade of purple (Pantone 2685C) as a trade mark for its milk chocolate bars. Cadbury's argument that registering a specific colour would not give them unfair competitive advantage was rejected by the Court of Appeal, which ruled in Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 (04 October 2013)that Cadbury's formulation does not comply with the requirements for trade mark registration, lacking 'the required clarity, precision, self-containment, durability and objectivity to qualify for registration'. Specifically, the definition of the 'predominant colour' of its packaging fell short of 'necessary precision' as demonstrated by the attempt to register 'multiple signs' using the purple shade in a variety of permutations rather than as a consistent single block of colour. Sir John Mummery added that a colour trade mark would give Cadbury a 'competitive advantage' and place its competitors at a disadvantage.
Cadbury, trying perhaps to salvage something from the exercise, says the right to protect the colour from those seeking to pass off their products as Cadbury chocolate remains unaffected. Nor does the judgment make colour trade marks in general unregistrable:Cadbury could have succeeded with a slightly different application, although the commercial value of doing so might explain why they went the way they did.
Quite. IP overreaching is IP overreaching, even in the defense of Queen, Country and chocolate. For example, and back in the U.S. of A., I'm always partial to discussions concerning the abuse of trademark and copyright law to snuff out negative reviews or commentary about trademark holders. So, it appears, is my friend Michael Atkins, discussing a recent presentation he gave on the topic a couple of months ago:
The theme of my talk is that a trademark owner's ability to stop others from saying bad things about its brand is limited.
Quite limited.
Just ask Kenneth Seaton, owner of the Grand Resort Hotel and Convention Center. He sued TripAdvisor LLC, who runs the TripAdvisor travel Web site. TripAdvisor named the Grand Resort Hotel to its "2011 Dirtiest Hotels" list. You can guess its commentary wasn't very favorable.
Mr. Seaton asserted claims for defamation, false-light invasion of privacy, trade libel/injurious falsehood, and tortious interference with prospective business relationships.
The district court threw out the case in short order. It found Mr. Seaton could not prevail on his claim given TripAdvisor's broad First Amendment protection. On Aug. 28, the Sixth Circuit affirmed. . . .
Brand owners should take note. They can take vigorous steps to protect against damage to their brand through confusingly similar trademark use, false advertising, and other forms of unfair competition. However, they should know their rights have limits — and the First Amendment is one of them.
As the Grand Resort Hotel demonstrates, trying to silence critics or erase bad reviews by going to court is a bad idea.
It is, isn't it? Not so much the case, in contrast, regarding the Patent Office, however, where apparently a petitioner can't go wrong, as Gene Quinn reports at his IPWatchdog blog:
It has been a while since I have seen an issued patent that made me want to jump out of my skin, but earlier today as I was sitting at my desk working, the patent search firm I use — Walsh IP — contacted me with a truly bizarre patent that they stumbled across.
Take a look at U.S. Patent No. 8,240,155, which relates to a method of presenting beer. Actually, the invention is a method for serving beer from a font and includes chilling a beer glass and then dispensing the beer into the glass to create a head of foam on the beer. . . .
It is hard to believe this is the same Patent Office that will at times actually tell you with a straight face that software is not patent eligible because it merely does what a human could do. This type of ridiculous patent was supposed to be prevented by the Supreme Court's decision in KSR v. Teleflex! Does the Patent Office have no sense of fairness? How is it fair to put real innovations through many years of arduous patent prosecution and issue a gimmick patent like this for pouring cold beer into a cold glass?
I find this patent so exasperating because the patented method essentially breaks down to nothing more than chilling a container to at least -5° C and then filling that container with beer that is above 0° C.
Hey, sit down, Gene, and have a brew! Kidding! Maybe we all need one, actually, when you consider that if the government is so good at delineating IP ownership rights, it'd be have to be even better if we were going to let it dole out serious stuff like medical treatment and prescriptions…
I digress, however. (Is that covered?) Back to my regular draft, Eric Goldman writes about what he calls, quite accurately, "a classic Internet trademark law question" — that is:
What happens when there's a small, regional trademark and a national player want to adopt the same trademark on the Internet?
In August 2012, a New York district court held that a senior user of a common law trademark could not claim exclusive use of that mark on the Internet. While the court agreed that plaintiff Dudley was the senior user of the common law trademark HEALTHSOURCE CHIROPRACTIC for chiropractic services, it held that Dudley's rights were limited to his use in the greater Rochester, New York and that the defendant's use of the mark on the Internet did not violate the common law trademark rights. . . .
This case is interesting because it pits legitimate concerns against compelling policy arguments. First of all, I can understand why Dudley would be upset–it seems that he has accumulated a considerable evidence of actual confusion. Regardless, I agree with the court and Tomshack that to give Internet exclusivity to a senior common law mark user would be a much worse outcome.
As the court implies, it is not reasonable to give one concurrent user Internet exclusivity simply because the nature of the Internet makes it hard to stake clear zones of territorial rights:
The internet is not, however, a geographic territory to be subdivided; instead, it is a global communication medium that is accessible from anywhere on the planet. The internet has become vital for local, regional, national, and international communication.
Instead, the court ends with a nice quote on how trademark owners must adapt to lawful concurrent use on the Internet:
A trademark owner cannot reasonably expect to have exclusive use of a term on the internet . . . Users of a mark must develop ways to distinguish themselves on the internet beyond resorting to the trademark laws.
That really is a blog post that deserves its own blog post here, because this is a fundamental question those of us practicing in this area face on a regular basis. Like Eric, I like that last comment: Sometimes, you can and should build a brand by building a brand, not grabbing for official recognition of secondary-meaning territory where, or when, you're not entitled to it. You know what I'm saying, guys?
Indeed, planning a brand's life-cycle can be quite serendipitous. Consider what I stumbled upon at the very cool, but hard to fit into Blaw Review, Proof of Use blog: a very well-done bit of IP blogging from an unexpected source — the in-house blog of a newspaper, namely the Music Blog at The Guardian (UK, of course). Michael Hann writes there about the centrality of The Ramones' band logo, which features a takeoff on the Great Seal of the United States, in its brand development and, he argues, immortality. Says Hann:
It is an item of faith – for me, at least – that the Ramones are one of the greatest bands ever to have trodden a stage, but the fact that after they split in 1996 their name became something you see on T-shirts on so many high streets owed at least as much to a man called Arturo Vega as it did to Joey, Johnny, Dee Dee and Tommy (and CJ, Richie and Marky).
Vega, who died this weekend aged 65, was really the fifth Ramone. Not just their "creative director" and archivist but also their friend and confidant, he provided the band with their early rehearsal space (his loft), and more to the point he provided them with their logo, the presidential seal that has given the band an afterlife on the T-shirts that have slowly taken over the world.
Well, whatever — some seal, and a trademark, or something. (Is that allowed?) Hey, man, this is the end of the century! Or, rather, that was. At the end of the seventies, that is.
You had to be there, as I said on Friday.
And now that you are… well, here, anyway, and I've got your attention, an observation.
Most of the blogs I've linked to in this Blawg Review, or slice of Blawg Review, have been online for quite a few years — some of them even longer than the nine years that LIKELIHOOD OF CONFUSION® will have been published when, with God's help, we turn the page this coming January 2014. So too the other participants in this meta-Blawg-Review carnival, whose readiness to participate in this brilliant project, nailed down in a series of email exchanges over what seems to have been about seven minutes, guilted your lazy, cynical blogger into doing Blawg Review this one more time.
So, with a few exceptions — selected because I have hope, as naive as ever — I have mostly linked here to these other old, still-crazy-after-all-these-years IP bloggers because they, oddly enough, have the most to say about intellectual property law and, far as I can tell, have precious little to do with social media gurus and their ilk.
Blogging is hard, but so is running marathons. Success at both is measured only in the long run, and I guess we haven't hit the wall yet.
And that's why … well, I already said it Friday, didn't I?
Blawg Review #325 continues here, at Charon QC.
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