Category Archives: Trademark

Not So Arbitrary: The Sounds of Brand Names

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Stanford linguist Dan Jurafsky has a must read post for anyone interested in brand naming about how vowel sounds change how we perceive the qualities of things:

A number of studies over the last 100 years or so have shown that front vowels in many languages tend to be used in words that refer to small, thin, light things, and back vowels in words that refer to big, fat, heavy things. It’s not always true, but it’s a tendency that you can see in any of the stressed vowels in words like little, teeny or itsy-bitsy (all front vowels) versus humongous or gargantuan (back vowels). Or the i vowel in Spanish chico (front vowel meaning small) versus gordo (back vowel meaning fat). Or French petit (front vowel) versus grand (back vowel).

Jurafsky applied the findings from these studies to the flavor and brand names of ice cream and crackers:

Here are some examples of stressed back vowels in ice cream names:

Rocky Road, Jamoca Almond Fudge, Chocolate, Caramel, Cookie Dough, Coconut

And here are samples of the many cracker names with front vowels; note the extraordinary number of ? vowels:

Cheese Nips, Cheez It, Wheat Thins, Pretzel thins, Ritz, Krispy, Triscuit, Thin Crisps, Cheese Crisps, Chicken in a Biskit, Snack sticks, Toasted chips, Ritz bits

Of course there are exceptions: vanilla, the orange blossom of our day, has an I. But most of the front vowels in ice cream flavors tend to be the names of small thin ingredients in the ice cream: (thin mint, chip, peanut brittle).

He has much more, including a brief linguistic history of frozen desserts.

An Example of Nominative Fair Use

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A funny video produced by Office 365 (Microsoft’s cloud-based software) about Google’s computer algorithm that searches Gmail messages for keywords in order to display relevant advertising:

This use of Google’s trademarks, both the red-lined envelope and “Gmail,” are classic examples of what’s known as nominative fair use. Nominative fair use is the ability of someone or a business to use a trademark of another to describe or identify the goods or service used in connection with that trademark. In the Ninth Circuit (the federal courts of Alaska, California, Washington, Oregon, Nevada, Hawaii, Idaho and Montana), the test is whether the goods or services at issue can be easily identified without using the trademark; the non-trademark owner only uses as much of the trademark as necessary; and the non-trademark owner didn’t do anything that would suggest the trademark owner sponsored or endorsed the use of its trademark. So for this example, Microsoft needed to use the Gmail service marks to identify the Gmail service; it only used the mark to make the point that Gmail is intrusive; and because it also makes fun of Gmail, no one would think that Gmail sponsored the video.

Of course, just because fair use may save you from trademark infringement, it doesn’t necessarily save you from a false advertising or defamation claim.

Urban Homestead as a Trademark & Cancellations

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The ABA Journal (the magazine for the American Bar Association) has written about the Dervaes Family and the fight to keep its “Urban Homestead” trademark registration. Although the story is good, even more interesting are the comments, which feature multiple arguments by someone named “marie” and Sundari Kraft, the author of The Complete Idiot’s Guide to Urban Homesteading. Marie, a passionate defender of the Dervaes family, pleads that its enforcement efforts are quite benign:

First of all, according to the Dervaes, the letters were not a “legal notice” as it was sent by Jules Dervaes, not an attorney. According to the Dervaes it was a informational letter telling others about the newly acquired trademarks. It was others who have attributed motives and the scope of the letter and misinterpreted its contents.

If the letters she is referring to (there are may also be other letters sent by the Dervaes Family’s attorney that are more strongly worded) are anything like the letter posted on the Dervaes Family’s Path to Freedom website, the “information” provided is not all that friendly, or suggestive:

In addition, Dervaes Institute owns numerous trademarks which should be properly acknowledged if used. These protected names and images include the following registered trademarks:

URBAN HOMESTEAD®
URBAN HOMESTEADING®
PATH TO FREEDOM®
GROW THE FUTURE®
HOMEGROWN REVOLUTION®
FREEDOM GARDENS®
LITTLE HOMESTEAD IN THE CITY®

Also, THE TEN ELEMENTS OF URBAN HOMSTEADING copyright has been filed with the Library of Congress.

If your use of one of these phrases is not to specifically identify products or services from the Dervaes Institute, then it would be proper to use generic terms to replace the registered trademark you are using. For example, when discussing general homesteading or other people’s projects, they should be referred to using terms such as ‘modern homesteading,’ ‘urban sustainability projects,’ or similar descriptions.

Even though the words “cease” or “desist” are not present in this letter, the intent is clear: the Dervaes Family is asserting exclusive legal rights to “urban homestead” and “urban homesteading” and directing others to substitute other terms for its registered trademarks.

Elsewhere in the comments, two attorneys chime in. Paul Keating, a trademark lawyer residing in Barcelona, places the controversy in the context of free speech rights:

This entire comment string clearly shows many of the problems with today’s trademark registration system and the problems it causes. All too often obvious terms are registered. The USPTO should, IMO more aggressively enforce the registration process and the presumptions (which currently favor registration) should be reversed. The declaration at the bottom of each application should be more strictly viewed by the courts. The applicant should be required to actually sign it (not his/her attorney). How could the applicant in this case, for example, assert that they have any exclusive rights in the term?

The biggest issue here, however, is in the enforcement side. Take-down notices are easy to write and the recipients default to complying to avoid liability. This places the burden upon the third party who in the meanwhile had their site, blog, etc, terminated.

Trademarks are an exception to free speech. The original intent was to prevent consumer confusion. They are not, and should not be considered to be, a property right. I am personally becoming concerned at the degree to which the pendulum seems to have swung in favor of IP rights holders in general. It does not bode well for society and all of the overly aggressive tactics being used will hopefully soon come home to roost.

(I’m not sure, however, that the prevention of consumer confusion is trademark law’s sole reason for being. Trademark law may have always been intended to prevent unfair diversion of business and goodwill.)

TiM Atty raises the point that the examination process is fallible and that cancellation petitions function as a backstop against that fallibility:

Marie, I don’t know whether you practice in TM law or not but, if not, I’m impressed by your researching of the subject. However, I felt I had to comment on your statement in 30 that “The USPTO NEVER legally registers a generic word. That’s a legal impossibility.” That statement is either completely incorrect, or I’m misunderstanding your use of the word “legally”. The USPTO registers generic terms regularly, and it’s completely legal. The TM Examiner’s can make mistakes either by not researching a term thoroughly or not having access to the industry information in order to provide the evidence for the genericness refusal. It’s an evidence-based process and there is nothing illegal about registering a generic mark, it’s just a mistake. But that’s part of the reason for cancellation proceedings. So people in the industry can cancel a generic term if they have standing.

What is a cancellation proceeding? An owner of a trademark may file a petition of cancellation with the Trademark Trial and Appeal Board, which is an administrative court that makes decisions about federal trademark registrations, to cancel another party’s registered trademark if that registration harms, or will harm, its own mark. Depending on how long the mark has been registered, the cancellation petitioner can challenge the registered trademark for different reasons. If the mark is not yet incontestable (the registration is less than 5 years old), the challenger may seek cancellation of a registration because it is similarly confusing to the challenger’s mark or the mark is descriptive and has not acquired distinctiveness.

A registration may be cancelled at any time, even if it has become incontestable (has been registered for 5 years or more), for the following reasons: it’s functional or generic; it’s been abandoned; the registration was obtained fraudulently; it’s immoral, deceptive, scandalous or disparaging; falsely designates the origin of alcoholic drinks; incorporates or uses any governmental insignia; or uses the name, likeness or signature of a living person; or if it misrepresents the origin of goods or services. Collective and certification marks may also be cancelled for reasons specific to those types of marks.

Kelly Coyne and Erik Knutsen, authors of “The Urban Homestead,” petitioned to cancel the “Urban Homestead” and “Urban Homesteading” registrations on the grounds they were descriptive, generic, didn’t have acquired distinctiveness and were obtained fraudulently. Their petition:

Petition to Cancel “Urban Homestead”

Cancellation proceedings before the TTAB are similar to court proceedings and the owner of the challenged registration has an opportunity to respond. The Dervaes Family’s answer:
Dervaes Answer to Cancellation Petition

YSL Is Pumped!

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Judge Marrero of the SDNY district court has denied Louboutin’s preliminary injunction request against Yves St. Laurent’s use of a red sole in its monochrome red pump ladies shoe.
Christian Louboutin v Yves Saint Laurent

Marty Schwimmer summarizes the issues and makes the following points:

The court has now dismissed Louboutin’s motion. It is a long decision that makes a lot of points that are, imho, color depletion and shade confusion arguments. However at the core of the holding, the court seizes on YSL’s point about the competitive need in fashion to be able to, for example, sell monochrome shoes, and sell red monochrome shoes, and sell red dresses that go with red shoes, and holds that red soles are functional. On to the Second Circuit.

The thought occurs: maybe, Louboutin’s trademark is a red lacquered sole when used with an upper that is any color other than red. According to this decision, any manufacturer’s red shoes could use red soles. But does any manufacturer’s black shoes need red soles?

Charles Colman’s provides Judge Marrero’s “blockbuster” quote:

Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection even if it has gained enough public recognition in the market to have acquired secondary meaning.

Professor Susan Scafidi uses Judge Marrero’s decision as an example of why fashion designers need copyright protection:

Judge Marrero, however, hung his order on the hypothetical example of Picasso attempting to prevent Monet from using the color blue in the Water Lilies series because the color had been Picasso’s hallmark during his Blue Period. Unthinkable from an art history perspective, of course. The court acknowledges that no analogy is perfect — but then goes on to claim that both painting and fashion design exist in the overlapping spheres of art and commerce, and that neither is well served by individual monopolies on color.

Setting aside the troubling conflation of use of a red sole as a trademark versus use as a design element, the separation of which is the true challenge in this case, the court’s analogy raises an essential question: Why are paintings characterized as “art” and entitled to full copyright protection while fashion receives almost none?

Who Knew? A Galette Trademark Registration

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I stumbled on this product configuration trademark registration for pastries. For years I’ve been making rustic fruit galettes, a dessert made with pie dough. Instead of using a pie tin or pan, the fruit is placed on a circle of dough and then the edges are folded up and over each other (not crimped), creating some overlap that holds in the fruit. Until now I thought this was a traditional French way to prepare a fruit dessert. Au contraire.

Evidently, the folded edge is not functional and not a generic method of enclosing fruit in dough to be baked, but actually is a source indicator for Chudleigh’s, a commercial bakery in Ontario, Canada. The folded dough shape is designed to evoke apple blossoms, which in turn are meant to evoke an apple orchard. Because the bakery also operates an apple orchard, the pastry shape suggests Chudleigh’s is its source. So says Chudleigh’s office action response.

In that response, Chudleigh distinguished its pastry from Hostess and McDonald’s fruit pies. And then compared the pastry to traditional pies:

Finally, even if Applicant’s BLOSSOM product is not compared to snack cakes, but instead to baked goods in general, applicant is aware of no similar pie shape. Applicant’s BLOSSOM pastry has large folds arranged in a concave circle. The typical tart or piecrust is fluted by pinching the edges of the crust around the convex edge of the pan.

(Emphasis mine.)

Feast your eyes on this gallery of images for comparison. Any dessert lovers or bakers out there have an opinion on this? Is this a distinct and unique shape for a pastry and therefore capable of identifying source? Is the folded over pie edge functional because the shape is merely the result of an easy method to keep fruit enclosed? Is this shape a smaller version of a traditional galette? Where’s the acquired distinctiveness?

 

(Galette photo by Arnold Gatilao, CC Attribution 2.0 license)

 

The real reason for Louboutin’s infringement lawsuit against Yves Saint Laurent

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The Times reports about dress codes in New York clubs as a means to keep out customers deemed undesirable.

For women, shoes are key. “Minimum five-inch heel,” he said. “Christians are our favorite,” he added, referring not to the faithful but to Christian Louboutin, the designer known for his red soles. Jimmy Choo and Christian Dior are also welcome.

It makes sense that Louboutin would have a trademark registration for red soles to prevent knock-offs and counterfeiting, but it was kind of perplexing why it would sue deep-pocketed, well-lawyered YSL. But now I know. How else to make it easier for New York doormen to keep out the riff-raff those who can’t afford or would want to pay $1000 for a pair of shoes?

Preliminary injunctions filings can be found on The Trademark Blog.

Even more Dropbox

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Now it’s getting interesting. In a previous post about Dropbox I guessed that the extensions for time to oppose the Dropbox trademark registrations were likely to be over whether Dropbox was descriptive. Yousendit was granted an additional 60 days to oppose, but Officeware (owner of filesanywhere.com) and Box.net have filed their oppositions, not because of a contention that Dropbox is descriptive, but because of claims of prior use and likelihood of confusion with their marks.
FilesAnywhere Opposition to Dropbox Registration
Box.net Opposition to Dropbox Registration

A reader brought to my attention Officeware’s trademark infringement lawsuit in Texas, alleging priority for filesanywhere.com’s common-law trademark use of “Dropbox.”
FilesAnywhere v. Dropbox Complaint

Filseanywhere asserts use of “Dropbox” since 2004 and use of a blue open box logo since 2006. Dropbox was founded in 2007.

Officeware is owned by Immediatek, a company traded on the OTC Bulletin Board. Immediatek had revenues of about $2 million last year, but a net loss of $800,000. Billionaire Mark Cuban is a major investor of Immediatek. Dropbox is a private company, but had revenues of more than $100 million in 2010 and has significant venture capital funding.

Oregon Trademark Database

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The State of Oregon has made publicly available a list of active Oregon state trademark registrations. Unfortunately, the list doesn’t have descriptions of goods and services, a key element in any trademark rights analysis.

The processing fee for an Oregon state trademark is $50. Although an Oregon trademark doesn’t confer all the benefits of federal registration, it does have some benefits over a common-law trademark, including trademark rights extended to the entire state without having to prove the geographical reach of your trademark use and triple damages of defendant’s profits as well as attorney’s fees.

More Dropbox

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I previously wrote about Professor Tushnet’s contention that Dropbox is descriptive. In the comments to her post about Dropbox, Professor Tushnet asks:

What are the good alternatives to “dropbox” for “file uploads that only authorized people can download”? Serious question: I don’t know what the developing lingo is.

I think her description is unnecessarily long–Dropbox is simply an online file sharing (and storage) service. Alternatives that are descriptive would be some variation of that description, like iFileShare, FileSync, or eDocuStorage (sorry, I’m a lawyer not a naming professional). But we don’t need my deficient branding skills to come up with a catchy, suggestive in meaning alternative since Apple has recently launched a new computer feature called AirDrop. Although AirDrop’s function of sharing files from one computer to another directly is not identical to updloading to or downloading from a cloud or SaaS server, AirDrop easily could be used as a suggestive term to identify the source of a cloud-based file sharing service.

Another concern among Dropbox’s competitors might be a Facebook type of problem, where the social media behemoth has claimed both Face and Book as protectable trademarks for social media. If Dropbox is judged to be inherently distinctive, then it would have a stronger basis to assert trademark rights in either Box or Drop for document sharing and storage.

Swoosh

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The Oregonian profiles the Nike swoosh and its origins.

Carolyn Davidson, pushing back disappointment that spring day in 1971, pressed on. One by one, she presented a handful of sketches. But ultimately the three men circled back to the checkmark, her favorite.

“Well, I don’t love it,” Phil Knight said at the time, “but maybe it will grow on me.”