Category Archives: Trademark

Dropbox descriptive?

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After receiving an email from YouSendIt offering the use of a personal dropbox, which is not a Dropbox dropbox, Georgetown law professor Rebecca Tushnet asks if the use of Dropbox is descriptive fair use. This question resonated with me because I currently have a massive drop box in front of my house as my kitchen gets remodeled. And because I distinctly associate the term drop box with the dumpster outside, to me DROPBOX for storing files in cyberspace is suggestive and not descriptive.

Dropbox has had some difficulties with its trademark registration, but not because it received a mere descriptiveness refusal. Rather it had to overcome a §2(d) (likelihood of confusion) refusal based on two registrations, one for DROPBOX for “Computer software and downloadable software for use in database management, primarily in the field of life sciences research” in International Class 09 and services listed as “Providing temporary use of non-downloadable computer software for use in database management, primarily in the field of biomedical research” in International Class 42, and the other for DROP BOX HD for services listed as “Providing online non-downloadable software for uploading and transferring advertising programs and media advertising communications via global communications networks” in International Class 42.

Dropbox tried to persuade the Examiner that its mark was not confusingly similar but eventually had to amend its description of goods and services as follows:

IC 009. G & S: Computer software and downloadable computer software used to store and share data, documents, files, information, text, photos, images, graphics, music, audio, video, and multimedia content with others via global computer networks, mobile telephones, and other communications networks for the purpose of file back up and synchronization, not including software for use in database management in the field of life sciences research or software for uploading or transferring advertising programs and media advertising communications

IC 039. G & S: Storage of electronic media, namely, data, documents, files, text, photos, images, graphics, music, audio, video, and multimedia content

IC 042. G & S: Providing temporary use of non-downloadable computer software used to store and share data, documents, files, information, text, photos, images, graphics, music, audio, video, and multimedia content with others via global computer networks, mobile telephones, and other communications networks for the purpose of file back up and synchronization, not including software for use in database management in the field of biomedical research or software for uploading or transferring advertising programs and media advertising communications; hosting of digital content on the internet

This kind of disclaimer is one way to get past a particularly difficult §2(d) refusal and satisfy the Examiner, although registrants with similar marks still have a chance to oppose during the opposition period. The Dropbox application, however, has been stalled because three companies filed extensions of time to oppose, YouSendIt, box.net and OfficeWare, none of which are the owners of the registrations cited in the Examiner’s §2(d) refusal. YouSendIt and box.net have cloud-based document storage businesses and I would guess that they agree with Professor Tushnet that the mark is descriptive and Dropbox Inc. has not exclusively used the mark.

Passing off hard to Swallow

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Swallow Ski Company, a Japanese manufacturer of ski and snowboarding equipment, recently filed a complaint in Oregon federal district court against Snowjam LLC, a Massachusetts company. In 1996, Swallow Ski entered into an oral licensing and distribution agreement with Snowjam. Snowjam sells and distributes Zuma snowboards, but is now under new ownership. On May 23, the original owner of Snowjam, after he had sold the company, memorialized the oral licensing agreement with a written agreement executed by him and Swallow Ski. The agreement expressly provides that the licensing of the trademark would not survive any change of ownership. The complaint alleges that because of the non-assignment provision of the licensing agreement, use of Swallow Ski’s Zuma trademark results in false designation of origin and breach of contract.

Swallow Ski v. Snowjam
Swallow Ski just filed a use-based trademark registration application on May 13, claiming use since 1996. Snowjam filed its own application about two months earlier on March 23, 2011, claiming use since 2008.

Your Animal Doing a Trademark

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Matthew Latkiewicz at GrubStreet has a funny article about the taxonomy of wine labels. A taste:

Animals Doing Things
A close cousin of Diluted French, these labels often contain exactly the same information as the D.F., but instead of featuring a chateau, they are named for an animal, which is often doing something. That “something” is usually leaping.
What to Expect: The Animal label began as a solidly American genre, but those Australians sure have taken to it, though with way more marsupials. They’re often from big producers, but these wines tend to stick their landings. (Yes, that is a gymnastics reference.)

If you’re a wine producer, your animal doing stuff is serious business and needs a trademark attorney to make sure your animal doing stuff isn’t confusingly similar to another wine’s (or beer or spirits) animal doing stuff.

(via kottke.org)

Pendleton v. Pendleton, Opposition Filed

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The federal court lawsuit is getting the media attention, but on May 17, Pendleton Woolen Mills also filed a TTAB opposition against Pendleton Round-Up’s application for fragrances:

Pendleton Woolen Opposition Filing

Disney Drops “Seal Team 6″ Trademark Registration Applications

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The Wall Street Journal has reported that Disney has expressly abandoned its trademark registration applications for “Seal Team 6.” In the article, an anonymous source explained that:

Disney’s intentions were misunderstood, according to a person familiar with the entertainment company’s plans. Disney, which owns the ABC television network, is considering a TV show about the elite squad, similar to other fictional dramas about real-life arms of the military, such as “NCIS” and “JAG.”

OK, I get it, it was just one big misunderstanding. Except that, there is no intention in trademark registrations. An owner of a registered trademark has an exclusive, nation-wide right to prevent anyone else from using the same term or any confusingly term in connection with the goods or services covered under the registered trademark. When Disney filed the application for Seal Team 6 for “entertainment and education services” (which it would have to amend eventually with a more specific and narrow description), it was beginning a process of claiming the sole right to title television programs or motion pictures with “Seal Team 6.” Although Disney may make noises that what they really wanted was to protect a TV series like “NCIS” or “JAG,” securing registration would have given them a basis for asserting the right to stop all types of education or entertainment programs or movies that had as their subject Seal Team 6 from using the term “Seal Team 6″ in their titles. Disney’s original “intention” wouldn’t have had anything to do with its exclusive right. And although other uses would have had defenses available, these are only defenses; the producers would have had to hire lawyers to help them defend their rights to use “Seal Team 6.”

As my trademark and copyright professor in law school repeatedly said, “Don’t f–k with the Mouse.” (I’m not sure if Professor Janis actually dropped the f-bomb in class, but his intent was clear.) Disney has a very expansive view of intellectual property rights, both in its legal enforcement and efforts to shape our IP laws, and I wouldn’t place any faith in Disney showing restraint when it comes to securing and enforcing rights to a name that should be available to all of us.

Knock-off? Knope.

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Crate & Barrel Walker

Blu Dot's Strut

The LA at Home blog discusses Crate and Barrel’s Walker table, a minimalist, modern dining table made out of MDF (the article euphemistically says “engineered wood”) and a steel frame. The table is remarkably similar to the Strut table made by furniture design and manufacturing firm Blu Dot, a popular table that’s been featured in major design blogs and magazines. Crate and Barrel’s table, however, is actually designed and made by Blu Dot. Continue reading →

No Trademarks Were Harmed–Certification Marks

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An Academy Awards favorite, “The King’s Speech,” ran into a bit of legal trouble (now resolved) with the American Humane Association (AHA), an animal welfare organization. Although the press covered this as a trademark dispute, the movie’s use of the phrase “No Animals Were Harmed” in the movie’s credits is a use of the AHA’s certification mark, not its trademark. In the United States, the AHA’s film and TV unit verifies whether conditions on a movie or TV set are safe for animals.  If the unit’s Certified Animal Safety Representative determines that the proper guidelines are met, the film can include “No Animals Were Harmed” in the end credits. But “The King’s Speech,” a UK production, included “No Animals Were Harmed” without receiving certification from the AHA. Continue reading →

Wheatgrass for Pets–A Tale of Two Marks

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I almost titled this post A Tail of Two Marks, but in a moment of restraint I decided against it. I apologize for even considering it. Anyway, the NY Times has a brief article on two companies that are marketing and selling wheatgrass as food for pets, and I want to nibble at discuss the trademark implications of the brand name choices, “Pet Salad” and “Pet Grass.” Although the marks are similar, they have significantly different trademark rights as a consequence of their distinctiveness, where one is inherently distinctive and the other is not. On the spectrum of distinctiveness, which is how a trademark’s ability to perform its source identifying function is assessed, it’s often hard to predict with certainty whether a mark is descriptive or suggestive even though the consequences of such a determination are significant. Continue reading →

A Cautionary Tale

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A credit union in Billings, Montana was forced to change its name of Avanta Federal Credit Union to Altana Federal Union.  When choosing its name, the credit union only checked with the state of Montana and the National Credit Union Association, but failed to obtain an opinion from a trademark attorney regarding the availability of the name.  As a consequence, the credit union must spend about $80,000 to change all its stationary and signs after Advanta Bank in Utah objected to the similarly sounding and spelled mark.

The Gazette article notes that Avanta and Advanta are “neological” names.  While it’s true that coined or fanciful marks can be good choices for trademarks, both of these appear to be closely derivative of the word ‘advantage’.  Chances are if you’ve thought of a form of ‘advantage’, so has someone else, which increases the chances that your new brand may be infringing a prior trademark use. Originally published June 19, 2009.

Update: unfortunately, Advanta’s efforts to protect its brand couldn’t prevent it from going on the FDIC’s failed bank list.