Category Archives: Registration

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

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)

 

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.

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.

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.

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 →