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?

It’s Summertime & the Living Is International

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Agora, Inc., a publisher of a newsletter and the website internationalliving.com, has sued Bo Rinaldi and International Living, a Lake Oswego publisher of the website internationalliving.co for trademark infringement. Agora seeks a preliminary injunction against use of its mark and the domain name internationalliving.co.
Agora v. Rinaldi & Int’l Living

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.

Fan Fiction

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Lev Grossman writes about fan fiction in Time, exploring the issue of copyright and the rights of authors:

There are plenty of major writers who can’t abide fan fiction based on their work. They post statements about it on their websites. Orson Scott Card, author of the classic Ender’s Game books, has written, “I will sue, because if I do NOT act vigorously to protect my copyright, I will lose that copyright … So fan fiction, while flattering, is also an attack on my means of livelihood.” Anne Rice is every bit as vehement: “I do not allow fan fiction. The characters are copyrighted. It upsets me terribly to even think about fan fiction with my characters. I advise my readers to write your own original stories with your own characters.”

The legal argument against fan fiction isn’t actually very strong. The scenario Card describes, in which an author’s rights are diminished because he or she doesn’t actively defend them, is associated more with trademark than with copyright. But in practice, a fan-fiction writer who receives a cease-and-desist letter has almost no choice but to comply. No fan wants to go through the bother and expense of litigating against a celebrity or a major corporation. As a result, no definitive legal precedent exists.

But there’s more to argue about than legal niceties. A lot of authors feel emotionally and viscerally that nobody else has any business using their characters. George R.R. Martin, author of A Game of Thrones, writes on his website, “My characters are my children … I don’t want people making off with them, thank you. Even people who say they love my children.” Ursula K. Le Guin, another giant of the fantasy canon, writes, “To me, it’s not sharing but an invasion, literally — strangers coming in and taking over the country I live in, my heartland.”

Copyright law is an exception to our free speech rights, Constitutionally provided as an economic incentive for authors to create works. Since copyright is an exception to our fundamental value of not having the government interfere with our speech without a really good reason, authors and artists should think long and hard about whether this curb on free speech is properly balanced against the emotional connection they have with their work. And Grossman is right; Orson Scott Card’s statement on copyright law is incorrect. Failure to enforce a copyright does not mean you will lose it.