Does Oprah Own the Power to Cause Reverse Confusion?

Oprah gets sued from time to time.  Back in the 1998 she was sued by Texas cattlemen for slandering meat.  Thankfully for free speech, she won.

This time Oprah is being sued in federal court in New Jersey for trademark infringement after she began to use the phrase OWN YOUR POWER as part of a motivational campaign in O Magazine, online and in ads.   Her production company is also named in the suit, along with the campaign’s partners including Wells Fargo and Clinique.  The plaintiff is Simone Kelly-Brown, who owns a trademark registration for OWN YOUR POWER in the light blue stylization shown above.   (Query whether this thin, lower-case style conveys a sense of power.)   Ms. Kelly-Brown provides motivational services and her trademark registration covers “Workshops and seminars in the field of entrepreneurship, marketing, business networking, and other small business matters; Conducting workshops and seminars in personal awareness; Conducting workshops and seminars in self-awareness; Conducting workshops and seminars in making the transition to becoming an entrepreneur; Entertainment services, namely, providing live and on-line radio programs in the field of making a transition to entrepreneurship”.

I’m among the millions who have high respect for Oprah, but I think her lawyers dropped the ball on this one .  The wording in the marks is identical.  The services are close.  This could rise to the level of reverse confusion, which occurs when the new user of a mark is so well-known and/or puts enough marketing dollars behind it that the mark becomes closely associated with the new user, and consumers think the first user’s product or service comes from the new user.   As a hypothetical example, imagine that the richest woman in entertainment, who has her own media conglomerate, starts to use and extensively advertise the trademark of a small motivational services company.  Oh, wait a second…

Oprah may own OWN, and she is quite powerful, but in this case I don’t think she owns the power.

Float Like a Butterfly, Sting Like a Bee, You Cheapen my Trademark, You’re Cheapening Me!

Many years ago, I was in a diner with friends when Muhammad Ali came in.  Naturally lots of people rushed up to see him, and I got crushed up against him for a moment.  As I strained my neck to look up and see his face, I thought, this is a big guy!  (I never did find out why the boxer formerly known as Cassius Clay was in a diner in Bergenfield, New Jersey.)

That has no bearing on this bit of trademark news, except that they both involve Muhammad Ali.  His publicity manager, Muhammad Ali Enterprises LLC, is suing Kobo Inc. for using Ali’s phrase “float like a butterfly, sting like a bee” to advertise its e-readers, accusing Kobo of cheapening Ali’s brand.  Kobo also used quotations from reviews of the product that included “a real contender”, which Ali Enterprises says is a reinforcement of Ali’s persona.

Ali Enterprises has trademark registrations covering series of fiction and nonfiction books about athletes as well as various stationery-type items, clothing, mugs, lunch boxes and the like.  If you’re so inclined you can view the details of the registrations here and here.  (Is the mark really in use for all those goods?)

Kobo has other problems — it’s the e-reader that’s been heavily promoted by and aligned with Borders, which announced that it is shutting down completely.  Kobo may not be so much of a contender.  In any event, their choice of tag line got them crushed up against Muhammad Ali, and he’s a big guy.

Restaurants Battle Over HEART ATTACK Marks – Is This Something to be Proud Of?

I remember when the Second Avenue Deli, a New York institution, was actually on 2nd  Avenue.  Since 2007, though, it has been on 3rd Avenue, and they are planning to open another location on 1st Avenue.  (At least that averages to 2nd Avenue.)

So the location may not be truth in advertising, but at least the restaurant names some of its menu items accurately.  It offers an INSTANT HEART ATTACK sandwich, consisting of a pile of deli meat between two potato latkes.  They also offer a TRIPLE BYPASS sandwich. 

Heart Attack Grill, located in Arizona and Dallas, has registered trademarks for HEART ATTACK GRILL and TRIPLE BYPASS BURGER (as well as DOUBLE BYPASS BURGER and SINGLE BYPASS BURGER) and other “this could kill you”-themed trademarks.  The restaurant also serves unfiltered cigarettes.  The Chandler, Arizona location is currently closed for installation of defibrillators renovations.  The corporate address is, ironically enough, in Carefree, Arizona.

Heart Attack Grill sent the Second Avenue Deli a letter threatening legal action for trademark infringement.  Fearing that Heart Attack Grill was as serious as a heart attack,  Second Avenue filed a Declaratory Judgment action seeking a declaration of non-infringement.  Second Avenue invokes the kosher defense, stating that there is no chance consumers will be confused because it is a kosher meat restaurant, that Heart Attack Grill offers “decidedly not kosher” menu items and that “anyone looking for a cheeseburger…will not find [it] at the Second Avenue Deli.”  Second Avenue also claims that its use of the killer sandwich trademarks predates the use by Heart Attack Grill. 

Of course, these sandwiches don’t really kill their customers (at least not instantly).  If they did, the defense would be that there are no consumers around to be confused.

Phishers Try to Dazzle Us with Marking

After the Epsilon email security breach, I got emails from five different vendors letting me know that their data was compromised.  A few days later, spam containing mysterious links was sent from my email address to everyone in my address book.  A few days after that, I got an email that purported to be from my web-based personal email provider, with the subject line:

FINAL WARNING CONFIRMATION OF YOUR ACCOUNT ® ™!!!

The combination of words already makes no sense.  Did the phishers really think that adding in the “® ™!!! ” would give this an air of authenticity that would make me turn over personal information like my password and date of birth?

Sole-Searching – Footwear as a Trademark

This is the drawing that appears in Christian Louboutin’s trademark registration for red soles on shoes.  Only the red sole is the trademark; the drawing of the rest of the sandal is there to show placement of the trademark.

These shoes are a little too pricey for me (ok, a lot too pricey, not to mention that I can’t handle such a heel height for more than about 5 minutes).  But these are among the shoes of choice for celebs like Jennfier Lopez, who wrote a song called Louboutins, as well as one-named people like Beyonce and Madonna, and three-named people like Sarah Jessica Parker. 

Now Yves St. Laurent is selling shoes with red soles, and Louboutin has sued in federal court in Manhattan for an injunction and at least $1 million.  On the one hand, having the trademark registration creates a presumption that Louboutin’s red sole trademark is valid, so it may not be easy for YSL to defend against this.  On the other hand, YSL will likely counterclaim that Louboutin’s registration should be cancelled on the ground that the red sole does not identify Louboutin as the source of red-sole shoes but rather that the red sole is “aesthetically functional”, meaning that its attractiveness has led to its commercial success and that this functional feature is not protectible as a trademark.  If this does not settle early, al ot of experts stand to make a lot of money testifying as each side tries to prove its case.  Mr. Louboutin told the New Yorker, “I selected the color because it is engaging, flirtatious, memorable and the color of passion.”   Does this show that it identifies Louboutin as the source, or does it make the red sole aesthetically functional?  The footwear industry will be watching this one.

Hashtag Hijinks

I was a little annoyed yesterday by the April Fool’s jokes I was finding over the internet.  My LinkedIn homepage suggested J.R.R. Tolkein and Sherlock Holmes as people with whom I may want to connect.  And the bar graph on my blog stats page said I got ten times the page views that I really received (if only!).  But trademark infringement humor?  Now that’s funny!

The background – there’s a rapper named Chris Webby, and there’s an internet awards show called the Webby Awards.  And a hashtag is – well, it has something to do with Twitter.   (You can follow me on Twitter @LauraWinston.)

The law-related gossip blog Above the Law posted a story entitled “Cease and Desist Letter of the Day: Who Owns Your Hashtag?”   The story described Chris Webby’s objection to the Webby Awards’ use of the hashtag #Webby, and linked to rapper Webby’s cease and desist letter which the awards Webbys had posted on Tumblr (which now is emblazoned with “April Fools”, but wasn’t until late yesterday).  I was falling for the story until I saw the letter.  Although it contained the language of a serious cease and desist letter (I wonder what real letter they copied), the giveaways were that (1) there was no address of the sending law firm (and I’d never heard of the firm, which turned out to be fake), (2) the registration numbers for US trademark registrations that rapper Webby claimed to own were too high (they were in the 4 millions and we’re only up to the high 3 millions, as only a trademark nerd like me would know), and some of the classes of goods in which they were ostensibly registered were ridiculous – class 4 (industrial lubricants and fuels) for example.

But I WAS fooled in this way – I believed that Above the Law thought the story was real when they posted it.  Turns out they were in on it all the time and had a second post late in the day to this effect.  My apologies to Elie Mystal, the Above the Law editor and author of the posts, for thinking he was that gullible.  

Of course, there is rampant concern about trademark misuse and infringement in social media among trademark owners and practitioners.  That’s why the last sentence of Above the Law’s reveal post has an ominous feel: “It might have been a joke today, but the first hashtag infringement suit is surely just around the corner.”

There’s a swingin’ bank I know called…Capital City

Well, Capital City may exist only on The Simpsons, but unlike Duff Beer, CAPITAL CITY BANK exists as a real bank as well as a  trademark, to the chagrin of Citigroup.  The latter opposed the trademark application for CAPITAL CITY BANK, filed in the name of Capital City Bank Group Inc., based on Tallahassee, Florida.  After losing the opposition, Citigroup appealed to the Court of Appeals for the Federal Circuit, which found the two marks to be different enough that there would be no likelihood of confusion.   The court noted that the term “city bank” is common in trademarks for banks.

Citigroup tried an argument I thought was pretty creative — they took the position that CAPITAL in the mark CAPITAL CITY BANK would be perceived by consumers in the money context rather than in the center of government context.  It was a nice try, but the Federal Circuit didn’t buy it.

So in the immortal words of Tony Bennett, it’s against the law to frown in… Capital City.  That goes for you too, Citigroup.

Twilight

Some may be Team Edward, others are Team Jacob, but does this mean that either set of fans is more likely to buy Bath and Body Works’ line of lotions, shower gels and the like if they’re sold under the mark TWILIGHT  WOODS?  Apparently Summit Entertainment LLC, maker of the Twilight movies that emanate from the immensely popular Stephenie Meyer book series, thinks so.  Summit sent a cease-and-desist letter to Bath and Body Works objecting to its use of TWILIGHT WOODS,  which resulted in Bath and Body Works filing a lawsuit seeking a judgment declaring that its mark does not infringe the TWILIGHT mark.

Unfortunately for Summit, they are on record as having taken a different position when it suited them.  Less than two months before sending its cease and desist letter to Bath and Body, Summit filed a written argument with the US Patent and Trademark Office trying to convince the trademark Examiner that Summit’s application for TWILIGHT for fragrances, lotions etc. should be granted because the mark is not confusingly similar to a registered trademark TWILIGHT owned by Coty for the same goods!  Summit took the position in its argument that consumers will associate its TWILIGHT goods with the movies, and will associate Coty’s TWILIGHT goods with “the period of time when day meets night.”  Summit also argued that my high school classmate Sarah Jessica Parker is a celebrity spokesperson for the Coty goods and that people will buy it because they are her fans.  Yeah, and SJP never appears in movies, right?  The Examiner did not buy this argument, and Summit’s trademark application is still facing this refusal.

In trying to have it both ways, Summit is taking the position that the use of TWILIGHT WOODS will call to mind the Twilight movies because of the woods context.   At least Bella knew she had to choose.

I Can’t Give this Post an Apt Name

The words BigLaw and SmallLaw have meaning to toiling lawyers who over the years may have worked at 2000-lawyer firms, 200-lawyer firms and 2-lawyer firms. In my case, as a solo practitioner (and somewhat vertically challenged), I am a member of the SmallLaw community.

BigLaw signifies a firm with hundreds or thousands of lawyers, usually spread far and wide geographically and practice area-wise. SmallLaw indicates a small firm lawyers numbering in the single- or double-digits, often with a niche specialty or two.

PeerViews Inc. got itself U.S. trademark registrations for BigLaw and SmallLaw, both covering various email newsletters and blogs relating to legal practice and legal technology.  Then they objected to use of the term “Small Law” in the title of a post on the blog Lawyerist, demanding that Lawyerist take down the offending blog title within 7 days. The post was called “Above the Law Goes Small Law”, and was reporting on the fact that the popular, intelligently written though gossipy law blog was expanding its focus to include frequent posts about small law life as well as BigLaw goings-on.

Bloggers did not react favorably to PeerViews’ proprietary view.   For example, Carolyn Elefant, author of the solo lawyer bible Solo by Choice and the blog MyShingle.com, proclaimed in a blog title, “Memo to SmallLaw, You Don’t Own Small Law!”  She expressed concern about the chilling effect this could have on her blog and small law in general.

Not only did Lawyerist not cave in to PeerViews’ takedown demand, they took major steps to make use of BigLaw and SmallLaw safe for all humankind, including most if not all bloggers. Taking the position that “the terms BigLaw and SmallLaw and the phrases big law and small law belong to the public,” Lawyerist Media, LLC has now filed a lawsuit in federal court in Minnesota, seeking the cancellation of the registrations for BigLaw and SmallLaw on the grounds that they are descriptive terms.  Lawyerist also seeks a judgment from the court declaring that its use of “small law” in the blog post does not infringe PeerViews’ trademark. This blog has really put its money where its mouth is.

Bye now. I’m going to add  Lawyerist to my blogroll.

Sarah Palin’s Brand

In the book Game Change,  which chronicles the antics leading up to the 2008 presidential election, the authors John Heileman and Mark Halperin describe a scene that took place soon after John McCain’s pick of Sarah Palin for running mate.  She was about to shoot some footage for campaign ads, and was having her hair done.  She sought the opinion of McCain’s media guy: “My brand is hair up, isn’t it?”  Now it seems that Palin is expanding her brand to cover “Information about political elections; Providing a website featuring information about political issues” and “Educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values”.   These are the services covered in her trademark application for SARAH PALIN, filed in November 2010.  She claims that she has been rendering these services under the SARAH PALIN brand since 1996.

Daughter Bristol has been working on a career not just as a dancer but as a promoter of teen abstinence.  She also filed a trademark application in November; her application to register BRISTOL PALIN covers “Educational and entertainment services, namely, providing motivational speaking services in the field of life choices”, and she claims to have rendered these services since March of 2009.

News of these applications seems to have hit the mainstream media after the US Patent and Trademark Office examined them and issued Office Actions requiring certain actions before the marks can register.  In each case, the Palin applicant has to submit written consent to the registration of her name because her lawyer, not she, signed the application.  Some of the news reports find it funny that the Palins ran into trouble by failing to sign the applications themselves.  Also, the specimens of use submitted to support the applications (such as a Fox news story about Sarah Palin and her Facebook page) are not considered by the trademark Examiner to show actual use of the marks in connection with the services (i.e. having a Facebook page is not the same as providing a web site) so mother and daughter will have to submit new specimens if they can. 

According to news reports, the Palins’ lawyer plans to fix the current problems; assuming this is the case, Sarah Palin may eventually refer to herself as SARAH PALIN® brand motivational speaker.