This Week in Alcohol TM Infringement Claims

Alcohol trademarks were big in the news this week.  While we kicked back cold ones and watched the World Cup finals, John Wayne’s estate, Duke University, a brewery and a DUI law firm were battling it out on the infringement pitch. 

Duke University’s lengthy alcohol policy, which of course expressly forbids those under 21 from possessing, purchasing or consuming alcoholic beverages, also contains a non-exhaustive list of unsafe and irresponsible behaviors, including consuming an excessive quantity in a short amount of time and participating in or facilitating drinking games or progressive parties.   Considering the concern Duke has over underage, unsafe and irresponsible drinking, it does not surprise me that Duke is objecting to use and registration of the trademark DUKE by the estate of John Wayne for alcoholic beverages.  John Wayne’s estate has now filed a Declaratory Judgment action in federal court in California, seeking a judgment from the court that it does not infringe Duke’s trademarks.  The estate’s complaint states that  “Duke University is not and never has been in the business of producing, marketing, distributing, or selling alcohol.” 

Meanwhile, away from Hollywood and academia, Full Sail Brewing, an Oregon craft beer company, has sued Sessions Law, an Atlanta law firm, after the law firm distributed brown paper beer can covers displaying a mark that is extremely similar to the label on Full Sail’s SESSIONS LAGER brand. Sessions Law is a DUI firm and, it could be said, somewhat of an enabler.  You can check out the two logos here.  

 

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I Believe That We Will Win (the TM Rights)

A few weeks before World Cup fever gripped us all, my daughter and I attended her college orientation.  Although she is not attending the most rah-rah school (they don’t even have a football team), we were still taught some of the school’s college cheers.  I confess that this is the first time I ever heard “I…I believe…I believe that we will win!”

Now it seems that my daughter’s college, Tim Howard and scores of others could be sued for trademark infringement, for San Diego State University filed an application to register the trademark I BELIEVE THAT WE WILL WIN back in 2011.  Actually, the application is in the name of Aztec Shops, Ltd., a clothing store on the SDSU campus.  After rejections and a couple of inadvertent abandonments of the application, SDSU succeeded in getting the application approved, probably reciting this mantra for inspiration the entire time.  The application will be published for opposition on July 22, meaning that third parties who believe that they will be damaged by the registration of the mark can oppose the application.

Actually, SDSU’s application covers “Bottoms; Caps; Hats; Jackets; Shirts; Sweatshirts; T-shirts; Tops”, not “loud raucous chants at sporting events”, so in reality they would have difficulty stopping others from raising the roof with these cheers, and they are not likely to try.  Still, it will be interesting to see of some third parties file oppositions against the application, and what the outcomes will be.

Some background about the origin of the chant, as well as some recent tweets about its ownership (after Tim Howard’s rallying tweet on the morning of July 1, before the USA team’s agonizing defeat) appears here.

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Please visit the new home of Trademark Musings at http://www.trademarkmusings.com.

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.”