Trademark Musings

Thoughts on trademark issues by Laura Winston

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.

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March 29, 2011 Posted by | Uncategorized | , , , , , , , | 1 Comment

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.

March 26, 2011 Posted by | Uncategorized | , , , , , , , , , , | Leave a comment

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.

March 23, 2011 Posted by | Uncategorized | , , , , , , , , , , | Leave a comment

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.

February 6, 2011 Posted by | Uncategorized | , , , , , , , , , | 2 Comments

Are there Trademarks in the Wizarding World?

This is a photograph of a t-shirt sold in Universal Orlando’s new Wizarding World of Harry Potter area.  Hopefully you can make out that there’s a ™ after the word Hogwarts.

The Wizarding World of Harry Potter is fun and entertaining, although it was more crowded than the scenes of Diagon Alley in the first Harry Potter movie.  It features Hogwarts Castle (with a terrific though somewhat nauseating simulator ride inside) and the village of Hogsmeade.  You can really imagine that you’ve entered J.K. Rowling’s fictional world.  The ubiquitous TM everywhere breaks the flow, however.

As a trademark attorney, I am generally a firm believer in marking.   Here, I have trouble believing that it is necessary for the trademark owner (which is actually not Universal or Rowling but Warner Bros., which has licensed it to Universal for use in connection with the theme park) to be able to assert its trademark rights.  Moreover, I don’t understand why there is a TM after HOGWARTS and not after HOGWARTS EXPRESS.  Would Warner Bros not claim that HOGWARTS EXPRESS is a trademark?  The fact that EXPRESS is descriptive of train travel is not of consequence here, because Warner Bros is not protecting the mark for schools or trains but rather the entertainment and in this case, t-shirts.

Other instances of TM abounded in the Wizarding World area.  At a wand stand (yes, wand stand), several wands available for purchase were on display.  Each was supposed to belong to a different character, and the name was under each wand — Harry Potter™, Draco Malfoy™, Albus Dumbledore™, etc.

I’m just glad that when Harry Potter was fighting the dragon in Goblet of Fire, he called out “Accio Firebolt!” and not “Accio Firebolt™ brand magic broomstick!”  The dragon would have gotten him by then.

Musings about Butterbeer (which is delicious) to follow.

January 23, 2011 Posted by | Uncategorized | , , , , , , , , , , | 2 Comments

Microsoft v. Apple – Is APP STORE generic?

Big Bad Microsoft beats up on Big Bad Apple

It’s always fun when one behemoth goes after another on a trademark conflict.  Here, Microsoft is opposing Apple’s US trademark application to register the mark APP STORE.  Apple takes the position that they own it; Microsoft takes the position that it is generic and all should be free to use it.

When Apple filed its trademark application, it was refused as descriptive.  Apple feebly tried to argue that (1) because “app” can have meanings other than “application”, such as “apparatus”, “appendix” or “appointed”, and (2) consumers were likely to associate the word APP with “Apple” because of their similarity (!), the mark was not descriptive.  This argument did not go over.  However, in US trademark practice, the applicant gets a second bite at the apple (sorry, couldn’t resist), and on the second go-round, Apple put in tons of evidence that the mark has acquired distinctiveness through Apple’s use, and the application was approved.  Then Microsoft lodged its opposition.

Microsoft notes that even Steve Jobs has referred to  “app store” as a generic term, claiming that he mentioned on a conference call with financial advisors that several wireless phone carriers would be launching app stores for the Android.  That doesnt’ look so good for Apple.  On the other hand, I took an informal survey of two teenagers, neither of whom owns an iPhone or iPad, asking them what they think of when they hear “app store”.  They both associated it only with Apple and Apple products.  This will be one to watch.

January 18, 2011 Posted by | Uncategorized | , , , , , , , , | Leave a comment

Galaxy Tab – almost good enough to drink

OK, so they’re not identical twins, but the old Tab cola (which was not long for this world once Diet Coke took off) and the Samsung Galaxy Tab have quite similar presentations of the word TAB, don’t they?  Just the capital B versus small b and the height level of the T separate them.  Still no likelihood of confusion between a defunct (though well-remembered) soda and a new tablet computer.

January 12, 2011 Posted by | Uncategorized | , , , , , | 1 Comment

Who Knew “Hon” was so Important to Baltimore? Trademark Registration Sparks Protests.

A rather surprising headline in The Baltimore Sun caught my eye recently – “Demonstrators protest `Hon’ trademark in Hampden“.  A protest over a trademark? 

It turns out that people will protest a trademark when they believe it takes away their right to their own local culture.  If you’re from Baltimore, then you may know something I didn’t – that “hon” is a local expression in Baltimore that refers to a stereotype of local women originating in an earlier era – according to Wikipedia,  “Between the 1950s and 1970s, it was common to see working class local women dressing in bright, printed dresses with out-dated glasses and beehive hairdos.” 

I’ve quickly brushed up on the history of this important term and how it came to be a trademark, to the chagrin of native Baltimoreans.  Denise Whiting opened Cafe Hon in 1992 and later started using it on “Honfest” and on various items for sale.  She obtained a trademark registration for the CAFE HON logo (pictured above) in 2005, and on the word HON in 2007.   Apparently it took at least 3 years for the news of the registrations to reach Baltimoreans, because this protest took place last week.  Has broadband not made it to Baltimore yet?

According to the Sun article, about 50 people showed up to protest in front of Whiting’s store, Hontown.  They held up signs that said things like “You Can’t Trademark Our Culture Hon” and my personal favorite, “Honicide: Life on 36th Street”.  Nobody threw any rocks and bottles, but it was a trademark protest nonetheless.

January 2, 2011 Posted by | Uncategorized | , , , , , | 1 Comment

Comparing APPLE to APPLE

The BIG, EXCITING news of last week that the Beatles are FINALLY available on iTunes (raise your hand if you’ve been putting off buying Beatles CD’s for all these years just waiting for this life-changing announcement) gave me the idea to talk a little about the history of the trademark dispute between Apple Corps, the holding company for the Beatles catalog, and Apple Inc., nee Apple Computer of the Apple IIe and Macintosh fame.

It all started back in 1978 when Apple Corps and Apple Records, owner of the Beatles record label, took Apple Computer to court for trademark infringement.  The case settled in 1981 with a consent agreement that Apple Computer would not get involved in the music business  (hahaha, famous last words) and Apple Corps would stay out of the computer business.  The dispute flared up again in 1986 and again in 1991, when Apple Computer made forays into the likes of MIDI software and sampled sound systems in the operating system for Macs.    This round of disputes ended with a settlement in which Apple Computer could use APPLE in connection with “goods or services…used to reproduce, run, play or otherwise deliver [music] content”, but not in connection with physical media used to distribute such content.

Hop to 2003.    The iPod has already been out for 2 years, though it’s not yet the category killer it’s destined to become.  Apple Computer launches the iTunes Store in April.  And Apple Corps realizes that, lo and behold, Apple Computer is in the music business!  So Apple Corps sues again!

In 2006, as the case was about to go to trial in the U.K., the Sunday Times of London had this delicious quotation: “The court will be treated to a demonstration of an iPod, but it is unlikely to play a Beatles song, as they have not been licensed for download and it would therefore be illegal. ”  (Of course, the Times was overlooking the fact that people could upload their Beatles CD’s to their computers and load them onto their own iPods legitimately.)  Apple Computer won the trial, Apple Corps ap-PEELED (sorry, couldn’t help myself).  and in 2007, while the appeal was pending, the parties settled the dispute for both disclosed and undisclosed terms.

Now, November 2010, finally APPLE and APPLE gave peace a chance, realized that all you need is love, and struck a mutually lucrative deal while singing, “The best things in life are free but you can keep ’em for the birds and bees…”

November 23, 2010 Posted by | Uncategorized | , , , , , , , , , , | 3 Comments

Stephen Colbert Talks About IT’S ON LIKE DONKEY KONG

Check out this video from the brother of Washington DC intellectual property attorney Edward T. Colbert.  In it, the leader of the Colbert Nation pokes fun at Nintendo for filing an application to register the trademark IT’S ON LIKE DONKEY KONG, which apparently entered the lexicon at least as early as 1992 (I’m not linking to the source, the Urban Dictionary, because there is an offensive term in the U.D. entry).

I’ve mused before  about people or business claiming trademark rights in nicknames coined by third parties.  Here, Nintendo filed its application and issued a press release about it, noting that it is about to release a new Wii game called Donkey Kong Country Returns.  In the press release, Nintendo states that IT’S ON LIKE DONKEY KONG is “an old, popular Nintendo phrase”.  It may be old, but I question whether it’s popular and I doubt it started out as a Nintendo phrase.

I think Nintendo will get the registration as long as they put it on the packaging for the games.  But maybe that wasn’t even their goal – considering they issued a press release about their trademark filing, which was picked up by CNN, Colbert and others, it could just have been a stunt to generate publicity about their exciting new Donkey Kong game.

November 17, 2010 Posted by | Uncategorized | , , , , , , | Leave a comment