Trademark Musings

Thoughts on trademark issues by Laura Winston

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.

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August 3, 2011 Posted by | Uncategorized | , , , , , , | Leave a comment

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.

July 22, 2011 Posted by | Uncategorized | , , , , , , | Leave a comment

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.

May 12, 2011 Posted by | Uncategorized | , , , , , , , , , , , | Leave a comment

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.”

April 2, 2011 Posted by | Uncategorized | , , , , , | Leave a 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

LAMEBOOK v. FACEBOOK – Hilarity Ensues and Sues

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Fans of the movie The Social Network know that after Facebook took off, there was a line out the door suing Mark Zuckerberg.  But when it comes to trademarks, Facebook knows that sometimes imitation, while the sincerest form of flattery, can be bad for trademarks.

Facebook is going after numerous uses of marks containing -BOOK, including TEACHBOOK, PLACEBOOK and now LAMEBOOK.  Actually, that last one is actually suing Facebook for a judgment declaring that it does not infringe or dilute the FACEBOOK trademark, after Facebook sent several warning letters telling they they’d better stop.

Called a “hilarious, advertising-supported site” by TechCrunch, LAMEBOOK posts user-submitted content taken from another social networking site (hmm, which one) that the submitting user finds to be lame and funny.  Well, I think hilarity is not likely to save this advertising-supported site.  It’s the typical case of trademark v. First Amendment rights, and despite my love and respect of the latter, I just don’t think the parody defense will save these folks.  The fact that they’ve adopted a font style and color scheme just about identical to Facebook certainly does not help them.  I’ll be watching this one.

November 8, 2010 Posted by | Uncategorized | , , , , , , , | Leave a comment

Yankee fan sues Red Sox player for trademark infringement

 

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Rapper Jay-Z, who told the world in the song Empire State of Mind that “S**t, I made the Yankee hat more famous then a Yankee can”, filed a lawsuit in federal court in New York against David Ortiz, Red Sox slugger for trademark infringement after Ortiz opened a nightclub in the Dominican Republic called Forty-Forty.  Jay-Z owns a chain of clubs in the US called 40/40. 

The obvious questions for trademark lawyers are: can this lawsuit survive a jurisdictional challenge, and does Dominican trademark law have a cause of action for infringement of a US trademark?

It remains to be seen if this results in taunts of “Trademark infringer!” from the stands the next time the Red Sox come to Yankee Stadium.

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