Archive for Trademark Law

What’s with the Umbrella…ella…ella?

I saw a commercial on tv the other day where a big umbrella was following people around. My first thought was that Citigroup had started a new ad campaign. But at the end of the commercial, it was revealed that the commercial was for Travelers Insurance.

Do you think these are confusingly similar?

citigroup_logotravelers-pending-logo

Well, it turns out that Citigroup owned Travelers from for a short time, but sold it in 2005.  In 2007, Travelers licensed the trademark rights to the umbrella and has been aggressively using it ever since.

I think Citigroup made a mistake by granting Travelers the right to use its umbrella.  Citigroup is permitting confusion and dilution.  First, I was confused because I thought the umbrella meant Travelers was Citigroup, and pretty soon I wont associate the umbrella with anything since it is no longer exclusively used by Citigroup.

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From the Studio that Brough You Sunday School Musical…

Fox is a little peeved that its big holiday movie The Day the Earth Stood Still is scheduled to be released along side Asylum’s The Day the Earth Stopped. If you aren’t familiar with Asylum, some of their other coincidently timed releases include Sunday School Musical, The Da Vinci Treasure, and Transmorphers.

sunday-school-musical

Fox brought its claim to the Motion Picture Assn. of America’s Title Registration Bureau, which handles title disputes for the studios and the hundreds of production companies that agree to abide by its rules.

First Amendment issues generally make movie titles difficult to protect unless they achieve secondary meaning, which takes time. However, fifty-seven years have passed since the original film was released, and it has since been selected for preservation in the United States National Film Registry as “culturally, historically or aesthetically significant”, and in 2008, it was voted as the fifth best science fiction film ever made as part of the AFI’s 10 Top 10. Considering these facts, Fox may prevail.

Day-the-Earth-Stood-Still

In addition, the likelihood of confusion factor might be considered by the MPAA. The similarities between the movie posters and other marketing materials may also fall in Fox’s favor.

Day-the-Earth-Stopped

Regardless of the outcome, I won’t be watching either of these films. Nothing beats the original.

original-day-the-earth-stood-still


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It’s a Dark Knight in Turkey

Though Batman has been fighting crime in comics, television, and movies since 1939, a trademark infringement case was filed last week against the superhero*. The city of Batman, Turkey brought this claim against Christopher Nolan, director of the current Batman film, as opposed to Batman’s creator Bob Kane, publisher DC Comics, or film franchisee Warner Bros.

batman lawsuit

According to Batman’s mayor, “The royalty of the name ‘Batman’ belongs to us … There is only one Batman in the world. The American producers used the name of our city without informing us.”

While this is most likely a struggling town taking advantage of ‘deep pockets’, they do have an interesting, though futile, argument. Since Batman (the superhero) has a worldwide trademark, residents of Batman (the city) are prohibited from using its name in their businesses in any country. So, when one resident opened his Batman restaurant, he was served with a cease and desist letter from Warner Bros. and forced to change the name.

batman-turkey

Unfortunately for the town, its claim is much too late. I found trademark registrations dating back to 1966 in the USPTO database. After the fifth year of registration, a Section 15 form is filed, giving the mark an incontestable status. This means the mark can no longer be canceled due to claims that it is confusingly similar to another.

US law does not protect those who sleep on their rights.

* The term ‘super hero’ is a trademark co-owned by DC comics and Marvel comics since 1967.


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Got (fill in the blank)?

We’ve all seen plenty of Got Milk? parodies, so when Mary Kentz decided to create some Got Soy Milk? merchandise for her pet-themed business, she didn’t give it a second thought.

Got Milk Parodies

Well, the California Milk Processors Board thought differently. The Board sent Kentz a cease and desist letter demanding all unsold merchandise and the financial statements of her profits. Kentz, who insists it is a parody, is consulting with her attorneys before proceeding.

Whether this is a parody, making it fair use, or dilution, I don’t know. It’s such a finicky doctrine and doesn’t make much sense to me yet. What do you think? Should she be allowed to profit from her use of this phrase?

Got Soy Milk lawsuit


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Food Fight!

Now I have never had the privilege of eating a Sprinkles cupcake, but I have heard from my SoCal friends that they are mighty good. Apparently their signature is a circle on circle image that they use on their cupcakes, packaging, website, and in their store.

sprinkles-cupcakes

Like any smart business, they filed for a federal trademark in 2005 and received a registration in 2007.
Sprinkles Cupcake Trademark

In August, Sprinkles filed suit against their arch nemesis, Famous Cupcakes, alleging it’s use of a dot motif on its cupcakes, packaging, and website infringes Sprinkles’ trademark.

famous-cupcakesAs a consumer of cupcakes, though not yet Sprinkles or Famous cupcakes, if I looked at Famous’ sign and Sprinkles’ cupcakes, I would think they were from the same source. Sound like some type of yummy confusion to me!


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Palin’s Path of Destruction

Poor Palin. Looks like she has caused a lot of trouble for her favorite little retail store in Anchorage, Out of the Closet. Her remark in a recent interview was noticed by the AIDS Healthcare Foundation who has used the mark ‘Out of the Closet’ since 1990 for its non-profit retail stores, and received a federal trademark in 1997. Gosh darn, looks like another infringement case!

If the store folds due to litigation fees and the bad economy, where will Palin buy her Escada and St. John when she’s back in Anchorage after November 4th?

$2,500 Valentino jacket worn at the Republican National Convention

Maverick McCain Rounds Up Amy Poehler

My journalistic debut: The John McCain campaign is benefiting from the use of AmyPoehler.com because the domain has been redirected to the Republican’s homepage. I call shenanigans!

I discovered this evil infringement while trying to find more information about Amy’s delivery last night. This type of use of another’s trademark is intentionally deceiving to internet users, and constitutes a hijacking of the SNL comedienne’s common law trademark and the goodwill associated with it.

Through a simple WhoIs search, I found that the domain name is owned by Glen Jardine of Lyndonville, VT. You can easily find the phone number and home address of the same Glen Jardine (allegedly) in a Google search, in case you are interested in voicing your protests.

Just two months ago, McCain said he did not know how to use the internet….guess other people are using it for him.




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No Kisses from Hershey

Apparently Hershey has no sense of humor when it comes to its intellectual property. Art Van is holding a contest where viewers can vote for a new design on its trucks. One of the designs, seen below, has received a less than sweet response from Hershey.

Hershey claims this “unauthorized use of the Hershey’s trade dress is likely to cause confusion and mistake and to deceive the public.” Art Van, which has since changed the wrapper from brown to red, is surprised by the lawsuit. Art Van claims it was a parody, which is permitted by the fair use doctrine.

A parody is a transformative work; one that recalls the original work and then comments on it. Using my yarn spinning legal skills, I would say this is conveying the message that the delivery of a new sofa is a sweet treat, much like a candy bar. Yummy.

Update: A judge ruled in favor of Hershey, holding Art Van’s use as diluting Hershey’s trade dress.


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Google: Making Millions One Typosquatter at a Time

Google, the jolly search engine giant we all love, has once again been accused of profiting millions off the joe sixpack trademark owners trying to make a living in the internet marketplace. According to Harvard Business School professor Benjamin G. Edelman, Google makes an estimated $32-$50 million from AdSense ads posted on typosquatting sites. Typosquatting sites buy up domains deceptively close to company names, such as wwachovia.com and harverd.com. Through its AdSense program, Google displays ads on those pages and rakes in millions when users click on them.

These poor little companies, like Microsoft and Bank of America, spend millions of dollars developing the strength of their trademarks and depend on the stability and consistency of trademark law to ensure that their trademarks are safe from infringement. But did Google do anything illegal? Are these companies entitled to compensation?

In order to find infringement, the first step is to prove that Google “used” the marks in interstate commerce. But this is more difficult that is seems. 1800Contacts v. WhenU.com found that these types of practices are merely product placement, which can be found in any supermarket (i.e. when cans of Safeway brand tomato soup look similar to and are placed near cans of Campbell’s tomato soup.) However, 800-JR Cigar v. GoTo.com found that these types of practices are use because selling them in the marketplace allows defendants like Google to profit off someone else’s trademark and implies that they had permission from the trademark owner to use the trademark.

So, will our dear friend Google be found to have infringed? As any lawyer would say: maybe.


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Harry Potter and the Trademark Infringers

Warner Bros., distributor of the ridiculously successful Harry Potter films, brought suit against the producer of the highly anticipated Bollywood film Hari Puttar: A Comedy of Terrors just days before the film was scheduled to be released in India. Though the title seems suspiciously similar to J.K. Rowling’s popular young wizard, the plot of Hari Puttar more closely resembles that of Home Alone.

In response to these allegations, the Bollywood production company claimed it saw no resemblance between the two names. They explained that ‘Hari’ is a popular name in India and ‘Puttar’ means son in Punjabi, so any similarity was purely coincidental. Despite these explanations, even the Hindustan Times reported that audiences may be confused by the title. “An Indian Harry Potter. You can’t think of anything else when confronted with the title Hari Puttar.”

I agree with the Hindustan Times. By seeing or hearing the name Hari Puttar, I would first be inclined think the movie was a translated version of, or at least affiliated with, the Warner Bros. Harry Potter films. Harry Potter is a worldwide success with hundreds of millions of readers and movie viewers, and it has shattered sales records around the world, including in India where the final book of the series had the highest opening day sales of all time.

Since this case was tried in India, the infringement was evaluated by different standards resulting in a loss for Warner Bros. But I predict that this movie will be barred from release in the US. Under US trademark law, Warner Bros. has to show a likelihood of confusion by the relevant consumer, which can be proved by, among other things, comparing the marks’ similarities in sight and sound, the similarity between the type of goods, and the similarity of marketing channels used to promote the two goods. (AMF Incorporated v. Sleekcraft Boats)

First, the marks ‘Hari Puttar’ and ‘Harry Potter’ look and sound similar. Second, both marks are used to promote children’s movies. Lastly, both use similar marketing channels to promote their films because both would be found in the movie section of newspapers, both would run television commercials during children’s programming, both would play previews and hang posters in movie theaters, and both would advertise on child-related internet websites.

Pushing legal theory aside, as professionals in the entertainment industry, the Bollywood producers must have been aware of the existence and popularity of Harry Potter, and should have recognized the similarity between the two marks. It is hard to believe that this law suit is the first time someone brought this to their attention. With all the boys’ names in existence, why did they choose this one?


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