Colleges serve an important role in American society, providing education, experience and leadership to each new generation. Also, sports. And did I mention SPORTS? Regardless of the reason (cable?), college sports have become a huge business over the last 25 years, with NCAA schools having a reported annual value of $8 billion (without including revenue generated for private companies). That number may not be accurate, but given the number of Division 1 school football and basketball programs, price of tickets, number of games, broadcast rights, merchandise, etc., I don’t think that’s an exaggerated number. And with revenue like that, it isn’t surprising that universities rely on trademark law to protect their brands.
Earlier this week, Oklahoma State University (OSU) filed a lawsuit against New Mexico State University (NMSU) over NMSU’s renewed use of its retro cowboy logo. The two logos are shown side by side below:
Hard to argue that those aren’t similar. OSU claims use of its mascot all the way back to the 1920s. NMSU claims use of their logo back to 1960s. However in 2005, NMSU moved toward a more modern logo. However, NMSU’s recent decision to sell merchandise featuring the old logo apparently sparked the lawsuit. On its website, NMSU has a document chronicling the history of its logo in which it admits that it “initially” paid royalties to OSU for use of the logo. There is no explanation of when these royalties ceased.
Of course, fans of the University of Wyoming might be a bit confused too. As it turns out, Wyoming has a similar logo that it uses, shown below:
Apparently OSU also objected to Wyoming’s use, but they reached a concurrent use agreement in 1993. Based on the reported terms of the agreement, OSU concluded that so long as the respective logos appear in each school’s respective colors and with some text located on the clothing, that the two schools could avoid any confusion (oh, and don’t forget the royalties…). The NMSU design is already in NMSU’s colors, so perhaps OSU is just taking a really expensive route to get NMSU to add some text to the design. Or it could be the royalties. I’ll let you decide.
The dispute highlights an interesting aspect of trademark law. Regardless of the type of products involved or the amount of money on each side, the question ultimately comes down to consumer perception and whether consumers are likely to be confused. Sports teams, especially college teams, frequently use identical names for their mascots and teams. For example, the name “cowboys” is used by both, you guessed it, OSU and Wyoming (Also, another football team that you may heard of down in Dallas…). As far as Aggies go, you’ve got NMSU, Delaware Valley College, North Carolina AT&T, Texas A&M, UC Davis, and Utah State. I don’t know all of them, but this Wikipedia article lists 76 different Eagles, 46 Tigers, 39 Bulldogs, and 33 Panthers. In short, consumers are accustomed to relying on indicia other than merely the name (and likely the logo) to determine the source or sponsorship of the goods, such as the colors, school name, acronyms, etc.
But if you’re looking for unique college mascots, you’ve got the Fighting Okra of Delta State University in Mississippi, the Geoducks of Evergreen State College (it’s a type of mollusk, apparently), the Scotsdale Community College Fightin’ Artichokes, or the St. Louis University Billikens. You never hear about any trademark disputes over mollusks or artichokes, do you?
But back to our friendly cowboys. The lawsuit seems a bit surprising. After all, the parties apparently had a forty year agreement and working relationship. Or, if “initially” paying royalties only meant a few years (5, 10?), NMSU used the logo the remainder of the 40 years without objection by OSU. The agreement with Wyoming also weakens OSU’s claim, but probably not enough to preclude a successful claim. I’d be highly surprised if the dispute lasts very long, as it seems to be ripe for settlement. Even in the billion dollar industry of college athletics, settlement is often the most efficient means of settling trademark disputes, especially if you both have pistols.
In re Flatiron Partners, LLC, Serial No. 85699903 (October 22, 2014) [not precedential]. [Section 2(d) refusal to register FLATIRON PARTNERS for "managing hedge fund portfolios directed to high wealth, sophisticated individual investors and to sophisticated non-hedge fund corporate entities" in view of the registered mark FLATIRON CAPITAL (standard characters) for"financing and loan services"].
In re Tezio LLC, Serial No. 85769474 (October 22, 2014) [not precedential]. [Refusal to register LOLA for "plastic containers for organizing and storing cosmetic" in view of the registered mark CHARLIE & LOLA and Design for, inter alia, "containers for household and kitchen use"].
In re Citizens Disability, LLC, Serial No. 85887875 (October 22, 2014) [not precedential]. [Refusal to register CITIZENS DISABILITY HELPLINE for "Counseling and assisting others in obtaining medical or disability related benefits, namely, Social Security Disability and Supplemental Security Income benefits" and for "Representing others in obtaining medical or disability related benefits, namely Social Security Disability and Supplemental Security Income benefits" [DISABILITY HELPLINE disclaimed] in view of the mark DISABILITY HELPLINE, registered on the Supplemental Register for "Advertising services; Attorney referrals, namely, forwarding inquiries by potential clients to social security lawyers and advocates"].
In re Mannatech, Incorporated, Serial No. 85558774 (October 22, 2014) [not precedential]. [Section 2(d) refusal to register NUTRIVERUS for dietary and nutritional supplements, on the ground of likelihood of confusion with the registered mark NU VERUS & Design (in the colors shown below) for "liquid nutritional supplement; nutritional supplements; vitamin and mineral supplements"].
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TTABlog Comment: See any WYHAs here?
Text Copyright John L. Welch 2014.
The evidence showed that the term "blend" is used to identify wine made from two or more varieties of grapes. Applicant maintained that "blends" is not descriptive of marketing, selling and promoting wines. It asserted that the PTO's evidence dealt with wine as a product, or with the act of selling wine, but not with marketing services: "Marketing, advertising, and promoting the 'sale' of wine is considerably different than the act of selling wine or producing wine."
The Board found that "the word 'Blends' describes the products that Applicant is marketing, advertising and/or promoting and, as such, it should remain available to any company rendering these services."
Applicant argued that when used in connection with marketing services, the word "blends" could refer to many things, not just wine. However, as the Board has repeatedly pointed out, "the determination of whether a mark is merely descriptive is not considered in the abstract but in connection with the services at issue." Applicant itself stated that it could market, advertise, and promote blended wines. The fact that "blends" may have different meanings in other contexts is simply irrelevant. [Applicant's out-of-context argument is, in my view, one of the Top Ten Losing TTAB Arguments].
And so the Board affirmed both refusals.
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TTABlog comment: Was this a WYHA?
Text Copyright John L. Welch 2014.
In a recent meeting, someone dropped a forecast on the table stating that Google was on track, in five years, to become the world’s first trillion dollar company (currently they are $382 B). This is built on a virtual monopoly in the area of online advertising and now growing into a variety of other technologies and platforms. But, most important this is a company build on advertising media.
What do I do with that bit of information? Why do I care? Why would anyone care if Google is getting larger and larger and larger. Is it a good thing? Is it bad? Sergey and Larry seem to be good guys.
Well, I don’t have answers to those questions, but I do have a thought to further the conversation.
When you elevate your perspective to see all the brands in the world, and the businesses where they reside, it changes your perspective. Brands as large as Google, Apple and a longer list of others are designed to serve stakeholders (customers, partners, investors, etc). This isn’t too dissimilar to a government entity. Here are some similarities between a corporation and a government.
>> Both serve diverse audiences and need to keep people happy, active, and safe from harm.
>> Both have incoming revenue (taxes) and outgoing expenses (services).
>> Both have a team that leads and some structure to organize the social hierarchy.
>> Both have a reputation to build and protect with all stakeholders
Now, the corporation may have a mission to conquer and a government may have a mission that closer resembles the need to protect and keep safe. And, governments provide services people don’t want to pay for, but need to in order to have social order. Corporations do this as well, but many at the discretion of the leadership team.
This all leads back to the headline.
What would happen if Apple or Google purchased a small country? Just to be clear, here’s a handful of countries Apple could buy with their profits of $37 billion: Trinidad and Tobago, Paraguay, Honduras, Jamaica, Albania, Iceland, Cyprus and many others all over the world.
How would Apple design a country? What would a Google country look like? Would these captains of industry be better at running a medium size country than many of the horrid dictators we see in the world today?
What do you think?
Precedential No. 40: TTAB Finds "MC" Family Famous, Sustains Dilution Opposition to MCSWEET for Pickled Vegetables
Family of Marks: The Board first addressed the family-of-marks question.
A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.
Opposer owns registrations for, and uses, the mark MC (alone) as well as the marks MCDONALD’S, MC CHICKEN, MC DOUBLE, MCRIB, MCMUFFIN, MCNUGGETS, MCGRIDDLES, MCCAFE, MCSKILLET, and MCFLURRY. [The marks MC, MCDONALDS, and MCFLURRY "are not, strictly speaking, members of Opposer’s claimed 'MC' family of marks because neither 'DONALDS' nor 'FLURRY' is generic or descriptive of the relevant goods, and the mark MC lacks a generic or descriptive suffix." Nonetheless, these marks reinforce the association between Opposer and marks that incorporate the prefix "MC."] According to witnesses, Opposer’s efforts to establish and maintain the “MC” family of marks have been so successful that consumers spontaneously use the “MC” prefix in connection with all of Opposer’s products. The Board concluded that McDonald's owns a family of "MC" marks comprising the prefix "MC" followed by a descriptive or generic term.
Section 2(d) Fame: In assessing the fame of the family of marks, the Board also considered the fame of the mark MCDONALD’S "because the 'MC' family was derived from and points back to the mark and as such is integrally related to that mark."
The evidence established that opposer has used the MCDONALD’S mark in connection with food and restaurant services since 1955, and operates 14,000 restaurants in the United States which serve 26 million people per day. It sells an "enormous number" of products under each of its 'MC' family members. Opposer extensively advertises products within the “MC” family - with some of the advertising emphasizing the "MC" prefix - and has also widely advertised under the MCDONALD’S mark for several decades.
The Board concluded that the "MC" family of marks is famous for Section 2(d) purposes,
Applicant lamely argued that "the fame of [Opposer’s] mark may weigh against a finding of likelihood of confusion because consumers are so familiar with the famous mark that they can readily identify differences with other marks and the goods or services offered thereunder." The Board pointed out that the fame of a mark is not to be considered a liability in the likelihood of confusion analysis. It concluded that, the mark MCDONALD’S and the "MC" family of marks are famous in connection with restaurant services and food products, and are entitled to a wide latitude of legal protection.
Similarity of the Marks: In considering the involved marks, "the question is not whether Applicant’s mark is similar to Opposer’s individual marks, but whether Applicant’s mark would likely be viewed as a member of Opposer’s family of marks."
Applicant acknowledging that its mark was created by Leo McIntyre using the “MC” from his surname and "SWEET" to describe the sweet brine used to pickle onions. Applicant argues that its mark can be distinguished from Opposer’s family of marks because its mark is a surname. The Board disagreed: "Because Applicant’s mark and Opposer’s family of marks all start with the prefix “MC” and are followed by a term that is descriptive or generic for the goods, we find that the similarities in appearance, meaning and commercial impression between Applicant’s mark MCSWEET and Opposer’s family of “MC” formative marks are such that potential consumers would view Applicant’s mark as a member of Opposer’s family of marks."
Relatedness of the Goods: The evidence established that pickled vegetables are offered at quick service restaurants; Opposer’s restaurants offer multiple products that contain pickles and onions, and applicant’s pickled vegetables may be used as toppings for opposer's sandwiches. In view of the fame of Opposer’s "MC" family of marks for its food products and the complementary nature of the goods, the Board found the parties’ goods to be sufficiently related to support a finding of likelihood of confusion.
Applicant contended that its goods travel in different channels of trade from Opposer’s goods and services, since applicant's goods are not sold in quick-service restaurants. The Board noted, however, that there are no restrictions as to channels of trade in the opposed applications.
Moreover, restaurant-branded foods are also sold in supermarkets or grocery stores: for example, Burger King frozen onion rings, White Castle frozen hamburgers, and T.G.I. Friday’s frozen appetizers. Grocery stores are thus within the ordinary channel of trade for restaurant-branded goods. Moreover, since 1993, Opposer has operated McDonald’s restaurants inside Wal-mart stores.
Considering the relevant du Pont factors, the Board found confusion likely and it sustained the Section 2(d) claim.
Likelihood of Dilution: The Board ruled that the term "famous mark" in Section 43(c)(2)(B) is applicable to a "famous family of marks." This statutory language "encompasses not just an individual famous mark, but also a famous family of marks. There is nothing in the Lanham Act or its legislative history to warrant the exclusion of a family of marks from protection against dilution. Indeed, the inherent nature of a family of marks, may make such marks more susceptible to blurring than a single mark."
Fame: Based on the record evidence, the Board found that Opposer's "MC" family of marks meets the higher fame standard applicable for the purpose of establishing dilution by blurring. Moreover, Opposer also proved that its family of marks was sufficiently famous as early as 1986, prior to applicant's alleged first use of the applied-for mark in 1990.
Considering the six "blurring" factors set forth in Section 43 (c)(2)(B)(i)-(vi), the Board found that applicant’s mark MCSWEET is "very similar to Opposer’s family of marks;" that the combination of the prefix "MC with a generic or descriptive food term is inherently distinctive; that opposer's use of its "MC" family of marks is substantially exclusive; and that the degree of recognition of opposer's family of marks is and has been quite strong since as early as 1986 (when Opposer operated 7,272 restaurants in the United States and had sales of approximately $9,534,000,000). The Board found no evidence that applicant intended to create an association with Opposer’s family of marks.
Finally, as to proof of actual association between applicant's mark and the "MC" family of mark, opposer relied on the results of a dilution survey. The Board noted that "[b]oth the courts and the Board have found the 'brings to mind' survey format acceptable as evidence of actual association, which is required to establish likelihood of dilution."
Opposer's survey demonstrated "a substantial degree of association between MCSWEET and McDonald’s and the "MC" marks: "67% or two out of three individuals who encounter the MCSWEET term associate it with Opposer, McDonalds and its 'MC' marks." Notwithstanding Applicant’s objections, the Board found that "the survey demonstrates actual association between the mark MCSWEET and Opposer's family of 'MC' marks."
Considering all of the relevant dilution factors, the Board found that the mark MCSWEET "is likely to impair the distinctiveness of Opposer’s family of “MC” marks and is therefore likely to cause dilution by blurring within the meaning of Section 43(c)."
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TTABlog comment: There's a lot of basic TTAB law well explicated in this opinion. The discussion of the dilution survey is particularly instructive.
Text Copyright John L. Welch 2014.
In re Holland & Hart LLP, Serial No. 85709248 (October 16, 2014) [not precedential]. [Refusal to register BEYOND THE OBVIOUS for legal services, in view of the registered mark THINKING BEYOND THE OBVIOUS for business consultation services].
In re Joy Industrial Co., Ltd., Serial No. 85677182 (October 16, 2014) [not precedential]. [Refusal to register N NOVATEK & Design for bicycles and bicycle and motorcycle parts and accessories, in view of the registered mark NOVATECK for "tires, pneumatic, semi-pneumatic and solid tires for vehicle wheels, wheels for vehicles, inner tubes, wheel rims, and structural parts for all the aforesaid goods"].
In re Cardeologie, Inc., Serial No. 85826725 (October 16, 2014) [not precedential]. [Refusal to register CARDEOLOGIE for greeting cards, invitation cards, notecards, postcards, etc., and for related retail store services, in view of the registered mark CARDOLOGISTS for, inter alia, greeting cards and invitation cards].
In re The Rock Creek Group, LP, Serial No. 85595470 (October 6, 2014) [not precedential]. [Refusal to register THE ROCK CREEK GROUP for, inter alia, "individualized and personalized financial services provided to institutional investors, namely, sovereign wealth funds, state and local pension plans, multinational corporations, foundations and endowments," in view of the registered marks ROCK CREEK PROPERTY GROUP, LLC, in standard character and design form, for "real estate investment, management, and brokerage services" [PROPERTY GROUP, LLC disclaimed]].
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TTABlog Big Hint: They all came out the same way. See any WYHA's here?
Text Copyright John L. Welch 2014.
This month, the greater downtown Minneapolis community is welcoming the Brave New Workshop Student Union to the neighborhood. Until just a few weeks ago, the improvisational comedy school convened classes at the Brave New Workshop’s original home on Hennepin Avenue in the Uptown neighborhood. The Minneapolis-St. Paul Business Journal has a piece up about the school’s move downtown to some spacious digs across Hennepin Avenue from the Brave New Workshop’s downtown theater (I highly recommend a show there – their sketch comedy stuff or improv – the next time you’re in Minneapolis).
This fall, I signed up for the Student Union’s Everday 1 improv classes. So far, I have to say it’s been money well spent – each Wednesday I walk in somewhat tired after a long day and walk out feeling energized from laughing for the better part of two hours. I lucked out and slotted into a class with some truly funny people. My cohort and I are just over half way through with our weekly sessions. With the Student Union’s move downtown, I thought it would be a nice time to reflect on some of the lessons from improv class that are transferrable to the workplace. Yes, even a law firm. Here are three that stick out from the first few weeks of class:
- Live the “yes, and” ethos. The central tenet to doing improv is living and practicing the so-called “yes, and” mantra. Because nothing is scripted or planned in advance, improv scenes are literally evolving as the audience sees and hears them. How do scenes build and not flop? The foundation is saying “yes, and . . .” to whatever your scene partners throw your way. That’s “yes, and . . .,” and not, “yes, and?” You don’t ask questions. You wholly and unequivocally accept what’s given and build from there. “No,” or questions stop the flow. It’s been striking to see how the power of “yes” can help build collaboration, trust, and enjoyment. I imagine practicing “yes, and” with peers at work would yield similar results. How often do you catching yourself saying “no” at work? Next time try yes, and…
- Shut up. Walking into a room full of self-selecting improv class students can be a bit overwhelming. Chances are, no matter how much these people profess to be shy or express a desire to be in the class because they want to get outside themselves, each of them is just waiting for the moment they get to light up the room with laughs. And do it again. And again. I believe there’s a parallel to the meetings here at the law firm full of type-As who all have something to say. Sometimes you have to shut up, hold back, and let others shine in the moment. It takes self-control. In improv class, they say you should serve your scene and your scene partners before you serve your own self-interest. That idea can go a long way in the workplace, too.
- Don’t Self-Edit – Be Declarative. What would it be like if we all said what we meant and meant what we said? Oh, yeah, we Minnesotans would be living in New York. Ha. I kid. One of the exercises we did in class last week was one where we let our inner-monologues outside of our heads, filter-free (to the extent that’s possible). We’ve also worked on making direct statements that seem to roll off the tongue with slightly less inhibition. When we say what we are thinking and say them in forceful, direct ways, we save ourselves from our typical communication foibles. This would be great in the workplace, no?
The great-grandsons of Anna S. Harringon, whose image formed the basis for Aunt Jemima, sued Quaker Oats Company and others for $2 billion claiming that defendants failed to pay royalties to Harrington’s estate after her death in 1955. One of the allegations in the case is that defendants played a role in Harrington’s death. Apparently, in an effort to support those allegations, plaintiffs sought an order from the US District Court for the Northern District of Illinois (where the matter is pending) allowing them to exhume the body of their great-grandmother for evidence of this malfeasance.
The court denied the request. Apart from it being just a bizarre ask, it turns out the “evidence” upon which the defendants’ role in Aunt Jemima’s death was based on a parody article from Uncyclopedia. In denying the motion, the court found the following:
The motion is primarily based on statements purportedly made by Quaker Oats executives about the death of the woman who had been identified as “Aunt Jemima.” But the source of the information is an uncyclopedia.wikia.com article, which is a parody website of Wikipedia. Uncyclopedia proudly bills itself as “an encyclopedia full of misinformation and utter lies.” See uncyclopedia.wikia.com/wiki/Uncyclopedia:About.
The court also threatened the pro se plaintiffs: “Plaintiffs must take greater care in their submissions to the Court, or else face sanctions and, if litigation abuse continues, outright dismissal of the case.”
Hunter et al. v. PepsiCo Inc. et al., No. 1:14-cv-06011 (N.D. Ill. October 21, 2014)
Evan Brown is an attorney in Chicago advising clients on matters dealing with technology, the internet and new media.
In re Starkist Co,, Serial No. 85765644 (September 23, 2014) [not precedential]. [Mere descriptiveness refusal of INTERNATIONAL SELECTS for "seafood"].
In re Internet Promise Group LLC, Serial No. 85637772 (October 9, 2014) [not precedential]. [Mere descriptiveness refusal of STEP BREATHING for "Instructing others in a specific breathing technique, specifically, instructions in successive short inhalation and holding breath steps and then exhalation to enhance life force energy in the human body as part of teaching Yoga practice"].
In re Birds Eye Foods LLC, Serial Nos. 85729804 and 85729823 (October 14, 2014) [not precedential]. [Mere descriptiveness refusal of SAVORY SKILLETS and requirement for disclaimer of SAVORY SKILLETS in the mark BIRDS EYE SAVORY SKILLETS, both for frozen entrees].
In re DM CTW, LLC, Serial No. 85746575 (October 16, 2014) [not precedential]. [Mere descriptiveness refusal of THE BEST APP TO DATE for "Downloadable software applications for mobile telecommunications devices and handheld computing devices for organizing personal relationships and dating, for providing coupons, rebates, discounts, vouchers or special offerings on goods and services from participating merchants and for receiving information on events, activities and attractions"].
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TTABlog note: See any WYHAs here?
Text Copyright John L. Welch 2014.