Now that Thanksgiving is over, Americans across the country are taking some time to relax, reflect, and digest. I know I will be doing all three, after enjoying a wonderful Thanksgiving Day surrounded by family, friends, food, and, yes, trademarks.
Even in the midst of one of the most significant holidays I still couldn’t quite get away from trademarks. While we weren’t discussing res judicata, trade dress protection, or comparative advertising, our discussion still underlined a very important (and sometimes overlooked) principle of trademark law: context is everything.
Context is what kept consumers being from confused yesterday as to whether the Lions were doubling up the Chicago Bears, the California Golden Bears, the Baylor Bears, or the Hershey Bears. The NFL association, uniforms, use of other wording, and many other contextual clues all contribute to consumers ability to distinguish between the various Bears.
Context is also what turns an otherwise descriptive name into a distinctive trademark. “Apple” is merely descriptive of food products, but for computers that descriptive meaning is lost. And while the phrase “Thanksgiving Day” is a holiday that is not likely registrable for a number of goods, when used in the context of pet food, it’s distinctive and registered:
And context is very important for those brands fighting off potential genericide, i.e., when a brand name loses its trademark significance by becoming the generic term for the goods. When you were around the dinner table, did you ask for Cool Whip® or non-dairy whipped topping? Jell-O® or gelatin? Did you cook your casserole in a Crock Pot® or a slow cooker? And when your guests went home with leftovers, did you put them in Tupperware® or containers? And with the cold weather, did you make sure to put on your Chapstick® or did you use lip balm?
Yes, context is everything. It matters for brands and it matters for a lot of things your family and friends might say at the dinner table during a long, stressful holiday. And sometimes context is as simple as geography. The issue that brought all of this up for my family was whether some of the dishes we were preparing was a “casserole” or a “hot dish.” Being from Iowa, I was obviously on Team Casserole. As you can probably infer, we had someone from up Nord representing Team Hot Dish. But again, context is everything. And in this context, whether it was hot dish or casserole, it was still Thanksgiving.
Hope you all had a Happy Thanksgiving!
As “Black Friday” store openings creep earlier and earlier into Thursday, I’m growing concerned that my favorite holiday Thanksgiving is losing its luster. We eat pumpkin pie rather than carve pumpkins like Halloween, and Thanksgiving doesn’t carry the festiveness or allure of a stocking hung by the chimney with care. We gorge on tryptophan, watch professional athletes pummel each other while trying to move a ball towards a goal, and stand in line for televisions. We’ve sort of denigrated the turkey – trying to fry it, mixing it with other fowl in the form of a Turducken (also a registered trademark of Magic Seasoning Blends), pretending that Tofurkey seems normal, and local firm OLSON creating the Hot Durkey for Oscar Meyer.
Why must we rush from Halloween right into Christmas?
Can’t we all just take a break in November and be thankful?
Does Thanksgiving need a re-brand?
The importance of giving thanks is well documented. Books on happiness generally suggest that expressing gratitude, even in a personal journal, leads to an increased level of satisfaction and happiness. Lazlo Bock, senior VP of people operations at Google, believes in it. Benedictine monk David Steindl-Rast did a TED talk on it. And science even supports it. When kids make a list about what they’re thankful for, you may be surprised about what you learn about them, like this guy wrote about on Deadspin.
There’s power behind those two magic words – “thank you” – that guest blogger James Lukaszewski wrote about here a few months ago. Thank you notes seem to be kind of a lost art in the digital age. You’d think Jimmy Fallon’s Thank You note segment would make it catch on a little more widely. “Thank you” notes certainly provide a teachable moment to kids about graciousness and thankfulness.
I’m certainly grateful to DuetsBlog for the opportunity write on this top-rated, Blawg 100 blog, grateful to my colleagues who contribute such well-written and often humorous posts, and grateful to all of you for taking some time to read it.
What are you feeling grateful for today and how are you expressing it?
The court stated the overarching issue as follows: "whether, considering the entire record and drawing all reasonable inferences in Pro-Football's favor, the Court should grant Defendants' Motion to Dismiss because Pro-Football cannot bring an action against Defendants who have no commercial interest in the mark under §1071(b) of the Lanham Act."
In denying the motion, the court concluded as follows:
First, 15 U.S.C. §1071 provides review of a Trademark Trial and Appeals Board's decision in the Federal Circuit or a District Court, and any meritorious interest brought before an administrative proceeding, must carry over into a review of said proceeding. Second, the prior proceeding before the TTAB was an inter partes proceeding where Defendants were the sole adverse parties. Third, Defendants' petition for cancellation evidenced that Defendants have a legitimate direct and personal interest in the registration.
Read comments and post your comment here
TTABlog note: I doubt that many people are surprised at this ruling. Difficult to see how a party who successfully brought a proceeding could lack an interest in the outcome of the appeal.
Meanwhile, the United States is considering whether to intervene in this case, because Pro-Football has raised constitutional challenges to the validity of Section 2(a) of the Trademark Act. The court has set a deadline of January 9, 2015, for the U.S. to intervene. Discovery is set to close on that date.
Text Copyright John L. Welch 2014.
Thanksgiving is coming a couple of days early here at DuetsBlog.
We have been minding our business — doing what we do best — fresh branding, trademark, and IP content and insights here five days a week, always thankful for the wonderful contributions from our talented guest bloggers, and staying inspired to write even more when generous folks like Seth Godin drop by for an encouraging word every now and then, and then, and then, and then, and then, and then, and again.
We celebrated our 5th and Golden Birthday earlier this year, yet we’re happy to be called NEW and thankful that the ABA Journal made DuetsBlog part of its 8th Annual Blawg 100. Here is how they describe us:
“All too frequently in corporations, the marketing team sees the legal department as buzzkill dream ruiners. Meanwhile, the company lawyers are convinced that the marketing folks are steering toward the shoals of litigation with berserker intensity. What’s needed is a more harmonious cooperation, DuetsBlog’s team of trademark attorneys argues. With an engaging mix of levity and real talk, they discuss recent examples of IP cases in which things may have gone horribly wrong.”
And, here is how ABA Journal goes about its Blawg 100 business:
“Every year, we find ourselves behind the eight ball as we struggle to rack up a great list and choose new nominees for our now 30-blog-strong Hall of Fame. No, we don’t just go through the 4,000-plus blogs in our directory and consult a Magic 8 Ball to decide what to add or scratch off our list. We remember the blogs that have tipped us off to breaking news and the bloggers who have compelled us to write about their innovative ideas.
And over the summer, we cue readers—and other bloggers—to write in and let us know about their favorites: When we can see their love for a blog is real and not a marketing hustle, it catches our attention.”
Dear readers, here is your chance to validate the ABA Journal’s confidence in us, show your support and cast a vote for DuetsBlog.
The digital polls remain open until the close of business December 19, so please vote here!
And, have a safe and blessed Thanksgiving!
Reminder: ALI Webinar Dec 4th: "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers"
Prof. Ken Germain
This practical program is specifically designed for business and IP lawyers who need to stay current with the recent trends in trademark, trade dress, and false advertising laws. Join us as our expert faculty provides a concise update and review of the latest cases from the United States Supreme Court, United States Courts of Appeals (including the Federal Circuit) and the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.
- recent federal registration decisions on issues such as dilution-by-blurring, fraud, proof of lack-of-bona fide intent, disparagement, and specimens of use.
- possible resuscitation of a dead “generic term”
- likelihood of confusion, distinctiveness of marks, sponsored links
- dilution vs. confusion
- what's new in trade dress/product design and functionality
- injunctive relief, whether trademark causes deserve a presumption of irreparable harm
- monetary remedies: damages and attorney's fees under Lanham Act sec 35(a)
- consumer surveys: still in vogue or under suspicion
- insurance coverage for 'advertising injury' claims
Genericness: Not much to look at here. Dictionary definitions of PC and LAPTOP, along with media and public usage of PC LAPTOPS, convinced the Board that the applied-for designation is generic for applicant's goods. Furthermore, a term that is generic for certain goods is likewise generic for services featuring those goods.
Mere Descriptiveness: Applicant feebly contended that PC LAPTOPS may be considered a double entendre because "PC" is defined not only as "personal computer" but also as "politically correct." The Board, however, found nothing in the record to suggest that consumers would associate the concept of political correctness with computers. [Do some people think Apple computers are more "PC" than PC computers? - ed.].
Acquired Distinctiveness: Because PC LAPTOPS is highly descriptive, applicant had a "heavier burden" in demonstrating acquired distinctiveness. Applicant claimed continuous and substantially exclusive use since 1997, extensive advertising, consumer recognition, and recognition by the industry and media. But it failed to provide its advertising expenditures, or any context for comparisons with the industry. Nor did it provide sales volume.
Applicant offered the results of a consumer survey, but the Board accorded it little probative value, since no information was provided as to the methodology employed or the questions asked. "[T]here is nothing in the record to provide a basis for the results provided, or even what those results are intended to signify."
Finally, applicant's evidence of media recognition and industry awards was noted by the Board, but perhaps more important was applicant's failure to show that its use of PC LAPTOPS has been substantially exclusive, since there were "multiple uses by third-parties in a descriptive or generic manner."
The Board concluded that applicant had failed to establish acquired distinctiveness in connection with its identified goods and services.
And so the Board affirmed both refusals.
Read comments and post your comment here
TTABlog query: WYHA?
Text Copyright John L. Welch 2014.
Love the recent holiday billboard ad for the beloved Coca-Cola brand!
With that memorability, heritage and long-standing success it’s hard to understand how anyone could think differently about the M’M! M’M! GOOD! slogan, oh well.
What a dispute. I’ve written before (recursive link) about the dispute over the ownership of the mark YOGI for at least tea. I say “at least” because what seems to be missing from the four (or more) lawsuits that involve the trademark is the concept that a trademark has something to do with goods and services or source identification.
Here is the highly simplified story, taken from a number of court opinions. Harbhajan Singh Khalsa Yogiji, known as Yogi Bhajan, was the spiritual and religious leader of the Sikh religion in the United States. He was married to Inderjit Kaur Puri, known as Bibiji. When Yogi Bhajan died in 2004, the assets of his living trust were split between the Survivor’s Trust, for the benefit of Bibiji, and the Administrative Trust, for the benefit of 15 individuals who had been Yogi Bhajan’s assistants.
Golden Temple of Oregon, LLC had been a licensee of the Living Trust for the name and likeness of Yogi Bhajan on cereals, tea and body care products. When Yogi Bhajan died, the bookkeeper instructed Golden Temple to split the royalty payments between the Survivor Trust and the Administrative Trust.
In 2008, Golden Temple stopped using Yogi Bhajan’s name and likeness and stopped paying royalties, but continued to use the names “Yogi” and “Yogi Tea.” Bibiji entered into an arbitration with Golden Temple to decide if there was a trademark in “Yogi” and, if so, who owned the trademark. Bibiji suggested to the Administrative Trust that it participate but the Trustees declined, “seemingly in part because they thought that the term ‘Yogi’ was a generic term rather than a trademark and in part because they did not feel the Administrative Trust had the funds to take on any more litigation.” The arbitration panel held that there were trademarks and, as between Golden Temple and Bibiji, Bibiji owned them. The arbitration panel awarded the trademark registrations and applications to Bibiji (Bibiji by now had revoked the Survivor Trust). The arbitration decision specifically did not decide the relative rights of Bibiji and the Administrative Trust with respect to the use of YOGI.
Then things start to get interesting. The Administrative Trust granted Golden Temple a license* to the trademarks. The Trustees were apparently concerned that the trademarks would be abandoned if they weren’t used (“The Trustees agreed to accept the lower royalty rate because there was concern about Golden Temple having a deadline to its use of the trademark …”) and because Golden Temple had experience selling the goods. The plan was that the Administrative Trust would sell its share of the mark to Golden Temple for $9.7 million.
Golden Temple and the Administrative Trustees, who had not previously been involved in the suit, moved to vacate the arbitration award. The court denied the Trustees’ motion for lack of standing since the award did not prevent the Trustees from claiming their 50% ownership of the marks or exercising their ownership rights. Golden Temple also claimed that it was error to award the registrations to Bibiji but the court didn’t see that was a problem: “I am not persuaded that the panel improperly adjudicated the rights of the Trustees. Nothing in the award prevents the Trustees from seeking co-registration of the marks. The panel only determined the rights of the marks as between Golden Temple and Bibiji, e.g., the panel did not find that the Trustees are not co-owners of the marks.”
And, most recently, the Court of Appeals of New Mexico has affirmed the division of the community estate of Yogi Bhajan. So, what we are left with is trademarks jointly owned by Bibiji and the Administrative Trust (unless they have already been assigned to Golden Temple, now known as East West Tea Co. LLC). The Court of Appeals also, in a roundabout way (since it was an estate case), ratified the license that the Trustees granted to Golden Temple:
To the extent Bibiji is claiming that the Trustees’ interim licensing agreement with Golden Temple … somehow negatively impacted her half interest in the Yogi trademarks, the district court viewed the relationship between the parties regarding the trademarks as co-owners. We observe that because Bibiji and the Administrative Trust each owned a one-half interest in the trademarks, this contention of negative impact on Bibiji’s trademark interest is in the nature of a claim of trademark infringement by one co-owner against the other, not a claim of breach of fiduciary duty in the trust context. Since the only claims Bibiji asserted against the Trustees were claims of breach of fiduciary duty, these infringement claims seem to be misplaced. Nonetheless, because the parties litigated these claims without objection and because the district court decided them, we address them.
The district court relied on case law stating that “[a]n owner does not infringe upon his co-owner’s rights in a trademark by exercising his own right of use. Likewise, he does not dilute those rights by exercising his own right of use.” This is legally correct, according to a leading treatise on the subject. “When parties are co-owners of a mark, one party cannot sue the other for infringement. A co-owner cannot infringe the mark it owns.”
To the extent Bibiji had any claim that the Trustees had any additional duty to her regarding the trademarks, the district court put that claim to rest when it found that “[t]he Trustees’ decision to enter into the [i]nterim [l]icensing [a]greement … with [Golden Temple] was fiscally sound and preserved the marks’ financial potential.” The district court explained that if the Trustees had not entered into the agreement, “[Golden Temple] would have been forced to re-brand, which would have greatly diminished, and potentially destroyed,” the potential financial value of the trademarks. These findings are supported by the evidence summarized above. Given the cost of the present litigation to the Administrative Trust, it made sense for the Trustees to preserve the value of the trademarks through the interim licensing agreement and the tolling agreement rather than to expend additional trust funds to pursue litigation against Golden Temple and [second licensee] Amalgamated. We therefore reject Bibiji’s claim that the district court erroneously failed to find that the Trustees mismanaged assets.
What a hot mess. What is notably missing from all the opinions is any recognition of what a trademark is. It seems to have gone wrong with the original division of the assets. At various points—the original division, during an untimely probate, and the subsequent breach of fiduciary duty claim, no one recognized that a trademark and an income stream from a trademark license are two separate rights. This is how the Court of Appeals described the the division of the trademarks:
To the extent that Bibiji is arguing that the Trustees failed to accurately inventory and distribute her half interest in the trademarks, the district court found that all of “Yogi Bhajan’s intellectual property interests were properly inventoried and, in accordance with the Living Trust’s 2004 amendment, 50 [percent] of Yogi Bhajan’s intellectual property was distributed to Bibiji.” The district court further found that the intellectual property interests that were the subject of the pre-death licensing agreements with Golden Temple and Amalgamated “were inventoried on the [estate tax return] Form 706 by the contracts themselves, and are specifically listed on the contract exhibits.” And the district court found that “all [intellectual property] interests to which Bibiji was entitled were properly and promptly distributed to her, most especially the [Golden Temple] and Amalgamated royalties interests intended to provide Bibiji a stable source of income.” These findings were supported by the evidence summarized above and in the preceding section of this Opinion.
See? It’s all about the contracts and the revenue stream, not the underlying rights that were being licensed. There is also the huge mistake of lumping them all together as “intellectual property”; in the very beginning no one was even thinking there were trademarks, rather, it was all about Yogi Bhajan’s name and likeness, that is, his right of publicity. Had the New Mexico court thought about the trademark as a separate asset from Yogi Bhajan’s right of publicity, and both of those separate assets from the revenue stream derived from the contracts that licensed them together, it might have reached a conclusion that was more consistent with what a trademark is, a sole source identifier. But there was no discussion whatsoever of the brand significance of YOGI or YOGI TEA, what consumer expectation is, who monitors the quality of the goods, with whom the customers associate the brand, or any other signals about ownership. A trademark is an indivisible asset—you can’t have warring factions deciding what the quality of the goods and services are.
So we now have two entities free to license the same trademark, which, if they do not cooperate, will be the end of it as a mark. There will be different goods with different trade dress and consumers will eventually come to think of “Yogi Tea” as just a kind of tea. What a mess.
* And what a mess of a “license.” Everything—copyright, right of publicity, trademark, recipes, are all lumped together and none given appropriate treatment under their respective legal doctrines. With respect to trademark, there is not even a passing reference to quality control.
Khalsa v. Puri, No. 32,600 (App. Ct. N.M. Nov. 19, 2014).
Khalsa v. Puri, No. D-101-CV-2007-02431 (Dist. Ct. N.M. Oct. 16, 2012).
Golden Temple of Oregon, LLC v. Puri, No. 3:11-cv-01358-HZ (D. Or. Aug. 7, 2013).
Puri v. Golden Temple of Oregon, LLC, ASP No. 100614 (Arb. July 29, 2011).
The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.
Attention please: Is there a doctor of equivalents in the house? "Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine ... similarity of connotation in order to ascertain confusing similarity with English word marks." Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The doctrine applies when it is likely that an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. Id. “The ‘ordinary American purchaser’ in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language.” In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).
There was no dispute that an appreciable number of U.S. consumers speak or understand Italian, or that the Italian word "secolo" is translated into English as "century." In addition to similarity in connotation, however, the Board must consider the appearance, sound, and overall commercial impression of the two marks in determining likelihood of confusion.
The Board found the marks dissimilar in appearance but somewhat similar in sound. "The first letter “c” in “century” is pronounced as an “s” would be, and each term is made up of three syllables." Furthermore, both words are arbitrary as applied to wine; thus SECOLO is conceptually strong as a trademark. The facts that applicant's goods (wine) encompass those of the cited registration (table wine), and that the goods are sold to the same customers through the same channels of trade, increase the likelihood of confusion.
Applicant pointed out that registrant, during prosecution of the application to register SECOLO, contended that purchasers would not “stop and translate” SECOLO into “century.” Registrant took that position when responding to a refusal to register based on the registered mark CENTURY OF PORT for port wine. The Board pointed out, however, that registrant's prior assertion is not an admission, although it may be considered as "illuminative of shade and tone in the total picture." See Interstate Brands Corporation v. Celestial Seasonings, Inc., 198 USPQ 151 (CCPA 1978). Each case must be decided on its own record, and registrant’s prior statements cannot be treated as indicating its position with respect to applicant’s mark and the goods at issue here.
Finally, as to applicant's assertion that wine drinkers will not translate foreign terms on wine labels, the Board found no evidentiary support. However, "[e]ven assuming some wine labels bear designations in languages other than English does not compel a conclusion that prospective purchasers will not translate any such terms, including SECOLO, into English."
And so the Board affirmed the refusal.
Read comments and post your comment here
TTABlog query: When the English translation of the foreign word is not an exact equivalent to the English language mark, likelihood of confusion may be lacking. See for example this case involving the Japanese word KOKORO and the English word HEART. For a real contretemps over a translation, see the GO GIRLS case (here).
Text Copyright John L. Welch 2014.