This past week, I conducted a trademark search for a client that reminded me just how wacky and frustrating the Trademark Office can be.  For a variety of reasons, I am not going to reveal the exact trademark I searched.  Instead, I will say that I performed a trademark search on the mark THE CARBON MONOXIDE PEOPLE, which is used in connection with a business that sends trained professionals to your home to test for carbon monoxide leaks.  I can tell you that the client’s actual trademark is extraordinarily similar to the THE CARBON MONOXIDE PEOPLE and that it is used in association with closely related services.

A little background in trademark law is necessary for you to to truly appreciate this story.  Merely descriptive trademarks are those that describe a quality, feature, function, or characteristic of the products or services with which they are used.  Descriptive marks initially receive very little federal protection and are only eligible for federal registration on what is called the Supplemental Register.  Over many years of use, some descriptive trademarks can acquire distinctiveness or “secondary meaning” in the minds of consumers.  When the owner of a descriptive trademark is able to prove that the mark has acquired distinctiveness such that it is no longer merely descriptive, the owner can attempt to register its mark on the Principal Register under a section of the Trademark Act called Section 2(f).  The Principal Register is where non-descriptive or “inherently distinctive” trademarks are registered.  If possible, you want your trademark to be on the Principal Register because it affords you the greatest scope of benefits and protections available under the law.  You can think of the Supplemental Register as being ground chuck and the Principal Register as being fillet mignon.

From a likelihood of confusion perspective, the trademark search went smoothly.  I didn’t find any pending trademark applications or existing trademark registrations that I thought would be an obstacle to my client using or attempting to register its trademark.  But, due to the nature of the trademark, I had a hunch that the Trademark Office would consider it to be merely descriptive and would refuse registration on the Principal Register on that basis.  So, I delved a little further into the Trademark Office’s records to see how it has treated similar marks in the past.  What I found was inexplicable.

Below are two lists of trademarks.  All of the trademarks are used in connection with retailing and/or distributing the products noted in the trademarks themselves.  If you can figure out why they were treated differently by the Trademark Office, I will bow to your superiority.

Trademarks Considered Descriptive (registered on the Supplemental Register or on the Principal Register under Section 2(f))

THE CARPET AND RUG PEOPLE

THE PHOTOGRAPHY PEOPLE

THE HOMES PEOPLE

THE SPECIALTY PRODUCE PEOPLE

THE LOCK PEOPLE

THE TOOL KIT PEOPLE

Trademark Considered NOT Descriptive (registered on the Principal Register as “inherently distinctive”)

THE CONNECTOR PEOPLE

THE BEEF PEOPLE

THE HARDWARE PEOPLE

THE PACKAGING PEOPLE

THE GINGER PEOPLE

OK, so this is what we’ve learned.  If you are in the business of retailing or distributing carpets, photographic equipment, mobile homes, fruits and vegetables, security products, or tool kits, then your trademark gets placed on the Supplemental Register unless you can prove that it has acquired secondary meaning.  On the other hand, if you are in the business of retailing or distributing electrical components, beef, general hardware and power tools, flexible packaging supplies, or ginger-based food products, then your trademark is considered inherently distinctive and entitled to registration on the Principal Register.  This is completely nonsensical in my humble opinion.

But, if you think that’s crazy, I saved the best one for last.  There is an existing trademark registration for THE SHRIMP PEOPLE for “seafood distributorship services” that is registered on the Principal Register under Section 2(f).  There is also a registration owned by a different company for THE TUNA PEOPLE for “wholesale distributorship services in the field of fresh seafood” that is registered on the Principal Register without any showing of acquired distinctiveness.  I’m not kidding.  Identical services.  Essentially identical trademarks.  Completely different treatment by the Trademark Office.  It’s all a little bit “fishy” if you ask me.  Perhaps the tuna lobbyists got involved?

But it doesn’t stop there.  Here are two lists of trademarks used in connection with educational services.  Again, if you can explain the disparate treatment, I would be forever grateful.

Trademarks Considered Descriptive

THE PARALEGAL PEOPLE (educational services in the field of paralegal education)

THE FOOD SAFETY PEOPLE (educational services on topics of interest to the food processing industries)

THE WELLNESS PEOPLE (educational services in the field of health education)

Trademarks Considered NOT Descriptive

THE RETAIL PEOPLE (educational services on topics of interest in the retail construction industry)

THE RETIREMENT EDUCATION PEOPLE (educational services in the field of retirement planning)

THE WATER QUALITY PEOPLE (educational services in the field of water quality and water conservation)

This kind of inconsistency by the Trademark Office illustrates the highly subjective nature of trademark law.  Of course, this makes it incredibly difficult for trademark attorneys like myself to advise their clients on issues of trademark adoption and clearance, which can ultimately lead to unsatisfied and disappointed clients.  As you can imagine, it’s pretty embarrassing to be forced into having the following conversation with someone who specifically hires you because of your experience and knowledge in the trademark field:

Client:  Morris, I’m going to be opening up a store that sells televisions.  I want to call it “The Television People.”  Please conduct a trademark search on THE TELEVISION PEOPLE and let me know if I can register my trademark.

Morris:  Sure, I’d be glad to.  I’ll have the results for you in a few days.

Client:  Great!  Thanks Morris.  You’re the best trademark attorney ever!

Three days later…

Morris:  I have the trademark search results on THE TELEVISION PEOPLE for you.

Client:  Wonderful!  So, can I register THE TELEVISION PEOPLE?

Morris:  Um, I don’t know.  Maybe yes.  Maybe no.  That will be $250.

Client:  I take back what I said about you being the best trademark attorney ever.

Oh well.  Come to think of it, my “Best Trademark Attorney Ever” t-shirt didn’t quite fit me anyway.

First of all, I want to wish everyone a very Happy New Year!  I hope 2012 brings all of you much joy, success, and prosperity.  My New Year’s resolution is to continue building my trademark law practice and to spend more time seeing and learning about the world.  I’m actually going on my very first cruise in July (9 nights!) thanks to the extraordinary generosity of my Aunt Faye and Uncle Steve.  I also want to lose about 15-20 pounds, but I say that every year and it just never seems to happen.  I guess I should just be happy that I’m not gaining 15-20 pounds every year.  Perhaps the July cruise will motivate me to stop gorging myself at the local Chinese buffet.  If the Hibachi Grill Supreme Buffet in St. Peters, Missouri goes out of business, you’ll know why.  If it has record profits, well, there’s always next year…

For this week’s article, I’m keeping it pretty light and fluffy.  Out of curiosity, I decided to conduct a quick federal trademark search of “2012″ just to see if there are any pending trademark applications or existing federal trademark registrations for marks that are funny or noteworthy for some reason.

Since 2012 is a presidential election year, it’s not surprising that my search revealed many trademarks with a political spin.  Some of my personal favorites include:

HERMAN CAIN PRESIDENT 2012 (a waste of money unless Cain is going to be running for president of a different country)

DUMP HIM 2012 (perfect for both Republicans and feminists)

SHOVEL READY FOR ELECTION DAY 2012 (I bet Obama would even chuckle at that one)

NOBAMA 2012-2013 (probably just a typo, right?)

ABO 2012 ANYBODYBUTOBAMA.COM (be careful what you wish for)

MO’BAMA FOR PRESIDENT 2012 (finally, some love for the President)

2012 is also an Olympic year and my trademark search uncovered several trademark registrations owned by the Comite International Olympique for:

LONDON 2012 (host of this year’s Summer Olympics)

MADRID 2012

PARIS 2012

MOSCOW 2012

Along with New York, these cities were the finalists to stage the 2012 Olympic Games that were announced in May 2004.  What I find somewhat interesting about these registrations is that their underlying application filing dates are way back in October 2003 (almost nine years before the actual Olympics).  Of course, since Madrid, Paris, and Moscow failed to clinch the dubious honor of hosting the 2012 Games, I would expect that the Comite International Olympique will allow the registrations to expire.

Finally, a pending trademark application for I SURVIVED DECEMBER 21, 2012 caught my eye.  My research indicates that this date refers to the very last day in the ancient Mayan Long Count calendar.  According to some sources, December 21 will be the end of civilization as we know it.  Doomsday.  Armageddon.  Everything becomes Tidy Cat kitty litter.  Now, I don’t want to sound ignorant, but wouldn’t it have made more sense for the owners of this application to have waited until December 22 of this year to file it?  You know, so as to ensure that their $275 government filing fee doesn’t go to waste.  On the other hand, I guess if the Earth is still spinning in approximately 50 weeks, they will be all ready to monetize our collective good fortune.  Nonetheless, I’d probably wait until the sun rises that morning before having celebratory t-shirts made.  You know, to avoid jinxing the continuing existence of mankind.

I almost put this trademark dispute in the “ridiculous trademark opposition” category, but I didn’t want to add insult to injury after the Atlanta Braves’ embarrassing late-season collapse that resulted in the team missing the postseason after leading the St. Louis Cardinals by 10.5 games in the wild card race.  See, I actually do have a heart.

Apparently, on June 22 of next year, Disney/Pixar is poised to release a new animated feature titled “Brave.”  According to Disney’s website, the movie is about a young, female archer who “must discover the meaning of true bravery in order to undo a beastly curse before it’s too late.”  From that description, it certainly doesn’t sound to me like “Brave” is going to be nearly as entertaining or original as “Wall-E” or the “Toy Story” series.  In fact, it sounds downright dull, formulaic, and probably only worth seeing if it becomes available at the local Redbox for $1.  Of course, it’s not like I think any movie is worth paying $10 to see at the theater.  Especially after last summer when I wasted 139 minutes of my life watching “The Tree of Life.”  Worst movie I’ve ever seen.  God awful.

Anyway, in March 2010, Disney filed 14 intent-to-use trademark applications seeking federal registration of the word BRAVE.  These applications cover a wide range of products and services, including film production, clothing, food, toys, games, home accessories, furniture, luggage, and almost everything else you could possibly think of.  At the same time, Disney also submitted 14 other trademark applications seeking registration of the phrase DISNEY PIXAR BRAVE for nearly identical goods and services.  Almost all of Disney’s 28 trademark applications were approved by the Trademark Office, but a few of the BRAVE applications have been suspended pending the disposition of prior-filed applications owned by individuals and businesses unrelated to Disney.

Well, the Atlanta National League Baseball Club (known to you and me as the Atlanta Braves) didn’t seem to have a problem with any of Disney’s trademark applications for DISNEY PIXAR BRAVE, but on July 8, 2011, the Braves filed an opposition against nine of Disney’s BRAVE applications (at a cost of $2,700 in government filing fees alone).  The notice of opposition alleges that the Atlanta Braves own 34 federal trademark registrations for marks that incorporate the word BRAVES that are registered for products and services that overlap with some of those identified in Disney’s applications.  Because BRAVES and BRAVE are essentially identical in appearance and sound, the Atlanta Braves assert that Disney’s trademarks are likely to cause confusion in that consumers will mistakenly believe that either (1) Disney’s BRAVE-branded goods and services emanate from the Atlanta Braves or (2) that the Atlanta Braves sponsor or endorse Disney’s products/services.  In reviewing the Trademark Trial and Appeal Board’s records, it appears that the parties have agreed to suspend the opposition proceeding while they engage in settlement negotiations.

Although I am usually against these kinds of highly questionable trademark oppositions, I am throwing my full support behind the Braves and encourage them to file as many oppositions as possible.  After all, every dollar the Braves spend on this nonsense translates into one less dollar they have to build a team that won’t buckle in the last month of the season.  As a fan of the Cardinals, I feel it’s my duty as a trademark attorney to do what I can to help the Redbirds bring home another Word Series championship in 2012.  You’re welcome Cardinals Nation.

This week’s trademark article is about one of my favorite sodas currently on the market.  It has that unmistakable Coca-Cola taste with none of the high fructose corn syrup that makes you fat.  Honestly, I have no idea why someone would choose to buy Diet Coke when Coca-Cola Zero is readily available and has so much more flavor and sweetness.  To me, Diet Coke is basically just fizzy water with just a hint of cola flavor.  If I go to a restaurant or fast food joint that offers Coke products but not Coca-Cola Zero, I always have to mix Diet Coke and Coca-Cola together so that I don’t consume a thousand calories of soda with the 4-5 free refills I’m sure to order.  Hey, I can’t help it.  I like soda.  I could have worse addictions, you know.

On March 4, 2005, The Coca-Cola Company filed a trademark application seeking to federally register the trademark COCA-COLA ZERO for “beverages, namely soft drinks; syrups and concentrates for the making of the same.”  The trademark examining attorney assigned to review the application requested that Coca-Cola submit a disclaimer of all exclusive rights in the word “ZERO” based on her belief that it is merely descriptive when used in connection with soda that contains zero calories.  Instead of just entering the disclaimer like most companies would have, Coca-Cola argued that “ZERO” has “no fixed and discernible meaning that would be readily apparent to a potential buyer” and that a “multistage reasoning process is necessary to ascertain which ingredient (or ingredients) is not present” in Coca-Cola’s soft drink.  Question: Do you find Coca-Cola’s statements as insulting to the intellectual abilities of its customers as I do?  “Multistage reasoning process?”  You’ve got to be kidding.

After the examining attorney picked herself off the floor from laughing so hard at Coca-Cola’s feeble arguments, she again requested that Coca-Cola enter a disclaimer of “ZERO” into the application record.  This time, Coca-Cola essentially conceded that “ZERO” is descriptive but that it had acquired distinctiveness or “secondary meaning” in the minds of consumers such that they now associate “ZERO” exclusively with Coca-Cola and perceive it as a trademark that identifies and distinguishes Coca-Cola’s products from those offered by other beverage manufacturers.  Although the examining attorney initially rejected Coca-Cola’s claim of acquired distinctiveness, she ended up actually approving the trademark application for publication after Coca-Cola submitted evidence showing the impressive sales of the COCA-COLA ZERO product, significant advertising expenditures, and extensive unsolicited media coverage.

Well, apparently some of Coca-Cola’s competitors were paying close attention to the federal trademark records in August 2007 because Royal Crown Company (maker of Diet Rite soda) and Companhia de Bebidas das Americas – AMBEV (a Brazilian soft drink manufacturer) filed trademark oppositions against Coca-Cola’s application for COCA-COLA ZERO on the basis that the mark is not entitled to registration without a disclaimer of the word “ZERO.”  Both of the opposers note in their oppositions that “zero” is a highly descriptive term in the beverage industry and express concerns that Coca-Cola will attempt to interfere with the legitimate use of the word “zero” by Coca-Cola’s competitors to describe attributes of their beverages.  In fact, Coca-Cola has already filed oppositions against a number of trademark applications for marks that incorporate “zero,” including PURE ZERO and DIET RITE PURE ZERO (owned by Royal Crown), LESS THAN ZERO, ZERO IS GOOD, SKINNY WATER ZERO, DOUBLE ZERO, and NATURALLY ZERO.  As of today, the oppositions filed by Royal Crown Company and Companhia de Bebidas das Americas – AMBEV are still pending but we should have a decision by the Trademark Trial and Appeal Board within the next few months.

In my humble opinion, I think the trademark examining attorney should have stuck to her guns and forced Coca-Cola to appeal her refusal to register COCA-COLA ZERO without a disclaimer of “ZERO.”  It looks to me like she got overwhelmed by the almost 100 pages of arguments and evidence Coca-Cola submitted in support of its position and failed to consider the real-world impact on Coca-Cola’s competitors of allowing Coca-Cola to claim exclusive rights in such an incredibly descriptive word.  I don’t know about you, but I feel that “zero” is essentially the same as saying “diet,” “lite,” “light,” or “free” when you’re talking about a product not containing calories or certain ingredients.  There’s no way a company would be entitled to exclusive rights in those terms, so why should “zero” be treated any differently?

Having said that, PepsiCo owns a federal trademark registration for the mark PEPSI ONE.  The PEPSI ONE soft drink only has one calorie per eight ounce serving.  But, the registration does not include a disclaimer of the word “ONE.”  On the other hand, Dr. Pepper/Seven Up, Inc. is the owner of a federal trademark registration for DR PEPPER TEN.  The DR PEPPER TEN soda has ten calories per can.  And, the registration does include a disclaimer of “TEN.”

Please excuse this trademark attorney while he beats his head against a wall in frustration.

This week’s article involves a two year fight between the Hershey Chocolate & Confectionery Corporation (“Hershey”) and the United States Patent and Trademark Office regarding the chocolate bar pictured above.  On August 20, 2009, Hershey filed a trademark application seeking to register the following trademark for “candy and chocolate,” which is described by Hershey as “a configuration of a candy bar that consists of twelve (12) equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle:”

The Trademark Examining Attorney assigned to review Hershey’s application refused registration of the trademark for two reasons.  First, he asserted that the three-dimensional configuration was functional and not eligible for federal registration under any circumstances.  Basically, he argued that the configuration of the candy bar was primarily to facilitate breaking it into bite-sized pieces.  Because the configuration provided a specific utilitarian advantage to the consumer and was not merely acting as a trademark (like the word HERSHEY’S), the Trademark Examining Attorney deemed the overall design to be functional.

In the alternative, the Trademark Examining Attorney argued that, even if the candy bar configuration was not functional, it was still not entitled to federal registration because it was simply non-distinctive product design that had not yet acquired distinctiveness or “secondary meaning” among consumers.  In other words, the Trademark Examining Attorney argued that most consumers would not recognize the design of the Hershey bar as being a trademark exclusively used by Hershey to identify and distinguish its candy bars from those offered by Hershey’s competitors.  Rather, consumers would perceive it as just another ho-hum product design that they couldn’t care less about.

In response, Hershey first addressed the functionality rejection.  Hershey pointed out that candies and chocolates are manufactured in a wide variety of sizes and shapes, but that none of them embody the same features or combination of features as Hershey’s configuration.  For instance, some chocolate bars are divided into 16 square-shaped segments, some are divided into 28 rectangular segments, and others have no segments at all.  This tends to indicate that Hershey’s use of its particular configuration is not necessarily superior to other configurations and that granting Hershey exclusive rights to its configuration would not put competitors at a significant non-reputation based disadvantage.

Hershey then took aim at the Trademark Examining Attorney’s second refusal, which was based on his opinion that the candy bar design was non-distinctive.  Hershey claimed that it has been using the design for over 40 years and that it had spent close to 200 million dollars on nationwide advertising over the past 24 years.  In addition, sales of candy bars with the particular configuration had exceeded four billion dollars over the past 12 years.  Hershey also referred to a third-party website that described the candy bar design as a “classic confectionery icon,” but because Hershey forgot to actually attach a printout of the website page as part of its response, it was not admitted into evidence.

The Trademark Examining Attorney was underwhelmed by Hershey’s arguments.  He maintained his functionality refusal and rejected Hershey’s evidence of acquired distinctiveness as being insufficient.  Hershey countered with even more evidence and affidavits from Hershey employees and others in the candy industry (225 pages worth) attesting to the fact that the candy bar configuration had no utilitarian advantage and that a limitless variety of other designs and configurations were equally feasible and cost-effective.  In support of its position that the configuration had acquired distinctiveness, Hershey submitted a market research survey indicating that around 42% of likely purchasers of chocolate bars identified the Hershey bar design as uniquely belonging to Hershey (which is quite high).  Still, the Trademark Examining Attorney remained unconvinced and made both of his refusals final.  He also submitted into evidence an expired utility patent (not owned by Hershey) that was for a candy manufacturing process that involved scoring chocolate so that it could be broken into desired shapes and sizes for purposes of eating, sharing, measuring, and cooking.  The Trademark Examining Attorney argued that the existence of this utility patent is persuasive evidence of functionality because the statements in the patent refer to the utilitarian function and advantages of scoring chocolate.  He further stated that “the subdividing of a rectangular piece of candy into smaller rectangular pieces of candy with break-off lines is so common and non-distinctive in the candy industry” that Hershey would have to show a lot more than it did to prove that the configuration of its Hershey bar had acquired distinctiveness in the minds of consumers.  Hershey appealed the decision to the Trademark Trial and Appeal Board and is currently awaiting a decision.

So, what do you think?  Do you agree with Hershey or the Trademark Examining Attorney?  Although reasonable minds can differ, I think the design of the Hershey candy bar is functional.  Of course, I don’t know for sure what was going on in the minds of Hershey product developers 40 years ago, but seeing that the Hershey bar configuration is pretty bland and pedestrian, I have to believe it was designed for another purpose other than to “wow” the American public.  That purpose would probably be to make it easier to divide the chocolate for eating and cooking.  But if it’s not functional, then I agree with Hershey that the configuration has probably acquired sufficient distinctiveness for federal registration since I don’t recall seeing a candy bar that looks quite like the Hershey bar.  Of course, I’m usually too busy inhaling my chocolate to really care about how it was scored, divided, or whatever.

Oh, when I asked my non-lawyer girlfriend Karen whether she thought the scored design of the Hershey bar was functional, she immediately said yes.  “How would I know how much chocolate to put onto the graham cracker when I’m making s’mores?  Each s’more has to have an equal amount of chocolate.”  Precisely.

A couple of weeks ago, I received a telephone call from a potential client located here in the Midwest.  He told me that he recently received a letter from a trademark attorney representing Airwair International Limited.  Airwair is the British company that manufactures Dr. Martens footwear.  Now, if you’ve ever owned a pair of Dr. Martens boots, you might remember that almost all of them have a prominent black and yellow fabric tag that has the word AIRWAIR emblazoned on it (as shown in the photograph above).  The word AIRWAIR refers to the fact that Dr. Martens boots have air-cushioned soles (called “bouncing soles”) that make the boots more comfortable to wear.  According to the letter my potential client received, Airwair has been using the AIRWAIR trademark in connection with footwear and various clothing items for over 25 years in the United States and that it is the owner of several federal trademark registrations for AIRWAIR.  I actually had a very cool pair of denim Dr. Martens boots back when I was in middle school and remember cutting off the AIRWAIR tag because I thought it looked stupid.  As an adult, I am now aware that this was a sacrilegious act.  Oops.

So, why did Airwair International have its trademark attorney send my potential client a letter in the first place?  Well, my potential client had just started a small clothing company called “AirWear.”  Although he had not yet manufactured or sold any clothing, he had purchased a slew of domain names that incorporate the word AIRWEAR and had filed a fictitious name registration with the Secretary of State indicating that he was going to be doing business under the AIRWEAR name.  He also had a professionally designed logo which was displayed on a rudimentary website accessible at one of his domains.  Airwair’s letter communicated its belief that my potential client’s use of AIRWEAR was an infringement of its long-standing federal trademark rights in AIRWAIR.  As such, Airwair demanded that my potential client (1) cease and desist from using AIRWEAR in connection with clothing products, (2) discontinue use of all domain names that incorporate AIRWEAR, and (3) identify and transfer to Airwair all domain names that contain the AIRWEAR trademark.

Of course, my potential client was not too happy about receiving this letter.  After all, he had already spent a couple of thousand dollars on developing the AIRWEAR trademark and didn’t want to basically have to start all over again.  I suggested to him that we conduct a federal trademark search to verify Airwair’s claims of ownership in the AIRWAIR mark and to determine whether there were any other similar trademarks not owned by Airwair that were registered for clothing or footwear.  He agreed with this course of action and hired me to perform the trademark search and to render an opinion as to whether his use of AIRWEAR was likely to cause confusion with Airwair’s use of AIRWAIR.  My hunch was that there would be quite a few trademarks out there that incorporate both “air” and “wear” (or similar variations) considering that the words are not exactly unique.

Well, to my surprise, the search revealed that the only active trademarks in Class 25 (which is the clothing class) that contain “air” and “wear” (or “wair” or “ware”) were those owned by Airwair International.  In addition, the search indicated that Airwair had filed a number of oppositions over the years against trademark applications for marks that it considered too close for comfort, such as UNDER AIR WEAR and BIG AIR WEAR.  I relayed this unfortunate information to my client and advised him that he would spend substantially more money fighting Airwair than just simply phasing out use of AIRWEAR and transitioning to a new trademark.  Needless to say, my client was disappointed to hear this news, but I think he understands that litigation under these circumstances would just be a waste of precious resources that could be better used to build his business.

Honestly, I believe the cease and desist notice from Airwair International was almost a blessing in disguise for my client because he received it prior to investing tens of thousands of dollars into the AIRWEAR trademark.  Had Airwair found out about my client’s use of AIRWEAR five years down the road when his business was fully operational and generating decent income, it would have been much more difficult, expensive, and time-consuming for my client to make the change.  All of the consumer goodwill and public recognition of the AIRWEAR trademark would be lost and it’s possible that my client’s business would have never completely recovered.  This is why it’s essential to have a trademark attorney conduct a trademark search prior to adopting a new name for a product or service.  It minimizes the risk of being sued for trademark infringement and gives you peace-of-mind that you aren’t stepping on the trademark rights of others.

This week’s article is about an awesome reality show on the A&E television network and some rapper I’ve never heard of who hopefully falls off the face of the Earth sooner rather than later after stirring up this ridiculous trademark dispute.  For those of you who haven’t had the pleasure of watching “Storage Wars,” the show revolves around a bunch of competing auction hunters who bid on the contents of abandoned storage units after having only five minutes to conduct a visual inspection of the unit without being able to go inside and rummage through all of the stuff.  Now, I know that sounds about as interesting as watching someone cook a leg of lamb on the Food Network, but it is actually one of my favorite programs.  I mean, these guys are often risking thousands of dollars on trying to win storage lockers that might end up only containing costume jewelry and broken electronics rather than a safe stuffed with cash or rare antiques.  The best is when one of them thinks they hit the jackpot with a particular item but then later finds out it’s only worth a few bucks.  Call me mean-spirited, but sometimes failure is fun to watch.

Anyway, one of the main “characters” on Storage Wars is a guy named David “The Mogul” Hester.  And he really is a character.  Hester is the owner of Rags to Riches consignment store in Costa Mesa, California and has the largest operation of all the auction hunters featured on the show.  He is pretty much an arrogant bully who attempts to intimidate his competition and will often bid up the price of storage units just to make them pay top dollar.  But what really makes Hester stand out from the crowd is that when he makes a bid, he shouts out an annoying “YUUUP!” rather than just saying “yep” or giving a simple head nod or hand wave.  In addition, when Hester attends these auctions, he wears shirts and caps on which his signature “YUUUP!” appears.  All in all, he’s a tool, but there’s no denying that he’s an entertaining tool who knows the ins and outs of buying abandoned storage units.  Oh, and Hester also has three recently-filed trademark applications for the word YUUUP! for clothing, stickers, posters, and a variety of entertainment services.  Gotta love this guy!

So, now comes along a rapper by the name of Tremaine Neverson, a/k/a Trey Songz, who apparently likes to perform an animal-like squeal in some of his “music” that basically amounts to a combination of “YEEEE” and “UUUUP.”  Why anyone would want to listen such a squeal is beyond my comprehension, but I guess at least some people do since Mr. Songz won the 2009 BET Award for Best Male R&B Artist.  Well, Mr. Songz obviously has some free time and extra money to burn because he asked his attorney to send David Hester a cease and desist notice claiming that Hester was infringing his trademark by using YUUUP! and demanding that Hester stop commercially exploiting YUUUP! in any manner whatsoever.  So, basically, Trey Songz is asserting that Hester’s use of YUUUP! is likely to cause confusion among the general public or will cause people to mistakenly assume that there is some kind of association between Hester and Songz.  If you’re thinking what I’m thinking, then we surely agree that the only person who is confused is Trey Songz.

In a move that is totally in line with Hester’s “take no prisoners” attitude, Hester filed a declaratory judgment action against Songz in a New York federal court requesting the court to declare that Hester’s use of YUUUP! does not infringe any trademark rights allegedly owned by Songz.  Man, I hope Hester’s trademark attorney just wipes the floor with this moron.  Seriously, who is going to think that some thrift store owner currently experiencing his 15 minutes of fame is connected in any way to a run-of-the-mill recording artist who is probably less famous right now than Hester is?  Ummmm, nobody, that’s who.  If you’re with me, gimme a YUUUP! YUUUP!

If you’re a fan of online or mobile gaming, then you’re probably very familiar with Zynga.  Zynga has provided people all over the globe with more ways to waste time than probably any other software company in recent memory.  In fact, many of you have probably spent what amounts to months of your life playing such games as “Words with Friends,” “Mafia Wars,” and “Hanging with Friends.”  What’s even more amazing is that Zynga has somehow convinced people to spend their hard-earned dollars on purchasing virtual cash from Zynga in order to progress through wildly popular games such as “Farmville” and “Cityville.”  I’m not kidding.  You actually use your credit card or PayPal account to buy fake money to spend within the game itself.  I don’t know about you, but I would be embarrassed to tell my friends and family that I spent real money developing a virtual farm for the purpose of growing virtual crops and raising virtual animals.  “Hey Dad!  Guess what?  I spent my allowance on a couple of bushels of simulated hay for my virtual horse.”  That would have been the end of my allowance.

For some unknown reason, these games have become cash cows for Zynga.  So, it’s not surprising that Zynga has taken some of this money to protect the names of its various games and the substantial goodwill associated with them.  Zynga is the owner of federal trademark registrations for FARMVILLE, CITYVILLE, YOVILLE, and FISHVILLE, all of which are registered for products or services related to computer game software.  Zynga has also applied to register a number of other trademarks that incorporate the “ville” formative, including PETVILLE, FRONTIERVILLE, CASTLEVILLE, HOTELVILLE, HOSPITALVILLE, CRIMEVILLE, TOWNVILLE, OFFICEVILLE, ANIMALVILLE, BOUNTYVILLE, and VILLE by itself.  I note that most of these trademark applications were filed on an intent-to-use basis, but Zynga’s website indicates that some of the trademarks are now currently in use.  I wonder if Hospitalville will enable you to buy virtual health insurance and then have to fight with a virtual health insurance company about a virtual claim you submitted for your virtual broken leg that happened while playing virtual football.  I can’t wait!

Of course, Zynga’s immense success has resulted in other software developers trying to piggyback off the brand recognition that Zynga has built over the past few years with its family of “ville” marks.  Since March 2010, Zynga has filed a whopping 30 oppositions against trademark applications filed by other developers for trademarks that end in “ville,” most of which are for computer game software or the provision of online computer games.  A sampling of these trademarks include:

WEEDVILLE (I’m sure that only refers to typical weeds you might find in your flower garden)

HEMPVILLE (a town for hippies)

BEARVILLE (owned by the Build-A-Bear company)

GODVILLE (or, in other words, Heaven?)

DIETVILLE (a place not known for its cuisine)

DUMBVILLE (the town where people who exchange real dollars for virtual dollars reside)

The bottom line is that you shouldn’t bother filing a trademark application for a “ville” trademark unless you want to spend many years and a ton of non-virtual cash defending a trademark opposition that Zynga will undoubtedly pursue.  Trust me, Oppositionville is not a place you want to stop and visit on the way to Registrationville.

In honor of the St Louis Cardinals’ unbelievable late season comeback and amazing Word Series victory, I am dedicating this week’s post to looking at the early history of the Cardinals’ trademarks and federal trademark registrations.  You know, especially since neither Fox nor ESPN is going to bring you this type of hard-hitting and eye-opening coverage.  Hey, I’m just filling the void and giving Cardinals fans what they want.

Anyway, my search of the Trademark Office’s records revealed that the St. Louis Cardinals own approximately 30 trademark registrations and three pending trademark applications.  Their oldest trademark registration dates back to 1967 and is simply for the word CARDINALS for “entertainment services in the nature of baseball games and exhibitions, some of which services are rendered through the media of radio and television broadcasts.”  The registration states that the St. Louis Cardinals have been using the CARDINALS trademark since 1899.  I’m not exactly sure why it took the Cardinals almost 70 years to register their most valuable piece of intellectual property, but my research indicates that Major League Baseball and many of its teams did not start actively registering their trademarks until the late 1960s and early 1970s.   Better late than never I guess (kind of like the Cardinals’ resurgence in the last month of the season).

On the same day in 1967 that the Cardinals applied to register their CARDINALS trademark, they also filed a trademark application to protect the logo depicted below, which matured into a federal registration in January 1968:

The trademark registration includes a statement that “the mark consists of the representation of two cardinals standing on a baseball bat” and that the “drawing is lined for the color red.”  When this trademark application was filed almost 45 years ago, you couldn’t just submit a color drawing to the Trademark Office like you can today.  Instead, you had to line the drawing to indicate color and then state in the application what color was being represented.  Man, what a complete pain that must have been.  I’m glad I wasn’t a trademark attorney back in those dark ages!

The Cardinals were evidently very busy in 1967 because it filed yet another trademark application for the logo shown below:

The trademark is lined for the color red and is described as “the representation of a cardinal grasping a bat in a batter’s stance.”  All three of the registrations I’ve noted are still active, meaning that the Cardinals continue to use these trademarks in commerce in connection with their sports entertainment services.  In fact, the registrations were recently renewed only a few years ago.

Now, as many of you know, the Cardinals won the World Series against the Boston Red Sox in October 1967.  Of course, I’m not necessarily saying that filing all of these trademark applications brought the Cardinals some good luck that year, but I do note that Boston didn’t obtain a trademark registration for its RED SOX mark until 1978.  So, it isn’t inconceivable that those trademark applications were the difference between the Cardinals earning their eighth world championship and the Red Sox breaking the Curse of the Bambino.  Go trademarks!!

If you watched the Super Bowl last February, you may remember the gritty two-minute commercial produced by the Chrysler automobile company featuring rap superstar Eminem driving a brand new Chrysler 200 through the streets of Detroit.  With Eminem’s huge hit “Lose Yourself” playing in the background, the narrator basically talks about how the Motor City is back after suffering many years of declining sales, factory closures, and job losses due to strong competition from foreign auto manufacturers.  At the end of the commercial, the tagline IMPORTED FROM DETROIT is placed prominently above the Chrysler name and logo.  The multimillion dollar spot (which was likely partially paid for with your tax dollars thanks to the federal auto bailout) was well-received by the American public and was widely praised in the media as being one of the best commercials during the Super Bowl.  Although I’m no Eminem or Chrysler fan, I have to admit that the advertisement was very effective, and I must not be the only one seeing that Chrysler now has a website dedicated to the IMPORTED FROM DETROIT tagline, on which it advertises its vehicles and sells a wide range of merchandise and novelties bearing the mark.

Approximately four months before the Super Bowl commercial aired, Chrysler filed an intent-to-use trademark application for IMPORTED FROM DETROIT for “motor vehicles, namely passenger automobiles, their structural parts, trim and badges.”  A couple of months later, Chrysler filed another trademark application for IMPORTED FROM DETROIT to cover a variety of items, including clothing, jewelry, and luggage.  Then, just two days after the Super Bowl, Chrysler filed a third trademark application for the same mark to cover other products, such as key chains, license plates, posters, bumper stickers, sports equipment, and toy vehicles.  Clearly, Chrysler knew it was going to make a substantial investment in the IMPORTED FROM DETROIT mark and had some confidence that the trademark would resonate with American car buyers.

Less than two weeks after Chrysler introduced its IMPORTED FROM DETROIT trademark to the American public, a company by the name of Moda Group (which does business under the name “Pure Detroit”) started selling t-shirts boldly displaying the IMPORTED FROM DETROIT mark in its stores and on its website.  My research indicates that Moda Group is basically a retailer of clothing, apparel, and gift items that represent and promote the city of Detroit.  When it first released its t-shirts, Moda Group unabashedly advertised them as featuring “the tagline that is making headlines across America!”  Of course, when Chrysler became aware of the unauthorized use of IMPORTED FROM DETROIT, it sent Moda Group a cease and desist notice demanding that it immediately stop selling the t-shirts.  When Moda Group failed to comply, Chrysler sued Moda Group in a Michigan federal court last March alleging trademark infringement and unfair competition.

In response to the lawsuit, Moda Group counterclaimed that Chrysler did not have a legally enforceable or protectable trademark because IMPORTED FROM DETROIT is either (1) primarily geographically descriptive or (2) geographically deceptively misdescriptive.  In other words, Moda Group was claiming that IMPORTED FROM DETROIT merely informs the public that Chrysler’s products emanate from Detroit or, in the alternative, misleads the public into believing that Chrysler’s products come from Detroit when they do not (Chrysler’s headquarters are actually located about 30 miles outside of Detroit and none of its factories are located in the Detroit city limits).  Geographically descriptive marks are generally not protectable or eligible for registration on the Principal Register without a showing of acquired distinctiveness.  Geographically deceptively misdescriptive trademarks are not entitled to federal registration under any circumstances.  I note, however, that geographically deceptively misdescriptive marks may still receive protection under state common law even though they are ineligible for federal registration.

As part of the lawsuit, Chrysler filed a motion for a preliminary injunction, which is basically a request for the court to order Moda Group to cease using IMPORTED FROM DETROIT while the case is pending final determination.  After the parties fully briefed and argued the motion, the court ruled that Chrysler was not entitled to a preliminary injunction because it failed to show irreparable harm and likelihood of success on the merits of the case.  Although it’s not unusual to have preliminary injunctions denied in trademark infringement cases due to the plaintiff’s extraordinarily high burden of proof, what is astonishing is that the court found IMPORTED FROM DETROIT to be primarily geographically descriptive of Chrysler’s products and that the trademark had not acquired distinctiveness in the minds of consumers.

I believe the court was completely incorrect in its assessment of Chrysler’s trademark.  From the perspective of an American consumer located anywhere in the United States, IMPORTED FROM DETROIT cannot be primarily geographically descriptive because Chrysler’s cars and other products are not actually “imported” from anywhere.  The word “import” means “to bring in from a foreign country.”  Last time I checked, Detroit is not a foreign country (although if Canada really wanted Detroit perhaps we could strike a deal).  There is no question in my mind that IMPORTED FROM DETROIT is a clever play on the belief held by many Americans that foreign “imported” cars are of a higher quality and more desirable than those manufactured in the U.S.  But even if the mark could be considered geographically descriptive, I think IMPORTED FROM DETROIT had acquired the requisite secondary meaning in the minds of consumers in the short time between the airing of the commercial and Moda Group’s blatant rip-off of Chrysler’s tagline.  The fact of the matter is that tens of millions of Americans quickly became familiar with Chrysler’s trademark and Moda Group saw an opportunity to exploit such recognition and subsequent publicity of Chrysler’s intellectual property for its own financial gain.  It’s theft, pure and simple.  And the court decided to reward Moda Group for its sleazy business practices rather than put the hammer down on them.  But, I am hopeful that a jury will eventually have the opportunity to hear the case and will provide Chrysler with the justice it deserves.