Chick-fil-A is the second largest chicken restaurant chain in the United States.  Its most successful print and television marketing campaign involves a bunch of cows engaging in desperate and hilarious antics in an effort to convert beef lovers into chicken fans.  For the past 16 years, Chick-fil-A has been using the tagline EAT MOR CHIKIN as a prominent part of these advertisements and, in fact, the EAT MOR CHIKIN campaign has won numerous industry awards for creativity and effectiveness.  If you are not repelled by the thought of consuming a crispy fried chicken sandwich and have not pledged allegiance to the King of Meats (beef), check out Chick-fil-A’s website to learn more about the history of the EAT MOR CHIKIN cows and to watch some of the more recent commercials.

Of course, you’re probably not shocked to learn that Chick-fil-A has taken the proper steps to protect its well-known EAT MOR CHIKIN trademark.  A quick search of the Trademark Office’s records indicates that Chick-fil-A is the owner of at least six active federal trademark registrations for EAT MOR CHIKIN.  The oldest of these registrations dates back to 1996 and is for “restaurant services.”  Another trademark registration for EAT MOR CHIKIN followed a year later for “clothing, namely, t-shirts and sweatshirts.”  Now, if you’ve been following my blog or reading up on trademark law in your spare time, you already know that these incontestable trademark registrations give Chick-fil-A the exclusive nationwide right to use its trademarks in connection with its products and services, as well as the right to exclude others from using a confusingly similar trademark for identical or related products and services.

So, according to an Associated Press article published on November 28, a Vermont folk artist by the name of Bo Muller-Moore has been printing the phrase EAT MORE KALE on shirts and stickers since 2000.  His website indicates that his products are all about promoting healthy eating and supporting small local food producers.  Apparently, about five years ago, Chick-fil-A sent Muller-Moore a cease and desist notice demanding that he stop printing and selling products with the EAT MORE KALE name on them.  The article states that Muller-Moore’s attorney traded a few letters with Chick-fil-A and that was it.  Never heard from Chick-fil-A again.  Well, up until now.  About a month after Muller-Moore filed a trademark application seeking to register EAT MORE KALE, he received a letter from Chick-fil-A ordering him to stop using the phrase and to transfer his domain name (eatmorekale.com) to Chick-fil-A.

Really Chick-fil-A?  This is how you want to portray yourself?  Going after some guy who’s not even in the restaurant business and who’s operating a small screen-printing business out of his garage in the middle of Vermont?  Not cool, especially considering that there’s a real question as to whether Muller-Moore is even using EAT MORE KALE as a trademark.  That’s right.  Just splashing EAT MORE KALE on the front of a t-shirt does not make it a trademark.  That type of use is called “ornamental” use because people aren’t necessarily purchasing the shirt because is comes from Muller-Moore or because they care that Muller-Moore produced the shirt.  Rather, people are buying the shirt because they simply like the EAT MORE KALE phrase and what it connotes.  In other words, consumers don’t perceive EAT MORE KALE as a clothing brand like they do NIKE or GAP.  In reviewing Muller-Moore’s trademark application and the specimens of use Muller-Moore submitted, I am confident that the Trademark Office will preliminarily reject his application on the basis that EAT MORE KALE does not function as a trademark.

If I was in charge of making the legal decisions at Chick-fil-A (which I would only do if promised free food as part of my compensation package), I would have (1) looked back in my records to see if Chick-fil-A had ever sent Muller-Moore a cease and desist notice, (2) directed my attorneys to monitor the progress and status of the EAT MORE KALE application, and (3) not sent any correspondence to Muller-Moore unless the application was approved by the Trademark Office and published for opposition.  In the event the Chick-fil-A trademark application is published for opposition, Chick-fil-A could file a 90 day extension of time to oppose the application and then use that time to communicate its concerns to Muller-Moore in a professional manner and to work toward reaching an amicable resolution.  Instead, Chick-fil-A decided to be unnecessarily aggressive and to make outrageous demands of Muller-Moore that Chick-fil-A should have known could end up as part of an Associated Press news story that’s now been distributed through hundreds of news outlets.  Idiotic?  You make the call.

By the way, this is the same company that prides itself on requiring that all of its restaurants be closed on Sundays so that employees and franchise operators can spend time with their loved ones and to worship if they want to.  So, I guess it’s OK to be a trademark bully six days of the week so long as you take Sunday off.  As a fan of Chick-fil-A, I find its actions against Muller-Moore disappointing and in contradiction of the values it portrays to the public.  But, don’t get me wrong, I still strongly believe that we should all EAT MOR CHIKIN…….at KFC.

I have to thank my girlfriend Karen for bringing this tasty St. Louis trademark dispute to my attention earlier this week.  The plaintiff in the case is a restaurant located in the Tower Grove neighborhood of St. Louis by the name of Mangia Italiano.  According to various local news reports (see here and here), Mangia Italiano has been continuously using the trademark MANGIA ITALIANO in connection with an Italian restaurant for nearly three decades.  Mangia Italiano was actually one of the first restaurants I tried when I moved to St. Louis in 2002 since it was only about a mile from my apartment.  Unfortunately, pretty much everything about it sucked and I’ve never been back since.  I strongly advise you to stick to The Hill district of St. Louis if you want some decent Italian food.  Let me recommend Cunetto House of Pasta and Zia’s.

Now, for those of you who aren’t fluent in Italian, MANGIA ITALIANO literally translates to “Eat Italian.”  So, clearly, MANGIA ITALIANO is a highly descriptive trademark when used in connection with an Italian restaurant.  Such a trademark would not be eligible for federal registration on the Principal Register without a showing that MANGIA ITALIANO has acquired secondary meaning or distinctiveness in the minds of ordinary consumers.  So, being the ever inquisitive trademark attorney that I am, I decided to check out whether Mangia Italiano ever federally registered its MANGIA ITALIANO trademark.  The Trademark Office’s records indicate that Mangia Italiano recently filed a trademark application on March 21, 2011.  However, the Trademark Office is refusing registration of Mangia Italiano’s mark on the basis that (1) it is likely to cause confusion with a 1996 trademark registration for MANGIA for “catering and carry-out restaurant services” and (2) the MANGIA ITALIANO trademark is merely descriptive and has not acquired the requisite secondary meaning for federal registration on the Principal Register.  I note that the federal registration for MANGIA was obtained under Section 2(f), which means that, in the opinion of the Trademark Office, the mark had acquired sufficient distinctiveness entitling it to federal protection.  I also would like to point out that the MANGIA registration is incontestable and not subject to cancellation by Mangia Italiano on the basis of priority and likelihood of confusion.

Well, sometime in 2010, a company by the name of Mangia Mobile started operating a mobile food truck in the St. Louis area.  In reviewing its website, Mangia Mobile appears to offer a variety of Italian food items to its customers from a big red truck with the trademark MANGIA and MANGIA MOBILE prominently displayed.  A cursory search of the Trademark Office’s records did not reveal any pending applications or existing registrations for MANGIA or MANGIA MOBILE owned by Mangia Mobile, which is just as well seeing it would have little chance of federally registering its incredibly descriptive mark.  I mean, Mangia Italiano is having a heck of a time attempting to register its MANGIA ITALIANO mark and it has been in use for 28 years!

Anyway, after some attempts at settlement (including Mangia Mobile’s generous offer to change the name of its food truck to CATHERINE’S MANGIA MOBILE), Mangia Italiano sued Mangia Mobile in St. Louis City Circuit Court alleging trademark infringement and unfair competition.  The lawsuit claims that there has already been actual confusion stemming from Mangia Mobile’s use of its trademark and points to the fact that a local St. Louis publication called Alive Magazine published an article in March 2011 erroneously stating that Mangia Mobile’s food truck was associated with Mangia Italiano.  The lawsuit further describes other instances of actual confusion whereby customers of Mangia Italiano and organizers of a local culinary event questioned whether the Mangia Mobile food truck was affiliated with Mangia Italiano.  If these allegations are true, then I think Mangia Mobile is going to have a tough time successfully defending this case, even taking into account that both MANGIA ITALIANO and MANGIA MOBILE are ridiculously descriptive marks not entitled to a broad spectrum of protection.  I mean, it has been less than a year since Mangia Mobile hit the streets and there are already documented instances of actual confusion.  When it comes to winning a trademark infringement lawsuit, actual consumer confusion is not just the icing on the cake, it’s the whole darn bakery.

So, what do you think about this case?  Will Mangia Mobile be sleeping with the fishes when all is said and done?  Does Mangia Italiano have exclusive rights to the trademark “Mangia” in the St. Louis metropolitan area?  Will Mangia Italiano just have to deal with the consumer confusion as a result of it choosing to operate under a weak and descriptive trademark?  Or, will Mangia Mobile just concede and change its trademark rather than spend an outrageous amount of money on legal fees?  Honestly, I think it would be in Mangia Mobile’s best interest not to be associated with Mangia Italiano and its sub-par food.  Perhaps a change to “Cunetto Truck O’ Pasta” would be something to consider…

I have to thank my friend Ray for bringing to my attention an interesting trademark dispute involving one of my favorite breakfast joints dating back to when I was a kid living in Paramus, New Jersey.  The International House of Pancakes (more commonly known by the acronym “IHOP”) is a large chain of casual restaurants widely known for serving delicious breakfast items, especially large, fluffy pancakes of all different flavors.  According to its website, there are nearly 1,500 IHOP restaurants located in all 50 states, the District of Columbia, Canada, Mexico, Puerto Rico, and the U.S. Virgin Islands, most of which are franchised.  IHOP serves an astounding 700 million pancakes per year (a significant number of which are no doubt part of the embarrassing-to-order “Rooty Tooty Fresh ‘N Fruity” breakfast combo) and it advertises quite extensively on radio and national television.

As you would expect, IHOP owns a number of federal trademark registrations for IHOP and INTERNATIONAL HOUSE OF PANCAKES (Registration Nos. 2332311, 2942609, 3429406, 3429405, 3514724, 3408102, and 3507059), most of which are for restaurant services and food products.  My review of the Trademark Office’s records indicates that the INTERNATIONAL HOUSE OF PANCAKES mark has been in use since 1958 and the IHOP acronym was adopted around 1972.  Needless to say, both the IHOP and INTERNATIONAL HOUSE OF PANCAKES trademarks would likely be considered famous since they are well-recognized by a vast majority of the general public.

While some people may worship IHOP, others actually worship at IHOP.  Yep, a church based in Kansas City has been calling itself the “International House of Prayer” since approximately 1999 and uses the acronym IHOP in connection with its religious prayer services.  Although the International House of Prayer does not own any federal registrations for its name, I note that it filed a trademark application in 2000 seeking to register INTERNATIONAL HOUSE OF PRAYER, but the application went abandoned when it failed to respond to an office action issued by the Trademark Office.  You can learn more about this organization by visiting its website located at www.ihop.org (don’t accidentally type “.com” or you’ll probably end up craving pancakes).

I’m sure you’ve already figured out where this is going.  According to various news reports (see here and here), the International House of Pancakes has sued the International House of Prayer for trademark infringement and dilution stemming from its use of the IHOP acronym.  The International House of Pancakes is alleging that the International House of Prayer chose its name knowing that it would be abbreviated as IHOP and had the malicious intent to ride on the extensive fame and goodwill of the International House of Pancakes’ IHOP mark.  The lawsuit apparently is not seeking any monetary damages other than the costs of the litigation and attorneys’ fees.

Although I believe the International House of Pancakes may be able to succeed on its dilution of a famous mark claim, I’m not sure it makes very good business sense to bring such a lawsuit and potentially alienate churchgoers and other religious figures who now might choose to eat breakfast or lunch somewhere else rather than the International House of Pancakes.  It just doesn’t look good to sue a church and many people may see the International House of Pancakes as simply a bully who is picking on a peaceful and benevolent organization that does not have a huge war chest to spend on litigation.  Obviously, the International House of Pancakes has to protect its valuable intellectual property, but some lawsuits are just more hassle from a PR perspective than they’re worth.

And if someone in charge at the International House of Pancakes happens to stumble across this posting, I have a few questions:  Why is it that I get coupons in the mail for Denny’s nearly every week, but I almost never receive any coupons from you?  And when I do receive a coupon, why is it only good Monday through Friday and why do I always have to buy two beverages in order to get the 20% discount?  If I would have only ordered water, my 20% discount is pretty much nullified by having to purchase the two beverages I didn’t even want at $2.00 each.  So, thanks for nothing you cheapskates.

Unless you’ve been living under a rock for the past 65 years, I’m sure you are familiar with Dairy Queen’s delicious “Blizzard” ice cream confections.  Diary Queen has been using the name BLIZZARD since 1946 and has owned a federal registration for the mark since 1952.  Enough said about this famous trademark.  But, in the event you have been living under a rock and know nothing about Dairy Queen’s Blizzard desserts, I urge you to check out the DQ website to get up to speed with the rest of civilized society.

Now let me get back to Yogubliz.  In November 2009, (only six months after receiving its registration for BLIZZBERRY), Yogubliz applied to register BLIZZ FROZEN YOGURT for “frozen yogurt.”  The trademark examining attorney assigned to Yogubliz’s application initially refused registration of the mark on the basis that it was likely to cause confusion with Dairy Queen’s BLIZZARD mark.  Undeterred, Yogubliz argued that its mark was not likely to cause confusion because (1) BLIZZ is not a common truncation of the word BLIZZARD and, therefore, consumers would not perceive BLIZZ to be associated with Dairy Queen or its BLIZZARD product, and (2) Dairy Queen sells only ice cream and not frozen yogurt.  Somewhat surprisingly, the trademark examining attorney was persuaded by these arguments to withdraw her rejection and allowed Yogubliz’s mark to be published for opposition.

At some point during all of this, Dairy Queen fired off a letter to Yogubliz demanding that it cease and desist from all further use of BLIZZ and BLIZZBERRY based on its prior rights in the BLIZZARD mark.  Not only did Yogubliz fail to comply, it actually turned around and filed a federal lawsuit against Dairy Queen on May 17 requesting that the Court issue an order declaring that its BLIZZ and BLIZZBERRY trademarks do not infringe upon any of the rights Dairy Queen has in its BLIZZARD mark.  In response, Dairy Queen (1) counterclaimed against Yogubliz for trademark infringement and trademark dilution, (2) filed a cancellation proceeding against Yogubliz’s trademark registration for BLIZZBERRY, and (3) filed an opposition against Yogubliz’s pending trademark application for BLIZZ FROZEN YOGURT.  You can read a little more about the federal infringement litigation here and here.

You know, I really don’t see how Dairy Queen could lose this case.  Unquestionably, BLIZZARD is an arbitrary and famous trademark entitled to the broadest scope of protection under U.S. trademark law.  DQ has owned a federal registration for the mark for over half a century and the Blizzard is probably the most well-known item on its menu (sorry all you Peanut Buster Parfait fans).  More than a billion Blizzards have been sold over the years and Dairy Queen has spent hundreds of millions of dollars promoting its product.  It is impossible for me to believe that Yogubliz wasn’t attempting to capitalize on the goodwill associated with DQ’s BLIZZARD trademark because there is simply no competitive need or reason for Yogubliz to have adopted BLIZZ or BLIZZBERRY for frozen yogurt other than to unfairly hitch a ride on Dairy Queen’s immense success.  In fact, the more I think about it, the more I am convinced that Yogubliz’s original BLIZZBERRY trademark was an intentional rip-off and combination of Dairy Queen’s BLIZZARD and Pinkberry’s PINKBERRY marks.

In sum, Dairy Queen has little choice but to challenge Yogubliz because, if it doesn’t, it will open the door for other frozen dessert shops and frozen dessert manufacturers to use trademarks that are similar to BLIZZARD or likely to dilute the distinctive quality of the famous BLIZZARD name.  But, of course, Yogubliz can’t go down without a fight either because it will cost Yogubliz millions of dollars to phase out its trademarks and to implement new ones.  In fact, and adverse judgment might even bankrupt Yogubliz.  Good thing Yogubliz  has plenty of frozen yogurt in which to drown its sorrows if such a judgment is handed down.

A quick search of the Trademark Office’s records reveals that Dirt Cheap has been using the DIRT CHEAP mark since 1993 and owns federal registrations for DIRT CHEAP (Reg. No. 2613728), the racy (and disturbing) chicken logo displayed in the banner of its website (Reg. No. 3047335), and FUN FUN CHEAP CHEAP (Reg. No. 2878533), all of which are for distributorship and/or retail store services featuring beer, liquor, and cigarettes.  Although it’s not particularly pertinent to the story, the FUN FUN CHEAP CHEAP registration should probably be amended since all of the television commercials and printed advertisements now use CHEAP CHEAP FUN FUN instead.  In fact, if you take a look at the specimen of use that Dirt Cheap submitted to the Trademark Office when it filed its Declaration of Continued Use about six months ago (shown below), you will see that it actually displays the mark as CHEAP CHEAP FUN FUN.

Clearly, the Trademark Office should have refused to accept the Declaration since the mark as displayed on the specimen does not match the mark as registered.  Perhaps the person in charge of examining the Declaration was drunk on Dirt Cheap’s “30 Dime Wine.”

Well, apparently another St. Louis based company by the name of SUJVL, Inc. wanted to innocently inform its customers of how incredibly inexpensive its alcohol and cigarettes were and decided to adopt the trademark CHEAP CHEAP as the name for its liquor store.  Unfortunately, I was unable to find a website for Cheap Cheap, but being the investigative trademark attorney that I am, I took a short drive over to one of Cheap Cheap’s two locations to check it out.  Here is a picture of the front entrance of the store:

Anyway, to the surprise of not a single trademark attorney, Dirt Cheap recently filed a trademark infringement lawsuit against Cheap Cheap in the United States District Court for the Eastern District of Missouri (Case No. 4:10-cv-01198), alleging that the CHEAP CHEAP trademark is likely to cause confusion with Dirt Cheap’s registered DIRT CHEAP and FUN FUN CHEAP CHEAP trademarks.

Wow, if this isn’t classic trademark infringement/unfair competition, I don’t know what it.  DIRT CHEAP and CHEAP CHEAP are nearly identical in appearance and sound, they both use the same stylized font, they both have a similar meaning and commercial impression, and both are used in connection with retail liquor stores.  In addition, CHEAP CHEAP undoubtedly brings to the minds of consumers the “Cheap Cheap Fun Fun” slogan exclaimed by the chicken in Dirt Cheap’s TV commercials and as displayed on its website and printed advertisements.  Seriously, the only thing Cheap Cheap didn’t rip off was the stupid chicken mascot (there must be a God after all).

I rarely say this about defendants in trademark infringement lawsuits, but I think I can honestly say that Cheap Cheap doesn’t stand a chance of winning.  It should just start phasing out the use of CHEAP CHEAP now and save itself the considerable time and expense of defending this lawsuit.  It certainly isn’t going to be cheap (or cheap cheap or dirt cheap) to change its name, but it’s certainly less pricey than spending tens of thousands of dollars on legal fees, losing, and then having to make the change anyway.  Good thing the owners of Cheap Cheap likely have enough booze in their inventory to make dealing with this situation a little more palatable.

As you can see, the Andy’s logo and signage are predominantly red and yellow, with the word ANDY’S presented in a stylized cursive font.  Also, there is a huge, double-scoop ice cream cone perched on the top of a rectangular roadside sign that is situated close to the restaurant’s entrance.  Although not important to the story, I note that Andy kind of looks like Elmer Fudd with a bow tie.

Just as I was pulling into the parking lot of The Happy Fisherman, I caught a glance of another frozen custard shop on the opposite side of the street called “Randy’s Frozen Custard.”  Randy’s is located less than 1/4 of a mile from Andy’s and was recently ranked #1 for the best place to grab a frozen treat (Andy’s was ranked #2).  Here are some photographs:

Not unlike ANDY’S, the name RANDY’S is depicted in a stylized cursive font against a red background.  Although the letters are white and not yellow like those that make up ANDY’S, the restaurant’s outside lighting gives off a yellow glow.  Furthermore, there is large, two-scoop dessert cone sitting on top of a pole next to the restaurant.  Thankfully, there is no Elmer Fudd lookalike.

After eating four pieces of catfish, salad, bread, french fries, hush puppies, coleslaw, pasta salad, and a complimentary pineapple fritter, I decided to take a trip over to Andy’s for a little frozen custard (wouldn’t you?).  Before I ordered my espresso and chocolate chip concrete with vanilla custard, I asked the teenage employee at the window what the deal was with Randy’s.  Of course, he didn’t know all the details but, apparently, the guy who owns Randy’s used to be an Andy’s franchisee.  And, in fact, where Randy’s is now located used to be where Andy’s was before it moved into its current location.  The employee basically indicated that the owner of Randy’s decided not to renew his Andy’s franchise and now does everything he can to make people think there is some relationship between his frozen custard shop and Andy’s.

I have no idea whether what was told to me is accurate, but if it is, I wonder why Andy’s seems to be doing nothing about it.  Andy’s owns numerous federal registrations for ANDY’S and ANDY’S FROZEN CUSTARD (Reg. Nos. 3097065, 2774370, 3183122, among others), not to mention a registration for the dessert cone signage (Reg. No. 2679514).  In my opinion, when you take into account the totality of the circumstances, it appears that Randy’s is merely trying to ride the coattails of Andy’s.  Unquestionably, the names, colors, signage, and fonts are all extremely similar, and both restaurants sell frozen custard.  Again, I don’t know all the facts and there is likely some background information I’m not privy to, but to just the casual observer (OK, a casual observer who also happens to be a trademark attorney), it looks like trademark infringement to me.

Oh, and by the way, the concrete I inhaled at Andy’s was delicious.  Unfortunately, I didn’t have the chance to try Randy’s frozen custard, but I have a feeling that, like everything else about Randy’s, it would have been confusingly similar to Andy’s.

If you’ve ever bought anything online at popular websites such as walmart.com, borders.com, or zappos.com, you may have noticed at checkout a payment option called “Bill Me Later.”  Bill Me Later is a service offered by a subsidiary of PayPal called I4 Commerce Inc.  and is basically a revolving credit account (backed by CIT Bank in Utah) that is an alternative to using a standard credit card.  When shoppers click on the Bill Me Later option, they are prompted to enter their birthday and the last 4 digits of their social security number.  The system then runs what amounts to a credit check and, if approved, the purchase is completed.  Then, in about 10-14 days, the shoppers receive a bill in the mail for the purchase amount, payment of which is usually due 30-90 days later.  If the bill is not paid on time, interest starts accruing at a whopping 19.99% APR.

In 2002, I4 Commerce was granted a federal trademark registration for BILL ME LATER for “credit services, namely providing revolving credit account services and bill payment services to others via the telephone and world wide web.”  Five years later, it was granted another trademark registration for BILL ME LATER,with a check mark logo, for the identical services.  It is important to note that both of these registrations issued on the Principal Register without any disclaimers, meaning that the Trademark Office did not believe that BILL ME LATER, in whole or in part, was merely descriptive of the services rendered under the trademark.

Then, in 2005, a company by the name of MODASolutions Corporation launched a competing service called “eBillme.”  When shoppers use the eBillme option at checkout, they enter their contact information and email address.  Their bill is then displayed on the screen, as well as emailed to them for their records.  Shoppers then have the option of paying the bill through their online banking service, or by printing off the bill and paying it at one of over 36,000 walk-in locations set up in drug stores, convenience stores, etc.  Basically, it’s a somewhat convoluted way to securely purchase items online without having to divulge any personal or financial information to the merchant directly.

In April 2007, MODASolutions filed an application to register its EBILLME trademark for “secure online payment services, namely presentment and processing of bill payment transactions conducted via telephone, internet, and mobile banking.”  Again, it is noteworthy that the Trademark Office did not find EBILLME to be merely descriptive of MODASolutions’ electronic billing and payment services.  Well, apparently I4 Commerce wasn’t too happy about MODASolutions’ application and filed an opposition against it in September 2008 alleging a likelihood of confusion with its prior-used BILL ME LATER trademark.  Around the same time, I4 Commerce also filed a federal lawsuit against MODASolutions alleging trademark infringement and unfair competition.  This lawsuit is currently pending in the United States District Court for the District of Maryland, and the opposition is suspended pending the disposition of the lawsuit.

But MODASolutions isn’t just playing defense.   On the contrary, this past week MODASolutions filed a cancellation proceeding against the two BILL ME LATER registrations owned by I4 Commerce.  In its Petition for Cancellation, MODASolutions alleges that the BILL ME LATER marks should be canceled because (1) they are “generic for bill payment services that allow customers to be billed later for internet purchases” and do not function as a trademark, and (2) in the alternative, they are “descriptive for bill payment services that allow customers to ‘bill me later’ for purchases” and the marks have not yet acquired the requisite secondary meaning and distinctiveness for registration on the Principal Register.  I would like to point out that even though descriptiveness was alleged against both registrations, I4 Commerce’s 2002 registration cannot legally be canceled on that basis because it has been on the Principal Register for over 5 years and is incontestable.  However, it still can be canceled on the basis of genericness.

In my humble and (somewhat) professional opinion, BILL ME LATER is merely descriptive for payment services that allow shoppers to request that they be billed for their purchases at a future date.  The mark immediately describes a salient feature of the services and would be understood as such by the vast majority of the purchasing public.  However, I do disagree with MODASolutions that the mark is generic for such services, although I think it does teeter on that critical line between descriptive and generic.  Whatever the case may be, I think we can all agree that a mark like BILL ME LATER is about as close to generic as you can get and is subject to the narrowest scope of protection available under the law.

But I wonder if MODASolutions has fully thought out the potential ramifications of filing such a cancellation.  Let’s just say that it successfully cancels I4 Commerce’s registrations.  Well, doesn’t it mean that EBILLME is similarly not entitled to registration on the Principal Register?  A persuasive argument could be made that EBILLME immediately describes a primary feature of the services provided under the mark, namely that shoppers can request that online merchants bill them electronically for their purchases.  While I personally don’t believe EBILLME quite rises to the level of being generic, it certainly isn’t deserving of the broad protections to which more distinctive and unique marks are entitled.  But perhaps MODASolutions is willing to sacrifice registration of its mark if it will help it win the right to continue using its mark in the face of I4 Commerce’s infringement suit.

Of course, this leaves me with one last extremely important and relevant question:  Do the lawyers representing I4 Commerce and MODASolutions accept Bill Me Later and/or eBillme for payment of their legal fees?  Just wondering.

Now, if you happen to be a fan of the National Hockey League, this logo may look somewhat familiar to you.  Why?  Because it is an almost identical replica of the team insignia used by the Columbus Blue Jackets, as illustrated below:

So, in the easiest game of photo hunt ever created, this designer merely reversed the Blue Jackets’ logo and removed the red dot from the star-spangled banner, which is apparently synonymous with the Ohio state flag (shown below).  Still, I have to give this guy credit for recognizing that flipping the star-spangled banner from left to right would create a “D” (for “Delphine”).  Hey, at least I can appreciate a creative infringement when I see one!

Anyway, once an embarrassed Mr. Delphine got word of the infringement, he had it immediately removed from his official website and issued a statement claiming that the logo was donated by a volunteer associated with his website developer and denying any knowledge that it was a misappropriation of the Blue Jackets’ team insignia (which I personally believe considering that the Blue Jackets are likely not well-known in Oregon, a state which lacks an NHL franchise and is located 2500 miles away from the Blue Jackets’ home in Ohio).  Honestly, had someone put the Blue Jackets’ logo in front of me and asked me who owns it, I could not have correctly answered the question, especially since I am not one of the 12 hockey fans left in the U.S.

So, what can individuals and small business learn from this unfortunate gaffe by Mr. Delphine’s campaign staff?  Well, if you hire a graphic artist or marketing firm to develop a logo that will be used as a trademark to advertise and sell your products and services, you better do your best to confirm that the finished product is an original and unique creation and not something that was copied and pasted off the Internet.  Try to get recommendations from other business owners as to who designed their logos.  Send the finalized logo to friends and family and ask whether it reminds them of any other logo they’ve seen on television, in printed media, or in the local WalMart.  Ask some questions of the artist regarding how he/she came up with logo concept and whether it was based on any past projects.  And then, of course, hire a trademark attorney to conduct a trademark clearance search of the logo.  Although not foolproof, taking these steps can help to avoid receiving a nasty-gram from some disgruntled trademark owner who probably will not find your infringement quite as amusing as I found Mr. Delphine’s.

As some of you familiar with the St. Louis metropolitan area know, we have a Six Flags amusement park located about 30 miles from downtown St. Louis in a small town called Eureka.  About a mile from the park is a Days Inn hotel which, of course, is a great location for visitors from out of town who wish to spend the night after a fun-filled day waiting an hour in line to ride a 45 second roller coaster and eating greasy overpriced funnel cakes.  Well, that is if you don’t mind sleeping in a hotel that was ranked this past January as the second dirtiest hotel in America by the travel review site TripAdvisor.  I mean, when you consider how many sleazy, rundown flophouses there are all across the United States, such distinction is really amazing.  We’ll proudly put this honor right next to our #2 ranking in the 2008 list of most dangerous American cities.  We truly are the Show-Me State!

So, what does all this have to with trademarks?  Well, TripAdvisor’s story caught the attention of Six Flags and, as a result, it became aware that Days Inn Eureka was actually billing itself as “Days Inn Six Flags” on its website and other marketing materials.  Furthermore, the hotel operated its website at www.daysinn6flags.com.  Needless to say, Six Flags was none too happy with its extremely well-known and valuable trademark being associated with a roach motel and, according to articles published by the St. Louis Post Dispatch and St. Louis Business Journal, Six Flags promptly sued Days Inn for trademark infringement and deceptive advertising.  A few days later, Days Inn Eureka took down its website and it has yet to be replaced.

Unquestionably, Days Inn Eureka can advertise itself as being “close to Six Flags,” “one mile from Six Flags,” “within walking distance from Six Flags,” or even “a great place to stay if you’re visiting Six Flags.”  But, it most certainly cannot use the SIX FLAGS trademark in a manner that would likely confuse consumers into believing that there is an association or affiliation between the hotel and the amusement park, or that Six Flags somehow sponsors or endorses Days Inn Eureka.  In addition, Days Inn Eureka did not have the right to register and use a domain name that incorporates “6 FLAGS” even though the hotel is basically located next to the park.  Clearly, Days Inn Eureka was attempting to optimize its website and increase its visibility in the search engine rankings through the impermissible use of Six Flags’ trademark so that people searching for accommodations near Six Flags would come across the website.

Having said that, I find it incredibly difficult to believe that Six Flags did not know about this unauthorized use prior to the TripAdvisor article.  More likely than not, Six Flags didn’t really care too much about such use until the negative press kind of forced Six Flags to take some action to protect its reputation as providing clean, safe, and family-oriented theme parks.  Had the housekeeping staff at Days Inn Eureka simply used a little Lysol once in a while, I probably would be writing about something completely different today.

On March 2, 2009, Microsoft filed two trademark applications seeking to register the mark BING (Serial Nos. 77681512 and 77681498).  Both of these applications were filed on an “intent-to-use” basis, meaning that Microsoft had not yet used the BING mark in commerce as of the filing date.  As you can see, these applications together list a broad range of services, including advertising and online advertising directory services, internet search engine services, telecommunication services, and a variety of educational and entertainment services.  The Trademark Office did not cite any existing registrations or prior-filed applications against Microsoft that would bar the registration of its BING mark, and both applications were published for opposition shortly after they were filed.

Yep, things were looking pretty good for Microsoft.  Well, that is until two separate companies filed oppositions against Microsoft challenging its right to register BING.  The first opposition was filed by The Laptop Company, Inc. on October 28, 2009.  According to the records, The Laptop Company has been using the mark BONGOBING since 2008 in connection with “comparison shopping services” and “promoting the goods and services of others by means of operating an online shopping mall with links to the retail websites of others.”  The Laptop Company filed an application to register its mark on August 2, 2009, which was five months after Microsoft filed its applications for BING.  When the Trademark Office cited one of Microsoft’s applications as a potential basis for refusing registration of BONGOBING, The Laptop Company filed an opposition against both of Microsoft’s applications on the basis of priority and likelihood of confusion.  Microsoft filed its answer to the opposition on December 1, 2009, denying nearly all of The Laptop Company’s allegations and claims.

But the fun doesn’t stop there for Microsoft.  On December 17, 2009, a second opposition was filed by a company called Bing! Information Design, LLC (you can view its website here).  The Trademark Office’s records indicate that Bing! has been using the trademark BING! for nearly a decade in association with advertising services, designing advertising and promotional materials for others, creating corporate/brand identities for others, and other related services.  Bing! applied to federally register its mark on May 26, 2009 (Serial No. 77744847), which was almost three months after Microsoft filed its applications for BING.  As in the case of the BONGOBING application, the Trademark Office cited one of Microsoft’s applications as a potential basis for refusing registration of BING! and, as a result, Bing! filed its opposition against the application alleging priority and likelihood of confusion.  Furthermore, according to this article, Bing! has also recently filed a trademark infringement lawsuit against Microsoft in St. Louis circuit court (not too far from where I’m currently sitting).

These cases sort of remind me of an issue I wrote about about a few months ago concerning a challenge by a small Minnesota restaurant against the use by McDonald’s of the slogan WHO’S YOUR PATTY.  In that case, Lion’s Tap was the prior user of WHO’S YOUR PATTY in connection with its restaurant and bar services, but it had never taken any action to register its trademark at either the federal or state level.  When McDonald’s started using the same tagline in its advertising campaigns, Lion’s Tap quickly filed its own federal trademark application and sued McDonald’s for trademark infringement.  The parties settled that case, and although the terms were never disclosed, my gut feeling is that there was a monetary payment from McDonald’s to Lion’s Tap.

I bet all of you are just crying a big old river for Microsoft, having to spend considerable time and resources defending two oppositions and a trademark infringement lawsuit.  But, the fact remains that much of this litigation likely would have been unnecessary had both The Laptop Company and Bing! Information Design applied to register their trademarks at the time they adopted them.  Had they done so, their trademarks would have been revealed in even the most basic trademark clearance search and Microsoft may have either (1) been dissuaded from adopting BING, or (2) approached the companies about a potential buyout of their trademarks if Microsoft had its heart set on using BING.  Either way, this litigation may have been avoided, but instead, both The Laptop Company and Bing! Information Design could shell out in litigation expenses 50-100 times the amount they would have spent on simply registering their trademarks early in their business endeavors.

Moral of the story:  Trademark Registration Now < Trademark Litigation Later