If you couldn’t tell by the title (it’s a somewhat cryptic reference), this post pertains, yet again, to a pop-culture icon attempting to get a trademark on an element of a performance. For this reason, you might be justified in wondering if I have Katy Perry and Taylor Swift on repeat in my iTunes playlist. Well, I don’t. The truth is, there have been a lot of interesting developments lately in the trademark world involving these pop stars, who seem to be as interesting in their intellectual property protection strategies as they are in their performances.

At this point, unless you live under a rock or haven’t read this blog (I forgive you, I promise), you should probably be familiar with the dancing sharks that Katy Perry used in her performance at this year’s Super Bowl. Here’s a picture to remind you. 
The dancing sharks went viral mainly because one of the sharks decided to go rogue in its performance and not follow the choreography. I guess I would do the same thing if I was in the spotlight dancing for an audience of over 100 million people. But I digress.

Perhaps one totally unintended consequence (or benefit) of the choreography malfunction was the tremendous following these sharks acquired after the Super Bowl performance. Indeed, immediately after the performance, artists jumped on the opportunity 3D making models of the sharks and selling them on sites like Shapeways. Of course, other enterprising artists struck to Etsy to sell shirts bearing the cute but aloof shark.

They used to be fixtures of office desks and kitchen counters many years ago, attractive nuisances to young kids and absolute necessities for parents preparing the annual Christmas card to go out. With its brilliantly simple compact design allowing for the storage and easy organization of virtually thousands of telephone numbers and addresses, the Rolodex® open rotary card file made many a desk jockey content. But like many other relics of the past that simply perform a task that could easily be handled by a computer, Rolodex filing systems are becoming harder to find. Don’t tell that to the trademark lawyers for Sanford, the company that owns the Rolodex trademark.

Yes, you read that right. Rolodex is a trademark. It has been since 1940, the first year that Arnold Neustadter, the original inventor with an obsession for details and organization, sold the product. Besides being registered for a “paper dispensing device for desks” (“paper” meaning small cards that are dispensed as blanks sheets for information to be recorded on), Rolodex® is now a trademark for all sorts of workplace and contact management products. A trademark portfolio for a household name with only 8 trademarks may not seem like much but hey, its quality not quantity. 

Apple is well-known for its practice of creating tremendous buzz before its products even launch. The goal for doing this, of course, is to drive foot traffic into stores and digital traffic to apple.com where, hopefully, more than a few consumers will find themselves purchasing the gadget. Product webcasts featuring a sharply dressed spokesman in front of a screen spinning crisp images of the new product and crisp animations usually involving someones hand or fingers (what other part of the body so ably demonstrates the features of a phone or tablet?) announce this year's must-have product with great fanfare. Apple's annual Worldwide Developers Conference has similarly become a widely-followed tech-carpet gala where devoted Apple fans can gain an insight into the latest product and software developments from Apple.

Devotees have their own mediums and methods for following Apple's latest technology conquering, from blogs to underground fanatic websites (I follow a few of them myself; some of these websites seem to be almost an extension of Apple's P.R. department). A favorite topic in recent years has been the discussion of potential product names for new Apple products. In 2007, there was a particularly spirited debate over whether Apple could use the trademark iPhone given Cisco's previous ownership of the mark "iPhone" for a cordless phone that could make calls over the internet. Apple eventually won that battle by making Cisco go quietly (well, sort of).

PictureMarshawn Lynch sporting a "Beast Mode" branded hat.
I looked at the calendar and realized that we are already a sixth of the way through 2015. I also looked at my blog and realized I haven’t posted new thoughts since last year! So to get the new year up and running (feels weird to call a year that is already into February new, but what the heck), I thought I would start off with something nice and easy: the trademark exploits of zealous sports stars and people in the public eye.

Public figures seem to have a prime opportunity to promote pretty much anything. There’s a shocker, you might say. I mean, obviously it is going to be easier for someone who has substantial big- or small-screen exposure to capture the attention of consumers. Not only do these public figures have the opportunity to promote themselves; their personas often go far beyond their on-screen roles to create their own auras. Of course, this is part of the reason why such public figures often secure those lucrative licensing deals.

Still other public figures push even beyond merely using their own personas to promote the product du-jour, launching their own brands. Kim Kardashian, Jennifer Lopez, and yes even Johnny Football (done before he sent himself to rehab, no, no no) are all spectacular specimens of this exercise. With their viral off-the-cuff remarks and signature hand signs shared on Facebook as the latest and greatest meme (if you don’t know what a meme is, here’s what I’m talking about), each of these public figures presents intriguing study material for any marketing figure who is seeking to understand what drives consumer purchasing decisions.

In film, some characters are destined to become popular. Others may have popularity thrust upon them.

But seriously, everybody is familiar with the protagonist of a movie. He has the most time on screen, usually brings about some positive outcome, and is generally one cool operator. One might expect such a character to have a lot of appeal off-screen and to drive merchandising purchases by consumers. Secondary characters may not be as popular simply for the reason that they aren’t as well-recognized by the viewing audience and do not play any significant role in the film, which is why it is surprising when secondary characters do acquire success off-screen.

Take Minions from Despicable Me, for example. Yes Minions, those funny yellow beings that follow Gru around and seem to hang on his every word (after all, isn’t that what a loyalist does best?) are the subject of a new movie to be released next year. Titled “Minions”, the film chronicles the quest of the little henchmen to find their next employer. But that’s not the only place where Minions are popping up. Giant balloons, building blocks, talking plastic toys, even cell phone cases, all bare the likeness of the minion.

For the Despicable Me franchise, Minions have burst onto the scene as a hugely popular secondary character. When they made their appearance in the first installment, the director did not think they would become such a key element of the film. Now, 5 years later, Minions are not only a key element of the films, they form a piece of a multi-million dollar franchise that has traversed from the screen straight into mainstream culture. 

The phrase “ice bucket challenge” has taken the world by storm this summer. Videos of people dousing themselves in ice water and nominating friends and family to do the same have inundated social media pages for millions, helping ALS reap the benefits in the form of millions of dollars of donations and increased awareness. I have personally done the ice bucket challenge and you can consider this blog post a virtual douse for the blog (electricity and water, in reality, don’t mix so well).

ALS has clearly profited from this campaign that began as a way for golfers to raise money for assorted charities and any group that garnered that kind of attention could be expected to “press its luck” to find more success. This may have been the motivating factor behind the ALS Association’s decision earlier this month to file trademarks applications in the U.S. for the phrase “Ice Bucket Challenge” for services related to charitable giving. Is this attempt to capitalize on a wave of attention and recognition enough to throw ice water on charitable motives? Some of my fellow members of the bar seem to think so. Erik Pelton, a trademark attorney in the Washington D.C. area thinks that the attempt by ALS is a move that will prevent other people from using the trademark for charitable drives

You may hear often about patent trolls in the media. Patent trolls (also referred to more formally as “Non-Practicing Entities” because of their tendency to not practice the invention that they own rights to) are persons or entities that acquire and enforce patent rights against accused infringers in an attempt to collect licensing fees. A patent troll is not interested in manufacturing a product or engaging in a process under the patent that they have acquired. Rather, their sole interest is to engage in a kind of economic rent-seeking, searching out collecting fees from entities that are practicing the patented invention. For this reason, patent trolls are often charged with the claim that they are impeding innovation and harm the ability of companies to deliver products that consumers demand at the lowest price.

A glaring problem that many trademark owners face, but which does not appear to have garnered the same degree of attention in the media, are trademark trolls. Trademark trolls are individuals or entities that seek out the names or symbols belonging to well-known third parties with the sole intention of deriving value from the trademarks through licensing back to the true owner or selling the trademarks and other related properties (including domain names) to the trademark owner. There are some fundamental differences between patents and trademarks that make it slightly more difficult for trademark trolls to accomplish their goals effectively. In the trademark troll world there are three types of bloke :

  1. The bloke that registers the trademark, knowing that the trademark is owned by a third-party, with the main purpose of using those trademarks against the true owner of the marks.
  2. The bloke that trades in trademarks like another might trade in fine Persian rugs: registering catchy or even relatively common words (but not generic or descriptive, mind you) with the hope that such words will someday be the subject of a valuable trademark.
  3. The bloke that registers a trademark with a plan to use it legitimately, but who then tries to broadly enforce the mark against a bevy of diverse actors, parties who may not even compete with the registrant. 

In honor of Flag Day, I thought I would put a little trademark lawyer spin on my homage to Old Glory.

You might see many trademarks or logos that incorporate elements of the American flag or elements of other national flags. Because airlines are the easiest types of examples to think of (because some airlines typically brand themselves as the namesake carrier for a particular country), I will use airplane livery as an example. American Airlines and U.S. Airways (about to be merged into one airline, if you hadn’t heard) sport elements of the red, white, and blue:

PictureWhich way is the right way? Src: http://blog.hwtm.com/2012/11/vintage-alice-in-wonderland-tea-party/
So Hobby Lobby. I'm sure you've heard of it. Its this big-box craft store that sells everything from fake hibiscus to jelly beans, all with the goal of giving those who enjoy crocheting and decorating something to do over the weekend. But have you heard of Hobby Lobby International? No, not the same store. Hobby Lobby International, as in the store that sells only remote control "crafts", the kind that boys big and small pine for as a form of alternative to the bigger, expensive versions. I had never heard of it either before today, although it sounds much more exciting than Hobby Lobby, the full arts and crafts store (because I just happen to be one of those guys that likes the RC stuff).

Apparently, Hobby Lobby International (the RC store, which I will simply refer to from here on out as "HLI") has been around longer than Hobby Lobby Stores ("HLS"). About 8 years to be exact. HLI opened its first shop in Tennessee in 1964 while HLI opened its first store in Oklahoma in 1972. Over the years, HLI grew from a single-retail store location to a thriving mail-order and online retailer business, with sales of at least $9 million. The same family owned HLI until 2003, when it was sold to a private equity firm. In 2009, a local business guy, Mark Cleveland, bought the company with goals to expand operations across multiple stores and sell more radio-controlled products (yeah, he's one of those small-scale, big-boy toys kind of guys, too.).

How could two companies, in virtually the same industry group, through practically the same avenues in the marketplace, reaching potentially overlapping consumers exist side-by-side for all those years without any kind of problems or misdirected consumers? Well, apparently they didn't, or at least nobody cared until Mr. Cleveland took over in 2009. Thereafter, problems seemed to pop-up like miniature RC helicopters flying around the room: customer complaints and inquiries directed to HLS, mis-directed web traffic, confused female customers who showed up to HLI stores looking for yarn instead of electronics, and so on. Given its smaller size and scale of operations, HLI took the brunt of the misdirected consumers, getting stiffed on keyword advertising on the internet and angry, confused customers who just wanted to buy wicker baskets.

This is a classic case of what us trademark attorneys call "reverse confusion". Reverse confusion occurs when one business (the junior user) uses a trademark that was first used by another business (the senior user) and where the junior user becomes more well-known than the first user. In regular consumer confusion (no, it isn't called "forward confusion"), a junior user is confused with the senior user. In this case, in essence, the junior user is free riding on the reputation of the senior user. In reverse confusion, the senior user loses the opportunity to control its own reputation and goodwill because the junior users swamps the market with its advertising and sales, so much so that consumers come to believe the senior user of the trademark is actually the junior user. In essence, then, reverse confusion occurs when a more powerful company uses the mark of a smaller, less powerful senior user.

As a trademark attorney, I am constantly trying to figure out ways that I can help clients see the value in protecting a certain symbol or word, an identifier that ties to the client and distinguishes them in some sense. This is, after all, the most fundamental purpose of a trademark: to distinguish, to identify. Some call this heightened awareness by an attorney “over lawyering”. I would like to think that it is simply doing my due diligence!

More and more businesses seem to be warming to the idea of trademark rights in store designs. Yes, store fronts and interiors, you know the distressed facades showing exposed bricks, the marquee sign on top of the store with a funny looking arrow pointing in no direction whatsoever, the arrangement of merchandise display tables. Those designs. True, a store design is not necessarily a word or solitary logo like we think of when we think about ordinary trademarks (ordinary meaning plain old words, phrases, and logos). The fact remains that store designs make just as compelling an impact on consumer perceptions than a word or logo flashing across the television screen or calling out to you from a billboard.

But enough pontificating. Let’s take a case-in-point: the Apple Store.