​When you try to capitalize on a high-profile event by filing a trademark application that makes a clear reference to the event, you might be surprised to learn that the application stands a likelihood of being refused registration. This was the fate of an application filed by an individual for the mark KAVANAUGH BEER filed for spirits in class 33.
 
In trademark law, there are certain marks that cannot be registered. These include “immoral, deceptive, or scandalous matter” as well as marks which “falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols”. The reasons for restrictions against these types of marks seems simple enough: it all goes back to the main aim of the trademark statute to prevent instances of consumer confusion. In some cases, determining whether a mark falsely suggests a connection with a person might be fairly obvious (for example, Beyonce Citrus for candles). Other marks may not clearly make a reference to a person if the mark is a common name and there is no indication that the name as, used in the particular mark, is not clearly intended to refer to that person. The USPTO recently demonstrated how it might make a decision on whether a mark is connected to a particular person, evaluating the application for KAVANAUGH BEER in connection with, what else, alcoholic spirits.
 
In an office action refusing registration for KAVANAUGH BEER, the examining attorney concluded that the mark was likely to suggest a connection with one Brett Kavanaugh. That would be Brett Kavanaugh, the most recent U.S. Supreme Court Justice appointed by President Trump (in case you weren’t in the loop on that one). Citing the principal that a mark cannot consist of or comprise matter falsely suggesting a connection with a person, the examining attorney concluded that the mark KAVANAUGH BEER would “unmistakably” point to Justice Kavanaugh. In making such a conclusion, the examining attorney relied on the following four factors:

1. KAVANAUGH BEER is the same as, or a close approximation of, the name or identity used by another person (this factor seems to apply broadly to many different marks involving names of people, especially because names like KAVANAUGH are incredibly common).
2. KAVANAUGH BEER points uniquely and unmistakably to Brett Kavanaugh (apparently the examining attorney relied on a series of news articles discussing Justice Kavanaugh’s Senate confirmation hearing where his consumption of alcohol during high school and college took on special interest; this would probably be a closer call had there not been such a media buzz regarding the topic of Justice Kavanaugh and consumption of alcohol).
3. Brett Kavanaugh is not connected with the alcoholic spirits proposed to be sold under the mark.
4. Brett Kavanaugh’s fame or reputation is of such a nature that a connection with him would be presumed when used with spirits (again, this is a factor that was likely precipitated by the buzz created by media attention to the topic of Justice Kavanaugh’s consumption of alcohol or, as Justice Kavanaugh put it himself at the time, “I like beer”).

 
The refusal of the KAVANAUGH BEER application highlights the extent to which the USPTO can rely on press articles to demonstrate that a particular surname, which might otherwise not be rejected. Taking a different example involving another Supreme Court Justice (and also involving a type of spiritous drink), Antonin Scalia, an application for the mark SCALIA for wine was also refused. This time, however, the mark was refused because “Scalia” was such a common surname. Although the trademark office cited the fact that Antonin Scalia was a U.S. Supreme Court Justice, and the American public would likely recognize his name as such, there was no evidence cited that Justice Scalia had any relation to wines or spiritous liquors (likely because there wasn’t any given that the topic did not arise during Justice Scalia’s confirmation hearing).
 
One interesting scenario would be if the applicant who filed an application for KAVANUGH BEER was also named Kavanaugh. Although such an application could also be rejected on the basis that Kavanaugh is merely a surname (and a common one at that), the applicant could possibly overcome the objection by showing that it has used the name for a period of time that consumers associate the name with the applicant. Such showings are sometimes difficult to make because the evidence provided may not be substantial enough or it might show that consumers associate some other identifier with the company and not the mark at issue in the application. Even if the applicant was able to show acquired distinctiveness in their particular mark, the application could still be refused for its tendency to draw a false connection to Brett Kavanaugh.
 
Bottom line: filing an application to take advantage of a popular story is likely to fail for the very reason that it seeks to take advantage of the fame created by the false story. 

\ In this day and age of fast-paced innovation, the question of “what’s the next big thing” often hounds even the least-interested of onlookers. While only the most rabid of technologists strive to have the deepest understanding of the latest and greatest (so much so that they stop at nothing to try and read the next new feature), the technologically unconnected still like to look ahead and figure out whether they will need to spend $600 on technology that may, in the next few months, be completely outmoded. Fortunately, for those that live and breathe on up-to-the-minute information on their biggest tech crush’s new innovation, there is a tool that you can navigate to find just such valuable tidbits: the USTPO database of registered and pending trademarks. 

And one of the biggest darlings when its comes to USPTO tea leaf reading habits seems to be Apple. One of the greatest sources for this information is Patently Apple, but the usual news sources typically cover this information too when there is some pending release. 

I must admit, as a bit of an Apple-nerd myself (I count my iPad, MacBook Air, iMac, and iPhone as almost indispensable grown-up toys), I too enjoy monitoring the company’s happenings in the patent and trademark realm. Of course, Apple seems to be at the forefront of software and hardware innovation, constantly pushing the envelope of form and function. Apple’s branding is equally as powerful, managing to touch virtually every type of potentially source-identifying property, from standard word marks to the almost unprecedented store configuration of desks, signage, lighting, and storefront glass (side note: Microsoft and Samsung fans, we can just agree to disagree here on each of these points). So, naturally, Apple seems to be a great case study for this comment on tea leaf reading.

As Patently Apple wrote recently regarding Apple Pay, the company’s filing of trademark applications for the mark APPLE PAY CASH provided an excellent insight into what new updates might be coming to iOS. Patently Apple’s review of the APPLE CASH trademark proceeds to guide the reader through the full details of the applications, including the all-important goods and services description. While this section of the application provides insight into what APPLE PAY and APPLE CASH will do (which is probably the item of greatest interest to ‘thusiasts), it is also the metes and bounds or the property lines of the trademark. This is the item that us trademark attorneys are most interested in. More than just telling everyone what specifically the trademark will cover, it describes potential areas of expansion. An attorney worth his/her hourly rate will draft these in such a way that they look beyond the current capabilities of a product and take the trademark straight into the future. Patently Apple implicitly promotes the importance of such forward-looking trademark drafting by announcing the filing of new trademarks and conveying the idea that strategy in drafting trademark applications is an important quality.

Such a quality is crucial to adopt, especially if you are a technology company that is looking to cast the widest net with its trademark application. Patent attorneys usually counsel inventors and engineers on the art of claim drafting and how any invention should be described in its broadest terms to capture future iterations of the underlying product (see, for example, this very good and very concise treatment of the topic by Gene Quinn: http://www.ipwatchdog.com/2013/05/25/patent-claim-drafting-101-the-basics/id=40886/). I think that good trademark attorneys counsel their clients to do this, too but from a branding and marketing perspective. Reach for the stars with your description of goods/services. Think about not only what is, but what could be, under the mark. To be sure, this requires a knowledge of the current functionality of the products/services but also areas for expansion, and even accessory products.

Another positive development from this increasing activity of trademark tea-leaf reading is that it may be enhancing people’s abilities to discern between different classes of goods and services. “Why does this matter,” you might ask. The significance is that entrepreneurs and the folks that engage in ideation may be gaining a stronger appreciation for the different components of products/services that might be protectable under a trademark. For example, if you develop a smartphone app that allows the user to search for great restaurants based on where the user’s friends have gone recently, you might now know that you don’t just want to file a trademark application for class 9 goods (downloadable software apps). You might also want to include class 45 services (that is, social media services). Knowing the distinctions between the two, and that your brand is eligible for protection in both classes, further reinforces your trademark and gives you more enforcement options.

It is just another benefit of living in an age where information, and resources for scouring that information, are well within our reach.


Photo by Ksenia Makagonova on Unsplash

The Trademarking Decision – Where to File?
The first item on most business owners’ agendas when they start a new business is protection of the house brand, that word, phrase, or symbol that goes on everything from invoices and product packaging to vehicle wraps on the side of delivery trucks. Understandably, the brand name is the first-impression setter for businesses that are involved in distributing products to consumers, differentiating one particular product from dozens of others. Business owners may have put a lot of thought and creativity into the name, which might represent some deeper core meaning for the business and which the business wants to pass on to consumers. But a clever name only goes so far if it is vulnerable to use by a competitor in a different geographical area, a scenario that could actually turn the name into a weapon against the company that created it.

From there, it is a matter of the scope of protection that a business should go after. Usually, this is a fairly simple decision involving a determination of state vs. federal trademark registration, depending on the geographical scope of current business operations and future growth plans. Obtaining a trademark at the state level is quicker, cheaper, and generally easier because trademark applications are not put through the same rigorous examination process that federal applicants must go through. One drawback to the state registration route is that any rights granted under the application are limited to the geographical borders of that state. The practical impact is that a company doing business in multiple states has to register the mark in each state where they are doing business in order to receive the exclusive right to use that mark.

A federal trademark registration promises a more expensive and drawn-out application process, but often carries more robust rights for the trademark owner including exclusivity of use in all 50 states, constructive notice to third parties that the trademark is registered and is a valid trademark, and the ability to sue third parties in federal court and recover higher damages. If a business operates across state lines, or is exclusively an online business, federal registration is a better route for protecting a trademark against third party use because the business only needs one registration to lock-in rights to the name across the entire country.

Federal Trademark Requirements
Because a federal registration grants such a broad swath of rights, applications are subject to meeting stricter requirements. Among such requirements are “lawful” use in interstate commerce regulated under federal law. If a mark is used in connection with an activity that involves a per se violation of federal law, it is unregisterable as a trademark by the federal government.

Given such a restriction, it is perhaps easy to see why a trademark application relating to a cannabis-based business might fail. Marijuana is, of course, a controlled substance under the Controlled Substances Act, which makes it unlawful for a company to sell or trade in the substance. Although the case law background on what exactly is an unlawful use is relatively murky, it appears that examining attorneys in the trademark office who are responsible for reviewing federal applications are more apt to reject an application if it makes any reference to marijuana. As part of the examination process, an attorney at the USPTO typically requests a written response from the trademark applicant as to the legality of the product listed in the goods description.

Federal Law Still Reigns Supreme in Unlawfulness Rejection
The HERBAL ACCESS case demonstrates the dynamic between state and federal law in the analysis of the lawful nature of a substance listed in the description of goods/services in the trademark application. Although the “use in commerce” requirement under the federal Trademark Act clearly references use in commerce that can be regulated by the federal government, any product that would contravene federal law (even if that product is lawful in a particular state) is considered illicit under federal law and, consequently, ineligible for registration.

Seeing, perhaps, that the legal use under state law argument was doomed to fail, applicant contended that some of the services it was offering (namely, sale of herbs) was not illegal and, on that basis alone, the application should be registered. The applicant for HERBAL ACCESS further attempted to argue around the illegal use rejection by saying that the products referred to in the application were merely herbs, not marijuana. The TTAB rejected this argument based primarily on the specimen of use submitted by the applicant itself (which showed a map with wording “Marijuana for the Masses” and a picture of a marijuana plant with the text “Call or stop by today and find out why people consider our marijuana to be the best of the best!”). When looking at this evidence, the board concluded that, clearly, the applicant was selling marijuana. Viewing the presence of marijuana as the equivalent of “poison” in the well of otherwise pure water, the TTAB concluded that one legal item in the description of services did not immunize the entire application from rejection based on unlawfulness of the services.

Trademark Rights for Cannabis Owners
For the time being, it appears that the trademark office will continue to deny applications that include any direct reference to cannabis. While there is always the possibility that the Court of Appeals for the Federal Circuit might re-evaluate their conception of what “use in commerce” means or that Congress will change its stance on cannabis as a controlled substance, business owners in this field would be better-versed in foregoing the federal registration route and sticking with registration in states where the company is doing business. This will give the company the right to exclude third parties from using a similar mark and set the groundwork for bringing claims against third parties in state courts for other injuries such as trademark infringement and unfair competition. A state trademark will not, however, prevent the company from stopping third parties in states where the trademark is not registered, nor will it stop the company from going after third parties that might use a similar name, but on non-competing products (trademark dilution).

To build a broader base for protection of the mark, and if the business provides some other kind of service or product that does not specifically include marijuana as an ingredient or feature, the business might look to a federal registration for a line of business that is not engaging in activities that are unlawful under federal law. Leafly, the self-branded “World’s Cannabis Information Resource”, recently obtained several federal trademark registrations for its LEAFLY mark for various services, including a website for providing information about cannabis strains and effects, and a downloadable app for finding dispensaries. Such a registration (while not specifically for marijuana-based products), could be used to give a business owner a foot in the door to prevent other businesses from using a similar name.

In any event, owners of a cannabis business should carefully consider the risks posed by third parties along with restrictions on trademark registration prior to choosing which strategy to adopt. 

The pro-activeness of certain pop-culture icons (or, as will be apparent a little later on in this post, “imminent” pop-culture icons) never ceases to amaze me. The trademark aspirations of many of these starlets takes the whole go-getter ethos to a whole new level. Just in the past few years, we’ve seen such tendencies on full display through Taylor Swift’s campaign to register “This Sick Beat” for, well, everything under the sun, to Beyoncé’ and Jay-Z’s attempt to register  their baby’s name (“Blue Ivy Carter”) for a line of baby accessories. The latest in a line of ambitious pop star trademark registrations appears to be Angela Renee Kardashian’s (a.k.a “Blac Chyna”) filing of a trademark application to register her full married name for various advertising and entertainment services. The motivation appears to be a reality TV show that she plans to produce with her fiancé, Rob Kardashian.

The sequence of events usually goes like this: A celebrity writes a song, does a media interview, or marries another celebrity (who may or may not be famous solely because of their name). The celebrity makes some unique, whatever (or not so unique, in the case of “This Sick Beat”) that the media quickly seizes upon, spreading it far and wide. Because the celebrity is well-known, their name is associated with the unique word/comment/symbol without much effort by the celebrity him/herself. The phrase may even be incorporated into a viral YouTube video, or acquire its own hash tag, like Charlie Sheen’s #winning rant (in reality, this wasn’t really a winning trademark strategy as Sheen hasn’t yet obtained his registration). Either way, the celebrity will have no problem acquiring the goodwill that other trademark owners may have to pay hundreds of thousands (or millions) of dollars to acquire.

But what is driving these quests by celebrities to register everything that moves? Is it an overpowering interest in furthering a personal brand? Is it an interest in building a name or identity for the sake of preserving a celebrity’s posterity? Or maybe it’s just the street-cred that comes along with having “trademarked” a phrase. More likely than not, it’s a function of the merchandising culture that has gripped the entertainment industry, making movie and musical stars as ubiquitous as ever. A box of cereal that has Kobe Bryant on the cover is more likely to move off the shelf because people buy it thinking they’ll get moves like Kobe Bryant. Okay, not quite; but that box of cereal, because it is branded with someone who is familiar, is more likely to be recognized by consumers for Bryant’s pizzazz. The goal is to build a brand, to transcend a merely on-screen personality and turn it into an entire experience. What we in the biz call savvy marketing.

I’m starting to believe that these pop star attempts to register trademarks for names and obscure catch phrases are really a unique sign of the times. It’s a time when social media seizes on off-the-cuff remarks, helps them go viral, and gives added fame and recognition to the source of the off-the-cuff phrase. In other words, activities that all contribute to enhancing the goodwill of a particular phrase. These are tools that celebrities of yore did not have access to. Dick Van Dyke, Lucille Ball, and Sean Connery (just to name a few) all had the opportunity to petition the same trademark office as today’s celebrities did, but trademark applications and registrations by these legends of yore are as conspicuously absent as straps of clothes on a certain celebrity during a certain Super Bowl halftime performance.

Maybe the answer lies in the ability of today’s celebrities to really publicize and exploit a name or identifier through social media. Merchandiser partners producing goods can use the same social media outlets to reach an even bigger audience of consumers, boosting sales of the underlying product. The struggle for the celebrity (indeed for any company that is seeking to maximize its trademark rights through merchandising) needs to have a plan for obtaining trademark rights, recognizing the specific goods and services that the mark will be used on. This requires foresight to really hone in on the goods that the celebrity is offering. Otherwise, a trademark kitchen sink “land grab” approach is likely to fail as trademark rights attach through use of the mark, not mere registration. Even Charlie Sheen’s ubiquitous and infamous “Winning” series of trademarks, with all of its recognition on social media could not overcome the cold hard realities of getting a series of suppliers to make everything from vitamin supplements to action figures with the slogan “Duh Winning”. In short, celebrities have to have the connections in the biz to develop the products or offer the services themselves or at least license out their trademark to others who can develop the products and offer the services.

It appears Renee Kardashian either has no connections or has the foresight to limit a description of services at the trademark office to “keep it real”, under the parlance of our times. Then again, maybe Ms. Kardashian is simply laying the groundwork for a much broader push for trademark rights later, using such broad claims as “advertising services” and “entertainment services”, services that are no doubt in the purview of her soon-to-be-acquired surname, at least if the track record of her future in-laws are any indication.

So what am I trying to say with all of this? As annoying (and unprecedented) as these celebrity name reservation pushes might be, they are perhaps very nice specimens for how business owners can effectively protect their brands:

1.     Seize early on the flash-in-the-pan moment by protecting a name
2.     Rely on customers, and any other person/place/thing that can spread the word about the brand and generate that all-important goodwill
3.     Paint with a broad brush by describing what your business will do; you can get into specifics later once the bottom line is a little juicier. 

Being a blog whose namesake is “antigeneric”, I reserve the right to rail against the generic. Generic trademarks are the bane of a trademark attorney’s existence. A generic mark leaves lawyers with nothing to do: nothing to register, nothing to enforce, nothing for clients to use to create good will and compound on it to create value in their brands. For the client, a generic trademark represents a huge missed opportunity to reach customers and create an aura around a product or service; it may even be a detriment to a client if a re-branding campaign is required. Moreover, rebranding can be expensive and provide pause even to the most gung-ho marketing team. After all, who wants the stress and financial headache of starting from square one?

These are the rules that apply to many for-profit, and even non-profit organizations. The name of the game is name recognition, with an underlying economic motivation of economic gain. Consumers recognize the symbol, attribute it to a single source, draw upon prior experiences with products/services bearing that symbol, purchase the product, and enjoy. Rinse and repeat a thousand times (or hopefully many more) and you get goodwill. The owner hopes that it will have exclusive ownership over the symbol so that consumers won’t choose a competitive product thinking it to be from the owner. Economics therefore plays a role at two levels. On the purchasing side, it embodies the intangible associations between the name and the source. On the sale side, it represents the desire to prevent others from creating the same association using a similar symbol. 

What happens when a trademark is the product of a movement that is about more than just profit? For such marks, there seems to be a propensity for a movement’s adherents to adopt the mark for their own permutation of the goals of the overall organization, thereby removing the commercial significance of the mark. Trademarks and commercial significance, however, kind of go together. If potential users of the mark are motivated to dissociate the movement from a message of profit, they will lack the incentive to follow the same guidelines on proper use of the mark as would a brand owner that is eager to profit from exclusive use of the mark. Similarly, if consumers are of the same mindset and believe that the mark is not really a mark but more of an overarching message unconnected to any single source, the message will lose its status as a trademark. As the owner, if you have that disconnect between users of the mark and consumers, you have a recipe for disaster.

This is exactly what happened recently to the organization that started the “Urban Homesteading” method of living. In 2007 and 2008, the Dervaes Institute (an organization founded by Jules Dervaes) applied to the USPTO to register the phrases “Urban Homesteading” and “Urban Homestead” for various educational and entertainment services pertaining to lessons on sustainable living, organic foods and gardening. Both marks were eventually allowed to register after a few rounds of rejections by the USPTO for reasons of descriptiveness (I can kind of see why). 

Armed with these registrations, the Dervaes Institute entered a brave new world, throwing its weight around like the best of the trademark bullies. Their target? A group of adherents to the urban farming movement using the banner “Urban Homesteading” for the name of their business.

One of these adherents in particular had a little fight in them, apparently deciding that the “Urban Homesteading” movement was much bigger than a flimsy trademark registration granted by the USPTO. Denver Urban Homesteading LLC maintained a Facebook page for its business starting in 2010 providing information about products sold at a farmer’s market and select urban homesteading skills. Refusing to take Facebook’s shutdown of their page lightly, the owner filed suit against Dervaes seeking to cancel the “Urban Homestead” mark on the grounds that it was bunk from the beginning (er, that’s the laymen’s term for “generic”).

With zeal, the Denver group presented a whole bevy of evidence including instances of generic use by competitors, general reference to the term as a movement and lifestyle, and (last but not certainly least), Dervaes’ own use of the “Urban Homesteading” mark as a generic word on the Institute’s own website (doh!) From this evidence, the court had no trouble concluding that “Urban Homesteading” suffered from the classic generic mark ailment of telling consumers “what it was” as opposed to “who it was”. Because the mark could no longer be attributed to a single source, the mark was deemed generic and no longer protectable as the exclusive mark of Dervaes Institute.

The Dervaes Institute had lost its attempt at a name land grab. It is difficult to have sympathy for the Institute, both because they themselves sowed the seeds of their own demise and because they should have apparently recognized the writing on the wall (which was there long before the group attempted to register a trademark for their beloved phrase). As the Electronic Frontier Foundation pointed out in a letter to Dervaes, “urban homesteading” was a term that had been in use since at least the 1970s to refer to strategies for revitalizing blighted areas at least partially through urban farming. These are the very ideas that Jules Dervaes promoted in his initial experiment during the 1970s and 80s. Doh!

It seems hard to fathom that a person who was so intricately familiar with (and even instrumental in founding) a movement under a name would think that the same could be protected as a trademark. Dervaes Institute was no slouch when it came to trademark protection, having the resources to launch a wide-scale campaign to strong-arm misusers of their mark.

So, long story short: Dervaes helped to coin a phrase that it may very well have exercised exclusive rights over and kept tight restrictions on if it had been disciplined early on in adoption and promotion of this phrase. Then again, using such a phrase for a movement where one of the tenets appears to be sustainable living to minimize reliance on for-profit, earth-harming activities seems a little counter-intuitive. If the goal was to rein in imposters offering training not based on the original “Urban Homesteading” model, there are better ways of doing that than simply pushing a single mark on potential licensees. Usage of a certification mark, publication of materials written by trusted leaders of the movement, or using an alternative mark with a well-formulated marketing campaign are all examples. But these are all slightly more difficult (i.e. more expensive) than just filing a trademark, getting the registration, and strong-arming people to honor your registration or else. Nevertheless, if it was that easy to get trademarks on common phrases, the world’s lexicon would be somewhat limited and language would seem a bit more robotic.

The lessons for trademark owners here are numerous. At the very least, don’t use your own mark generically, especially if you want to hold it over someone’s head like the sword of Damocles. And don’t bank on trademark protection for a phrase that you know has already been embraced as an insignia of a movement or lifestyle.

Okay, so I changed the words from the penultimate bluegrass song to make a pun on a situation down in North Carolina involving, what else, music and beer. And a little dispute over the name WOODSTOCK.

Apparently, six years ago two people started a small music festival at a restaurant featuring local musicians performing on the back of a flatbed truck, a type of makeshift stage. At the time, the festival was deemed the Popcorn Sutton Jam, the namesake of a local moonshiner.  Then this year, following a spate with the widow of Sutton, the event’s name was changed to “Hillbilly Woodstock”. That’s Woodstock as in the music and cultural festival from upstate New York during the rebellious years of the 1960s. This, as you might imagine, created quite a stir amongst Woodstock Ventures, LC, the owner of the WOODSTOCK mark. Actually, it’s more like a portfolio of marks that includes everything from loungewear to cultural entertainment services for kids. Living up to their name as zealous protectors of WOODSTOCK trademark supremacy, Woodstock Ventures made sure to get a C&D letter out quick.

Not believing that a little music festival serving a niche listening group could raise the ire of a cultural icon with name recognition from here to Vietnam, the bluegrass people “thought it was a joke”.  But as we all know from war stories involving owners of storied trademarks, infringement is no laughing matter.

Perhaps the organizers of the North Carolina festival felt they were making a clever reference to the fabled music fest in a bid to inspire thoughts of nostalgia among concert-goers, but in the bluegrass style of music. Or perhaps the plan was to create a weekend of critique of the debauchery which was largely a byproduct of the counter-culture from the real Woodstock. My spiny senses (and a visit to the website) tell me the latter is probably not very likely, and that the point of the music festival is the very orthodox provision of good music and entertainment, no overt intent to comment on anything.

So it looks like the real purpose of using the name may have been to simply grab some attention using a name that has apparently become synonymous with music marathon weekends featuring nature as a backdrop. And that is really not what trademark law allows. Break it down like this: an event, featuring music and entertainment services, includes “Woodstock” with the “Hillbilly” qualifier. Except for the “Hillbilly” portion of the mark, there’s not much there to distinguish the mark from WOODSTOCK. Indeed, its really hard to imagine any kind of use of “WOODSTOCK” in the music festival realm that would not capture the attention of Woodstock Ventures. Hence the C&D letter from the owners of the Woodstock mark.

Maybe, just maybe, the festival organizers had doubts about the true trademark status of WOODSTOCK. They might have thought that “Woodstock” was simply a general name for outdoor concerts and, therefore, fair game for anyone and everyone to use. Some people not privy to proper trademark terminology call this action of falling into availability for general use the “public domain” because there are no restrictions on how the trademark can be used. But that’s not quite correct because public domain, a copyright legal term, has a certain spatial element to it Namely, that copyrights, being definite in their term of protection, expire at a certain point in time. Trademarks, on the other hand don’t have a statutorily-imposed time limit, provided the trademark owner keeps using the mark correctly. Instead, trademarks become generic through some action of the trademark owner be it neglect, licensing the mark to anyone and everyone without appropriate limitations, or just plain old using the mark improperly.

Unfortunately, the commonality of usage of a particular mark is not the touchstone of whether a mark has actually become generic and is, therefore, available for use by anyone and everyone. Quite the contrary, in fact; the more that a mark is used, the more likely it has acquired the holy-grail of statuses in trademark law: fame. If a mark is famous, no one can use it on anything, even if the trademark owner only makes one type of thing. On the other hand, if an entire segment of consumers is throwing a word around like confetti at a double wedding without regard to how it should be used or whether it is used on products actually made by the trademark owner (you know, like “Thermos”), then the mark is not even famous. It is generic.

That may have been what the bluegrass folks were thinking. If “Woodstock” is used in one form or another to generally reference any outdoor music festival, then it has fallen into that form of usage that makes it generic. Who knows where they might have gotten this idea. Maybe they came to that conclusion after seeing other music festivals like Cariboo’s Rock Stock, Green-Stock Music Festival, Woof Stock, Salmonstock, Hollystock, and Nowoodstock (and that was just from the first 2 pages of Google). So we have a bunch of music/arts festivals that are using the suffix “stock” in the name. Hardly convincing evidence that the name “Woodstock” would be okay to incorporate into a mark. At best, the plethora of other music festivals that use the word “stock” in the name is an indication that that portion of the mark is unprotected because it has meaning independent of the way that Woodstock Ventures uses the mark. Even that is a stretch because there is no other meaning for the word “stock” as used with a music festival.

But even then, a concert planner would be wise to avoid using the full mark in favor of some variation of the word “stock”, combined of course with a distinctive word. Using “Woodstock” was gutsy and probably just asking for trouble.

For now, the printed banners, bumper stickers, and shirts serve as an expensive reminder that it doesn’t pay to take liberties, even if you think that the ability of a trademark holder to claim exclusivity over a specific name has somehow been lost because of trademark use run amuck. 

One of the things about being a brand owner is that you have to play hard ball sometimes, or at least that’s what most prudent trademark lawyers would advise. But you can cross the line, especially when the enforcement action you are taking is aimed at the wrong target.

Straight out of the book of Tales of Trademark Bullies is another case of a brand owner throwing its weight around and quashing all potential threats like Styrofoam cups (yes, Styrofoam is indeed a registered trademark). FlipKart, an e-commerce company from India that operates an online megastore selling everything from baby bibs to barbeque grills, has made quite a name for itself since launching in 2007. It is peddling itself as an alternative to Amazon, at least outside the U.S. But Amazon is still king in India, apparently. 

Regardless, a company with a name like FlipKart is probably going to defend it pretty vigorously, and have a lot of success to boot. Not many everyday Joe’s are going to challenge a company’s claims when their attorneys come knocking. Much like SnapChat, FlipKart is one of those stronger marks, you know, the ones that are distinctive because they do not describe the goods or designate a category of products. From the beginning, the idea was to have a catchy name suggestive of the features of the service with staying power in the minds of consumers. Of course, being able to register the name under the .com TLD was key, too!

So when a blogger registered the domain name “amazonvsflipkart.com” and used it to host a survey comparing services offered by Amazon.com and Flipkart.com, FlipKart flipped a lid. In FlipKart’s eyes, the website was just too much of a good thing in an online world that thrives on consumer feedback and transparency. As a spokesperson said: “We respect the right to freedom of speech and endeavor to carry out research and polls. However, the legal notice was issued in the interest of safeguarding our goodwill, brand and trademarks.” Clearly, FlipKart’s concern was for the wrongful associations consumers *might* make between the website and FlipKart. One burning question I have: why wasn’t Amazon also upset? After all, it faced the prospect of incurring just as much damage as FlipKart.

But what is the harm in such a domain name? It seems to me another form of harmless comparative advertising which, of course, is a perfectly acceptable nominative use of trademarks (Pepsi v. Coke, anyone?) Such uses of trademarks in domain names have to be evaluated according to their impact on the association between the website and the trademark owner. Often times, this analysis centers on how the trademark is actually used in the domain name and the appearance of the website. Any sensible consumer would understand the purpose of FlipKart’s appearance in the mark and would not be deceived by use of the mark in the domain name. First, would a consumer actually believe that FlipKart developed the site for the purpose of measuring consumer feedback on FlipKart’s own site? Using a FlipKart logo, prominently featuring it near the header of the page, and using text like “Help rate FlipKart against its top competitor”, where FlipKart appears first in the statement could cause consumers to believe that FlipKart is associated with the website. Second, does use of the FlipKart mark in the domain name impinge on the goodwill of the FlipKart mark by attracting visitors to the page and influencing some kind of buying decision? Here, there was no commercial prompt on the website; consumers were prompted to vote on the desirability of one site over another. The name may have attracted consumers to the site, but the purpose of the use of FlipKart’s mark in the site was to literally describe the activities taking place on the site, namely, comparing the services of two different websites.

And this is exactly how court opinions on use of trademarks in domain names have shaken out. Indeed in a case out of my own home state, a court found that a gripe site started by a former insurance agent to criticize a former employer (www.avivauncovered.com) did not meet the commercial use standard under the Lanham Act because there was no sale, offering for sale, distribution, or advertising of goods or services where use of a mark was likely to cause confusion. Without a commercial use of the mark, there is no obligation to protect consumers that have formed particular associations between the mark and a specific source.

Without a commercial use requirement, the Lanham Act and its prohibitions on the use of a particular word in a specific context would impinge First Amendment rights by preventing any uses of a trademark, even if the use was merely communicating ideas or expressing points of view. A comparative survey seems perfectly aligned with an act of expressing points of view.

Morale of the story: if a trademark owner is going to strong-arm a person that is using their trademark, they should check and double check that the use is not in fact “okay” and won’t result in any kind of damage to the company from direct commercial sales flowing from the website. Otherwise, a company could be facing a public affairs nightmare through its derogatory “trademark bully” label.

Earlier this week, Google announced that the company would be operating under a different banner: Alphabet. Some linguists have speculated that the driving force behind the name change is to prevent GOOGLE from becoming generic for search engine services. Becoming generic is the death knell for a trademark because it means that the mark is no longer a source identifier and does not point to the original owner, a critical function of trademarks. Practically, this means that the owner cannot stop others from using the brand on their own products. So how could a brand that is estimated to be worth $66 billion be in jeopardy?

First, you have to look at how a brand becomes generic. In essence, “genericide” of a brand occurs when a word is taken to be the categorical name for which the underlying products are part of that category. “Piano” is the generic name for a sub-category of keyboard instruments and “pen” is the generic name for a device that is used to write with ink. When a name is generic, no one can have trademark rights in it; a generic name is free for use by all if the name is applied to the products it signifies.

Trademarks that were once tied to a single source and were not identifiers of a product sub-category may become generic overtime. Yo-yo, thermos, aspirin, cellophane, and escalator are all examples of prior trademarks that have devolved into generic names. Usually, the process of “genericide” takes place over a period of time and is caused in part by the actions of the trademark owner itself. The owner may fail to use the mark properly itself, using the mark to signify the product and not as a source identifier. An owner may fail to take action against third-parties that are using the mark with their own goods or the owner may encourage such widespread adoption by competitors and consumers. In both cases, the consuming public forms opinions about the mark, including the belief that the mark is not tied to any one company but is, in fact, a way to describe the product.

If a competitor that is accused of trademark infringement asserts the defense of trademark genericness, the competitor could prevail in having the infringement suit dismissed. Much worse, the asserted mark would be cancelled and the owner would be stripped of any right to enforce its mark against any one.

But how does a court draw the line between widespread use by consumers that is a testament to the strength and dominance of the brand, and widespread use of a generic word that consumers do not associate with any one source?

It isn’t uncommon to tell someone to “google it”. This is a clear use of the mark GOOGLE as a verb, which makes it more vulnerable to genericide, and it is short-hand for consumers who find it less cumbersome than the legally correct version, “use the Google search engine”. However, courts have recognized that even if Google is widely used in everyday speech to refer to the act of searching, the underlying name is so well-known to consumers, and its connection to a specific search engine so strong, that it would be counter-intuitive to the aims and purposes of trademark law to find such a mark unprotected simply by virtue of its use in rhetoric. One federal court in Arizona, in a case where the plaintiff registered over 700 domain names that included the word “Google”, found that the GOOGLE trademark was not generic. The court weighed certain factors such as the diligent marketing activities of Google over a period of 15+ years, widespread enforcement activities against misusers of the mark, and quality control oversight of licensees that were allowed to use the mark. The mere fact that consumers used the mark to sometimes describe the act of using the class of products that the mark belonged was a testament to Google’s significant marketing activities and strong enforcement.

Google should take some comfort in knowing that its brand is so widely recognized by consumers as an identifier for search engine services. While its mark has been taken to broadly classify the act of searching for something on the Internet, Google has taken its enforcement efforts seriously to clamp down on any genericide. Its recent decision to change the corporate name to “Alphabet” therefore shouldn’t be taken as a white flag in the battle of genericide, but as a new strategy in branding to account for Google’s multi-faceted business model.

So Google, a worldwide presence with an undoubtedly large and capable legal department to enforce its trademark rights, is probably safe from genericide (for the time being). What can small businesses do to prevent a brand name from becoming generic? The most important step is starting with a strong brand from the beginning. Selecting a word that is arbitrary or fanciful when applied to your goods or services is a good way to ensure that consumers don’t water-down the brand in favor of the name of the product. Secondly, after choosing a name, select the appropriate generic wording that follows the brand name (for example, LEVI’S jeans; LEVI’S is the brand and jeans is the generic name). After finalizing the name, make sure consumers know that it is in fact a brand name, and make sure they know how to use it properly with the generic name (for example, using a “Ask for ACME brand masking tape at your local hardware store” might be a good advertising campaign). Finally, take the initiative to find and confront competitors that are using your brand on their products, and document EVERYTHING including the initial letter and responses from the competitor. It may be necessary to sue obstinate competitors, but this is usually a last-straw type of action.

Whenever there is some major media event or news story (“Deflategate” or “Ice Bucket Challenge”, just to name a few), it always seems like there are enterprising people that are waiting in the wings to turn a quick profit off of the phrase. And what better way to get a nice tidy profit than to get a trademark on a phrase and secure that highly coveted monopoly giving you the power to emblaze the phrase “I Like Turtles” on every street corner in America?

The latest phrase stems from Cecil, the lion that was killed by a hunter. Just within the past week, three different applicants have applied for registration of the phrase “Cecil the Lion”. 

If a trademark can be registered for any phrase, and the means for doing it are available (ahem, Legal Zoom), most people figure, “What the heck”. They are only out $500, and a monopoly on a phrase is certainly worth that much. Much like domain name opportunists in the late 1990s, where a person could snatch up names like “sofas.com” and “travel.com” for $10 or less and sell for millions, some people figure they can get the trademark and either leverage it themselves or license it to someone else.

Here’s the thing. The economics of such a strategy may not play out because there are real costs to getting and maintaining a trademark. Not only do you have to pay to file a trademark, you have to use the mark meaningfully in connection with a business in order to get the registration and maintain it. I venture to guess that many people who file a trademark application on the spur of the moment aren’t willing to put in the time to develop a bona fide business. Running a merchandising business (which is what most businesses surrounding an opportune phrase will be based on) requires a mastery of supply chain management, logistics, and marketing. This is definitely not a case of “if you build it [the trademark], they will come.”

It also costs real money to monitor the mark, which will be necessary to keep exclusive rights in the phrase. Many people often underestimate these costs or, alternatively, the energy and man hours required if you choose to forego the traditional option of having an attorney find the infringement, review it, and send out the proper letter (never mind the costs of elevating enforcement action to the lawsuit stage, which happens more often than you might think).

So you see trademark opportunism is only loosely related to domain name opportunism. At least with domain names the maintenance costs are low and you don’t need a business backing the domain name in order to keep it. Moreover, opportune phrases are often registered at the cresting of the wave of public awareness, which is a time when people are generally aware of the trademarked phrase. When the media frenzy involving the phrase dies down (which it usually always does), the trademark owner will be left with the responsibility of holding up the phrase and making sure it is still relevant or attractive to consumers.

As for the “Cecil the Lion” trademark applications (each of which may pose conflicts to the other applied-for marks based on a likelihood of confusion), one may emerge victorious and may even go on to be a viable mark if the owners can figure out a way to monetize it. If they don’t make goods under the mark themselves, one could see such a mark being licensed to a zoo or non-profit organization that raises awareness about poaching through the sale of novelty items made in Cecil’s likeness (fortunately, you don’t need the permission of animals to make products in their likeness, like you would for people).

So next time you get the itch to file an application with the trademark office, make sure to carefully consider all of the possible costs involved in both filing the trademark, and using it. This is not a definitely not a way to get-rich-quick. 

Having a fiancé that is in love with handbags (what woman isn’t?), I often find myself in-tow through the leather goods section of fancy department stores or stand-alone stores where Coach and Michael Kors bags are put on display like, well, Tiffany diamonds. Besides looking at the price tags and shuddering feeling the American Express card in my back pocket becoming a hot coal, I often think about the lengths that these companies go to in protecting their brand. Often times in the luxury goods market where there are many competing firms, all of which offer pretty much the same basic type of goods at the same price point, there isn’t much to compete on other than the name. Yes, product design is often a point of competition as well, but I’m trying to keep this post simple by only focusing on brand names. If you are a business that is competing primarily based on brand name, you are going to be more than a little concerned about how your brand name is used in the marketplace. One of the greatest examples of how companies obsess over their brand is the franchisor/franchisee relationship in the hospitality business (whether food or hotels). The main flagship brand is often the subject of dozens of pages of restrictions on trademark usage, including everything from product/logo display to partnerships with local community groups to promote the brand.

The rationale for protecting a brand is no secret. If a brand name is the foundation of your business, losing it could mean losing millions of dollars in valuation and being forced to start over. Okay, those might be some extreme results (Thermos lost its brand to genericide but is still recognized as the market leader in insulated food/beverage containers, without which the world would be a much colder place), but the result is looming out there like a hawker of goods in a flea market and no brand owner wants to be positioned for failure in a hyper-competitive marketplace.

And that brings us to the problem that many luxury brands are finding themselves in: tracking down and combating online counterfeiters.

Luxury brands like Coach, Burberry, Tiffany & Co. and Kering (the parent of Gucci and Bottega Veneta) have been around for centuries (or half centuries or decades, in the case of Polo Ralph Lauren) and have developed a loyal following amongst connoisseurs of leather and intricate stitching designs. Each purveyor has presided over countless changes in design trends and navigated competitor after competitor that has threatened to take market share from this group of handbags or that collection of jewelry. Along the way, many luxury makers have sued other lower-echelon makers of goods or distributors of substitute products who play a little too liberally with the established brand. Still others have found themselves the butt of counterfeiters offering sub-standard goods with identical marks or just using a well-known brand as bait to fool consumers into providing a credit card number.

The common thread, of course, is brand protection. In Michael Kors’ lawsuit against Costco, M.K. argued that Costco was using the MK brand to falsely convey that a consumer could buy MK products at a discount price at Costco. Even if the bags advertised were authentic, seeing a Michael Kors bag at Costco could “cheapen” the reputation of Michael Kors brand. In the early 1980s, Polo Ralph Lauren sued the U.S. Polo Association (the “everyday” preppy clothier) for trademark infringement and won. Ralph Lauren argued that use of an image of a polo player riding a horse along with the word “Polo” infringed on Ralph Lauren’s iconic silhouette of the same image.

And so on (big-5 European fashion names sue operator of Chinese shopping emporium where counterfeits of luxury goods are sold), and so forth (Tory Burch sues New York fashion designer for copying product designs and infringement of the distinctive “Isis” cross).

But what happens when infringement migrates from a more tangible, stationary source like a flea market or well-known “counterfeit rows”, to more nimble and dynamic online counterfeiters?

Online counterfeiting has been around for awhile, but the operators of online stores have become more sophisticated over the years. Websites use to be extensions of more brick-and-mortar operations, offering a catalogue of inventory that the counterfeiter made available through their street side stores. Within the last 5 years, counterfeiters have grown their distribution networks and taken advantage of proxy domain name registrations to conceal their true identities. Indeed, many counterfeiters provide false contact information to registrars, making it impossible to find the registrant without resorting to detailed and expensive investigations. Also, once a brand owner is able to shut-down a website, this is rarely decisive in shutting down a particular counterfeiter, who may have access to multiple suppliers and distribution channels, allowing the counterfeiter to re-open a new store within a few days. Even if a company can successfully track down the true identity of a counterfeiter and is able to obtain some kind of judgment, a counterfeiter may have taken measures to split up and divide assets in foreign countries where a U.S. judgment cannot be easily enforced.

Counterfeiting expeditions are therefore a lot like whack-a-mole; a fun game to play in an arcade, but not so entertaining if you are a brand owner and the mole is a 5 ton ugly counterfeiting ring that will chew up and spit out your public image.

Instead, luxury brands are focusing on bigger companies that offer a platform for counterfeiters to sell and distribute their goods. These websites include auction websites (eBay), b2b or b2c websites (Alibaba), internet-domain name registries, and payment processors. The options in dealing with counterfeiters through these means are two-fold:

1.     A brand owner can either sue the online intermediary directly, alleging some kind of secondary liability such as contributory infringement; or

2.     A brand owner can work cooperatively with an online intermediary to create an enforcement task force

Option 2 is certainly a more amicable way to combat counterfeiting (and potentially cut off a key avenue that most counterfeiters use), but it has been hard even for the larger luxury brands to achieve. For example, the American Apparel & Footwear Association has recently made a demand on Alibaba to set up an automated system to take down listings that are suspected of being linked to counterfeit sellers. So far, Alibaba has balked, insisting that their current system of intellectual property verification and manual takedown requests are adequate.

Companies have tried pursuing option 1 in the past but have failed to make any headway. For example, In 2004 Tiffany claimed that eBay was infringing on the TIFFANY mark by allowing sellers to start auctions for fake products under the name TIFFANY and that such auctions were harming the integrity of the TIFFANY brand. eBay was able to fight off the lawsuit by claiming  that Tiffany, as the trademark owner, had the ultimate responsibility for enforcing its trademark rights and that eBay could only be expected to respond to complaints raised by Tiffany. The logic of this decision is that owners of online marketplace websites have such a large swath of “digital real estate” to patrol (it is estimated that eBay, at any given time, has 100 million listings of products) that it would be impossible for them to proactively enforce a brand owner’s trademarks against a counterfeiter. Just think about the type of knowledge that eBay would have to have about the geographical dynamics of counterfeiting and some of the other red flags of counterfeiting that a specific trademark owner may be aware of. It would be a logistical nightmare, especially if eBay accidentally shut down the page of a legitimate distributor of luxury items, albeit one that is a little aloof when it comes to following all of the branding guidelines of the trademark owner. Not to mention, the legal requirement of having the authority of the trademark owner to launch an enforcement against a particular counterfeiter.

Kering’s latest suit against Alibaba appears to be a re-hash of the old line of argument that online marketplaces and auctions that are hot beds of trademark infringement should be found liable even despite their good-faith efforts to investigate claims of infringement when the owner brings them to the provider’s attention. Under this line of reasoning, a company that provides a platform that others can use to sell infringing items (where infringing uses constitute a majority of posts on the platform) should be found liable for infringement simply by virtue of this “general knowledge” that most people are using the platform to infringe others’ rights. This is called “contributory infringement” because the online marketplace is creating the opportunity (or contributing) to third parties to counterfeit by providing the means to promote and the products.

Kering apparently believes that Alibaba is such a platform, based on the actions of certain sellers (some of whom require a minimum purchase of 500 fake Gucci watches before accepting an order). With so many other counterfeiters finding the Alibaba platform appealing to sell counterfeit goods, there may be some substance to Kering’s position. However, they are facing an uphill battle as far as convincing a court that Alibaba’s main purpose is to serve counterfeiters.

There are enforcement methods that have worked including going after domain name registries to remove thousands of domain names that are selling infringing works. Chanel had some success with this strategy a few years ago when it sued 399 websites that were using the CHANEL brand in the URL and selling counterfeit goods. Other strategies include obtaining a court order against PayPal as payment processor for counterfeit websites to shut down payments. But counterfeiters are figuring out ways to dodge even these enforcement efforts by diversifying their asserts to non-U.S. banks (which makes freezing assets harder) and using multiple domain registries to register hundreds of domain names under fake names.

The problems of online counterfeiting are not isolated to luxury brands, either. Counterfeiting websites impacts everything from software to detergent. Accordingly, it pays for brand owners to be aware of outlets that counterfeiters are using to sell knock-offs.

Whether Kering’s latest rehash of the contributory trademark infringement argument will succeed remains to be seen. While there are difficulties to finding an online marketplace liable based on the theory that counterfeiters can easily use the platform to infringe on third party rights, technology is making it harder for brand owners to succeed using traditional means of enforcing their rights. As in the copyright arena, the distribution of cheaper goods at the demand of consumers who deliberately seek out knock-offs may be allowed to continue with the “buyer beware” caveat, with the responsibility of brand owners to go through the motions of takedown notices and infringement lawsuits against counterfeiters directly.

Chalk it up to the responsibilities of being a brand owner and having a popular image.