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Whoops I did it again: I let this blog go a month without a post. Unwittingly, of course. June was an unusually busy month at the office and I just couldn’t find the time to even catch up on trademark happenings, let alone dedicate the shreds of thought necessary to writing witty pieces for this blog.

So what better way to return from a hiatus but to throw it back to a trademark that was created this day 83 years ago: the Washington Redskins.

Unless you’ve been living under a rock, you’ve heard about the struggles the Redskins have had in keeping the registration for this trademark. Most recently, these struggles culminated in a cancellation of the registration for the REDSKINS mark by the Trademark Trial and Appeals Board (TTAB), an arm of the United States Patent and Trademark Office (whose decision was upheld by a federal court). But the war isn’t over because the team will appeal the cancellation decision to the next highest court, the Federal Circuit Court of Appeals; And (given the caliber of the issues at stake in this case including free speech rights under the First Amendment), perhaps all the way to the U.S. Supreme Court.


 
 
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You’ve no doubt heard the age-old question of “what came first: the chicken, or the egg?” Well, after last week’s Trademark Trial and Appellate Board (TTAB) decision regarding the “House That Juice Built Trademark” (a satirical jab at the N.Y. Yankees’ Stadium nickname, “The House That Ruth Built”), I’m sure the guy on the losing end of that issue was asking the same question; only his question was framed in terms of: when exactly does a trademark become famous – when the trademark holder does something to make the mark noteworthy or when the trademark itself does something. It seems that the N.Y. Yankees, who won their TTAB battle with as much gusto as their 27 World Series championships, would say the fame of the mark comes first, we’ll worry about the other details later.

Quick Summary of the case: a maker of t-shirts and hats applied to register two trademarks: THE HOUSE THAT JUICE BUILT and the logo shown below. The New York Yankees, owner of the trademark THE HOUSE THAT RUTH BUILT and a logo that includes a baseball with a stars and stripes hat, asked the TTAB not to register the t-shirt maker’s trademarks because the marks were confusingly similar to the Yankees’ marks.


 
 
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Today this blog takes a little bit of a detour from discussing topics of trademark and copyright law to enter the wacky world of defamation. Yes, a world where “he stole my toupee” takes on a whole new meaning (no offense to the Donald or anybody with a certain sensitivity about their hair who may or may not have a little help up top). Enough of the puns.

So defamation; it’s not just about scandalous pictures and headlines printed in tabloid newspapers. It is becoming increasingly more about spontaneous statements made online, an environment where people tend to speak their mind more freely and where it is often difficult to retract a statement before it makes the rounds of the internet viral circuit. Straight out of the this could only happen in Florida files comes a story about a woman whose rant against an accusatory beach-goer (who mistakenly thought the woman was stealing the accuser’s beach canopy) was captured on a cellphone and posted to social media. From there it was widely circulated and made the subject of a Fox News segment. During the segment, the hosts made some not-too-flattering statements about the woman, including that she was a thief. The problem is that the woman was not actually stealing anything and the whole cellphone video (conveniently captured much later in the altercation) made things seem slightly different than they actually were. 


 
 
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Last week, the Federal Circuit ruled partly against Apple in its patent and trademark infringement case against Samsung, concluding that while Apple’s design patents were infringed by Samsung, the trade dress and trademark rights that Apple asserted were not infringed because the underlying subject matter was not trademarkable. Essentially, the elements of the iPhone design that Apple argued were trademarkable (the rounded edges of the phone, the home screen design with the grid-like pattern of icons, and the flat screen surrounded by a beveled frame) were found to be influenced by functional considerations, including a concern that the features made the phone simpler for a consumer to use. In other words, the design of the phone was driven by intuition, an idea that was apparently injected into the design process decades ago when Steve Jobs first founded the company. The question is whether a company’s legacy for simple, intuitive design can be implemented into the trade dress and product design in such a way that it becomes a source identifier. Furthermore, if those types of design characteristics are source-identifiers, is there any way that a company could develop the characteristics such that they are not functional?

To really answer this question, it helps to understand this maxim: the essence of a trademark is source identification. Always has been, and always will be. Even in the face of technology, which always seems to be pushing the envelope of how a company can truly engage a consumer, trademarks must maintain their source identifying capability. The beauty of the statutory definition of a trademark is that there are no restrictions on the form of the trademark, just so long as it serves the purpose of source-identification (and usually nothing more). For example, there is no statute or public policy that requires trademarks to cater exclusively to one of the five senses; any type of identifier that can be discerned by consumers is fair game for a trademark. This gives companies a lot of freedom in defining their brand. Given enough creativity and vision, a company could be quite unique in their branding endeavors. 


 
 
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Picture this. You are the owner of an up-and-coming marketing agency. You recently wrapped up a design and identity project for one of the city’s fastest growing tech start-ups, DigiBerry. The company makes digital pastries that people can share across social networks as part of messages or shared content (don’t ask me why it’s cool, it just is!). As part of the project, you created a series of icons, fanciful pastry designs, a website, print collateral, and a series of short animated videos that users of DigiBerry’s app can send to acquaintances within their social network. DigiBerry LOVED it. The local design scene LOVED it. In fact, they asked you if they could feature the design in next month’s Marketing Greatness magazine. Flattered, you accept the invitation and submit copies of the logos you created for DigiBerry and images from some of the designs. Feeling like you’re on cloud 9, you decide to feature DigiBerry on your website and in a “featured work” brochure that you are preparing for the annual national marketing conference in New York.

All is going great. Then on the eve of the big story release in Marketing Greatness and your appearance at the conference, you get that dreaded white legal-sized envelope that most business owners have nightmares about: the cease and desist letter from the law firm of Ware Biggar Zhan Yu. Client has hired the firm and is accusing you of trademark infringement, unfair competition, and copyright infringement. They demand that you remove all logos from your website and destroy any materials that include client’s logos, name, or the designs you prepared for them. Having already prepared the materials, what are you to do?


 
 
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Did a design philosophy penned 30 years ago in an internal policy directive sink Apple's chances to assert certain package and product designs as protectable trademarks?

Hot off the presses from today is the opinion from the U.S Court of Appeals for the Federal Circuit, a court that hears a lot of appeals from lower courts where the case involves patents, is the latest opinion in the long-running battle between Apple and Samsung over Samsung’s copying of Apple’s iPhone design. At least one portion of Apple’s asserted intellectual property from its smartphones was deemed unprotectable because the I.P. in question is functional. It seems the apple has fallen from the tree straight onto what is sure to be a frustrated Tim Cook. A little synopsis of the case may help get to the core of the matter a little more quickly: In April 2011, Apple sued Samsung for design patent and trademark infringement, alleging that Samsung’s Android phones and tablets copied several elements of Apple’s phone design and user interface, including the distinctive grid-structure design from Apple’s graphical user interface (or GUI, for the acronym buffs). In August 2012, a jury found that numerous Samsung smartphones infringed Apple’s patents and diluted Apple’s trademark designs for its GUIs, awarding the company $1 billion in damages. This damage award was modified downward a few times to $290 million. In the lower court case, the jury found that Apple’s GUI was a valid trademark, protectable as trade dress. Samsung appealed both that finding and the $290 million damages award last year.

Anybody who has been reading this blog for a while knows about some of the issues that come along with trying to protect trade dress but in case you missed it, here is a little primer on how trade dress (or product packaging, if looking for a less-legal word) is protected as a trademark. Just a quick summary for those who are reading this blog on a few minutes’ allowance: trade dress/product packaging, as a distinctive type of design that is capable of pointing to the company that produced it, is protected as a trademark. This protection exists to promote competition; therefore, it will not be extended to mere designs that are required by a particular product configuration or other functional considerations because to limit other companies from being able to produce an alternative design would just be anti-competitive. Trademark protection is not generally dolled out like candy because the potential term of protection is infinite, making it possible for a company to get a monopoly on something that may not be specific to the company.


 
 
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There was once a time when you could stroll through an arcade and see a line of pinball machines, usually being played by very irate people gyrating the machine back and forth showing it “who’s boss”. Always a simple game with a simple user interface (what arcade game today has only two buttons and involves actual moving parts, not virtual humanoids or dynamically generated special effects?) today, most pinball machines have been replaced by games featuring the latter characteristics. It’s all for the good of the industry I hear, or at least that’s the idea I get when I watch videos like these where kids react to a GameBoy (summary: a lot of kids saw it as the equivalent of an old record player). After all, pinball machines still use… Coins! Oh the humanity. Besides presenting “old” types of gaming interfaces, pinball machines have fallen out of favor in the last few decades because they are expensive to repair and some of the parts are hard to find.

Despite the headwinds, there are still many pinball enthusiasts who are out there trying to save the game, much like Skee-Ball devotees are trying to save that game by instituting tournaments and generating buzz by deeming it a sport “almost recognized in the 2012 olympics”. These coin-toting strongmen, with a flare for slapping giant wooden boxes and shaking them harder than a 7.0 Richter Scale earthquake refuse to let go of their insatiable appetite for blinking lights, multiplier jackpots, and the ever-elusive quest to make the top score board.  

If your goal is to keep the game relevant (and thereby ensure that there are enough new games and suppliers/servicers to help keep pinball machines ticking), how do you convince a younger and increasingly-tech savvy generation that pinball can be fun? You do what any enterprising tycoon does: you turn to synergies; brand and copyright synergies, to be exact.


 
 
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.


 
 
Picture"Call me, maybe?" (image credit http://popdust.com/2012/06/19/carly-rae-jepsen-call-me-maybe-lyrics-analysis/)
By now its practically a universal symbol of, well, I’m not quite sure. Only that I have seen it in numerous avatars and it has generally gone “viral”. Just in time for Easter somebody has actually made one of these fanciful shark figures out of peeps. I’m talking of course about Katy Perry’s sharks from her halftime show during the Super Bowl. Specifically, the left shark, who seems to have made up his own choreography. What is it about these sharks that seems to have tickled so many people pink?

I’m really not able to say, just like I can’t say what caused the “it’s peanut butter jelly time” dancing banana to take off. I guess people on the internet really have a penchant for taking short clips of comical figures, pairing them with a short pithy statement, and using it to charm fellow internet users with a laugh, in an endless pursuit of a million Facebook likes. Or maybe it stems from Twitter’s 140 character limit rule; it really forces us to make the message small and compact. Just as Josh Billings said: “There’s great power in words, if you don’t hitch too many of them together.” 

Take the lyrics from this catchy song from Carly Rae Jepsen:


“Hey I just met you
And this is crazy
But here’s my number
So call me maybe”

They should sound fairly familiar, considering they are from a song that placed high on the Billboard charts (this means it was widely played!) and its election as Song of the Year in 2012 by MTV (this means… actually, I have no idea). Also, if you have kids in the age range of 10-18 or even early 20’s, if you happen to catch a little of their music, you’ve probably heard this song before. Although these lyrics represent just a snippet of the song, they are probably the most highly quoted.


 
 
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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.