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 if everyone else hasn’t already had enough of winter, I thought I would throw a little Christmas cheer into the mix just to remind everyone that the holiday shopping season (which seems to move up a few weeks each year), is only like 6 months away. We’re halfway there, which is great if you are a retail store or manufacturer of electronic goodies because that means you have a little bit more time to fine-tune your next big release and marketing campaign in time to cash in on the big rush.

What boggles my mind is that there are some companies that actually dedicate their entire existence to Christmas and selling all the related wares like tinsel, strings of lights, ornaments, and (of course) Christmas trees. I’m not knocking these stores at all; if you can make a business successful (like this company in Michigan has done), more power to you. Christmas is a time of happiness and cheer, a time for giving. So how did a nutcracker, perhaps one of the quintessential décor items of Christmas, find itself in the middle of a fight? No, not the fight between Clara and Fritz in The Nutcracker play, but a knock-down, drag-out, spare no expense battle over copyright?

Yes, you heard me right: copyright. Here’s a little backstory to add some Christmas sparkle. Old World Christmas (OWC) is a year-round Christmas store that sells, as its name not-so-subtly suggests, Christmas décor and related products through showrooms in Atlanta, Law Vegas, and Dallas. A while back, OWC contracted with this company in Georgia to design and manufacture a nutcracker. Besides looking very nutcracker-ish, with a tall body mounted on a pedestal, large hat/helmet, and white hair protruding from under the hat and under the mouth, OWC’s design incorporated skis and poles. The nutcracker, eponymously named “Alpine Skier,” was also registered with the U.S. Copyright Office. That was in 1998. The contract between OWC and the supplier eventually lapsed. At some point, according to OWC,  this supplier began making a nutcracker with a substantially similar design for Gump’s Corp., a novelty-company in San Francisco, also a purveyor of fine Christmas décor (although not exclusively Christmas). OWC filed suit against both the supplier and Gump’s alleging copyright infringement, seeking damages and injunctive relief.

So…. I decided to elaborate a little more on the previous post on store designs after a weekend spent at the mall with my significant other (yes I found myself, again, in Victoria Secret where many a man has met supreme disappointment when he attempts to pass the time or even find a place to sit). Actually, I was planning on writing another post on store design because the topic is just that complex.

In the previous post I talked a lot about how a store design could be protectable. I even discussed some of the hurdles that a company could face in its bid to obtain protection for store designs. The main hurdle is the difficulty of demonstrating that store design is inherently distinctive or that it has acquired secondary meaning. And the difficulty inherent in demonstrating inherent distinctive is that store designs aren't generally that unique or different from store-to-store. Most store layouts and designs incorporate many "essential" elements like shelving, lighting arrangements, tables, walls and glass. Where a store presents a design and layout that can be specifically defined and linked to a particular source because it has a different arrangement or distinctive, it can acquire distinctiveness over time. Distinctiveness is acquired through continuous use of the same design, active promotion of the design, widespread consumer recognition of the design as associated with a particular source.

But secondary meaning is hard to prove and usually requires providing some pretty compelling evidence (consumer surveys, extensive media attention, significant foot traffic). Another difficulty that even Apple faced: proving that variations in a store's design across different locales did not modify the character of the mark. Almost by necessity, Apple store designs vary by location. This is perfectly understandable, especially when you consider the multitude of factors influencing the design and layout of a store front. Consider the two images below (both images courtesy of apple.com)

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.

If you are a parent, you have probably heard of a game called Minecraft. It’s this game that allows players to carve underground and above-ground worlds out of textured (and extremely pixelated) cubes, explore, gather resources, and engage in combat. I haven’t really played it and don’t see the attraction (the pixilation just hurts my eyes, or maybe it’s because I am playing it on an iPhone and I can never really figure out what is going on?) The game is extremely popular and has won many awards that are badges of honor in the gaming community. And you know you’ve hit it big as a game developer when merchandise bearing your name hits the store.

Another thing that is apparently big in the gaming world are conventions. I am not even remotely joking here. Each year, Minecraft has a big gala event where fellow gamers congregate to hold discussions about gameplay and (of course) challenge each other in one massive community battle. Because this is a once a year event and because Mincraft is just the coolest of cool games, tickets sell out pretty quickly. That means many disappointed gamers are left without a chair once the music stops.

‘But not so fast’, says one enterprising fan. ‘If Minecraft can generate this kind of buzz, why can’t I hold my own convention? I’ll simply rent some space, order balloons, put up some projector screens and a bunch of computers, and invite everyone to come.  I’ll charge $50 a day (why not, it’s Minecraft and people LOVE IT). Kids are happy. Parents are happy. Everyone wins.’

Those who watched cartoons (or who grew up in the 1990’s, like me - yes, I am really that young) will remember T.V. spots from Saturday morning cartoons for McDonald’s. The spots usually featured some extraordinarily absurd mismatch between kids and reality, such as having recess for every period during school and eating McDonald’s at every meal (I’m sure somebody named Michelle Obama would have something to say about that). The spots always ended with a catchy little jingle: “McWORLD!!! Hey, it could happen!”

So imagine the nostalgia I felt when I saw that Taco Bell, which has announced a totally unique breakfast menu consisting of items like a waffle taco, was bringing in Ronald McDonald to promote its new breakfast menu. Not the Ronald McDonald, the one in the bright yellow suit, goofy red shoes, and the one that gives those with clown-phobia’s the willies. But a person whose name is Ronald McDonald (of which there are, apparently, many). The idea seems clever as a type of advertisement: “Come to Taco Bell for breakfast. Even Ronald McDonald likes Taco Bell for breakfast over McDonald’s”.

If you are looking for a good specimen of how a company should act to protect important corporate intangible assets, Apple is probably one of the best candidates. Despite the flack it gets from some for using marks that, at often times have faced conflicts from other owners (iPhone and iWatch are the most prominent examples), the company does a great job of controlling the end-user experience and informing the market of its brands. As a brand owner “inform” is what you want your mark to do and “control” is what you want over a mark and the way it is used by others. For products that the public may be unfamiliar with because the product lacks another close analogue in the marketplace (think really unique types of devices like Apple’s iPhone, when it first hit the marketplace), it can be more important to exercise strict control over the brand to ensure that the brand does not become the name of the product.

The same problem doesn’t exist for products or technologies that have been around for a while and which are common across multiple products. In these cases, many companies might produce the same product or implement the same technology, with various tweaks that make the product the company’s own. If a company makes a tweak to a commonly available product or technology, it wants to make sure that its contribution is not manipulated. Part of this concern goes to the company’s desire to protect proprietary components that are part of the product itself, while the other part of the concern is driven by the company’s desire to protect the image of the company itself.

I will admit that I have never gotten on the whole Pinterest trip, despite being surrounded by family and friends who love the site. Not that I have anything against the platform; I just don’t understand how it works and have never put the time in to learning. I have so many other social media platforms to keep up with! The basics make enough sense to me that I can summarize them as follows: Pinterest is a type of software platform that allows users to share content in the form of visual bookmarks that others with like interests can browse in order to become more informed about (or be entertained by) a particular subject. Users of the site place items on their digital posting boards. The posting medium is given the name “pin”, a cute reference to the fact that items are digitally pinned to a particular page.

I may not use the site, but one thing about the site (or is it an application? platform?) that did capture my interest was Pinterest’s recent move to protect the “Pin” trademark. Apparently it’s something that the website wants to be known for. Pinterests’ platform is sleek and the concept is cool. It is the perfect play to a consuming audience that thrives on information and the ability to share it. So maybe it was only a matter of time until other market entrants attempted to get a piece of the pie.

Enter Pintrips in 2011 with a similar concept to that of Pinterest: through a website, users can collect, compare, and share information about a particular interest by using a “pin”. Yes, that’s right. Pretty much exactly what Pinterest allows. Pinterest even had their own “pin” button.

By now pretty much everybody has heard about the “Dumb Starbucks” episode, which pitted a Comedy Central personality against that oh-so-well-known coffee shop with locations on every street corner (if not, here is a primer). Was it a publicity stunt masquerading as satire, or was it a legitimate business engaging in an operational style that can only be characterized as avant garde? The conflict may be a short month away from reaching another boiling point (even hotter than the steaming milk that those lattes have). You see, Nathan Wilder, Dumb Starbuck’s brainchild (or was it Comedy Central?) is planning on opening another location in Brooklyn soon.

In its first installment, Dumb Starbucks was shut down within a few short days of its initial opening for… health permit violations, of all things. So will the Brooklyn store manage to outlast the short lifespan of the original? We’ll see, although it seems like New York City would be a place with health standards for food outlets that are as strict as those in California. I’m pretty sure the Dumb Starbucks brand will be on full display, at least if Mr. Wilder hopes to acquire the same attention that he acquired through his first store and make the same point he set out to make originally.

I don’t think I’m the only one who has dreams that someday something they make or do will be recognized and seen by millions of people around the world. I’m not talking about a Picasso painting or Beach Boys song here. Just some recognition. You know, like Rodney Dangerfield lamented about: “No respect, no respect whatsoever.”

What happens when you get too much respect? The kind of respect that takes the fruits of your creativity (or labor, whatever you want to call it) and runs off, leaving a trail of color and broken trust in its place? Well, if you are a major company and your possession is the product of some underground photographer you may breeze through the finish line faster than Apollo Ohno (there, I got my Winter Olympics reference in). Or your luck may run out and you face a public battle with a photographer who is tired of being exploited by the man.