Let me just provide this disclaimer up front: this post is not going to be a shameless self-plug or soap box speech about how lawyers are the greatest thing since sliced bread. Its not going to be entirely like that, I should say.

A few weeks ago, the New Jersey Transportation authority nearly found themselves in a pickle when they noticed that trademarks for important insignia were abandoned for good. Apparently, a trademark attorney that had been obtained by the transportation authority forgot to renew the trademark registrations before the deadline, requiring the transit authority to file new trademark applications for 7 of the transit authority’s marks. The cause for the lapse? It looks like a former attorney for the transit authority had a brain freeze and told the authority that its trademark registrations were actually good through 2018. The problem is that trademarks are only good for 10 years (with action required by the trademark at both the 5- and 10-year anniversaries of the registration), and the trademarks at issue were registered (mostly) around June 2002. Doing the math 2002 + 10 = 2012. So renewal of the marks was required in 2012, not 2018. Perhaps the lawyer for NJ Transit was confused by the effect of the 5-year renewal (which was filed timely in 2008) and believed that this filing extended the deadline 10 years. Who knows.  

It was a stroke of culinary genius (some might say) to combine doughnuts and croissants together into one pastry. I mean think about it: the sweet, doughy delicacy of a donut combined with the light, airy, flaky goodness of a croissant. It was a match made in heaven. The brand used for the combination? Why, none other than a combination of the best portions of the words doughnut and croissant. Take a "cro" from here, mix with a little "nut" from there, and voila: Cronut! The creation (the product of pastry chef Dominique Ansel) was so popular that people would line up for blocks waiting to get there "Cronut" from a little cubby-hole in New York City (don't all wonderful things have humble beginnings after all?)

Now I admit, slicing and dicing of words and phrases and creating concoctions may not yield as delicious of a result as doing the same thing in the kitchen with diverse ingredients. I mean, in trademark law there is this overarching concern with creating trademarks in descriptive words and phrases. A word used as a mark cannot describe a feature or aspect of the product or service that the mark will be used with. This may be why the mastermind of this culinary creation faced such a backlash when he attempted to register the trademark "Cronut". Criticism ranged from the charge that Dominique Ansel was unfairly depriving others of the opportunity to use such a convenient word to a claim that Ansel was simply trying to take credit for inventing a particular pastry.

The famous argument between Coke and Pepsi as to which beverage is more appealing to consumers has raged on for at least 100 years. The good-natured competition between both outfits as to whose bubbly, caffeinated libation is the supremo has touched pretty much every point of product feature imaginable. The latest is the battle over bottle shapes.

Coca-Cola’s bell-shaped contoured bottle is pretty well recognized by many consumers in the US and, arguably, internationally. It is the subject of many trademark registrations in the US and other countries. “Trademarks on product packages or shapes?” you might ask? Yes, actually; registration of a package design is an invaluable tool that makers of consumer goods can (and should) use as part of their trademark protection strategy.

New Zealand is a country where Coca-Cola heavily markets (and has also released some pretty unique flavors like Raspberry Coke). Pepsi also sells many soft drinks in New Zealand through a subsidiary, Frucor Beverages. You probably wouldn’t be surprised to hear that Pepsi and Coke are just as ruthless in their competitive efforts in NZ as they are in the US. Pepsi’s choice to adopt a contoured bottle design that is similar to Coke’s ever popular bell-shaped bottle is a pretty good indication of the level of competition. Okay, maybe similar was too strong of a word to use. After all, the court only found one real commonality between Coke’s bell bottle and Pepsi’s design and Pepsi did place its logos on the side of the bottle, perhaps to dispel any notion that it was obviously copying Coke’s bottle design.

Geography. It serves a key purpose in our lives. We use it as a point of reference to find other places. We use it in everyday conversations to describe experiences or tell rich stories. Pretty much everybody takes pride in their hometown. Finally, we also use geography to link people or things together (Napa Valley = Wine and Philly = Cheesesteaks). Some companies realize the value in including geographic designators in their names including Cisco (named for the city where the company was founded), California Pizza Kitchen (named for a chain of informal restaurants founded in California), and Motown Records (duh). 

A geographic name can make a great trademark. Geographical names serve the same functions as trademarks including identifying sources, guaranteeing a particular quality, and triggering particular expectations or thoughts within a consumer (a feature which serves as a valuable business interest). However, a geographic term that is generic is not protectable. No surprises here, as any word that is generic cannot designate a particular source of goods or services because consumers see the word as a type of categorical phrase, such as “cheese steak” for a type of sandwich. Neither can a geographical name serve as a trademark if the name is descriptive of a particular location known generally to the public and the general public would believe that the goods or services offered by a company originate from the location. Again, no surprises here either as the same rules that apply to general words apply equally to geographic designations. After all, if a word simply describes a location that is known generally to be associated with goods, providing one company with a monopoly on one geographic descriptor is unfair and inhibits competition.

Things are starting to get feisty in the epic battle that pits, well, boys against girls. Yes, the age-old conflict immortalized by such debates as Hot Wheels vs. Barbie Dolls has found a new manifestation surrounding a song that is ostensibly about gender roles. It’s not exactly the kind of fight that you might think of, however.

By now this story has pretty much made the social media rounds and has been extensively commented on by many of my esteemed colleagues (see here for an outstanding summary of the dispute and interesting commentary on merits of the suit, and here for a counter-viewpoint regarding fair use). For that reason, I won’t elaborate too much on the background for fear of boring readers (which I hope number more than a few) into leaving this site entirely. At the risk of being reiterative, here is the basic story. 

Trademarks on government insignia. The third and final installment where we discuss the all-important topic of whether government bodies can prevent citizens from using official government insignia on t-shirts and other novelty items. In the last post I left off with the question of whether the government should be allowed to prevent the use of official insignia by a person in the form of a parody. After all, if the government has an interest in preventing the general public from becoming confused as to the affiliation between a parodist and the government agency that this person is parodying, shouldn’t the government be allowed to bring down the hammer? 

Deeper questions on the extent of overlap between use of government symbols vs. use of commercial symbols are more easily answered by remembering that the dominant goal of trademark law is preventing consumer confusion as to source. In the private sector, if confusion about a trademark is likely to result in harm to the consumer from a counterfeit product, stopping others from using the trademark is hugely important. But in the private sector, a trademark owner does not have the unmitigated right to prevent all uses of their trademarks by others, particularly where no confusion is likely and there are greater interests at stake. These greater interests often originate in the interest of competition. Another greater interest is also found in freedom of expression. Trademark law knows these greater interests collectively as the “fair use” defense.

I hope you have all purchased your t-shirts with the government insignia of your choice adorning the chest portion. (I have my own shirt on order, but I won’t say what parodied emblem I ordered because this blog isn’t about that sort of thing, political discussions and the like). This blog is about far more interesting (but no less controversial) stuff like whether the government has the power to restrict certain expression that involves the use by one party of a third-party’s trademark. The owner of a Zazzle.com merchant webpage, a website where most of the insignia-bearing items are sold, has sued the Justice Department over a take-down notices that Justice sent to McCall. The claim is that Justice’s actions violate First Amendment rights because the attempt to stop the use of the DHS and NSA official seals is abridging free speech rights, namely the right to parody government logos (yes Virginia, parody is a form of criticism). One house-keeping, tone-setting note: this blog post is going to introduce the idea of using trademarks in parodies and why this particular kind of use can be protected as free expression. 

As you may remember from the previous post, we left off with the rumination on whether the government could restrict all uses of government insignia, whether for commercial or political purposes. Some agencies appear to allow some use of their insignia to be used on t-shirts and other items. NASA is one notable example, and this fact is evidenced by all the NASA-related insignia you find on websites and in stores like Target. Other governmental bodies (like the State of Nebraska) seem to limit most commercial and political uses of the state seal or any deceptively similar images. The rationale behind such restrictions (at least from the standpoint of the government) is that commercial use of the insignia is likely to confuse consumers in the marketplace as to the affiliation between a governmental body and the maker of the t-shirts. 

Maybe it’s all the news hitting the wires but I seem to be in the mood to blog about trademark issues involving the government to some degree. The last post was about individuals’ attempts to obtain trademarks on words that were motivated by some act of the government. Today’s topic is all about the reverse state of affairs: governments obtaining trademarks for government purposes.

Corporations are not the only zealous defenders of intellectual property rights. Governments diligently protect their trademarks too! Wait a second, you might say. Governments get their own trademarks? I thought governments were in the business of granting trademarks to other people, not acquiring their own. After all, what interest does the government have in designating themselves as the source of particular legislation, regulation, and policies? Well, there might be claims that the government can make regarding affiliation or sponsorship between an official government agency and a person that is using an official government seal on a t-shirt or the like. More on that later. First, lets look at if anyone can register official-looking trademarks.

This thing called “Obamacare”, you might have heard about it. Before you leave the page thinking this just a political rant about the merits or absurdities of the healthcare law known as Obamacare, lend me your ears. The trademark angle is slightly more colorful than a more typical blog posting on tax and constitutional controversies (trademark law is so interesting.... and fun. I like to think it is important too, even if it isn’t as heady as constitutional law).

There have been a flurry of trademark applications that include the word “Obamacare” for just about everything. That is not a euphemism. Literally, almost every type of good and service you could imagine. Everything from television talk shows to undergarments.  This is just another example of how trademarks mirror pop culture as people hope to capitalize on a coined phrase or trending keyword and become as famous as that guy who put the smiley face on a t-shirt all those years ago. But many times, there attempts fail for one of a few reasons, some of which I have discussed in previous posts). When it comes to phrases that incorporate the names of famous people, the main reason that the trademark application is refused is because inclusion of the famous person’s name in the trademark implies false association or endorsement. 

It is often said that imitation is the sincerest form of flattery. That might be true in many aspects of our life, but it isn’t always true for trademark owners, least if the person doing the flattering is ripping you off somehow. But how close does something have to be to truly be deemed an imitation? In the arena of trademark law and unfair competition, you might sometimes be surprised about how close you can actually get to using a trademark that is loosely based on another trademark. To see what exactly I’m talking about, lets grab the proverbial cart and go on a little shopping spree at Trader Joe’s.

Some people (except those on the West Coast, where Trader Joe’s has about 200 stores) may not know what Trader Joe’s is. Trader Joe’s is a specialty grocery store. They sell a lot of the same things that big-box grocery stores do, but they have specialty foods and a lot of the stuff they sell carries the “Trader Joe” name specifically. It is what you might call a boutique grocery store because most locations are small and they cater to customers with specific tastes. In recent years, the store has garnered somewhat of a cult following given the unique products that the store offers including blueberry cultured coconut milk (sounds kind of weird) and spicy seaweed ramen (sounds really weird). My personal favorite is the chipotle seasoned almonds, but I digress.