Author Archives: mark

Lady Gaga? Never Heard of Her

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On September 26, 2011, Stefani Germanotta, better known as Lady Gaga, and one of her companies, Ate My Heart Inc. sued Excite Worldwide LLC a company which is trying to trademark LADY GAGA and LADY GAGA LG.

The end result of this lawsuit is not in doubt: Lady Gaga will win, Excite Worldwide will lose.   Interestingly, this case was filed in state court in New York, rather than in federal court.  The complaint has not yet been scanned by the court and made available for public viewing, so we can only speculate as to the claims contained in the lawsuit.  Most likely, however, Lady Gaga did not file in federal court because Excite Worldwide is not yet using the applied for Lady Gaga trademarks in commerce — meaning that Lady Gaga does not yet have a federal trademark claim against Excite.  The state court claims are most likely a variety of torts which, while more difficult to prove, will not alter the final result of this litigation.

This “dispute” over claims to the Lady Gaga brand began in May 2010 when Excite Worldwide filed its two trademark applications.  The first application for Lady Gaga was filed May 7, 2010, the same day that HBO aired the special events concert: Lady Gaga Presents the Monster Ball Tour: At Madison Square Garden.  The second application for Lady Gaga LG was filed on May 10, 2010, less than two weeks before Lady Gaga’s heavily promoted Saturday Night Live Appearance on May 21, 2010.

After reviewing Excite Worldwide’s trademark applications, the examining attorneys at the PTO rejected them.  In one Office Action dated August 30, 2010, the PTO put the kibosh on the applications based on a number of grounds.  These included a Section 2(d) refusal for a likelihood of confusion with Lady Gaga’s existing trademark registrations.

The PTO also requested that Excite Worldwide state whether the name Lady Gaga identified a particular living individual (hint, hint).

Applicant must clarify whether the name or signature in the applied-for mark identifies a particular living individual. Written consent is required for registration of a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a specific living individual. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §§1206 et seq.

(emphasis added).  In response, Excite Worldwide make the bold argument that Lady Gaga does not identify a particular living individual.  What? Apparently Excite Worldwide missed the unbelievable amount of media coverage and attention Lady Gaga has received.  If Saturday Night Live is too late for you, maybe you saw her on Good Morning America or The View or maybe you caught her in prime time on So You Think You Can Dance.  For crying out loud my late grandfather even knew who she was (but then again, he like anything Italian).

Excite Worldwide goes on to argue that Lady Gaga fans are very tech savvy individuals who often frequent boutiques and will in no way be fooled into thinking Lady Gaga endorses Applicant’s identically named brand.  Applicant points out that it plans to sell its products under its unique URL LadyGagaCosmetics.com which will in no way of confuse Lady Gaga’s sophisticated fan base.  (While I did not find these arguments persuasive, I do give credit to Excite Worldwide’s attorney for at least trying to argue the impossible.)

In response to these arguments, the Trademark Office issued a second office action on April 1, 2011 (maybe this is an elaborate April Fool’s ruse?).  The PTO adds a new grounds for rejection, namely an intentional false association between Excite Worldwide and Lady Gaga.

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with LADY GAGA. Although LADY GAGA is not connected with the goods provided by applicant under the applied-for mark, LADY GAGA is so famous that consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §§1203.03, 1203.03(e).

It will be interesting to see if Excite Worldwide can come up with some additional arguments to make in this case or if they will fold.  Who knows.  As the old adage goes, luck and intuition play the cards.

Court Rules Louboutin’s Red Soles are Fashion, not a Trademark

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A federal court in New York has ruled that designer Christian Louboutin (“Louboutin”) does not have the exclusive right to make women’s designer shoes with red soles.

In 2008 Louboutin registered a trademark (Reg. No. 3,361,597) for women’s shoes with red soles, claiming the exclusive right to make shoes with red soles for “women’s high fashion designer footwear.”  The mark as filed with the United States Trademark office appears below.

Louboutin’s red sole shoes are popular with the rich and famous as they are ridiculously expensive.  The red soles apparently let people know at a distance that you spent a fortune on a pair of shoes.  The red soles have even inspired a 2009 song by Jennifer Lopez called “Louboutins” with the verse “I’m throwing on my Louboutins” repeated thirty-five times during the song along with the lines “Watch these red bottoms/ and the back of my jeans; Watch me go, by baby.”

In late 2010 and early 2011 Yves Saint Laurent (“YSL”) another high end maker of women’s shoes released four models of all red shoes with red soles.  Louboutin sued YSL on the theory that no one should be able to use the color red on the sole of the shoe even if the entire shoe is red.

Louboutin thereafter filed a motion for a preliminary injunction to halt the sale of YSL’s all red shoes.  Louboutin’s motion spends a lot of time educating the court as to the popularity of its shoes, the fame of its red soles, and the popularity of the shoes among real and fictional celebrities including Oprah and Barbie.

Without a doubt Louboutin has popularized the red sole shoe look with enormous media exposure in recent years.  The question for the court, however, is whether a red sole on a shoe serves a fashion function or is a legitimate trademark. Louboutin argues that because those familiar with luxury footwear now equate red soled women’s shoes with Louboutin that association amounts to a trademark.

In it’s opposition to the motion, YSL argues that shoe sole color is part of the fashion of the shoe, not a trademark.

Louboutin asks this Court to become the first ever to recognize trademark protection for a purported mark consisting solely of a color on a fashion item without even trying to explain how it avoids the aesthetic functionality bar. The Supreme Court has held that, where “color plays an important role (unrelated to source identification) in making a product more desirable,” the functionality doctrine bars trademark protection. That is inherently the case in the fashion industry, where aesthetic use of color is literally the function of the products.” . . . Allowing Louboutin to claim a monopoly on the use of red on a part of a shoe (and, by extension, on the right to make all-red shoes) would have an unprecedented, anti-competitive effect in limiting the design options available to all other designers.

YSL also argues that red soled shoes are not exclusive to Louboutin.

Louboutin ignores that YSL has been selling shoes with red outsoles for many years, in amounts greater than in the Cruise 2011 season, and that such prior sales have not resulted in a single instance of consumer confusion or other harm. Louboutin also ignores that dozens of other fashion designers also make shoes with red outsoles and have done so for years. These years of peaceful co-existence belie any argument that Louboutin will suffer irreparable harm if YSL continues to sell shoes with red outsoles, as it has done for years.

YSL goes on to argue that because both its shoes and Loubutin’s shoes are ridiculously expensive and purchased in high end stores by extremely fashion conscious consumers, no one is going to purchase a YSL shoe on the mistaken belief that it is a Louboutin.

Louboutin amazingly argues in its reply brief that color is not aesthetically functional in the case of shoe soles.  It further states that YSL should just pick a different shade of red if it wants to make all red shoes. Louboutin owns its particular shade of red for a shoe sole and no else can use it.

Louboutin’s trademark covers a specific red for outsoles, not the broad spectrum of red hues. Many shades of red and other colors are available for use by any party who wants to produce a shoe, “monochrome” or otherwise, without infringing the Red Sole Mark. Even Louboutin’s red color is available for competitors on other, more visible, parts of the shoe.

Louboutin also argued that if an injunction is not issued the floodgates will open to competitors.  Presumably this will result in the non-rich and famous being able to purchase shoes with red soles.  Once this style is available to the common unkempt masses,  Louboutin’s signature style will be forever tarnished.

The court, however, was not persuaded and ruled that in the fashion industry, color serves ornamental and aesthetic functions which cannot be trademarked.

Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public
recognition in the market to have acquired secondary meaning. The Court therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL infringed the Red Sole Mark to warrant the relief that it seeks.

An appeal is currently pending before the United States Court of Appeals for the Second Circuit.

Sturgis Motorcycle Rally Claims Exclusive Rights to City Name

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Since at least 1938, the Sturgis Motorcycle Rally (“Rally”) has been held each year in and around the City of Sturgis, South Dakota and has attracted hundreds of thousands of visitors to the area.  This year, a newly formed organization, Sturgis Motorcycle Rally, Inc. is claiming exclusive trademark rights to the city’s name and seeks to obtain a royalty on products which bear the name “Sturgis.”

The trademark dispute concerning the “brand” Sturgis goes back to January 30, 2001 when the Sturgis Area Chamber of Commerce filed a trademark application for STURGIS (“Sturgis Mark”).  The Sturgis Mark was filed for a huge range of goods and services in fifteen (15) classes including key rings, pocket knives, firearms, stickers, shot glasses, flags, T-shirts, belt buckles, gaming chips, water, liquor, and beer.

Initially the Sturgis Mark was rejected for being primarily geographically descriptive– that is, simply referring to the city of Sturgis, South Dakota.  This initial refusal was overcome by Chamber of Commerce by claiming five years of substantially exclusive use of the STURGIS Mark.   (Which, considering all of the memorabilia sold at the Rally by so many different vendors seems quite a stretch.)

Not surprisingly, the Sturgis Mark was opposed by two large vendors of Sturgis merchandise, Good Sports, Inc. (“Good Sports”) and Black Hills Harley-Davidson (“Black Hills H-D”).  Late in the opposition proceedings, however, the Chamber of Commerce, Good Sports, and Black Hills H-D decided to let bygones be bygones and join forces.  The three entities thereafter formed a “non-profit” joint venture, Sturgis Motorcycle Rally, Inc. (“SMRI”), and assigned the trademark rights to the Sturgis Mark to SMRI.  With no opposition pending, the Sturgis Mark proceeded to issue on February 11, 2011.

SMRI thereafter sought to enforce its trademark “rights” with threats and litigation, including a lawsuit filed June 22, 2011 against Sturgis vendors Rushmore Photo and Gifts, Inc. (“Rushmore”) and JRE, Inc. (“JRE”).  Rushmore and JRE responded to the lawsuit by filing counterclaims for non-infringement and invalidity of the Sturgis Marks as well as for fraud.

SMRI pressed its case on July 27, 2011 by filing a motion to dismiss defendant’s counterclaims based on a claim that defendant’s counterclaims contradict themselves and the failure of the defendants to make specific fraud allegations against SMRI.

Rushmore and JRE thereafter filed a surprise motion for a temporary restraining order and preliminary injunction on August 3, 2011 to prevent SMRI from carrying out threats of confiscating vendor merchandise when the Rally begins Monday August 8, 2011.  Rushmore’s motion argues that Sturgis Mark was fraudulently obtained by SMRI and is invalid and unenforceable as a trademark.  In it’s motion, Rushmore attached declarations from twenty-eight (28) Sturgis vendors who state that they have been selling items bearing the city’s name for years, have never paid anyone a licensing fee, and that the Chamber of Commerce and SMRI have no right to prevent others from putting the city’s name on merchandise sold at the Rally.

The next day, August 4, 2011, SMRI filed its opposition to the injunction motion.  SMRI argues that its trademarks are presumed valid, Rushmore has not met its burden for injunctive relief, and that the defendants are creating “consumer confusion.”  (Presumably someone who buys a sticker or key chain which says “Sturgis” will be confused into thinking that the product is endorsed by the Chamber of Commerce or SMRI — just like a shot glass which says “London” is clearly endorsed by the Queen.)  SMRI also points out that it has donated its licensing fees to many great causes in and around Sturgis and therefore the court should cut SMRI a break.

On August 5, 2011, the court held a hearing and is currently considering the evidence presented.  It is unknown whether a ruling will be issued during the Rally being held this week.

—UPDATE—

The judge denied the motion for TRO and the preliminary injunction.  This ruling is not surprising given the difficult burden of showing irreparable harm (that is, harm which cannot be remedied by money) in a case that is essentially about money.  It is being misreported that the judge ruled that only officially licensed merchandise will be allowed at the rally.  The judge, however, may no such ruling as that issue was not before the court.  SMRI may, however, make such a request in the future, but it is unlikely to be heard prior to the end of this year’s rally.

Own Your Power – Did Oprah Winfrey Steal this Trademark?

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Author, speaker, coach, and radio show personality Simone Kelly-Brown has sued television host, actress, producer, and philanthropist Oprah Winfrey over the trademark Own Your Power.

Kelly-Brown has had the mark Own Your Power registered in the United States since 2008 and claims a date of first use back to 2006.  In the complaint filed against Oprah and others, Kelly-Brown and her company Own Your Power Communications, Inc. accuses Oprah of the “brazenly unlawful disregard for the existence and use of [her] Company’s Trademark” as well as being at the helm of a “Partnership and Campaign to destroy [the] Company’s goodwill.”  Kelly-Brown further states that it was “unconscionable commercial practice, deception, fraud, false pretense, false promise, and misrepresentation” for Oprah to use the mark Own Your Power without her permission.

Months prior to filing the lawsuit, Kelly-Brown’s attorney, well-known intellectual property attorney Patricia Lawrence-Kolaras sent Oprah a detailed twelve (12) page letter setting out Kelly-Brown’s claims of trademark infringement.  According to the complaint, after receipt of this letter “On April 20, 2011 Harpo attorney David Fleming, Esq. of Brinks Hoffer Gilson & Lione acknowledged representation of members of the OYP Partnership and refused to direct his clients to halt the infringement of Kelly-Brown’s registered OYP Trademark.”  Translation: go pound sand.

WHO IS IN THE CASE AND WHO CAN GET OUT

The defendants named in the lawsuit are:  Oprah Winfrey, Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., Wells Fargo & Company, Estee Lauder Companies, Inc., Clinique Laboratories, LLC, and Chico’s Fas, Inc.

Since the complaint was only recently filed, none of the defendants have responded.

According to the complaint, the basis for including Wells Fargo, Estee Lauder, Clinique and Chico’s is  an alleged “partnership” with those sponsors and Oprah’s company.  As evidence, attached to the complaint is an advertisement where these sponsors of the event are listed under the heading “IN PARTNERSHIP WITH.”

Needless to say, this evidence is a bit flimsy.  We will see shortly whether this evidence is enough to survive an anticipated motion to dismiss by these entities.  It is difficult to image that there is actually a “partnership” among Oprah Winfrey’s company and its advertisers and that this “partnership” collectively infringed Kelly-Brown’s trademark.

Oprah Winfrey should also be able to personally get out of the case.  To keep Oprah in the case Kelly-Brown will need to show that Oprah actively and knowingly participated in furtherance of the alleged trademark infringement.  Considering that most of the alleged infringement occurred prior to the notice letter sent by Kelly-Brown’s attorney, it is doubtful that Oprah even knew about Kelly-Brown’s alleged trademark rights until recently.  Moreover, it is unlikely Oprah was directly involved in what amounts to an event name and/or catch phrase.

As for Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., at least one of these entities will be stuck in the case.  The other entities will likely be dismissed for being too far removed from any alleged trademark infringement.

BUT WHAT’S THE HARM?

While it appears that Kelly-Brown has legitimate trademark rights and that those trademark rights may have been infringed, her biggest hurdle will be proving damages.  In fact, it is possible that Kelly-Brown’s “Own Your Power” event which purportedly took place two days after Oprah’s “Own Your Power” event had an increased attendance from persons believing they were going to see Oprah’s event.  While that type of consumer confusion is possibly trademark infringement, Kelly-Brown did not exactly loose any money because of it.

The best argument for damages Kelly-Brown has is for money to cover “corrective advertising” so the public no longer associates “Own Your Power” with Oprah.  Based on the market reach of Oprah, an expert witness will certainly be able to come up with a sizable sum.

Stay tuned.  This one is just getting started.

A-B InBev Trademarking Area Codes: 702, Las Vegas for Beer

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Anheuser-Busch InBev has filed trademark applications with the USPTO seeking to protect “area codes” in major markets as brand names for beer.  [INSERT DRUNK DIALING JOKE HERE].

Included in the list of area code beer names is 702 the area code for Las Vegas.  Currently, A-B InBev owns the trademark “312” for beer (the area code for Chicago) and is apparently planning on expanding the area code brands across the country (or at least in major metropolitan markets which lend themselves to a single area code).  Currently, A-B InBev has filed for the following area codes as federal trademarks for beer:

202 (Washington, D.C.)
214 (Dallas)
216 (Clevland)
303 (Denver)
305 (Miami)
312 (Chicago)
314 (St. Louis)
412 (Pittsburg)
415 (San Fransisco)
602 (Phoenix)
615 (Nashville)
619 (San Diego)
702 (Las Vegas)
704 (Charlotte)
713 (Houston)

Whether or not use of a telephone area code is “geographically descriptive” is open for debate.    As set out in the Trademark Manuel of Examining Procedure (TMEP), Section 1210.02(a), “A geographic location may be any term identifying a country, city, state, continent, locality, region, area or street.”  TMEP Section 1210.02 states that, “A mark is primarily geographic if it identifies a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.”  Arguably, 702 identifies the geographic area within that area code, namely Las Vegas.

However, in reviewing other trademarks for the Las Vegas area code “702” only one of the trademarks, “The 702 Scene” was required to disclaim the area code, presumably on the basis of geographic descriptiveness.  The trademark “702” for clothing was allowed without any disclaimer as was “702 MOTORING” for an auto parts store, “702DENTIST” for dental services, “BLACKBOOK702” for advertising and talent services, and “702 HELL” which is currently published for opposition for clothing.

If the trademark office does view the area code beer brands as “geographically descriptive,” then in order to register the trademarks, A-B InBev will most likely have to actually brew the beers within the area code identified on the label.  This is because trademarks with geographically descriptive terms ordinarily need to originate in the location identified in the trademark or they are considered “geographically misdiscriptive.”  (e.g. a trademark for cheese which contains the words “Wisconsin Cheese” better be for cheese actually made in Wisconsin or the public may be mislead).  Geographic trademarks which are “geographically misdescriptive” will be refused by the trademark office.

For the benefit of each of the local economies located withing the area code beer brands I hope that A-B InBev actually does build breweries in each of those locales.

 

DJ Paulie vs. DJ Pauly D

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Long time disc jockey DJ Paulie has sued Jersey Shore star DJ Pauly D for trademark infringement.   Also caught up in the lawsuit is the Palms where defendant DJ Pauly D is a resident DJ for Moon, Rain, and the Palms Pool in Las Vegas.

Although not nearly as famous as DJ Pauly D, the older DJ Paulie claims to have used his trademark in interstate commerce as early as 1973.  DJ Paulie’s biggest claim to notoriety stems from his claim in his complaint that,

After the attack on 9-11 in New York City, [DJ Paulie] was hired by the United States Post Office to write the music and produce their official 9-11 Memorial Fundraising Song, “September Mourn”, for the benefit of the victims’ families.

(While it appears that DJ Paulie did produce “September Mourn” based on the exhibits attached to the complaint, I was unable to locate anything to indicate that DJ Paulie was hired by the U.S. Post Office or that the Post Office ever had and “official 9-11 Memorial Fundraising Song.”)

DJ Paulie complains that DJ Pauly D’s success has negatively affected his search rankings. Indeed when performing a search for DJ Paulie, Google inquires whether you really meant DJ Pauly D (which is probably who most people are actually searching for).  It is unknown when DJ Paulie’s website became completely swamped by the Jersey Shore actor, but many Google and Bing algorithm tweaks in recent years  seem to favor “big brands” and Goggle’s algorithm clearly recognizes DJ Pauly D as the more prominent “brand.”

DJ Pauly D’s attorneys have not yet responded to the complaint, but I suspect that they will argue that the older DJ Paulie abandoned the mark at some point in his long carrier and did not begin using it again until 1999 or 2000 when DJPaulie.com was launched.  DJ Pauly D could then argue that he is actually the senior trademark user.   According to DJ Pauly D’s bio he has been a DJ since the age of 16 (1996).

Over at the trademark office, DJ Pauly D’s pending applications for the mark DJ Pauly D have been rejected by the trademark office based on a likelihood of confusion with DJ Paulie’s mark.  DJ Pauly D is in a tough spot at the trademark office as there is little chance of convincing the examining attorney who (rightly) has identified this likelihood of confusion issue.  DJ Pauly D’s trademark office options at this point are: (i) appeal the matter to the trademark trial and appeal board; (ii) settle with DJ Paulie and enter into a co-existence agreement; or (iii) start a cancellation proceeding at the trademark office against DJ Paulie arguing that DJ Pauly D is actually the senior trademark user.

 

 

Geek Trademark Infringement: Best Buy vs. Newegg

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Back before anyone could remember, a “geek” was a carnival performer who entertained and disgusted his audience with morbid and gross stunts.  Today, the carnival stunts are left to modern day performers such has superstar Johnny Knoxville and his Jackass crew who no one would refer to as “geeks.”

Today, geeks distinguish themselves by being able to read binary and hexadecimal numbers as well as trace the origins of the movie Blade Runner to the book “Do Androids Dream of Electric Sheep?”

So it is natural to use the work “geek” in conjunction with the sale and service of computers, right?  That’s what Newegg believes, rebuking a cease and desist letter from Best Buy which demanded that Newegg cease its use of the trademark GEEK ON.  According to Best Buy, its rights in its various GEEK SQUAD marks are being damaged by Newegg’s GEEK ON mark.

As the old adage goes, a good sketch is better than a long speech.  Compare the logos for yourself:

 

Does Best Buy own the word “geek.” Does it own the work “geek” when used as part of a black and orange logo? Does it own the work “geek” when used to advertise computers and computer repair AND a black and orange logo is used stylized with an “on” button?

When Best Buy sent its cease and desist letter on May 26, 2011 it stated:

Given Best Buy’s long-standing prior use of the GEEK SQUAD mark, Geek Squad Trade Dress, and Tie and Power Button Design, Best Buy is concerned that Newegg’s use of the Geek On Logo is likely to create confusion among consumers and to dilute the distinctive quality of the GEEK SQUAD mark in violation of Best Buy’s trademark rights.  Best Buy is particularly concerned because the Geek On Logo features the GEEK-component of Best Buy’s GEEK SQUAD mark, is depicted in the same orange-and-black color scheme as Best Buy’s Geek Squad Trade Dress, features a power button design that is very similar to the Geek Squad Tie and Power Button Design, and is used to promote Newegg’s competing consumer electronics retail services.

On June 6, 2011, Newegg responded by telling Best Buy to go pound sand.  Newegg’s response letter stated:

First, we respectfully disagree with your assertion that Newegg’s “Geeek On” promotions constitute trademark infringement.  Best Buy Neither owners nor has exclusive rights to the word “Geek”, and best Buy neither owns nor has exclusive rights to use a general, unstylized computer power button icon.

No mention was made by Newegg of the combination of Geek, the power button, and a black and orange color scheme.   Thus far Best Buy has not filed suit and Newegg continues to use its Geek On logo.  It will be interesting to see if either company decides to geek out and take further action.

Chrome Turf War: Did Google abandon the Chromium Trademark?

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Chromium OS is the open source development version of Google Chrome OS.  Google filed an application for Chromium back in September 2008 and began using the term a few months later in December 2008.  On November 19, 2009, Google released its Chrome OS source code as Chromium OS under the BSD license.

Seven months later, in June 2010, ISYS Technologies, Inc. a Salt Lake City based technology company filed a trademark application for ChromiumPC.  ISYS filed the application as an “intent to use” application meaning that ISYS was not yet using the mark in commerce, but intended to do so in the future.  Apparently, the mark was slated for a company related to ISYS, Xi3 Corp.  According to the Xi3 website ChromiumPC is “the world’s first desktop computer designed to run Google’s Chrome operating system.”

On May 23, 2011, Google filed an opposition proceeding against the ChromiumPC mark indicating that the mark ChromiumPC is likely to cause confusion with its mark for Chromium.  (Based on Xi3 Corp’s admission in its press release that ChromiumPC is its PC which runs the Google Chrome OS, another possible grounds for opposition –not yet argued by Google– is that ChromiumPC is generic for a PC which runs the Chromium operating system.)

On June 6, 2011, ISYS responded with a lawsuit against Google.  Although it filed the mark as an “intent to use” trademark, ISYS now claims in the lawsuit that it has been using the ChromiumPC since 2009.  This claim appears to be based on the President of ISYS, Jason Sullivan, registering the domain name www.chromiumpc.com on November 20, 2009 — which, not surprisingly, is one day after Google announced Chromium OS.  Clearly, ISYS’ use of the Chromium name is tied to Google’s well-known trademark for Chromium.

In the complaint, however, ISYS argues that any rights Google may have had in the mark Chromium have been abandoned:

33. Google abandoned any trademark rights in Chromium software by failing to control the nature and quality of the open source software developed by others but at the same time permitting others to distribute the third party software under the Chromium mark.

This argument, if accepted by the court, would put the trademarks of every open-source project in danger of abandonment.  The basis of this argument is known in trademark law as the “Naked Licensing Doctrine.”  That doctrine states that  a trademark owner no longer has a valid trademark if it licenses the mark in such a way to others that the mark no longer has any meaning.

The 10th Circuit court of appeals, which covers the District of Utah where the complaint was filed, has recognized this doctrine:

“When ‘a trademark owner engages in naked licensing, without any control over the quality of goods produced by the licensee, such a practice is inherently deceptive and constitutes abandonment of any rights to the trademark by the licensor.’” Stanfield v. Osborne Indus., 52 F.3d 867, 871 (10th Cir. 1995).

Here, however, it is not clear that Google has licensed its Chromium mark to anyone, let alone engaged in “naked licensing.”  While the Google-authored portion of Chromium is released under the BSD license, other parts are subject to a variety of different open-source licenses, including the GNU General Public License (GPL), MIT License, the LGPL, the Ms-PL, and the MPL/GPL/LGPL tri-license.  Regardless, none of these licenses grant any trademark rights.

Concurrently with the filing of the lawsuit ISYS filed an emergency motion for injunction relief.  In this motion ISYS again argues that Google abandoned the Chromium mark:

In this case, Google began an open-source software initiative in late 2008. Google invited independent third party software developers to participate. Many did so. Google failed to exercise quality control over the software developed by the third parties. Exhibit 7. Google permitted the third parties to do whatever they wanted in software development. Id. Google chose not to control, inspect, verify or guarantee any of the software prepared by the third parties. Id. Nevertheless, Google permitted and encouraged the third parties to brand their varying independent software products with the mark CHROMIUM. Id. his is classic trademark abandonment. By abandoning control of uses of the mark CHROMIUM, Google has forfeited all rights to a CHROMIUM mark software.

ISYS, of course, fails to produce any evidence from these third-party developers who are allegedly running wild with the Chromium trademark.  (A quick internet search did not turn up any third-party developers using the mark in this manner).

As evidence ISYS attaches Exhibit 7 to the Motion, which are print-outs from Google’s chromium.org website and news articles.  No pinpoint sites are provided to explain where developers are utilizing an alleged naked license.

The President of ISYS, Jason Sullivan, states in a declaration in support of the motion that “Since 2009, ISYS has continuously promoted its new computers under the CHROMIUMPC brand at trade shows.”  However no brochures or documentation dated in 2009 are provided as evidence.  His declaration does include a picture of a computer allegedly branded with the ChromiumPC mark (although it is difficult to say whether that is an actual branded product or a mock-up of what the logo would look like on the product.)

Stay tuned.  A hearing in this matter has been set for June 14, 2011.  We should learn then whether ISYS’ creative “abandonment” argument has any traction.

Trademark Wars: Better Know an App Store -Part 4, Apple vs. Amazon

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This is the fourth in a multi-part series.  If you have not read Part 1,  Part 2 or Part 3 yet, you may want to read those parts of the Apple App Store trademark saga first.

Apple’s Trademark Complaint Against Amazon

On March 18, 2011 Apple filed a trademark lawsuit against Amazon.  Amazon had recently released the “Amazon Appstore for Android” which Apple believes is an infringing use of Apple’s claimed exclusive right to use the term APP STORE.  The lawsuit was subsequently amended on April 8, 2011 and Apple’s Amended App Store complaint will be the one that Amazon responds to.  The lawsuit contains the most common trademark claims for relief including both federal and state law trademark infringement, dilution, and state law unfair competition. The case essentially boils down to one allegation in the complaint, namely, is App Store recognized as the source identifier for Apple’s app store and no other.  Apple alleges,

The general consuming public of the United States widely recognizes the APP STORE mark as designating Apple as the source of services and/or goods.

While that statement may have been true during the summer of 2008 when Apple’s app store was first launched, three years later every mobile device has its own app store in one form or another.  Certainly owners of popular Android phones (who as of January 2011 outnumber iPhone users) would not immediately associate “app store” with Apple.  Similar to Apple’s arguments against Microsoft’s trademark opposition, Apple argues in its complaint that it “coined the term APP STORE.” As we saw in, Part 1 of Trademark Wars: Better Know an App Store, however, to say that Apple coined the term “app store” is quite a stretch to say the least.  Apple also argues in the amended complaint that it popularized the use of the term app store, which is certainly true.  Apple states,

When it launched, the APP STORE service represented a revolutionary kind of online software service and was an instant commercial and critical success. As a columnist for The New York Times remarked soon after the launch of the service, “[n]othing like the App Store has ever been attempted before.” Apple coined the term APP STORE as a means of branding its new service. The term APP STORE was not in general use in connection with the distribution of software programs prior to Apple’s adoption of the term as a trademark.

Consumer Confusion?

Apple goes on to argue that the “Amazon Appstore” would confuse consumers into believing that the store was sponsored or approved by Apple.  Apple states,

[C]onsumers of mobile software downloads are likely to be confused as to whether Amazon’s mobile software download service is sponsored or approved by Apple or is merely a conduit for Apple’s APP STORE service.

Really? Someone seeing the Amazon Appstore would think it was from Apple?  Perhaps if they though Amazon and Apple were the same company that might be the case.  While it is conceivable that Apple could dig up a paid expert to make such a finding, I would not envy having to write that expert report.

Trial by Jury

One final note– Apple requested a jury trial in this case.  This move is very interesting since Apple’s strongest arguments seem to be a ridged application of trademark law rather than actual evidence of any consumer confusion (which a jury could relate to).

Current Status

This should be an interesting case which we will be following closely.  Next up– Amazon will be answering the complaint or filing a motion to dismiss on or before April 25, 2011.

Trademark Wars: Better Know an App Store -Part 3, Apple vs. Microsoft

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This is the third in a multi-part series.  If you have not read Part 1 or Part 2 yet, you may want to read those parts of the Apple App Store trademark saga first.

Microsoft’s Opposition to Apple’s Trademark Application

After clearing out pending trademark applications and making a convincing argument at the trademark office, Apple’s App Store mark published for opposition on January 5, 2010.  After taking an extension to oppose Apple’s application, on July 6, 2010 Microsoft formally filed its opposition papers with the Trademark Trial and Appeal Board (TTAB).

Microsoft’s opposition argues simply,

the combination of the generic term “app” with the generic term “store” is nothing more than the sum of its parts and is not capable of identifying and distinguishing a single source. An “app store” is plainly a store that sells apps.

The opposition identifies several retailers using the name as well as examples from the press using the term app store as a generic term for an online retailer of mobile phone applications.

In Apple’s answer, it argues that other retailers using the term app store are simply trying to trade off of Apple’s goodwill and that use of the term app store by the press is primarily a reference to Apple’s extraordinarily well-known App Store mark.

Microsoft’s Motion for Summary Judgment

On January 10, 2011, Microsoft filed a motion for summary judgment in the TTAB proceeding asking the board to reject Apple’s trademark registration.  Microsoft argues,

Apple was an early and successful entrant into the app store marketplace. Competitors are rushing to develop smartphone products to compete with Apple’s iPhone, and with those products to offer their own app stores. Any secondary meaning or fame Apple has in “App Store” is de facto secondary meaning that cannot convert the generic term “app store” into a protectable trademark. Apple cannot block competitors from using a generic name. “App store” is generic and therefore in the public domain and free for all competitors to use.

Microsoft even catches Steve Jobs using the term app store in a generic sense.  Apparently in an October 18, 2010 conference call with financial analysts,  Steve Jobs, used “app stores” to identify Android app stores:

“In addition to Google’s own app marketplace, Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android. There will be at least four app stores on Android which customers must search through to find the app they want and developers will need to work to distribute their apps and get paid.” — Steve Jobs

Ouch.  That’s pretty strong evidence.  (As a trademark attorney who tries to coach clients on proper use of their trademarks, this happens all the time.)

Apple’s Response Brief

In Apple’s opposition to Microsoft’s summary judgment motion, Apple attacks Microsoft’s evidence as “out-of-context and misleading snippets of material” and argues that Microsoft has not met its burden to prove that that a majority of the relevant public understand the term “app store” in a generic sense.

In response to Steve Job’s generic use of the term app store, Apple argues that barley anyone even head that,

Microsoft fails to provide any evidence as to whether such statements, which in fact were made during an earnings call to the investment community, were even heard by any sizeable number of consumers of mobile applications. Given the limited audience for such earnings statements, the most reasonable inference is that they could not possibly have had any meaningful impact on consumer perception of the term APP STORE.

Not really the best comeback, but it goes along with Apple’s general theme in the brief that Microsoft has not put forth sufficient evidence to make its case.

As counter-evidence, Apple puts forth a declaration from its expert, Dr. Robert A. Leonard, Chair of the Linguistics department at Hofstra University.  Dr. Leonard looked for instances of “app store” from various written sources including Google and concluded that more often then not, the source using “app store” was talking about Apple’s app store.  This is hardly surprising as Apple has the biggest and best known app store.  Dr. Leonard does not discuss whether these references to Apple used the term as a proper noun or in a generic sense.  Dr. Leonard also does not answer the ultimate question, i.e. do most people understand the term “app store” as a generic term or as a source identifier for Apple’s app store?

Microsoft’s Reply Brief

On March 29, 2011, Microsoft filed its reply brief, Microsoft argues that when people talk about stores selling applications for mobile phones, they call them “app stores.”

Apple strains to keep “App Store” for its exclusive use, even claiming that its online stores are not real stores, only metaphorical ones. But Apple cannot escape the hard truth: when people talk about competitors’ stores, they call them “app stores.” You don’t have to look far to find this generic use – The Washington Post, The New York Times, The Wall Street Journal and even Apple’s CEO Steve Jobs. And generic use of “app store” is not obscure or occasional as Apple would have us believe. It is prominent, ongoing and, by Apple’s own measure, hundreds of times more frequent than the thin generic use in the cases upon which Apple relies.

Microsoft further argues that all Apple’s opposition brief shows is that Apple gets lot’s of press, including press about its app store.

[T]allying press articles to show that the majority are about Apple’s App Stores, as Dr. Leonard did, is not probative. (Butters Decl. ¶¶ 4, 25). It shows that Apple is successful and newsworthy, but little else. For example, Dr. Leonard found over 335 articles in one month (39% of the total articles discussing Apple) about the new Mac App Store. (Durrance II Decl. ¶ 4(b)). A search of the same Lexis database for articles in the last month found 333 articles about the new Amazon Appstore, even though the Amazon Appstore is only a week old.

Current Status

The Trademark Trial and Appeal Board is now considering Microsoft’s motion.  A decision is likely within the next sixty days.  Even if Microsoft is successful at the trademark office, an appeal to a United States District Court or to the Federal Circuit Court of Appeals by Apple is likely.

Next up in this series:  Part 4, Apple vs. Amazon