Category Archives: Trademarks

Is that a Situation in your pants, or are you just happy to see me

It looks like Jersey Shore is beginning to spawn “sound alike” products, as this article on TMZ.com mentions (I never, ever thought I’d be citing to TMZ in my life)

Two applications were filed with the U.S. Patent and Trademark Office in the hopes of sealing the deal on the phrase for use on clothing — however, neither one of the applicants is Mike “The Situation” Sorrentino himself.

The quasi-law site The Smoking Gun fills in the details.  Looks like one application was filed by the brother of the “real” Situtation, Michael Sorrentino, and another by an unrelated Jersey individual.

The interloper’s application, no. 77/891,064, is a 1(b) intent-to-use application, meaning that the mark has not yet been used in commerce.  It establishes a priority date as of the date of filing (if, of course, the application is approved).  It was filed on December 11, 2009.

Sorrentino’s brother’s application, no. 77/901,546, is for “The Situation” (stylized).  It’s a 1(a) application, meaning that the company has already begun to use the mark in commerce.   The first use date is December 21, 2009. That means, all things being equal, the interloper has nationwide priority.  (But expect a pretty good fight.  The porn company has an attorney; it looks like the interloper filed pro se.)

Users at CafePress creating an “I [heart] The Situation” thong should be wary, or, if they’ve been around for a while, should oppose both applications!

Mike "The Situation"

Yeah, but will the undies give me a six-pack that I'll feel compelled to show all the ladies?

Also surprising is that there do not appear to be any other applications or registrations for “THE SITUATION,” and there is only one other registration in International Class 25 (the clothing goods class) that significantly features “situtation” in the registration– FEEL GOOD SITUATIONS, Reg. No.  3,723,714, for “short sleeved or long sleeved t-shirts,” owned by an individual in Humble, Texas.  Interestingly, the registration was issued December 9 of this year.  Is “situation” the dominant portion of that mark, such that confusion would be likely with “The Situation”?  Stay tuned.

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The Bus (the NFL trademark bus, that is) rides again…

With the Pittsburgh Steelers’ sixth Super Bowl (err, I mean “Big Game“) victory, local fans are quick to make merchandise celebrating.  And the NFL is quick to demand that those fans cease and desist from manufacture of that merchandise under copyright and trademark law.  While I can completely understand the NFL’s enforcement efforts for blatant knock-offs, the latest victim was this T-shirt, which did not feature the words “Pittsburgh,” “Steelers,” the Steelers logo, and only sort of approximated the Steelers’ color scheme.  Yet, the manufacturer made one fatal mistake:  He included an image of the Lombardi trophy.

The logo that caught the ever-watchful eye of the NFL
The logo that caught the ever-watchful eye of the NFL

The NFL sent Dan Rugh, owner of CommonWealth Press on the South Side and the Web site where the shirts were sold, a cease-and-desist order Wednesday stating use of the Lombardi Trophy design violates an NFL registered trademark and copyrighted design.

The NFL also objected to the use of a new trademark, SIXBURGH, even though the NFL has not used the mark, and it includes only the “mashing” of “Pittsburgh” and “six.”

“We have also learned that your company is producing and offering for sale SIX BURGH shirts using the colors of the Pittsburgh Steelers Club,” the NFL’s letter stated. “These elements, particularly in combination, clearly misappropriate the goodwill enjoyed by the Pittsburgh Steelers Club, which now has won six NFL Championships.”

The NFL objects to the use of the team colors or any other indication or likeness of the Pittsburgh Steelers, including the designation Sixburgh, “as that’s likely to confuse consumers who might mistakenly believe that the shirts were authorized by the Steelers or the NFL,” NFL spokesman Dan Masonson said.

[…]

In an interesting twist, the NFL could receive a cease-and-desist order of its own. The NFL Shop at http://www.nflshop.com has been selling “Six-Burgh” T-shirts.

SmartArt, LLC of Queenstown, Md., applied for the trademark to the term “SixBurgh” on Jan. 14 for T-shirts, sweatshirts, caps and jackets and the company didn’t license the term’s use to the NFL. SmartArt has been marketing SIXBURGH T-shirts featuring James Harrison’s signature.

“We’ve done well with it,” said Fred Fillah, SmartArt’s marketing director. “I did a lot of research on ‘SixBurgh.’ Prior to us trademarking it, there wasn’t anything. I couldn’t find it anywhere. I did due diligence. You’ve got to respect other people’s rights and what’s considered fair.”

Mr. Fillah said his attorney will be investigating whether the NFL has violated his trademark.

“To the extent the term SixBurgh is being used in a context that refers to the Pittsburgh Steelers, only the team or its authorized representative, in this case NFL Properties, may use it,” the NFL spokesman, Mr. Masonson said.

The NFL is great at arguing that it has rights to trademarks that it hadn”t used (or necessarily thought of).  It won a case when the L.A. Rams moved to St. Louis against a person who attempted to register “ST LOUIS RAMS” before the NFL and then hold the NFL hostage for trademark licensing rights. (I’ll look for the citation.)  The Court found that the early announcements of the team’s move and other uses gave the NFL priority.  But it would seem to me that this is a different situation, particuarly if the applicant for SIXBURGH did not attempt to hold the NFL hostage when it filed its application. After all, SIXBURGH can refer to nothing more than the city that houses the team that has won six NFL national championships, not necessarily the team that actually won the championships.  How ironic it would be if discovery showed that the NFL marketing guys “discovered” the SIXBURGH application and then “suddenly,” beliving the mark to be owned by the NFL through some sort of doctrine of implication, created merchandise with the mark.

If SmartArt has some money to spend and has the smarts to get an experienced trademark firm, this may be an interesting case.

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REALTOR trademark sucks?

Is REALTOR generic? At least one former agent thinks so.

Is REALTOR generic? At least one former agent thinks so.

Interesting videos and posts at this website, owned by a former member of the American Association of Realtors who is complaining about the organization’s oversight, and who has received warnings about the use of the trademark REALTOR.  She notes in her video that members of the association are not allowed to use the trademark in website URLs, and former or nonmembers are also not allowed to use the mark.  But, she notes, who doesn’t use the word “Realtor” to refer to any real estate agent, not just a member of the association? She also notes that she owns a treatise on local real state law that refers to agents as realtors.

Is REALTOR generic?  It’s certainly used as a noun rather than an adjective (“Ask for a REALTOR” not “John is a REALTOR real estate agent”).  The Association even says, in advertisements, to “Call a Realtor today!”

And I agree that, even though I recognize the difference between a real estate agent (generic) and a Realtor (a member of the Association), I bet very few people (outside the industry) do recognize that difference.  To me, it seems that this trademark is close to being generic.  The one saving grace is that there is still a fairly easy way to describe an agent who is not a member of the association: a real estate agent.  Still, though “realtor” is a simpler way to describe a person in that occupation, and I could imagine that a non-member could have a reasonable argument that he or she should have a right to use a word that all of the public uses in ordinary conversation.

My arguments, however, appear to be unavailing, at least before the Trademark Trial and Appeal Board, which, in 2004, determined that REALTOR was not generic.  Much of the decision seemed to turn on a shoddily-produced survey by the petitioners seeking to cancel the mark and a very quality survey done by recognized professionals on behalf of the Association.   (The Board indicated that, had the petitioner’s survey been performed properly, the result may be different.  The Board also indicated that it saw no evidence indicating that the Association misused the trademark.  Perhaps if they saw that YouTube video, they might be pursuaded otherwise?) There is also a potential separate argument that the Association obtained the REALTOR mark fraudulently, appropriating a common word that appeared in a Sinclair Lewis book.  The Board hinted that the originator of the word was a member of the early formation of the Association, but did not rule on the fraud issue.

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Not very colorful, not very inspired: PPG sues Sherwin-Williams over THE COLOR OF INSPIRATION

The groundhog may have seen is shadow in Pennsylvania earlier this week, but chemical and paint company PPG did not crawl back into its litigation burrow, instead filing suit against competitor Sherwin-Williams for SW’s use of COLOR OF INSPIRATION on a new SW website that allows custom color matching.
The Complaint (here, pdf) and attachments (a, b-1, b-2, c, d, and e, pdf) allege that PPG has been using the mark COLORS OF INSPIRATION in conjunction with a “color selection system” (i.e. paint chip displays and books), and Sherwin-Williams has subsequently begun to use THE COLOR OF INSPIRATION in connection with a [pretty darn cool–ed.] website where consumers can match a Sherwin-Williams paint color with an “inspiration” from nature or another source, from a photograph.

A screenshot from the Sherwin-Williams webpage. Colorful? Inspired? Or a trademark infringement?

A screenshot from the Sherwin-Williams webpage. Colorful? Inspired? Or a trademark infringement?

PPG has sued for unfair competition under the Lanham Act, cybersquatting protection under the ACPA, and unfair business practices and trademark infringement under Pennsylvania law.

These are two very large chemical companies, and this could be an interesting, although probably not pioneering, lawsuit.  If PPG has trademark rights to COLORS OF INSPIRATION, it will be hard for SW to be victorious.  (However, proving SW’s “bad faith intent to profit”  from the registration of the colorofinspiration.com domain name as required by the ACPA.)

What really surprises me is that this looks like a dispute that could be settled before the initiation of a lawsuit, unless SW really believes that PPG doesn’t have legitimate rights to their mark.  It’s also interesting to see, in these times of economic peril for so many American companies, whether they’re willing to spend $1 million or more to fully litigate  trademark lawsuit on a secondary trademark that may or may not be a large part of their portfolio or brand strategy going forward.

(Hat tip to the Pittsburgh Business Times, reporting on the lawsuit.)

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Stripper Idol update: Answer (and simultaneous motion to dismiss) filed

stripperidol1 On January 26, 2009, an attorney for the strip club and owner filed an answer (pdf) in the “Stripper Idol” case (blogged here, here, and here), FremantleMedia v. Palazio Men’s Club.  Of interest in the answer:

  • Defendants inserted a Motion to Dismiss against the individual defendant, arguing that he did nothing in his individual capacity, or pleading for a more complete statement if Plaintiffs believed he did;
  • Defendants inserted a Motion to Dismiss under Fed. R. Civ. P. 12(b)(6), arguing that “no reasonable patron of Palazio Men’s Club would believe that American Idol sponsored stripping contests at Defendant’s venue or had anything to do with Palazio Men’s Club;” and
  • Defendants admitted to “having stripper idol [small letters] contests,” state that the STRIPPER IDOL logo has been removed and is no longer being used, and asserted a general denial to all of the substantive causes of actions under federal and Texas law.

A quick check of their website (sort of safe for work) shows that the advertisement featured above has been replaced with one in the same format, but that reads “Stripper Idols,” in a different, scripty font in a redish-yellow color.  Their  “events” calendar page also refers to SUPER BOWL XLIII (we already know what the NFL thinks of people using the SUPER BOWL trademark) and to a STUDIO 54 80s party (STUDIO 54, both in plain text and in a design mark, is a registered trademark of the MGM Grand, for, among other things “restaurant and cabaret services).  You’d have thought that perhaps, the attorney defending Palazio would have checked the rest of their site for other trademark violations.

The 12(b)(6) motion to dismiss (to the extent that the Court honors a motion to dismiss the entirety of the lawsuit filed without a brief and filed simultaneously with an answer to the entire lawsuit) borders on frivolous.  Regardless of whether Fremantle is actually successful on their claims, there’s no doubt that they state a claim for trademark infringement, and dilution under Texas state law as well.  Of course, the merits become much more difficult to analyze once the extremely similar logos are taken out of the equation.  Fremantle’s claim to “idol” is weak, unless, of course, they can “piggyback” on the old, similar logo and argue an intent to confuse and/or to trade off AMERICAN IDOL’s goodwill.

My guess is that, so long as Fremantle doesn’t demand an inordinate sum of money, the case will settle soon. The cases from the NFL and/or MGM, well, that may be anothe rstory.

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A (second) tale of CITIS

As if the uproar over Citigroup’s lawsuit against All Citi Pawn (blogged here) weren’t enough today, this article from Slate describes Citi’s decision to go forward with a $400 million naming rights plan of the New York Mets new baseball stadium.  The author of the article summarizes the benefits of the plan, despite Citi’s current lack of capital, this way:

In order for Citi to weather the storm, recover, and pay back taxpayers (and insulate them from further losses), the company must invest for both the short- and long-term. For companies in highly competitive consumer markets, marketing and advertising are essential, entirely justifiable expenses. Companies—even companies getting bailed out by the feds—need to attract customers and to build their brand image. It’s difficult to measure the value of any specific campaign or ad. But there’s reason to think that for this company, at this stadium, in this location, a naming-rights deal might not be such a bad long-term move.

[…]

Of course, people who read about games at Citi Field on ESPN.com won’t be learning much about Citi’s mortgage rates. But naming rights, especially if they endure, can perform another vital function for brands. It can help make them part of the vernacular. The greatest desire of any marketer is for her product’s name to work its way into conversations. When I was growing up, it was common to say, “I want a Coke” when you were referring to any kind of soda. People ask for a Kleenex when they mean a tissue, say they’re going to Xerox a document even if they’re using a Ricoh copier, and speak of Googling when they refer to an Internet search. Stadium naming rights can help products and brands gain that sort of status. Since 1926, baseball fans on the north side of Chicago have spoken about going to games at Wrigley Field. Does that make fans more likely to buy Wrigley’s gum products? It can’t hurt. “Meet me at Citi,” doesn’t quite have the same ring as “Meet me at Shea.” But after 20 or 30 years, it might.

Professor Rebecca Tushnet notes the serious problem with the final paragraph, which essentially encourages “genericism” of trademarks (the development of language such that a term that once was a trademark suddenly becomes a synonym for the good or services that the mark once described).  Her post is titled “This is why I don’t believe in most forms of genericism,” and she writes:

These days, consumer understanding of branding allows Google, Kleenex and Xerox to preserve their marks while also being conversational terms for their categories. [The quote] is crazy talk from black-letter trademark law’s perspective, but that’s because the black-letter law doesn’t reflect current reality.

I certainly agree with the theoretical underpinnings of Professor Tushnet’s statement–that consumers can understand the difference between GOOGLE for “searching the internet via a computer interface” and engaging in Googling to find information, between asking someone for a kleenex to wipe a runny nose and getting KLEENEX brand tissues at a store; between purchasing a XEROX brand business machine and xeroxing a copy of something.

The KAISER Vertical People Fun Moving Machine? (Image from <a href=But the principle of genericism of trademark has to remain valid, at some level.  There comes a time where the public recognizes the trademark only as the thing, not as a particular manufacturer of the thing.  And it becomes unfair to prohibit the competitor making the thing from referring to the thing just like the rest of consumers.  If I wanted to start a business today, shouldn’t I be able to call my product KAISER escalators? Not KAISER brand people moving electric stairs that move people up a floor or more?  At one time, ESCALATOR was a brand name for moving stairs, but eventually consumers came to understand all brands of moving stairs to be escalators. While claims of trademark genericism are probably overasserted, it’s not a concept that should be abandoned. (To be honest, I’m surprised that Coca-Cola has survived a genericism claim, at least in the South. My idea for Pepsi’s new marketing campaign in the South? “Wanna coke? Wanna Pepsi!”  In sum, the issue shouldn’t be whether “rogue” consumers have begun to use your trademark as a noun, or worse, as a verb, but whether the use has become so pervasive as a synonym for the goods and services that it would be unfair to prevent competitors from using the same term to describe their goods and services.

If anyone else has comments, I’d be happy to consider them.

(Image from Yewenyi, via Flickr, used pursuant to the Creative Commons limited rights license)

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Sacrebleu! A blow to Google in Europe

No liberty, egality, and fraternity for Google in Paris this week.

No liberty, egality, and fraternity for Google in Paris this week.

According to this report, Google has suffered a loss in Paris.

A French court has fined search engine giant Google €350,000 and said that its search advertising business has infringed on two companies’ trade marks.

[…]

Tribunal de Grande Instance de Paris has ordered Google to pay €200,000 to Voyageurs du Monde (Travellers of the World) and €150,000 to Terres d’Aventure (Lands of Adventure), despite the judge saying that the commercial harm to the companies was marginal.

[…]

The Court said that though the commercial harm was marginal it had denied the companies some customers by directing them to other sites, French newspaper Le Figaro reported.

Google said that it has already appealed the case to the Paris Court of Appeal.

[…]

Last week a German court asked the European Union’s top court the European Court of Justice (ECJ) to rule on two similar disputes. It has asked the ECJ to rule on whether or not the purchase of a trade marked term as a keyword constitutes use of that trade mark.

Google’s AdWords program allows virtually anyone to purchase, as a “trigger” keyword for advertising, any word.  Their U.S. policy (which now apparently has been expanded worldwide) states only that trademark owners may demand takedown of any advertisement in which a competitor uses the owner’s trademark in the body of the advertisement shown to the web surfer only. Google claims that the “internal” use of purchasing a word to trigger an ad to appear is not a “use in commerce” covered by the Lanham Act.  There can be no consumer confusion, Google argues, because the ad clearly demonstrates that the goods and services derive from a different source, and/or provide the customer alternative products to the one that they may have been searching for (no different from, say, grocery stores selling shelf space for competitors products next to the “leading brand”).  I tend to agree and believe that, at least under U.S. law, no trademark infringement occurs if Google sells a trademark as an AdWord, so long as the advertisement itself does not contain the trademark term. Google’s now becoming aggressive in Europe, attempting to equalize its policies across the pond with those in the U.S.  We’ll keep our eyes posted.

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