Tag Archives: Infringement

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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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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A tale of two CITIs…

It seems that everyone who has a computer today has written about the lawsuit between Citicorp and All Citi Pawn, a New York pawn shop.  CNN Money may have been the first to write about it, with this story:

In the suit filed last week in Brooklyn federal court, Citigroup alleges that in using the same Citi abbreviation and red arc as its banking subsidiary, Citibank, All Citi Pawn has infringed on their trademark. Citigroup is seeking all of the business’ profits since it adopted the All Citi name.

“What can I tell you? Its crazy. They’re going wild for a little art that I put up. Theirs is a moon shape, mine is a V-shape, but I’ve already taken it down,” pawn shop manager Bob Kay told CNN.

[…]

“It is important for Citigroup to know that no one is trading off their name – they need to protect their intellectual property.” [said Trademark attorney Michael Feign].  Feigin went on to say, however, that removing the offending logo should resolve the case. According to Kay, it has not.

Marty Schwimmer has the full text of the complaint here.

What’s surprising is that most of the commentators–and even reporters—are complaining that this is somehow a frivolous exercise for Citi.  CNN lead off its article with “You would think that Citigroup had enough on its plate these days, but that hasn’t stopped the financial behemoth from filing a copyright [sic] infringement suit against a Brooklyn, New York, pawnshop over a similar logo….”   And even Mr. Schwimmer titled his blog post “Your tax dollars at work.”

In defense of Citi, this is not a bad case. According to the allegations in the complaint, the owner of All Citi Pawn started using the offending name, and registered its allcitipawn.com domain name well after CITIBANK became famous.  Second, Citibank attached some promotional materials showing the logo that All Citi Pawn used.  It included a logo that looked a lot like Citibank’s.  A quick trip to the Wayback Machine at the Internet Archive (http://www.archive.org) retrieved this logo at the http://www.allcitipawn.com website:

The logo of All Citi Pawn

The logo of All Citi Pawn

Compare that to Citi’s logo:

The registered logo from the big CITI.

The registered logo from the big CITI.

According to the Wayback Machine, the first appearance of anything on allcitipawn.com was in 2007.   So we have a small pawn shop in New York independently choosing to modify the word “City” to “Citi” in its business name, and coincidentally use a sans-serif font in blue, with a red roof instead of a red arch?  That screams bad intent to appropriate the goodwill of the senior user (and its mark, previously adjudged to be famous).  The word is the same; the logo is nearly identical; to the extent that a pawn shop and a bank both make loans on collateral, the services are quite similar.  This is not overzealous trademark prosecution; this is what a responsible trademark owner should do to police its mark and keep it distinctive.

The fact that Citi may be in dire financial straits right now doesn’t mean that it shouldn’t continue to protect its brand and logos, especially when the marks and goods are so similar.  It’s certainly worth a couple of thousand dollars to draft a complaint (it shouldn’t take more than that; my guess is that the associate charged with drafting the complaint already had plenty of examples from which to model) and a couple hundred dollars in filing and service fees.  It’s certainly no million dollar office renovation.

Here’s what happened (as alleged in the complaint):    All Citi Pawn, instead of consulting trademark counsel, adopted the name in 2007 (or thereabouts) not in an attempt for people to believe that Citibank was opening a pawn shop, but rather for customers to see the logo and think “cute,” and maybe to get customers to think that All Citi Pawn was as stable and honorable as Citi (*smirk*). Citi attorneys found the website. They sent a cease-and-desist letter. All Citi Pawn, instead of consulting trademark counsel, thought, it’s just the word “Citi,” and our inverted “v” is different from their semicircle, so screw ’em, they won’t do anything else. And–whoops!–they did something else.  Now all of the business community is in an uproar just because Citi wants to protect whatever goodwill remains in their brand.

And now to the infuriating part of the CNN report:

“…but that hasn’t stopped the financial behemoth from filing a copyright infringement suit against a Brooklyn, New York, pawnshop over a similar logo.

[…]

“Citigroup is seeking all of the business’ profits since it adopted the All Citi name.”

First, there is no allegation of copyright infringement in the complaint.  This is a matter of trademarks, CNN! And if a business reporter for CNN doesn’t know the difference between trademarks and copyrights….

Second, Citigroup isn’t seeking all of All Citi Pawn’s profits.  In the WHEREFORE clause of the Complaint, Citi seeks:

D (1) All of defendant’s profits, gains and advantages derived from the unauthorized appropriation of Citigroup’s good will in its service marks as part of defendant’s name, to identify defendant’s services and products…. (emphasis added).

This pleading is appropriate and correct for willful trademark infringement. Citi is not asking for all of the defendant’s profits, but all profits that flow from the use of Citigroup’s names and logos.  That’s a much, much smaller pool (and almost impossible to prove).

I’m not usually one to valiantly defend the big, bad bank from a bit of bad publicity, but I think in this instance, Citi’s gotten an unfair shake.

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A cease and desist letter… from the White House?

A number of news articles and commentators have noted that the Obama Administration plans on enforcing the President’s trademark and/or publicity rights against shifty manufacturers who have put Obama’s face or “trademarks” on a variety of products.

Will this cafepress.com creator be getting a cease-and-desist letter from the White House?
Will this cafepress.com creator be getting a cease-and-desist letter from the White House?

As the commentators have noted, there are serious First Amendment issues when a government official tries to prohibit a citizen’s use of the most powerful person in the world on any product, whether T-shirt, doll, or thong.  Does the thong above just seek to capitalize on the President’s personal image (perhaps that’s protectable under state law rights to publicity), does it send a political message supporting the new administration, or does it send a political message that the new president should “kiss my *****”?  Does the speaker matter?  Does the profit motive (or lack thereof) matter? How in the heck does a newly minted president (and perhaps a newly minted IP-czar) figure out what to do?

Here’s my working list of standards that the Administration could consider:

  • Differentiate between the President and other members of his family. Images of the president by himself, probably not actionable.  There have been dolls of all sorts of presidents, and my guess is that Bush, Reagan, and Nixon (or their estate) didn’t get a license fee.  That’s the cost of being a president.  Likewise, use of the First Lady’s image can be used, so long as the company does not claim or imply that the product is specifically endorsed by Mrs. Obama.  Images and likeness of the kids are not to be used except in bona fide news stories.  (The TY Maila and Sasha dolls walk the line, but probably shouldn’t deserve a formal, legal response unless the dolls are made to appear like the First Children, or are marketed as the Obama children).
  • Differentiate between elements of the Obama 2008 “campaign brand” and actions, policies, and statements of the President. What was remarkable about the Obama campaign was the degree to which the campaign was successful at branding the candidate — as the best agent for “change,” “hope,” and progress.  Part of that campaign branding certainly was the Obama “O” logo.  It’s certainly possible that consumers would believe that a product with the O logo would be either put out by, sponsored by, or endorsed by the campaign.  And use of the campaign logos  (without any political commentary) should not implicate the “core” First Amendment “political speech” rights. (Of course, that begs the question of whether a government official should be policing IP rights of Obama as a candidate or the Obama campaign).

Perhaps this thong, made by "Herban 420 Wear" on cafepress.com, is more violative of the Obama rights than the one above?
Perhaps this thong, made by “Herban 420 Wear” on cafepress.com, is more violative of the Obama rights than the one above?
  • Differentiate between simple uses of the President’s image as a subject of the merchandise and attempts to state or imply that the president endorses a particular product. This is the trickiest standard to craft.  The basic standard is pretty easy.  If someone places Obama’s face on a package with a talking balloon saying “I endorse this product,” that’s probably actionable.  Likewise, using Obama’s face on a T-shirt sponsored by a non-profit with the words “OBAMA IS A BAD PRESIDENT,” definitely not actionable.  But at what point does a commercial entity (like, say, Pepsi) have the right to freeride on the Obama brand, imply that Pepsi is implicitly endorsed as the “soft drink of change,” or that President Obama is a Pepsi drinker?

Probably not this far:

(link courtesy of Marc Ambinder via Copyrights & Campaigns)

  • Finally, I’d suggest that anyone in the administration err on the side of not taking formal (or informal) legal action. The last thing this president needs is a whole bunch of whiny bloggers (like me) saying that publicity lawsuits by the president is counter to his policy agenda, unnecessarily money-grubbing, and downright hypocritical.

Anyone else have any good ideas for guidelines? (Oh, and Mr. President, if you need a contract attorney to write your cease-and-desist letters, I’m available.)

UPDATE: CNN has a great listing of the Top 10 pices of “Obama Merch” from the inauguration.

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