Beauty Marks

Destination: Todos Santos, Mexico

2010-03-11T19:58:00Z

We had the great fortune to join our friend Bert and some 30 of his nearest and dearest to celebrate his 50th birthday at the remote, secluded but spectacular Rancho Pescadero on the Baja Peninsula near Los Cabos. Good food, luxurious lodging, and margaritas galore to keep the conversations lively.

But a jaunt over to the small village of Todos Santos a few miles away provided just a tiny bit of trademark amusement, to wit:

Not sure what its official status refers to, but hey, it's Mexico. Have a margarita and go with it.

Have it at the Hotel California, in fact, with Hotel California tequila:

And oh yes, they played the song. My theory, never refuted, is that no matter where you go on this planet, you will hear that song.

And wholly off topic but just for fun anyway, is this to commemorate Milli Vanilli?

Hasta luego, Todos Santos.

The Family Jewels

2010-03-10T16:55:00Z

Sometimes, the risk of ridicule should override pride in the family name. You can see why here.

Thanks to Andrew Sullivan for the coffee-meets-keyboard incident du jour.

And in case you forgot . . .

(Yes, believe it or not, Onan is a surname. And today the company is called Cummins Onan. I'm getting the vapors.)

Descriptive AND Disgusting

2010-02-23T13:35:00Z

You thought Steve Martin was joking in The Jerk with "Cup 'o' Pizza"? Apparently someone else did not. For your consideration and to test your stomach's mettle, I give you K! Pizzacone. I guess the K was added because they've got to have something protectable on the trademark front, as the PTO has already figured out without too much difficulty that "pizzacone" is descriptive. Here's another lesson, kids: when your trademark identifies the thing you're asking for and can be used in the singular and plural, you've got a term bound for Genericness Land.

One review describes the pizzacone as having "a convenience-snack item texture, feel, and flavor." Buon appetito, folks - me, I'll stick with watching The Jerk.

H/t David Lebovitz

Mea culpa

2010-02-10T15:43:00Z

I have been slacking, and my number one fan (Hi again Dad!) is complaining about the blogging drought. And since he's snowbound today, I'm going to have to pull a rabbit out of my hat to come up with a blog post. But it's going to be random, I warn you. (I clearly don't have Nancy's celestial connections.)

First, a great band name: We Were Promised Jetpacks. Pretty much the halcyon cry of resentment over what the 21st century has failed to provide us. And pretty awesome Scottish rock, for a bunch of 21 year-olds.

Second, in the perfume strip deathmatch between Flowerbomb by Viktor & Rolf, and Flora by Gucci, Flora wins by a nose. But I find the music on the Viktor & Rolf site curiously enchanting. On to more of what's in this month's InStyle . . .

Nancy already raised the pharmaceutical naming issue today and in the past, but there's yet another name that's been gnawing at me - Pristiq. Although it's an antidepressant, I can't help thinking that it sounds a helluva lot more like a feminine hygiene product. Imagine the cross-marketing opportunities: "Feeling blue and not so fresh? Pristiq, now with intimate wipes." Okay, maybe not. I'll move on.

But not far. So maybe it's just me, or maybe I exaggerate for effect, but I get so confused when I hear the Brits talk about "loo rolls." I always think "isn't that the guy who sings 'You'll Never Find'?" But it's not, and in fact, Jezebel is reporting that the British have clearly achieved new heights in loo roll - i.e., toilet paper - luxury. That's right, the Waitrose supermarket chain is now offering loo rolls with cashmere fiber. With the world in an economic downturn, I hardly think that ultra-premium toilet paper is what Britain needs now, but I can also hardly say that I understand European toilet paper marketing concepts.

And finally, as this post is already in the toilet, I will leave you with some examples from FailBlog of how education has failed our country, or at least deprived people of the ability to recognize double entendres.

Rocky and Bullwinkle pic courtesy of Photobucket.

Where trademark law intersects with Prop 8 . . . say what?

2010-01-16T00:32:00Z

"Substantially indistinguishable" and "diametrically opposed"? I have to hand it to MoFo, the response to the clearly ill-advised cease and desist letter from counsel for ProtectMarriage is one of the finest I've ever seen, and is yet another reminder that you only want to send that cease and desist letter if you have no problems with its being published and thereafter ridiculed on the web. Read it for yourself; I simply cannot do it justice.

(Check out the comments on the Courage Campaign site - what do you think of the commenter who nobly volunteers to detail his confusion to ProtectMarriage's attorney? A plant? Trademark law exists to guard against a likelihood of confusion, not to insulate morons from their own intelligence deficits.)

H/t Dan Savage.

New Year Stuff and Nonsense

2010-01-08T14:32:00Z

A happy 2010 to all! Just a few observations here and there to get me back on my blogging feet again:

1. Kind of liking ideeli as the name of a "members-only shopping community," at least from a trademark perspective.

2. Drove past a Dairy Queen recently and noticed signage is different from what I'd remembered. Now it says DQ Grill & Chill:

Survey says: I love it! I think it's an excellent updating of the classic "Brazier food" designation (which I never failed to call "brassiere food"), and I think "Grill & Chill" is an excellent, suggestive slogan. It may be old news, but it's news to me.

3.     While I customarily counsel clients not to alter their trademarks or slogans because that can weaken them, I am not so doctrinaire that I cannot make exceptions. As you may know, I have previously discussed my passion for the Beaver Creek ski resort slogan "Not exactly roughing it." Well, Beaver Creek recently opened an outdoor grill-your-own restaurant called Mamie's Mountain Grill. The setting is lovely, the burgers top-notch, and the drinks ridiculously strong, at least until the bartender gets a jigger. But the best part is the banner at the entrance, where underneath the Mamie's name, the sign reads "Slightly Roughing It."

4.     Next, in the ever-popular and expanding "I do not think it means what you think it means" category, we have a few contestants: (a) Sophistry Skin Care; and (b) The Flow, "a glass journal for the flameworking community."

5.     In the trademark overreaching event, we have - I know, shocking - the Olympic Committee, here in Canada, going after Lululemon Athletica* for marketing "a cheeky clothing line that’s named 'Cool Sporting Event That Takes Place in British Columbia Between 2009 & 2011 Edition.'" One fine day I'll sit myself down without the dog nipping at my feet to write the definitive post on nominative fair use, plain old fair use, sponsorship confusion, licensing, and why I have no damn problem with my local supermarket setting up a display with a sign "Get your Super Bowl party treats here!" But until then I'll just continue to blurt out sporadic rants like this one.

6.     Finally, as for the recent dustup over the unauthorized use by PETA and Weatherproof of photos of Michelle and Barack Obama, respectively, in advertising, I believe that both uses were wrong and actionable; I don't see a free speech right to use a celebrity's image, even if that celebrity is a political figure, for a wholly non-political, commercial purpose, in the Weatherproof case. As for the PETA photo, I can think of many reasons for Michelle Obama not to want to be associated with PETA, regardless of her assertion that she doesn't wear fur. But all they really want is the publicity . . .

Once again, happy New Year to all.

H/ts to Nancy and to my dear friend and jewelry-maker extraordinaire Peggy, who didn't realize what a chuckle I'd get when I saw that she had become a fan of The Flow.

*Many moons ago, so long ago there's no record of it in the PTO database, I worked on a trademark application for Lululemon. Full disclosure and all . . .

Dilution?

2009-12-16T16:43:00Z

vs.

Discuss.

Extra credit: "Chivas," according to the goat soap's website, means "female goats." Sounds like an admission against interest as far as descriptiveness, no? Though perhaps not quite far enough to achieve genericness and run into the azucar morena problem.

(I just realized that this exam format must be a subconscious tribute to my sister's completion of one half of her legal education. Heaven help her!)

Meanwhile, happy Chanukah where appropriate; blogging may continue slopeside over the holiday break, but you never know, so I wish you a merry Christmas where appropriate as well, and a very happy New Year to all.

h/t Dooce.

Luscious, but lame

2009-12-08T14:49:00Z

I often find myself having to explain to clients that the first person to invent something that creates a wholly new category doesn't also get to protect the name of the invention. My favorite example is cookie dough ice cream - great idea, but the company that first created the taste sensation may not prohibit its competitors from calling their products by that name.

Moreover, under US trademark law, abbreviations for descriptive or generic terms are not entitled to trademark protection. For example, "TV" is no more protectable than "television," and "BLT" no more protectable than "bacon, lettuce and tomato." (Mmm . . . bacon . . . )

That's apparently not the case in France. One of the finest culinary joys you can experience in France is in the candy department: caramel au beurre salé , or in English, salted butter caramel. The caramel can be found all over France, not only in the form of candies, but also as an ice cream flavor or filling for a pastry (try the Aoki tarte featured here).

Self-styled "caramelier" and chocolatier Henri Le Roux claims to have created the delicious substance back in 1977. But he took the creation a step further, and sought and received trademark protection for the mark "CBS" to cover "Chocolats, glaces comestibles, crêpes, biscuiterie, gâteaux, sucreries, à base de caramel au beurre salé." Let's just say that that wouldn't fly at all here in the US, and it's a reminder that every country's laws regarding trademark protection vary.

Nonetheless, bravo, Henri: Keep the caramel coming even though you're overreaching on the trademark front!

H/t David Lebovitz

Miscellany from all around

2009-12-03T19:25:00Z

Apologies for the blogging drought. Thanksgiving and ski season, not to mention Chanukah (for which I'm woefully ill-prepared) are keeping me hopping already. So let's just call this post a potpourri of things that have flitted across the radar screen recently.

1.     Noted, in Plantation, FL, by my cousin Craig: a lawn service company truck bearing the name "Lawn Order."

2.     I've been agonizing over the new slogan adopted by the IFC movie channel, "Always, Uncut" for two reasons. First, the comma: Not needed and frankly, confusing. Because that brings me to the second point: Sorry, but given some of the offerings on IFC, "uncut" suggests a particular genre of movie that I am not entirely certain the channel wished to emphasize. Basically, are we talking editing, commercial interruptions, or circumcision here - and whatever it may be, why the damn comma?

Thank you for your patience. I have enough trouble with the idiotically-spelled Syfy channel's moronic "Imagine Greater" slogan; this one serves only to reinforce my conviction that television naming is the opposite of reasoned.

3.     When I first exercised my urge to write about trademarks.

4.     Speaking of slogans, I'm not always a curmudgeon about them. This weekend we're heading off to ski at Beaver Creek, where their slogan is "Not exactly roughing it." If ever a phrase expressed my philosophy of life, that's the one.

Photo of grooming cats from Beaver Creek website.

The PTO is not your personal bodyguard!

2009-11-17T22:48:00Z

When you've filed an intent-to-use trademark application, it's generally unwise to make a public statement to the effect that despite having filed the application, you in fact have no such intent whatsoever. But that's exactly what America's most recently humiliated politician's wife, Jenny Sanford, has done. Politico reported yesterday that Ms. Sanford, in a clearly misguided effort to "protect [her] family's privacy," filed an application with the PTO for JENNY SANFORD, for "Product merchandising to be sold at on-line retail store featuring clothing, mugs and other household items; stickers, decals, notepads." But when questioned by Politico about the application, Ms. Sanford replied that "there was never an intention to profit off this trademark or sell merchandise."

SAY WHAT? Sounds like a voidable application to me. (Check out John Welch's warnings about bona fide intent as a possible ground for opposition.)

Jenny, let's talk. (I've got your number). Look, your husband may be a philandering hypocritical nincompoop, but that does not give you license to waste PTO resources. Here is the deal: filing an application with the PTO is not the way you prevent the "inappropriate use" of your name and "product placement going forward" if you have no bona fide intent to use your name as a trademark. Having a trademark application on file when you have publicly admitted to your lack of such intent, although nowhere as titillating as saying you're hiking the Appalachian Trail when in reality you're shacking up with your Argentine mistress with flights paid by taxpayers, is still an abuse of public resources.

I'm sure that in reality Ms. Sanford filed the application at the suggestion of well-meaning but clueless supporters who probably said something like "you should copyright your name to protect it," perhaps to prevent against her name appearing in a domain name, but Glenn Beck just found out the hard way that that tactic fails in the face of the First Amendment. So please, it must have been a very troubling period for you, with everyone around you trying to give advice, but really, amid all the turmoil, I think this was pretty low on the priority list. Now that you've admitted to having no intent to use the mark as required to support a registration, the wisest course would simply be to let the application become abandoned. Just my .02.

An interesting side issue for trademark geeks is that this application provides yet another example of PTO inconsistency in prosecution. Where the mark at issue consists of what appears to be a person's name, and that name doesn't match the name of the applicant, the examining attorney is supposed to inquire whether the applicant is the person identified by the mark. (TMEP 1206.04(b) - Names Must Match. Consent may be presumed only where the name in the mark matches the name of the signatory. If the names do not match, the examining attorney must issue an inquiry. For example, if the name in the mark is J.C. Jones, and the application is signed by John Jones, the examining attorney must inquire whether J.C. Jones is John Jones. If applicant states that J.C. Jones is John Jones, consent is presumed. The statement that J.C. Jones is John Jones may be entered by examiner’s amendment, if appropriate.) Here, the applicant is Jennifer Sullivan Sanford, but the examiner issued no such inquiry. She was probably too excited to have found this newsworthy application on her plate.

Oh dear, I don't think you meant to say that . . .

2009-11-14T23:55:00Z

As my faithful blog readers (Hi Dad!) know, I have a lot of foreign language study under my belt. The French you're no doubt aware of, but I also studied Spanish, German, Russian and Hebrew, not to mention the few words of Bahasa Indonesia I picked up when I spent two months there in 1984 working for a law firm that represented Bank Indonesia. I consider my accumulated skills in those languages to be an asset for my clients: I have often steered clients away from marks that, while innocuous or nonsensical in English, are obscene or otherwise offensive in other languages.

These guys should've checked with me first:

Unless, of course, you consider Wiener or PeePee a good brand for a knife.

Wonderful - it's PH8!

2009-11-12T16:38:00Z

I caught news of a new clothing store called PH8 in the Denver Post today. My initial reaction was that they were trying too hard, so I thought I would check out their website to see what the story was. Well, so far they haven't disabused me of my first take:

PH8 brings together concepts that inspire balance, function and fashion, health and a positive vibe. The name takes its inspiration from the lucky Asian number 8, along with the symbol for infinity. The idea of fate is entwined with the brand, which looks to the future with optimism and endless possibilities.

While I was relieved to see that they'd spelled "its" properly, and certainly don't think this brand rises (or sinks, as it were) to the level of Teenflo for clothing, the explanation for the name is pretty tortured. On the other hand, PH8 is being launched by Bebe, (another brand for women's clothing I've never quite grasped) as a replacement for its Bebe Sport line. Yippee, more go-anywhere yoga wear!

Still, I wonder if whether in a struggling economy it's wise to tempt the Fates by calling them out by name . . . Nonetheless, for research purposes, I will undertake an expedition to their Park Meadows location to determine whether their clothing will, as they promise, enable me to "live life to its fullest." Somehow, if it all looks like this, I doubt it:

N.B. The title of this post, bland though it may seem, is out of a song from "How to Succeed in Business Without Really Trying" called "Been a Long Day," and I was proud to portray Smitty in the Fox Lane High School performance of the musical - long before the Broadway revival starring Matthew Broderick.

Excuses

2009-11-09T15:02:00Z

One of the many reasons for which I'm grateful to have married my husband is that we have the same, i.e., limited, interests in sports. We hate football, are mildly interested in basketball, will watch hockey only until the moment blood flows or teeth are broken - and love baseball. Marc is a Dodger (LA, not the real ones) fan, and although for most of my life I have followed the trials, tribulations and triumphs of the Mets, my practice is to become a fervent supporter of the home team wherever we've lived. So that means 15+ years as a Mariners fan, and the last two seasons following the Rockies.

Obviously, with such a background, I hate the Yankees. Few public figures disgust me as much as George Steinbrenner and Rudy Giuliani, and the latter's leering dentition creeped me out during the playoff season.

But what's a girl to do when the damn Phillies beat both the Rockies and the Dodgers? I couldn't simply turn around to root for them, so alas, I grudgingly allotted my cheers to the Yankees. Maybe it was just A-Rod's channeling Edgar Martinez at the plate, maybe it was sheer loyalty to my roots.

That doesn't mean I don't feel dirty, though. So in tribute to all that's icky and unsanitary about baseball, I offer you the baseball dugout mainstay, ever so appropriately named:

Speaks for itself

2009-11-06T14:04:00Z

No, Ugg-ly (rimshot).

(The wool one on the left is particularly gruesome.)

Destination: The darker side of Disney?

2009-11-04T20:11:00Z

A visit to Disney World would not be complete without numerous unnecessary purchases. Let's just say that we narrowly escaped coming home with a pith helmet in tow (and you know I'm using the term "we" generously). One of Disney's more charming inducements to purchase is its ten-year tradition of pin trading. You buy a lanyard and a character or attraction-themed pin, and the World is your trading oyster. Our oldest had started a lanyard on an earlier visit, and both girls were eager to acquire and trade pins this time, especially after I'd bribed them with the promise of a pin for each book completed by the end of the trip.

Disney's always busy cross-marketing, and this time there was a lot of Tinkerbell merchandise to be found in the stores - apparently Tinkerbell is the new "hot" character being promoted in her own movie and all over a wide variety of clothing and accessories.

Apparently Tink has undergone a metamorphosis to become less mute and decorative and more sassy and empowered. While in theory that's a laudable goal, the Tinkerbell pin I found suggests that she might have gone a bit overboard with the sassy. Yes, I think Disney's moved into at least the PG-13 realm with this one - Introducing Truckstop Hooker Tink:

Well, at least that's what we called her for the duration of the trip. But Morning-after Tink would work, don't you think? How about Amsterdam Red-light Tink (my precocious 13 year-old's suggestion)? Place Pigalle Tink?

For my money, she's way more fun than a pith helmet. But seriously, Disney, did you think about this? Did you look at her? If this is sassy, I don't think sassy means what you think it means.

Destination: Norway (actually, Epcot at Disney World)

2009-11-03T21:29:00Z

So this year's fall break took us to Disney World. With the opportunity to sample food and wine from around the world at the Epcot International Food & Wine Festival, I couldn't object. It was indeed an excellent trip, with a few trademark-related items of note.

Having a few languages besides English under my belt can be a blessing and a curse, I sometimes find. My mind twists the meaning of words, brands, and names among the languages in which I call myself a dilettante, until there's a veritable cacophony going on inside my head. So when we visited the Norway pavilion at Epcot (herring! herring!), I saw this candy bar and cacophony erupted:

I don't speak Swedish (turns out the shop does not discriminate among Scandinavian companies and their products), but I do speak French, and in French, "daim" means "suede." So I'm thinking the name either sounds like "damn" or means "suede," and I get so confused and then it's time for our dinner reservation and I didn't buy the daim thing and apparently, according to my food guru David Lebovitz, I've made a big mistake because this candy is just delicious.

Oh well, when Ikea opens here in a few years, I'll have my chance again. I'll just be prepared for the cerebral onslaught the name triggers.

Follow-up

2009-10-15T15:45:00Z

Was it only a year and a half ago that we experienced the trauma of the opening day of Heathrow's Terminal 5 in London on our way to Paris? Oy. In the words of Samuel Goldwyn, we've all passed a lot of water since then. Anyway, after that trip I wrote a post about the ACNE Jeans display we saw at Le Bon Marche in Paris, and for those who don't feel like clicking on the link to reread it, suffice to say I expressed great derision for the mark.

Well, lo and behold, the New York Times has an article today about exactly that Acne Jeans company. The Times, kinder than I am, merely dubs the name "off-putting." But what they do reveal is the etymology of the name: It is an acronym for "Ambition to Create Novel Expressions." Yes, take a deep breath. It's that lame.

My mission now? To create an award that will serve as the anti-Alt-0174 award for the crappiest name. Whatever it will be named, I think Acne wins, with bonus points for its clunky acronym.

Call it by its name, damn it!

2009-10-06T16:53:00Z

Rant alert! I just got an email from Entertainment Weekly inviting me to enter a contest. Big deal, I usually ignore these. But my hackles went up when I saw what the prize is: "An all-inclusive trip for two to TV's biggest awards show in 2010." IT'S THE EMMY AWARDS, STUPID! And it's idiotic to have to refer to the awards ceremony by some nonsensical generic name. Is the public going to be confused that the Emmy Awards are sponsoring the promotion? What if some other telecast thought it was TV's biggest awards show? Just as the NFL overreaches in its efforts to restrict usage of the "Super Bowl" name, and just as the Academy of Motion Picture Arts & Sciences tries to restrict use of "Oscar" and "Academy Award," so has the Academy of Television Arts & Sciences jumped on the overreaching bandwagon. Lawyers can come up with all the fancy trademark restrictions they want, but nothing changes the fact that Entertainment Weekly's use, if they made it, would be fair use - that is, use other than as a trademark, or, as Judge Kosinski defined it, "nominative fair use." The fact that ATAS and AMPAS and the NFL have come up with their complex scheme of restrictions on such use, and the fact that they have succeeded in scaring the hell out of the public (e.g., signs exhorting you to "stock up for the big game!" at the supermarket) doesn't mean they've got the legal high ground.

Just as I bitch about the blurring of logos on clothing worn by reality TV show contestants as not constituting trademark use, so will I continue to bitch about overzealous trademark owners and their counsel who attempt to restrict the legitimate flow of commerce and discourse. Govern yourselves accordingly.

Apple? Overreaching again?

2009-10-05T16:35:00Z

You be the judge.

As one of the commenters to the linked post suggests, Apple in the past has not been a paragon of originality. But that's not the point here. In this case, it is plain to see that the two designs at issue are not remotely confusingly similar, and neither are the businesses they designate. Had Woolworth's adopted an identical apple as its logo, perhaps an action would lie for dilution of a famous mark (and I am not in any way purporting to address Australian law). But that's not the case, and Apple once again reaches too far and sets itself up for criticism like this.

The preceding post was written on an Apple computer. So there.

Thanks to Uncle Paul for sending this my way.

Just some reminders . . .

2009-09-14T17:30:00Z

(1) Winning a claim of trademark infringement is a lot easier when there's some similarity between the marks; and

(2) Recipes and concepts are not copyrightable.

Rebecca Tushnet provides an excellent analysis of the court's findings in her summary of the Jessica Seinfeld cookbook decision (and do I have to say again that I hate when copyright infringement is referred to as plagiarism?) The side-by-side photo of the two cookbooks' covers says it all. I'm relieved that the court ruled the way it did.

But getting to the nitty-gritty: Camouflaging healthful foods to get nutrients into kids? Oy, have I nothing better to do with my day? We found that a steady diet of Food Network was the best way to get the kids to try healthful foods (Michael Chiarello was their favorite, for no identifiable reason) - as well as involving them in the cooking process. Of course, they now count sushi, steak grilled rare and Dungeness crab among their favorite dishes, but I'd prefer that to mac 'n' cheese any day, with or without cauliflower in it.

P.S. though to Ms. Seinfeld - "Get your kids eating good food" is about the weakest tagline I've ever heard. Did you really have to put the "tm" bug on it?

Edited to add that Marty has posted the decision at the Trademark Blog.