Recently in Trademark Category

Old Advertising Characters Revived...

... for political satire.

NewTeeVee reports: Super Bowl Ads of Yore Revamped for '08 Election: "Now, with the election just a week away, we've come full circle with two more ads from Super Bowls past revamped for online political purposes. Office Linebacker 'Terrible' Terry Tate has returned to put the hurt on fools who don’t vote, while the 'Wassup' guys guys have suffered every great malady our nation has gone through over the last eight years."

Wall Street Journal, 'Whassup' Comes Out for Obama - WSJ.com: "The parody is raising eyebrows in ad circles, partly because Budweiser's maker, Anheuser-Busch, can't do much to stop it. In a departure from normal industry practice, neither Anheuser nor its ad firm, Omnicom Group's DDB Chicago, own the Whassup slogan or concept. Instead, the brewer paid Mr. Stone roughly $37,000 to license the idea for five years. That deal expired three years ago, says Mr. Stone, who appeared with his buddies in several of the Budweiser Whassup ads."

Scrabulous-less

Michael Madison, Madisonian, has a thoughtful look on the Scrabulous and the online reaction, The Stakes of Scrabulous, "Still, on balance, I think that Hasbro deserves a win if the case were litigated to judgment; the name 'Scrabulous' would likely be found to be confusingly derivative of 'Scrabble,' and the boards do resemble one another, though they are hardly identical. Still, if the producers of Scrabulous changed the name to 'CrosswordMania' and changed the color scheme of the Board, then they would be on safer ground. Not to say safe ground altogether, but safer. Hasbro’s IP rights don’t extend to the idea of online crossword games."

In its complaint against the Scrabulous developers, Hasbro describes the Scrabble board:

19. The SCRABBLE® playing board has bonus squares that give the player who puts a word on them double or triple letter scores and double or triple word scores. The square are colored, marked, and arranged as shown in Exhibit 1.
    A. The center square is rose colored with a black star and the first player to take his or his turn receives a score that is double the value of the tiles.
    B. The 4 corner squares and the 4 squares that are mid-way along each side (that is, that are 7 squares from the corners) are deep red in color and are labeled and award the player a "triple word score." There are 8 total "triple word score" squares.
    C. Starting with the tile diagonally closer to the middle of the board for each corner "triple word score" square, the next four squares diagonally toward the center of the board are rose in color and are labeled "double word score." There are 16 total "double word score" squares.
    D. "Triple letter score" squares are dark blue and "double letter score" squares are light blue. They form an "X" pattern through the center of the board and pyramid shapes off the sides of the board with the dark blue "triple letter score" squares forming the outer points of the "X" and the second level of the pyramids. There are 12 dark blue "triple letter score" squares and 24 light blue "double letter score" squares.

Here is a Scrabble game:

This is a Scrabulous game:
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Here is what the licensed version of Scrabble on Facebook looks like. Note that the colored squares are different colors than the board game. What does this mean as far as the distinctiveness of the Scrabble trade dress?
scrabble.jpg

What about a game that shares the word list and tile distribution and number of places on the board, but has a different look and places the bonus squares in different locations on the board? What if this game is configurable by the user and gives the game players the option to set it up like a Scrabble board but doesn't offer the Scrabble setup as a preset?

That's what the creators of Scrabulous have done with their new game, WordScraper. Is there any likelihood of confusion here? Copying?

wordscraper.jpg

Scrabbled

I was too busy playing Scrabulous last week to blog about the complaint filed by Hasbro against the creators of Scrabulous, the online word game that happens to share the board layout and rules of play of Scrabble.

Complaint in Hasbro v. RJ Softwares (08cv06567, NYSD filed Jul. 24) for copyright infringement, trademark infringement, trademark dilution and common law unfair competition.

Read this document on Scribd: hasbro v scrabulous

In addition, Hasbro served Facebook with a DMCA takedown notice.

Facebook forwarded the takedown notice to the Scrabulous developers who prevented access to the application for addicts users in the US and Canada.

scrabulous-down.jpg

In the NY Times Bits Blog, Brad Stone reports Hasbro Notches Triple-Word Score Against Scrabulous With ‘Lawsuit': "'Hasbro has an obligation to act appropriately against infringement of our intellectual properties,' said Barry Nagler, Hasbro’s general counsel, in a statement. "We view the Scrabulous application as clear and blatant infringement of our Scrabble intellectual property, and we are pursuing this legal action in accordance with the interests of our shareholders, and the integrity of the Scrabble brand.'"

Wendy Seltzer argues that a game like Scrabble is not a sufficiently creative form of expression to be copyrightable. Scrabbling for Legal Rationalism: No Copyright for Games: "So the 'methods of operation' — the rules of the game, should be uncopyrightable no matter how intricate. Their particular expression in an elegantly written manual may be protected, but another is free to extract the underlying ideas and rewrite the manual to describe an identically played game."

At Madisonian, Frank Pasquale also wonders about whether copyright protects the Scrabble board, but that the similarity between the marks seems like to lead to a likelihood of confusion, Absolutely Scrabulous: "But that still leaves the elephant in the room%u2013the substantial similarity between Scrabulous and the mark Scrabble. But in keeping with the theme of this post (of pushing defenses here to the breaking point)%u2013could Scrabble be generic? I know that%u2019s doubtful, but I also have a sense that there is no other way that people refer to the %u201Cgame that involves seven lettered tiles played for points on a board that includes double and triple letter and word scores.%u201D On the other hand, if you asked the %u201Cman on the street%u201D if Scrabble is the name of a word game or the name of trademark for a company%u2019s (version of a) word game, it seems like the latter interpretation is at least as likely as the former for someone with an elementary knowledge of the law."

More than anything in the short term, the takedown will be the best promotion for Hasbro to drive traffic to the licensed Scrabble application (which, surprisingly, is dreadfully slow and ugly compared with the simple and relatively elegant Scrabulous application.)

Joseph Abboud: person v. trademark

JA Apparel Corp. v. Abboud (SDNY, June 5, 2008)

Ron Coleman, Likelihood of Confusion, Mad Abboud you: "It’s worth taking a look at because just reading the bare-bones fact pattern of it above, this doesn’t look like a hard case. But perhaps the juicy part of it slowed things down — such as how Abboud, not unsurprisingly for those creative types, showed up at JA Apparel after they’d bought his name lock and stock and barrel (more below) along with his clothing line and promptly found himself ‘unable’ to work with the company due to, yup, creative differences."

Rebecca Tushnet, 43(B)log, jaz hands: Joseph Abboud loses name to company he sold: "In a long and thorough decision, the magistrate judge concluded that noted fashion designer Joseph Abboud had transferred all rights to use his name in a commercial manner to JA Apparel, a menswear label he launched in 1987. He sold the label in 2000 for $65.5 million, along with the associated names, trademarks, etc., including ‘Joseph Abboud,’ ‘designed by Joseph Abboud, ‘JOE,’ ‘JA,’ and similar or derivative terms."

Wall Street Journal, Abboud Loses Trademark Case: "A federal judge ruled that menswear designer Joseph Abboud, who sold his trademark and later left the company that owns it, can't use his name to promote a new line he calls 'jaz."

Trademark in 3D

The Wall Street Journal, Shape of Things to Come: "On Jan. 8, the U.S. Patent and Trademark Office granted Apple Inc. a trademark for the three-dimensional shape of its iPod media player. This was more than a recognition of an innovative product design. It also was Apple's capping piece in a multiyear marketing and legal campaign that pushed intellectual-property rights to new competitive advantage for the company."

US TM registration #3365816: "Color is not claimed as a feature of the mark. The mark consists of the design of a portable and handheld digital electronic media device comprised of a rectangular casing displaying circular and rectangular shapes therein arranged in an aesthetically pleasing manner. The matter shown in broken lines, indicating the location of device connectors, is not part of the mark."

On her Myspace blog, singer Lennon Murphy writes, Getting Sued by Yoko, "Yesterday I received notice that Yoko Ono had filed a law suit against me, asking for a cancellation of the trademark that I own for the name "Lennon." This could very well mean the career that I have worked so hard at, the one you all have believed in, may come to an end."

Not surprisingly, this was picked up in the mainstream music press.

NME, "Yoko Ono sues singer for being called Lennon"

Rolling Stone: "Yoko Ono is suing Lennon Murphy, lead singer of the band Lennon, for intentionally exploiting the name of her deceased husband, John Lennon."

Not exactly. Ono has not sued Murphy to prevent Murphy from performing under the name LENNON. Ono seeks to cancel Murphy's federal registration of the mark LENNON by filing a Petition for Cancellation with the Trademark Trial and Appeal Board. Ono is not suing Murphy to prevent Murphy from performing music as LENNON (in this filing.)

What Ono seeks to deny Murphy of is the exclusive right to perform and sell music under the name LENNON. Ono is not attempting to prevent Murphy from performing and engaging in commerce under the name LENNON, but to prevent Murphy from preventing other Lennons to use the name in commerce.

Murphy's application was initially refused under §2(e)(4) of the Lanham Act for being "primarily merely a surname." After the application was denied on the basis of it being merely a surname, Murphy's attorneys petitioned that the name LENNON had acquired secondary meaning. One of the ways in which a mark can acquire secondary meaning is through use in commerce for five years (in Murphy's case, starting in 1997). Murphy was granted Federal trademark registration #2676604 in 2003.

Ono's cancellation petition argues that if there is any secondary meaning in the LENNON mark relating to pop music, that it is to John's music that it refers. If an average consumer goes to a music store and sees a album bearing the mark LENNON, is that consumer more likely to associate that album with Lennon Murphy than John Lennon, Julian Lennon, Sean Lennon or anyone else in the world named Lennon?

If she wins this action, Ono will have simply broken up Murphy and her trademark registration. If Ono actually seeks to prevent Murphy from performing and recording under the name LENNON, that is a different complaint in a different court.

And it does not seem like Ono would do that. Boing Boing posts a letter, Yoko Ono: No, I'm not suing Lennon Murphy over "Lennon."

It's the first annual Likelihood of Confusion SUPER BOWL® Trademark Watch and Contest: "Every year it’s the same thing: Several weeks before the Super Bowl®, people and businesses wishing to promote events related to the timing of the biggest sporting event of the season — the Super Bowl®, that is, the National Football League’s championship game — go through all sorts of contortions to avoid saying the trademark-protected words, Super Bowl."

Fashion First

The Wall Street Journal reports about the trademark problem Joseph Abboud faces when he goes into competition with Joseph Abbod: What's in a Name? Not Much, He Hopes: "When designer Joseph Abboud announces his new menswear label today, he'll face an unlikely competitor: Joseph Abboud. The 57-year-old designer, whose penchant for earth tones and textured fabrics made him a favorite of professional men in the 1990s, sold his trademark for $65 million in 2000. So when he launches his new line, which will include $3,000 shearling coats, he won't be able to use his name. Instead he's chosen the name jaz, which he says is a riff on jazz."

Susan Scafidi, Counterfeit Chic, A Rose By Any Other Name: "Still, why do so many fashion designers, in particular, risk having their names amputated? Surely the pleasure of seeing the letters printed on a few inches of ribbon isn't that compelling."

McDowells' Golden Arcs

In-N-Out claims Utah burger joint is a ripoff. Is the use-in-commerce analysis affected by the fact that some of the marks are used on a secret menu?

Apple, DRM and Digital Distribution

A few European countries, including Norway, Germany, and France, are considering requiring Apple, Inc. to make the songs sold on the iTunes store playable on music players from other manufacturers. ARS Technica reports: iTunes DRM called out by France and Germany: "Apple is being challenged once again to open up its DRM by consumer groups in Europe. This time, Germany and France have joined the slowly-growing number of countries who are asking Apple to allow the protected songs purchased from the iTunes Store to be played on other music players besides the iPod. Norwegian Consumer Ombudsman Bjoern Erik Thon told the Associated Press that France's consumer lobby group, UFC-Que Choisir, and Germany's Verbraucherzentrale are now part of the European effort to push Apple into an open DRM system, with more countries considering joining the group"

Steve Jobs responds in an essay on Apple's web site, noting that use of DRM is at the requirement of the copyright owners who license music to the iTunes store. Apple would be happy to sell unprotected songs: Thoughts on Music:

To begin, it is useful to remember that all iPods play music that is free of any DRM and encoded in ‘open’ licensable formats such as MP3 and AAC. iPod users can and do acquire their music from many sources, including CDs they own. Music on CDs can be easily imported into the freely-downloadable iTunes jukebox software which runs on both Macs and Windows PCs, and is automatically encoded into the open AAC or MP3 formats without any DRM. This music can be played on iPods or any other music players that play these open formats.

The rub comes from the music Apple sells on its online iTunes Store. Since Apple does not own or control any music itself, it must license the rights to distribute music from others, primarily the ‘big four’ music companies: Universal, Sony BMG, Warner and EMI. These four companies control the distribution of over 70% of the world’s music. When Apple approached these companies to license their music to distribute legally over the Internet, they were extremely cautious and required Apple to protect their music from being illegally copied. The solution was to create a DRM system, which envelopes each song purchased from the iTunes store in special and secret software so that it cannot be played on unauthorized devices.

Jobs goes on to explain that Apple has refused to license its Fairplay DRM system because doing so would make the scheme less secure. Because licensees would need to know how to decrypt the protected files, allowing third-parties access to the Fairplay code would make the scheme much more likely to be cracked. Apple would be happy to sell music without DRM, if only the Big Four would be willing to let Apple sell unprotected files.

The major labels seem to be getting closer to attempting large scale use of digital distribution without DRM. From MIDEM, Victoria Shannon reports in The NY Times: Record Labels Contemplate Unrestricted Digital Music: "As even digital music revenue growth falters because of rampant file-sharing by consumers, the major record labels are moving closer to releasing music on the Internet with no copying restrictions — a step they once vowed never to take."

Independent labels are already selling unprotected MP3 files through eMusic. Other Music, here in New York City, is set to launch a digital download store selling indie music in high-bitrate, unprotected MP3 format. Eliot Van Buskirk, Wired News interviews: A Real Music Store Sprouts Online: "Other Music [will take] its handpicked approach to music sales online with the launch of its own digital music store. Located at digital.othermusic.com, the site will stock high-quality MP3s from Pitchfork-friendly bands, without using digital rights management of any kind."

Yesterday, Apple, Inc. and Apple Corp. entered into a new agreement concerning the Apple trademark. In this new Agreement, the Jobs-helmed Apple, Inc. will own the Apple mark and license it to the Beatles' Apple Corp. Terms of the deal were not disclosed.

iPhone

For years, the rumor mill has expected Apple to release a mobile phone, with the name assumed to be "iPhone," to be consistent with the iMac and iPod.

Cisco owns a federally registered trademark for iPhone and introduced new VoIP phones in the iPhone brand at the end of last year: Cisco -- not apple -- announces iPhone branded VoIP phones.

Today, Apple introduced its iPhone device, which is a mobile communicator and media player that also happens to run a version of OS X.

I'm ready to line up to buy one.

Not surprisingly, Reuters reports that Apple and Cisco are preparing to enter a licensing agreement over the mark: Cisco expects Apple agreement on iPhone trademark: "Cisco spokeswoman Penny Bruce said the two companies had been in discussions, and it believed that Apple intends to agree to a final document and public statement concerning the trademark."

In addition, the company is now known as Apple, Inc and no longer as Apple Computer, Inc., reflecting the move beyond the computer into consumer electronics.

Trademark Dilution Act

The Trademark Dilution Act was signed into lawMoseley v. V. Secret Catalogue, Inc. that in order to prevail on a trademark dilution claim, the plaintiff must establish the existence of actual dilution, not simply the likelihood of dilution. But the bill reshapes trademark dilution law

Eric Goldman, Trademark Dilution Revision Act of 2006: "Ostensibly, this law was intended to overturn the Moseley case's requirement that plaintiffs show 'actual dilution' instead of a 'likelihood of dilution.' However, the act morphed into an omnibus dilution revision effort that reshapes dilution law on a number of fronts. The result is a mixed bag--there is a little good news mixed in with the bad."

Attorney(s) at Kaye Scholer: The Trademark Dilution Revision Act of 2006: A Major Overhaul of Federal Trademark Dilution Law: "On October 6, 2006, the President signed the Trademark Dilution Revision Act ("TDRA"), a significant revision of federal trademark law intended to clarify and amend the scope of protection afforded to "famous" marks under Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c). While it addresses and resolves a number of issues that have arisen since the introduction of dilution protection to federal law in 1995, the TDRA, nonetheless, has the potential to create numerous other issues, thereby making it likely that dilution will remain a controversial and evolving aspect of trademark law for many years to come."

William McGeveran, Info/Law, Trademark Dilution Revision Act Becomes Law: "The dilution concept has long been criticized for separating a trademark claim from its conceptual moorings: in theory, the principal interest protected by trademark law has been to prevent consumers from being confused. But that theory has been highly attenuated for a long time, so maybe it is better to admit that trademark law now protects big companies’ brand names for their own sake."