Tuesday, December 10, 2013

Martha vs. Not Martha. Fair Use?

Here's an opposition proceeding in the TTAB for those of you who like miniature Christmas Trees made of old magazines, tote bags made from old dishrags canvas, and generally anything Martha Stewart.  If that's your kind of bag to tote (#PunIntended #shameless), then read up on the latest opposition proceeding for Megan Dot Reardon, LLC's current trademark application.

The applicant's mark? "NOT MARTHA." The plaintiff? Martha. (Why yes, this is a neat way to make an old hat argument from new cloth facts...)
The Official Martha Stewart Blog - The Martha Blog
Martha to Applicant on making a recognizable mark:
Do It Yourself! (#BadPuns)

It will be interesting to hear what the applicant (Megan Dot Reardon, LLC) argues. Fair use? Section 33(b)(4) of the Lanham Act limits fair use to use of a term "otherwise than as a mark."  It would seem there are arguments, but the advantage probably rests with Martha.

Then again, topping Martha as queen of DIY never is... especially in this... fashion? (#PunCity #MyTrademark #NotReallyMyTrademark)
A needle felt purse is just the fashion
accessory I've been looking for!

Wednesday, December 4, 2013

#LikelihoodOfConfusion... for Blog Satire? #what??

You read the title to this post, you know the result: the plaintiff loses. At least, you knew the result if you know anything about Section 43 of the Lanham Act (15 USC Section 1125(a)(1)). #TrademarkLaw #LikelihoodOfConfusion.

Corsi's Novel
Here's the story in timeline form:
1. Demand for Obama birth certificate hits. #MediaCircus
2. Pundits debate his birthplace (enter stage right, Jerome R. Corsi and Joseph Farah)
3. News cycle gets real birth certificate, debate over.
4. Corsi and Farah, continue debating anyway, publish the book (see right) 2-3 weeks after No. 3.
5. Farah is lampooned by Esquire, which jokingly announces he's going to "pulp" all printed copies and refund purchases.
6. Corsi and Farah pursue Likelihood of Confusion claims, among others.
7. They lose.
8. They appeal.
9. They lose again. (case name: Farah v. Esquire Magazine, Court of Appeals, Dist. of Columbia Circuit 2013)

Why did they lose? Because Likelihood of Confusion (here, argument was that people are too gullible to understand satire isn't truth, ala "The Onion" used as a news reference) requires that the confusing use be "on or in connection with any goods or services." Not too complicated. Use on satirical blog post that doesn't advertise any particular good or service and is not use in connection with a good or service. #DeductiveReasoning. As the court said "[e]very circuit court of appeals to address the scope of these provisions has held that they apply only to commercial speech" (emphasis added).

It's right there in the statute, guys.

Of course, I should not expect the plaintiff to see the obvious dismissal for failure to state a claim (Fed. R. Civ. P 12(b)(6)) given the political climate and cross-aisle vitriol. Of course, it could just be a fundamental misapprehension of the rights and remedies they had by publishing a hot topic novel about what is seemingly an incontestable truth (the birthplace of the Leader of the Free World being within the United States of America). So, maybe I should temper my expectations.

After all, not everybody understands the law...

Thursday, November 21, 2013

The Cow Says "Moo," the Infringer Says "Yo, Adrian"

For those of you who read my post about Starbucks' trademark suit loss to the little Black Bear, and really were hoping to see Starbucks come out on top because, let's face it, that coffee is so scrumptious (hashtag deliciousness), well I've got some good news for you!
Starbucks' 2013 Holiday Season Offering
No, I'm not talking about that cold-weather medicine (hashtag spoonful of sugar) pictured above, I'm talking about some trademark law rebound for Starbucks: a victory over an even smaller foe. This suit came against a single-store coffee shop in Bangkok, "Starbung Coffee." Take your sympathies on the owner, Damrong Maslee, lightly though, because unlike Black Bear's "Charbucks" mark, this one, well, is a no-doubter:
Can you spot the differences? Circle the differences you see in red.
Hint: there are only about 5 on the marks themselves.
Maslee has since changed the name of his shop to Bung's Tears; I'd speculate that this was a slight at Starbuck's causing Maslee all this distress (hence the tears), except that my favorite part makes it pretty difficult to back up that theory. That's because the trademark infringement claims by Starbucks made Maslee somewhat of a local celebrity, "which has apparently been good for business."

Ever seen such a happy loser?

Monday, November 18, 2013

Starbucks battles Black Bear over Trademark Law (Likelihood of Dilution)... and loses

This court clash was a classic David v. Goliath; this time a trademark law case in the 2nd Circuit Court of Appeals between Starbucks and Charbucks. In finding that there was no likelihood of dilution, the court noted the factors for dilution by blurring:

  • (i) The degree of similarity between the mark or trade name and the famous mark.
  • (ii) The degree of inherent or acquired distinctiveness of the famous mark.
  • (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
  • (iv) The degree of recognition of the famous mark.
  • (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
  • (vi) Any actual association between the mark or trade name and the famous mark.
The court found that there was no likelihood of dilution by blurring. The full case name is Starbucks Corporation v. Wolfe's Borough Coffee, Inc., 12-364-cv (2nd Cir. 11-15-2013), check it out if scholarly reading is your bag, otherwise check out this link to a Reuter's recap.

As with all cases, it's complicated, and some case history is helpful (like knowing the 2nd Circuit previously found no likelihood of confusion, and thought the survey evidence was insufficient, and that there was no bad faith in adopting the "Charbucks" mark). 

That said, doesn't this sound like a bad decision? (pun intended).

Think it's wrong? Think it's right? Tell me! @ajswjTM and @IPLawTalkinGuys on twitter, Hamilton IP Law, PC on facebook.

I guess the ultimate lesson is, don't mess with bears, no matter how little.