Category Archives: trademarks

Beer TM Today, Gone Tommorow: IPA Spat Goes Flat

“The room was humming harder, As the ceiling flew away, When we called out for another drink, The waiter brought a tray.” A Whiter Shade of Pale by Keith Reid, Gary Brooker (recorded by Procol Harum)

Surprise turned to Schadenfreude last week in trademark land when micro-brewer Lagunitas sued micro-legend Sierra Nevada for trademark infringement. The mark at issue? IPA–a common acronym for the style of beer called “India Pale Ale.” For years, Lagunitas’s IPA packages featured the letters IPA in large, highly stylized script. And Lagunitas saw red when Sierra Nevada changed the packages for its IPA to put those letters front and center:

beer

Scores of brewers offer up their takes on this hoppy variety of pale ale. And many call it “IPA.” So the odds that any one company could snag “IPA” as a trademark would seem long at best–not the makings of a good bar bet. But those long odds did not deter Lagunitas. In its lawsuit, the company focused on style, not substance. According to Lagunitas’s complaint in Federal court, the letters IPA weren’t the issue. Sierra Nevada’s offense was copying the large-letter format and style of Lagunitas’s IPA logo.

But in this era where microbreweries are giving the beer establishment a run for its money and craft beer isn’t just for hipsters anymore, the nuances of trademark law sometimes can get lost on the blogosphere. Rather than stirring up sympathy, the lawsuit sparked a brew-haha of criticism, with Twitter and other social media sites overflowing with outrage over the idea that one brewer could monopolize IPA. So even though that wasn’t Lagunitas’s aim, the brewer responded to the backlash with contrition reminiscent of a morning-after dose of reality. In a Twitter post, owner Tony Magee wrote: “Today, I was seriously schooled . . . Tomorrow morning we’ll drop the infringement suit.[and] get back to answering other questions.”

So Lagunitaas learned a valuable lesson. When it comes to IP rights for IPA, size apparently doesn’t matter.

QUOTE OF THE DAY: “I am a firm believer in the people. If given the truth, they can be depended upon to meet any national crisis. The great point is to bring them the real facts, and beer.” Abraham Lincoln

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Legal Eagle or Fairly Mocked Bird? Don Henley Wings Into Court

“He’s a tortured artist. Used to be in the Eagles. Now he whines. Like a wounded beagle. Poet of despair! Pumped up with hot air!’ Don Henley Must Die, by Mojo Nixon

Ask a serious music fan about Eagles and their singer Don Henley, and you’re likely to hear sentiments not so different from Mojo Nixon’s satiric verses in “Don Henley Must Die.” Sure, Mr. Henley has been outspoken in support of artists’ rights, testifying before Congress on a symphony of issues relating to recording industry practices. And his positions on environmental issues, reflected in his stewardship of the Waldon Woods Project, have been pristine.
So why do music fans like me–whose tastes swing between the Eagle’s forerunners and many of the band’s progeny–cringe at the thought of Don Henley–the man and his music? Why, when we hear him crooning on “The Boys of Summer,” do we immediately pray for an early frost; for the top to go up and wipers turned on in old Don’s California idyll? Could it be that the maitre d’ at the Hotel California, the head honcho in that band of Desperadoes, has seen one too many Tequila Sunrises and simply lost his sense of humor?
Judging from Mr. Henley’s latest legal foray, it does not take a 12-part podcast from NPR to conclude that when it comes to his “Right of Publicity” Don Henley has checked his funnybone at the courthouse door.
Here’s the story. For years, menswear companies from J. Crew to Joe A. Bank have sold long-sleeved, cotton shirts with crew collars and three or four button fronts. These casual shirts are called Henleys–taking their name from the rarefied world of rowing and regattas on the Thames near Oxford. And for decades, if not centuries, “to don” has meant the act of pulling on a uniform–such as a jersey and, yes, a Henley tee. So Englishmen may have been donning Henleys since Henry VIII serenaded Ann Boleyn with “Welcome to the Hotel Tower of London, such a lonely place.”
Henry, being king of court, could dispense bad tunes and swift justice however he wished when spurned by a wife or rival.
Don Henley, however, must resort to the U.S. courts to protect his name. And that’s what he did when he took offense at an advertisement by U.S. clothier Duluth Trading, a company known for edgy, sometimes cheeky ads for traditional clothing geared to tradesman and outdoor enthusiasts featuring Giant Angry Beavers, Groping Grizzlies, and Unruly Bushes. One ad, for Duluth’s “Long-Tail Tee,” even proposes a “Cure for Plumbers’ Butt.” Cheeky indeed.
But when, in advertising its long-sleeve button pullover shirt, Duluth urged customers to “don a Henley, take it easy,” the Eagles singer/drummer didn’t appreciate the humor. Instead of laughing with Duluth he sued Duluth–in California, where else? Henley alleges in his complaint that Duluth’s ad for Henley shirts deliberately invokes Mr. Henley’s name and his association with the Eagles, and are aimed at “exploiting the celebrity of Mr. Henley and the Eagles’ hit record.” Mr. Henley’s complaint also alleges that consumers, not Henley, are the real victims: “Large numbers of consumers . . . will unquestionably believe that Mr. Henley is associated with and/or has endorsed {Duluth]and its products . . .”
Duluth, for its part, seems to be taking things in stride, as its whimsical ads might suggest. “The advertisement is obviously a joke (something we presume not even Mr. Henley disputes),” Duluth wrote in asking the court to toss Henley’s suit. “It is self-evident that the use that was made of Mr. Henley’s name was a joke intended to highlight the coincidence that [he] shares his last name with a ubiquitous casual shirt and that his first name means ‘to wear.'”
So we have Duluth’s claims of Freedom of Speech and Expression lined up against Mr. Henley’s right to protect his name and image from being used to confuse or deceive consumers and his further right to control who may or may not exploit his name for commercial gain. There’s just enough traction on both sides that the court may have less than a peaceful, easy feeling in deciding who’s right. The outcome likely will turn on whether the court finds Duluth’s ad “transformative”–that is, did the parodist or satirist infuse the work with enough creativity and original expression to merit the First Amendment’s protection. In other words, will the judge or jury get the joke, and think the joke is clever enough to side with Duluth? Or will they find that the joke is just a tepid excuse for identity theft. Cases like this usually settle, so we won’t likely know how and where the California court would draw the line. But we can safely say, whatever the outcome, that Duluth Trading is a far cry from all those “Desperadoes” Henley and his compadres glorified through their music. Perhaps the irony is lost on Henley; the man who entreated notorious thieves and killers Frank and Jesse James to “keep on riding, riding, riding,” has a short fuse when it comes to Duluth using a clever pun to sell Henley tees. But after living in the fast lane so long, Henley apparently know only one way to react when provoked–take it to the limit–one more time.

UPDATE: On January 22, the Judge denied Duluth’s request to throw the case out based on its so-called obviously-a-joke-defense. In a terse ruling, the Judge wrote: “Even assuming for the sake of argument that the transformative use test of Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001) applies, Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.” Tranlation from legalese to plain-speak: Just because “Take it easy-don a henly” may be funny, doesn’t automatically mean Duluth is off the hook. To paraphraase “Take It Easy,” the Court did what Duluth didn’t want it to do: it said “maybe.”

QUOTE OF THE DAY: “It is the ability to take a joke, not make one, that proves you have a sense of humor.”
Max Eastman

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Hopper to Hopper: No Easy ®ide

Hopper

“Go make it happen.  Take the world in a love embrace.”  “Born To Be Wild” by Steppenwolf

Flipping through Comcast’s program guide last week, I came across a listing I could not resist.  “Easy Rider, ” the 1969 paean to motorcycles, pot, free love, and all the other accoutrements of the Woodstock era.  I was thirteen when the film came out, too young to see it in the theater, and definitely too young to join the tens of millions of slightly older members of my generation who claim to have been among the half a million strong who descended on Yasgur’s Farm that August.  And though I am sure I managed to catch a screening of “Easy Rider” at some point in my film-going career, most likely at a repertory house like DC’s long departed Circle, Key, or Biograph theaters, my relentless march towards the big 6-0 made it hard to remember whether I’d actually seen this counterculture landmark or was just hallucinating.  So, even though the hour was late, and the lure of “Frasier” reruns was nearly gravitational, I pressed OK on my remote and headed out on the highway with Peter Fonda, Dennis Hopper, and Jack Nicholson; it was a great ride for about fifteen minutes, as Fonda and Hopper cavorted with a tie-dyed,  braided clan of commune-dwellers, all  drawn to Fonda’s  character, especially the women-folk.  But as a troupe of itinerant actors begged to sing for their supper, my attention span sputtered, my craving for the two Doctors Crane too great. So I flipped back to the Hallmark Channel where I drifted off to the Kelsey Grammer’s mellifluous Brahmin accent. 

But Easy Rider is hard to forget, especially with the film’s director, the late Dennis Hopper, making today’s trademark news.  Hopper’s estate has applied to register HOPPER as a trademark for clothing and motorcycle related items such as helmets and goggles.  These articles no doubt would appeal to “born-to-be-wild-again” riders and who’ve traded their youthful hobbies for Harleys®. But they don’t appeal to DISH NETWORK, which claims that the estate’s HOPPER mark would create a likelihood of confusion with DISH’s ad-skipping DVR product which it calls THE HOPPER.  It remains to be seen whether consumers or the trademark office will agree with DISH’s beef or conclude that the owner of this HOPPER mark for DVRs jumped the gun.  But the late Mr. Hopper, whose career-defining roles spanned everything from Rebel Without A Cause to Blue Velvet, would no doubt take this turn of events with his trademark mix of enraged bemusement.   Paraphrasing one of his lines from Apocalypse Now, Mr. Hopper might say “The DISH TV man is clear in his mind, but his soul is mad.”

QUOTE OF THE DAY:  “Art at its most significant is a Distant Early Warning System that can always  be relied on to tell the old culture what is beginning to happen to it.”  Marchall McLuhan

 

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Onward Trademark Soldiers? Newsboys Cannot Stop the Rap Music

“Lately I’ve been thinking / What would the world do without the news / You wouldn’t know when wars were started / Or when they ended, win or lose.” Newspapers by Stan Ridgway

Yesterday’s IP blogosphere brought news of another battle of the bands involving trademark rights. Christian rockers the Newsboys did not turn the other cheek when they discovered a rap duo performing as New Boyz. They sued. And they lost. Bigtime. Oh, the Newsboys got their day in court all right, but it lasted just about one day, with the judge tossing the complaint as legally deficient. The Newsboys claimed that the rappers’ name New Boyz would confuse and confound the music buying audience. They railed that the New Boyz songs were sexually charged. They pointed to their own 1991 album title “Boys will be Boyz” as evidence that the groups’ names were too close for comfort. And the band that had honed its reputation in the realm of Christian Rock insisted that their music was not just for the religious set; they claimed “cross-over” appeal to the same “demographic” that listens to and downloads New Boyz allegedly salacious songs.

But the secular audience who mattered–the judge–was not buying it. He granted the New Boyz’s motion to dismiss the trademark infringement charges as implausible, concluding that the Newsboys’ “factual allegations of customer confusion do not include any factual allegations of confusion about the source of each band’s marketed music.” Influencing the court’s ruling was the focus of the Newsboys’ federal trademark registration–“live musical performances of a religious nature.” The two groups market their music to two distinctly different crowds, making the Newsboys claims of confusion and damage to reputation apocryphal, according to the court. In short, the judge hewed to the ancient adage “live and let live,” and stopped the trademark fight on a TKO–failure to plead enough facts to get to round 2.

This case joins a line of music themed trademark cases allowing similar names to coexist when used for different genres. Perhaps the granddaddy of all is Sunenblick v. MCA Records, Inc., 895 F. Supp. 616 (S.D.N.Y. 1995), aff’d, 101 F.3d 684 (2d Cir. 1996): where the jazz record label Uptown Records lost its trademark battle against popular rap record label Uptown, with the court concluding that the urban music geography was big enough for two Uptowns.

And of course, we only have to scan the bins of the few remaining brick and mortar record stores to see that bands with similar names often coexist without sparking nasty trademark battles. Pop-rocker Bryan Adams rubs shoulders with Alt. Country Rocker Ryan Adams, while The Who and The Guess Who have played in peace for nearly six decades.

So, while the ending of the Newsboys’ story may seem abrupt, the result, at least for now, seems to be in tune with history. If there’s a moral to the story, it may be this, it’s one thing for a band to claim that its music has crossover appeal, it’s another thing to prove it.

QUOTE OF THE DAY: “In the case of news, we should always wait for the sacrament of confirmation.” Voltaire

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Annals of Trademarks: Super 8 Superates?

“Don’t Want to Die in a Super Eight.” “Super 8” by Jason Isbell

Like me, you’ve probably driven by hundreds of Super 8 motels in your lifetime. Travelling up I-95 for hours on rides to Jersey and New York or on longer hauls southward to the Carolinas, Georgia, and down the endless Florida coast, the rectangular sign with big red 8, black “Super,” and bright yellow background is hard to ignore, even as it blends in with the melange of fast food oases and other budget-conscious lodges that dot the interchanges and byways of our endless ribbons of highway.

Full disclosure–I’ve never stayed at a Super 8 Motel. Never given the place much thought, really. Not because I’m some kind of snob when it comes to accommodations. Sure, I enjoy a swanky room at a Ritz Carlton or Monaco hotel. But I’m equally at home at a Motel 6, where Tom Bodett leaves the light on for us, or at a Holiday Inn, my parent’s motel of choice for our occasional family junkets. I’ve even stayed at a few La Quinta’s, which one of my musician friends, (who’s seen the inside of many a motel), insists means “next to Denny’s.” Somehow, however, my travelling stars and terrestrial GPS never aligned to guide me into the parking lot of a Super 8.

But last night, while drifting off to sleep with Jason Isbell’s evocative new song “Super 8” from his magnificent album “Southeastern” (buy it!), something about the name of this hotel hit me like an epiphany. I’d always assumed that Super 8 referred to the price of renting a modest room at one of the chain’s humble properties. And indeed, Wikipedia reports that the fare at the first Super 8, in Aberdeen, South Dakota, was $8.88 per night. With that price, and with its reputation for clean, no-frills convenience, it’s no surprise that Super 8 took off like a Chevy stock Super Eight zooming down the roads of Jersey, as in Bruce Springsteen’s “Lost In The Flood” from “Greetings From Asbury Park.” I had no idea, however, that Super 8, which now is owned by Wyndham Hotels, is the world’s largest motel chain. And while listening to Mr. Isbell lament that he “don’t want to die in a Super 8,” I suddenly realized why the name makes sense. Super 8, you see, is a play on the word “superate,” a verb that means “to outdo; to surpass; to exceed.” And with more than 2,000 properties and over 125,000 rooms in the US and Canada, there’s no denying that Super 8 Motels, (now known as Super 8 Worldwide) truly has done precisely as its name suggests.

QUOTE OF THE DAY: “I know bad things happen. Bad things happen. But you can still live. You can still live.” Line from the movie “Super 8,” spoken by character Joe Lamb, played by actor Joel Courteney.

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G®azin’ In the G®ass: Ex-Microsoft Exec. Plans to Brand Pot

“One toke over the line, Sweet Jesus, one toke over the line.  Sittin’ downtown at the railway station, one toke over the line.”  One Toke Over The Line, Brewer and Shipley

On a slow news day, word spread through the wire services that Jamen Shively, an ex-Microsofter, plans to launch a brand of marijuana in Colorado and Washington, the only two states that have legalized marijuana for recreational use.  He is looking for “seed money” for his new venture, and hopes to source his product from Mexico. Eighteen states and the District of Columbia have legalized marijuana for medicinal use. So Shively, who left Microsoft in 2009, sees a buoyant market for his brand, Diego Pellicer,  in both the recreational and medical markets.

Having brand names, logos, jingles, and slogans for marijuana products would represent quite a change from the current underground marketplace for pot.  Although marijuana reportedly accounts for billions of dollars in sales that are not subject to federal or state taxes, efforts to bring the industry out of the shadows and into the mainstream have consistently met strong opposition from a host of sources.  One can only speculate how the alchohol industry might feel about having to compete with marijuana for recreational drug dollars.  Yet. the fast food industry would presumably welcome a national presence for branded pot, which would keep business humming at late night drive through windows across the country.  Happy Meals indeed!

How would the USPTO feel about getting applications to register trademarks for pot?  The Lanham Act prohibits the registration of “immoral or scandalous” matter, such as vulgar double entendres. (Think: a Rooster-shaped lollipops with a brand that combines a barnyard name for the male chicken with the word “sucker”).   That restriction focuses on the mark, not necessarily the goods.  There is nothing immoral or scandalous about Shively’s proposed name, Diego Pellicer. But despite legalization and decriminalization of pot in pockets across the land, marijuana remains illegal under Federal law.  And a few years ago, the Trademark Office closed its doors to applications for marijuana marks after briefly flirting with the idea of allowing applications for medical marijuana brands. 

So what is an enterprising pot grower with a Microsoft background supposed to do to protect his fledgling brand?  He can look to the common law, which protects brands even when they haven’t received a federal registration.  With marijuana legal in Washington State, he might find a receptive (and relaxed) jury if called on to police his marijuana mark against an infringer. Think of it, a marijuana company “policing” something–only in the word of trademarks!

QUOTE OF THE DAY:  “‎Some of my finest hours have been spent on my back veranda, smoking hemp and observing as far as my eye can see.”  Thomas Jefferson.

 

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Pullet Surprise: Chicken Called FreeBird

“If I leave here tomorrow, would you still remember me?”  Freebird by Lynyrd Skynyrd

Let me first go on record as saying, “I am not Lynyrd Skynyrd fan.”  But I have some things in common with those men from Alabama that defined Southern Fried Rock.  They claim to have named the band after their gym teacher, a man named Leonard Skinner.  I had a gym teacher in the early 70s named Leonard Wiester who we called Lynyrd. And despite the lyrics of their enduring radio hit “Sweet Home Alabama,” which vilifies Neil Young, the band’s late leader Ronnie Van Zandt apparently had deep affection and affinity for Mr. Young, as do I.  And of course, like most music fans who have been attending live performances for decades, I am fascinated by the cult of Freebird–the most-requested song in the history of music.  The song title that the most obnoxious or drunk audience member (usually the same thing) predictable shouts out during a concert’s  most poignant or pensive lull, hoping to elicit mild and perfunctory amusement from his (and it’s always a “him”)  fellow concert goers, if not the performers (who must absolutely hate the Freebird intrusion).  The Freebird moment has long grown stale, if not putrid, to the point where its begun to wane.  And despite decades of louts abusing the title, the song itself remains immune from any spill-over stigma. 

Freebird– it’s the quintessential Southern Rock anthem. It  begins as a meandering, sentimental ballad in which a commitment-phobic man voices his wanderlust against the thin and brittle strains of a slide guitar.  Then, with the singer plaintively chanting “Lord knows I can’t change,” the tempo builds, then gallops into an extended three-guitar jam-packed with more virtuosic pyrotechnics than a Fourth of July fireworks extravaganza.

With Freebird, Skynyrd struck a chord that’s been sustained over five decades.  It’s a bravura performance  that cannot be ignored, even if we’d rather dismiss it as cliché or mock it as little more than redneck pathos drenched in melodrama.  Simply put, Freebird rocks.

So when I recently grabbed lunch at a local salad production line (a place that minces lettuce and fixin’s nearly into a puree), I was struck to see that their organic, liberated chicken had a brand name–FreeBird chicken.  Had Skynyrd gone into the poultry business?  Unlikely, I thought.  But still, using Skynyrd’s signature song title as a trademark without even paying chicken feed seemed oddly like plagiarism.  And there is precedent for giving famous song titles quasi-trademark status.  Years ago, Jimmy Buffett scored a legal win against a restaurant that wanted to call itself Margaritaville. Buffet’s trump card in that dispute was his plan to open his own  chain of restaurants called Margaritaville.  That fact, along with the distinctiveness of the name and the strong association between that fictional place and the musician who created it, gave Buffet a legal basis for calling “Margaritaville” his own. 

Could Skynyrd marshall similar facts if it wanted to ruffle some feathers and start a legal faceoff with the FreeBird chicken folks?  Surely, Freebird is associated as much with Skynyrd as “Margaritaville” is with Jimmy Buffett.  But what about the restaurant angle?  A quick internet search gave me hope.  A news story announced that the band would have a stake in a Las Vegas restaurant to be called “Lynyrd Skynyrd BBQ and Beer.”  And in fact, the joint opened in late 2011, earning some critical praise for both its food and rock and roll atmosphere.  But Skynyrd’s box office cache did not translate to the highly competitive Las Vegas restaurant arena dotted with lavish establishments manned by Michelin Star chefs.  Lynyrd Skynyrd BBQ and Beer declared bankruptcy and closed less than a year after it opened. 

So today, you can dine on FreeBird chicken if you don’t mind it all chopped up in a melange of lettuce.  But you can no longer dine to the strains of “Freebird” while enjoying deep-smoked savory meats and cold refreshing brews.  Does it rankle the members of Lynyrd Skynyrd that there’s a brand of chicken called FreeBird? Do salad craving diners hum Skynyrd songs in their heads while they munch on arugula, kale, and romaine laced with shreds of FreeBird chicken?  These questions are as imponderable as “which came first, the chicken or the egg?”   Just as we’ll never know the answer to the enduring question posed in Freebird–“If I leave here tomorrow, would you still remember me?”

QUOTE OF THE DAY:  “No bird soars too high if he soars with his own wings.”  William Blake

 

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