Tootsie Roll is a candy and the subject of a trademark lawsuit and a funny personal story.  First the more serious trademark tale.  Tootsie Roll is, of course, a well-recognized trademark. Can the makers of Tootsie Roll prevent a footwear company from using the name Footzyrolls?

What do you think?  Here is a picture of the products: 

The makers of Tootsie Rolls recently sued the company that makes Footzyrolls, footwear that can be rolled up.  Trademark infringement usually occurs when one party uses a trademark similar enough to another party’s mark that consumers confuse the two parties’ products or services. But can a case be made if the goods in question are very different, like candy and footwear?  Yes, if the mark being infringed is considered famous.  This is called trademark dilution.  For more information on trademark dilution, read this article.

Here is the personal Tootsie Roll story.  When I was about 14 years old our family took a vacation to Florida. One night on the trip we were hanging out in the hotel room. My parents had bought my younger sister and me a bag of the bite-size Tootsie Rolls. Like most siblings we had to make sure the bag was split exactly even.  One for her – one for me.  Two for her – two for me.  You get the point.  The division of the bag was completed successfully.

After I left with my portion of the goodies, my sister noticed something on the hotel room floor. A small brown object. She beamed with joy believing I had dropped one of my precious candies and that she could claim it as her own. She greedily picked it up and discovered it was not a Tootsie Roll at all; it was a dead cockroach!  She screamed. I laughed. Really hard. We still laugh about it now.

By the way, Roach Motel is a federally registered trademark for roach traps and not the high-quality hotel my parents selected.

The Texas Department of Transportation (TxDOT), owner of the mark DON’T MESS WITH TEXAS, recently sought a restraining order against the bookstore chain Barnes & Noble, Grand Central Publishing, Hachette Book Club USA and author Christie Craig over the sale of Craig’s romantic novel entitled “Don’t Mess With Texas“.  U.S. District Judge Sam Sparks denied the order and cited First Amendment rights, the relatively small amount of revenue involved, and the diversity between good and services.  Although TXDOT owns registration in the slogan for a wide variety of printed materials, books is not one of them.

For more details about this case, read the article, “Judge: Author Can ‘Mess with Texas’ All She Wants“.

The elite special forces of the U.S. Navy known as the SEALs have a nearly 50-year history of being the go-to teams for difficult small-unit military operations. So it came as no great surprise that SEAL Team 6 was the unit that stormed the compound of Al Qaeda leader Osama bin Laden on May 1, 2011.

A well-known company decided to capitalize on the attention given these brave heroes so soon after the incident, but faced with negative publicity, abandoned its efforts.

On May 3, 2011, three intent-to-use applications for the trademark SEAL TEAM 6 were filed on behalf of Disney Enterprises, Inc. of Burbank, California. The applications were for such diverse goods and services as clothing, toys, gymnastic and sporting articles, and even Christmas tree ornaments and snow globes. Although federal trademark registration requires use of the mark in commerce, applications can be filed prior to such use if the applicant has a bona fide intent to use the mark in the future. Once the mark has been deemed registrable by the examining attorney, the applicant has six months to allege use. For a fee, this deadline may be extended at six-month intervals up to a total three years, after which the application is considered abandoned. In 2010, a little more than half of all trademark applications filed with U.S. Patent and Trademark Office were intent-to-use, but to date less than 10 percent of those applications have matured to registration. By filing so early, Disney Enterprises was attempting to stake out its ownership of the mark for the goods and services claimed before anyone else does. But the public reaction to the applications were so negative that by the end of May, Disney filed express abandonments of all three applications. Several other applicants also filed for the trademark SEAL TEAM 6 or variations, and as of the writing of this post, at least four applications were still pending.

However, a search of the records reveals that Disney was not the first company to seek federal registration for the SEAL TEAM 6 trademark. In 2002, NovaLogic, Inc. of Calabasas, California applied for trademark registraiton of SEAL TEAM 6 for a variety of video game software and on-line computer gam eservices. In 2004, NovaLogic filed another application, this time for action figures and their accessories. Like Disney, NovaLogic filed its applications on an intent-to-use basis, and even though both applications were cleared for registraiton, the mark was abandoned for failure to allege use in the requisite amount of time.

Intent-to-use trademark applications can be a useful way to reserve a mark before it is used in commerce, but there are limits on how long that reservation can last. And once such an application has been abandoned, it clears the way for others to seek registration of the mark.

Michael Atkins recently published an interesting post on his “Seattle Trademark Lawyer” blog entitled “Ninth Circuit Changes Dilution Standard”.  Unlike trademark infringement, which requires a likelihood of confusion between two marks, trademark dilution only applies to famous marks. If a mark lessens the capacity of a famous mark to identify and distinguish good and services, it may be diluting the famous mark. In a case involving the stitch designs on the pockets of Levi Strauss and Abercrombie & Fitch jeans, the Ninth Circuit reversed the district court’s decision, stating that the two marks no longer need to be “identical or nearly identical”.  Atkins posted side-by-side drawings of the two stitch designs.  Take a look and draw your own conclusions.

What can happen when an international corporation goes after a local disc jockey at a college radio station in Amarillo, Texas for trademark infringement?  If the DJ is internet savvy and makes enough noise about it, the corporation may back down.

In the summer of 2010, Brian Basher, music director at KACV FM 90, Amarillo College’s radio station, began hosting a 2-hour weekly syndicated radio program called Hard Rock Nights that airs on over 20 affiliates and in three countries.  In order to promote this show, Basher registered the domain name www.HardRockNights.com.  In November of 2010, the Business Affairs Department of Hard Rock Café International (HRCI), owner of the cafés, hotels and casinos that bear the Hard Rock name, sent Basher a cease and desist notice by email. The notice, cryptically signed by “/ipenforcement/”, demanded that Basher transfer the domain name, take down all content, and cease and desist from registering any similar domain names or using any terms that are confusingly similar to HRI’s famous trademark.

Undeterred, Basher began using Facebook, Twitter, blogs and online press releases to publicize his predicament.  Fans and friends followed suit by drumming up support for the beleaguered DJ.  About a day after receiving the cease and desist notice, Basher received a second letter, this time from the Senior Director of Business Affairs at HRCI, stating that his intended use of www.HardRockNights.com “would amount to non-infringing use of the term hard rock.”  The second notice also revealed that HCRI “automatically issued, via its monitoring service provider, its cease and desist notice.”  Although the second notice thanked Basher for the “additional information” he provided as to how he intended to use www.HardRockNights.com, Basher insists that he provided no such information to HRCI.  It would appear that HRCI withdrew its notice in response to the negative publicity received in social media.

Automated software may be a cost effective way to initially identify potential infringers, but in this case, spitting out a cease and desist notice without first reviewing the evidence resulted in unwanted publicity and an avoidable retraction.

One of the more important requirements for maintaining a trademark is policing, the zealous pursuit of anyone who uses the mark without the owner’s permission. Unauthorized use, even parody in some cases, can tarnish the owner’s brand and cut into sales (See Trademarks & Parodies: The North Face versus The South Butt).  But what about when that use is in a totally unrelated field and the profits derived are spiritual rather than monetary in nature?

For the past several years, Father Luke Strand, an associate pastor at the Holy Family Parish in Fond du Lac, Wisconsin, has been driving around in his Volkswagen Beetle® with decals attached to the doors that read: God Squad.  Anyone who’s needed technical support for electronic equipment in recent years is probably familiar with the Geek Squad® vehicles that transport “techies” from local Best Buy® stores on their house calls. Because the Geeks likewise drive VW’s with a similar logo, Best Buy decided to write a cease-and-desist letter, demanding that Father Strand remove the infringing logo from his car. Father Strand has since complied with Best Buy’s demands.  Not totally unsympathetic to the priest’s mission, Best Buy offered to help him design a substitute logo that wasn’t as confusingly similar to their own.

What legal rights does Best Buy have in this case? According to records of the U.S. Patent and Trademark Office, BBY Solutions, Inc. (a subsidiary of Best Buy) is the owner of four federal registrations and a pending application for the Geek Squad logo.  The goods protected by these registrations include a variety of computer peripherals and accessories, and even t-shirts; the services protected include the installation and repair of a wide range of consumer electronics. But none of the registrations claim Christian ministry services.

Does this mean that Best Buy has no grounds to go after Father Strand?  Not necessarily.  U.S. trademark law provides certain rights against dilution of so-called “famous marks” when those marks are “tarnished” or “blurred” by unauthorized use, even if that use isn’t in the same area of goods or services as the famous mark. Tarnishing involves the use of a mark in a disparaging or unsavory way, like using the Coca-Cola logo on bubble gum made to resemble cocaine. Blurring refers to the lessening of a famous mark’s selling power through use with unrelated goods or services. Although there’s no apparent evidence that Father Strand tarnished the Geek Squad logo, a case might be made that over time, consumers could associate the Geek Squad less with fixing computers and more with saving souls.

Another possible ground for infringement involves trade dress. Had Father Strand affixed the God Squad logo on the doors of a Chrysler PT Cruiser® or a Nissan Cube®, Best Buy probably wouldn’t have a case.  But because the Volkswagen Beetle® is so closely associated with the Geek Squad, like the distinctive shape of the Coca-Cola® bottle, the “feel” of the vehicle could be considered trade dress. Maybe if the doors and roof of Father Strand’s care were white, an even stronger case could be made.

Any business has the right to defend its intellectual property from infringement. But when a Goliath like Best Buy goes after a David like Father Strand, the negative publicity can sometimes outweigh whatever benefit might be derived. Sometimes a fight with David is more fight than Goliath wants. And it doesn’t take a clergyman to know who ultimately won the first match between David and Goliath.

Intellectual property (IP) is a valuable asset, not only for the producers and creator of this intangible property, but also for the overall economy that benefits from the innovation and creativity this property represents.  However, the value of intellectual property is greatly reduced when unauthorized users are allowed to exploit this property through counterfeiting, piracy and other illegal activities. Enforcing IP rights in a global economy requires a coordinated effort among a variety of governmental agencies.  The federal government recently announced a plan to improve those efforts.

The 2010 Joint Strategic Plan on Intellectual Property Enforcement (JSPIPE), a 65-page document, was issued in June 2010 by Office of the Intellectual Property Enforcement Coordinator (IPEC).  The JSPIPE coordinates the efforts of eight government agencies: the Departments of Agriculture, Commerce, Homeland Security, Justice and State; as well as the Food and Drug Administration, United States Trade Representative and the Copyright Office.  A total of 33 Enforcement Strategy Action items are organized into six categories: (1) Leading By Example; (2) Increasing Transparency; (3) Ensuring Efficiency and Coordination; (4) Enforcing Our Rights internationally; (5) Security Our Supply Chain; and (6) Building a Data-Driven Government.

Click here to read the entire document.

Trademarks create an association in the minds of consumers between specific goods and the source of those goods.  Because of this, it’s important for trademark owners to police their marks for misuse by competitors who would profit from the goodwill created by the owner.  A common way of enforcing one’s trademark rights is through the cease and desist letter.  But some uses, such as parody, may be a defense to infringement and actually decrease the likelihood of confusion.  When the trademark owner ignores this difference and proceeds with a cease and desist letter, the result can be both humorous and embarrassing.

Such was the case with a recent dispute between the National Pork Board and Geeknet, Inc., an online store specializing in novelty items. On April 1, 2010, Geeknet began offering “Radiant Farms Unicorn Meat” for sales on its website www.thinkgeek.com, using the slogan, “Unicorn – the new white meat.”  A little over a month later, ThinkGeek received a 12-page cease and desist letter on behalf of the National Pork Board, owner of the internationally registered trademark “The Other White Meat”. In a tongue-in-cheek response in keeping with the April Fool’s Day spoof, Scott Kauffman, President and CEO of Geeknet, issued a public apology to the National Pork Board, stating, “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn.  In fact, ThinkGeek’s canned unicorn meat is sparkly, a bit red, and not approved by any government entity.”

According to U.S. Trademark Manual of Examining Procedure (TMEP), parody per se is not a defense to a claim of likelihood of confusion, but there are confusing and non-confusing parodies.  A true parody actually decreases the likelihood of confusion by creating a distinction in the consumer’s mind between the actual product and the joke.  Unlike a parody mark used on the same goods sold in the same channels of trade (see our earlier blog post, Trademarks & Parodies: The North Face versus The South Butt) the fact that unicorns are mythical creatures makes it less likely that anyone would confuse ThinkGeek’s non-edible novelty item with the edible meat promoted by the National Pork Board.

Parody marks can often be used as an effective way to capitalize on the goodwill in someone else’s trademark. But like the famous quote about cigars attributed to Sigmund Freud, sometimes a parody is just a parody.

Liz Claiborne, Inc. learned a costly lesson recently:  when going after a smaller company for trademark infringement, it’s not the “lucky” party that wins, but the one with the facts and the law on its side.

In July 2005, Liz Claiborne and its subsidiary Lucky Brands Dungarees, Inc. (“Claiborne”) sued a smaller company, Marcel Fashion Group, Inc. (“Marcel”) for trademark infringement, trademark dilution and unfair competition surrounding Marcel’s use of the trademark GET LUCKY, which Claiborne alleged infringed upon a number of federally registered trademarks owned by Claiborne and its subsidiary that contained the word “Lucky”.

Marcel countered in September 2005, claiming that by continously using the GET LUCKY mark since 1985, it, and not Claiborne, was the senior user of the mark.  Marcel also filed six counterclaims against Claiborne, to include breach of a May 2003 settlement agreement.  After nearly five years of litigation, the court awarded nothing to Claiborne and $20,000 in compensatory damages to Marcel.  And in an unusual ruling in trademark infringement cases, the court ordered Claiborne, the plaintiff, to pay an additional $280,000 in punitive damages to Marcel.

Trademark litigation can be an effective way to enjoin other companies from profiting off the good will that a trademark owner has built up in a mark.  But to succeed, there has to be more than mere “luck” on the plaintiff’s side.

A trademark can be anything that serves as a “source identifier,” that is, a device that makes an association in the consumer’s mind between certain goods or services and the source of those goods or services. When a shopper sees a box marked with the word, “CHEERIOS®,” it’s taken for granted that the box will contain O-shaped cereal of a known taste and quality made by General Mills. Likewise, when customers see the golden arches outside a fast food restaurant, they assume that they can walk inside and order a Big Mac®, and that burger will taste the same no matter where the restaurant is located. But words and logos aren’t the only source identifiers; sounds, colors, smells – and artwork – can all serve as trademarks for goods (or service marks for services). Artwork can be protected from unauthorized reproduction through copyright law, but when someone uses another’s artwork to create a false association regarding the source of goods or services, trademark law can protect the owner of the “artwork mark.”

Regina Pizzeria has been serving pizza lovers since its first restaurant opened in Boston’s North End in 1926. Expanding to other locations throughout Massachusetts and New Hampshire, Regina Pizzeria began to be more and more associated with the red T-shaped sign that originally hung in front of the North End restaurant. A painting of the North End street scene around the pizzeria displaying the sign has also been used in Regina Pizzeria marketing materials. As such, that artwork depicting the restaurant and its unique signage has served as a service mark.

But in 2009, another local pizzeria decided to capitalize on the good will Regina had established in its artwork mark. Capone’s Pizzeria and Prohibition Pub, with restaurants in nearby Pembroke and Weymouth, Massachusetts, began using artwork on their advertising and take-out menus that is alleged to be confusingly similar to the artwork that Regina used by merely replacing the word “Regina” with the word “Capone’s” on the sign in the picture. On the left is the Regina artwork; on the right is the artwork used by Capone’s:

Regina sent a cease and desist letter to Capone’s on December 7, 2009, and when Capone’s refused to comply, on February 9, 2010, Boston Restaurant Associates, Inc. (the corporate owner of Regina Pizzeria) filed suit against Gambino’s Restaurant, Inc. (the corporate owner of Capone’s) in federal court for infringement of the T-sign and artwork service marks (under both federal statutes and Massachusetts common law) and for unfair and deceptive trade practices (under Massachusetts statute).

From the moment a businessman hangs a sign outside of his establishment or uses other service marks in advertising or trademarks on the goods he sells, the public begins creating an association between the marks and the quality of the goods and services offered inside. Because it can take years to build up a good reputation, that association needs to be protected from others who would misappropriate it for their own benefit.