America-Israel Patent Law

Let’s Go Brandon? Or Let’s Go, No-Brand: Some Thoughts On Trademark Protection From a Non-Trademark Practitioner

If you’re up on current events in the USA, skip to the next paragraph.  If you don’t follow cultural and political developments in the USA, then you’re unaware that the performance of the current occupant of the White House has led crowds at certain events – notably some college football games and some automobile races – to shout, in 4/4 time, “F**k Joe Bi-den” (clap, clap, clap clap, clap). Recently, at a race won by a driver named Brandon, with the FJB chant clearly audible in the background, a TV announcer wearing a straight face told the viewers that the attendees were chanting “Let’s go Brandon”.  Thus was born a polite way for critics of Mr. Biden to express their displeasure with both him and the various media outlets that seem unable to find anything wrong with his mental acuity or his administration’s policies, without actually uttering what many consider to be a profanity.

The popularization of the phrase has caused some consternation (ok, apoplexy might be a better word) among some of the self-appointed cognoscenti working for tabloids like the New York Times and the Washington Post, who seem to have quickly forgotten some of the rhetoric used by their colleagues and others with reference to Mr. Biden’s immediate predecessor.  This popularization has also, predictably, resulted in the availability of items like hats, t-shirts, flags and bumper stickers bearing the phrase “Let’s Go Brandon”. And wherever you find commerce in a phrase, you can be sure that someone is going to try to cash in by protecting the phrase using trademark or copyright law. Or in the case of political speech, to try to suppress that speech, by asserting rights in the phrase (recall Hillary “I am a dingbat, hear me roar” Clinton’s attempt to stifle the production of paraphernalia mocking her campaign slogan in 2014, or a similarly unsuccessful attempt in 2015 by one Donald “Don’t Call Me Thin-Skinned” Trump to silence critics).

So, surprise, surprise (not!), as of today there are six pending applications for US trademark registrations for the phrase “Let’s Go Brandon” (some with an exclamation point):

For those of you who don’t want to look up each application, here’s a summary:

No.	applicant, location	class	description	first use/first use in commerce	filed
97061110	NovelTEA Gifts LLC, Wisconsin	25	“Clothing, namely, sweatshirts, T-shirts, tank tops, long sleeve shirts; headwear, namely, caps and hats; baby clothing, namely, one piece garments; children's clothing, namely, t-shirts”	02 Oct /05 Oct 21	05 Oct 21
97059307	NovelTEA Gifts LLC, Wisconsin	16	bumper stickers	02 Oct/04 Oct 21	04 Oct 21
97087688	Shenzhen Hengda Century Electronic Commerce Co.,Ltd, China	24	“Brocade flags; Cloth flags; Fabric flags; Flags of textile; Nylon flags; Plastic flags”	Both 01 Oct 21	22 Oct 21
97085454	YANG LEISHENG, China	24	“Pillow covers; Cloth flags; Fabric flags; Nylon flags”	Both 02 Oct 2021	21 Oct 2021
97084267	Robert Wong DBA Bulletproof Tips Corporation, California	24	“Flags of textile; Flags of textile or plastic; Banners and flags of textile; Brocade flags; Cloth flags; Fabric flags; Fabrics with Let's Go Brandon printed thereon for the manufacture of Flags; Nylon flags; Plastic flags”	Both 19 Oct 2021	20 Oct 2021
97070721	Angela Thurman, Tennessee	25	“Clothes, stickers, hats, and bags”	none	12 Oct 2021

If the USPTO allows these to proceed, it looks like some folks are going to be duking it out over rights. Based on e.g. the PTO’s past granting of registrations of certain names of places in Yosemite National Park to a private party rather than the US government, no questions asked, it won’t be surprising if the USPTO ultimately grants some of these registrations. And unlike, say, the short-lived contretemps over the rights in the phrase “Left Shark” (short-lived because within a month of the Superbowl in 2015 it was a forgotten “meme” and no one was going to buy “Left Shark” merchandise), Mr. Biden will presumably remain in office until January 20, 2025, so the market for “Let’s Go Brandon” items will remain strong for some time.  

But it’s not clear to me that any of these entities are entitled to TM registration, for at least three reasons.

First, none of them came up with the phrase. I suppose that’s more of a patent person’s way of thinking than a TM person’s way of thinking, but something seems amiss if one person can coin a phrase and someone else can then obtain rights in the phrase, merely because that other person was the first to put the phrase on a t-shirt.  The fact that within a period of about two weeks, multiple entities sought TM protection for the same types of goods indicates that it’s an obvious idea.  Of course, “obviousness” is a patent term, not a TM term, but if you’re not a TM attorney, I’m sure you’ll get the idea. 

Second, going back to first principles, trademarks are supposed to indicate the source of the goods. If you’re buying French fries in a red carton with the golden arches on it, you’re supposed to be getting the genuine article from Mickey D’s.  Same thing if your shoes say “Nike” or your purse says “Gucci”.  It’s both an indication to the buyer that the goods meet a certain standard of quality (or not), and for the status-conscious, a signal to others that someone paid for the real McCoy.  Here, none of that is applicable. There’s no company called “Let’s Go Brandon” that’s producing goods, and no one who plans to wear a cap with “Let’s Go Brandon” printed on it cares who the manufacturer is or that others see that the wearer bought the cap from a particular manufacturer.  The wearer just wants to express displeasure with the POTUS (or to indicate his support for a friend or relative named Brandon). So TM protection seems inapposite here.  These TM registration applications appear to be attempts at unjustified rent-seeking, as none of the applicants invented anything or invested time and money in developing a brand (or, as far as I know, raising a Brandon). 

The logic behind that second reason derives from the third reason: if, as the pro-Biden press asserts, the phrase is now a veiled way of saying “F**k Joe Biden”, then use of that phrase constitutes political speech, and therefore the placement of it on articles of clothing, bumper stickers or flags shouldn’t be subject to the injunctions that can come with trademark protection.  What the Chinese Communist Party does to its own people is bad enough; should it now be given control over political speech in the USA too?

So it seems that the parties seeking to register “Let’s Go Brandon” are really saying, “Let’s Go, No-Brand”.

By comparison, despite the Supreme Court’s 2019 decision allowing the registration of “FUCT” as a mark (on the grounds that the “immoral or scandalous” clause of the Lanham Act was unconstitutional), no one has sought to register “Fuck Joe Biden” or F**k Joe Biden” for any class of goods.

Jen & Barry’s: The Answer to Ben & Jerry’s?

It’s safe to assume that by now most readers of this blog have heard that ice cream manufacturer Ben & Jerry’s will cease selling in Judea and Samaria in 2022.    

To quickly review the background: B&J, which is owned by Unilever, licensed a local company in Israel (reported in the press as “Ben & Jerry’s Israel”, but according to the Companies Register there is no such company), to make and sell ice cream under the Ben & Jerry’s name.  Presumably, as part of the arrangement, the local company also receives know-how and other proprietary information from B&J (e.g. recipes and methods of preparation), and perhaps is required to use special equipment as well.  B&J’s board has for years pressured the local company to not sell in Judea and Samaria, but the owner of that company, Avi Zinger, has resisted those calls. Hence the continued availability of locally-produced Ben & Jerry’s in Efrat, Maaleh Adumim, Ariel, et al.  Last week, the Ben & Jerry’s board informed Mr. Zinger that it would not renew its licensing/franchise agreement with him in 2022, and will be seeking a different licensee/franchisee. According to a subsequent press announcement from B&J, its board actually decided to terminate all activity in Israel, but Unilever overruled that board and said that activity in what it deems to constitute Israel will continue with a new to-be-named partner.

Aside from being annoyed with yet another instance of b.s. brought to us by imbeciles and Jew-haters (BDS pressure on Soda Stream led to the relocation of its plant from Mishor Adumim to the Negev, resulting in the loss of hundreds of jobs for people in the PA, showing that BDS has nothing to do with helping so-called Palestinians), my instinctive reaction as an IP attorney was, “Well, this presents some opportunities for some fun!”  As in, there are ways to stick it to Ben & Jerry’s.  Let’s look at what those might be.

One thing might be for the local company to continue to produce B&J’s ice cream, but to sell it under a different name, say “Jen & Barry’s” (more on the name in a moment).  That will probably prove difficult because, as noted, those recipes and specific production methods are likely considered propriety B&J information, and therefore continued use of the recipes after expiration of the agreement will probably be precluded under trade secret law (and specifically the Israel Commercial Torts statute).

But ice cream is not exactly high tech, and there are few if any impediments to making ice cream using other recipes and/or methods.  Indeed, patents, at least Unilever patents, probably don’t figure into this story at all.  Unilever presently has only four patents in force in Israel, and Ben & Jerry’s has none.  The most relevant of the Unilever patents is IL 223735, which claims an “aerated frozen confectionary product” and a method for making the product; this does not appear to apply to hard-pack ice cream. IL 164736 claims a “frozen aerated product in a container” in which the container has two compartments; that’s not your typical ice cream, and I haven’t seen any B&J products in Israel that would infringe this. Additionally, the patent will expire in May 2023.  IL 156438, “Method for the production of a heterologous protein by a fungus”, and IL 207765, “Stackable cosmetic jar”, are irrelevant.

So the local company could switch to making ice cream similar to B&J’s, but without using proprietary information it obtained from B&J.  And to really make things fun, it could sell its products under a name similar to but nevertheless different from “Ben & Jerry’s”.  Like “Jen & Barry’s”, which has the ring of a nice Jewish couple from LA, or maybe a sister and brother from the Rockaways.

In this regard, there are two different issues, and from a story today in the New York Post, it’s clear that some people get these issues mixed up.  The first issue is, Can B&J’s stop someone from selling ice cream under the name “Jen & Barry’s”?  The second issue, related to but independent of the first, is, Can someone selling ice cream under the name “Jen & Barry’s” register that name as a trademark?

Regarding the first issue, I’ve no doubt that B&J’s would seek to prevent the sale in Israel (or anywhere else) of ice cream under the name “Jen & Barry’s”.  And not being a trademark specialist, I won’t try to predict the outcome of such a suit.  But what I can say is the obtaining of an injunction is not a slam-dunk.  The basic question in trademark law is likelihood of confusion: is a consumer likely to (erroneously) think that the competing product was produced by or with the imprimatur of the mark holder?  (A subsidiary claim might be that J&B is trying to free-ride on B&J’s mark, viz. to unjustly enrich itself at B&J’s expense.) Here, it would be abundantly clear to every Israeli with working brain cells that the product is NOT Ben & Jerry’s, but rather a response to B&J’s anti-Israel stance, and that the selling point is precisely that it is NOT B&J’s, but is being made by the company that B&J’s screwed.  And while the judiciary in no-jury-trial-Israel has a reputation of being left-leaning, there are no doubt judges who would latch onto this fact to find no infringement any of B&J’s registered marks in Israel (they have several) and no unjust enrichment, and to thus refuse to issue an injunction.

The new brand could make this decision even easier for a judge if the brand were to add further distinguishing feature, e.g. use a different font, and/or a different color scheme, and/or instead of having a bucolic Vermont scene in the background including a cow, have a more typical Israel scene, e.g. one showing a sabra plant, viz. a prickly pear cactus. 

A particularly interesting legal question would arise if sales of the new brand were geographically limited to those areas where B&J’s has publicly announced it won’t sell.  If the new brand were to be launched only after the current agreement with B&J’s has expired – and thus after cessation of sales in those areas – then the new company could (a) argue that Unilever (the mark owner) has no case, because B&J’s announcement – which, as noted, was originally going to apply to all of Israel, and was made only after modification by Unilever – means that Unilever has forfeited its rights in those areas by publicly announcing its view that those areas are not part of Israel, and (b) seek cancellation of B&J’s marks, on grounds of non-use in Judea and Samaria.  I’m doubtful the latter argument will gain traction – B&J’s will presumably still be sold in other parts of Israel – but a decision in favor of the competitor on the first grounds is not out of the question, and would send a powerful message to the BDS people.

Turning to the question of registration of the “Jen & Barry’s” mark, this would initially lie within the province of the Israel PTO, where there is already precedent for co-registration of similar marks.  In 1972 two Israelis started a pizza chain that they called “Pizza Domino”, but didn’t bother to register their mark.  In the 1990’s, the American pizza giant Domino’s Pizza opened branches in Israel, and a fight ensued over TM registrations.  In the end, the Commissioner allowed simultaneous registration of the marks of both companies, on the grounds that their respective marks used different color schemes (green and yellow vs. red and blue), and that there were different numbers of dots in the dominoes of the two marks.  So while it’s possible a TM examiner might initially object to registration of “Jen & Barry’s”, and a certainty that if allowed, registration would be opposed by Unilever, given the political nature of the dispute over registration of the hypothetical ‘’Jen & Barry’s” mark, it wouldn’t be surprising if ultimately the ILPTO decided to allow the registration of “Jen & Barry’s”.  Ditto for the disposition of an appeal of that decision.

The NYPost story linked to above says that Shurat Hadin, a non-profit headed by Nitsana Darshan-Leitner, has filed with the ILPTO to register the mark “Judea and Samaria Ben & Jerry’s”.  I have tremendous respect for Ms. Darshan-Leitner and the work that her organization has done over the years. In this particular case, I’m not sure that their tactics make sense, if the goal is to ultimately prevail. Israel TM law does not have a mechanism for TM registration only in Judea and Samaria – you register in all of Israel, which includes Judea & Samaria. And using the name “Ben & Jerry’s”, even if it’s supplemented with other words, in the same font, and with the same color scheme and cow scene, is not a winning formula to register a competing mark.  Moreover, the proposed mark is not even in use yet, so there’s no way to show acquisition of secondary meaning. I’ll be surprised if this particular mark gets registered, and I think it would be prudent to withdraw the application and come up with a strategy that has a greater likelihood of success, rather than setting the stage for the ILPTO a court to render a decision that could come back to bite a party that really wants to sell ice cream in Judea & Samaria, under a name that mocks B&J.

Finally, there is one other possibility, and that is that the new licensee could officially not sell in Judea and Samaria, but could turn a blind eye to sales in those areas by others.  Since the product was made under license, trademark law would be of no avail to Unilever to prevent such sales – parallel importation is allowed under Israel TM law, and from Unilever’s perspective, that’s exactly would this would be.

Dedication of IP Rights to the Public (Tom Lehrer Fans, Rejoice!)

 

We refer to patents, trademarks and copyrights as "intellectual property" in part because they have attributes of what we normally think of as tangible property.  Just as ownership of tangible property – a piece of land or a bicycle – allows us to say who can and can’t use our property, but doesn’t necessarily allow us to use our own property in all situations (e.g. in most places you need a license to drive a car, even if you own it), so too IP rights provide us with a say over who can use our IP, even if IP ownership doesn’t guarantee us the right to use our own IP (e.g. sometimes it’s necessary to cross-license with another IP owner). 

Additionally, we can dispose of IP rights like we do tangible property: we can transfer ownership to others, we can pass on IP rights to our inheritors, or we can forego our rights and dedicate our IP to the public (in the case of IP, prior to the date on which those rights would otherwise have expired). 

Dedication to the public is probably most commonly encountered in the context of US patent prosecution, which sometimes requires an applicant to disclaim the term of a to-be-granted patent beyond a certain date and to promise that that to-be-granted patent will be co-owned with an earlier-granted patent in order to be enforceable, in order to secure grant of the later patent.  (We’ve discussed this in previous blog posts, e.g. here and here.)  That is at its heart a form of dedication to the public, or can be viewed as such.

Less commonly, an author will dedicate his writings to the public.  Recently, Tom Lehrer announced that that’s what he’s doing with his corpus of songs and, to the extent he can, the music he wrote for those songs.  Actually, since US copyright law doesn’t have a dedication-to-the-public provision, technically what he did was to grant an irrevocable, royalty-free license to all comers to use his words and music, but the end result is the same.  We sometimes see this in the patent sphere; a covenant not to sue can also achieve the same end.

If you’re reading this blog and you don’t know who Tom Lehrer is, he was trained as a mathematician, but he gained fame in writing and performing satirical songs on topics of the day in the 1950’s and 1960’s.  His classic “I got it from Agnes”, for example, seems rather appropriate in this era of the Wuhan virus and “contact tracing”.  As an Eagle Scout and a chemist, two of my personal favorites are “Be Prepared” and “The Elements Song”, respectively. 

In any event, Mr. Lehrer is still alive and now in his 90’s, and has made his lyrics and much of his music available here.

Bill Murray Visits the Israel PTO

Not really. But the ILPTO's emailing today of a link to the recent announcement that Trinidad & Tobago has joined the Madrid Protocol reminded me of this classic Bill Murray scene. 

In more ways than one.

 

When Is Unauthorized Use Of A Team Logo Not Trademark Infringement?

Trademarks are not a regular part of my practice, but I don’t think there’s a patent practitioner out there who isn’t at least a bit sensitive to trademark issues.  US-based sports leagues are famous (or notorious, depending on your perspective) for enforcing the marks in their teams’ logos. The NFL will even go after companies that use the word “Superbowl” in their advertisements if they don’t pay the NFL for that privilege.

With many American-born Israelis and many American tourists passing through Israel, as well as the effort of some sports leagues to branch out beyond the USA, it’s not surprising that (a) there would be people in Israel interested in clothing bearing the logos of their favorite teams, and (b) such clothing might include kippot, viz. the round skullcaps worn by religiously observant Jewish men (and in certain small circles, by women).  As one might imagine, the demand for such headgear pales in comparison to, say, the worldwide demand for jerseys of popular NBA players, presumably making it cost-inefficient to obtain a license from the relevant league to produce and sell such skullcaps.  (But maybe not, this site advertises an MLB-licensed Chicago Cubs kippa.)  Moreover, the places where such demand exists are concentrated geographically in a few US metropolitan areas and in certain parts of Israel.  Hence there are a few stores in Jerusalem where one can obtain kippot bearing the logos of various teams.  Periodically, there are reports of raids on these stores (probably instigated at the behest of the local attorney representing the league in question), in which unlicensed products are seized.  Then after a time, things revert to status quo ante.

A boy I know in Israel, who does not live near an ice rink and has ice skated only a handful of times, if that, became a fan of the Washington Capitals a few years ago.  He recently procured a Capitals kippa at one of those Jerusalem stores.  Seeing this, my curiosity got the better of me: I checked to see who does the NHL’s TM work in Israel.  Apparently no one: there are no NHL-affiliated marks registered in Israel.  Which means that the sale or offer for sale of the kippa didn’t constitute infringement of a registered trademark.  The NHL could try to bring a passing-off action, but I assume the same small market that mitigated against the (not very large cost of) TM registration in Israel in the first place would mitigate against initiating a(n even more costly) passing-off action against the kippa shop for infringement of an unregistered TM. 

So rest easy, kid, you won’t be receiving a cease-and-desist letter about that kippa any time soon.

End of the Yosemite Trademarks Saga, And A New One From That Know-Nothing Party School

On August 6 DNC assigned 31 marks associated with Yosemite National Park to Yosemite Hospitality LLC, which is the subsidiary of Aramark that now runs the concessions at YNP.  These presumably will be assigned back to National Parks Service when Aramark’s concession ends in 2031 or thereabouts.  Thus comes to a conclusion DNC’s attempt to steal from the American public the names of iconic sites (or at least steal the ability of the NPS, via an agent, to emblazon those names on shirts and caps and coffee mugs).

But trademark trolls are never far from the trough, and the newest one comes from Columbus, Ohio, in the form of Ohio State University.  Or as it likes to refer to itself, The Ohio State University.  Because, I guess, people might confuse it with some other Ohio State University.  On August 8, OSU filed TM application no. 88571984, for the word “THE” on t-shirts, baseball caps and hats.  The attorney of record is a Samantha Quimby, hopefully no relation to Diamond Joe Quimby. 

The application asserts the “mark” was first used in commerce in August 2005.  I seem to think I might have seen that word “The” on t-shirts before 2005. But I could be wrong. And anyway, with trademarks it's distinctiveness that's the name of the game, right? I’m sure it will be a cinch to demonstrate that when people see the word “The” on a t-shirt, they automatically think of The Ohio State University. What else could they possibly think of?

The response from the University of Michigan on twitter was an instant classic (h/t to Aaron Feigelson for this one):

But I don’t think U of M will be trying to register “OF” as a mark.

As Detroit radio personality Dick Purtan sang of OSU in my childhood, “It’s a know-nothing party school!”

They're Back: Yosemite Names Revert to National Parks Service

Earlier today, the US National Parks Service announced that it had settled a suit brought by the previous concessionaire at Yosemite National Park, Delaware North (DNC).  Although the announcement didn't mention a dollar amount, other news sources put the figure at $12 million, far less than what DNC had initially sought.  DNC is to transfer all Yosemite-related trademark and service mark registrations to the current concessionaire, Aramark, which will in turn transfer these to the NPS when Aramark's contract expires in 2031.  Aramark will also get some tangible assets.  Neither TESS nor PACER reflect these changes yet, but presumbably they will be updated in the coming days.

Practically, the main effect of the settlement will be that people can once again buy "Yosemite National Park" T-shirts in Yosemite Valley.  By the time I'm done writing this blog post, Curry Village, the Ahwahnee Hotel and the Wawona Hotel will have reverted to those names, as most of the signage with the "new" names was temporary, and even the bus drivers often called the places by the older names. And DNC wasn't trying to corner the market on names like Lembert Dome or Matthes Crest.

We blogged about this case previously here and here.  While the settlement was expected, it's too bad that DNC got as much as it did for trying to hijack place names that never belonged to it.  Sometimes, as Woody Allen noted, crime definitely pays. 

 

Buh-bye, DNC: Bad Faith, Sore Loser TM Assertions Will Get You Nowhere

[Update, March 5: on February 26, the Department of the Interior filed a consolidated cancellation action against 7 DNC marks.]

A few years ago I wrote a blog post in which I explained how a family trip provided an opportunity to illustrate various aspects of IP law. A recent trip that included two days in Yosemite National Park, one of my favorite places on the planet, provided a similar opportunity. That’s because Yosemite is now at the center of a legal spat that can only be termed ridiculous, and then only charitably. But the legal machinations are useful for illustrating what’s supposed to be protectable and what’s not. And for illustrating why people hate lawyers.

As has been covered in various media outlets, the National Parks Service contracts with third parties to operate concessions, such as hotels and retail stores, at various parks. Thus while the NPS itself manages the campgrounds at Yosemite, since 1993 it has been a company called Delaware North (DNC) that operated Yosemite Lodge, the Ahwahnee Hotel and Curry Village in Yosemite Valley, as well as the Badger Pass Ski Area and the Wawona Hotel to the south of the valley, and several stores, such as the stores at Yosemite Village, Crane Flat, and Tuolomne Meadows, in the park. But last year the NPS decided to go with a different concessionaire, Aramark, beginning in March 2016, i.e. tomorrow. This wasn’t a small contract: it’s reportedly worth up to two billion dollars over 15 years.

During the contract negotiations, it came out that DNC had itself registered or otherwise acquired trademarks on the names of several of the places it operated, with respect to both the establishments themselves (like The Ahwahnee Hotel), as well as merchandise such as T-shirts bearing the name “Yosemite National Park”. As part of its negotiating strategy, DNC said that it would be a more cost-effective supplier of services, because any other concessionaire would have to pay tens of millions of dollars for the rights to use DNC’s registered trademarks. If you think that sounds like a thinly-veiled threat, you’re right: in September, DNC filed suit against the US government in the Federal Court of Claims, asserting breach of contract since the government didn’t require Aramark to buy DNC’s “other property” associated with its operations in Yosemite, including trademarks, which it claims is worth $61 million. You can read a copy of the complaint here, and a copy of the government’s response, filed in early January, here. DNC filed a revised complaint in late January. For a discussion of the specific legal issues, intertwined with narrative in more journalistic than legalistic style, there’s this piece written by a lawyer who lives near Yosemite.

As a result – so report the stories that came out in the first half of January, and so says the NPS itself on the Yosemite site – the names on the various hotels will change beginning March 1, and the NPS is even changing the signage in the park to reflect the new names. Interestingly, as of last week, the signs in the park still reflected the well-known names of the places. And I’ll be shocked if there’s a single park ranger who will refer to any of these places by a name other than their long-standing, historic names. It’s kind of like changing the spelling of the Sears Tower to “W-i-l-l-i-s”. That may be how it’s spelled, but it’s still pronounced “Sears”.

Now, perhaps DNC has a good legal case and perhaps it doesn’t; I don’t profess particular expertise in US trademark law. But I did learn a little about trademark basics, and you don’t have to be a lawyer to sense, as some non-Jewish friends where I grew up might have said, that “something’s not kosher” here. What’s not quite right with this picture? I can think of at least two things.

First, trademarks are meant to distinguish the source of goods and services. You buy a Coke rather than a generic version because you want The Real Thing, and you know that the Coca-Cola company provides it. You buy a particular make of automobile because you know that company has a reputation for quality. You buy a particular brand of clothing because clothing made by that company signifies (or confers) a particular status.

In the case of Yosemite, though, no one gives a crap who runs the concessions. It could be DNC, it could be Aramark, it could be Ivan the Terrible or his modern counterparts, Donald the Demonic and Hillary the Hideous. Park visitors just care that they when they stay in one of the park’s hotels they have clean sheets and working showers, and that they come home with a “Yosemite National Park” t-shirt that they bought in the park. It’s the location itself that matters, not the company running the business. And consequently, trademark rights shouldn’t apply here, or at least the way in which they are valued needs to account for this crucial distinction from the normal situation. In its reply brief, filed in early January, the US government said precisely that: that DNC’s estimate that the marks it says it “acquired” were worth $61 is fundamentally flawed because in this case the value stems not from the “marks” but from the location.

Second, and even more basically, the names in question don’t belong to DNC, and the USPTO should never have registered these marks in the first place. The Ahwahnee Hotel was so named when it was built in 1937. There’s been a Yosemite Lodge in roughly the same location – near where Yosemite Falls crashes into Yosemite Valley – since 1915. (See this 1956 USGS map.) For years and years, long before DNC was in the picture, people referred to these places by the names that DNC now says are its own. And of course, the park name is the park name. Trademark attorneys may view it differently, but to the rest of us, when you take something that belongs to the public, it’s called stealing. That’s what's got all of us Yosemite fans so vexed: the brazen attempt to steal from the public.

That this is an attempt by DNC to engage in extortion can be seen from its own behavior until now. For example, when we stayed at Yosemite Lodge last week, there was little to suggest that DNC really perceives itself as the rightful owner of the name “Yosemite Lodge”. The notepads next to the telephone in the room, for example, bore the legend “Yosemite Lodge At The Falls”, without even so much as a “TM” on them. The same was true of the legal notice on the back side of the door informing guests of hotel rates, and the binder with information for guests. That binder, in fact, contained a two-page document setting forth the 78-year pre-DNC history of Yosemite Lodge. Likewise, the information sheet handed to hotel guests gave no indication of any proprietary interest on the part of DNC in the name “Yosemite Lodge”. And the plaque  in the reception area of Yosemite Lodge says that the hotel is “Operated by Delaware North Companies Parks and Resorts, Inc.” Not owned by, operated by – because DNC knows darn well that it’s merely a custodian, not an owner. Similarly, the paper prepared and distributed by DNC showing the Badger Pass   ski runs and the cross-country ski trails evinces an intent to protect a stylized bear-paw logo, and contains a copyright notice regarding the text, drawings and layouts of the paper itself, but contains no indication that DNC regards the name “Badger Pass” or “Badger Pass Ski Area” as its own. In fact that copyright notice, like the plaque in the hotel lobby, states that DNC operates the ski area under the auspices of the NPS, once again implicitly acknowledging that it is not the owner of the names of the places.

In short, DNC never acted like it owned the “marks” it now says belong to it: real trademark owners mark their marks. DNC knows full well that it doesn’t own the marks in question. It takes a lot of gall to register a mark on something you don’t even own, then threaten litigation over your ill-gotten registrations. Unfortunately, such dishonesty is par for the course for many lawyers.

If the decision to change the names of the facilities were Aramark’s alone, I could understand Aramark’s caving on this issue, even if I don’t think it should have to: under the screwy US civil litigation model, it’s cheaper to change the names and be done with it than to go court, and there’s a non-zero risk that a court could reach the wrong decision and Aramark would lose in civil litigation (although I personally don’t think there’s a jury in the USA that would side with DNC over the NPS on this matter). But there’s no reason under the sun for the government of the USA in the form of the National Parks Service to give in to an extortionist and change the names on the signs in the park, since the NPS itself won’t be infringing any marks if its signs continue to point visitors in the direction of The Ahwahnee, Yosemite Lodge, Curry Village, Badger Pass and the Wawona Hotel.

Rather than capitulate to DNC and in so doing whitewashing part of the park’s history, I think the government should have agreed to indemnify Aramark on the trademark front. And that it should now bring its full weight down on DNC, with the threat of criminal prosecution. For example, every one of DNC’s trademark applications included a declaration from DNC’s Vice-President and General Counsel that the applicant, DNC, was “properly authorized to execute this application on behalf of the applicant” and that he believed that the applicant, DNC, “to be the owner of the trademark sought be registered”. That declaration also included the admission that willful false statement are punishable and may jeopardize the validity of the trademark registration. Why not charge that person, and DNC, with the willful making of a false statement to the PTO?

Even better, fraud is one of the predicate offenses for a prosecution under the RICO statute. Since DNC obtained the registrations in question by fraud – it never owned the marks in the first place, so it lied when it told the PTO it owned them – and these acts occurred on multiple occasions within a 10-year period, the Justice Department should bring RICO charges against DNC and its officers. Something tells me that even the whiff of such charges would be enough to cause DNC to abandon all of the marks in question.

Perhaps the government is taking a long-term view: by continuing to operate the concessions under new names, within a year or two Aramark will be able to provide evidence showing that the revenues at the concession sites are completely unrelated to the names of those sites, at which point it will be able to revert to the long-standing names, since the damage to DNC by using the names Ahwahnee, Wawona, etc., will demonstrably be zero.

The good news is that none of this smelly business will affect any of Yosemite’s iconic sites: there’s no talk of changing the name of El Capitan to El Capital One, or of renaming the Half Dome cables “Half Dome Cable and Wireless”, or of calling the firefalls (which we were fortunate enough to watch, see photo at left) the Firefox falls. And even if, Heaven forfend, that were to come to pass, the places themselves would continue to entrance, enchant and enthrall.

If a Lawyer-Turned-Politician Doesn't Get the First Amendment, You Can't Expect Better From a Crybaby-Turned-Politician

Last year we wrote about the Clinton campaign's spectacularly unsuccessful attempt to abuse trademark law in order to silence a critic who sold t-shirts and mugs mocking that campaign's candidate. Now it appears that the leading candidate for the Republican Party's nomination is playing the same game, trying to use trademark law to take a swing at a site called www.stoptrump.us that sells t-shirts with a political message that's not to his liking. By making this non-starter threat, he's placed himself in the company of a failed lawyer. And here you thought that he couldn't demean himself any more. Then again, to quote Mel Brooks, "He's just crazy enough to do it", i.e to go to court, where the judge will laugh at him as he kicks him out onto the street.

Alphabet Soup? Or Alphabet Goo-gle? (If You Want To Protect Your Mark, Register It!)

The big news today in the business world is the announcement by Google that's it's doing a corporate restructuring and has set up a company called "Alphabet" that will be the parent company of Google.  

It didn't take more than a few hours before this story appeared in the Jerusalem post about a local company, Alefbet Planners Ltd., that has asserted - for now, evidently, only in the press, not in court - that Google's Alphabet is infringing rights in Alefbet's name, which it says it has been using for 25 years.  According to the article, Alefbet asserts that it has international clientele, to which it is known as "Alphabet".

Maybe that's the case, maybe not, but if Alefbet wants to stop Google from using "Alphabet", in Israel or anywhere else, it's going to have to prove its assertions, because even if there's a likelihood of confusion between the two names - more on that in a minute - Alefbet never registered a trademark in Israel, let alone in the USA or anywhere else. Sure, it may be able to assert "passing off", i.e. infringement of an unregistered mark, but to sustain such an action it will need to prove that its name has acquired a reputation that people associate with Alefbet.  Good luck with that.  When I googled "alfabet planners ltd", none of the top hits referred to this company.  And there's no site, or even a domain registration, for alfabet.co.il, or any site for the company, apparently.  It's hard to prove the existence of a reputation in a name that's invisible. 

Even if Alefbet can prove such a reputation, it will need to show a likelihood of confusion. In the US alone, there are several hundred live and dead marks containing the word "alphabet". If those names weren't deemed to be confusing with one another, how would they be confused with the visually and aurally distinct "alefbet"? Moreover, according to the press release, Alefbet is "third largest planning, design and architecture company in Israel".  That doesn't sound like Google's, or Alphabet's, niche. No confusion, no infringement.  

The first rule of lawyering is never make a threat that you're not prepared to follow up on. Alfabet's empty threats merely confirm that which we already knew: Alfabet didn't avail itself of good legal counsel. If it had, it would have registered some trademarks by now.

That doesn't mean Google is necessarily off the hook. Given the large number of existing companies and products out there with the name "Alphabet" or a variation thereof in their name, Google has cause to be concerned.  For example, Germany's Software AG has some software products named "Alfabet". But although one may wonders what Google's lawyers were thinking, it's still a good bet that Google's legal advisors looked into the matter and think that Google can prevail.

Unless, of course, the name "Alphabet" was chosen by the marketing department, without consulting the company lawyers.  But that could never happen, right?

The “Kosher Lamp” and the Redskins Trademark Saga: Reminding Us that “Patent” and “Successful Business” Are Not Synonyms

If the above title seems to be a non-sequitur, keep reading, because it’s not.

There’s been a lot of writing in the IP world recently about a US federal district court judge upholding the USPTO’s decision to revoke the trademark for “Redskins”, used in connection with the professional football franchise in DC.  The NFL, and Redskins team owner Dan Snyder, share the traits of deep pockets and dense skulls, so it will be shocking if an appeal isn’t filed. But even if sustained, the revocation of federal TM registration won’t stop the league from marketing Redskins apparel and, in all likelihood, profiting nicely in the process.  No less importantly for the league, the revocation won’t necessarily pave the path for knock-off artists to sell Redskins merchandise.  The team has been around for a long time, and it’s reasonable to say that the name “Redskins” and the team logo and colors have at this point in time acquired not only distinctiveness but goodwill.  So the NFL will likely still be able to avail itself of state trademark claims, including claims for infringement of unregistered marks (also known as “passing off”), and perhaps trade dress claims as well.  Whether it should continue to use “Redskins” as a team name is a separate question, as is whether the same arguments that led to revocation of the federal trademark registration would be good defenses against other claims that the NFL might bring.

The critical point is that, because the NFL is a strong, established business, it can use its existing market position to continue to profit from the Redskins mark, and to out-compete most nascent competition. 

This brings me to the connection between the Redskins’ situation and the second half of this blog post title.  A common fallacy among the uninitiated is that merely applying for a patent, let alone actually obtaining a patent, will make one rich.  I’ve lost track of the number of times I’ve had to disabuse potential clients of this notion.  As anyone who’s been in the patent law business long enough knows, a good idea, or even a good patent, isn’t sufficient.  Succeeding with a product in the marketplace depends on many, many factors; the procurement of a patent is just one of them. 

Sometimes, though, obtaining a patent isn’t even necessary. Case in point: the so-called “kosher lamp”.  By way of background, religiously observant Jews will use electric lights on Shabbat, but they’re prohibited by religious law from turning those lights on or off.  A common work-around to this issue is to use a timer to control the operation of the light. Sometimes, however this isn’t optimal: if you wake up in the middle of the night when the lights are off and you want to read until you fall asleep again, you’re out of luck.

Enter the “KosherLamp Max”.  This is a lamp in which the lighting element resides in a compartment having an opening in its side, through which the light can shine.  The twist, pun intended, is that there’s a shade that can be partially or fully rotated into place to cover the opening, thus reducing or completing blocking the light.  Judging from the testimonials, it appears that this product is doing well.  Yet as far I’ve been able to determine, there are no patents on this product.  Nor should there be: I recall a similar lamp in my parents’ in my childhood, and the lamp at right was evidently designed in 1967. 

The usefulness of patent protection doesn’t seem to have been lost on the proprietors of the KosherLamp: about 10 years ago, a US patent application was filed for an earlier version of the product, but was abandoned after the first Office Action. That version of the lamp utilized an incandescent bulb rather than a compact fluorescent bulb (which generates less heat), and the claims focused on the product features incorporated to dissipate the heat generated by the incandescent bulb. The same fate awaited the corresponding Israel patent application.  Nevertheless, the product is now out there, without the benefit of patent protection. 

It will be noted that there is a registered US trademark for a stylized “KosherLamp” logo.  So it’s possible that others may make a similar product and market it under a different name.  But having been first to market, and having now made something of a name for itself, I suspect that the KosherLamp will continue to be the leader in this particular niche market for some time.

In sum, IP can be a useful part of a business plan, but doesn’t sell products, and rarely will IP alone make anyone rich.  And sometimes, it’s not even necessary.

Marching Into Madness: University of Kentucky, the “Student-Athlete” Fallacy, and Trademark Law

This is somewhat off-topic for this blog, but it touches on something of a sore point, namely the indentured servitude to which men’s football and basketball players at major US universities are subjected. Basically, the universities field sports teams, and make huge amounts of money off the men’s football and basketball programs, both through direct ticket sales but primarily through television contracts and merchandising deals. Part of the myth they perpetuate is that the players are amateurs, who only play for the love the game, and that they are fairly compensated in the form of “scholarships”, whereby they pay no tuition and receive an education in exchange for playing. (That myth was partly debunked last year when the National Labor Relations Board in Chicago said that football players at Northwestern University were primarily employees, who spent upwards of 40 hours per week on football-related activities, and therefore could unionize if they chose to do so.)

Through the NCAA, the national body the universities established to oversee their sports programs, they enforce a zero-tolerance policy to ensure that players can’t capitalize on their labors or the fame that some of them gain for their exploits on the field: the players lose eligibility, and often the university is sanctioned. For example, the football team at Ohio State, a perennial powerhouse, got into hot water a few years ago when a star player offered a used jersey for sale on eBay, months after he’d played his last game. Oh, the horror! (See here for a related story about NCAA rules gone wild at the University of Wisconsin.) Invariably, when punishments are doled out, it is players playing years later, who weren’t even enrolled at the university when the original rules infraction took place, who are made to pay the penalty. Common decency and a sense of fair play are not the NCAA’s strong suit.

The University of Kentucky’s men’s basketball team is currently 38-0. If, as is widely expected to happen, it wins on Saturday the semifinals of the NCAA tournament, and then again on Monday in the championship, it will be the first men’s team since 1976 to complete a perfect season and the first ever to go 40-0 in a single season.

Enter a company called “40-0, LLC”, also known as “40and0.com”. That company is currently selling t-shirts, sweatshirts, socks and caps with “40-0” emblazoned thereupon – primarily, though not exclusively, in blue-and-white color scheme associated with U of K – and it has applied to register the mark “40-0” with the USPTO (application no. 86534269, still pending).

UK, for its part, has no such application pending, nor, apparently, is it presently selling similar merchandise. There is, however, a story going around today (see e.g. here and here) about U of K sending a cease-and-desist letter to the owner of the company. As usual with these popular press stories about IP issues, it’s hard to parse out the details from the mis-information. But the gist of it, apparently, can be summarized in this quote from UK’s lawyer: “We are well aware of third parties attempting to capitalize on the historic season of the University of Kentucky men's basketball team…As the University's licensing agent, we are working to vigorously protect UK's trademark rights in the marketplace from those that use the institution's indicia without permission.” Translation: if its team goes 40-0, then UK and UK alone is entitled to capitalize on that fact. Not some forward-thinking entrepreneur, and certainly not the employees, er, “students”, who accomplished the feat.

I’ll leave it to the trademark and unfair competition specialists to comment on the strength, or lack thereof, of UK’s case. I just have one question for UK: if the university were to make money from the sale of 40-0 merchandise, would you share the profits with any of the players who actually accomplished the feat?

Didn’t think so.

[Update, April 2: Dan McCall at www.libertymaniacs.com - the guy who beat the NSA - is now offering the Wisconsin t-shirts on his site.  And knowing his lawyer, I'm confident he won't kowtow to the NCAA's warped worldview.  Although Nigel Hayes, the UW player who came up with this list, still won't be making a cent.]

[Update April 5: so much for that "We own 40-0" nonsense, now that Wisconsin has dispensed with Kentucky.  Will there be an uptick sales of the cattywampus shirts if UW goes on to win on Monday?]