“Merely Descriptive” Trademarks

I am often asked by clients if they can register a trademark for what they think is a great domain name that they have been offered and which would undoubtedly drive search results to their website. Sometimes the client has already swallowed the hook and purchased the domain, perhaps for many thousands of dollars.

If it looks too good to be true, of course, it probably is. When an especially catchy domain name suddenly becomes available to you, while it is conceivable that it may be a great and rare opportunity, often the corresponding trademark has not been snapped up already because it would infringe on the rights of a prior trademark owner—sometimes a powerful one—and the seller, usually a domain broker, often in a foreign country, is banking on the buyer making an impulse purchase before considering that they may have paid a lot of money for an unusable piece of virtual property.

Other times, a domain name may be a combination of a couple of words that perfectly describe your business. I get emails all the time offering to sell me domains like “AtlantaLitigationAttorney.com” or “GeorgiaTrademarkAttorney.com.” Many of these domain names have been scooped up and packaged by domain brokers hoping to turn a quick profit.  Of course, while using a domain like this might help to drive web traffic to your business (since they do contain common search terms), it will do little to help you brand your business—who would want to be called “Internet Search Engine” when they could be called “Google,” “Bing,” or “Yahoo”? When developing a name for your business, product, or service, remember that the strongest brands are usually those that come to associate your products and services with a unique set of qualities, not just to describe or name those products. Consumers think of Bud Light, Nike, or Chanel, for example, as a complete identity, even a set of lifestyle choices, not just the name of a product or company.

So I can’t register a descriptive name as a trademark?

Well, sometimes you can. But unless you have already been using and have become widely and exclusively known by a descriptive mark for at least five years, even if there were nothing preventing you from registering such a name, you still won’t be able to claim exclusive rights nationwide to a “merely descriptive” name simply through local use and federal trademark registration. “California Juice Co,” and “Saratoga Juice Bar,” for example, have both registered successfully on the Supplemental Register, a secondary trademark list for “merely descriptive” marks and which provides some, though not all, of the protections of the Principal Register.

While the Supplemental Register is sometimes seen as a stepping stone to later registration on the Principal Register, there are drawbacks to putting all of your marketing eggs into a basket you don’t yet fully own.  For example, it can be difficult to prove infringement of a mark registered on the Supplemental Register. Why? Because infringement occurs when there is a likelihood that consumers will be confused as to the source of goods or services uniquely identified under a particular mark, and registration on the Supplemental Register is by its very nature an admission that the mark is not strong enough to uniquely identify (and it therefore merely describes) the products or services in question or their source… and “mere description” is not something you can protect.

Of course, there are plenty of well-known marks that began life on the Supplemental Register and then moved on: “Five Hour Energy Drink” and “Chapstick,” for example. Such marks may be re-registered in the Principal Register in five years if they have come to identify the product or service exclusively in the marketplace and have thus achieved what trademark law calls “secondary meaning”; i.e., a unique brand identification in addition to the self-evident, descriptive meaning.

How can I create a unique trademark and describe my product at the same time?

Many companies bridge the gap between completely unique marks (which take a lot of energy and marketing expenditure to associate the mark with the product or service) and “merely descriptive” marks by opting for something of a hybrid. “Tiger Energy Drink,” “Longhorn Consulting Co.,” “Falcon Performance Products,” and “Frozen Pints Craft Beer Ice Cream” are all registered marks which are highly descriptive but have arbitrary and therefore “unique” elements grafted onto the descriptive portion of the mark to create a mark that is much more easily registrable and yet still describes the product.

Working with an experienced trademark attorney at Briskin, Cross & Sanford can help you to identify the likelihood that your proposed brand can be successfully registered as a trademark and, since the Trademark Office may take a year or more ultimately to reject an application for a mark that is not registrable, can save you a great deal of time and money as you seek to launch a successful company, product, or marketing campaign.

Can You Copyright Your Label? Yes… well, no… well, partly.

A client of ours recently sought to copyright its label and wanted to know if that was possible. Understandably, the company didn’t want competitors copying its hard work in creating a unique and visually distinctive label for its product.

We first addressed the obvious, which is trademark protection for the name of the product. Ok, but the label is more than just the name, it is the artistic creation of a designer who was hired to give my client’s product a very purposeful and contemporary look.

So, can we copyright the label?

This seemingly simple question brings to bear a number of interesting issues. As a threshhold matter, Copyright protects original expression. The United States Supreme Court has held that with regard to copyright, originality means only that the work was independently created by the author and possesses at least some minimal degree of creativity. See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 346 (US 1991). The requisite level of creativity is typically extremely low; even a slight amount will suffice. See FMC Corp v. Control Solutions, Inc. 369 F.Supp.2d 539, 561 (E.D. Pa. 2005). Classic copyright material (like prose or photographs) typically meets the minimum threshold of creativity with ease. But that is not to say that the threshold is so low as not to exist at all.   Indeed short phrases, basic shapes, and lists of ingredients do not present the sufficient amount of creativity for copyright protection.

Labels, however, are typically a combination of pictures, text, short phrases, and shapes. So are they copyrightable because of the pictures and process, or not, because of the short phrases and basic shapes?

There are a number of cases that indicate that labels are subject to copyright protection. See Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1959). Based on case law, it appears that consumer product labels containing more than a mechanical list of ingredients manifest the amount of creativity necessary to enjoy copyright protection. See FMC Corp. 369 F.Supp.2d at 572 (citing Sebastian Int’l, Inc. v. Consumer Contact (PTY) Ltd., 664 F.Supp. 909, 913 (D.N.J.1987), rev’d on other grounds,847 F.2d 1093 (3d Cir.1988); Drop Dead Co. v. S.C. Johnson & Son, 326 F.2d 87, 92–93 (9th Cir.1963), cert. denied,377 U.S. 907, 84 S.Ct. 1167, 12 L.Ed.2d 177 (1964) (copyright on aerosol wax product label held valid); Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541, 545 (2d Cir.1959) (defendant’s use of identical pictures on cake labels infringed plaintiff’s copyrights on the labels).

For example, in one case, a label on a bottle of shampoo was found copyrightable for a small bit of text describing the product:

“Hair stays wet-looking for as long as you like. Brushes out to full-bodied dry look … WET is not oily, won’t flake and keeps hair wet-looking for hours, allowing you to sculpture, contour, wave or curl. It stays looking wet until it’s brushed out. When brushed, hair looks and feels thicker, extra full. Try brushing partly, leaving some parts wet for a different look.” See Sebastian, 664 F.Supp. at 913.

The court held that “[n]o one can seriously dispute that if plaintiff were to discover that a competitor’s package utilized the exact language as above with the exception of the product’s name, plaintiff would be entitled to protection.” Id.

The court in Sebastian instructed that the language on a label is entitled to copyright protection when it is “more than simply a list of ingredients, directions, or a catchy phrase.” See Sebastian, 664 F.Supp. at 913.

Even shorter phrases can be sufficiently original to garner copyright protection, even for commercial works, such as labels. See Abli Inc. v. Standard Brands Paint Co., 323 F.Supp. 1400 (C.D. Cal. 1970) (label was copyrightable when it contained phrases such as “Cut to desired length … Will not run … Simply slide top bead into rod as illustrated”). Indeed, the length of a sentence is not dispositive of whether it is subject to copyright protection. See Rockford Map Publishers, Inc. v. Directory Service Co. of Colorado, Inc., 768 F.2d 145, 148 (7th Cir. 1985).

In addition to text, drawings or photographs typically are protectable.

Now when you register a copyright, you have to select whether it is a work of visual art, literary work, etc. As a whole, a label certainly seems like a visual work. Indeed, often it is registered as such. Federal courts have held that the form of registration of a work has no effect on the scope of copyright. See S.C. Johnson & Son, Inc. v. Turtle Wax, Inc. 1989 WL 134802 (N.D. Ill. 1989) (finding that a work registered as a nondramatic literary work rather than a work of visual arts does not negate copyright protection in visual elements of the work). Nonetheless, you will sometimes find pushback from the Copyright Office based on the nature of the work you claim.

Where the rubber really meets the road is in compilation, meaning, the compilation of multiple elements. As with my very first example, what is the result when you combine copyrightable elements like pictures and prose with non-copyrightable elements like lists of ingredients, brand names, titles, or short phrases?

Many have and many will continue to argue that the work is registrable as a whole work in the arrangement and selection of the components. Indeed, the Copyright Act itself provides that a work as a whole can be copyrightable due to the originality expressed in the overall selection, organization, and arrangement of the work, and the United States Supreme Court has agreed. See Feist at 360; see also 17 U.S.C. § 103. Yes, originality can be displayed in taking commonplace materials and making them into a new combination and arrangement. See Drop Dead Co. v. S.C. Johnson & Son, Inc., 326 F.2d 87 (9th Cir. 1963) (finding arrangement of color, layout, design and wording on bottle of PLEDGE furniture polish is copyrightable as a whole, including laudatory and instructional text); see also X-IT Products, LLC v. Walter Kiddie Portable Equipment, Inc., 155 F.Supp.2d 577, 609-611 (E.D. Va. 2001) (finding that although short phrases and bullet points on packaging were not protectable, label as a whole was protected under copyright, which necessarily includes the arrangement of the individual elements). Even very simple arrangements can be sufficiently original to be entitled to copyright protection. See S.C. Johnson & Son, Inc. v. Turtle Wax, Inc. (finding that a label with red stripes on a yellow background with a ribbon and the company name is sufficiently original for copyright protection).

Now hold on to your hat…

Despite this line of case law, it is the well-articulated policy of the Copyright Office to deny registration of the arrangement of elements on the basis of physical or directional layout in a given space. See Darden v. Peters, 402 F. Supp. 2d 638 (E.D.N.C. 2005). Not only does this apply to labels, it applies to websites, too!! To perhaps put it another (and more awesome) way, on a phone call with an examiner from the Copyright Office wherein I recited the above mentioned case law, the examiner told me, “Well the court can say that, but that’s not how we see it.

So where to go from here?

Are labels copyrightable?

Yes.

Can you successfully register a label for copyright?

Um, maybe not.

Can you successful register just those creative elements of a label, like a picture, drawing, or prose?

YES. The way you do this is to submit the entire work, but claim only the creative elements, essentially disclaiming the rest.

There you have it – the more creative the elements of your label, the better your shot of gaining copyright protection from the Copyright Office.

Intellectual property issues like copyright and trademark can be tricky. If you or your business have a question about an intellectual property issue, contact a trademark attorney, copyright attorney, or intellectual property attorney at Briskin, Cross & Sanford.

Next steps for Aereo in The People vs American Cable Monopolies?

Over the weekend, a letter from Aereo founder and CEO Chet Kanojia appeared on the Aereo website and to any of Aereo’s 500,000 or so customers who logged into the Aereo ap.  While ABC might have thought that it had cut off the hydra’s head after the Supreme Court ruled in its favor last week, Aereo is clearly still pursuing the case in the court of public opinion:

A little over three years ago, our team embarked on a journey to improve the consumer television experience, using technology to create a smart, cloud-based television antenna consumers could use to access live over the air broadcast television.

On Wednesday, June 25, the United States Supreme Court reversed a lower court decision in favor of Aereo, dealing a massive setback to consumers.

As a result of that decision, our case has been returned to the lower Court. We have decided to pause our operations temporarily as we consult with the court and map out our next steps. 

The cornerstone of the Supreme Court 6-3 ruling was the holding, as reported by Scotusblog, that “Aereo publicly performs copyrighted works, in violation of the Copyright Act’s Transmit Clause, when it sells its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over the air.”

If you know anything about the Copyright Act of 1976, you probably know that copyright owners are given a bundle of rights with respect to original works of authorship, among them the exclusive right to perform the copyrighted work publicly. At the heart of this case is whether Aereo, as it claimed, merely rented a small antenna and a digital DVR to each of its customers so that they could grab “free” TV signals off the air and watch them later, or whether Aereo was acting more like a cable company and actually retransmitting copyrighted broadcasts in violation of the Act.

The majority in the Supreme Court decided that it was the latter, relying on Congress’s express emendation of the Copyright Act in 1976 to encompass cable TV companies. The basis for their reasoning was the so-called “transmit” clause, which maintains that the exclusive right to “perform” a work covered by the Copyright Act includes the exclusive right to “transmit or otherwise communicate a performance . . . of the work . . . to the public, by means of any device or process, whether the members of the public capable of receiving the performance . . . receive it in the same place or in separate places and at the same time or at different times.”

Dissenting, Justice Scalia filed an opinion joined by Justices Thomas and Alito expressing the belief that Aereo does not “perform” because Aereo’s subscribers determine their own programming selections just as a copy shop serves consumers by providing machines capable of copying anything that the consumer brings in to copy, whether it is subject to copyright or not, and it would be wrong to blame the technology for the fact that it is capable of facilitating law-breaking uses (is anyone thinking of handguns here?).

Scalia goes on to criticize the Court’s holding as stitching together a few fragments of legislative history and lacking solid foundation:

“What we have before us must be considered a ‘loophole’ in the law. It is not the role of this Court to identify and plug loopholes. It is the role of good lawyers to identify and exploit them, and the role of Congress to eliminate them if it wishes. Congress can do that, I may add, in a much more targeted, better informed, and less disruptive fashion than the crude ‘looks-like-cable-TV’ solution the Court invents today.”

While the Supreme Court ruling may appear to have ended the two-year legal battle between ABC and the feisty tech start-up, Aereo, although it originally said that there was no “plan B,” now claims that while it may be down, it is not out. As Forbes contributor Mark Rogowsky notes, Aereo “didn’t have time to seek changes to federal law. Instead, it took the path of an Uber or AirBnB: operate in a legal grey area and hope the law moves with you or affirms your actions. Unlike those other companies, however, Aereo faced big national entities who could take the matter before the ultimate Court in the land.”

While Fox and the big broadcasters may be delighted with the ruling for the time being (Fox is currently suing Dish Network in a similar case involving its Dish Anywhere app, a case that is up before the Ninth Circuit Court of Appeals next month), the blogosphere is already alight with Aereo alternatives, and it may well be that, having plucked a single dandelion head, ABC’s efforts to put down one upstart in the popular rebellion against astronomical cable fees will merely spread the seeds of innovation beyond even the reach of the large cable monopolies’ power to control.

The End of the “Pomegranate Blueberry Flavored Blend of 5 Juices”

Imagine this…

You are sitting poolside, enjoying a bottle of Minute Maid’s “Pomegranate Blueberry Flavored Blend of 5 Juices” when you happen to look at the ingredients.

It slowly dawns on you the the self-described “Pomegranate Blueberry Flavored Blend of 5 Juices” only in fact contains about 0.3% pomegranate juice and 0.2% blueberry juice.

You are outraged!

How can Minute Maid and its owner, Coca-Cola, get away with such misleading labels?

The good news is that they no longer can, thanks to POM Wonderful, LLC and a unanimous U.S. Supreme Court.

It begins (as it always does) with a lawsuit. POM Wonderful sued Coca-Cola, alleging that Coke’s label for its “Pomegranate Blueberry” juice deceives buyers into believing that the juice primarily contains both pomegranate and blueberry, thus violating Section 43(a) of the Lanham Act (which addresses situations where one company’s false advertising is causing harm to another competing business).

Coke’s response to the lawsuit was simple: its “Pomegranate Blueberry Flavored Blend of 5 Juices” label complied with the Food, Drug and Cosmetic Act (the “FDCA”) regulations, which trump the Lanham Act. Thus, Coke argued, if its label complies with the FDCA, it cannot be liable under the Lanham Act.

In a rare, and, dare we say, juicy unanimous decision, the U.S. Supreme Court sided with POM Wonderful (interestingly, it has been reported that Justice Kennedy stated during oral arguments that he was also misled by Minute Maid’s “Pomegranate Blueberry” label).

Now, a company harmed by a competitor’s false or misleading marketing of a food or beverage product can file a lawsuit under the Lanham Act, even if the marketing labels are regulated by the Food and Drug Administration and comply with the Food, Drug and Cosmetic Act.

The U.S. Supreme Court’s recent decision will have companies in the food and beverage industry scrambling to review, and possibly revise, their labels and marketing materials. Of course, this decision has farther reaching implications than just for Minute Maid and its competitors since the Supreme Court’s decision could conceivably apply to other businesses regulated by federal laws… like alcoholic beverages, transportation, even pharmaceuticals.

If you are concerned that your product label does not properly describe your product, or perhaps a competitor’s label falsely describes your competitor’s product and puts you and other honest businesses at a disadvantage, consult a trademark attorney at Briskin Cross and Sanford… before, not after, someone squeezes your juciebox for you.

Pinterest wins $7.2M in legal battle with cybersquatter

Chinese cybersquatter Qian Jin, in one of the most brazen cybersquatting cases to come to court in months if not years, has been ordered by the US District Court for the Northern District of California to pay Pinterest $7.2 million in damages and legal fees and turn over to Pinterest the domains (e.g. pintesrest.com, pinterests.com, etc.) he had set up to divert inadvertent searchers to his own slew of money-making websites.  Hat tip to Dara Kerr of CNET: Pinterest wins $7.2M in legal battle with cybersquatter | Internet & Media – CNET News.

Alleging Cyberpiracy, Trademark Infringement, Dilution, and a series of California state law claims, the complaint charges that Pinterest was not Jin’s only target: the serial cybersquatter registered “domains that appear to infringe upon the marks of popular companies, especially online companies, across the globe, including Google, Facebook, Twitter, Etsy, Eventbrite, Foursquare, Hotmail, Hulu, Lotus, Spotify, Blekko, Dwolla, Volunia, Skillshare, Jumio, Scribd, Zazzle, and Zynga.” (read the full complaint here).

Not only did Qian Jin register domains that were clearly intended to cause confusion with and dilute a wide variety of famous brands, he even tried to register Twitter, Foursquare, Instagram, Quora, and Pinterest  as trademarks in China… did he think that this would stop other Chinese cyberpirates from moving in on his territory?

Action in the case was suspended for some time while Pinterest achieved service on Jin in China, which it eventually managed to do in January, 2013. Qian Jin (perhaps not surprisingly) failed to file an answer in the case, and the Court finally awarded a default judgment to Pinterest, pulling the plug on Jin’s operation for good.

While the Court’s order may help Pinterest gain control of the infringing domains, Pinterest’s chances of collecting a single Yuan of the $7.2 million judgment from Qian Jin are probably as remote as, well, China.  For our purposes, however, the judgment is not just a shot across the bows of would-be domain squatters, cyberpirates, and trademark infringers across the globe but a salutary warning to small-time hucksters and wannabe cyberpirates trying to shake down local businesses in exactly the same way.

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic

Susan Scafidi, law professor and academic director of Fordham Law School’s Fashion law Institute (bio here) discusses Christian Louboutin’s efforts to seek an injunction from a court in Belgium preventing the use of his trademark red-soled pumps by a right-wing political faction in Belgium as a part of its anti-Muslim rhetoric.

Louboutin claims his brand is being tarnished.  Scafidi agrees: “This is a case of unauthorized use of a trademark in unrelated advertising, albeit for a political party and a point of view rather than a product.”  She also points out that Louboutin is not the only aggrieved party: the Belgian photograph shamelessly rips off the art of  Canadian feminist photographer Rosea Lake (original shown here), a fact about which Ms. Lake is none too pleased (see her own blogged response here).

Susan Scafidi’s full post (linked below) is well worth reading (as are all of her blog postings).

Louboutin’s Immortal Sole Used to Attack Islam – Counterfeit Chic.

Protecting your big idea

“If only I had thought of [enter big idea here], I’d be rich!

We’ve heard a similar phrase spoken countless times, and we tend to believe that big ideas are a sure path to success, but big ideas are a funny thing.  The person who has a big idea doesn’t always end up with the big idea, doesn’t always wind up coming in first, and doesn’t always end up cashing out big.

In many ways, the success of the big idea comes down to the intellectual property behind it and who can claim a valid legal interest in that property.  As an entrepreneur or business owner, it is almost certain that you will enter agreements with several other parties in order to bring your idea to market.  As you do so, you will have to consider your assets and the measures you need to take to protect them.  It can be easy to overlook the formalities, especially when relationships seem trusting and forward-moving.  Some may fear that tending to the details will kill the deal, impede the trust-building between the parties, dampen the punch of the sales pitch, or perhaps seem unnecessary because everyone is on the same page.  But is everyone on the same page?  Better yet, even if everyone is on the same page now, can you guarantee they will stay that way?

In American Express Co. v. Goetz, the plaintiff, Stephen Goetz, claimed that he had a big idea, that it belonged to him, and that it was stolen by American Express.  His big idea was the slogan “My Life My Card” to be used in conjunction with personalized credit cards. Goetz was a marketing professional, so he put together a packet pitching the idea and mailed it to American Express, Mastercard, Citigroup, and others.  He registered the domain name http://www.mylife-mycard.com, applied for a federal trademark, and also disseminated to recipients of his pitch the address of a test website that previewed the software he had developed to help credit card users personalize their experience.  On all marketing material, the slogan “My Life My Card” was prominently displayed.

As it turns out, his idea was a good idea, a very good idea.  It so embodied a specific marketing message that American Express chose to use the same exact slogan.  As you may recall, beginning in 2005 American Express ran a number of high profile advertisements using the slogan “My Life My Card” and featuring big name celebrities like Robert Deniro, Tiger Woods, and others.  The campaign was a big success.

As you might imagine, Goetz was not happy.  He sued for misappropriation and trademark infringement… and lost.

Why?  Because, the court found, he had no legal interest in the slogan.  Amex did not admit to taking the slogan from Goetz; rather, Amex claimed that it independently developed the idea only one week prior to receiving Goetz’s package in the mail.  Goetz of course did not believe it.  But whether or not we are inclined to share his belief that the timing was just a bit too “convenient,”  it did not matter either way to the court, which based its decision on the fact that Amex could not steal something from Goetz that Goetz did not own.

The court found that Goetz had no legal interest in the slogan, despite developing the idea, registering a domain name using the slogan, and applying for a federal trademark, because a trademark or service mark must be used to identify the source of goods or services.  The slogan was not intended to identify Goetz’s own marketing services, but rather, the hypothetical services of a credit card company.  Trademark rights do not arise in such ideas.  Trademark rights arise from the use of a mark in connection with goods or services in commerce.  Copyright, on the other hand, does protect original expression of ideas, but short phrases like slogans are typically considered to be insufficiently original to gain copyright protection.  Goetz’ idea was not a trade secret because he made no effort to keep it secret, and neither was it the proper substance of patent law.  So how could Goetz protect his idea?

Goetz’ main protection should have come from a contractual agreement, but because Goetz had no such agreement with American Express, Goetz had nothing.  American Express, by contrast, had great success.

When it comes to protecting the intangible assets of your business, the intellectual property attorneys at Briskin, Cross & Sanford can help you make sure that when you enter new relationships with business partners you retain the ability to protect your big idea, leverage your big idea, and make sure your big idea doesn’t go down in history as being someone else’s big idea.