Ack! It's not Coca-Cola! (Is that so bad?)

My coworker, Carolyn, picked up a red can with white lettering, which she assumed was Coke. As she's drinking it, she looks at the can and wonders what Berkley & Jensen is (at this point she still hasn't realized it's not Coca Cola). Even though the can was a lighter shade of red, and the white lettering says 'Cola Clasic' (classic is slightly smaller than Cola.) she said they fooled her-she thought it was real Coke she was drinking. The lettering isn't script, but Cola Classic is also in a lighter pink, and sprinkled over the can-sort of like somebody just dumped it on...(sorry I wish I could describe that better). I also wish I could find a picture of the can online (of course, if you're familiar with BJs wholesale foods, you might already know what it looks like.)

-Ella Shurr (Cleveland, OH)

Ella, you have stumbled upon what is called Trade Dress. It's not trademark law, but certainly a subset of it. Just like trademarks, the Trademark Act of 1946 (also called the Lanham Act) covers trade dress. The case that every law student who studies trademark law reads is Two Pesos, Inc. v. Taco Cabana, Inc. (91-971), 505 U.S. 763 (1992) (the link is to a summary of the case). As the previous link states "§ 43(a) of the Trademark Act of 1946[ ] provides that "[a]ny person who . . . use[s] in connection with any goods or services . . . any false description or representation . . . shall be liable to . . . any person . . . damaged by [such] use." The title of this section of the Act is called "False designations of origin and false descriptions forbidden."

What does this mean? It means that two different goods from two different sources cannot look alike, as if they come from the same source. (And here, "source" means "producer.") In the Two Pesos case, one Mexican restaurant was sued by another Mexican restaurant. Why? According to the published opinion, Taco Cabana opened a restaurant that had "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme." Two Pesos then opened a similar-looking Mexican restaurant.

(I don't know about you, but this description seems to fit many average-quality Mexican restuarants I've been in.)

To make a long story short (too late), the case restates that trade dress is important to mark goods and that you can sue for trade dress infringement. Of course, Two Pesos lost its suit, infringing on Taco Cabana's design.

Here is another example of trade dress: Adidas likes to put three stripes on all of the shirts and shorts it makes. So you know it's from Adidas, even if you can't see the mark, because the design is similar. (Many thanks to Paul Lukas and his Uni Watch Blog for the first couple links.)

There's your crash course in trade dress. I wish I could find a pic of BJ's Warehouse cola, just to compare it. But be on the lookout - it's not just the name, but it's also the packaging and design of the product that matters in trademark and trade dress.

Mailbag!

The last post about Apple's new trademark "NUMBERS," put a thought in the mind of Bryan Adams of Teaneck, NJ.

"Is that why the TV show is called 'Numb3rs'?"

Well, that's hard to say. If I were to guess, I would say that is more of a stylistic choice than a choice because of trademark law.

This is for a few reasons. First off, not many television shows have their titles registered as a trademark. The simple reason for that is there was a time when television shows were not as marketed as they are today. The only association for the name was, probably, the show.

Today, with the advent of t-shirts and DVDs and a million different action figures based on so many television shows, it should come as no surprise that more titles are being registered.

"NUMB3ERS" recently registered on January 31, 2006. Its registration number is 3055208 (for those who would like to look it up). It is registered in International Class 41 under the goods/services of "Entertainment services in the nature of a dramatic television series." (This does make me wonder how a television series provides services of any nature if it's dramatic. It seems more like goods than services to me.)

"NUMBERS" for Apple has not yet registered, but was allowed to continue. It is in International Class 9 for goods/services of "computer software for home, education, business, and developer use."

Can "NUMBERS" and "NUMB3RS" exist next to each other? Absolutely. One of the hallmarks of trademark law is that marks are defined by their industry, goods/services the mark is related to, and the strength of the mark.

Here, the two marks are in completely different industries. One is for a television show and the other is for computer software. You can also argue that the two marks are not that strong.

Trademark strength is defined by how it is related to its mark. The types of marks are defined as:

• Fanciful
• Arbitrary
• Suggestive
• Descriptive
• Generic

A fanciful mark is a mark that has no definition in the dictionary. These are the strongest trademarks because the only relation that exists is to the product sold. Think "Kodak" for cameras and film, or "Clorox" for bleach.

An arbitrary mark is a mark that is a word that is not used in the context of the mark. Think of "Oracle" for computer software or, even "Apple" for computers.

A suggestive mark suggests some quality or characteristic of the mark. "Coppertone" for sun tanning products is the classic example.

A descriptive mark is the weakest kind of trademark. There is a direct link between the mark and the products without any thought needed by consumers. Think "Jiffy Lube" for automobile oil change services. These marks can become stronger with time and use.

A generic term is not a trademark and has no protection. Think "Ball" or "dish."

How does this relate to "Numbers"? Well, both are probably suggestive marks. "Numbers" for a spreadsheet program describes what the software does. There might be more to it, but on the most basic level, the mark describes the product. "Numb3ers" is a television show about a person who uses advanced mathematic principles in order to solve mysteries. It can adequately suggest the premise of the show.

Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness.

Do the different spellings mean anything? No. They are pronounced the same and would be treated as the same word. Note that "doughnut" (the correct spelling) is treated just like "donut" in trademark law. They sound the same and they also look relatively similar.

So, "Numbers" can describe software and "Numb3ers" can describe a television show. The marks are not strong enough to cause confusion in consumer thought. The spelling differences will not mean much, either.

Mailbag

It's always wonderful to receive letters. If you have any comments or questions, do not hesitate to write to averna@anthonyverna.com.

If the persona Mean Gene was created by Titan Sports or by Gene Okerlund while employed or to get employed by Titan Sports, I would think Titan Sports owns the mark, registered or not. Gene Okerlund's complaint against Hot Stuff Foods is then moot. Titan Sports would have the only valid complaint. And since Titan Sports declined to pursue registration of "Mean Gene", Hot Stuff Foods seems to be in the clear.

-Mark Hagenau (Derry, NH)

Mark, I can understand why you'd want to think this. What is tricky about trademarks, however, is that they live and die. Trademarks can also come back to life - you can think of it as resurrection or reincarnation. That is, a trademark can come back in the same exact form as it was. "MENE GENE" as a wrestling personality, involved in professional wrestling telecasts and appearances vs. "MENE GENE" in some other form. Of course, the other form relates back to the original - "MENE GENE" in the wrestling industry. Titan Sports may have dropped the application, but the ultimate lesson here is that the mark could come back in some form if Okerlund isn't a part of Titan Sports and the WWE and, therefore, Titan Sports no longer uses it. If Okerlund himself only uses it to sell himself, then the argument can easily be made that the mark, although not registered, belongs to him.

(On a side note, when a trademark is unregistered, it is referred to as a "common law" trademark. I'll use the proper terminology from now on, but wanted to introduce everyone to the concepts first.)


...[T]he economics are clear, namely, that big pharma can only develop new drugs like this, and give away drugs to third world nations, if it continues to milk the middle class of America for all it is worth.
....
But the purpose of anti-trust laws are to protect the consumers and smaller companies. Anti-trust laws keep big companies from controlling markets to the loss of consumers and smaller companies that would make the market more competitive. This is what Slate seems to be pointing to.
But Anthony, how do we protect stock values and markets and make drugs affordable?

-Brian Sipe (Philadelphia, PA - www.attorneysipe.com)

No letter from a fellow attorney is complete without a plug to his firm's website.

As you can read, this e-mail was much longer, but needed to be cut else this entry would be too long.

Part of what's missing in the Slate article referred to on Schering-Plough, the FTC, and the DOJ is the relationship between all intellectual property laws and and anti-trust laws like the Sherman Act. Intellectual property laws allow the owners to have a monopoly. It effectively carves out a monopoly on what is owned. A trademark allows the owner to use those words or that logo for that product in that industry. A copyright allows the owner to make that piece of art (usually) alone. A patent allows an inventor to make that invention alone. So this is the tug-of-war that is going on here. The monopoly is carved out and if someone else wants to make a generic version of a drug, then all the patents must be expired.