Broken Dreams

Imagine that you are a big fan of a presidential candidate and that you wanted to show your support for this presidential candidate. What would you do to show that you are a big supporter? Wear buttons? T-shirts? Show up at rallies? How about print t-shirts with the candidate's name on them in the fonts of various baseball teams.

There was a website set up by a Barack Obama supporter called obamaofdreams.com that did just that. On the site, various t-shirts came in the styles of Major League Baseball teams. According to the creator of the site, Morris Levin (scroll down to see the reference), “One of my underlying goals is to marry Obama with mainstream culture through baseball, and I’d like to think that everyone here can appreciate the results, regardless of your political affiliation."

The website, however, is now closed.

What happened? Quite simply, an attorney contacted Levin contending that Levin violated the league's trademarks.

Before you continue reading, please click on the last link to take you to thesmokinggun.com's article on the site (it also has a few examples of the t-shirts). Did you read it? Good.

Thesmokinggun.com brings up two different thoughts without probably realizing it: 1) distinctiveness of trademarks and 2) transformation of trademarks.

Both ideas in trademark law underscore the biggest philosophy - consumer confusion. Consumers must be able to understand the source of goods and services and the quality of those goods or services - else trademarks fail as a system.

Here, if Levin's t-shirts are so transformative that consumers can tell that one of the t-shirts does not come from a baseball team - even if the marks used are so distinct - then it can be argued that his marks do not infringe or dilute the trademarks of baseball teams. On Levin's side is that certainly, baseball teams do not routinely print t-shirts of political figures in their own fonts. On baseball's side is that the marks are so distinct that those fonts are only representative as a source of goods from a baseball team. Plus, baseball teams make t-shirts (as well as many other kinds of clothing). It's a difficult argument, but there arguments for both sides.

One other issue - is a font a trademark? Generally, I would answer that a font is not a trademark. However, many of these teams have operated for many years using the same font and the same (or similar) colors. At some point, those fonts are associated with that team and with that team only.

Lieutenant Dan Got Me Invested in Some Kind of Fruit Company.

Cisco and Apple finally settled their dispute over the use of the trademark "iPhone."

It comes as no surprise since Cisco's complaint was filed back in January. The complaint alleged trademark infringement, unfair competition, false description and injury to business reputation (the charge of injury to business reputation is a California state claim; all the others are federal claims under the Lanham Act - the act that makes trademarks the domain of federal law).

Cisco had two main arguments in its infringement argument. The first that Apple's use of "iPhone" in its cell phones would confuse customers because Cisco's iPhone used for "computer hardware and software for providing integrated telephone communication with computerized global information networks." (That's from the description in the trademark registration.) The second is that even if Cisco and Apple make different products now, in the future, technology would allow their products to converge and the same mark would then compete head-to-head from two different companies.

One of the last paragraphs of the Associated Press story says, "Legal experts said Cisco's argument that the phones could eventually compete seemed like an unlikely scenario. They added that the products and markets they serve are currently so dissimilar there's little likelihood of future trademark tangles."

I agree that the "future" argument is weak. I am concerned, though, because at first blush, Apple's iPhone "combines three products — a revolutionary mobile phone, a widescreen iPod with touch controls, and a breakthrough Internet communications device with desktop-class email, web browsing, maps, and searching — into one small and lightweight handheld device" (according to the iPhone website). If that is not "computer hardware and software for providing integrated telephone communication with computerized global information networks," then I'm not too sure what is.

What I find interesting, however, is Cisco's trademark attorneys' lack of using trademark dilution as well as infringement in their arguments. Dilution is the use of a famous trademark in another mark which lessens the uniqueness of the mark. The issue here: Was "iPhone" famous before Apple's cellular phone announcement? I would have made the argument, especially since the Trademark Dilution Revision Act of 2006, or H.R. 683, was signed into law. The new law revised the definition of dilution so that the plaintiff only needs to show the defendant's mark is likely to cause dilution (in the past, only evidence of actual dilution was to be considered).

I'm not sure this is finished. Apple and Cisco, as a part of the agreement, are going to try to work together to have products (like the iPhone) that work with Apple and Cisco technology. I'm curious how well that will go.

Happy New Year

Happy New Year, readers!

The forum has taken some time off in order to do work and take care of personal business.

The big news story in the technological world comes from Apple. There's no shock there, as Apple has been making waves in personal devices, like the iPod. In fact, this forum noted that Apple has been protecting its marks feverishly by taking steps to stop any mark that begins with a lower-case "i" followed by a word.

So, the big news story is that Apple has released a cell phone called, of course, the iPhone.

And now the battle begins for the name, iPhone. What's that? You never heard of iPhone before? Cisco owns the mark and has begun to try to enforce its rights in the name, saying that Apple's iPhone mark is in the same goods and services (or a similar set) as Cisco's.

If anyone is curious, the text of the complaint can be found on the Web.

The iPhone name was first registered in 1996 by InfoGear, a maker of Internet appliances. Cisco acquired InfoGear, and the trademark, in 2000.

Apple even tried to negotiate the use of the iPhone mark.

Looking at the mark, Cisco's iPhone represents "computer hardware and software for providing integrated telephone communication with computerized global information networks."

As in most trademark issues, the issue swings upon the difference between the two products. Is Apple's cell phone/music player/video player/internet browser different enough to Cisco's products? It'll be interesting to keep tabs on this one.

Stop Pooring my Coffee!

Standard & Poor's, known to many as a financial institution of some sort, has sued a Texas-based company called Standard & Pours Coffee & Stocks, which is a cafe, for trademark dilution.

As stated in an earlier post, "[d]ilution comes in when the defendant's use of a mark either blurs the connection in consumers' minds between the plaintiff's mark and the goods and services is weakened or the defendant's use tarnishes the plaintiff's mark."

Now, it's silly to think that someone is going to confuse the two. Who is going to walk into the cafe to then ask the person behind the counter for a hot stock tip? We all hope that the answer is "Nobody."

Since these marks are in different indusries (finance vs. cafes), why can this be? This mark - Standard & Poor's - could be defined as having such notoriety that it cuts across all markets and industries. Again - think of Apple. You're not thinking Apple Records, are you?

The name of the cafe had to be chosen in order to be close to Standard and Poor's and, therefore, can dilute the name of the finance company.

S&P is taking the correct action to not dilute its corporate name and identity.

I feel prescient. Apple defends "Pod."

Back on July 20th, I wrote, "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."

Now here is the twist. Apple is claiming the word "pod" as its own trademark in all situations. The worry is that any use of "pod" in a trademark could dilute the "iPod" mark.

Let's start with what trademark dilution is. As I defined it on my trademark website of NYCTrademarks.com, "Trademark dilution ... is reserved for strong trademarks. Those trademarks with the strongest in identity in a market cannot be used in other noncompeting markets. This is to avoid "diluting" the strong, recognizable mark by its use in noncompeting markets.
"Dilution is best described in an example. A mark that is recognizable is 'Barbie.' The mark 'Barbie' brings up an idea of a girl's doll of an adult woman and friends in a pink box. Most likely, 'Barbie' would not be allowed to be used in another market, even if it did not compete with children's toys because of how strong the mark is and how identifiable the mark is to the goods."

I based this example from a real case, Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894 (9th Cir. 2002)(the link opens a PDF file). In this case, the song "Barbie Girl" by the group Aqua was found to dilute Mattel's trademark in the word "Barbie." (One interesting question never propsed: What if the song wasn't called "Barbie Girl"?)

Dilution comes in when the defendant's use of a mark either blurs the connection in consumers' minds between the plaintiff's mark and the goods and services is weakened or the defendant's use tarnishes the plaintiff's mark. (Tarnishing means that the defendant's use is unsavory or unwholesome or the mark is used in connection with inferior products.)

The issue in any upcoming fights will be two-fold: Is "iPod" as a mark strong enough to warrant that it can be diluted and can any mark with "pod" in it dilute "iPod"?