30
Jan/03

Lies About Mature Crabgrass


The Fourth Circuit tells us:

Generally speaking, chemical crabgrass control products are most effective when applied to “pre-emergent” crabgrass . . . the products are also effective on early “post-emergent” crabgrass but are ineffective when applied to mature crabgrass plants . . .   Scotts [plaintiff] contends that the Vigoro [defendant] package misleads consumers into believing that Vigoro can kill mature crabgrass.

editor’s note – I have found that doing nothing until the first frost kills the crabgrass is effective.

This is about depicting mature crabgrass on the crabgrass killer package.  Scotts has apparently been in and out of court over the Vigoro packaging which looks something like this.  Scotts argues that because the product only kills crabgrass up to four weeks old, rather than the mature crabgrass depicted on the bag, the graphic conveys the literally false message that Vigoro is capable of killing mature crabgrass.  This sounds a little suspect (I mean are they going to depict crabgrass roots on the package?) until you hear that Scotts came up wth survey evidence that 92.5%  of the respondents understood the package to mean that.  This impressed the District Court.

However, the Circuit Court threw the survey into the dustbins of expensive surveys given zero weight due to faulty methodology.  Scotts also wasn’t able to show that Vigoro intentionally set out to deceive anyone into thinking it could kill mature crabgrass.  Hit the remand button.

Scotts v. United Industrial, 65 USPQ2d 1161, no. 02-1738 (4th Cir. Dec 23, 2002).

 



30
Jan/03

Request for comments


OK, I need to replace my office fax and copier.  Do you guys have any recommendations? Email [email protected].



30
Jan/03

Ben Edelman on Typo-sites


The latest report from Ben Edelman, entitled “Large-Scale Registrations of Domains with Typographicl Errors.”  The author’s abstract:

The author reports more than five thousand domains that consist of minor variations on the addresses of well-known web sites, reflecting typographical errors often made by Internet users manually typing these addresses into their web browsers. Although the majority of these domain names do not suggest the presence of sexually-explicit content, and although many are variations on domain names frequently used by children, more than 89% offer extensive sexually-explicit content. In addition, these domains are presented in a way that temporarily disables a browser’s Back and Exit commands, preventing users from exiting easily. Most or all of the domains are registered to an individual previously enjoined by the FTC from operating such domains, and these domains remain operational subsequent to an injunction ordering their suspension.



29
Jan/03

The Name Change Is Quicker Than The Eye


Motley Fool suggests that if Philip Morris’ name change to Altria succeeds in diverting attention to its tobacco suit exposure, AOL TIME WARNER will change its name to WHEN I SNAP MY FINGERS YOU WILL FORGET THE MERGER EVER HAPPENED.



29
Jan/03

Imaginarium (U.S.) v. Imaginarium (Spain) – Personal Jurisdiction


Imaginarium is a sub of Toys R Us.  It sells the kind of educational toys I wish my kids would like, instead of Transformers.  In addition to stores it has a website at imaginarium.com, which re-directs to an Amazon site, per a marketing arragnement.  Step Two is a Spanish company which has a sub also named IMAGINARIUM, which also sells educational toys.  It’s website at imaginarium.es has a similar blue rectangular logo.  Their stores allegedly have the same “unique facade” as Toys R Us’ Imaginarium stores.

Toys sued Step Two for trademark infringement in the U.S.  The District Court in New Jersey dismissed for lack of personal jurisdiction.  Third Circuit reviewed.

At first glance, Step Two appears to have neither systematic nor specific contacts with the U.S.  Its website is in Spanisn, it’s  designed for Spanish users and orders are only accepted in Spanish currency.  The site states that goods can only be shipped within Spain.

Toys made two trap sales – employees (with hispanic surnames) placed orders from the U.S. which were fulfilled.  Now, these sales are not going to create specific jursidiction – you cannot create your own jurisdiction, as they say.

But what the two trap sales did accomplish, it seems, was (1) undermine the affidavit from Step Two stating that it had never shipped into the U.S.; and (2) suggested that if Toys was able to conduct jurisdictional discovery, it might uncover more shipments into the U.S. (or other relevant contacts which could support personal jurisdiction – Step Two did make purchases from U.S. suppliers who Toys suspects, I suspect, of helping Step Two rip off Toys’ trade secret information).

Accordingly, the Circuit Court has reversed the dismissal and remanded to allow Toys to conduct discovery relating to jurisdictional.

Toys R Us v. Step Two, No. 01-3390 (3d Cir Jan 27 2003) (thanks to How Appealing for spotting the text).

Coupla points: this case now is one of the “goto” cases when researching an Internet jurisdictional issue, as it lays out the previous law nicely.  Also, if you play with the metasearch, you will see that Step Two has the upper hand, registration-wise, in Europe.  Don’t let this happen to you!  Consult international trademark counsel! I’m one.



28
Jan/03

The Ninth Circuit's Giving Me Excitations


Al Jardine was one of the other members of the Beach Boys.  The BEACH BOYS trademark is owned  by a corporation owned by Brian Wilson, the estate of Carl Wilson, Mike Love and Jardine.  Any shareholder was to be able to use the name pursuant to a license, however Jardine didn’t come to terms with the corporation. Jardine and Love began touring with separate bands.

Jardine promoted his tour as AL JARDINE of the BEACH BOYS and Family and Friends; THE BEACH BOYS “FAMILY AND FRIENDS”; and BEACH BOYS AND FAMILY among other names.  There were incidents of actual confusion – some show organizers canceled bookings after learning that “Jardine’s band wasn’t what they thought it was.”  What that probably means was that they learned Mike Love wouldn’t be singing.

The BEACH BOYS corporation sued Jardine for trademark infringement.  District court ruled against Jardine at smmary judgment. Setting aside whether there was a valid license, the Ninth Circuit analyzed Jardine’s fair use defense on appeal.

There are two types of fair use in Ninth Circuit land: descriptive fair use and nominative fair use.  Descriptive fair use is the use of a term in its primary, non-trademark meaning.  In this situation it would have been using the term Beach Boy to refer to a boy on a beach.  That was not the situation here.

Nominative fair use has a three part test: (1) the product can’t be readily identifiable without use of the term; (2) defendant uses only what is reasonably necessary to identify its products; and (3) the user must do nothing to suggest sponsorship or endorsement by the trademark holder.

As for number one, Al Jardine is allowed to indicate that he is a former Beach Boy.  He doesn’t have to say that he was a member of that band headed by Biran Wilson which released Pet Sounds, you know the one . . . So he passes test number one.

Second, he used only what was reasonably necessary – he didn’t use Beach Boy logos, Beach Boy album covers, didn’t use more than was needed to identify his role as a Beach Boy (but see comment below). Two for two.

Jardine screwed up on element three.  By displaying the term BEACH BOY more prominently than FAMILY AND FRIENDS, he suggested sponsorship.  Also, by using BEACH BOYS in the name of his band, he caused confusion (I think that this fact represents “taking more than you need” and could have been mentioned in element two).  The fact that there had been actual confusion weighed heavily against him.

Injunction affirmed.   Full text here.

P.S.  Here is an ad for AL JARDINE’S FAMILY AND FRIENDS.

 



28
Jan/03

What Do You Think?


Here’s an article about a trademark dispute but this comment isn’t about the dispute itself.  It’s about the fact that the reader’s understanding of the dispute would be enhanced merely by depicting the logos involved.  The owners the 5 A Day For Better Health logo say that the 3-A-Day For Stronger Bones logo looks “suspiciously similar.   This linking thing isn’t that difficult.



27
Jan/03

More on Register,com Takeover Battle


Further coverage on the Register.com takeover battle.  Say one thing: entrust managment of your name portfolio to a law firm, you don’t worry about staff being distracted by takeover battles.  Partner defections, maybe, takeover battles, no.  Interesting quote:

“They’re incredibly difficult people to deal with, and that’s one of the big problems when it comes to anyone buying them out,” a source familiar with the situation said.



27
Jan/03

Got Grapes?


Suppose you grow grapes for a living and you believe that your grapes are better than everybody else’s grapes.  In fact, you spend a lot of money branding your grapes so that people will choose your grapes, not just anybody’s grapes.

Now here comes the state telling you that you have to contribute money to some grape marketing board so that it can run a stupid generic grape advertising campaign, which in your view, sends the wrong message that grapes are grapes.  Why should you be forced to pay money for a message that (1) you don’t agree with; and (2) might hurt you competitively?

Here’s a Ninth Circuit decision discussing compulsory agriculture advertising laws – thanks to How Appealing for the link.



27
Jan/03

Order to Chill Let Stand in Barbie Girl Case


Cert has been denied in Mattel v. MCA, the Barbie Girl case, in which Mattel, owner of rights in the BARBIE doll (“the American girl with the fictitious figure”) protested a song entitled BARBIE GIRL.  The Ninth Circuit decision (background and text here) had concluded with the admonition that both sides should chill.