On June 9, Nestlé USA filed a petition with the United States Patent and Trademark Office to revoke Muscle Milk’s trademark for being “deceptively misdescriptive.” In response to questions from The New York Times, representatives for both Nestlé and CytoSport issued statements.
“Nestlé USA strongly believes in the nutritional benefits of milk,” the company stated. “Consumers looking at Muscle Milk, marketed as a ‘Nutritional Shake,’ are likely to be misled into believing they are purchasing a flavored or supplemented milk product, when, in fact, they are purchasing a water-based product that contains no milk.”
IC 040. Custom manufacture of computer hardware for use in data centers and mega-scale computing environments for others
IC 042 Design of computer hardware for use in data centers and mega-scale computing environments for others; customization of computer hardware for use in data centers and mega-scale computing environments for others; design and development of networks for use in data centers and mega-scale computing environments for others; Consulting services for data centers and mega-scale computing environments in the fields of design, selection, implementation, customization and use of computer hardware and software systems for others; Consulting services for data centers and mega-scale computing environments in the fields of design, selection, implementation, customization and use of computer hardware and software systems for others
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 77139082
Filing Date March 23, 2007
Published for Opposition April 15, 2008
Owner (APPLICANT) Dell Inc.
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "COMPUTING" APART FROM THE MARK AS SHOWN
Plaintiff uses the mark UTAH LIGHTHOUSE in connection with goods and services that critque Mormonism. There has been extensive history between plaintiff and the LDS faith. Defendant FAIR responds to such critiques, and created a parody website that was similar in appearance to that of Plaintiff. Defendant used domain names such as UTAHLIGHTOUSE.COM to direct to the parody site (the names listed in this summary of the case on the Citizen Media Law Project's site all appear to point to plaintiff's site as this time).
There are complex and controversial issues here involving the intersection between trademark use and parody, and what constitutes commerical use of a trademark in a primarily religious/political speech context, similar to the issues raised by cases such as PETA v Doughney and JEWS FOR JESUS v Brodsky
Which issues I will not address in this post today.
I instead want to talk about the strange way the issue of whether plaintiff had a protectable mark was handled. Plaintiff received a registration 3119677 for UTAH LIGHTHOUSE after filing its complaint. Sections 7(b) and 33(a) of the Lanham Act discuss the evidentiary presumptions that a registered mark receives, including the validity of the mark as a protectable mark. See also McCarthy Section 32.134 and 32.138 for a general discussion of the presumptions that flow from a trademark registration.
In addressing the requirement as to whether it owned a protectable mark, plaintiff appears to have only cited its registration and relied upon the presumption. The District Court held that because the mark was not registered at the time the suit was filed, plaintiff was not entitled to that presumption (pg. 8) and then found that plaintiff had not shown secondary meaning (and then proceeds on a tangent about the absence of secondary meaning).
On appeal, plaintiff argues that even without the presumption, UTAH LIGHTHOUSE was inherently registrable.
The 10th Circuit choose not to entertain this argument as it had been raised only on appeal for the first time.
Oddly, it also finds that plaintiff failed to produce sufficient evidence that UTAH LIGHTHOUSE was protectable. If the registration was in the record, then, because it was issued under Section 2(a) and not 2(f), it would seem to be at a minimum evidence of the PTO's expert opinion that UTAH LIGHTHOUSE was inherently registrable as of March 21, 2005, the application's filing date (prior to the date that the suit began). With a minimum of evidence of trademark use (such as plaintiff's website), it is hard to see how defendant could establish that the mark wasn't protectable.
It could be that plaintiff's travails could have been avoided by plaintiff merely arguing in effect 'we are entitled to a presumption because of our registration but in any event, the mark is inherently registrable . . .', and that the court is penalizing the lawyering (unfettered by knowledge, I speculate freely).
As I stated above, I'm not speaking to the questions as to whether defendant's actions rose to commercial use, and whether it had good parody or other defenses. Based on one reading of the circuit court opinion, and none of the underlying documents, the holding that UTAH LIGHTHOUSE was not a protectable mark seems problematic at best.
In this discussion of a Swiss Federal Adminisitrative Court decision holding that PEACH MALLOW is not descriptive of candy, the point is made that Marshmallows are no longer made of the Mallow plant.
Which Movie Has The Line "Nobody Puts Baby In A Corner"?
If you got that right, you may be needed to testify as to secondary meaning. Story regarding the trademark suit here.
Update: WSJ Lw Blog points out that it woudl be great to attend a hearing in this suit, so that you can hear the judges and lawyers repeat the line over and over again.
The latest INTA Bulletin arrived. Highlights include an illustation of a fishing line guide (discussion of the registrability of same in this decision), report of Dutch case involving the Adidas three-stripe mark, and news of a famous mark decision from Poland (LEXUS).
NY Times: 'Smiley Face Is Serious To Company' Story of the Loufrani family, which owns trademark registrations to the 'smiley face' around the world. If you have tiume to kill, you can go to TTABVue and use 'Loufrani' as a search term, to pull up dockets for its various oppositions against the likes of Wal-Mart.
The article claims that the smiley face was created by Harvey Wall in 1965 (and doesn't credit Forrest Gump). Loufrani reportedly filed in the U.S. in 1997, Wal-Mart reportedly used the mark in 1996.
You Chose TTABlog For The Writing, You'll Come Back For the Great Taste
That sweet John Welch at TTABlog displays his great sense of taste with a delicious discussion of the refusal to register orange flavor as a trademark for a medication, a decision that will no doubt leave the applicant sour, and about which drug manufacturers will probably feel bittersweet.
I'm not aware of a registration covering taste in the U.S. If you're aware of one outside the U.S., please email us. This decision reportedly states that a trademarked taste is conceivable upon a strong showing of acquired distinctiveness, but points out the logistical problems in a trademark office examining a taste.
To which I would add: the problem a proving that one taste is confusingly similar to another.
This illustration for Tim O'Reilly's article "What Is Web 2.0?" suggests the challenge that CMP created for itself in maintaining WEB 2.0 as a trademark (as opposed to a meme). Forget for the moment whether lawyers are necessary, or whether it was bad PR for CMP to send a demand letter, or if O'Reilly, as a champion of open-source ideas, should be held to different standards, or whether somebody was rude to somebody in an email.
There is a branding and trademark protection point here.
When the ITU was filed for WEB 2.0 in 2003, WEB 2.0 was, imho, an inherently registrable mark. I base this on one fact and one assumption. The fact is that the PTO (correctly) didn't give the mark a descriptiveness objection and the assumption is that the term was not widely used in 2003 (although some dispute this). So CMP had the potential for a strong exclusive trademark.
So, despite what Mr. O'Reilly states in paragraph of his post today, this may indeed be that rare trademark creature, genericide, but self-incurred genericide.
This can be a totally acceptable branding strategy. But the trademark lawyer has to advise the client that adopts this 'brand as buzzword' strategy that its likely result is razor-thin trademark protection, and backlash when those thin rights are asserted.
Blog of IT@Cork, organzation that received demand letter from CMP (parent of O'reilly) re use of WEB 2.0 to describe its IT@Cork Web 2.0 conference, here.
IMHO, the 2005 O'Reilly piece begins and ends the discussion. If you coin and promulgate a term, you can sell it as a buzzword or you can sell it as a brand, but under trademark law, it's virtually impossible to do both. (And if I want to promote the Trademark Blog Web 2.0 Conference about protecting trademarks in the Web 2.0 space, then I will cite the O'Reilly essay as Exhibit A as to how I am using the term to describe a quality of my offering.
p.s. CMP is a trade publication specialist. It owns trademarks like VIDEOGRAPHY and CALL CENTER. Its lawyers are familiar with Section 2(f) of the Lanham Act.
Wikipedia on the term "Drinking the Kool-Aid" here.
Echoing TTablog, my reaction to the decision was 'coulda told you that in fewer than 29 pages' although to be fair to the Board, most of the decision is concerned with shutting down a ploy in drafting applications for [generic].com marks.
Trademarks build brands and domain names build pre-brand traffic. When it comes to generic domain names, it appears that you cannot have everything (though some of us will keep trying).
For what it's worth, I entered 'Wiki [trademark]' as a Google term for 10 different trademarks and got that trademark's Wiki entry as top hit 10 of 10.
