By Dmitriy Molchanov and Jeffrey Bashara, Penn Law '17
Whether you want to launch an app, a social startup, or a traditional storefront business, being aware of trademark issues at play will be crucial to protecting and growing your brand. Here, we focus on one of the earliest considerations: choosing a name.
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Is the title to this blog post infringing? Well, it seems the NFL would assert that much…and more! In a recent television commercial, Samsung, the latest hand caught in the Intellectual Property cookie jar calls a blitz on the NFL’s aggressive enforcement of its trademarks and throws a flag on trademark law. Specifically, they imply that trademark law forbids use of NFL trademarked terms such as “Super Bowl” or team names, even in appropriate references, like referring to the “Big Game” itself. The entertaining commercial is posted here: Samsung's NFL & Trademark Bashing Super Bowl Ad. But Samsung may have overplayed their hand once again. While the NFL may indeed be Mama Bear protective of its trademarks, trademark law may not.
Professor R. Polk Wagner, an expert in Intellectual Property Law on the faculty at the University of Pennsylvania Law School, contends that the NFL is (perhaps overly) aggressively enforcing their trademarks because these marks are critically important to the business of the NFL. Similarly, fashion companies will go to great lengths to ensure exclusive use of their trademarks, often asserting trademark infringement even where they may not have the right to stop the use. As an example (without comment of course) see this PIPG Blog post discussing Louis Vuitton’s cease-and-desist action against this very organization.
Bullying aside, trademark infringement generally cannot be asserted when the use in question is simply naming the product described and not likely to cause any consumer confusion, Professor Wagner explains. For example, to say that this blog post is the Super Bowl of blog posts is prima facie infringement because I am using the NFL’s trademark of the Big Game to describe something else—my super blog post. But to say this is a blog post about the Super Bowl is not infringement because I am using the trademark to identify the thing it is protected to mark—the Big Game—which is what this blog post is about (sort of).
So how does the NFL get away with it? Why must Samsung refer to “El Plato Supreme’” or “the Big Game” when the game has a name—the Super Bowl!? Frankly, because if the NFL (or Louis Vuitton for that matter) wants to sue, they can sue. And regardless of the merits, litigation is expensive. Even the threat of a lawsuit can serve as an effective deterrent. In short, if this blog post should disappear…well, you will know why.
Penn Law Intellectual Property Group (PIPG) is proud to present a career panel featuring leading In-House Counsel from the Media, Fashion, Tech & Pharmaceutical Industries. Our panelists will discuss how intellectual property is prominent in their in-house roles, how they achieved their corporate positions, and offer summer and long-term career advice for students of all levels. Whether you’re interested in patents, copyright, or trademarks, our distinguished speakers’ experience spans all areas of IP!
The all-star cast of speakers:
Media:
VERNON CHU
General Counsel
BBC Worldwide Americas
Fashion:
SHERRY JETTER
HMX Group, Polo Ralph Lauren, Donna Karan
Tech:
FREDERIC BECKLEY
General Counsel, EVP
MeetMe, Inc.
Pharmaceutical:
CHARLES KINZIG
VP, Global Patent Litigation Governance and Corporate IP
GlaxoSmithKline
Moderated by our very own Professor CYNTHIA DAHL,
Director
Penn Law Detkin Intellectual Property and Technology Legal Clinic
Wednesday, February 13th. 4:30 - 6:00 pm.
Location: Gittis 214 (Penn law School). Catered Reception to follow. Don't miss this great networking opp!
Sponsored by PIPG and GAPSA
SPEAKER BIOS
Vernon G. Chu (General Counsel; BBC Worldwide Americas)
Mr. Chu has been the head of the legal department of BBC Worldwide Americas (BBCWA), since July 1999. He is responsible for all legal matters affecting BBCWA in North and South America. He coordinates policy issues with BBC Worldwide in London such as fair-trading, trademark and copyright policy. He is responsible for the legal aspects of BBCWA’s cable channel, BBC America, its content and production business which produces US network shows such as Dancing With The Stars, Top Gear and Torchwood, and BBCWA’s global licensing and digital entertainment and gaming business.
In December 2007, Mr. Chu was selected as the 2007 Counsel of the Year by the Association of Media and Entertainment Counsel. Before joining BBCWA, he had been an associate with Kay Collyer & Boose in New York City from 1989-1995. As an attorney, his responsibilities included negotiating production and distribution agreements with networks, cable and public broadcasters and financing agreements for production of motion pictures, television series, specials and documentaries.
Mr. Chu graduated from the Wharton School in Philadelphia in 1982 with honors and a degree in accounting and economics. In 1985 he received his MBA from Cornell University. A year later, he graduated Cum Laude from Cornell Law School.
Sherry Jetter (Former General Counsel and SVP at HMX Group, VP of Intellectual Property at Polo Ralph Lauren, Assistant General Counsel at Donna Karan Co.)
Ms. Jetter has been an in house practitioner in the fashion industry for over 22 years. Among her corporate roles, Ms. Jetter has become an expert in brand protection, intellectual property and licensing.
Most recently, Ms. Jetter held the position of Senior Vice President and General Counsel at HMX Group, a New York City-based apparel manufacturer that owned the American brands Hickey Freeman, Bobby Jones, and its Hart Schaffner Marx flagship label, which President Obama wore to his first inauguration.
Prior to joining HMX, Ms. Jetter worked for 10 years at Polo Ralph Lauren Corporation as its Vice President of Intellectual Property and Legal Affairs. She got her start in the fashion industry at the Donna Karan Company as its first in house counsel and eventually served as the company's Assistant General Counsel, Senior Director of Intellectual Property.
In October, 2012, Ms. Jetter started her own practice counseling clients in the fashion industry.
Ms. Jetter is a 1983 Cum Laude graduate of Barnard College, Columbia University and received her JD from Brooklyn Law School in 1986.
Frederic Beckley (General Counsel & Executive Vice President, Business Affairs; MeetMe Inc.)
Mr. Beckley is the General Counsel and Executive Vice President, Business Affairs of MeetMe, Inc., the public market leader for social discovery. He joined the company in 2011 as its first General Counsel and is responsible also for content moderation, customer relations, and human resources.
Prior to joining MeetMe, Fred served as General Counsel and Executive Vice President, Business Development of TruePosition, Inc. Previously he held a number of positions at Verizon Corporation. Mr. Beckley began his professional career in private practice, first as an associate on the Mergers and Acquisitions Team at Dechert, Price & Roads and then as an associate in the Commercial Department of Pepper, Hamilton & Scheetz.
Mr. Beckley holds a J.D. from Yale Law School, an M.A.R. from Yale Divinity School, and a B.A. from the University of Pennsylvania.
About MeetMe, Inc.
MeetMe® is the leading social network for meeting new people in the US and the public market leader for social discovery (NYSE MKT: MEET). MeetMe makes meeting new people fun through social games and apps, monetized by both advertising and virtual currency. With 60% of traffic coming from mobile, MeetMe is fast becoming the social gathering place for the mobile generation. The company operates MeetMe.com and MeetMe apps on iPhone, iPad, and Android in English, Spanish, Portuguese, French, Italian and German.
Charles M. Kinzig (Vice-President, Global Patent Litigation Governance and Corporate IP Policy; GlaxoSmithKline)
Mr. Kinzig has held various positions within the IP department, counseling on intellectual property matters, preparing and prosecuting patent applications, licensing, and litigating patents. He assumed responsibility for managing the U.S. Corporate Intellectual Property department of SmithKline Beecham in 1998, which handled patent solicitation, prosecution, due diligence, litigation, and counseling activities for the company’s commercial operations and R&D in the U.S. Through merger, the company became GlaxoSmithKline, and he assumed similar responsibilities for North and South America prior to his current position.
Mr. Kinzig graduated from The Johns Hopkins University with a B.A. and M.A. in Organic Chemistry, and spent over a decade in the medicinal chemistry group at Smith Kline & French Laboratories in Philadelphia, engaged primarily in drug design and discovery. He left the R&D organization to join the patent department, and received his J.D. from Temple University’s Beasley School of Law.
Professor Cynthia Dahl (Director, Penn Law Detkin Intellectual Property and Technology Legal Clinic)
Professor Dahl joins Penn Law as the Director of the new Detkin Intellectual Property and Technology Legal Clinic. She specializes in the business applications of intellectual property and technology. While Senior IP Counsel for TruePosition, Inc. a Liberty Media-owned international wireless location company, she grew the company’s extensive patent portfolio, drafted all manner of intellectual property agreements, managed litigation and advocated on behalf of the company in front of international standards bodies. Prior to working at TruePosition, she was a litigation associate at Holland and Hart LLP, and Pennie and Edmonds LLP. Before launching her legal career, she counseled artists at Volunteer Lawyers for the Arts in New York, and held several jobs in policy and the press, including working for Senator Bill Bradley (D-NJ) and Nina Totenberg at National Public Radio.
Professor Dahl graduated with a B.A. from Yale in 1991 and with a J.D. from Stanford Law School in 1998.
Over the past couple of weeks, the Penn Intellectual Property Group has been the subject of controversy because of a flyer that circulated the law school advertising its much-anticipated Fashion Law symposium by cleverly altering the Louis Vuitton logo. Before I begin this entry, I would like to note that this blog and its opinions do not represent Penn, Penn Law, or PIPG’s positions on the issues. I merely seek to comment on the legal aspects of the controversy.
On February 29, the Director of North American Civil Enforcement for Louis Vuitton Malletier, Michael Pantalony, sent a cease and desist letter to the University of Pennsylvania Law School’s Dean, Michael Fitts, regarding the Fashion Law symposium flyer. Mr. Pantalony identified the group’s advertisement as an “egregious action” that is “not only a serious willful infringement and knowingly dilutes the LV Trademarks, but also may mislead others into thinking that this type of unlawful activity is somehow ‘legal’ or constitutes ‘fair use’ because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and ‘must be experts.’” (Letter from Michael Pantalong, Dir. of Civil Enforcement, N. Am., for Louis Vuitton Malletier, to Dean Michael A. Fitts, U. Pa. L. Sch. (Feb. 29, 2012)).
On March 2, Robert Firestone, Associate General Counsel for University of Pennsylvania, fired back the school’s response on behalf of the School and Dean Fitts. Mr. Firestone’s letter adamently denies infringement and supports PIPG’s flyer as a non-infringing play on the Louis Vuitton label. The letter argues against infringement claims on two grounds: lack of infringement and lack of dilution. Mr. Firestone explains that there is no infringement because (1) PIPG’s posters are not being used to identify goods and services; (2) Louis Vuitton’s trademarks are likely not “registered in Class 41 to cover educational symposia in intellectual property law issues;” and (3) there is no likelihood of confusion. (Letter from Robert F. Firestone, Assoc. Gen. Counsel to U. Pa. L. Sch., to Michael Pantalony, Dir. of Civil Enforcement, N. Am., for Louis Vuitton Malletier (Mar. 2, 2012)). He supports his denial of lack of dilution by noting that the poster’s artwork is a noncommercial use of the mark and a fair use parody. Id. (“PIPG has not commenced use of the artwork as amark or trade name ...”).
I now consider the validity of one of school’s defenses against Louis Vuitton’s allegations, that being the defense that there is no infringement because there is no likelihood of confusion. There is no likelihood of confusion here because the PIPG poster is advertising an educational symposium and thus is unlikely to be mistaken for a Louis Vuitton luxury product. A multi-factor test may be applied to consider all of the factors contributing to likelihood of confusion, which is especially helpful in instances where the allegedly infringing “good” is noncompeting with the trademark’s product. These factors are:
(1) the degree of similarity between trademark and alleged infringing mark; (2) the strength of the owner’s mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sales efforts are the same; (9) the relationship of the goods in the minds of consumers because of the similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market, or that he is likely to expand into that market.
A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 211 (3d Cir. 2000) (citing Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978)).
On factor (1), Louis Vuitton seems to have a persuasive argument because the marks are similar except Penn Law’s notable TM and © signs. Factors (2) and (3) relate to the strength and integrity of the parent mark as well as the level of sophistication of a potential buyer of the trademarked good. As Mr. Pantalony explained, Louis Vuitton’s mark and brand has a long and rich history in which the brand has “built up a worldwide reputation for its design, innovation, quality and style.” (Letter from Michael Pantalong, Dir. of Civil Enforcement, N. Am., for Louis Vuitton Malletier, to Dean Michael A. Fitts, U. Pa. L. Sch. (Feb. 29, 2012). This effectively means that the mark is likely strong enough to be distinguished from an advertisement that uses a technically different mark and is displayed in a way unrelated to Louis Vuitton’s business. Additionally, because of the high price point for Louis Vuitton goods, the average consumer would be expected to be familiar enough with the mark to distinguish it from the one displayed on the PIPG poster.
Factor (4) and (6) are not useful here as the Symposium’s poster was only displayed for a matter of days when Louis Vuitton challenged it and there has been no evidence of any actual confusion as to the source of the mark from the advertisement; that is students and legal professionals have understood that the source of the poster is the Penn Intellecutal Property Group and not Louis Vuitton. The intent of the students in creating the poster was certainly not to infringe or cause confusion regarding the mark, thus putting factor (5) strongly on the University’s side. Factors (7), (8), (9), and (10) all go to the issue of determining the distance between the markets for the original trademark’s goods and the alleged infringer’s product. Quite clearly, this is the school’s strongest argument for lack of likelihood of confusion. Not only is the school not selling a product of any kind, but PIPG was merely spreading information about its educational symposium. This seems to be a far cry from operating in the marketing channels of an elite luxury good company. Considering these ten factors altogether, Penn Law School and its IP group have a strong argument against Louis Vuitton’s allegation of likelihood of confusion between the club’s clever advertisement and the corporation’s established brand.
It is important to note, that this is just one of the defenses the school may raise against allegations of trademark infringement. In the absence of a denial of likelihood of confusion argument, the school seems quite clearly to have a strong defense from liability because “noncommercial use of a mark” is an explicit exclusion in the federal statute on trademark. 17 U.S.C. § 1125(c)(3)(C) (2006).
Once again, I reiterate this blog merely represents the ideas and opinions of this blogger and do not reflect the opinions of Penn, Penn Law, or Penn IP Group’s on the issue.
Jeremy Lin’s Cinderella-story from an undrafted Harvard graduate to NBA sensation has generated a rigorous fan base and “Linnovative” lexicon. However, some fans are looking to not only get caught up in the “Linsanity,” but capitalize on the Lin-spired puns. As of this post, there have been ten trademark registrations for the term “Linsanity.”
The United States Patent and Trademark Office (PTO) allows domestic users to register a “word, name, symbol, device, or any combination” used in identifying goods and distinguishing sellers, for a fee of approximately $100. The registration is to be accompanied by a brief description of the distinguished goods or services associated with the mark. If approved, the user receives benefits such as the legal presumption of ownership and exclusive use rights.
Thus far, the ten trademark registrations have ranged from attempting to cover eyeglasses to cell phone covers. A derivative in the form of “Linsanity 17” purports to cover sports drinks and virtual goods. The first to file was Yenchin Chang on February 7, 2012, followed two days later by Lin’s former high school coach Andrew Slayton. The ABA Journal reports the Slayton wanted “to be part of the excitement” and also owns the domain Linsanity.com.
In protection of his intellectual property rights, Lin himself filed a trademark application through an attorney at Arent Fox. Expect to see merchandise such as “Linsanity” duffel bags, mugs, beverages, and even action figures hit the store shelves –all covered by the mark.
While Lin will most likely be successful in registering “Linsanity” because the other applicants lack a legitimate connection to his services, it remains to be seen whether he can keep up with the massive amounts of other puns his sudden fame spawned. Most notably, in the last month there have already been two attempted registrations each for “Linning” and for “Lincredible.”
All trademark applications can be viewed by conducting a basic word search of the appropriate term in the PTO’s Trademark Electronic Search System (TESS), here: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4009:9l69u7.1.1
Due to the popular social networking site Twitter, the noun/verb “tweet” is now a familiar and exhausted term in everyday discourse. However, it is also a registered trademark, and Twitter expressed its protectiveness over the mark in a recent complaint against advertising company Twittad’s registration of “Let Your Ad Meet Tweets.”
Twittad, a limited liability company with its principal place of business in Iowa, maintains the website twittad.com, which offers advertising services contingent on Twitter’s services. Twittad currently pays a network of over 27,000 private users for tweeting commercial ads. In its federal trademark application for “Let Your Ad Meet Tweets,” Twittad specified that the registration was namely for providing advertisement space on the internet for others.
In its complaint, Twitter points out that Twittad failed to mention that its advertising services were meant to be used solely in connection with Twitter’s services. According to Twitter, “Tweet” is the only distinctive portion of this mark, which was registered in order to exploit the “popularity and fame of Twitter’s ‘Tweet' brand." (2011 WL 3983379 (N.D.Cal.)). As Twitter also owns a host of “tweet” marks including “Cotweet,” “Tweetdeck,” and of course “Retweet,” Twittad’s mark could appear to be in this family of marks and confuse consumers.
Twitter is specifically claiming that “Let Your Ad Meet Tweets” should be cancelled pursuant to 15 U.S.C. §1502(d), §1064, and §1119. Also known as the Lanham act, the federal statute provides that a trademark registration should be refused if it “comprises a mark which so resembles a mark registered in the Patent and Trademark Office,” 15 U.S.C.A. § 1502(d) (West)). A petition to cancel registration may be filed by “any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment.” Id. § 1064 (West). Courts have the power to cancel such registrations under §1119.
However, according to JurisNotes, as of 10/19/2011, Twitter has agreed to drop its suit against Twittad in exchange for being assigned the entire interest in the mark. While other terms of the settlement are confidential, it seems that Twittad’s Twitter account will be restored and it can continue its advertising services while still using the tagline “Let Your Ad Meet Tweets.”
For more information, see the original complaint for declaratory judgment filed in the Northern District Court of California. (2011 WL 3983379 (N.D.Cal.). The trademark registration for “Let Your Ad Meet Tweets” can be found here: http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:bpjbqg.2.1The assignment of title history for the mark clearly indicates that Twitter was assigned the entire interest on 10/11/2011.
The second panel presentation discussed trademark protection in a globalized world. Panelists discussed the economics of trademark protection, new issues in protecting trademarks internationally, and the impact of the recession on counterfeiting. Speakers on the panel included:
Moderator: The Honorable Kent Jordan, Third Circuit Court of Appeals
Glenn Gundersen, Dechert LLP
Marcia Paul, Davis Wright Tremaine LLP
Jef Pearlman, Public Knowledge
Martin Schwimmer, Trademark Blog and Moses & Singer
Peter Vogl, Jones Day