“In my mind I see a mirage on the wall. But unfortunately it’s not there at all.” Mirage, by Iron Butterfly

I don’t put much stock in mirages. They may be good plot devices for movies set in the Sahara or a Bugs Bunny cartoon. But in the real world, I’ve never come close to experiencing the confluence of dehydration and desperation thought to produce the hallucinatory visions depicted in film and in literature.

Then came Covid-19 and sheltering in place. Within a few short days, things shifted from well-stocked supermarket shelves to the “new normal” where many staples have been in short supply. Not wanting the cupboard to go bare, we found an organic ranch in California that still had plenty of beef, lamb, and pork and would ship to our door.

I’ve long believed the adage “never shop for groceries on an empty stomach.” I’m here to report that the advice holds doubly true when ordering meat from the Internet. With a few clicks of the mouse, we had purchased approximately an entire side o’beef, or so it seemed from the price tag.

A few days later, UPS delivered a heavy box market “PERISHABLE, OPEN IMMEDIATELY.” After puzzling over what might be inside, it dawned on me that we now HAVE THE MEAT! I found the nearest sharp object and tore open the box. Reaching inside, I began to remove not the prime-aged cuts I’d been craving, but plastic white tubes with red lettering–one after the other, like circus clowns emerging from a tiny car.

This is where the mirage theme comes in. My mind’s eye saw the white and red tubes not for what they were–15 one pound packages of ground beef that rounded out our order. I saw what I wished them to be–tantalizing cylinders of Taylor Pork Roll (pictured above), a rare and unusual Spam-like meat product that comes from only one place on the planet–Trenton, New Jersey, my hometown. I had practically been weaned on the savory blend of pork and spices that Trentonians traditionally grilled or fried, topped with American cheese, and served on a fresh, crust Kaiser roll with mustard.

For an instant, I was thrilled. Then doubt began to seep in. Why would a premium organic beef purveyor have commingled 15 Taylor Pork Roll rolls among the T-bones, filets, and sirloins? The rock-frozen pork roll may be cheap, but not cheaper than dry ice!

But my initial belief that I’d received a motherload of the very pork roll brand my mother once served-up was no mirage. It was a by-product of the facet of trademarks called “trade dress.” You see, more than words and logos can function as a brand. Trademark protection also can extend to the appearance of packaging itself–the combination of colors, shape, and overall “look and feel” that can identify a product’s source as strongly as its name. Prime examples include the COCA COLA bottle and the Cracker Jack Box. In most cases, companies must earn trademark protection for their product packaging through five years or more of sales and advertising. They must prove what’s known as “secondary meaning,” which means that the trade dress has acquired brand significance among relevant consumers.

The Taylor Pork Roll package has all the hallmarks of protecible trade dress. The company has been selling its product in the same white and red packaging for decades while earning a devoted fan base of New Jerseyans that have migrated across the land and globe.

Considering the striking similarity between the Taylor trade dress and the ground beef now loaded into every nook and cranny of our freezer, my mirage moment is both understandable and forgivable. I’m sure I’ll be enjoying these meal-size packets of quality ground beef for weeks to come, and hopefully long after sheltering-in-place gives way to barbecuing with friends and family. And I’m equally sure that after shoppers pillage the supermarket shelves of dairy, groceries, and all other manner of comestibles, there’ll probably still be a few packages of pork roll left. And every time I take a package of that ground beef out of the freezer to thaw, I’ll smile to myself and think of the white and red Taylor Pork Roll trade dress.

Quote of the Day: “Adversity is a mirage. People, situations, and relationships sometimes change for the worst but inevitably clear a path for far better replacements. The continued journey will always find bliss.”
― Carl Henegan

“Black clouds overhead, old man says looks like rain. Thieves’ Road winds to the Black Hills sign.” Pale Sun, Cowboy Junkies

Every day these days feels like it has a black could overhead. New revelations, new worries. But even with so much uncertainty in the air, we trademark junkies can find something to write about other than panic and pandemic.

I was out for a brief dose of sun and fresh air, walking along deserted streets with my rambunctious dog, when I came across two bright orange road signs. Both were broken, crumpled, bent over to the ground. Could the Covid-19 be so potent as to level even these rugged devices built to withstand heavy winds and other physical adversities?

As my dog began dragging me to the nearest shrub for some satisfying sniffing (by him, not me), I noticed that the crippled road signs each had twin plastic orange springs at the base. And instantly, I recognized the source. These were signs made by TrafFix, the company that years ago had famously sued to protect its orange dual-spring design as a trademark. The case was TrafFix Devices, Inc. v. Marketing Displays, Inc. It made it all the way to the U.S. Supreme Court, where TrafFix’s trademark hopes were dashed by the Court’s unanimous decision. The Court held that no matter how recognizable those dual-springs might be, (as they were to me) trademark law can’t protect them because they are functional features whose main purpose was bolstering street signs against the wind and elements, not serving as a brand. The Achilles Heel for TrafFix;s trademark claim was another form of intellectual property–a utility patent. The patent covered the very characteristic that TrafFix sought to protect by trademark, leading the Supreme Court to conclude that giving TrafFix trademark rights on top of its patent would unfairly give TrafFix a perpetual monopoly on a useful feature and put other companies at a competitive disadvantage.

The TrafFix case thus joined a body of famous trademark cases that, like modern celebrities such as Kanye, Madonna, J-Lo, and Shakira, are known simply by one name. (I’ll cover others in future posts.)

Pulling my dog away from the felled road signs, their “Caution” warnings flattened by some mysterious force, I glanced up and saw a trio of mature cherry trees in full bloom across the street. That they had been planted in front of a funeral home did not dim the thrill of seeing the delicate, ephemeral pale pink blossoms. We may not be able to go to see the annual wonder of cherry blossoms draping the tidal basin and Jefferson Memorial like a gauze tapestry, we know that Spring is here, even if a few TrafFix springs, and ourselves, have seen better days.

Quote of the day: “I don’t think people are going to talk in the future. They’re going to communicate through eye contact, body language, emojis, signs.” Kanye

 

“Let’s go surfin’ now, everybody’s learning how, come on on safari with me.” Surfin’ Safari, music and lyrics by Brian Wilson

Surfing has strangely been on my mind lately. I’ve been reading the book Barbarian Days, A Surfing Life by William Finnegan. In it, Mr. Finnegan chronicles his early fascination with the sport, sparked not only by his family’s proximity to surfing meccas in Southern California and Hawaii, but also by the surf culture of the early-to-mid sixties, indelibly captured by the guitar driven surf music of Dick Dale and The Ventures and in films such as Beach Blanket Bingo, Gidget, and Ride the Wild Surf. I grew up during in those days, only an hour or so drive “down” the Jersey Shore. And though my sporting interests were rooted in terra firma, I recall my family’s first visit to Long Beach Island, a sliver of a barrier island north of Atlantic City. After a day in the sun, the five of us sat on logs around a small fire and listened to a local cover band tear through a credible version of the ultimate surf instrumental, Wipeout. I fell asleep that evening with visions of taking drum lessons and then mesmerizing my classmates with a virtuoso performance of Wipeout’s iconic drum solo. But when school rolled around that September, I was given a Bundy clarinet, began free lessons, and was forever consigned to the woodwind section, several strata below the rarefied cool of brass and percussion.

Around that time, in 1966, a bunch of us kids walked downtown to see a film called The Endless Summer. Produced and directed by Bruce Brown, the movie followed two surfers on a surfing trip around the world in search of “the perfect wave.” Again, I was a city kid who had as much contact with surfing and surf culture as I had with bullfighting. Yet the film’s exotic locations and thrilling action photography captivated me like no movie before or since.

So, with surfing and The Endless Summer on my mind, I was surprised by the odd coincidence of seeing The Endless Summer in today’s intellectual property news. According to IP 360, “The filmmaker behind “The Endless Summer” is suing Nike and Foot Locker for trademark infringement, alleging that an ad campaign that ran last year used the movie’s title and graphics from its poster to sell shoes and other apparel.” In the Complaint filed in, where else, Los Angeles, the filmmaker’s company alleges not only that The Endless Summer is “considered to be one of the most influential films to depict surfing and the surfing lifestyle,” but also that “The Endless Summer and the images emblematic of the Endless Summer film poster have become famous and distinctive brands.” The Complaint goes on to allege that the Foot Locker/Nike “Endless Summer” ads confused consumers into thinking that the filmmakers had approved the campaign. The question posed by the case is this: Does The Endless Summer have to Rs–the “r” in summer and the “Circle R”–the registered trademark symbol? And, yes, the filmmakers do own a federal registration for THE ENDLESS SUMMER. The case is Bruce Brown Films LLC v. Foot Locker Inc. et al., case number 2:20-cv-02553, in the U.S. District Court for the Central District of California.

The Endless Summer has been on my mind for another reason. In 2003, Bruce Brown’s son put out a sequel to The Endless Summer called Step Into Liquid. Naturally, I had to see it. And I did–during the aftermath of a massive storm that knocked-out power in D.C. for nearly a week, leaving us unmoored and insecure. I’d been thinking about that small disruption during our current, more dire, national public health crisis. And reading William Finnegan’s surf memoir has been transporting me back to The Endless Summer of 1966 and to that film’s classic poster: the faceless silhouettes of three male surfers against an eye-popping Day-Glo background dominated by a giant yellow sun.

Today, during the first week in what likely will be a long and challenging test of our collective resolve, compassion, and ingenuity, when my age demographic appears to be at greatest risk, it’s strangely comforting to see that something so intertwined with my generation’s collective cultural consciousness–a film about a challenging journey, about risks, about courage and about the danger and beauty of the natural world–remains as vital and relevant today as it did over 50 years ago. Let “the perfect wave” be a metaphor; never stop searching.

Quote of the day: ““You can go right or left, but you can’t very well do both at once.” The Endless Summer

“If I cross your path again, who knows where, who knows when, on some morning without number, on some highway without end.” Keep Your Distance, music and lyrics by Richard Thompson

In what feels like the blink of an eye, our world has been turned upside down, inside out. Phrases we never before heard or uttered–coronavirus, social distancing–became part of our shared lexicon overnight. Many of us who can’t remember the last time we missed a day of work have seen our offices closed. So we’ve converted dining room tables and spare rooms into satellite offices for our companies and firms. In a matter of days, we’ve begun to suspect that these strange days may become our new normal.  Sure, this enforced proximity to spouses, children, and pets has its joys. But let’s face it, there are only so many times you can read that book, stream that show, walk to the park, and have that conversation before you begin to miss the solitude of the daily commute and anticipation of lunch at Chipotle.

With the very core and fabric of our economy and way of life facing this existential threat, those of us who practice trademark law can be forgiven for beginning to question whether our vocation has anything to add for the safety and welfare of our communities and our nation.

Turns out, its an easy question to answer. Yes! Now, when facing or experiencing shortages of vital supplies and products, we need trademarks more than ever. The U.S. has long been a leader in protecting all forms of intellectual property. We’ve been on the front lines of enacting laws to combat counterfeit products, aka low-quality fakes and knock-offs, to tackle cybersquatting, i.e., hijacking trademarks in phony email addresses, and to beat back grey market goods, i.e., goods intended for foreign markets that differ materially from genuine goods in quality, performance, or warranties. These laws that have protected us so well so far now are more vital than ever.  If unscrupulous profiteers prey on fear and panic with ersatz merchandise, the  Federal Lanham Act allows counterfeit products to be seized from store shelves and ports of entry.  And if online pirates try to deceive consumers with fake websites selling fake products online, those fraudulent sites and products can be taken down.

Simply put, the ®, the symbol that signifies a registered trademark, has long served business and and consumers well in ordinary times.  In these extraordinary times when nothing seems certain and everything feels surreal, there’s comfort in knowing that ® is up to the task.

QUOTE OF THE DAY: ‘Never Have Your Dog Stuffed’ is really advice to myself, a reminder to myself not to avoid change or uncertainty, but to go with it, to surf into change. Alan Alda
Read more at https://www.brainyquote.com/topics/uncertainty-quotes

The USPTO remains open for business as normal during the partial Federal government shutdown.  According to the USPTO, the agency can use prior-year fee collections to continue normal operations for a few weeks. If these funds are exhausted before the government reopens, however, the USPTO may have to shut down at that time, except for a small staff that will continue handling new applications and IT infrastructure.  For further information regarding adjustments to the USPTO’s operating status, it is important to monitor the USPTO website.

The Federal Circuit in Converse, Inc. v. ITC, ___ F.3d___, 2018 WL 6164571 (Fed. Cir. 2018), gave Converse’s trademark case against several shoe companies new life; a new “sole,” if you will. Converse has long been battling Skechers, New Balance, and others, alleging trade dress infringement of its Chuck Taylor All Star shoe shown below (“Chuck Taylor All Star Mark”) both before and after Converse’s registration of the mark in 2013. Two years ago, the International Trade Commission (“ITC”) heard the case and ruled against Converse, leaving a significant scuff on Converse’s trade dress rights. The ITC viewed Converse’s Chuck Taylor All Star Mark as two separate marks—a registered mark and a common law mark—during the alleged infringements before registration and found both marks invalid and unenforceable for not having acquired secondary meaning. Now, the Federal Circuit has vacated the ITC’s ruling, and given Converse another chance to cobble its rights in the Chuck Taylor All Star Mark.

Chuck Taylor All Star Mark

First, the Federal Circuit found the ITC’s approach of viewing Converse’s Chuck Taylor All Star Mark as two separate marks “confusing and inaccurate;” instead, the case should be viewed as concerning a single mark, with different rights arising from common law and federal registration. The court also took issue with the ITC’s assessment of secondary meaning, stating that secondary meaning must be determined as of a specific date, namely, prior to each alleged infringer’s first use. In Converse’s case, the Federal Circuit joined “the majority of circuits” in holding that Converse’s registration entitled it to a presumption that the mark is valid and has acquired secondary meaning, which thereby shifts both burdens to the other parties to prove otherwise. However, the court added a vital knot to this holding: this presumption of secondary meaning only begins as of the date of registration, not earlier. As a result, Converse cannot rely on this presumption of secondary meaning for its claims of infringement occurring before registration. On remand, Converse will have to establish that its mark acquired secondary meaning in the Chuck Taylor All Star Mark before each of the alleged infringing uses occurred.

Considering the main remaining defendants started selling their allegedly infringing shoes well before Converse’s registration of the Chuck Taylor All Star Mark, this finding may have knocked Converse back on its heels. But all hope shouldn’t be lost for Converse. Although the court’s decision may not help its case against the remaining defendants, Converse should be able to lace its arguments in any future proceedings on remand with some of the Federal Circuit’s findings that are more favorable to Converse. For example, the Federal Circuit affirmed the ITC’s finding that Converse’s Chuck Taylor All Star Mark is nonfunctional and criticized the ITC’s overreliance on the defendants’ survey evidence regarding secondary meaning. Of course, the defendants may be arguing on remand that the ITC should reassess whether the products are substantially similar to Converse’s Chuck Taylor All Star Mark. Until the proceedings resume on remand, it will be difficult to predict to which side the ITC will ultimately give the boot.

“By the time we got to Woodstock, we were half-a-million strong.” Woodstock, music and lyrics by Joni Mitchell, recorded by Crosby, Stills, Nash and Young.

 

 

The countdown has begun, with less than a year until Woodstock turns 50. Like Watergate a few years later, Woodstock occupies that rarefied world of one-word names that conjure up not just a place or an event, but a cultural watershed. Although Woodstock was not the first music festival of the Summer of Love era, it’s the one that dominates the collective memories of an entire generation, many of whom claim to have wallowed in the mud with the 500,000 souls who actually slogged their way to Yasgur’s farm to hear some of the leading rock, folk, soul, and blues acts of the day. Hendrix electrified with his searing “Star Spangled Banner,” Richie Havens strummed fervently for “Freedom,” Canned Heat celebrated the simple pleasure of “Going Up the Country,” while Country Joe and his Fish echoed the nation’s  angst with their sardonic “Fixin’ to Die Rag” (“And it’s one, two, three, what are we fighting for?) All this and more was immortalized in an Oscar® winning documentary that cemented Woodstock as the defining music festival for generations of concert goers.

Continue Reading Chill Another ‘chella? Not So Fast, Judge Tells Coachella Music Fest

The TTAB sustained Modern House of Wine LLC’s (“Petitioner”) petition to cancel (Cancellation No. 92058885) Hidden Wineries Inc.’s (“Registrant”) registration for the mark THANK YOU for wines in Class 33 on the grounds of void ab initio and abandonment. Registrant has filed an appeal to the U.S. District Court for the Northern District of California (Case No. 3:18-cv-02174), which is pending.

Continue Reading TTAB ON APPEAL: THANK YOU for Wine

Zheng Cai (“Registrant”) filed a notice of appeal before the Court of Appeals for the Federal Circuit (“Federal Circuit”) on March 12, 2018 (Case No. 2018-1688), seeking review of the Board’s final decision in Diamond Hong, Inc. v. Zheng Cai DBA Tai Chi Green Tea Inc. (Cancellation No. 92062714). In that case, the Board sustained Diamond Hong, Inc.’s (“Petitioner”) petition to cancel Registrant’s TAI CHI GREEN GEA WU DANG & Design mark shown below for “green tea; tea; tea bags,” on the ground of likelihood of confusion with Petitioner’s registered mark TAI CHI & Design shown below for “processed herbs; processed ginseng used as an herb; herbal food beverages; royal jelly for food purpose; and tea.”

Continue Reading TTAB ON APPEAL: The Fight Over TAI-CHI for Tea Before the Federal Circuit