February 4, 2010
Honda Sued for Trying to Save the Earth!
Honda can probably be considered one of the leaders in making more fuel efficient vehicles. They have always put out some pretty good vehicles, and now, with hybrid technologies, they have been manufacturing some vehicles that get between 40 and 45 miles per gallon. If I were Honda, I would want to boast about that too. Apparently, Honda started an ad campaign that offended Save the Earth Enterprises, an environmental group based here in the U.S. Save The Earth Enterprises sued Honda for trademark infringement over their recent ad campaign.
At first, I could not wrap my brain around this issue. I could not figure out who in their right mind would possibly confuse an environmental group with an automobile manufacturer. We have all heard about the (alleged) global warming issues, and if global warming was not enough of a reason to want to buy a more fuel efficient vehicle, then the price of fuel sure should have been. I also could not figure out what attorney in their right mind would possibly encourage their client, an environmental group, to sue a giant like Honda, who could only possibly be found at fault for manufacturing cars that may be too reliable (if you have had a bad experience with a Honda, please disregard that last comment).
I looked up the trademark registrations by Save The Earth Enterprises and then became thoroughly confused about the issue. U.S. Trademark Serial No. 75779486 for the “Save The Earth” trademark is used in connection with clothing in international class 25. U.S. Trademark Serial No. 75779427 for the “Save The Earth” trademark is used in connection with spring water, mineral water, etc. in international class 32. U.S. Trademark Serial No. 73760229 for the “Save The Earth” trademark is used in connection with posters and bumper stickers in international class 16. So where is the confusion? Save The Earth Enterprises are not selling small fuel efficient cars, and Honda (last time I checked) was not selling shirts, mineral water and bumper stickers. Seems pretty straight forward to me.
I did some searching and figured out what advertisement so offended Save The Earth (see below). I have seen this commercial several times and I still could not figure out what upset these folks. I finally noticed the t-shirt that the actor in the commercial was wearing. The commercial is directed to showing Honda’s commitment over the years to keep designing Civics that changed with the times. The actor gets out of a very old Civic dressed in clothes that are likely from that era, i.e., 1970’s. As the actor is walking down the street, his clothes, hair style and facial hair change to represent that which was popular as times changed. I have seen this commercial not less than 100 times. It seems to be aired whenever I am trying to watch sports. I have never noticed the actor’s t-shirt until this dispute arose. As the t-shirt changes with the time, the writing “Save The Earth” stays constant. It is displayed along with different art themes on the shirts, but the words are always the same.
The one thing I cannot seem to figure out is whether or not the t-shirts worn by the actor are actual t-shirts manufactured and sold by Save The Earth Enterprises. If they are, then there may be an issue there, but I do not think it is one that Save The Earth has really thought through. The big gripe that Save The Earth has is that the use of the t-shirts in the ad campaign implies a false endorsement of Honda. Really? Is that so bad? In the worst case scenario, you are concerned that someone out there who still watches commercials (I do not know many people that do since the advent of TiVo and other DVRs) noticed the t-shirt that the actor was wearing and now believes that Save The Earth somehow endorses the company that makes the most fuel efficient cars on the road today? How terrible! It’s not as though it is a commercial showing one guy driving around in a Hummer that gets 12 miles to the gallon. This is a commercial about promoting the continued efforts of Honda to manufacture vehicles that are fuel efficient and environmentally friendly.
I’m calling you out Save The Earth! What are your damages here? Please explain to me how your reputation has been damaged due to the 7 people who noticed that the actor in the Honda commercial was wearing a t-shirt that said “Save The Earth” on it. Don’t use the court system like this and put out press releases that say you are upset over the possibility over there being a false endorsement of Honda. Just tell us what this is all about – MONEY! You think that Honda should have paid you to put that t-shirt on their actor.
To tell you the truth, this is just another example of a trademark owner getting a little too big for his britches. To tell you the truth, I had never heard of Save The Earth Enterprises until this issue. I’ll bet that lots of people have heard about Honda. Which entity is benefiting more from this? Oh, wait – could this be a publicity stunt to get more attention on your organization? Never mind… I think I just figured it out!
February 2, 2010
Who Dat Say They Gonna Sue for Trademark Infringement? Da NFL – Dat Who!
Normally, most people out there know that the NFL gets their panties in a knot if you were to use any of their trademarks. For example, the NFL owns all the names and logos associated with each of the teams, as well as the name for that season ending football game that occurs on a Sunday – I didn’t want to write “Super Bowl” for fear of being sued by the NFL! Everyone who’s anyone knows that “The Big Game” is going to happen in a couple of weeks from now and that it is going to be between the New Orleans Saints and the team that beat my beloved Jets (just out of spite, I’m not going to mention the name).
We all know what New Orleans went through in 2005. Katrina was a terrible tragedy and the one thing that kept that city going was The Saints. I never really followed The Saints, but since they did so great this year, I watched a couple of games. I always saw people in the stands with signs on it that read “WHO DAT” and I would hear the likes of Drew Brees rally his team by chanting WHO DAT! I had no idea what it meant. I did some digging and asked some folks about it. I used to work with someone that I consider to be the biggest Saints fan ever. Apparently, there is a little war chant that they have in New Orleans – “Who Dat Say They Gonna Beat Dem Saints.” That’s a great chant and very original. In my opinion, it belongs to the people of New Orleans… not the NFL. I’m glad that The Saints have made it to the Super Bowl. New Orleans and its great citizens need this.
Let me tell you what they don’t need. The people and fans of New Orleans do not need the NFL coming in and claiming ownership to “WHO DAT.” They don’t need the all powerful NFL coming in and trying to make a few more dollars more than their multi-billion (yes, that was billion with a B) dollar television contract. That is why I was shocked to hear that the NFL was sending out some nasty grams to people who were making t-shirts with the “WHO DAT” slogan on it to celebrate The Saints’ success. To be specific, folks were putting “WHO DAT” on T-shirts, in combination with the fleur-de-lis logo, which the NFL claims ownership in.
Normally, I would get behind the NFL’s vigorous efforts to defend its intellectual property. After all, that is where the NFL makes a good portion of its revenue. There is a reason why uniform jerseys cost over $200. There is a reason why there have not been too many successful counterfeiters selling products bearing NFL logos. That is because the NFL has, in the past, done a great job of policing its intellectual property to protect its value. At the same time, and you have heard me preach this over and over again, just because you can flex your intellectual property muscle doesn’t mean you should.
I’m calling you out Commissioner Goodell and the NFL. There is a fine line between defending your rights as an intellectual property owner and being a bully, and the NFL just crossed it. This goes out to every intellectual property owner out there who is thinking about being the bully. Do not plan on bullying folks using your intellectual property and expect me not to rip you on this blog. The NFL needs to back down off this position.
I commend U.S. Senator David Vitter for sending a letter to Commissioner Goodell regarding this incident. The letter is published on Senator Vitter’s website and you can join Senator Vitter in the letter if you would like.
Let the Saints and their fans have this NFL. I will close with a reference to my favorite sports show – I cannot “protect the shield” on this one.
January 27, 2010
The Problem with the PTO Pilot Program to Accelerate Examination of “Green Technologies”
Back in December, the USPTO announced a pilot program to accelerate examination of patent applications directed to “green technologies.” Oddly enough, this announcement came just before the United Nations Climate Change Conference in Denmark. I will refrain from ranting about the politics of this, but I only wonder if the USPTO will decide to accelerate examination of those technologies that may have an impact on any other upcoming international conferences. I think national defense and anti-terrorism are pretty big topics nowadays, but I still have not seen anything in the Federal Register about accelerated examinations of patent applications in those fields. Well, enough of that.
The pilot program aims to decrease the pendency time for patent applications in certain green technologies. The current pending time (i.e., number of months between filing an application and receiving a final decision), according to the article, is about 40 months – with an average of 30 months passing before a first Office Action is mailed to the applicant. By my count, that’s not bad compared to several other technological fields. I represent some clients that have patent applications which have been pending for going on four years. The pilot program is open to the first 3000 patent applications related to green technologies in which a proper petition is filed.
January 25, 2010
Southern Cal beats up on South Carolina… in a trademark dispute
Those of you who know me know that I am a sports junkie. GO JETS – sorry, I had to find a way to subtly get that one in there. If you are reading this and thinking that you are about to hear me rant and rave about coaching changes or NCAA violations at Southern Cal, you are in for a surprise. This is a true intellectual property dispute between two schools with teams that I don’t particularly appreciate and with football coaches that are not on my top ten list (especially you Kiffin).
Anyway, the Trojans of Southern California have dealt a trademark blow to the South Carolina Gamecocks. This dispute revolves around the logos for each school and, more specifically, the logos that each school prints on their apparel. South Carolina appealed a decision from the Trademark Trial and Appeal Board refusing to register the school’s logo and also refusing to cancel a Southern California trademark. The Federal Circuit upheld both decisions.
January 21, 2010
The “Departure” of Conan O’Brien Brings Up Intellectual Property Issues
So unless you go to bed at 8PM (which I wish I did) or you don’t have a television, you have probably heard that Conan O’Brien’s attempt at hosting the coveted 11:30 time slot for NBC’s late night talk show will be short lived. NBC is bumping Conan and going back to Jay Leno. Personally, I used to watch Leno as I was falling asleep and found his skits to be somewhat humorous – Jaywalking, Battle of the Jaywalk Allstars, Headlines, etc. I never really stayed up late enough to watch Conan’s skits, but I am somewhat familiar with them – the talking picture thing, Triumph the Insult Dog (one of my personal favorites), etc.
As you probably know, the NBC late night debacle has been pretty contentious. My personal favorite was during Conan’s monologue a few nights ago when he was noting that hosting the Tonight Show, even for a short period of time, was the fulfillment of a lifelong dream. He went on to give some advice to the kids out there – “you can do whatever you want to do… so long as Jay Leno doesn’t want to do it too.”
Don’t confuse media whine pieces for *real* IP bully stories
If you’ve been reading this blog for any period of time, you know that we like to point out when intellectual property owners try to use their IP to stomp on the little guy. One should not confuse our material with that of whiny media types who try to paint IP owners in a negative light for using their rights correctly. Professor Randazza has posted about an excellent example of this kind of misinformed, crybaby reporting. In pointing out the inadequacy of one publication’s legal research, Marco manages to give us all a lesson in trademark registration basics.
January 20, 2010
Space Coast Business Magazine prints one of our articles
We put together a quick overview (800-words-or-less) about patents and copyrights for Space Coast Business Magazine, and they ran with it in their January issue. You can read the full text here
January 19, 2010
Removing “Confusion” with Trademarks
Trademarks are a huge part of everyone’s daily lives; yet the laws that dictate their use and abuse are not nearly as well known. A single trip to the grocery store may expose you to literally thousands of trademarks. There are the ones you expect to see (e.g., the word “Kellogg’s” on that box of cereal, or that jovial peanut wearing a top hat) and the ones you are hardly even aware of (e.g., the emblem on the front of the car that you parked next to in the lot, or that familiar swoosh on the sneakers of the woman behind you in the checkout line). Each of those words or symbols represents an important mechanism for lubricating the wheels of commerce, providing a shortcut for you (or your intended customer) to make informed purchase decisions. The economic advantage of trademarks lies in their ability to quickly convey, by association, a wealth of information about the quality, value, and reputation of a product, or its producer.
As an example, when someone goes shopping for clothing, they are able to quickly pick out which garments are desirable, and which ones are not, simply by looking at the tag or emblem stitched on the left breast. If you see a silhouette of a man riding on a horse and swinging a polo mallet, you immediately know something about the characteristics of that shirt, whether it’s from your own experience or from what you may have heard from other satisfied purchasers. You know a little something about the quality and whether it falls into your intended price range – all without having to spend the time, effort, and expense of buying one of each brand of shirt and conducting your own comparative analysis. You know, before even opening it, that when you take a sip from that can that has “Coca-Cola” printed on it, it will taste a certain way, and you likely made your purchase (or selected the one with “Pepsi” printed on it instead) based on that knowledge.
January 12, 2010
What type of patent application is right for me?
Generally speaking, a patent is a grant, by the government, for a fixed period of time, of the right to exclude others from making, using, selling, or offering for sale an invention as defined in the claims of a patent. (For more information, check our our Overview of U.S. Patent Protection.) Of course, the first step in the patent process is filing a patent application. There are several different types of patent applications that can be filed by an inventor. What follows is a brief outline of the types of patent applications that can be applied for, as well as the differences between them all. The patent applications that will be discussed below are Provisional Patent Applications, Utility Patent Applications (sometimes called Nonprovisional Patent Applications), Design Patent Applications, and Plant Patent Applications.
January 5, 2010
Paris Hilton continues her IP education… from the defendant’s chair
After getting the go-ahead from the Ninth Circuit earlier this year on her “That’s Hot!” trademark infringement case against Hallmark, hotel heiress Paris Hilton has apparently signed up (although unwillingly) for another intellectual property lesson. This time, she’s going to be studying design patents. Her professor, a footwear designer called Gwyneth Shoes, claims that its design patent has been infringed by Ms. Hilton’s kicks. (Source.)
If you look closely, you can see the heart.
Design patent protection is similar to copyright protection, in that the alleged infringer is in trouble if they’ve produced something that is substantially similar to the protected design. However, while the government simply gives out copyright registrations, upon request, design patents are only awarded after an examination is done and it has been determined that the proposed design is novel (i.e., no one else has previously designed a product like this).
Gwyneth’s design
The prize for successfully prosecuting a design patent application? Complete national monopoly for 14 years. Since copyright protection lasts for a minimum of 70 years, some people would argue that a design patent is hardly worth the effort and cost. The problem with that logic is that copyrights come with a whole boatload of limitations, leaving room for potential defendants to get away free. As a key example, fair use and independent creation are no defense to a charge of design patent infringement. Just ask Paris Hilton, who undoubtedly has just learned about this little wrinkle from her attorney.
