A Super Bowl Commercial Featuring . . . Trademark Law

Some of the commercials for the Super Bowl are being released early.  Here's one by Samsung, which features . . . avoiding trademark infringement!  Or perhaps Samsung just doesn't want to get sued again.

"25 Words You Might Not Know Are Trademarked"

Most people don't know that words such as aspirin, zipper and escalator once used to be trademarks, but aren't any more.  They have now become generic words for the thing that used to be subject to trademark protection. 

Here is a list of 25 similar words that may or may not still have trademark protection.

Double Label of the Day: Showing the Difference Between Trade Marks and Trade Dress

This interesting web site shows the difference between trademarks ("a name, word, phrase, logo, symbol, design, image" that identifies "that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities") and trade dress ("characteristics of the visual appearance of a product or its packaging").  Although admittedly, some of the logos pictured here could also be trademarks.

"How 50 Big Companies Got Their Names"

An interesting infographic showing where some well-known corporate names came from (and it's even not a slideshow).  I knew some of these, but not all of them.

Hilarious Opening Paragraphs in a Trademark Opinion

Today the Seventh Circuit Court of Appeals decided Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp.  On the merits, the case upheld a district court opinion finding that Georgia-Pacific's "Quilted Diamond Design" on toilet paper was functional, and therefore not entitled to trademark protection.

However, what's really great about Judge Evans' opinion is the opening paragraphs, reproduced here.  Not only does this hilarious prose make you want to read the rest of this opinion, but it also lets me blog this with both a "trademark" and "humor" label:

EVANS, Circuit Judge. Toilet paper. This case is about
toilet paper. Are there many other things most people
use every day but think very little about? We doubt it.
But then again, only a select few of us work in the
rarefied air inhabited by top-rate intellectual property
lawyers who specialize in presenting and defending
claims of unfair competition and trademark infringement
under the Lanham Act, 15 U.S.C. §§ 1051 et seq. And the
lawyers on both sides of this dispute are truly firstrate.
Together they cite some 119 cases and 20 federal
statutes (albeit with a little overlap) in their initial
briefs. We are told that during the “expedited” discovery
period leading up to the district court decision we are
called upon to review, some 675,000 pages of documents
were produced and more than a dozen witnesses were
deposed. That’s quite a record considering, again, that
this case is about toilet paper.

We’ll start by introducing the combatants. In the far
corner, from an old cotton-producing state (Dixie: “I wish
I was in the land of cotton, old times there are not forgotten.”)
and headquartered in the area (Atlanta) where
Scarlett O’Hara roamed Tara in Margaret Mitchell’s epic
Gone With the Wind, we have the Georgia-Pacific Company.
Important to this case, and more than a bit ironic, is that
the name of Georgia-Pacific’s flagship toilet paper is
Quilted Northern. In the near corner, headquartered in the
north, in Neenah, Wisconsin (just minutes away from
Green Bay), and a long way from the land of cotton, we
have the Kimberly-Clark Corporation. Ironically, its
signature toilet paper brand is called Cottonelle.

The claim in this case is that a few of Kimberly-Clark’s
brands of toilet paper are infringing on Georgia-Pacific’s
trademark design. But again, this case is about toilet
paper, and who really pays attention to the design on
a roll of toilet paper? The parties, however, are quick to
inform us that in a $4 billion dollar industry, designs
are very important. Market share and significant profits
are at stake. So with that, we forge on.

Sarah Palin Applies for Trademark Protection on . . . "Sarah Palin"

Yep, Sarah Palin has filed a federal trademark application for "Sarah Palin."  (And Bristol Palin has applied for "Bristol Palin.")  The Sarah Palin application is here.

I'm not sure whether to label this under "Trademarks" or "Humor" . . . so I'll do BOTH!

Oh Darn, I Named This Blog Incorrectly

I called this blog "IPDuck" with the "IP" short for "Intellectual Property."  Well, "Intellectual Property" is really just a shorthand for patents, copyrights, trademarks, and trade secrets (and maybe other things).  It's cumbersome to list all four of those things when you can abbreviate them to "Intellectual Property" or even shorter, "IP."

Only problem is the use of the word "property."  "Property" usually means things like your house (real property) or valuable possessions, like jewelry (personal property).  But patents, copyrights, trademarks, and trade secrets aren't really like that, for a bunch of reasons.  For example, patents, copyrights, trademarks, and trade secrets are legal rights only to exclude others from doing things -- patents in particular don't give you the right to practice your own invention.  (Imagine owning a house where you didn't have the legal right to live in it yourself, but only had the right to exclude other people from staying there.  Not much of a house, eh?)

In a blog post last week, Mike Masnick's blog points out that the term "Intellectual Property" is misleading in its use of the term "property."  See "Exposing the False Sanctity of Intellectual Property."   In a post later that same day, Masnick further points out that the term "Intellectual Property" is a relatively recent term.  Masnick's solution?  Call it "Intellectual Pooperty."

So maybe I misnamed this blog.  At least, keep in mind that I'm using a shorthand for convenience, and not asserting that there are any "property" rights in "IP."

Not Sure Whether to File This Under "Trademarks" or "Humor" . . . or BOTH!

Facebook moves closer to trademarking 'face.'

No Surprise: Quilted Toilet Paper is Functional

The Northern District of Illinois has ruled that the "Quilted Diamond Design" on Georgia-Pacific's "Quilted Northern" toilet paper is functional, and can't be the subject of trademark protection.  Georgia Pacific Consumer Products v. Kimberly-Clark Corp., No. 09-C-2263 (N.D. Ill. Sept. 30, 2010).  GP asserted four registered trademarks in its "Quilted Diamond Design" against Kimberly-Clark's toilet paper with the same design.

The court applied the following test for functionality:

The issue of whether an item is functional can be broken down to five factors.  See, e.g., Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp. 2d 999, 1011 (N.D. Ill. 2007) (Holderman, C.J.).  Functionality turns on: “(1) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element; (2) the utilitarian properties of the item’s unpatented design elements; (3) advertising of the item that touts the utilitarian advantages of the item’s design elements; (4) the dearth of, or difficulty in creating, alternative designs for the item’s purpose; (5) the effect of the design feature on an item’s quality or cost.”  Id.

Unfortunately for GP, it also held utility patents on the same diamond design. The court thus stated:

The existence of a utility patent that covers the asserted designs can be a “cheat sheet” for deciding whether a design is useful, and therefore functional.  Jay Franco, 2010 WL 3156539, at *2.  If the “central advance” claimed in the utility patent matches the “essential feature” of the trade dress or trademark, that constitutes strong evidence that the design is functional.  TrafFix, 532 U.S. at 30.  Satisfying this requirement places a “heavy burden” on the trademark owner to show nonfunctionality.  Specifically, the owner of the trademark can overcome the burden by showing that the design at issue is an “ornamental, incidental, or arbitrary aspect of the device.”  TrafFix, 532 U.S. at 30; see, e.g., Berlin Packaging, LLC, v. Stull Tech., Inc., 381 F. Supp. 2d 792, 799 (N.D. Ill. 2005) (Denlow, M.J.).

The Court also rejected the assertion that there were alternative designs that achieve the same functionality:  "A design that serves a functional purpose does not become nonfunctional solely because of the possibility of numerous alternative designs."  Accordingly, the Court held the diamond design functional and not subject to trademark protection.  It's unclear whether GP has any patent claims against Kimberly-Clark.

Nice Primer on Trademark Law (and the Playboy Bunny Too!)

Section I of today's Federal Circuit opinion in In re Chippendales USA, Inc. has a concise overview of trademark and trade dress law.  As an added bonus, the opinion later discusses trademark protection for the Playboy bunny.

UPDATE:  Dennis Crouch has a detailed discussion of this case.

U.S. Senators Propose Bill to Turn Justice Department Into Piracy Police

A group of Senators, led by Sens. Patrick Leahy and Orrin Hatch, have proposed a bill that would turn the Justice Department into piracy police.  The so-called "Combating Online Infringement and Counterfeits Act" would give the Justice Department the power to shut down websites that are "dedicated to infringing activities."  This latter phrase is broadly defined as a website that is "primarily designed, has no demonstrable, commercially significant purpose or use other than, or is marketed by its operator, or by a person acting in concert with the operator" to offer goods or services that infringe a copyright or trademark.  The entertainment industry doubtless loves this one.

Techdirt's commentary is here.

UPDATE:  The EFF's analysis is here.

Service Mark of the Day.

"The Mark consists of Goats on a roof of grass."  Courtesy of The Trademark Blog.  I cannot figure out whether to label this under Trademarks or under Humor . . . so I'll do BOTH!

Reg. No. 2,007,624

UPDATE:  Techdirt's analysis is here.