In a decision that is not citable, the Trademark Trial and Appeal Board (“TTAB”) ruled that Big O Tires was contractually estopped from opposing a Bigfoot 4X4, Inc. application to register the mark BIGFOOT for monster truck videos.

In reviewing the record, the TTAB noted that the two parties had been in litigation before, the result of which was a settlement agreement allowing Bigfoot to register the mark BIGFOOT for audio/video materials related to monster trucks. The TTAB found that Bigfoot’s application fell squarely within the terms of the settlement agreement, and it dismissed the case based upon contractual estoppel.

In fact, the terms of the settlement agreement were silent as to whether Bigfoot could register federally the trademark BIGFOOT. The TTAB reasoned, however, that since Bigfoot had the exclusive right to use the mark in commerce, it had the right to seek registration.

Practice Pointer: Both parties sought to dismiss the case on a theory of Res Judicata and Collateral Estoppel. The TTAB denied the motions. Collateral Estoppel cannot apply if the parties never litigated the issues. Res Judicata cannot apply when there is no entry of final judgment in the case.

Click here to review the complete decision.

Most trademark attorneys are aware of the rule changes proposed by the Trademark Trial and Appeal Board (“TTAB”). Many practictioners are opposed to the rule changes, because they will increase substantially the burden and cost of an opposition. The TTAB proceedings, historically, have been a cost-effective way for parties to resolve trademark disputes.

The new proposed rules also reduce the number of interrogatories from 75 to 25, effectively requiring opposers to conduct costly discovery before filing the opposition. In addition, the TTAB proposes to increase initial disclosures made by the opposers, in hopes of encouraging settlement. The initial investment, however, required to file the opposition under the proposed rules may make settlement actually less likely.

Notwithstanding several requests, including one by this firm, to extend the comment period, the TTAB maintained its deadline of March 20, 2006. The law firm of Oblon Spivak, et al has created a BLOG for posting the results.

The Trademark Trial and Appeal Board (“TTAB”) at the PTO affirmed the examining attorney’s refusal to register Red Bull’s mark BULLSHIT for alcoholic beverages, catering, hotels, and other goods, on the grounds that the term “bullshit” is scandalous. Under Section 2(a) of the Trademark Act, words that are offensive to a substantial composite to the general public are not registerable on the Principal Register.

In refusing registration, the examining attorney had relied on In re Tinseltown, 212 USPQ 863, a case decided almost 25 years earlier, in which the TTAB came to a similar conclusion for the mark BULLSHIT as used for handbags and accessories. Red Bull appealed the examiner’s decision as so much crap.

In its appeal, Red Bull presented evidence that in the twenty years since the Tinseltown decision was rendered, community standards have changed. In support of its position, it offered evidence of a show by Penn & Teller: “Bullshit,” and a paper written by a Princeton professor, entitled “Bullshit.” The TTAB was not, well, moved.

Finally, it what can only be described as a truly creative last ditch effort, Red Bull argued that its use of BULLSHIT was an obvious play on that commonly known expression, “Bulls Hit.” Given that it offered no evidence that this expression was, well, an expression at all, the TTAB waded quickly through the argument.

Download the citable decision here

The District Court of Nevada ruled in Blake Field v. Google that there is no copyright infringement when Google copies, using its “cache” program, third party content and allows internet users to view those cached, third party web pages. The court stated that it is the internet users who are downloading the stored content and that the search engine company is ‘passive’ in the copying and is protected under the DMCA. “Without the user’s request, the copy would not be created and sent to the user; and, the alledged infringement would not have occur. The automated, nonvolitional conduct by “Google in response to a user’s request does not constitute direct infringement under the Copyright Act.”

So on to the frosty window, one of the old chestnuts of the law school copyright class is the ask the question of whether writing word on a frosty window causes sufficient fixation for a copyright to arise. The copyright statute explicitly provides that a copyright subsists in original expression fixed intangible medium. And the ‘front on the window’ chestnut frames the question of what is enough permenance. The answer has been that writing on a frosty window is transient, but with sufficient permenance to be fixed for copyright purposes.

This case juxtaposed with the old chestnut of ‘enough’ highlights how our culture is at an inflexion point. The the visual world of atomic object lessons (frost on the window) are dischordant with the invisible world of electronic object lessons. The judge in Nevada is focusing on the ‘who’ in the atomic world is doing the acting in summoning the case and is oblivious to the ‘what’ in the electronic world where the copying is happening. No. 2:04-CV-0413 (D. Nev.). Good thing Google doesn’t have ‘frost’ caching.

Durkee-Mower, Inc., whose website address says it all (marshmallowfluff), has filed suit against upscale culinary company Williams-Sonoma in federal district court in Massachusetts for trademark infringement. In the suit, Durkee-Mower claims that Williams-Sonoma sold a chocolate and marshmallow spreadable concoction under the name FLUFFERNUTTER, a registered trademark of Durkee-Mower.

While Williams-Sonoma may have found itself embroiled in a sticky mess, there’s an interesting twist to this matter that makes Durkee-Mower’s case slightly less than a slam dunk (slightly): The registration on which Durkee-Mower relies doesn’t cover spreads or sandwiches, but instead covers “printed recipes sold as a component of food packaging and cookbooks.” The company may have to call together as expert witnesses half the college student population to testify that the only true way to make a fluffernutter sandwich is with Durkee-Mower’s jar of white fluffy stuff.

Practice Pointer: To make a FLUFFERNUTTER sandwich, select two pieces of white bread and spread one with peanut butter, and the other with Marshmallow Fluff. Put bread together to make a sandwich, and share with your 2 year old.

The Hell’s Angels filed suit this month in federal district court against behemoth Walt Disney Company for trademark infringement. In the suit, the oldest surviving motorcycle club in America alleges that Buena Vista Pictures, a division of Disney, uses the club’s trademark “helmeted horned and feathered skull” in Buena Vista’s new film, Wild Hogs, without the club’s permission. The movie stars John Travolta and Tim Allen as middle-aged bikers looking for action. Apparently, it’s the middle-aged executives who will be seeing some action in this drama.

The U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) affirmed the examining attorney’s refusal to register Red Bull’s “WINGS” trademark on the grounds that the company’s use of the mark did not function as a trademark.

In a decision that is not citable, the TTAB found that the examiner was correct in refusing registration of the mark WIINGS based upon the specimens submitted by Red Bull evidencing use. In the first place, specimens did show the word “wings,” but only as a tagline, such as “Red Bull Gives You Wiiiings, ” “Now Available Sugar Free Wiiings,” and “4 Cans. 8 Wiiings.” In the second place, the specimens did not show the mark in substantially exactly the way the mark was applied for, namely as “WINGS” (with a single “i”). The TTAB noted that even if the mark were to be considered substantially the same as the submitted specimen, the fact that the mark was not used in a trademark sense would still defeat a registration of the mark.

Practice Pointer: Although the decision is not citable, the holding is accurate: specimens submitted to the PTO to show use of a trademark must be a substantially exact representation of the trademark as applied for. In this case, if the applicant had applied for “RED BULL GIVES YOU WINGS” and the evidence showed the mark using the term “WIIIINGS,” it’s likely that the mark would have proceeded to registration with a simple amendment to the drawing page.

Download full text of decision HERE

One of the oddities of American copyright law was what was referred to as the “Industrious Collection” [ aka the "Sweat of the Brow"] doctrine which granted a copyright in works resulting from the laborious assembly of otherwise unprotectable data. Examples were telephone directories, sports statistics, maps and other ‘facts’….assembled by folks in green eye shades, no doubt.

Perhaps because of our international citizenship, perhaps because of the ubiquity of the computer’s power, perhaps because Sandra Day O’Connor had magic glasses when she read the Constitution Article One, Section Eight, Clause eight, perhaps because no one wears green eye shades at work anymore. Whatever the reason, the “Sweat of the Brow” doctrine died officially in the Supreme Court opinion, Feist v. Rural Telephone (1990).

In the recent case of Jeffrey A. Grusenmeyer & Associates Inc. v. Davison, Smith & Certo Architects Inc. et al., No. 1:04CV2381, N.D. Ohio; 2006 U.S. Dist. LEXIS 2757 Grusenmeyer, an architectural firm, submitted master plans with explicit understanding that the plans would be used in the development of a new campus. Claims that the plans were copyrighted were challenged because Plaintiff’s plan amounted to an AutoCAD program depicting the existing facility without new expression. The court, in finding no copyright, said,

“Although Plaintiff may have dedicated considerable time to the existing conditions drawings, copyright law rewards originality, rather than effort”.

‘Industrious Collection’ [aka 'Sweat of the Brow'] remains just detritus of last century…. along with those green eye shades.

The National Advertising Division (“NAD”) has requested that 1-800-patches.com discontinue many of its advertising claims on its Green Tea 300 product because the claims are misleading.

In one instance, an ad states that Green Tea 300 is “30 Times more potent than regular green tea.” The ad goes on to ask clients to “Join Oprah” in losing 10 pounds. In addition, the ad shows a doctor extolling weight loss virtues of Green Tea and quotes him as saying, “[Lose] 10 pounds in six weeks. I will guarantee it.”

In its defense, 1-800-patches.com stated it based its potency claim on the fact that Green Tea 300 has 30 times more polyphenol than green tea steeped in a testing laboratory (the company did not pay for the study; it merely read the findings). The polyphenol count is the only measure by which 1-800-patches.com makes its claim. The company claims the “Join Oprah” and doctor guarantee portion of the advertising was specifically related to an episode of the Oprah Winfrey Show in which a doctor guaranteed a weight loss of 10 pounds for a diet regimen that included consumption of Green Tea (although not the Green Tea 300 product).

NAD correctly found that advertisers may not make claims using consumer testimonials or expert endorsements that cannot be substantiated by the advertiser. Moreover, advertisers must have appropriate scientific evidence to support scientific claims. The use of Oprah’s name and a quote by a doctor each suggested an endorsement of the company’s product that was not accurate. Ultimately, 1-800-patches.com pulled the questionable advertising.

Practice Pointer: While it was improper for 1-800-patches.com to suggest an endorsement of its product by either a doctor or a celebrity that it didn’t have, it would have been acceptable to have mentioned the television show. For instance, the advertiser could have stated “A recent episode of The Oprah Winfrey Show highlighted the virtues of green tea.” Depending on the size and placement of such a statement, such use would likely not suggest an affiliation between the advertiser and the celebrity.

Filmmakers, songwriters, and publishers often face frustration and “brick walls” when seeking to find owners of copyrighted works in order to get permission to use them. In many cases, despite best efforts, creators and their heirs may be unlocatable. This puts filmmakers and others in the precarious position of deciding whether to use the work and risk a copyright infringement lawsuit, or abandon the work, perhaps forever. Stories are legion of documentary film projects abandonned after years of effort all because copyright holders could not be located.

Deemed “orphan works” because it’s unclear who the “parents” are, the challenge of locating owners of copyrighted material has become such a large problem that the U.S. Copyright Office has been asked by Congress to propose a solution. The new Copyright Office Report On Orphan Works is an articulate statement of the problem, the current law and some candidate solution paths. Click HERE for Copyright Orphan Works Report.

The solution, however, presents challenges of its own and, in fact, may be over-reaching in terms of denying rights and royalties to owners who deserve them. The solution, as recommended in the Orphan Work Report, is feared by many to be the ‘exception that swallows the rule’. Just as Canadian law currently imposes a compulsory license to the person who can document ‘good faith effort to locate’, the recommended legislation will provide low to no monetary damages and relief from injunctions against the resulting derivative work when attribution is given and there is a documented but failed ‘good faith effort to locate’.

While the ‘fair use’ defense is explicitly not affected by this possible change, it would moot the whole ‘fair use’ defense in many circumstances. This would be especially true in the graphic arts arena.

SC Johnson & Sons, Inc., through the National Advertising Division (“NAD”), challenged Colgate-Palmolive’s recent claims pertaining to Murphy Soft-Wipes pre-moistened dust cloths. Among the claims SC Johnson found questionable were those found in a newspaper FSI, stating the product:

SC Johnson, a Colgate-Palmolive competitor, asserted that the claims made in the advertising and on the product packaging were false, misleading, and unsubstantiated, and requested substantiation of the claim that the Soft-Wipes actually repelled dust. In response, Colgate-Palmolive provided NAD with proprietary evidence showing that the Soft-Wipes comtained anti-static agents that, when applied to a surface, created electrical charges that repelled dust.

Because SC Johson was not allowed to view the actual claims (Colgate-Palmolive released them only to NAD, claiming trade secret in the results), it tested the product in its own laboratories and provided those non-proprietary results to NAD. The SC Johnson results show that there was no difference in the dust collection rate of surfaces cleaned with a regular dust product and surfaces cleaned with a Soft-Wipe.

In reviewing the evidence from both parties, NAD found that in fact, Colgate-Palmolive had not met its burden of showing that there was a reasonable basis for claiming that the Soft-Wipes actively repelled dust. Colgate-Palmolive issued a statement vehemently disagreeing with the findings of NAD. Nonetheless, it has relaunched the product with a new advertising campaign, pending new test results.

Practice Pointer: Under Section 5 of the FTC Act, the advertiser has the initial burden of presenting a reasonable basis for its claims. While a “reasonable basis” can amount to internal laboratory testing of a premise, standard practice is to have tests conducted by an independent laboratory.

Notwithstanding a gallant fight from Reed Elsevier Properties, Inc. at the Trademark Trial and Appeal Board (“TTAB”), the TTAB judges found the mark lawyers.com, for a website providing access to an online interactive database featuring information exchange in the field of law, to be generic. In a decision that has left many trademark attorneys scratching their heads, the TTAB reasoned that the public would readily identify a site bearing the name lawyers.com with a site containing information about lawyers and the law, and accordingly, the trademark was generic.

In fact, the site does contain information about lawyers. It does not, however, contain actual lawyers, nor does it give users the ability to talk to a lawyer through the site (except on special occasions). The site also contains information about cases, legal topics, and legal tips. While most would have no quibble with the suggestion that a site called lawyers.com is dedicated to lawyers and the law, longstanding trademark law suggests that generic refusals of trademarks are reserved for terms that represent the exact definition of what’s offered (a site called poetry.com, that featured actual poetry). Indeed, in this case, it appears that the mark lawyers.com is descriptive rather than generic, since it describes an element of the site, rather than the site itself.