Take for instance, the case of In re Foster’s Wine Estates Americas Company. Serial No. 77018496 (June 16, 2010) [not precedential]. In support of its application to register the mark CELLAR 360 for wine, the company submitted as a specimen of use its retail catalog (which depicted applicant’s wine throughout) with the mark CELLAR 360 prominently displayed on front cover.

Rejecting applicant’s argument that the specimen served as a display associated with the goods, the TTAB refused registration of the mark. It found that the specimen showed use of the mark CELLAR 360 as a service mark for retail store services but not for wine.

Relying on the fundamental tenets of trademark law regarding what constitutes a trademark, the TTAB explained, the relevant issue is not simply whether applicant produced wine but rather whether consumers would recognize the mark CELLAR 360 as a source indicator for applicant’s wine (a trademark must identify the source of the goods).

Virtually sealing its own fate and guaranteeing a refusal of the registration, applicant did not use the mark on its wine bottles but rather on its retail catalog. This, the TTAB held, was insufficient to support a registration for wine (as the mark did not serve as a source identifier for wine). Accordingly, the board upheld the refusal to register the mark, finding that the specimen did not show use of the applied-for mark as a trademark for the goods.

Practice Note: Prior to seeking a trademark registration, clients should be counseled to carefully evaluate and consider the branding strategy that will be used in connection with the desired products/services and to, where possible, involve legal counsel in the marketing decisions regarding the manner in which the trademark will be used. Here applicant clearly intended to produce wine and was desirous of obtaining a registration for wine; however, in not using the mark on its wine labels, it failed to implement a branding strategy that would assure registration for wine. Problems such as these can often be avoided with careful planning, oversight and foresight.

The FTC and Nestle have come to an agreement: Nestle will stop making health claims about its BOOST probiotic product, and the FTC won’t fine the company for false advertising.

Nestle had previously claimed in its BOOST advertising, that the nutrition drink would boost children’s immune systems, prevent illness, and even speed up the recovery of certain symptoms, like diarrhea. The website, and advertising material now states, “Many countries worldwide have a tradition of introducing live active cultures (bacteria) to infants and children early in life, in fermented foods, such as yogurt. In adequate amounts [probiotics] provide specific health benefits to the host.”

This case marks the FTC’s first foray into health claims based upon probiotics and suggests this is a new area of concern for the regulatory agency.

Practice Note: While the US has only recently been looking at probiotic food claims, the European Food Safety Authority has been heavily regulating the industry for the better part of a year. According to published reports, the EFSA has rejected 80% of the advertising claims involving probiotics. Attorneys should advise clients to be careful about health benefit claims under the current administration.

Last week, according to the Promotions Marketing Association, state legislators in North Carolina ratified House Bill 80, which bans the “use of electronic machines and devices for sweepstakes purposes.”

The bill is intended to fully foreclose the use of video poker machines (and other gambling machines); the language contained in previously passed legislation presented a loophole: sponsors could still offer “sweepstakes” using the gambling machines (free method of entry), but still entice players to use a pay-to-play options for betting.

The bill specifically excludes consumer-owned electronic devices that could be used to enter sweepstakes, such as home computers, mobile smart phones, and mobile phones.

Practice Note: Video Poker is considered a “game of skill” in some states, and a “game of chance” in other states. Clients should seek careful legal analysis relating to online poker before setting out gaming machines or creating an interactive internet presence.

Click here for text of bill.

The FTC issued a release last week, suggesting confidence games against unemployed students are back in vogue, in the form of “secret shopper” scams. Sites, similar to this Mystery Shopper site, entice students by touting an hourly wage in excess of $20.00/hour, “just for shopping and dining out” and writing reviews (the foregoing site has not been targeted by the FTC and the author makes no claims as to the legitimacy or illegitimacy of the site; this site serves as example only).

Here’s the catch: in order to start collecting money, students have to either pay a membership fee, or deposit a bogus check sent to them (as “advance”). In the former case, the membership fee is collected, but no money is forthcoming (“No one wants your review. Sorry.”). In the latter scenario, the company’s check bounces, and gets returned with the depositer’s account information on it, and money is removed from the account. The FTC found that Independent Marketing Exchange, Inc. engaged in such fraudulent business practices.

Working as a bone fide “secret shopper” is a legitimate undertaking and some companies are actively seeking — and paying — shoppers for real reviews. The money, however, is typically not of the sort that will net anyone a full time income. Moreover, according to the FTC, legitimate “secret shopper” companies do not ask for money up front and do not ask members to deposit checks prior to conducting any work. While not dispositive of a bogus company seeking to defraud people, these “red flags” should be heeded by those looking into this line of work.

Practice Note: Advise clients who run such a business to steer clear of deceptive business practices such as charging membership for a secret shopper program, even if the business is a legitimate one. Such practices may subject a business to FTC investigation and complaints.

Just when he thought it was safe to go back in the water (or the boxing ring as the case may be), it appears that Mike Tyson’s legal troubles continue to fight on. The latest contender is Michael Wayne Landrum, a former boxer (turned paralegal according to his complaint) who probably wouldn’t last long in the ring with Mike Tyson but is suing the former champ for $115,000,000 for trademark infringement based on Tyson’s use of the name “Iron Mike”.

In round one of the recently filed complaint with the California Central District Court, Landrum, who is duking out his own legal representation, contends he owns trademark rights in the name “Iron Mike.” Although Landrum claims to have a federal trademark registration for the mark IRON MIKE, the court is likely to call foul as Landrum appears to have confused his California state trademark registration (which he does apparently own) with the national protection of federal registration (which he does not appear to own).

While Landrum does attach a 1996 letter from the California State Athletic Commission, which states his professional ring name was “Iron Mike Landrum,” and his California state registration (which claims a date of first use of November 1983), it remains to be seen whether such evidence will be enough to deliver TKO.

Stay tuned as the two contenders duke it out over several issues. Did Mike Tyson use the mark IRON MIKE to offer good/services or was it just a nickname bestowed upon him by his fans? Who used the mark first and in connection with what goods/services? Does Mike Tyson’s fame make confusion unlikely? Did Landrum wait to long to bring these claims? Are Landrum’s rights limited to California only?

If the author were of the betting type, the wager would certainly be placed in Tyson’s corner! Stay tuned for round two.

The song “Down Under” by the band “Men at Work” has been hugely popular since the early 1980s, even becoming the unofficial anthem of Australia (it was played during the closing ceremony of the Sydney Olympics). The whimsical lyrics affectionately celebrate Australian culture, “where women glow, and men plunder.”

The song also features a famous flute riff, which was at issue in this copyright infringement case decided under Australian law.

Larrikin Music, who acquired the rights to the traditional children’s song “Kookaburra Sits in the Old Gumtree” in the 1980s, sued the band “Men at Work”, claiming that the flute tune in “Down Under” infringed their work. “Kookaburra” was written in 1932 by an Australian teacher, Marion Sinclair, for a girl scout competition and became a favorite around campfires from New Zealand to Canada.

A few months ago, a Federal Court in Sydney agreed with plaintiffs that, under Australian law, the flute melody did in fact infringe the copyright in “Kookaburra”. However, when ruling on damages earlier this month, the Court rejected plaintiffs’ demand of 60% of royalties as “excessive, overreaching and unrealistic.” Instead, the court ordered defendants to pay a reduced 5% of royalties collected for “Down Under”, and only those royalties collected in Australia (not worldwide) since 2002; probably not the millions plaintiffs expected…

Interestingly, defendants admitted that “Down Under” made “unconscious” reference to the children song. The band member who wrote the flute melody said he did so to inject some “Australian flavor” into the song. He reportedly admitted to have heard “Kookaburra” growing up in the late 1950s and was “pretty sure” that “Kookaburra” was in his school’s song book.

Comments: This case reminds us of the landmark copyright opinion in Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177, 178 (S.D.N.Y. 1976), in which the U.S. judge found that George Harrison had “subconsciously” infringed the Chiffon’s song “She’s So Fine” when writing ” My Sweet Lord.”

On a different note, it is worth noting that, if the “Down Under” case had been decided under U.S. law, laches might have been an available defense. After all, the song has been almost inescapable hit for over 30 years. Why didn’t the plaintiffs move quicker? Larrikin claimed that it wasn’t until a quiz show in 2007 that it became aware of the songs’ similarities… That claim may not have been sufficient to overcome a laches argument under U.S. law. (As a reminder, laches is an equitable defense that plaintiff has “slept on its rights” and is no longer entitled to the claim.)

Practice Tip: Even though this case was decided under Australian, not U.S., law, it provides a universal reminder that traditional works (such as childhood songs or rhymes) might not always be in the public domain. Under the U.S. Copyright Act, works published or registered before 1923 are the only works clearly in the public domain. For more recent works, advice your clients not to assume the work is out of copyright and to clear rights if needed.

They’re cute, they make noise, they might even get your kid to eat his breakfast, but boost immunity? The FTC says not so much.

For the second time in a year, Kellogg’s has been put on the hot seat for its cereal related health claims. This time, Kellogg’s claimed that because Rice Crispies contains “25 percent Daily Value of Antioxidants and Nutrients — VItamins A, B, C, and E,” eating a bowl would boost a child’s immunity. While it may be true that consumptions of these vitamins can help with boosting a child’s immunity, there’s no scientific proof that those vitamins, as contained in Rice Crispies, boost immunity.

This claim comes on the heels of Kellogg’s being shredded over claims it made in April that its Frosted Mini-Wheats were clinically shown to improve children’s attentiveness by nearly 20 perfect. In fact, only half the children in the clinical study had improved attentiveness and of them, only 1 in 9 showed a 20 percent improvement.

Despite Kellogg’s official statement about its “long history of responsible advertising,” it has fallen off the the clinical studies wagon in the past. 3 years ago, the company was also cited for advertising that eating two bowls of Kellogg’s Special K was clinically shown to help you lose weight. In fact, the clinical studies were related to the consumption of milk, not cereal, and thus, the better way to achieve the weight loss results advertised was simply to drink the milk.

Oh Kellogg’s, nice try, but honestly, it’s cereal, snap out of it!

Practice Note: Companies often try to make claims using scientific data from third party sources. While such claims are not illegal to make, clients should be counseled that the overall impression conveyed by the ad must be substantially the same as the scientific results revealed. In many cases, therefore, disclosures must be made in the ad to assure its truthfulness.

While FIAT is quite a well-known brand in Europe and other regions of the world, cars made by the Italian company aren’t all available in the U.S.… yet (Fiat reportedly has plans to bring more of its small car models to the U.S. market by the end of 2010). In truth, unless they are foreign car aficionados, most American consumers might not have heard of the brand, at least not extensively; at best, some may remember the tiny Fiat 500 fondly from European movies from the 50s and 60s (or the Pixar film “Cars;” Luigi, the tire shop owner was a 1959 Fiat 500). I personally remember (not so fondly!) the Fiat shown below as my very first car but, again, I grew up in a European country.

In the present case, Fiat filed an opposition at the Trademark Trial and Appeal Board (“TTAB”) against an applicant who filed to register the mark PANDA in conjunction with “automobiles,” based on, among other claims, dilution of Fiat’s “internationally famous” identical mark. Fiat owned a pending intent-to-use application at the PTO for the mark (not a registration) and used it internationally in conjunction with its hugely popular Fiat PANDA model, However, the Italian company was not using the mark in the U.S. commerce quite yet.

Applicant filed a motion to dismiss under FRCP 12(b)(6) for failure to state a claim upon which relief can be granted, arguing that Opposer Fiat had “no reasonable basis for damage in the absence of an allegation of ‘continuing prior use of any form of ‘Panda’ in the United States.’”

While the TTAB notes that activity solely outside of the U.S. is generally ineffective to create or maintain rights in marks within the U.S., it recognizes the possibility “in unusual cases” that activity outside of the U.S. could result in a mark becoming well-known within the U.S., even without actual use in commerce in the U.S.

Here, the TTAB found that Fiat failed to allege “any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States.” The TTAB gave Fiat 30 days to amend its dilution claim accordingly.

Practice Note: Pleading the dilution claim properly was key in this case. The TTAB makes clear that a foreign company seeking to oppose a U.S. mark but hasn’t yet started to use its mark in the U.S. market will need more than mere fame outside of the U.S. to be successful. In this case, the TTAB required:
1) specific pleading of intent to use;
2) filing of an application for registration; AND
3) some basis for concluding that recognition of the mark in the U.S. is “sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products are not available in the United States.”
Luckily for Fiat, it was given a second chance to meet all three requirements.

The Trademark Trial and Appeal Board has sustained Opposer, shoe maven Kenneth Cole’s contention that LE TIGRE for clothing is confusingly similar to Applicant’s use of LE TIGRE for pens.

Cole failed to establish that its LE TIGRE mark was famous. The Board pointed out that Cole had not provided sales data or advertising information sufficient to show that the mark was famous. Nevertheless, Cole did provide the Board with evidence of its vast licensing program and unsolicited newspaper articles relating to its LE TIGRE brand, as well as an article entitled “Licensing Seen as a Key to Strong Brand Presence.”

The rather rambling decision serves as a reminder that procedure is as important as argument at the TTAB. Not until page 12 of the 23-page report does the Board begin to address the merits of the case, spending the prior pages addressing issues related to the admissibility of evidence and objections raised by both parties.

On the basis of its 23 year use of the mark LE TIGRE for clothing, coupled with its licensing program and the fact that numerous leather companies also have lines of writing instruments, the Board determined the weight of the evidence suggested consumers would likely believe pens and clothing bearing the LE TIGRE mark emanated from the same source.

The case underscores the convergence of industry that companies and their lawyers are facing when trying to clear trademarks for use. Given the diversity that some companies maintain in their product offerings, the ability to predict whether a mark is confusingly similar is becoming more difficult.

Practice Note The lengthy discussion in this case related to procedure is worth noting, if only as a reminder to check (and re-check) what is admissible under a notice of reliance and what requires a deposition; and further, how to properly time objections

Abadin v. Marvel Entertainment Inc. got its final ZOW-POW! from a federal judge in New York who dismissed the action for copyright infringement and Lanham Act violations on a number of technical grounds, including no standing to sue. In a case that works as a “what not to do” checklist for plaintiff’s, it appears it’s safe to walk the streets again for Stan Lee.

Plaintiffs purchased Stan Lee Entertainment in 1999, which Stan Lee (the purported creator of many of the Marvel Comics characters) formed as a management company for his characters. In its lawsuit, Plaintiff claimed Stan Lee had transferred his most famous characters, including Spider-Man, Iron Man, Hulk, and the X-men (the “Characters”) to Stan Lee Entertainment prior to Plaintiff’s purchase of Stan Lee Entertainment. Plaintiff’s claim that Stan Lee Entertainment – and not Stan Lee himself – owned the Characters at the time that Stan Lee entered into an agreement to sell them to Marvel.

Defendant Marvel Entertainment and Stan Lee himself claimed that although Stan Lee had planned to transfer the Characters to Stan Lee Entertainment, the deal fell through, and instead Lee entered into an agreement in 1998 with Marvel – a year before Plaintiff’s purchased Stan Lee Entertainment – wherein Lee, as owner of the Characters, transferred the rights to the characters to Marvel.

In addition to finding that Plaintiffs were barred from their claims by the statute of limitations (“Plaintiffs cannot wait a decade to enforce their rights”), and further finding that procedurally, Plaintiff’s had failed to timely file its amended complaint (the 4th one), the Judge Crotty found that Plaintiffs did not have standing to sue because, a “plaintiff must have owned stock in the corporation throughout the course of the activities that constitute the primary basis of the complaint.” Since Plaintiffs did not purchase Stan Lee Entertainment until a year after the transfer to Marvel was complete, they did not have standing to sue.

Practice Note: Intellectual property due diligence at the outset of this deal might have avoided this suit altogether. Plaintiffs had a duty to carefully conduct the appropriate due diligence to determine what intellectual property was actually owned by the company they were purchasing and further, to request specific representations about what they were buying. In this case, a simple review of the PTO assignment database, freely accessible by the public reveals no fewer than 17 assignments of one SPIDER-MAN trademark, and Mavel’s involvement dating as far back as 1972.

“We treat copyrights as individual possessions, jewels that exist entirely by themselves. I’m obviously sympathetic to that point of view. But source material also takes on another life when it’s repurposed. It becomes part of the flow, the narration, the interweaving of text and art in books and e-books. It’s essential that we take this into account as we re-imagine permissions in a digital age.

When we have a new model for permissions, we will have new media. Then all of us — authors, readers, new-media innovators, rights holders — will really see the stories that words and images can tell.”

The seminar next week organized and hosted by the Berkeley Center for Law and Technology is an excellent venue to explore this and other copyright topics.

Further information about the TOPEKA re-branding effort is available here.

How many of us have been invited to ‘upgrade’ our licensed software with an internet service or product provider only to find that it was not an upgrade but instead triggered a reduction or elimination of privileges or access? The number is long of companies who do that. Not just once but repeatedly…. iTunes, Amazon…..to name just two.

TechDirt has a good analysis here of the most recent which Sony is rolling out for the PlayStation 3, including a backstory on EFF’s participation and comment.

“It used to be when you bought a product, you owned it. Simple, right? And once you owned it, you could do what you want with it? But, lately, thanks to digital products and an always connected world, many companies have changed things around — so the products you thought you owned, you actually rent. But, it can go even further than that, where a product you thought you owned can be irrevocably changed without your permission, long after you bought it. Take, for example, the recent story of Sony deleting a feature on the PS3 that let users (not owners, apparently) install other operating systems, such as Linux. It’s going away. Sony announced that when the next PS3 firmware upgrade comes along, it’ll wipe out this feature, whether you used it or not. The only way to avoid that is not to upgrade, but that will also greatly limit what you can do with your PS3.”

Proof perhaps that the ’subsidiary rights’ clause of the old publishing agreement might better be termed, “outsourced rights”. It will unsettled for awhile as to which is ’subsidiary’ to what.

In their webpage, the open handed, unguarded access policy is startling for its clarity and brevity:

“We plan at first to open our library to others when we are there, and develop a model of service based on what we learn of other people’s needs. It will be an appropriation-friendly setting. Scanners, digital cameras, and CD/DVD burners will be available so that visitors can make digital copies of items of interest and take them home. There will be no charge for using the collections, though we are exploring charging for commercial reuse of the materials so as to recover some of our expenses.”

This is an amazing project for many reasons, including the fact that it has such an ‘appropriation friendly’ useable collection.

Rick Prelinger comments that “We have found that the divide between the digital and analog camps is real, but highly exaggerated by the media and by overeager analysts; and that print and electronic materials are evolving in tandem with one another, and that this evolution is retroactive as well.”

Making a home for the unwanted paper text has been the work of Aaron Lansky in salvaging Yiddish language publications at the National Yiddish Book Center in the 1980’s. His book “Outwitting History” is an engaging tale of how the acquisition program was born and evolved.

One wonders if the Google Library Project has plans to help these who are rescuing ephemera print from destruction.

We learned yesterday in the New York TImes written by Miguel Helft that Google is harvesting metadata and data from the Google Library Project to create the largest translation engine in the world. As Google has an edge of pattern recognition software to generate metadata, perhaps we will see the next Google project to expand to these libraries of salvaged analog text.

“Like its rivals in the field, most notably Microsoft and I.B.M.,
Google has fed its translation engine with transcripts of United
Nations proceedings, which are translated by humans into six
languages, and those of the European Parliament, which are translated
into 23. This raw material is used to train systems for the most
common languages.”

With such partners and supporting sites as iTunes, Rough Trade, Spotify and Play.com, and even former music pirate Napster, Music Matters carries out its mission through two main avenues, the first of which is providing a series of short animated films by several renowned artists regarding what inspired them to make music, and the second is the launch of the MUSIC MASTTERS trustmark (or certification mark) which uses a elaborate certification regime to identify legitimate legal music services for consumers. The gold e-badge MUSIC MATTER mark functions as stamp of approval for music retailers who display the mark on their websites to identify themselves as certified provider of legal music.

Certification marks, however, are neither new nor exclusive to the music industry and should be an important consideration for brand owners. Unlike a trademark, which is used to identify the commercial source of goods and services, a certification mark is used to certify the nature, quality, regional origin or characteristics of the goods or services and/or that the provision of services was by members of a union or other organization that meet certain standards. Examples include the GROWN IN IDAHO mark (owned by the Idaho Potato Commission), the UL logo (owned by Underwriters Laboratories) and the GOOD HOUSEKEEPING SEAL OF APPROVAL (created by the Good Housekeeping Institute).

Certification marks are of great value to both their owners as well the merchants who display them, allowing consumers to identify products that meet certain criteria and allowing brand owners to set themselves apart in the industry. There are, however, significant legal considerations and requirements which should be carefully explored and understood before seeking a certification mark. For instance, for the owner of certification mark cannot use the mark in connection with its own goods and services for which is it certifying others. Moreover, the owner is required to create and implement objective testing standards and criteria against which goods and services may be measured and may not discriminate against those who meet the criteria. Additionally, the owner must monitor and control other’s use of the mark to ensure its proper use.

Whether Music Matters will have any significant effect on the wave of pirated music remains to be seen…but in this author’s humble opinion, it’s a good start and serves to remind us all that music really does matter. You can read more about the collective here.

At the time Apple filed its U.S. trademark application for IPAD, Fujitsu owned a pending application for the IPAD trademark for a wireless handheld retail inventory management device, filed in March 2003. The application went abandoned in April 2009 after Fujitsu failed to respond to a request for additional information. Fujitsu successfully revised the application in June 2009, and shortly thereafter, the application was published for opposition.

In what looked to be a looming trademark battle, Apple filed multiple extensions of time over several months to oppose Fujitsu’s pending application. Fujitsu, seemingly prepared for a fight, explaining through its director of public relations in January of this year that the company was consulting its lawyers because “[i]t’s our understanding that the name is ours.”

In a rather anti-climatic end, however, the battle is seemingly over before it really got started. On March 17, Fujitsu assigned the IPAD application and trademark to Apple, leaving plenty of speculation such as how many zeros were at the end of Apple’s check or did Fujitsu’s legal team conclude that its right in the mark paled in comparison to Apple’s (not likely since Fujitsu claimed rights in the mark dating back to January 2002).

Apple is no stranger to the name game as it had a similar dispute with Cisco over the IPHONE mark after it introduced the phone in 2007, resulting in a lawsuit which eventually settled with the companies agreeing to share the name on their respective products.

This case reminds us of the benefits of fully exploring the risks and costs likely to be associated with a particular trademark prior to its selection and use. Here there is no doubt that Apple was fully aware of, contemplated (and even opposed) Fujitsu’s trademark application prior to filing its IPAD application. Indeed, Apple probably calculated the cost of acquiring the trademark from Fujitsu as part of its business expense.
Few of us, however, have the deep pockets of a Steve Jobs, and as such, would be wise to carefully consider the results of a search, and particularly any potentially problematic marks, when creating a trademark filing strategy.

Or “Cher,” or even “Carrot Top.” Either The Cobalt lawyers are not up on just how cool Lindsay Lohan is, or she needs to check back into rehab for delusional thoughts.

According to the Wall Street Journal Law Blog, Ms. Lohan has sued E-trade in New York Supreme Court for misappropriation of her name and characterization for one of its “baby” commercials in which a girl baby refers to another girl baby as “that milkaholic lindsay.” According to Lohan’s attorney, such a reference clearly is an attempt to trade off the good name of Lindsay Lohan.

A couple of things her attorney might want to think about: First, all roads do not lead to your client simply because her name is Lindsay. Second, publicly giving the defendants a defense by saying the commercial is a “parody” is probably not a good way to really drive home your own case. Finally, Lindsay may have a hard time establishing that she’s known only by her first name given the fact that she’s never advertised or marketed herself solely as Lindsay, there are over 300,000 women in the country with the name Lindsay. Besides, she was never and abuser of — oh wait, she’s got one strong piece of evidence.

We’re betting this case gets the New York Heave Ho.

A Wisconsin district court has determined the red knobs on the workhorse Wolf Stove have acquired secondary meaning.

Plaintiff Wolf Appliance, Inc. (“Wolf”), famous for its professional and home cooking ranges, filed suit against competitor Viking Range Corp. allegiing federal trademark infringement for Vikings recent use of red knobs for its range handles, and asking the court to grant a preliminary injunction, requiring Viking to cease use of the red knobs.

In finding that the color red on the Wolf knobs had acquired secondary meaning, the court gave little weight to declaration from dealers and customers and instead based its opinion on the following facts:

LONG-TERM CONTINUOUS USE: Wolf has been selling ranges with red knobs since 1933.

LOOK-FOR ADVERTISING: Wolf has been calling attention to its red knobs in advertising for years. For instance, in a recent catalog, Wolf states, “Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature.”

RECOGNITION BY THIRD PARTIES OF THE KNOB: The court found that major news articles all seemed to reference the “red knobs” a integral to easily identifying a Wolf Range over other high-end cooking products.

FEDERAL TRADEMARK REGISTRATION: The PTO granted a trademark registration for the color mark in 2008. Notwithstanding the evidence submitted at trial that the red knobs had been in use since 1933, the registration claims a first use date of at least as early as 2000.

SIGNIFICANT SALES OF THE “RED KNOB” STOVE: Since 2000 alone (the claimed first use date), Wolf has sold more than $800 million in stoves and spent more than $41 million in advertising and promotions, many of which include “look for” advertising.

Practice Note: This case serves as a beautifully written primer on what a client has to show to establish secondary meaning in a color or other trade dress. It also shows that while a trademark registration does establish prima facia distinctiveness, many judges will not rely solely on its validity, and will give a defendant wide latitude to overcome the presumptions established with a federal registration. Clients who want to use trade dress to distinguish themselves in the marketplace should be advised to put in place a marketing and sales plan that supports the goal.

The author would like to draw attention to the great restraint she exercised in refraining from making fairy tale jokes. Red? Wolf? Slow pitch down the middle.

Thomas Nelson, Inc. v. Zondervan Corporation et al No. 3:2009cv01097 (Filed Nov. 13, 2009, M.D.Tenn.)

It is a chronic problem in copyright cases that the author/creator gets wedged in a dispute with an early buyer of their work because that buyer claims her later work infringes what the first buyer thinks they bought. The facts reduce to a short equation: author/artist assigns copyrighted content to a publisher; and later sells separate, differently expressed copyrighted content to a second, later buyer. The first publisher claims that that later work “infringes.” The lead case on point is Fogarty v. Fantasy Records, 510 U.S. 517 (1994).

The most recently filed case on the topic was filed by Christian publisher Thomas Nelson Inc. against another Christian publisher Zondervan Corp and illustrator Meredith Johnson. Plaintiff hired Johnson under a work-for-hire agreement to provide drawings for the children books series “Gigi, God’s Little Princess.” Plaintiff claims that Johnson breached her contract with him by providing allegedly similar illustrations for a book series entitled “The Princess Twins” published by competitor Zondervan. Plaintiff also claims copyright infringement and unfair competition.

The fly in the ointment is that the illustrator, in the document that effected the copyright assignment of the first work, also agreed to not publish artwork that “in any manner would compete or conflict with” the rights granted to Plaintiff Thomas Nelson.

Ouch! That would be a sentence that might have been captioned “You will need a wholly different style for future works”.