Showing posts with label generic. Show all posts
Showing posts with label generic. Show all posts

Friday, October 18, 2013

"Champagne" Tastes Trigger Trademark Disputes with Apple, Others

For decades, the Comité Champagne, a French industry trade organization dedicated to protecting the French Champagne region's world famous vintners, have aggressively policed the marketplace and prosecuted any unauthorized use of the word "champagne." 

Such is the reason that the bottle of California's slightly cheaper bubbly you may have opened on New Year's Eve was termed "sparkling white wine," and not "champagne."

According to the Comité's website, the "reputation and importance of the Champagne appellation has long been a source of envy for other producers, spawning hundreds of imitations every year...Champagne is a unique product born of the shared heritage of Winegrowers and Champagne Houses whose livelihoods depend on protecting that heritage."

The website claims that the Comité has a "duty to protect consumers against misleading claims made for any wines, beverages or products that trade off Champagne’s reputation as an appellation of guaranteed origin and quality."

The Champagne Regions of France
Accordingly, it is the stated policy of the Comité Champagne  to prosecute anyone who misappropriates the reputation or identity of the Champagne appellation.

It seems perfectly reasonable for the Comité to try and thwart counterfeit champagne beverages, and is has done so very effectively.

However, the Comité also seems to take its role as defender of the appellation so seriously that it attacks any uses of the word "champagne" to describe color or style, even when not used in connection with beverages.

Most recently, for example, Apple introduced the new iPhone 5 series, in a metallic gold color initially planned to be described as "champagne."

However, the Comité saw fit to send a warning letter to Apple before the phone was launched, contending that the term "champagne" was a trademarked geographic designation, and that Apple's use would inevitably lead to litigation.  Apple backed off, and now simply calls the color "gold."

Not wanting to fight a lawsuit, the distributor dropped the tag line.

The Gold/"Champagne" iPhone
In the past, the Comité has also successfully barred the use of the term ‘Champagne’ in connection with unauthorized toothpastes, mineral water for pets, toilet paper, underwear and shoes.

But is such aggressive policing of the wider marketplace really necessary?

Traditionally, brand protection advocates would argue that it is critical to protect the marketplace against any and all unauthorized uses, even those outside of the core area of protection.

Failure to do so, they warn, could lead to the most dreaded outcome: "genericide" and ultimate abandonment of the trademark itself.

But in none of these instances did the widespread unauthorized usage that led to the trademarks' destruction start outside of the core market, leading to the slippery slope of genericide that brand owners dread.

Rather, the trademark owners were simply so successful in their core market, everyone else adopted the term to describe the product category itself.  Eventually, no one knew that any particular thermos originated from one source or manufacturer.

It is that fear that drives makers of Kleenex-brand tissues, Xerox-brand copiers and Band-Aid brand bandages, to frequently remind us that their products are brands, not the names of generic products.

Brand protection advocates must carefully balance their clients' important need to protect against trademark erosion, and the wider realities of the marketplace.

Tuesday, September 10, 2013

Despite Legal Threat, Rights to MUMBO Sauce Trademark Stay in Chicago

Argia B. Collins' Chicago Area Restaurant

"Mumbo sauce" is sometimes used as the colloquial name for a tangy sauce served in Washington, D.C. restaurants and local eateries. However, a legal challenge to the validity of the name as a unique trademark appears to have been resolved in favor of the Windy City as the owner's locale.

The Washington Post describes the D.C. sauce's flavor as somewhere between barbecue and sweet-and-sour sauce.  The sauce is also sometimes called "Mambo sauce."  It is a versatile condiment that can be used for anything from fried rice to ribs or wings.

The Chicago Tribune reported in 2007 that Argia B. Collins, who died in 2005, and who had been one of Chicago's premier African American restauranteurs, first coined the term in the 1950's.  Collins' heirs ultimately transferred the rights to the name to Select Brands, LLC.

According to the Select Brands' website:  "A perfectionist when it came to his restaurants, Argia B. was not satisfied with the bland, watered-downed sauces served in other establishments or the tart, over-powering national brands sold by restaurant supply houses....Drawing on his southern roots, he wanted to create a sauce with the savory flavors reminiscent of the homemade Sunday dinners that he had enjoyed on his family's farm."

An image displayed on the Select Brands' website documents Collins' use of "Mumbo Bar-B-Q Sauce" in 3 flavors.

Capital City's Mumbo Sauce
In the 1990's, Select Brands LLC filed for a federal trademark on "MUMBO" for barbecue sauce in International Class 36, and it was granted.

Subsequently, a petition to cancel this trademark on the basis that it had become the "generic" name for a type of sauce was filed by Capital City, LLC, the makers of Capital City Mumbo Sauce, a D.C.-based company.

The petition cited printed materials taken from several different websites that showed a variety of sauces described as unauthorized "Mumbo sauces."

The Trademark Trial and Appeal Board was not persuaded, however, finding that while this evidence showed "some generic use of the term 'Mumbo' in connection with sauces," that evidence consisted of printouts from only a few websites, and was not an overwhelming evidence of widespread generic usage.

Further, the Board seemed persuaded that Collins' heirs had undertaken serious efforts to police what they deemed as improper use of the trademark, and did not find the level of widespread and unrestricted usage necessary to deem a registered mark totally unworthy of protection.  The Board refused to cancel Select Brands' trademark.

The federally registered Mumbo trademark will therefore remain owned by Select Brands LLC.

However, in the event that Select sues Capital or the other unauthorized Mumbo sauce users for trademark infringement, the jury and judge would get the final say in the matter, as genericness as well as lack of likely confusion can be used as complete defenses in an infringement case in court.

Tuesday, July 31, 2012

The "Caviar Manicure": Capturing a Trend as a Trademark

Buzzfeed reports that UK-based company Ciaté is laying a somewhat controversial stake to the terms "CAVIAR MANICURE" and "CAVIAR NAILS," as used in connection with a unique (if not slightly bizarre) form of nail polish and lip gloss adornment.

According to the company's website, "the inspiration behind the Caviar Manicure™ came about when Charlotte, Ciaté’s Creative Director, was looking to create 3-dimensional nails for a front cover magazine shoot and wanted to develop something feminine, indulgent yet delicately extravagant."

Ciate's products are currently offered for sale at Sephora and on Amazon.

According to BuzzFeed, Ciaté has apparently been sending out cease and desist letters to bloggers who were reporting how to create a "do-it-yourself" form of the nail look and calling it the "caviar manicure" without authorization from Ciaté.

The correspondence reportedly demands that bloggers cease using the term in connection with do-it-yourself forms of nail adornment, unless they are specifically using Ciaté products:  

"Brand Agency Limited (Ciaté) owns the trade marks caviar manicure and caviar nails and we are in the process of applying to register these marks around the world. Therefore you should not use the trade marks caviar manicure and/or caviar nails unless they are used in relation to products or to a method of using products that are produced by Ciaté."

However, the legal correspondence has not gone over so well with nail polish aficionados, who have begun calling the trend "fish egg manicure" in a form of mockery.

However, the twist here is that the bloggers and do-it-yourselfers are using a term ("caviar manicure") to which Ciaté is now staking an exclusive legal claim.

In the U.S. Trademark Office, Ciaté applied for a federally registered trademark in April 2012 based on priority of use claimed from its UK-application, which is dated March 13, 2012.

If a blogger or any other third party had previously used this term in commerce, that person could possess a superior right to Ciaté under the doctrine of priority.  In the United States, the first person or company to use a distinctive mark in commerce typically possesses the seniormost claim to right as against later comers.

There are reports in the blogosphere that third parties may possess evidence of prior use. However, do-it-yourselfers and bloggers may not possess any trademark rights vis-a-vis Ciaté, unless their use was made in commerce.

Ciaté may therefore now attempt to lay stake to the brand to the extent it can stop a significant level of unauthorized usage in the marketplace and become uniquely associated with the trend.

Wednesday, July 18, 2012

When Your Best Defense is a Really Stupid Offense Against an Internet Titan

What do you do when you thought it was a good idea to invest thousands of dollars in over 750 domain names that have "Google" in them, such as “” and “"? You apparently spend MORE money to hire a couple of lawyers to try and convince a federal judge that "GOOGLE" is just a generic term.  Oh, and you demand that the Court should cancel the world's most valuable trademarks so you can keep those domain names you worked so hard to cybersquat on register and use in good faith.

Friday, July 6, 2012

Is "CHIPOTLE" a Valid Trademark?

Chipotle chilis - meco variety
The word "chipotle" comes from the Nahuatl word chilpoctli meaning "smoked chili pepper," and is a smoke-dried jalapeño pepper.  It is a flavorful chili pepper used primarily in Mexican and Mexican-inspired cuisines, such as Mexican-American and Tex-Mex.  The word has widely been used generically to describe this type of flavor.

Enter Chipotle Mexican Grill, Inc., a chain of restaurants located in the United States, UK and Canada, specializing in delicious burritos and tacos, and known for its fresh, natural ingredients and “assembly-line” production method. 

Despite its enormous success and popularity (as long lines of customers can attest), the company continues to face an uphill battle in legally capturing the word “CHIPOTLE” as a trademark. When the restaurant chain applied for the word trademark in 2003, the US Trademark Examiner initially refused to register it, finding that it was "highly descriptive of the goods and/or services."  

However, the Examiner went on to invite the company to offer specific evidence of distinctiveness, including dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  The Examiner reminded the company that "the [Trademark] Office will decide each case on its own merits."

Subsequently in June 2008, the CHIPOTLE trademark application became a registration on the Supplemental Trademark Register.  The Supplemental Register is a purgatory for descriptive or otherwise problematic marks which may (or may not) mature to the Principal Register.A quick search on Google demonstrates that CHIPOTLE has clearly become associated with the Plaintiff's restaurants.  

But can the CHIPOTLE word ever qualify to become a legally protectable trademark in its own right?  It may depend on whether CHIPOTLE is deemed "generic" or "descriptive" by a court.  The distinction is subtle, but meaningful.  A generic mark can NEVER become a trademark.  Examples of generic words are CHICKEN, RESTAURANT and GRILL. However, a mark that is descriptive CAN become a trademark, if sufficient "distinctiveness is acquired" by a single company.  Here, generic/descriptive use by unauthorized third parties create a chicken-and-egg problem for the restaurant chain, which is stuck with creating "distinctiveness in the making."  

Can such a brand owner who is still trying to establish trademark rights meaningfully assert a viable legal claim?  For example, Subway sandwich shops offer a product called CHIPOTLE CHICKEN. This usage does not appear to be licensed, and has apparently not drawn a lawsuit (yet). However, when the Kroger Company launched a product called CHIPOTLE CHICKEN in supermarkets, it was summarily sued and chose to settle.  Such outcomes can help a Plaintiff demonstrate good faith efforts to police the marketplace, but they do not in and of themselves resolve the ultimate linguistic -- and legal -- matter.  If larger and more visible third parties (such as Subway) continue to use the word in a generic or descriptive (i.e., non-trademark) manner, CHIPOTLE may be confined to those marks that never escape their perpetual sentence in trademark purgatory.  Only time will tell.

Understanding Trademark Bullying

Many successful companies seeking to aggressively protect their intellectual property portfolio of valuable brands have been accused of becoming “trademark bullies.”  Their accusers argue that rather than using a reasoned, measured approach to address actual commercial threats, these large brand owners deliberately use the specter of civil litigation to threaten alleged infringers into submission.

Trademark infringement litigation may be brought either in federal court, or can also be commenced by opposing or seeking to cancel trademark applications in the United States Patent and Trademark Office (“USPTO”) in a lengthy and byzantine administrative proceeding that can last years and cost the parties thousands of dollars.  Because the cost of litigating trademark disputes can be prohibitive, especially for smaller companies or individuals, many accused infringers choose to settle or otherwise resolve their conflict without the merits of the underlying conflict ever being adjudicated.

Consequently, commentators -- and sometimes even the brands’ own customer base – have vocally accused some brand owners of overzealously enforcing their perceived trademark rights against others in a manner that smacks of bad faith or anticompetitive conduct used to squelch competition or free speech.

Why would savvy and well-represented companies sometimes risk going too far and potentially alienating their own customer base?  While every case is different, under existing U.S. Intellectual Property law, an established brand may very well face a Hobson’s choice:  risk the ire of an angry mob, or face ongoing brand erosion and even extinction in a world of ever-expanding fakes and imitators.  A few examples of alleged "trademark bullying" warrant mentioning:

  • Chick-Fil-A sells more than $4B of sandwiches each year.  The company’s humorous “EAT MOR CHIKIN” trademarked slogan held up by aggrieved cattle (see right), became an instant hit for the company’s efforts at marketing and promotion.  When a small local farmer named Mr. Muller-Moore sought to federally register the “EAT MORE KALE” slogan in the U.S. Patent and Trademark Office, the corporation opposed his application on the grounds that his mark was likely to cause confusion with their slogan.

  • Hansen Beverage Company, maker of the popular “MONSTER ENERGY DRINK” sent Rock Art Brewery a letter demanding that Rock Art cease and desist its use of “VERMONSTER” as a trademark for beer.  Ultimately, after a public outcry on Twitter, the parties settled their dispute outside of court, with Rock Art permitted to keep selling their brew.

  • Non-profit Susan G. Komen for the Cure opposes dozens of trademark applications for wording that includes “FOR A CURE” or “FOR THE CURE.”  When the charity opposed an application for “MUSH FOR THE CURE” sought by a local non-profit, it became national news. 

So what do each of these four examples have in common? Each circumstance may seem like an example of brand protection gone awry, and perhaps they are.

However, Difficult Legal Lines Must Inevitably Be Drawn

It is worth reminding their critics that if each of these brand owners had not acted to draw a line in the sand, they would undoubtedly face the prospect of closer and closer copyists, and eventually encounter even more widespread infringement.  Where any specific line between infringer and innocent victim is drawn in each case is another matter, but it is clear that a legal line still must be drawn somewhere, and the clear incentive for brand owners under current law is to be zealously protective of their investment in their brands.

One legal reason for brand owners to be zealous is that in the event of a brand owner’s complete failure to act, their targets may be entitled to legally rely on the affirmative defense that their delay has been inexcusable.  This potentially crippling defense is known as “estoppel by laches” or “laches” for short.  The laches defense is also sometimes described as "estoppel by acquiescence."

Similar to an undefined statute of limitations, laches may be available as a defense when an infringer was actually known about by the Plaintiff, or even should have been known about under the circumstances, and the delay in bringing suit was inexcusable.

An essential element of laches is the requirement that the party invoking the doctrine has somehow changed its position as a result of the delay.  In other words, the defendant is now in a worse position than at the time the claim should have been brought.  For example, the delay in asserting the claim may have caused the defendant to open up more stores, hire more employees and build up its own reputation in reliance on the brand owner’s unfair inaction.

Even worse yet, if a brand owner fails to act against numerous infringers in the marketplace, it may very well face the dire prospect of losing its trademark altogether under a doctrine known as “genericide.”  

Some words that started out as brand names and “killed” by such widespread genericide are: aspirin, bundt cake, cellophane, dry ice, escalator,
 granola, kerosene, linoleum, minibike, nylon,
 pogostick, tarmac, thermos, touch-tone, trampoline,
 yo-yo and zipper.

In each of these cases, the brand owner failed to act to sufficiently police the marketplace to stop widespread third-party unauthorized uses.  Ultimately, these erstwhile brands passed into the netherworld of “dead” trademarks, devoid of legal protection altogether.

But Are These Extreme Historical Examples of Genericide that Can’t Recur Today?

Harris Interactive released a list of products ranked by brand equity, a measure of the brand's popularity with U.S. consumers.  Among the top 10 are Ziploc food bags, Hershey’s Milk Chocolate Candy Bars, Kleenex Facial Tissues, Clorox Bleach, WD-40 Spray Lubricant, Heinz Ketchup, Windex Glass Cleaner and Campbell’s Soups.  In other words, some of the most valuable and well-known trademarks in the world.

It is clear from this list alone that success in today's marketplace can be a double-edged sword.  The companies who manufacture these products have done an incredible job in advertising and marketing them, so successful in some cases that the brand name is in danger of becoming a genericized trademark.  If the companies on this list aren't zealous, they could end up losing the trademark for the products that they have worked so hard to market successfully.

Ultimately, trademark law is intended to protect consumers and companies from confusion with established brands.  Quality control and brand reputation are crucial in today's marketplace, and zealous trademark protections are a perfectly logical and legal way to protect customers from fraud, and to give companies the tools they need to protect their valuable investment.  In conclusion, in this age of rampant counterfeiting and infringement, it is important to fully understand why in their zeal to protect their valuable brands, aggressive tactics can seem like a viable option for brand owners, even if sometimes they risk going too far.