“How” Apparently Does Matter

October 07, 2014 by David Payne in 201410

The New York Times reports on a pending trademark dispute between Dov Seidman, a prominent author and consultant, and Chobani, Inc., America’s largest Greek yogurt manufacturer, over the word HOW. Seidman owns two U.S. registrations and a number of pending applications for the HOW mark, including an application for the mark HOW MATTERS, for a variety of educational and consulting products and services, all relating principally to business ethics and behavior. Chobani, on the other hand, owns two pending trademark applications for the mark HOW MATTERS, for yogurt products and restaurant services. Seidman has filed suit against Chobani and Chobani’s ad agency on the grounds that Chobani’s use of the mark HOW MATTERS infringes Seidman’s family of HOW marks. Because the goods and services with which the two parties’ respective marks are used appear to be dissimilar, Seidman may have a difficult time proving that a likelihood of consumer confusion exists between the parties’ marks, which is the heart of a trademark infringement claim. However, the motivation behind the lawsuit may have more to do with moral rights than trademark rights. According to Seidman, Chobani is “using ‘How’ to convey and connote that they are an ethical company… [t]hey are using ‘How’ exactly the way I use it. They’ve appropriated the foundation of my entire philosophy.” It remains to be seen whether the use of a mark to connote a similar idea, but with unrelated goods and services, can sustain a trademark infringement claim. Read the full article here.

Reposted from The New York Times.

Darth Trademark

October 06, 2014 by David Payne in 201410

Did you know that sounds may be registered as trademarks under U.S. law? Per Section 1202.15 of the Trademark Manual of Examining Procedure, “[a] sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they ‘assume a definitive shape or arrangement’ and ‘create in the hearer’s mind an association of the sound’ with a good or service.” In other words, a distinctive sound is registrable if it is recognized by the public as an indication of source for particular products or services.

Even the relatively mundane sound of “rhythmic mechanical human breathing created by breathing through a scuba tank regulator” can be trademarked under the right circumstances. For example, the sound mark of U.S. Registration No. 3618322, featured below, is instantly recognizable to a broad swath of the public, clearly associated with a certain dark and malevolent source of goods and services, and widely feared (for trademark infringement purposes) throughout the Empire:

IP in 3D

October 03, 2014 by David Payne in 201410

JD Supra reports on the various intellectual property issues presented by the rising popularity of 3D printing, a technology that is taking the law into uncharted territory. For example, trademark law may cover the branding of the 3D printed product, copyright and trade secret law may cover the “blueprint” of the product design, trade dress and design patent law may cover the appearance of the product, and patent law may cover the utility of the product or the printing process itself. However, because the technology essentially enables users to print whatever they want, the existing legal framework for IP protection may prove inadequate to prevent or police the unauthorized manufacture of infringing or counterfeit goods. As is often the case, the law may have trouble keeping up with the rapid pace of technological development. Read the full article here.

By Tiia Monto (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

Reposted from JD Supra.

Virtual Marilyn Monroe Creates Real Legal Issues

October 02, 2014 by David Payne in 201410

As reported in The Hollywood Reporter, the Estate of Marilyn Monroe is being preemptively sued in New York federal court by Virtual Marilyn LLC, a company that produces a “computer-generated virtual actress adopting the persona of Marilyn Monroe.” Virtual Marilyn is seeking a declaratory judgment that its use of the “Virtual Marilyn” character does not constitute unfair competition or infringe any trademarks, copyrights, or rights of publicity belonging to the Estate of Marilyn Monroe. The article provides an interesting overview of the types of intellectual property protection that celebrities and other famous individuals can use to protect and financially exploit their public personas. Read the full article here.

By Trailer screenshot (The Prince and the Showgirl trailer) [Public domain], via Wikimedia Commons.

Reposted from The Hollywood Reporter.

Hasbro Cracks Down on Scrabble Rousers

October 01, 2014 by David Payne in 201410

Slate reports on the recent efforts of Hasbro Inc., maker of the popular game Scrabble, to claim and assert copyright ownership over lists of words used by Scrabble players and tournaments. Digital versions of Scrabble word lists have been circulating online for more than two decades, and in some instances have been compiled by the players themselves. In addition to the practical difficulties in policing the circulation of such lists on the Internet, Hasbro’s action also raises the interesting question of whether a list of words has sufficient originality to qualify for copyright protection. In addition to exploring the legal issue of whether a Scrabble word list can be copyrighted, the article also provides a fascinating glimpse into the world of competitive Scrabble playing. Read the full article here.

AbelCheung; http://creativecommons.org/licenses/by-sa/3.0/legalcode.

Reposted from Slate.