Trademark Geek - News & opinion on relevant issues in branding and trademark law

The Trademark Trial and Appeal Board (the “TTAB”), in a relatively rare decision that a trademark is “scandalous” has refused registration to a trademark for a bottle shaped like a hand with its middle finger extended upwards as pictured below. 

A mark is considered scandalous if a substantial composite of the general public would consider the mark offensive and vulgar. In making the determination in this case, the TTAB looked to dictionary definitions of “the finger” and “finger (gesture)” which defined the act as an obscene hand gesture and articles explaining why the middle finger is considered offensive.  The TTAB held that the definitions and magazine articles established that the mark is scandalous to a substantial composite of the general public. Further, the TTAB worried that since the since the application covered alcoholic and non-alcoholic beverages, which are general consumer products, the mark would be visible to children.

While the TTAB acknowledged that one definition for “the finger” is  a strange, friendly greeting for some (umm, it hasn’t been used that way for me), it found that the gesture was unacceptable to the majority of people.  Of course it’s interesting that the TTAB considers the dictionary as conclusive evidence of contemporary attitudes….

Givenchy’s Nightingale handbag is a favorite among celebrities and handbag lovers everywhere. According to French couture house Givenchy S.A., BCBG Max Azria Group, Inc. thought so too and, wanting to make a profit off the Nightingale handbag, began manufacturing alleged knockoffs of the popular bag.  Givenchy quickly filed suit against BCBG alleging violations of trade dress and unfair competition laws. Here are some pictures of Givenchy’s Nightingale handbag next to BCBG’s Rembrandt handbag.

Recently, BCBG filed a motion for summary judgment in the case asking the Court to make an early decision in the case that BCBG is not infringing. While there are issues concerning functionality and secondary meaning, the most interesting issue focuses on likelihood of confusion. Since BCBG has stopped selling the allegedly infringing handbags, Givenchy argues that post-sale confusion comes into play here because a consumer who sees the handbag on the street would mistakenly believe that it was a Nightingale handbag. Under trademark law, post-sale confusion focuses on confusion on the part of someone other than the purchaser who sees the item and confuses it with another, similar product.

BCBG argues that consumers are unlikely to be deceived into believing that Givenchy is the source of its Rembrandt and Lulu handbags because of numerous differences between the handbags. These differences include the prices of the handbags  (around $100 for the Rembrandt and Lulu handbag compared to $1,600-4,000 for the Nightingale handbag), the material of the handbag (fine leather vs. plastic (PVC)), the zipper detail on BCBG’s handbags, and the fact that the handbags were sold in different stores. BCBG also argues that the silhouettes of the handbags are different since the corners of the Nightingale handbag droop downward (which, according to BCBG, gives the handbag the appearance of a bowling ball bag).

Even though there are differences between the bags, the question is whether consumers seeing someone carrying the bag will identify Givenchy as the source of the handbag. When looking at the issue from this point of view, the differences pointed out by BCBG don’t seem as important. The U.S. District Court for the Central District of California is considering BCBG’s motion and I am continuing to follow this interesting case.

Under a recent decision by the Trademark Trial and Appeal Board, Mattel won’t be able to register “Motown Metal” to identify its new line of Hot Wheels toy cars, which include a 1970 Chevrolet, 1965 Ford Mustang, and a 1969 Pontiac GTO. The reason—Mattel’s mark is, according to the Trademark Trial and Appeal Board, likely to cause confusion with UMG Recordings’ MOTOWN trademark.

The first issue was whether a goods/place association between Detroit and Motown exists. Mattel argued that it should be allowed to use the word “Motown” since it has become synonymous for the city of Detroit. The Board wasn’t impressed with this argument, finding that, while third parties had used “Motown”  to refer to Detroit over the years, such uses were non-commercial or insignificant.

More importantly, the Board decided whether Mattel’s “Motown Metal” line of toy cars would lead consumers to believe that the toys are somehow associated with or connected to UMG. The Board reasoned that while UMG has never made toy cars, it has used the mark in connection with a wide range of goods such as board games, video games, and even a musical toothbrush (I wish I had a MOTOWN musical toothbrush!).  Given these uses, the Board concluded that consumers could reasonably believe that the “Motown Metal” toys cars are somehow connected with UMG. 

What is important here is that the decision by the Trademark Trial and Appeal Board does not prevent Mattel from using "Motown Metal" but only prevents Mattel from registering this as a trademark.  In order for UMG to prevent Mattel from actually using the mark is to obtain an injunction from a federal court.  Will keep you posted if UMG files a lawsuit against Mattel...

I've previously written about the ongoing trademark litigation between Facebook and Teachbook.  Facebook is suing Teachbook over, well, use of "Teachbook" as infringing on the trademark rights in Facebook.  In a recent decision, the Court hearing the case dismissed Teachbook's motion to dismiss the case.  Here is a link to the full Memorandum from the Court...   TeachBook Decision 9 2011.pdf

This decision does not come as a surprise and the Court's decision makes complete sense as upholding fundamental trademark law.  Here's one snippet from the decision:

"Facebook is using the suffix -BOOK to offer social networking services. Coincidentally, so is Teachbook.:

BOOK is a generic term for a printed publication (as in "I like to read books").  As related to social networking services, BOOK is a protectable portion of the FACEBOOK trademark.  Nothing more, nothing less.  I would be surprised if the case continues any differently.

Here's a screen shot from teachbook.com - am I the only one that finds it ironic that there is a borders.com advertisement at the top?

The unlicensed use of western intellectual property in China has flown to new heights with the launching of the world's first life-sized Angry Birds attraction at a theme park located in Changsha, China (a city of seven million people situated in south-central China). This recent discovery shows Chinese entrepreneurs moving up the "proverbial food chain" - from the discovery of the wholesale counterfeiting of Apple stores last month to the creation of a real-life version of a computer game complete with flying birds and sitting pigs.

The incredibly popular and highly addictive (I don’t say that from experience by the way) Angry Birds video game was created by Finnish computer game developer, Rovio, and allows players to use a virtual slingshot to launch various colorful and wingless birds at pigs sitting on or within various structures. The computer version of the game has the distinction of being one of the most counterfeited computer games in China.

Now, unlicensed Chinese uses of Angry Birds have reached new dimensions with the opening of the Angry Birds attraction at the Window of the World theme park. Visitors taking part in the attraction pull back on giant slingshots to launch a variety of plush bird shaped projectiles at balloons shaped like pigs which are placed on various structures. The game is billed as a way to release stress and to help create happiness. I think they might be onto something!

This of course was a surprise to Rovio who had not licensed use of Angry Birds to the Window of the World theme park and it is not clear yet what Rovio's response will be…. Representative of the Window of the World theme park, however, have already (and this is a shocker) expressed an interest in discussing a partnership with Rovio.

The unlicensed use of western intellectual property in China has flown to new heights with the launching of the world's first life-sized Angry Birds attraction at a theme park located in Changsha, China (a city of seven million people situated in south-central China). This recent discovery shows Chinese entrepreneurs moving up the "proverbial food chain" - from the discovery of the wholesale counterfeiting of Apple stores last month to the creation of a real-life version of a computer game complete with flying birds and sitting pigs.

The incredibly popular and highly addictive (I don’t say that from experience by the way) Angry Birds video game was created by Finnish computer game developer, Rovio, and allows players to use a virtual slingshot to launch various colorful and wingless birds at pigs sitting on or within various structures. The computer version of the game has the distinction of being one of the most counterfeited computer games in China.

Now, unlicensed Chinese uses of Angry Birds have reached new dimensions with the opening of the Angry Birds attraction at the Window of the World theme park. Visitors taking part in the attraction pull back on giant slingshots to launch a variety of plush bird shaped projectiles at balloons shaped like pigs which are placed on various structures. The game is billed as a way to release stress and to help create happiness. I think they might be onto something!

This of course was a surprise to Rovio who had not licensed use of Angry Birds to the Window of the World theme park and it is not clear yet what Rovio's response will be…. Representative of the Window of the World theme park, however, have already (and this is a shocker) expressed an interest in discussing a partnership with Rovio.