Low barriers to entry in certain businesses breed rapid response and quick-to-market products that capitalize on “in the moment” mania. Often the in-the-moment-mania products derive from long standing famous trademarks owned by aggressive trademark enforcers. Buyers should be beware of these types of aggressive trademark enforcers prior to making costly investments.
Here is a hint. The National Football League is one of them.
An enterprising sports fan who almost a year ago saw an investment opportunity in the term “HarBowl” recently got more than he bargained for when the NFL’s lawyers came knocking.
The term “HarBowl” emerged into popular sports conversation around Thanksgiving of 2011, when brothers John and Jim Harbaugh became the first siblings in NFL history to lead their teams against one another as head coaches. The first “HarBowl” was a media frenzy of a family affair staged on national television during one of the country’s favorite family meals. Older brother John’s Baltimore Ravens won the inaugural “HarBowl”, yet Indiana resident Roy Fox remained interested in the term even after the final whistle had blown.
The two teams would go on to have very successful seasons before each fell a game short of meeting once again in the only scenario possible that year; the Super Bowl. Despite the super rematch of the “HarBowl” not coming to fruition, Fox liked his chances of the possibility enough to invest in filing for a trademark in hopes of eventually profiting from the phrase.
He filed trademarks for “Harbowl” and “Harbaugh Bowl” on February 21, 2012. The marks, filed as intent-to-use, were allowed and published for opposition.
The NFL contacted Fox in August of 2012 stating concern that his recent trademarks could easily be confused with the NFL’s trademark of the term “Super Bowl.” It was reported the NFL encouraged Fox to abandon the marks shortly thereafter, which he did.
According to ESPN, the league refused to provide Fox with any remedy for his investment in the marks when he asked the league to reimburse him for his costs to file for the trademarks. He was also reported to have requested several other simple consolations such as season tickets and an autographed photo of league commissioner Roger Goodell.
Fox reported that instead of honoring his requests, the NFL chose to aggressively shift direction with its efforts and suggested that not only would the league oppose his filings, but they would also seek to have him pay its legal bills. Fox would eventually fold his hand. At least three more similar marks have been filed over the past month. They will likely meet the same fate.
The legal issue is not that Fox necessarily had a losing hand. The issue is that the NFL holds a lot more chips.
Many would argue that the NFL’s claim is not a legally strong one. “HarBowl” is certainly no less confusing to Super Bowl than other trademarked phrases such as “Sugar Bowl” and “Lingerie Bowl” which are also used to describe football games.
In reality, “HarBowl” is probably no less confusing than “cereal bowl” or “toilet bowl.”
Legal professionals who have publicly commented on the case have noted that the odds of a jury agreeing that the two phrases are confusingly similar are relatively poor. However, mere likelihood of confusion is only one aspect of the legal issues – Super Bowl is unquestionably a world famous trademark. Famous trademarks enjoy a much wider berth – even non confusing but tarnishing or blurring acts can dilute a famous trademark.
The NFL basically smoked Fox out of the hole by signaling their intention to be aggressive in pursuit to stop him. The NFL is an organization with essentially unlimited financial resources. Mr. Fox presumably does not have the type of financial capabilities as a multibillion dollar company. As a result, the question became – are the trademarks financially worthwhile to combat a lawsuit that could potentially cost six figures? Fox made the reasonable decision that no amount of revenue the trademarks could yield would justify that investment.
The moral of the story is an important message for anyone who considers pursuing a low barrier to entry business that expects to profit from the fame or notoriety of someone else or someone else’s trademarks, particularly famous trademarks. Legal review and anticipation of probable legal action is part of the going-into-business decision process. At the end of the day, legal costs in high risk activities should be considered as possibly significant line items on a budget just like any other expense. If the potential return of the expense is not equitable to the potential cost, it may not be a wise investment of resources.
For Fox, a few thousand dollars in filing costs for trademarks may have been worth the prospect of making some money off of clothing sales should the Harbaugh brothers inevitably meet in the Super Bowl. However, the cost of defending those trademarks against a force such as the NFL was not worth the legal bills.
For more information on trademark law, contact Mike Oliver or Kimberly Grimsley.
Section 1125(c)(1) of Title 15 (link here) provides as follows: “Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”
Current law however also provided that a ownership of a valid registered mark was a complete bar to an action under state law, seeking a similar dilution remedy. 15 USC 1125(c)(6). The law, however, was inartfully worded such that it could be and was read to bar even claims based on federal law.
This “error” in the statute was corrected in 112 HR 6215 (https://docs.house.gov/billsthisweek/20120910/BILLS-112hr6215-SUS.pdf ) by making it clear that ownership of a federal registration is not a bar to an action for dilution under federal law. Though this is a “technical” change, the old law applies prior to the date this law came into effect, and at least one tribunal has read the old law literally, barring a claim for dilution against a federal trademark holder.
For more information, contact Mike Oliver or Kimberly Grimsley.
Not so fast, says the 4th Circuit. Many lawyers and bloggers had assumed Google would win its case in which Rosetta Stone alleged that Google was contributing to the infringement of Rosetta Stone’s trademarks . . . but Google mostly lost on appeal.
The Rosetta Stone case involves use of “adwords” – Google adwords are purchased and give the user the right to place sponsored advertising on the front page and other pages, when a user searches for the term that was purchased. If the term is a trademark, often the advertising links to sites that are either not authorized to sell the goods, sell infringing goods, or sell competing goods.
In Rosetta Stone, Ltd. v Google, the 4th Circuit held that Rosetta Stone’s claims for direct trademark infringement, contributory trademark infringement and dilution arising from Google’s adword program could proceed to trial.
On direct infringement, the Court “assume[d] […] that Google’s policy permitting advertisers to use Rosetta Stone’s marks as keywords in the AdWords program and to use Rosetta Stone’s marks in the text of advertisements constituted an unauthorized use “in commerce” and “in connection with the sale, offering for sale, distribution, or advertising of any goods or services.” That left only likelihood of confusion to be addressed. In reviewing the lower court decision, the 4th Circuit agree that not all of the 9 factors must be used, particularly where the competing use is nominative – that is, where the use actually identifies the trademark owners’ goods. So, it focused on three factors – intent, actual confusion, and sophistication of the consuming public.
Evidence was presented that showed that Google believed that allowing use of trademark Adwords might cause some confusion (based in part on Google’s change in policy that allowed trademarks also to be included in titles and on ads – something it did not permit until 2009), and this was enough to overcome the intent element weighing solely in favor of Google as the lower court had found.
On actual confusion, evidence was presented both anectodally – by consumers who were confused, and by survey evidence. Google itself had done internal confusion studies, that showed 94% of users who saw ads with trademark terms in them were confused at least once.
Finally on the sophistication of the consuming public element, the 4th Circuitheld that the lower court wrongfully rejected evidence of lack of sophistication based solely on price (the product is expensive) noting that “[t]he evidence also includes an internal Google study reflecting that even well-educated, seasoned Internet consumers are confused by the nature of Google’s sponsored links and are sometimes even unaware that sponsored links are, in actuality, advertisements.”
Hence, after rejecting other defenses such as the functionality defense, the direct infringement claim was permitted to go to trial.
On the claim of contributory infringement, Google lost because evidence was presented that Rosetta Stone notified Google that known infringers were purchasing adwords for sponsored links – however, Google never terminated such users.
Finally, Google lost on the dilution claim, largely because the lower court had applied a defense (the defense that the defendant must have used the mark on its own goods and service and such use must have been fair), as an affirmative element of the claim. If anything on this point, which Google might win at trial, the case stands for the proposition that a plaintiff need not plead or prove the absence of statutory defenses, as a part of its claim.
If Google allows this to go to trial (unlikely) and loses, it could be subject to substantial damages, and worse, could open the door to many other claims by other trademark holders.
For our clients, this decision bolsters the ability to assert that Google might be directly and contributorily infringing a trademark when it allows adwords and advertising to be placed on its site that causes customer confusion. Not every use of a trademark term will do so, but if a trademark owner can obtain such information on confusion, this case would support at least a notice and demand to Google to cease such use. In addition, this case certainly supports an active trademark protection effort – to police misuse of trademarks and report them to Google (and any other search system provider) as the failure to remove such infringing content can constitute indirect contributory infringement.
For our clients that provide such portals and search services, this case essentially reinforces what our advice has been all along – that you must build into the system a means to remove allegedly infringing content upon notice. While there is no equivalent DMCA protection for trademarks, the failure to remove infringing content after notice can lead to a lawsuit like this.
For more information, contact Mike Oliver.
“The previous play is under review.”
San Francisco 49er’s quarterback Colin Kaepernick is the latest on a long list of celebrities and sports figures to turn to trademark law in the effort to protect something believed to be rightfully theirs.
These efforts are sometimes fleeting, and they often bring the ire of fans. However, the reactions are frequently created by internet and media hype generated from legal analysis that is incorrect. What Colin Kaepernick has actually done is apply for a trademark on the standard character phrase “Kaepernicking” for “Clothing, namely shirts.”
The legal intention of this is most likely not to prohibit fans from “Kaepernicking” themselves, or either saying or using the phrase in general. Rather, Kaepernick is presumably attempting to solidify legal grounds for his own personal business activity profiting off of “clothing, namely shirts” using the term. Applying for a trademark is a basic legal practice for those looking to protect business interests on something proprietary.
A product can be created and made available for sale almost instantaneously using computer tools and sites that perform sales and fulfillment. Celebrities have had their hands practically forced in these issues by the emergence of unscrupulous vendors that rush to create and sell unauthentic products profiting off of their fame.
That would presumably be his intention. The outcome of the actions he is taking is more questionable. The red challenge flag has been thrown.
“Kaepernicking” is his surname turned into a verb. Appropriate trademark use generally requires the mark to be used as an adjective. That is, to describe a noun representing a product or service. The International Trademark Association describes this by stating “never use a trademark as a verb. Trademarks are products or services, never actions.”
At first glance this does not appear to be a valid trademark because the mark itself is a verb. What difference does that make you might ask?
In other words (pun intended), people use the term “FedEx” to identify the service provided by FedEx for fast reliable delivery. If you were to say “I was FedExing,” or “please FedEx this box” you are no longer describing a product or service. You are instead stating an action and describing it generically.
There is additional case law pertaining to a trademark that is comprised primarily of a surname, as in the case of Kaepernick. A surname is capable of acting as a trademark as long as it has been used for a sufficient time to gain secondary meaning- which typically is at least 5 years. Kaepernick may need to have a longer career in the limelight prior to counting his eggs in that basket, as merely adding “ing” to a surname may not be enough to avoid this rule.
However, there was a similar effort last year after Tim Tebow revived the Denver Broncos and “Tebowing” almost broke the internet in the process. According to United States Patent and Trademark Office records, a flood of trademark requests were filed and all of them were initially refused because of a false connection with a living individual. That is, until Tebow’s own company XV Enterprises LLC began filing trademarks. His company has since successfully registered a trademark for “Tebowing” for shirts.
Kaepernick can overcome the connection to the living individual issue by consenting to the trademark. The key, however, is must use the mark to identify his product – shirts. In the case of Tebow, the word is actually used as a mark on clothing and not merely to describe an action, so it was properly registered as a trademark.
To date, Kaepernick does not seem to be using the term to identify a good. Initially, it was reported he was simply trying to trademark the act of kissing his muscles after doing something. That is not a trademark usage.
A quick look at the application filed for “Kaepernicking” shows what could be an attempt to take a similar approach to that of Tebow in order to gain ownership of a trademark for the term. It describes showing the term in large letters at the top center of a shirt.
While this would better satisfy the use of the mark in trade, there is a variety of case law that suggests this particular strategy might not be sufficient. When used on merchandise, “the size, location, dominance and significance of the alleged mark as applied to the goods” are all relevant factors to be considered in determining whether it also functions as a trademark.
Large lettering across the center of a shirt is most commonly denoted as the design of the shirt. Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and . . . may influence how the [mark] is perceived.”
With respect to clothing, consumers have been conditioned to recognize small designs or discrete wording as trademarks if placed, for example, on the pocket or breast area of a shirt; however, consumers typically do not perceive larger designs or slogans as trademarks, especially when such matter is displayed in a different location on the clothing.
When it is not perceived as an indicator of the source of production, cases are commonly dismissed due to what is known as ornamental refusal.
It will be up to the real referees at the United States Patent Office to make the final call. However, a closer look suggests that the quarterback may have been sacked on this play.
For more information contact
 ., In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984); see TMEP §1202.03(a)
 In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984); see In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982).
 See TMEP §1202.03(a), (b), (f)(i), (f)(ii); see, e.g., In re Pro-Line Corp., 28 USPQ2d at 1142 (finding “BLACKER THE COLLEGE SWEETER THE KNOWLEDGE,” centered in large letters across most of the upper half of a shirt, to be a primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d at 1667-68 (finding “SUMO,” used in connection with stylized depictions of sumo wrestlers and displayed in large lettering across the top-center portion of t-shirts and caps, to be an ornamental feature of the goods that does not function as a trademark).