Pixar, who has an uncanny ability to create blockbuster movies, will need some of their movie magic to solve a trademark dispute for its upcoming movie Brave. Brave is set in 10th-century Scotland, and features Merida, Pixar’s first female protagonist. The film is scheduled to open on June 22, 2012 yet is currently mired in a growing dispute with Major League Baseball’s Atlanta Braves over the title of the movie.
The Atlanta Braves have filed a Notice of Opposition with the Trademark Trial and Appeal Board temporarily blocking Disney (who now owns Pixar) from registering the term “Brave” for a variety of goods and entertainment services covering nine (9) trademark applications. Even though the Atlanta Braves do not own any registered trademark rights to the singular “Brave,” the MLB organization alleges there would be irreparable damage to them. Atlanta claims there would be confusion if Pixar used “Brave” because the singular term “Brave” is often used when referring to a single ball player from the club.
Both the Atlanta Braves and Disney have apparently entered into settlement negotiations to attempt to resolve this dispute. No word on how this trademark disagreement may affect spring training for the Atlanta Braves, who use the ESPN Wide World of Sports Complex located at Walt Disney World.
Question for the MLB Braves: After the historic choke job last season, rivaled only by the Boston Red Sox ineptitude and the unforgettable choke-fest put on my my own beloved New York Mets in 2007, why would Pixar, probably the most successful movie production company in the world at turning out consistently great movies, want to be confused with the Atlanta Braves? Also, do kids really think they’re going to see a movie about a baseball team? Seriously? In an unrelated story, Native Americans are suing the Atlanta Braves for commercial disparagement.
When Terrell Suggs first announced he was “Sizzle” from “Ball So Hard University” on Sunday Night Football, the Baltimore Ravens linebacker inadvertently started a new brand for himself as well as a trademark headache. During the broadcast of a game against the Pittsburgh Steelers, Suggs used his lineup announcement to claim he attended the fictitious Ball So Hard University (BSHU), a reference to the Jay-Z and Kanye West song “Niggas in Paris” from their recent album “Watch the Throne.” What started as a joke quickly became a new marketing boon.
Within hours of Suggs creating BSHU, merchandise started to appear online. Three days later, Brian Bussells filed for the trademark “Ball So Hard University” and started to sell clothing. Even Suggs appeared in a press conference wearing a Bussells shirt and acknowledged he had nothing to do with the selling of the shirt. Then, about a week and a half after Suggs first created the name, Suggs’ corporation, Team Sizzle Films, Incorporated, filed five trademark applications for the same trademark as Bussells. Since the filings, cease-and-desists letters have been sent from Suggs’ representatives to others selling BSHU merchandise, although it is not clear if Bussells received one of these letters.
It could be up to the United States Patent and Trademark Office to determine if Bussells or Suggs has priority to the Ball So Hard University trademark. Bussells may be able to prevent Suggs from using a mark Suggs himself coined if the Trademark Office honors Bussells’ earlier filing. However, Suggs’ trademark attorney has suggested arguing that BSHU is apart of his public persona and Bussells’ use of the mark would confuse consumers into believing Suggs is associated with Bussells’ venture. Suggs and Bussells will turn this gridiron fight to the USPTO to find out who will be the mascot of this University.
The third time was not the charm for Starbucks in their attempt to prevent a regional micro roastery from poking fun at Starbuck’s notorious reputation for over roasting coffee. Starting over 14 years ago, Starbucks sued New Hampshire-based Black Bear Micro Roastery over use of the term “Charbucks” as part of their product lines. Two trials and two appeals later, the Southern District of New York found, for the third time, that Black Bear was allowed to use Charbucks as a trademark for their goods.
Originally adopted as a spoof, Black Bear used the trademark “Charbucks” for a new line of dark roast coffee at a time of anti-Starbucks sentiment centered on the coffee goliath’s buying of a popular Boston coffee company. In 1997, Starbucks sent a cease and desist letter and eventually sued Black Bear for trademark dilution because of their use of Charbucks. The first trial held the plaintiffs did not prove their case for dilution. However, on appeal, the case was remanded to the district court to be evaluated under the newly passed Trademark Dilution Revision Act of 2006 (TDRA) that set new standards for dilution.
In the second trial, the court held again there was no trademark dilution. And again, the case was remanded to be considered under a new standard for similarity between marks necessary to show dilution. Finally, in this the third, and perhaps final, trial the court found there was not a sufficient amount of similarity between Charbucks and Starbucks to show dilution. A key factor in the court’s continuing position of no dilution was Black Bear’s using “Charbucks” as part of the mark “Mister Charbucks” or “Charbucks Blend”. Even though the disputed marks are only separated by two letters, that difference was enough for the courts. While there is a chance for Starbucks to appeal, this decade and a half saga may finally be at an end.
A three-member panel of the National Arbitration Forum unanimously denied the Complaint of Electronic Arts, Inc. (EA) over the domain name SSX.com. (Click here for the decision). There was no dispute that EA owned a trademark in SSX. The Panel found, however, that EA had failed to “establish[] a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).” Importantly, the panel held that, “[t]he buying and selling of generic domain names is a bona fide offering of goods under Policy ¶ 4(c)(i). ” The Panel also declined to find that the brief appearance of pay-per-click links to video games on a parked page, located at www.ssx.com, negated the registrant’s legitimate rights to the domain name. Even though the Panel did not need to address the issue of bad faith, it chose to, finding that: “Respondent has shown that it is a generic domain name buyer and seller. Respondent purchased the disputed domain name as part of a portfolio of generic domain names. This is a legitimate use of the disputed domain name, and does not show that Respondent registered or used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).”
This is a great decision for those who invest in generic and descriptive domain names as a business. It represents a clear limitation on the rights of trademark holders in words and letters that are common or generic.
It’s the time of year again when the weather turns cold and thoughts turn to the Holidays — except that it’s raining outside and a balmy 58 degrees in New York. No, we’re not offering a holiday sale on trademark registrations, although they do make great gifts. Today we are thinking about our favorite subject — trademark mills — and what a disservice they do for unwitting clients. If you were fortunate to catch our latest video, then you caught my reference to trademark searches I ran on Trademarkia and another site for “MY GOOGLE” and “YAHOOO.” Both sites told me that these marks were available for registration and encouraged me to file an application right away. A video on You Tube shows users how to file a trademark application on Trademarkia in under five minutes — and to think that I’ve been wasting seven or eight hours on conducting clearance searches, ordering and reviewing search reports, and drafting clearance letters…
Lest my griping sound like sour grapes, I actually care what happens to clients when they are given the misleading impression that they can strip a complex, thought intensive process on which important business decisions are being made into a five minute exercise in filling out a form. Although my examples of YAHOOO and MY GOOGLE are extreme, because most people wouldn’t think that they could use those marks, they are intended to show exactly how useless and harmful at the same time the “do-it-yourself” search window on the trademark mill sites can be. The lack of transparency and any semblance of legal advice makes these services dangerous. Clients are effectively blindly guessing, but leave with the impression that they’ve done a search and can rely on the results. That’s not to say that there isn’t a place in the world for an automated trademark filing service, but the risks and the tradeoffs should be disclosed up-front, so that clients know what the potential consequences of not using an actual trademark attorney are.
In a recently decided NAF dispute over the domain name, MichelinTiresSuck.com, the panelist found that the word “sucks” was so synonymous with the Michelin trademark, that consumers couldn’t tell the two apart. Meyerson knows a really crappy tire when he sees one, and the Michelin tires are so bad that the Michelin car company, itself, will often refer in press releases to its, “sucky tires.” Who can forget the eponymous slogan from the 1950′s TV ads, “We’re Michelin, and we suck.”
The single member panelist also took issue with the fact that the Respondent failed to make use of the domain name in question. Writing for the unanimous panel, Mr. Meyerson proclaimed, “Michelin tires suck, and they suck hard. The Respondent’s failure to say so on an active website was evidence of Respondent’s bad faith.”
Shortly after the decision, Michelin announced its plans to launch a whole new line of “tires that suck.”
This decision marks something utterly non-remarkable in UDRP Land — a mind numbingly bad decision by a Panelist on an issue implicating the constitutional right of free speech. If Rob Terry had a bad experience with Michelin tires and wanted to tell the world that they suck, he had every right to register a domain name — his 21st century soap box, and tell the world. The fact that he didn’t put up a site quickly enough to satisfy the panelist, or spend money on attorneys, does not make him a cybersquatter. Awarding “sucks” names to corporations because they are too thin-skinned to take the heat is not only wrong, it goes against one of the greatest traditions of our country. So Michelin, to you I say, “you suck,” but perhaps no one understands sucking better than the NAF panelist responsible for this slice of injustice.
We have been troubled by the rise of low-cost, high volume trademark mills. We have received complaints of poor service and improperly-filed applications users who have used these services. Trademarks is a complex area of the law, and a trademark attorney is a counselor and advisor, first and foremost. We believe in providing our clients with the information that they need to make informed decisions. World Trademark Review, a respected trademark industry publication, has been covering the rise of the trademark mills and recently ran an article on TrademarkAttorneys.com. You can find the article here. (Click here)
There are those times. There’s a business dispute. There’s a domain name or fifty. And there’s the UDRP. It’s far lest costly, as a general rule, to file a UDRP than it is to litigate in court. What to do? When is a dispute actionable under the UDRP and when is it a business dispute? The answer is not always clear.
In Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc., FA 1405219 (Sept. 23, 2011), a manufacturer filed a claim against its former distributor over the registration and use of the <AutoBoss.us> domain name. Confronted with an unclear factual record and conflicting claims, the Panel found that “the Domain Name is only one element of a much broader commercial dispute between the parties that involves Complainant’s termination of Respondent’s distributorship allegedly without notice, the recovery of costs advanced by Respondent to promote the business of Respondent as a distributor of Complainant’s products, and possible improper interruption of business relationships between Respondent and its customers by Complainant.” Quoting a prior decision, the Panel denied the claim:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes . . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
In hindsight, this appears to be a clear case for the courts, however, the facts are not always so clear, and parties sometimes will feign the nature or extent of a commercial or business relationship in order to thwart the UDRP.
The title of a single creative work is not a registrable trademark with the U.S. Trademark Office (USPTO). Single creative works typically include, but are not limited to, books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs and films. The basis for the USPTO refusal is that the title of a single work (for example, the album Sgt. Pepper’s Lonely Hearts Club Band) fails to function as a source identifier because consumers will identify the title as a sole creative work rather than the source of the work (in our example, The Beatles).
However, a title may be registered when it has been used on a series of creative works or is a type of work in which the content changes with every issue or performance. Therefore, in order to register a title with the USPTO an applicant must demonstrate that the title is used on at least two different creative works. This issue is particularly important to authors, musicians and filmmakers seeking trademark protection for titles to their creative endeavors.
