TupperWars- Revenge of the Courts

OK, the title might annoy Tupperware, but I just cannot resist a catchy media label.

According to the Globe and Mail, some former Tupperware salespeople in Canada have been posting info about Tupperware through the website of the Canadian Alliance of Franchise Operators. This has made Tupperware unhappy, as they allege that this information is false & libel, and have sued to shut down the site (and get hundreds of thousands of dollars from some former salespeople). Tupperware claims trademark infringement & dilution, and that the false information has hurt Tupperware in Canada.

Let me say first that I'm not a Canadian attorney, and I cannot comment on Canadian law. As a trademark attorney, let me just say this is silly. I understand what are legitimate trademark infringement actions:

1- Someone is putting your mark on their goods
2- Someone is using your name to sell someone else's goods
3- Someone is using a mark so close to your mark that people are buying their goods thinking it is your goods

As near as I can tell, the website was mentioning how Tupperware was going to get rid of their sales force in Canada. The info is gone from the CAFO website, so I cannot verify the truth of the information in there. Unless they're making stuff up (e.g. Tupperware funds Al Qaeda- which is NOT true), then why go after them? In the US, truth is a defense to libel/slander, so all Tupperware has to do is show that they are wrong, and they win. Suing them just makes their message more widespread and brings more attention to the problem. There are a lot of *sucks.com websites out there. Nextel is probably embarrassed they went after NextelSucks.org, as Nextel has lost, and brought more attention to a really minor matter.

If companies want to go after all rumors including their trademarks, they'll have their work cut out for them. Many news outlets report rumors including trademarks all the time, and at times they are not nice and are sometimes wrong. Also, there are sites like this one that have lots of fun info.

Ignore it, defend in the court of public opinion, build positive brand identity, and move on. You'll save yourself a lot of money and embarrassment.

Mac attacks

Looks like McDonald's is being zealous with enforcing their trademarks. One cannot blame them. A trademark can be lost by allowing the mark to become "generic." What does this mean? When you get a registered trademark, the government gives you the exclusive right to use that mark or logo in connection with your goods or services. There cannot be any "confusingly similar" (which is different than similar) marks.

That said, it is not the duty of the government to protect or police people with similar marks. They may allow a similar mark to be registered, if they do not believe it to be "confusingly similar." Good news for people filing new trademarks, but bad news for the current holder of the mark.

Enter trademark enforcement. Trademark holders use watch services to look for similar marks, then they go after the "confusingly similar" ones. Sometimes this definition of "confusingly similar" is taken too far, and they go after marks they should not. There is a reason to be diligent and zealous- they could lose their mark. People in the United States have a type of painkiller called "aspirin." Way back when, that was a registered trademark of Bayer. They did not enforce their trademark, and lost it to the public domain. You will noticed every now and them companies taking out ads to remind people that their name is a trademark, and not a generic name (e.g. "facial tissue" over "Kleenex;" "photocopier" over "Xerox;" and "internet search" over "Google.") It's good to be well-recognized by the public, but not to the point of being generic.

That said, McDonald's lately has been going after anything with a "Mac" in the name. I can understand "Mc," but "Mac" might be too far. This causes problems in certain areas, such as Scotland, where there are many "Mac" and "Mc" surnames. You'll note the article above is from a Scottish newspaper.

Filing political trademarks

Looks like as the election nears, people are filing more and more election related trademark appliations. Unfortunately for them, it takes a minimum of about 18 months to get a trademark registered- well after the upcoming election. It's amazing how people will try to capitalize on anything, including things they do not have a direct stake in- such as people filing trademark applications for "shock and awe," others filing "you're fired" who are not involved with Trump's TV show. Some sample political filings:

Thomas Reed of Kettle Falls, Wash., wants to put "Bush Whack Kerry" on clothing, jackets and hats. Reed also has trademark applications pending for "Liar, Liar, Bush on Fire" and "Kerry Bush Back to Texas."

In March, James Beall of Live Oak, Fla., had the idea for rubber shower shoes that he wants to call the Kerry Flip Flop. (Beall's lawyer has been sending warning letters to makers of similar sandals, some of which showed up at the Republican convention.)

Kenny T's Inc. in Tallahassee, Fla., has filed a corporate application for a trademark on "Bush Bin Lyin," for clothes, shoes and hats.

Amazing what people will try to register as a trademark. See the full article at TRADEMARK SEEKERS RACE THE CLOCK.

I had one beef about this article. It is listed under the "PATENTS" section of this newspaper. Trademarks are not patents, and vice-versa. They all are "Intellectual Property," but these areas are quite different. A quick intellectual property primer:

Patents- protect an invention (but not an idea)
Trademarks- protect a name or logo
Copyrights- protects an expression fixed in a medium (art, words, software, etc)

You'll note that intellectual property law does not protect ideas, which is a common misconception. One could argue that trade secret can protect ideas, but trade secret is different than the other areas of IP law in one basic level- it has to remain secret and not be revealed to anyone, including the government. For patents, you must fully disclose to the patent everything you want protected. The same thing applies for trademarks and copyrights (although it is possible to redact some trade secrets out of copyright filings).

"Survivor" loses to "Survivor"

The band Survivor has sued the TV show Survivor, claiming trademark infringement. Survivor the band has been a registered trademark since 1994 (on a side note, wasn't their big work in the 80s?). Survivor (band) alleged that the Survivor (TV) use for CDs and other merchandise infringed on their music-related trademark.

Sullivan claimed the series' use of the name hurt the band because it would take away from the millions of dollars in records and merchandise he sells each year. He also claimed the show benefits from the millions of dollars he said he spent on advertising.

Judges said they didn't see evidence of those claims.

The three-judge panel said the TV series has its own unique logo with the words "Outwit, Outplay and Outlast," which always surrounds the word "Survivor." They also said they think the average consumer knows the difference between the group and the TV show and wouldn't confuse the merchandise.

Band loses 'Survivor' trademark fight

I think this was a really silly lawsuit to bring, for a number of reasons.

First, while it is true that the marks are the same, trademarks are for specific categories of goods and services. Goods and services are identified by their international class. Thus you can have a trademark for "SURVIVOR" for TV shows (class 41), and the same mark for "electrical light fixtures" (class 11). Yes, these are both registered trademarks. The question hinges on whether the goods/services are similar. One could argue that TV and music are entertainment, but a better comparison is "TV shows" and "rock bands." These are goods/services that are quite different.

Second, was Survivor (band) serious about losing millions of dollars in music sales? They haven't had a hit since the mid 80s, and I doubt that a TV show that appeared in the late 90s had anything to do with that. Sure Survivor (band) is doing the Starbucks commercial, but I don't think they have much to worry about in lost sales- that would imply they are making sales. And I'm not talking about the sales when they play bar tours to 80s fans...

Welcome to trademark info from the Trademark Guy

This is my first post to my new blog. I am a trademark attorney in San Diego, CA. Trademarks have been my passion since law school, and is the reason why I love practicing law. I hope this site becomes a information resource about trademarks, trademark law, and trademark news.

Here is my first bit of news. Turns out that Cuba is unhappy that Bacardi may be able to usurp a Cuban trademark for rum. US trademark law is now often changed to conform to the various international treaties which we are signatories.

Cuba’s minister of foreign affairs said in an address to the United Nations General Assembly last year: “The United States must prevent the Bacardi company from stealing the Havana Club rum brand name. Its government should not be interested — and I want to state this clearly here — in a conflict of trademarks and patents with Cuba."

For more info, read the full article: Cuba fights ‘Bacardi bill’