Author Archives: Ben Scott

Los Angeles Angels of Anaheim: Geographically Deceptively Misdescriptive Trademark?

Published / by Ben Scott

In re-reading my posts on the misdescriptive Napa wine labeling controversy and pondering whether to start my Anaheim, er, Los Angeles Angels of Anaheim, relief pitcher on my fantasy baseball team, I am reminded of the “geographically deceptively misdescriptive” bar to U.S. trademark registration. Section 1052(a) of the U.S. Trademark Act prohibits registration on the Principal Register of a mark that consists of or comprises deceptive matter while Section1052(e)(3) prohibits primary registration of a mark that is “primarily geographically deceptively misdescriptive” of the goods or services of the applicant.

The test for these two prohibitions are identical and are found in the Trademark Manual of Examining Procedure Sections 1210.01(b) and (c), which is as follows: “To support a refusal of registration on the ground that a geographic term is deceptive under §2(a) [or geographically deceptively misdescriptive], the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location[];
(2) the goods or services do not originate in the place named in the mark [];
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark []; and
(4) the misrepresentation is a material factor in the consumer’s decision to buy the goods or use the services [].”

The California…er…Anaheim…er…Los Angeles…let’s just call them “The” Angels filed a new trademark registration application for LOS ANGELES ANGELS OF ANAHEIM with the U.S. Patent and Trademark Office last December for “Entertainment services in the nature of professional baseball games and exhibition.” (Serial No. 78/540237). The Trademark Application and Registration Retrieval (TARR) record shows that this application has not yet been examined. Could primary registration of this proposed mark be refused on the grounds that the mark is geographically deceptive or deceptively misdescriptive? Most likely not. First, the primary significance of the mark is the element ANGELS. With regards to the second and third element, it appears The Angels may have thought about the “geographically deceptive” bar and added the correct home city, Anaheim, to the end of the mark to avoid this bar. Adding “Los Angeles”, which is the name of a city and a county northwest of Anaheim, makes the mark confusing but not necessarily deceptive. Lastly, the confusion of the location is not likely a material factor in the consumer, in this case, the fans, decision to buy Angels paraphenalia or purchase tickets to attend the games. As The Angels proved in their recent World Series run, winning is what attracts the fans!

INTEL® International Airport of San Jose?

Published / by Ben Scott

The Silicon Valley/San Jose Business Journal reports this week that Mineta San Jose International Airport officials are seeking an advertising firm to sell naming rights to the airport. Obvious sponsors are the top technology companies with famous trademarks headquartered nearby. How about “INTEL® International,” “APPLE® Airport”, “GOOGLE® Gateway” or “EBAY® Airway”? Attaching corporate trademarks and trade names to sports arenas and stadiums have become the norm. The San Jose Arena was named the Compaq Center at San Jose and then later the HP Pavilion at San Jose shortly after HP and Compaq merged. And all the other major Bay Area sports facilities have been similarly branded and re-branded — Candlestick/3Com/Monster Park in San Francisco, the Network Solutions/McAfee Coliseum in Oakland, and the San Francisco Giants’ PacBell/SBC Park. But, as Silicon Valley/San Jose Business Journal writer Andrew Hamm notes, “public buildings have been another matter all together.” Airport officials admit that changing the current name of airport is unlikely. Airport and city officials, however, appear serious about generating additional revenue through commercial sponsorship of parts of the airport. We might hear of the ADOBE® Air Terminal in the near future.

Napa Wine From Lodi?

Published / by Ben Scott

Yes, it is true, wine sold under the NAPA RIDGE label is made primarily from grapes grown in Lodi. But this may have ended on March 21, 2005 when the United States Supreme Court denied review of Bronco Wine Company’s (owner of the NAPA RIDGE® label) challenge to California’s ‘Napa” labeling law.

The relatively new labeling law (found in Section 25241 of the California Business and Professions Code) requires that “when the word ‘Napa’ (or any federally recognized viticultural region within Napa County) appears on a brand label, at least 75 percent of the grapes used to make that wine must be from Napa County.”[1]

Bronco Wine Company (“Bronco”), which is perhaps best known for its Charles Shaw brand, also markets wines under brands NAPA RIDGE, NAPA CREEK WINERY, and RUTHERFORD VINTNERS. Wines sold under these three labels are made from grapes grown in lower cost wine growing areas such as Stanislaus County, rather from grapes grown in the pricier Napa County.

Like Section 25241, 1986 federal regulations adopted by the federal Bureau of Alcohol, Tobacco and Firearms also require that at least 75 percent of grapes in a wine must come from the geographical area named on the label. But the federal government included a “grandfather clause” in the regulations exempting this prohibition for brands used prior to July 7, 1986. The only requirement for this exemption is a disclosure on the front label of the true geographic source of the grapes. The NAPA RIDGE label illustrated above met the federal labeling guidelines because this brand has been used since the early 1980s and this front label clearly discloses “Lodi” as the source of the grapes.

Signed on September 29, 2000 by then California Governor Gray Davis, Section 25241 was designed to close the federal loophole.

From the numerous comments and hearings held by the California Legislature on this issue, it found that:

“[f]or more than a century, Napa Valley and Napa County have been widely recognized for producing grapes and wine of the highest quality. Both consumers and the wine industry understand the name Napa County and the viticultural area appellations of origin contained within Napa County (collectively ‘Napa appellations’) as denoting that the wine was created with the distinctive grapes grown in Napa County.

“certain producers are using Napa appellations on labels, on packaging materials, and
in advertising for wines that are not made from grapes grown in Napa County, and that consumers are confused and deceived by these practices.

“legislation is necessary to eliminate these misleading practices.”

The California Supreme Court recognized that the Legislature expressed its intent in passing this law, namely “to assure consumers that the wines produced or sold in the state with brand names, packaging materials, or advertising referring to Napa appellations in fact qualify for the Napa County appellation of origin.”

Since Bronco’s Napa-related brands contained less than 75% Napa Valley grown-grapes and were adversely affected by this new law, the company filed an action with a California Court of Appeals seeking to prohibit the California Department of Alcohol Beverage Control (“ABC”) and its director, Jerry Jolly, from enforcing Section 25241. Bronco argued that the federal labeling law and regulations, notably the grandfather clause exemption it enjoyed, preempted or “trumped” the new state law. The Court of Appeals agreed with Bronco, concluding that the new state law is preempted by federal law, and stayed its enforcement.

The California Attorney General, representing ABC, and the Napa Valley Vintner’s Association (“NVVA”), as an intervener, appealed the matter to the California Supreme Court. Granting review, the California Supreme Court considered the question of whether federal law preempted California’s new labeling law under the supremacy clause of the United States Constitution (Article VI, Clause 2). To determine whether federal law preempts state law, courts must examine whether United States Congress, in passing the federal law, intended to trump state law. The California Supreme Court found Congress has not expressed its intent to preempt state authority with respect to regulating wine in general.

In cases where Congress did not express its intent, courts have still ruled that federal law preempts state law under the doctrine of “implied preemption,” which is found when: (1) it is clear that Congress intended to occupy the entire field of regulation by passing federal laws so comprehensive that they leave very little room for the states to supplement federal law, (2) when compliance with both federal and state law is impossible, and (3) when state law stands as an obstacle to accomplishing the purpose of federal legislation. Bronco’s only preemption argument was that Section 25241 stood as an obstacle to federal wine labeling laws. After a thorough and lengthy analysis of the legislative and legal history of federal and state wine labeling regulations, the California Supreme Court concluded that federal law does not preempt California’s labeling rule. The Court made two points that appear to have influenced its decision. First, that Congress’ intent in passing federal wine labeling laws was to insure that consumers should get what they thought they paid for and that representations should be honest, truthful and straightforward. California’s wine labeling rule appeared to the Court to be consistent with this purpose. Second, by passing only minimum standards Congress did not intend to “foreclose a state with particular expertise and interest [like California] from providing stricter protection for consumers in order to ensure the integrity of its wine industry.”[2]

Although the issues of this case involved Constitutional Law, the underlying facts and law relating to this case illustrate the tension between the two primary purposes of trademark law, which are (1) to prevent consumer confusion and (2) to protect the investment and goodwill of trademark owners. The California labeling rule is justified by the need to prevent consumer confusion as to whether Napa branded wines contain grapes from Napa Valley. But, as Bronco argued, isn’t the California State Legislature improperly taking away the goodwill of well known “Napa” brands? Bronco apparently acquired the NAPA RIDGE® brand from Beringer Wine Estates for more than $40 million. The goodwill in Napa brands is essentially built from the well-known reputation of Napa Valley and those companies who use non-Napa Valley grapes in their “Napa” branded wine are essentially deriving their goodwill from public confusion. The California Supreme Court’s Bronco decision, and the U.S. Supreme Court’s refusal to review this decision, may be a sign that law makers and courts are more willing to prevent consumer confusion than protect the goodwill in established brands.

[1] Cited from the California Supreme Court decision Bronco Wine Co. v. Jolly (Cal. 2004) 33 Cal.4th 943, 950.

[2] Bronco Wine Co. v. Jolly, (Cal. 2004) 33 Cal.4th 943, 950.

Miro Row

Published / by Ben Scott

Google finds itself in another intellectual propery “row” (as our friends across “the Pond” say).

The San Jose Mercury News reported yesterday “the family of Joan Miro was upset to discover elements of several works by the Spanish surrealist incorporated into Google’s logo. Google has since taken the logo off its site.” According to the Miro family representative and Authors Guild president Nick Taylor, Google’s tribute was a ” ‘a plain and brazen’ violation of copyright law.” Either Mr. Taylor brazenly discounts “fair use” (unlikely) or he might be a former intellectual property litigator who plainly misses hearing himself at oral argument (very likely). I guess Google had to pick and chose its battles, and Miro’s toddler art was not worth it.

Apple v Apple 3.0

Published / by Ben Scott Apple Corps and Apple Computer is at it again…litigating terms of a 1991 trademark lawsuit settlement agreement.

Apple Computer’s and the Beatles Apple Corps’ trademarks and trade names as well as their long running trademark disputes have made the respective mark so “famous” and ubiquitous that consumer confusion is unlikely.

Here’s a suscinct analysis that appeared in today’s New York Times Technology (online subscription required):

” ‘Even a moron in a hurry could not be mistaken about’ the distinction between the computer company’s iTunes online music business and a recording company like Apple Corps, a lawyer for Apple Computer, Anthony Grabiner, said.”

The Color Purple

Published / by Ben Scott

The Smoking Gun: Landlord and NBA star Carlos Boozer sued tenant and artist currently known as Prince for allegedly remodeling Boozer’s Los Angeles, California mansion in the artist’s “trademark” color purple.

Speaking of color trademarks, Prince can register purple as a United States trademark so long as he can show “secondary meaning” which no doubt he can. See Trademark Manual of Examining Procedure Section 1202.05.

Starbucks Beer?

Published / by Ben Scott includes “Starbucks Beer” as one of its Top 10 Most Ridiculous Products Of The Future. I’m not sure Starbucks Corporation would agree. In a well-publicized Texas trademark case over the mark STAR BOCK BEER, the company argues that its ubiquitous coffee trademark and brand extends to beer.

Last week, I received a copy of defendant Rex Bell’s Appellate Brief from his Houston-based attorney John Egbert. This trademark drama is well documented in defendant Rex Bell’s website and in the PHOSITA and STARBUCKS GOSSIP blogs.

Music Instrument Maker First Act Makes Some Noise in its False Advertising

Published / by Ben Scott

The Boston Business Journal reported yesterday that First Act Inc., a high-end children’s music instrument designer, prevailed in its false advertising lawsuit against competitor Brook Mays Music Co. The suit alleged that Brook Mays sent mailers to school band directors calling First Act’s products “instrument shaped objects”. The jury reportedly awarded $16M for lost profits and $5M to repair First Act’s reputation.

In addition to making cool kid’s instruments like the “Band in a Bucket” shown here, First Act creates high-end guitars.

Big Yellow Taxis Collide

Published / by Ben Scott

Unable to resist quoting songs about yellow taxis, the Ninth Circuit issued a recent opinion on the trademark YELLOW CAB. “Perhaps the Yellow Cab Company of Sacramento didn’t know what it had until it was gone.” (quoting Joni Mitchell’s song “Big Yellow Taxi”) This case arises out of a collision between a small determined one-cab operation and a large Sacramento, California taxi cab “empire”. “Determined ‘to catch that yellow cab’ ” (quoting Chuck Berry’s song “Nadine”) Yellow Cab of Sacramento sued the smaller Yellow Cab of Elk Grove alleging trademark violation under the Lanham Act and related state law claims for unfair competition, false advertising and interference with prospective business advantage. The district court granted the defendant’s motion for summary judgment holding that “yellow cab” was generic, and that even if “yellow cab” was descriptive, the plaintiff failed to show “secondary meaning.” On appeal, the Ninth Circuit reversed the district court concluding that there was a material issue of fact as to whether “yellow cab” has become generic through widespread use in the marketplace and it descriptive whether the mark obtained “secondary meaning.” The Ninth Circuit also held that the burden of proof as to the validity and protectability of an unregistered mark lies solely on the party claiming trademark protection.

This opinion is notable for its succinct summary of the case law governing validity and protectability of trademarks.

There are five categories of trademarks: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). “The latter three categories are deemed inherently distinctive and are automatically entitled to protection because they naturally ‘serve[ ] to identify a particular source of a product . . . .’ ” Id. (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)). Descriptive marks “define a particular characteristic of the product in a way that does not require any exercise of the imagination.” Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 632 (9th Cir. 2005). A descriptive mark can receive trademark protection if it has acquired distinctiveness by establishing “secondary meaning” in the marketplace. Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). “Generic marks give the general name of the product; they embrace an entire class of products.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 n.8 (9th Cir. 1998). “Generic marks are not capable of receiving protection because they identify the product, rather than the product’s source.” KP Permanent Make-Up, 408 F.3d at 602.

When a plaintiff pursues a trademark action involving a properly registered mark, that mark is presumed valid, and the burden of proving that the mark is generic rests upon the defendant. Filipino Yellow Pages, 198 F.3d at 1146. However, if the disputed term has not been federally registered, and the defendant asserts genericness as a defense, the burden shifts to the plaintiff to show that the mark is nongeneric.

The Ninth Circuit also provided a concise statement of the “secondary meaning” test:

To determine whether a descriptive mark has secondary meaning, a finder of fact considers: “(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, and (4) whether use of the claimed trademark has been exclusive.” Levi Strauss, 778 F.2d at 1358 (quoting Transgo, Inc. v. AJAC Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985)) (alteration omitted).

Did-he change his name….again?

Published / by Ben Scott

MTV News: Sean Combs (the hip hop artist/producer formerly known as “Puffy”, “Puff Daddy”, and “P Diddy”) changes his name again simply to DIDDY.

Mr. Combs has a Section 1(b) “Intent to Use” trademark application for P.DIDDY pending before the USPTO for numerous classes. It appears he may have to file a new application for his new name since dropping the “P” may be a material alteration of the trademark he originally filed for. According to the BAD BOY ENTERTAINMENT mogul and SEAN JOHN clothing chief , “[i]t’s five letters, one word” not six letters, two words anymore.