Wednesday, August 23, 2017

Jimmy Buffet, Marijuanaville and the Likelihood of Confusion

            I don't know Rachel Bevis, but I feel nothing but empathy for her.  Back in March, she lost an opposition proceeding before the United States Trademark Appeal Board which will presumably keep her from being able to use the trademark "Marijuanaville" for merchandise such as t-shirts and for drive through retail services.  It was a catchy name and a good idea for a possible trademark and, as one might expect, Ms. Bevis was stopped by Jimmy Buffett, whose company Margaritaville Enterprises, LLC. has owned the trademark "Margaritaville" for "clothing, namely shirts, sweaters, sun visors, and caps” as well as “nightclub services, retail clothing, gift and souvenir store services and mail order services" since 1991.

            One can argue the wisdom of a pro se trademark applicant going against Jimmy Buffett and his very talented lawyers. However, even when a trademark applicant does not have to  deal with  a famous and well protected registrant on the other side, the applicant has to deal with the decisions of the trademark examiner which can often seem arbitrary .  This seems to happen when one has to confront  a claim of "likelihood of confusion" and the case In Re: E.I. . du Pont de Nemours & Co. , 476 F2d 1537 which the trademark office often relies upon  in deciding whether one potential mark is likely to be confused with another registered mark.

 The court in this case outlined 13 specific factors to consider with a likelihood of confusion claim:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use).
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion.
  8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
  10. The market interface between applicant and the owner of a prior mark:

(a) a mere "consent" to register or use.
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
  1. The extent to which applicant has a right to exclude others from use of its mark on its goods.
  2. The extent of potential confusion, i.e., whether de minimis or substantial.
  3. Any other established fact probative of the effect of use.

            A review and analysis of these factors can be overwhelming and in complex cases, can involve a substantial amount of data. Most lawyers who handle trademark registrations for clients have come up against this case and its list of factors.  One cannot always predict whether a trademark examiner may decide that two marks may be so alike as to cause confusion, or more frustratingly,  to decide that even though the marks may be different and the goods or services at issue may be different, their existence in the same "channels of trade" may cause confusion.  I had this happen once with a rock band whose name was similar to a video game and once with a record company whose name was similar to that of a band.

            In my experience, it can be very difficult to overcome the factors in the du Pont case and again the frustrating part of this is that even with the due diligence of a comprehensive trademark search (which is not cheap) these objections cannot always be predicted in advance.

            I should point out that in some instances it is possible to get the registered trademark owner to agree to a "co-existence agreement" manifesting no objection to the similar marks.  The trademark office will usually recognize but the stars really have to align in a case like that.

The best advice prior to applying for registration is to do a comprehensive search and then tread carefully.

Friday, June 16, 2017

Protecting Band Trademark Rights: Three Cases

Did you ever wonder how long dormant groups like the Beatles or ABBA can continue to protect all of their trademark rights?  No?  Well I do.  I have had this issue come up on more than one occasion and I think that we have three groups to thank when it comes to protecting bands' legacies and trademark rights:  the Kingsmen, the Drifters and the Platters.  All three groups have been involved in litigation regarding the use of their band names in the live performance class.  It appears that so long as a band's recordings continue to be commercially available then the members of the band, or the owner of the trademark rights to the band's name can continue to protect these rights.  This can be important  when trying ti stop “fake” groups or trying to resolve disputes between present and former band members regarding the right to use a same.

The court in Kingsmen v. K-Tel International Ltd makes this important point:

            Moreover the fact that these individuals continue to receive royalties for Kingsmen recordings flies in the face of any suggestion of intent to abandon the use of the name Kingsmen.  These plaintiffs have no more abandoned their right to protect the name of the Kingsmen than have   the Beatles, the Supremes or any other group that has disbanded or ceased performing and recording but continues to collect royalties for the sale of previously recorded material.  We must reject defendant's contention that the name Kingsmen has been abandoned to the public domain. 

The Kingsmen case has been relied upon with approval by Judge Samuel Alito in the case Marshak v. Treadwell, et al.  Judge Alito cited the above-referenced section and stated that "a successful musical group does not abandon its mark unless there is proof that the owner has ceased to commercially exploit the mark's secondary meaning in the music industry."  In that case the court noted that the proof of non‑use would be that the recordings of the "Drifters" were not played and the resulting royalties were not paid.  In another case Herb Reed Enterprises v. Florida Entertainment Management, Inc. the court stated that "although non‑use of the mark for three consecutive years constitutes prima facie evidence of abandonment, the standard for non‑use is high.  Non‑use requires "complete cessation or discontinuance of trademark use" where "use" signifies any use in commerce and includes "the placement of a mark on goods sold or transported" . Even  a single instance of use is sufficient against a claim of abandonment of a mark, if such use is made in good faith.

This important distinction has also been discussed in the treatise Gilson on Trademarks.  Ann Gilson La Londe writes about the above cited cases:  "three cases involving disbanded musical groups found that where the groups' recordings are sold and played and group members continue to receive royalties the marks continue to be commercially exploited and thus there is no time of non‑use". 

These cases provide some real guidance in working with artists who want to make sure that their trademarks are  protected past their days of active performing.

Tuesday, April 25, 2017

Robot Lawyers

One of my lawyer friends recently wrote a somewhat unsettling  post about re-reasing Asimov and the coming of our robot overlords and it reminded me of reading an interesting article in the New York Times dealing with technology, artificial intelligence and law practices.  The subtitle was "I, Robot, Esq.? Not Just Yet".  The article, written by Steve Lohr contained some fascinating insights.

            For example one study shows that the adoption of automation could result in a reduction of 13 percent of lawyers' billable hours over the next several years.  Another study shows that nearly half of all tasks performed by lawyers could in fact be performed by robots.  Anecdotal reports show impressive results from using artificial intelligence in both legal research and in drafting legal memorandum. 

            All of this made me think how much the practice of law has changed in the three decades I have been at it.  When I started, legal research meant spending hours in the library (something I actually  enjoy) and word processing seemed to require massive technological skills.  Today it is shocking how much information can be accessed instantly via Google and other search engines and perhaps more importantly, how much we rely on these services.

            It is daunting for lawyers to consider this information while at the same time dealing with competition from automated services like Legal Zoom and Rocket Lawyer which have created competition in the areas such as estate planning and corporate formation.  I also read this week that legal fields such as personal injury are expected to decline as auto makers continue to make safer vehicles (artificial intelligence again). 

            It occurs to me that all lawyers  should embrace new technology the same way that large firms have begun to embrace technology for things such as document review and e‑discovery.  It cuts down the cost of delivering legal services.  However, when clients have problems, they want things from an attorney that a robot cannot provide, at least not yet.  The article identifies four particularly human  areas:  strategy, creativity, judgment and empathy.  I might add "communication" to the list but as anyone who has ever shared a joke with Siri or Alexis might attest, maybe that too can be outsourced to artificial intelligence.