No, Trademark Squatting On Anti-Israel Phrase Won’t Keep It From Use

Trademark

from the not-gonna-work dept

For some reason, there are enough people who are ignorant enough about trademark law such that every once in a while you get people who don’t like a thing trying to trademark that thing thinking they can prevent that thing from being done or used. It’s a form of trademark squatting. Confused? An example would be one man who thought he could keep the NFL’s Raiders in Oakland merely by applying for a trademark on “San Antonio Raiders,” where the team was rumored to relocate to. Stuff like that doesn’t work, primarily because you have to actually show a use of the trademark in commerce, or at least a valid intent to use it. You don’t get to go out and trademark something merely to sit on it and prevent someone else from using it.

Which brings us to the war between Israel and Hamas. The brutal conflict is raging once more, as are various political discussions around it. One phrase you are likely to have heard at some point is: “From the river to the sea, Palestine shall be free.” To be clear, that phrase is a hateful, anti-Israel rallying cry that calls for the abolition of the state of Israel. That isn’t to say that there shouldn’t be a Palestinian state, of course, but to pretend like that statement calls for anything less than the destruction of Israel as a state is silly.

Equally silly is two Jewish men in America somehow thinking that they’re going to control the use of the phrase merely by trying to trademark it.

Two Jewish American men have submitted separate trademark applications for the expression “from the river to the sea,” triggering a flurry of reactions. A prominent legal expert has cautioned that the move might have unintended consequences for both the Jewish community and Israel.

Joel Ackerman and Oron Rosenkrantz filed trademark applications for the phrase that refers to the geographic area between the Jordan River and the Mediterranean Sea, encompassing Israel and the Palestinian territories. 

This is pointless at best, and potentially counterproductive to the goal at worst. It’s pointless for a number of reasons. For starters, it’s very unlikely that either trademark application will be approved at all. It’s a widely used political phrase that does nothing to serve as a source identifier of a good. But even if it were granted, it would be for an extremely limited type of goods, such as t-shirts and hats. No such mark would prevent the phrase from being said, chanted, written, nor used on all sorts of other products. It’s simply not going to stifle any real use of the phrase, so what’s the point?

“We don’t know for sure what the outcome will be, but the chances [of their receiving these trademarks] is not that good,” Katzenelson said. “Since it only applies to hats and shirts, stopping its use on other services and goods would be very difficult.”

The counterproductive piece is somewhat akin to the Streisand Effect. Whatever contact the general public has had with this anti-Israel message, now that message is being written and talked about all the more thanks to this attempt to trademark it. And there’s certainly no guarantee that those who come across the message, thanks to all of this, will take the same view of it as these two gentlemen.

Now, again, I don’t expect that these applications will be approved at all. But the point is that there was no reason to attempt any of this to begin with.

Filed Under: from the river to the sea, hamas, israel, palestine, trademark, trademark abuse, trademark squatting

Hormel Fairly Chill About ‘Spam’ Trademark, Still Missing Business Opportunities

Trademark

from the spam-spam-spam-eggs-and-spam dept

Hormel, the foodstuffs company that makes Spam, amongst other items, has made it onto our pages before. And not for good reasons. Ages ago, the company attempted to sue anti-spam proprietors, arguing that its “Spam” trademark somehow translated into the world of IT and email. Separately, the company also bullied a Canadian brewery into changing the name of one of its brews, Damn Skippy, claiming to be concerned as to customer confusion over its Skippy peanut butter brand, despite Skippy no longer being sold in Canada at the time. So Hormel has shown itself to be an aggressive trademark enforcer on occasion.

In this specific instance, in which a chef in Minnesota paid homage to Spam on her restaurant’s menu, it never got far enough. Instead, chef Ann Kim changed the name of her menu items to remove any reference to Hormel’s product instead. Kim created her own “spam” in house and served it in two dishes, including a fried rice dish and a “Spam ‘n Cheese” sandwich. The names of those dishes and the ingredient lists have since been changed after Hormel reached out, not with a cease and desist letter, but which questioned if she was using Hormel Spam in her dishes.

“We did not get an official cease and desist letter. It was an inquiry email asking if we were using the official Spam product,” Rachael Crew, a spokeswoman with Kim’s Vestalia Hospitality group, said in a statement. “Based on Hormel’s email, we knew it would come next. So we proactively changed the ingredient name to Ann’s Ham.”

The online and printed menus now reflect the change, including the renaming of the sandwich to “Ann’s ham ‘n’ cheese.” Kim did not respond to requests for comment.

Now, would Hormel have sent a C&D if those changes hadn’t been made? We can’t be sure, of course, but that would seem at least somewhat likely given Hormel’s history. Still, I would consider Hormel’s statement on the matter not overly aggressive nor maximalist.

“From time to time, we come across instances of others using our trademarks without licensing agreements. We understand that people are inspired by our iconic products and may even create replicas, usually unaware of any trademark violation that may have occurred,” the statement read. “Typically, we try to give people the benefit of the doubt and simply ask if they are aware of our trademarks and what our process is for the use of our trademarks.

“The issue is, if trademark owners don’t police their trademarks, they may lose them. So, we do this in order to prevent that from happening and work with [the] business to try and remedy the situation without too much hassle.”

It should be pointed out that this reflects the company’s recent stance on its trademark enforcement. The further you go back in history, the more you find Hormel acting very much like a trademark bully. This softer tone is certainly preferred.

But that last bit of the quotation is precisely the problem. Yes, there is a requirement in trademark law to enforce marks or risk losing them… if there is indeed the potential for customer confusion or a risk of the term becoming generic. But, as we’ve pointed out ad nauseum in the past, there are other options beyond simply shutting other uses down. The most common of those options is cheaply licensing the term is an option, thereby endorsing the use as official.

But instead, Hormel now gets to not be the trademark bully and still get its way, merely as a chilling effect result of its own enforcement history. Words are one thing, after all, while actions tell the true story.

Filed Under: ann kim, spam, trademark
Companies: hormel, vestalia hospitality

Groq Sends Elon’s ‘Grok’ A Cease & Desist, Though A Funny One

Trademark

from the the-likelihood-of-confusion dept

One of things we enjoy here at Techdirt is when even those with legitimate gripes about trademark law take a bemused view about the whole thing, rather than immediately jumping to angry and overly aggressive threats. No one likes a trademark bully, even when the trademark holder might have a legitimate claim.

A few weeks ago, we mentioned that Elon Musk probably should have checked with trademark lawyers (or just done a basic internet search) before naming his xAI large language model “Grok” because there was already a well-known AI chip company in the space named Groq. Groq seems mildly annoyed at the confusion this is causing (and literally yesterday when I mentioned testing something on Groq’s AI system someone asked me why I was using Elon’s AI…), but is mostly taking it in good strides.

Initially, Groq’s CEO, Jonathan Ross (who was the guest on this week’s Techdirt podcast, which was entertaining) used his own AI tools to suggest a new name for Elon’s LLM. The solution they came up with was Slartibartfast, which (unlike “Grok”) is actually from Hitchhiker’s Guide to the Galaxy, which Elon keeps insisting is what his AI is trained to be like.

Then Ross used the situation to highlight just how much faster AI running on Groq’s chips are, compared to using the old, tired, slow way that Elon’s appears to be using:

Now, Ross has taken it up a notch with a clearer cease and desist, though still keeping it amusing.

Did you know that when you announced the new xAI chatbot, you used our name? Your chatbot is called Grok and our company is called Groq, so you can see how this might create confusion among people. Groq (us) sounds a lot like (identical) to Grok (you), and the difference of one consonant (q, k) only matters to scrabblers and spell checkers. Plus, we own the trademark.  

We can see why you might want to adopt our name. You like fast things (rockets, hyperloops, one-letter company names) and our product, the Groq LPU™ Inference Engine, is the fastest way to run large language models (LLMs) and other generative AI applications. However, we must ask you to please choose another name, and fast. 

I stand by my recommendation to name it Slartibartfast. It’s both on message with your idea of a sarcastic bot inspired by Hitchhiker’s Guide to the Galaxy and sounds sufficiently distinct from any other AI company or product (which is why I wouldn’t recommend calling it Giggle or OpenXi). Win-win! But, your call.  

In making this request, we’re thinking about you as much as us. It must be annoying having all those people hitting you up on X, asking how the Groq LPU Inference Engine is able to deliver 10X better performance and precision at scale? Or how it is 10X more energy efficient and 10X more cost-effective? That’s plenty of Xs, even for you, especially when it’s not your Groq.  

I get it. It was annoying when my great Aunt asked me about my new snarky chatbot over Thanksgiving dinner, but I passed her the mashed potatoes anyway.  

 #GroqOn

Of course, Elon has (so far) ignored all of this, and there’s a decent chance he’ll continue to do so. But I’d like to no longer need to explain every time I talk about Groq (which is doing some pretty cool stuff) that I’m not using Elon’s glitchy tech, so hopefully Elon gets around to actually changing the name.

As we’ve explained for years, of the three customary fields often linked together under the terrible and misleading term “intellectual property,” trademark is the most defensible, though only for its original intended purpose: to avoid consumer confusion. As a consumer protection tool that accurately designates the origin of a product, trademark serves a useful process (it’s only when it’s being used for bullying/censorship that gets us upset). But here, Groq appears to have a very clear legitimate claim. The likelihood of confusion is extremely clear (I keep experiencing it personally!).

But, I guess it’s up to Elon if he’s actually going to change the name. He could ask Grok, but I’m guessing the responses might come a little too slowly.

Filed Under: ai, cease and desist, elon musk, grok, jonathan ross, likelihood of confusion, trademark
Companies: groq, twitter, x

McDonald’s Loses Trademark Suit In Australia Against Hungry Jack’s Over ‘Big Jack’ Burger

Trademark

from the big-deal dept

Three years ago we discussed an interesting trademark battle between McDonald’s and Hungry Jack’s in Australia. It’s interesting for a number of reasons. For starters, Hungry Jack’s is a part of Burger King, McDonald’s chief rival globally, making this something of a proxy war. Second, this suit was filed on the heels of McDonald’s losing its “Big Mac” trademark in Europe after Supermacs got it canceled in expanding into the continent. And finally, to tie those two things together, this particularly dispute was over Hungry Jack’s “Big Jack” burger, which is designed similar to the Big Mac, save some differences that Hungry Jack touted specifically in its advertising of the sandwich.

Well, the results are in, and the Australian courts have decided that there is no trademark infringement here, largely because it doesn’t see any real or potential customer confusion.

Justice Stephen Burnley, who presided over the case, found that the “Big Jack was not deceptively similar to the Big Mac”, and that the Big Mac’s strong reputation made it unlikely consumers would be confused or deceived.

“I am not persuaded that Hungry Jack’s fashioned the name Big Jack for the purpose of misleading consumers,” he said.

In addition to that, the marketing head for Hungry Jack’s specifically pointed out that the whole point of the name wasn’t to try to deceive customers into thinking there was some association with McDonald’s, but actually the exact opposite. The name was chosen to poke McDonald’s in the eye and play into the rivalry, which is material to secondary claims made by McDonald’s that Hungry Jack’s misled the public when specifically pointing out the differences between the Big Mac and the Big Jack.

In its suit, McDonald’s also claimed that Hungry Jack’s had misled consumers in a series of television adverts by claiming the Big Jack contained 25 per cent more Australian beef than the Big Mac.

After testing and weighing of the different burger patties by experts, the judge found Hungry Jack’s burgers contained “significantly less” than the 25 per cent additional beef advertised, and the company had breached consumer law through its marketing.

And it’s likely that Hungry Jack’s is going to be fined as a result of that misleading marketing. But what that also makes crystal clear is that the company was very specifically differentiating itself from McDonald’s through that same marketing, not attempting to mislead the public per McDonald’s first claim.

So, Hungry Jack’s will get a slap on the wrist fine, but this certainly isn’t trademark infringement according to the Australian courts.

Filed Under: australia, big jack, big mac, trademark
Companies: hungry jack, mcdonalds

Does Elon Grok The Trademark Issues With ‘Grok’? AI Chip Company Groq Does

Trademark

from the grok-the-groq,-grok dept

As you likely know by now, last week, Elon Musk released the initial version of the AI chatbot he created earlier this year via “xAI” which may or may not be part of his many other companies, but definitely uses employees, technology, and resources from those other companies. He named it “Grok,” though also claimed that it was “modeled after” Hitchhikers Guide to the Galaxy.

Now, anyone with any knowledge of the relevant books here will note that “grok” comes not from Douglas Adam’s “Hitchhiker’s Guide to the Galaxy,” but from Robert Heinlein’s “Stranger in a Strange Land,” which are, well, two very different books. Others might note that the underlying theme of Hitchhiker’s Guide is that it’s actually compiled by living beings, but, hey, whatever…

There might be a bigger issue with Elon naming his AI “Grok,” beyond the mixed up book aspect.

And it’s that there’s already a big AI-related company that has been around for over six years named “Groq” that has multiple live trademarks for “Groq” having to do with AI.

By absolute and total coincidence, last week as all this happened, I just happened to be at a conference where I interviewed Groq’s founder and CEO, Jonathan Ross, on stage, where he seemed to have a pretty good sense of humor about all this (rather than the sophomoric sense of humor of the other guy).

During that session, Jonathan demonstrated how Groq’s AI chips make existing AI models way faster than anything you’ve seen before (and, yes, it makes a huge difference — I’ve been playing around with Groq’s implementation of the Llama 2 AI model and it’s… astounding what you can do when the output is that fast. It makes using generative AI a wholly different experience).

Now, we don’t often cover things like “AI chips” on Techdirt, but we do cover AI in general and we do cover… trademark disputes. Including when the party that feels wronged takes a more creative approach to dealing with things before sending in the lawyers.

Jonathan wrote a blog post, “Welcome to Groq’s Galaxy, Elon,” in which he demos Groq’s super fast speeds by asking it to come up with a better name for Elon’s AI (he did a version of this same example demo on stage at the conference last week as well):

In the meantime, to help Elon out I decided to have a talk with our own Groq™ bot to see if we could come up with a better, wittier, and more unique name for the Musk bot. Our bot is built on the Llama-2 70B LLM and runs on the Groq Inference Engine. In other words, it’s smart and fast.

I asked it, “What are some clever names for an LLM-based chatbot inspired by the Hitchhiker’s Guide to the Galaxy?” In about a second, it provided an entertaining set of ideas.

This gives Ross a chance to also show off the speed of Groq’s chips, and how that enables much better overall results in a short time frame:

The list was 545 tokens in length, and if you are keeping score (which we definitely are), the speed at which it generated that list was 329 tokens / second. 

But, I didn’t believe the list was up to Elon’s levels of intellect and wit. This isn’t surprising, since the first answer from any AI query is the bot’s stream of consciousness, and none of us is at our sharpest when blurting out the first thing that comes to mind. So I asked a few more questions. How could you improve these suggestions? What are the most sarcastic, snarky options? Can you give me your top three?

Which is how, in a matter of seconds, the Groq bot and I came up with a great suggestion for Elon’s latest: “Slartibartfast the Chatbot”. What a fantastical name! Slartibartfast is a character from Hitchhiker’s Guide to the Galaxy whose job is to design planets (talk about generative AI!) He’s a rebel, a trickster, and a cynic. Really, the ideal character to front Elon’s and AI’s new voice of snark.

Going even snarkier (which we’re told Elon loves, right?), Ross posted another video showing Groq and “Grok” from xAI side by side responding to the same prompt.

Well, sort of. If you watch the video you see that in the time that Elon’s AI took to respond to a simple query, Groq’s system not only gave a much more complete answer in a fraction of the time, but it also was able to provide even more. And more. And more again.

Now, Groq and xAI are in different, but related businesses. Groq is making the chips that make it possible for any generative AI model to be insanely fast (their demo is on Llama 2), but they’re both in the AI business. And, yes, in case you’re wondering, since trademark law is focused on the likelihood of confusion, the difference in spelling between “Groq” and “Grok” is unlikely to matter. There are plenty of cases where phonetically similar words were found to violate trademarks.

Filed Under: ai, elon musk, grok, jonathan ross, trademark
Companies: groq, twitter, x, xai

Ravinia Festival Assoc. Sues Ravinia Brewing Company Over Geographic ‘Ravinia’ Trademark

Trademark

from the our-home-is-mine dept

Way back in 2018, we discussed how the Ravinia Festival Association, which operates the Ravinia Festival venue north of Chicago, attempted to shut down or force a rename for the then new Ravinia Brewing Company brewery and restaurant in Highland Park. That might all look fairly appropriate at first glance if you’re not from the area, but we locals know that the name “Ravinia” comes from what was once the Village of Ravinia, which was then annexed into Highland Park in 1899. The area is still referred to by that name, however, making “Ravinia” a geographic marker, not unlike the word “Wrigleyville” in Chicago.

Still, the RFA is a large entity and the brewery was a startup, so rather than engaging in defending itself from any trademark claims brought by the RFA, the company instead worked out a deal to continue using the name under certain restrictions in 2018. More on that later.

Well, the RFA has since claimed that Ravinia Brewing has violated that agreement and it is therefore nullified. In addition, it has sued the brewery over trademark infringement as a result.

Filed last month in Chicago federal court, the lawsuit alleges Ravinia Brewing, which sells whimsically named beers and tacos from its modest storefront taproom, violated a since-rescinded 2018 agreement to limit the use of their shared hometown moniker. The restriction was intended to minimize confusion between “world-renowned Ravinia” and a “local restaurant and bar,” the lawsuit alleges.

Ravinia Brewing Company failed to comply with the agreement and more recently “acted blatantly in disregard of the guidelines, further trading on — and infringing — Ravinia’s well-known registered trademark,” the nonprofit festival association alleges.

Now, the filing is embedded below, so you can go read it for yourself. That being said, you really do have to keep in mind throughout that reading and this entire post that the Ravinia mark probably shouldn’t have been granted in the first place and, even if you disagree, should never have been granted in a manner in which RFA felt it could preclude anyone else from using it other than in very limited circumstances. So part of the original sin in all of this was RFA bullying Ravinia Brewing into this 2018 agreement in the first place.

As to the claims that Ravnia Brewing violated the agreement, here are the main claims:

1. The owners of Ravinia Brewing opened a second location in a different neighborhood in Chicago while retaining the Ravinia Brewing name, but under a separate corporate entity that was not party to the 2018 agreement.
2. That both venues provided live music, causing confusion among the public as to association with RFA, particularly as marketing material lacked disclaimers to disassociate the two entities.
3. That Ravinia Brewing marketed its beer on social media with pictures of the public consuming its beer at Ravinia Festival’s venue.
4. That Ravinia Brewing released a beer with a music-themed name and trade dress similar to the color scheme for the RFA.
5. That the words “Brewing Company” on marketing and packaging material for beers were of a font not at least 28% the size of the word “Ravinia” on the same packaging.

I’ll tackle these out of order. The live music at the brewery’s venues has typically amounted to a person with a guitar playing some tunes. While not every case, these performances are nothing like the massive concerts put on at the RFA venue.

Ravinia Festival also alleges in its complaint that Ravinia Brewing’s promotion of musical performances has “caused actual confusion in the marketplace.” The lawsuit cites summer appearances by Chicago Youth Symphony Orchestras jazz students at Ravinia Brewing in Chicago as an example.

This past season, the Ravinia Festival presented a typically diverse all-star musical lineup that went beyond student musicians, featuring everyone from Santana and Jethro Tull to Carrie Underwood and the Chicago Symphony Orchestra.

Walker said the brewery’s sporadic musical offerings are less ambitious.

“It tends to be a guy playing a guitar on a Thursday night,” Walker said. “That’s the extent of it. We haven’t done live music in Highland Park for two years.”

The font size claim? Yeah, that came down to a change in the size and shape of the beer can and was rectified once the brewery realized what had happened.

When Ravinia switched from 12-ounce to 16-ounce cans last year, it stretched the proportions of the logo slightly, with “Brewing Company” shrinking to about 26% of “Ravinia,” Walker said.

“We didn’t even know that had happened until they raised this,” Walker said. “That was part of the offer we made back to them, to immediately change it and make ‘Brewing Company’ 30% (as large), so we never have to worry about this again.”

The larger trade dress claim? Well, that’s where the new beer, named “Key Note”, comes in. The brewery released the beer under that name and with music-themed branding, all of which the RFA claims constitutes trademark infringement in and of itself.

Ravinia Brewing features a selection of Chicago-brewed beers in colorful cans with equally colorful local-themed names such as “Diversey Station” and “Steep Ravine.” But the brewery allegedly crossed the line when it rereleased “Key Strokes” this summer, which includes the image of a pianist on a green-colored can that Ravinia Festival alleges “improperly links” the beer with the concert venue.

That beer is not currently available right now, by the way. On the matter of the second location opened up miles and miles away from Highland Park, here I’m going to revert back to the original point: Ravinia is a geographic indicator no different than Wrigleyville, and any scope of limiting the use of it by others ought to be extremely limited as a result. In fact, if anything, I would think that the new location not being party to the 2018 agreement is an asset to that new entity. Maybe that’s an avenue to pushback on the validity of the RFA’s trademark to begin with. And the distance from the original venue seems to me that it would be less likely to cause confusion, not more.

And then there’s the social media claim, specifically that the brewery put out pictures on social media showing the public drinking the brewery’s beer at the RFA venue. Well, according to the owners of the brewery, that claim just couldn’t be more wrong.

Walker called it the “most egregious” allegation in the lawsuit.

“The example they used was not from Ravinia Brewing’s social media platform,” he said. “It was a picture that my wife took of her and I while she was drinking one of our beers on her own personal page.”

This whole lawsuit is bad. The claims are a mess, overblown at best and completely confused at worst. The brewery is certainly no threat to the RFA’s business or reputation. And, again, this all comes down to controlling a term that is a geographic marker.

Brett Tolpin, an intellectual property attorney and Ravinia native who has represented Ravinia Brewing in its legal battle with the music festival, said the Ravinia name is fair game.

“The word Ravinia is what we call in trademark law geographically descriptive, and it’s fair use for all to use,” Tolpin said. “It’s like using the word Chicago, nobody owns a geographic name.”

Yeah, that’s generally true. Perhaps the best course of justice here would be this lawsuit resulting in the RFA losing its trademark to the single word “Ravinia” completely.

At least that way all of this overwrought silliness could come to an end.

Filed Under: likelihood of confusion, ravinia, trademark
Companies: ravinia brewing company, ravinia festival

NFL Sends C&D To University Of Houston Over Homage To The Oilers’ Uniforms

Trademark

from the no-fun-league dept

One of the longest standing jokes in professional sports is labeling the NFL, or National Football League, the No Fun League, instead. This typically has to do either with the way the league has legislated a lot of what fans love about the game off the field in the name of player safety, which isn’t a horrible thing, or the way it also has tried to control exuberant player behavior on the field, which is generally lame. But the NFL is the No Fun League in Techdirt-ian ways as well, as a short review of our posts on the league will demonstrate. The league is one of the most voracious trademark defenders, or bullies, out there. And not just for its insane game of make believe the league plays when it comes to its trademark rights for the Super Bowl, but in general.

Which brings us to the University of Houston football team, which decided to have a little fun and wear uniforms that were an homage, though not an exact replica, or the old Houston Oilers team that eventually became the Tennessee Titans.

The Cougars caught the ire of the NFL’s merchandising and licensing division for wearing light blue uniforms in the season opener vs. UTSA on Sept. 2. UH said the uniforms were a tribute to the city’s football history, but the NFL saw the jerseys as “blatant copying” of the old Houston Oilers uniforms.

As a result, the NFL wants Houston to “discontinue all sales of merchandise and remove any promotional campaign or social media posts that feature the popular light blue, or Columbia blue, with red stripes color scheme and design,” the Houston Chronicle reported.

Now, as the article goes on to note, the Oilers left Houston nearly three decades ago, though the Titans do still wear the old Oilers uniforms as a throwback jersey and still hold trademarks for all kinds of Oilers branding, including the old uniforms. Here’s the thing though: UH isn’t doing much of what the NFL demands it stop doing. It isn’t selling any merch with the homage uniforms. It didn’t refer to the Oilers at all in any promotional or social media messaging, instead opting to refer to Houston’s football history.

Even the demand that the university cease using “similar” uniforms is legally dubious. This is trademark law we’re talking about, after all. The typical primary question is simply whether the public is going to be confused as to any ownership or affiliation of the school with the NFL. That obviously isn’t going to be a thing in this case. UH fans are going to know damned well that the school has nothing to do with the NFL.

Houston did not reference the Oilers when it revealed the uniforms — which are a slightly different shade of blue — in the lead-up to the season opener. Additionally, UH has not sold merchandise as part of the uniform drop.

Still, the NFL considered the uniforms to be an unauthorized use of the Oilers’ branding.

Even if we took the NFL’s view on the matter, there would still be nothing stopping it from working out some sort of cheap arrangement to let UH celebrate the city’s history within the sport of football in order to let this move forward. It didn’t have to play legal bully if it didn’t want to.

But then I guess we’d have to figure out what the “N” would stand for instead of “no.”

Filed Under: homage, houston, houston oilers, trademark
Companies: nfl, university of houston

Trademark Dispute Ends Up In Partnership Between Parties, Rather Than A Fight

Trademark

from the can't-we-all-just-get-along? dept

Usually when we’re talking about a trademark dispute, never mind a lawsuit, there is some level of anger, frustration, or animosity between the two parties. The reason for that is pretty obvious: nothing puts you on negative footing towards another quite like getting sued or getting threatened with a lawsuit. But, and I cannot stress this enough, it does not have to be that way. If more people and organizations out there could prioritize being human and awesome towards one another, they might just find new opportunities to engage in, rather than being in a fight to the intellectual property death.

Serving as an example of that is a trademark dispute between two parties where there appears to have been some legitimate trademark concerns. Carolwood Estates began life recently as a residental real estate brokerage and was immediately sued for trademark infringement by Carolwood Capital Partners LLC, a company that provides real estate investment services. While the services offered by the entities are somewhat distinct, they sit in close enough company with one another that the suit didn’t appear to be silly. And, while this had the hallmarks of a prolonged trademark dispute that would end with one side or the other losing out and being pissed off, this one ended rather differently.

In an unusual legal move, Carolwood Estates — the independent luxury residential brokerage — put aside its disagreements in a trademark dispute with the commercial investment firm Carolwood LP, and the two companies will develop joint ventures in real estate, The Real Deal has learned.

The former adversaries will unveil the new venture Carolwood Commercial on Nov. 10, said Nick Segal, managing broker at Carolwood Estates. The boutique commercial brokerage will handle retail, restaurant, office and industrial. Its offices will be located on the third floor of the building where Carolwood Estates is headquartered at 9440 South Santa Monica Boulevard in Beverly Hills. 

You read that right. Two sides in a trademark dispute settled the dispute in a way that is not entirely behind closed doors, as is typical, but actually announced a partnership and joint venture. Both entities will also retain their original names outside of the joint venture, though some ownership shares of Carolwood Estates will now be held by Carolwood LP. And the new venture will allow both to work together on business opportunities neither was previously capable of engaging in.

How does something like this happen? Conversation. Humanity. Trust. Not digging in your heels just because you think someone “stole” your name or idea.

Segal said the idea of joining forces was broached during settlement talks in June. He and Fenton said they often had been approached with commercial projects, but they did not have a commercial division to work on the deals. Likewise, commercial clients often asked Rubin and his business partner Andrew Shanfeld for guidance on residential projects, and Rubin and Shanfeld referred the business out. 

“I wasn’t looking for money,” Rubin said, referring to the trademark dispute. “But the name is important to us. Andrew and I worked relentlessly over the last 10 years to build our various businesses. However, Carolwood Estates had a great value proposition and an amazing team.  We were once fighting over a name. Now we are partners. We definitely did not expect this outcome. Andrew and I wouldn’t have agreed to the settlement if it was someone other than Nick and Drew. They’re the best in the business as far as we’re concerned. We’re really looking forward to furthering a great business with them.”

This sort of thing isn’t possible in every trademark dispute, of course. But there’s a lesson to be learned here, which is that behaving as draconian and aggressively as possible can often times preclude one or both parties from uncovering a solution that is far more beneficial than duking it out in court.

That is certainly a lesson for the wider trademark-holding public to pay attention to.

Filed Under: joint venture, real estate, trademark
Companies: carolwood estates, carolwood lp

Finally: Our National Taco Tuesday Nightmare Is Now Fully, 100% Over

Trademark

from the let's-taco-bout-it dept

It’s over. It’s finally over. The battle to end the trademark registrations for “Taco Tuesday” began years and years ago, mostly after Taco John’s wielded the trademark haphazardly to occasionally threaten other taco joints with legal action. Less spotlighted was Gregory’s Bar & Restaurant, which held the trademark for the phrase in the one state that Taco John’s didn’t, New Jersey. But, and if you haven’t been following this story I swear to god this next collection of words forms a true sentence, LeBron James teamed up with Taco Bell to launch a public campaign to get both trademark registrations rescinded by the USPTO. As a result, Taco John’s finally agreed to just give up this fight it was doomed to lose. But the owner of Gregory’s Bar & Restaurant, who’s name is — sigh — Gregory Gregory (duplicate is not a typo), vowed to fight to keep his trademark in New Jersey.

But now that fight is over, too. Taco Bell released a statement indicating that Gregory’s has relinquished its trademark as well.

After a months-long battle with a Jersey Shore bar and restaurant over the trademark for Taco Tuesday, fast food giant Taco Bell said in a press release Tuesday that the trademark to the name had been relinquished.

“When we set out to free Taco Tuesday, we did it for all who make, sell, eat and celebrate tacos,” said Taco Bell Chief Global Brand and Strategy Officer and incoming Chief Executive Officer, Sean Tresvant. “Taco Bell wants everyone to have the opportunity to celebrate Taco Tuesday.”

Well, that’s almost certainly bullshit, of course. Taco Bell wants to be able to use the phrase “Taco Tuesday”, that’s why it fought this fight. But here’s the thing: it should be able to. As we’ve talked about at length in previous posts, these trademarks never should have been granted in the first place, and certainly became totally generic after years and years of use by multiple other parties in a multitude of ways.

And here’s the really frustrating thing: Taco Bell’s fight to overturn these trademarks has probably generated more business for Gregory’s than the stupid trademark it had in the first place.

Despite his frustration with the recent battles over the name, Gregory also acknowledged the publicity his fight with Taco Bell has generated for his business. 

“We have gotten a lot of customers that were new because they saw it,” he said. 

I’m not typically in the business of cheering on big companies defeating small companies at, well, mostly anything, frankly. But this whole things was dumb from the jump. Taco Tuesday is free for all to use. It’s finally over.

Filed Under: gregory gregory, new jersey, taco tuesday, trademark
Companies: gregory's bar & restaurant, taco bell, taco john's

Air Canada Would Rather Sue A Website That Helps People Book More Flights Than Hire Competent Web Engineers

Legal Issues

from the time-to-cross-air-canada-off-the-flight-list dept

I am so frequently confused by companies that sue other companies for making their own sites and services more useful. It happens quite often. And quite often, the lawsuits are questionable CFAA claims against websites that scrape data to provide a better consumer experience, but one that still ultimately benefits the originating site.

Over the last few years various airlines have really been leading the way on this, with Southwest being particularly aggressive in suing companies that help people find Southwest flights to purchase. Unfortunately, many of these lawsuits are succeeding, to the point that a court has literally said that a travel company can’t tell others how much Southwest flights cost.

But the latest lawsuit of this nature doesn’t involve Southwest, and is quite possibly the dumbest one. Air Canada has sued the site Seats.aero that helps users figure out the best flights for their frequent flyer miles. Seats.aero is a small operation run by the company with the best name ever: Localhost, meaning that the lawsuit is technically “Air Canada v. Localhost” which sounds almost as dumb as this lawsuit is.

The Air Canada Group brings this action because Mr. Ian Carroll—through Defendant Localhost LLC—created a for-profit website and computer application (or “app”)— both called Seats.aero—that use substantial amounts of data unlawfully scraped from the Air Canada Group’s website and computer systems. In direct violation of the Air Canada Group’s web terms and conditions, Carroll uses automated digital robots (or “bots”) to continuously search for and harvest data from the Air Canada Group’s website and database. His intrusions are frequent and rapacious, causing multiple levels of harm, e.g., placing an immense strain on the Air Canada Group’s computer infrastructure, impairing the integrity and availability of the Air Canada Group’s data, soiling the customer experience with the Air Canada Group, interfering with the Air Canada Group’s business relations with its partners and customers, and diverting the Air Canada Group’s resources to repair the damage. Making matters worse, Carroll uses the Air Canada Group’s federally registered trademarks and logo to mislead people into believing that his site, app, and activities are connected with and/or approved by the real Air Canada Group and lending an air of legitimacy to his site and app. The Air Canada Group has tried to stop Carroll’s activities via a number of technological blocking measures. But each time, he employs subterfuge to fraudulently access and take the data—all the while boasting about his exploits and circumvention online.

Almost nothing in this makes any sense. Having third parties scrape sites for data about prices is… how the internet works. Whining about it is stupid beyond belief. And here, it’s doubly stupid, because anyone who finds a flight via seats.aero is then sent to Air Canada’s own website to book that flight. Air Canada is making money because Carroll’s company is helping people find Air Canada flights they can take.

Why are they mad?

Air Canada’s lawyers also seem technically incompetent. I mean, what the fuck is this?

Through screen scraping, Carroll extracts all of the data displayed on the website, including the text and images.

Carroll also employs the more intrusive API scraping to further feed Defendant’s website.

If the “API scraping” is “more intrusive” than screen scraping, you’re doing your APIs wrong. Is Air Canada saying that its tech team is so incompetent that its API puts more load on the site than scraping? Because, if so, Air Canada should fire its tech team. The whole point of an API is to make it easier for those accessing data from your website without needing to do the more cumbersome process of scraping.

And, yes, this lawsuit really calls into question Air Canada’s tech team and their ability to run a modern website. If your website can’t handle having its flights and prices scraped a few times every day, then you shouldn’t have a website. Get some modern technology, Air Canada:

Defendant’s avaricious data scraping generates frequent and myriad requests to the Air Canada Group’s database—far in excess of what the Air Canada Group’s infrastructure was designed to handle. Its scraping collects a large volume of data, including flight data within a wide date range and across extensive flight origins and destinations—multiple times per day.

Maybe… invest in better infrastructure like basically every other website that can handle some basic scraping? Or, set up your API so it doesn’t fall over when used for normal API things? Because this is embarrassing:

At times, Defendant’s voluminous requests have placed such immense burdens on the Air Canada Group’s infrastructure that it has caused “brownouts.” During a brownout, a website is unresponsive for a period of time because the capacity of requests exceeds the capacity the website was designed to accommodate. During brownouts caused by Defendant’s data scraping, legitimate customers are unable to use or the Air Canada + Aeroplan mobile app, including to search for available rewards, redeem Aeroplan points for the rewards, search for and view reward travel availability, book reward flights, contact Aeroplan customer support, and/or obtain service through the Aeroplan contact center due to the high volume of calls during brownouts.

Air Canada’s lawyers also seem wholly unfamiliar with the concept of nominative fair use for trademarks. If you’re displaying someone’s trademarks for the sake of accurately talking about them, there’s no likelihood of confusion and no concern about the source of the information. Air Canada claiming that this is trademark infringement is ridiculous:

I guarantee that no one using Seats.aero thinks that they’re on Air Canada’s website.

The whole thing is so stupid that it makes me never want to fly Air Canada again. I don’t trust an airline that can’t set up its website/API to handle someone making its flights more attractive to buyers.

But, of course, in these crazy times with the way the CFAA has been interpreted, there’s a decent chance Air Canada could win.

For its part, Carroll says that he and his lawyers have reached out to Air Canada “repeatedly” to try to work with them on how they “retrieve availability information,” and that “Air Canada has ignored these offers.” He also notes that tons of other websites are scraping the very same information, and he has no idea why he’s been singled out. He further notes that he’s always been open to adjusting the frequency of searches and working with the airlines to make sure that his activities don’t burden the website.

But, really, the whole thing is stupid. The only thing that Carroll’s website does is help people buy more flights. It points people to the Air Canada site to buy tickets. It makes people want to fly more on Air Canada.

Why would Air Canada want to stop that other than that it can’t admit that it’s website operations should all be replaced by a more competent team?

Filed Under: api, cfaa, flights, frequent fliers, scraping, screen scraping, trademark
Companies: air canada, localhost, seats.aero