Tilted Kilt Files Trademark Suit Against Golf Course With Kilted Employees

from the sexiest-lawsuit-ever dept

We’ve seen silly trademark suits over all kinds of things before. Common phrases come to mind, as do petty politicians going after parodies and the government feeling it necessary to trademark groups of American heroes lest the House of Mouse gobble them up. The point is we see a lot of dumb ’round these parts, but we rarely see that dumb mixed with sexy.

But now, thanks to The Tilted Kilt franchise going after golf club for having some of their staff wearing completely different looking kilts, we apparently can’t say that any longer. The club in question is the Kilted Caddy Club, a golf course that provides female caddies in kilts for some of their golf tournaments, because nothing helps a man concentrate on sinking that twenty-foot sloped birdie putt like a nice pair of legs. The Tilted Kilt franchise, in case you aren’t aware, provides bar/restaurants in which scantily-clad women in kilts and low-cut button-down shirts serve you sub-par food while the worst music you can imagine plays around you and your fellow degenerate friends. In other words, we’re dealing with two quality organizations here. Well, apparently one side of this equation got their kilts in a bunch to the point of filing a very silly trademark claim.

The Tempe, Ariz.-based Tilted Kilt, which has nearly 100 locations nationwide including one at Broadway at the Beach, says in court documents that the caddy club is copying its distinctive and trademarked “uniforms,” thereby, confusing consumers into thinking the two businesses are related. The Tilted Kilt has asked a judge for a permanent injunction against the Kilted Caddy Club’s use of its name and tantalizing tartan uniforms, as well as unspecified monetary damages.

Now, let’s start off with the obvious problem: the two companies aren’t in the same line of business. One is a golf course (that of course has a clubhouse bar and food, but meh), the other is a bar/restaurant. They aren’t competing against one another. That should probably be enough to toss this thing out already. Add to that the fact that the two uniforms aren’t really all that similar beyond incorporating a bastardization of a traditional Scottish kilt, and it’s all the more difficult to see this going anywhere. Judge for yourself. Here are some women in their Tilted Kilt uniforms, making their parents proud:

And here are some women from The Kilted Caddy Club.

Now, while it is true that the golf course put out some advertisements for events with girls dressed in garb more similar to Tilted Kilt girls, they still aren’t competing against one another and no moron in a hurry is going to think that the restaurant company suddenly went into the golf course business and failed to use their brand name. And besides all of that, the idea of preventing a golf course, a game with Scottish origins, from having a Scottish theme, is sort of silly on its face. Still, because this is a trademark dispute, it must devolve into a silly linguistics lesson from the club’s lawyer, Dan Polley.

Polley said, there should be no confusion over the names because the restaurant chain uses the word “tilted” as an adjective for the noun “kilt” while the caddy club uses “kilted” as an adjective for the noun “caddy.”

“The respective marks do not have any closeness in appearance, sound or meaning,” Polley said. “Coupled with the fact that our client’s services are provided solely at its Scottish theme golf course, the chance for confusion is remote.”

Or how about, rather than having everyone get their MLA handbooks out, maybe two companies not competing against each other just don’t have to find themselves battling in court. That work for everyone?

Filed Under: kilts, trademark
Companies: kilted caddy club, tilted kilt

Texas A&M Plays Hardball With A Double Amputee Over 12th Man Trademark

from the bully-for-you dept

You may recall past stories here covering Texas A&M and their aggressive protection of their trademarked phrase, “The 12th Man.” That phrase refers to the crowd within football games cheering and/or booing loudly enough to have an effect on what happens on the field of play. Even in situations where the target of A&M’s ire isn’t actually competing against the school for anything commercial, the cease and desist letters are still sent. We’ve also discussed how organizations could protect their trademarks by offering $1 licensing rights to the phrase, thereby maintaining their mark while engendering some good will.

Well, boy, you’d think that such a scheme might be best used when a double-amputee cancer-survivor starts a website in Buffalo, NY called 12thmanthunder.com, dedicated to keeping the Bills in Buffalo. But, nope, A&M still went legal on him.

Charles Sonntag co-founded 12thManThunder.com, a website for people who wanted to keep the Bills in Buffalo. The Aggies are threatening to sue Sonntag for infringing on the “12th Man.” Legally, it’s an open question as to whether Sonntag’s website actually infringes on A&M’s mark. There’s almost no likelihood of confusion between 12thManThunder in Buffalo and the College Station fan base. The Buffalo Bills — the actual NFL football team — ALSO have a deal with A&M to use the phrase. So it’s not like A&M objects in principle to other people in far off places using the 12th Man. It’s that they object to people using it without paying them a pound of flesh.

However, Charles Sonntag just happens to be a double amputee, cancer survivor who suffers from Albright’s disease. He can’t afford attorneys who can litigate this case — and he does have some kind of defense that his use does not infringe on A&M’s mark — and he can’t afford to pay A&M whatever it wants in “leave me alone” money.

Damn, I forgot about the Albright’s disease, which presents as a skin and bone deformity in the legs, arms and skull. But, hey, I guess with old Chuck missing an arm and a leg, we shouldn’t fully credit any sympathetic status for the Albright’s, right Texas A&M? I mean, he’s already chock full of PR-nightmare-fluid with the whole cancer and amputee thing. Yet, not only did the Aggies go after him, they pressed the issue when they felt he wasn’t complying fast enough.

Texas A&M spokesman Shane Hinckley said the website’s owners have been too slow to respond.

A&M wants all the 12thManThunder posters taken down (some are posted at area bars), and they want the Facebook group named changed. Did I mention that Sonntag is a double amputee? HE HAS ONE ARM AND ONE LEG! Could we give him a minute to deal with all of this?

Forget the damned minute and work out a micro-cost licensing agreement with him. Hell, can we get a more clear-cut case of trademark bullying than this?

Filed Under: 12th man, trademark
Companies: texas a&m

Author To Chobani: I Own The Word 'How'

from the how-do-you-figure? dept

It’s amazing what fun we can have when we really get a culture of permission going. Trademark law, ostensibly built around the idea of consumer protection when it comes to branding, has since devolved into a platform where certain entities think they can essentially own certain common words and phrases, such as “emergency essentials“, or “footlong“, or “monster.” However, once you’ve opened the door to that kind of relatively minor insanity, it lets the really crazy monsters through.

Let’s take, for instance, the word “how.” You can’t own “how”, right? Well, according to the lawsuit of Dov Seidman, who portends to be something called a “corporate virtue advisor”, you damn well can.

In papers filed in Manhattan federal court, Dov Seidman, author of “HOW: Why HOW We Do Anything Means Everything,” says how Chobani is using “how” in its current marketing campaign is a blatant rip-off. Seidman and his company, LRN, “whose business is based on promoting ethical corporate behavior, own federal trademark registrations for word and mark HOW,” the suit says.

Let’s just drive this point home, shall we? A purveyor of business ethics is suing Chobani, a company that makes Greek yogurt, because they used the word “how” in a marketing campaign. Just let that sink in for a moment. The fight is over a single word, not some multi-word phrase. Hell, it’s over a single syllable. And customer confusion is difficult to imagine, given that one side of the fight is a guy that talks to companies about who-knows-what and the other, you know, makes yogurt. So, how is this suit even possible? Well, it apparently falls upon a time when Chobani tweeted at Seidman to flatter and admire him.

The company has since claimed the campaign is purely coincidental, but Seidman noted that he got a Twitter message from Chobani on January 29 saying, “Thanks for inspiring the world to care about ‘how.’ Can you help inspire the food industry, too?” The “very next day,” the suit says, the company “launched Chobani’s new branding platform – which employs ‘HOW’ in precisely the same manner as plaintiffs employ their HOW marks: as a noun connoting responsible and ethical corporate behaviors.”

Here’s the tweet:

@DovSeidman Thanks for inspiring the world to care about "how." Can you help inspire the food industry, too? http://t.co/erVULG89Hp

— Chobani (@Chobani) January 29, 2014

And? So the hell what? Inspiration in the form of a single word does not a trademark violation make, because that would essentially lock up the courts for years as everyone fought roughly everyone. There’s a reason trademarks, especially those on short phrases or common words, aren’t all-encompassing throughout all of commercial use. That would break language completely.

Chobani is on record stating that this whole thing is exceptionally silly. One would hope a court will throw this out the moment it hits a bench. And how!

Filed Under: dov seidman, how, likelihood of confusion, trademark, yogurt
Companies: chobani

Nation's Largest Law Firm Still Sports Thinnest Skin, Sends Trademark C&D In Attempt To Bury Critical Speech

from the 2,500-lawyers-and-zero-common-sense dept

After hitting the snooze button for a half-decade, the United States’ largest law firm is back to its trademark-bullying form. Again, it’s seeking to shut down content it doesn’t like, and it’s wielding its trademarks as a weapon (along with its colossal size) to get its way.

Back in 2008, Jones Day pressured a website called BlockShopper into pulling information it had posted to its website — information it had gathered from public records. All BlockShopper did was post information on property purchases. When two members of Jones Day purchased property in the Chicago area, BlockShopper did what it always did: posted information on the purchasers and provided informational links about the purchasing party. These links led back to Jones Day and at that point, the legal firm sent out a cease-and-desist about its trademark somehow being “violated” by BlockShopper’s “deep-linking.”

As if this bullying wasn’t enough, the judge presiding over the eventual lawsuit talked BlockShopper out of defending its posting of publicly-available information, apparently far more impressed by the size of Jones Day than the defendant was.

“Do you know, young man, how much money it’s going to cost you to defend yourselves against Jones Day?”

BlockShopper caved and pulled the info and links, and Jones Day went back to being just an incredibly large law firm.

Now, it’s doing the same thing to a site posting critical (and parodic) content about one of Jones Day’s former partners (Kevyn Orr), the current emergency financial manager of disintegrating metropolis, Detroit.

Jones Day, the United States’ largest law firm, is threatening a parody website with litigation because of its use of the corporate logo deriding the firm.

“I write on behalf of Jones Day, a law firm with over 2500 lawyers in offices on five continents, regarding your unauthorized use of Jones Day’s service mark on the website www.kevynorr.com …” begins the letter from firm partner Robert Ducatman to the anonymous blogger.

The letter singles out the phrase that offends Jones Day the most: the tagline “This economic coup d’etat brought to you by Jones Day.” The letter tries to drag in Lanham Act violations to excuse its targeting of First Amendment-protected speech and its deliberate obtuseness about fair use. One would think a law firm with “2,500 lawyers” might be able to come up with a better legal strategy (like, not doing anything at all), but it’s apparent the law firm prefers to use its bulk, rather than its mental prowess.

The letter even includes this bit of threatening language:

“Your conduct will be closely monitored.”

No firm points out that it has “2,500 lawyers” at its disposal unless it’s in a threatening mood, and this particular sentence clinches it.

Jones Day may have been hoping for another nearly-uncontested “win,” but its bullying has drawn the attention of the EFF, which has fired back a response (by Daniel K. Nazer) just as tersely worded.

Contrary to your suggestion, our client does not need “authorization” to use Jones Day’s marks. It is well-settled that the First Amendment fully protects the use of trademarked terms and logos in non-commercial websites that criticize and comment upon corporations and products. Our client’s site is a clear example such protected expression. You may disagree with our client’s speech. But you have no right to silence it.

You state that Jones Day and its over 2500 attorneys will “closely monitor” our client’s conduct. We trust that this was not an attempt to bully and intimidate, but a promise that you will “monitor” the situation with close attention and fidelity to the law, including fair use and First Amendment protections…

We sincerely hope Jones Day Will have the good sense not to trouble a court of law with this matter. However, if you do intend to file suit, please be assured that our client is prepared to defend himself against these spurious claims.

Jones Day has had previous experience with the EFF. In its lawsuit against BlockShopper, it asked the judge to disallow amici briefs from Public Knowledge and the EFF, claiming the two entities were “biased.” Once again, it’s rather amazing that the United State’s largest law firm is either unable (or unwilling) to recognize the fact that amicus briefs are inherently “biased.” If they weren’t, they’d be completely extraneous. It’s the judges who need to remain unbiased, not the parties involved or the parties offering briefs on their respective behalfs.

In addition to the blatant bullying, Jones Day is further injuring its own reputation — both by showing that being the “biggest” somehow still makes you the easiest to bruise and by drawing even more attention to the speech it’s trying to bury.

[Lengthy sidenote: It is quite possible — in fact, even probable — that many of the 2,500 lawyers under Jones Day’s roof would have seen this cease-and-desist as both stupid and not legally sound. Unfortunately, the company’s reputation is far more subject to the whims of those who apparently lack this sort of clarity and vision. Maybe this kind of legal duncery becomes increasingly infectious as you rise through the ranks. Here’s a quote from a Jones Day partner defending trademark bullying as nothing more than what one does to protect registered marks.

Susan Kayser, partner at law firm Jones Day, goes further. She says rights owners feel there is merely a perceived, not a real, problem of bullying.

“Under US law, trademark owners are obliged to enforce their rights or they lose them. They must bear the burden of policing any third-party use, and if they believe any use is close to theirs, they are obliged to take action or risk losing their trademark rights,” she says.

“We start with that,” Kayser explains.

“The vast majority of trademark owners are doing what they’re required to do under the law. There are a few bullies, but they are in the minority. I don’t think it really happens that much.”

Kayser, like many other spokespeople for trademark bullies, blames the public for perceiving the weight of 2,500 lawyers on one blogger’s shoulders as “bullying.” She also adheres to the all-too-common misperception that scorched earth policies are demanded if one is to keep its trademarks from being diluted, misused, etc. Nothing could be farther from the truth, as one judge memorably stated in a trademark bullying case:

The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer.

Which is exactly what Jones Day appears to be doing. And in doing so, it’s harming its own reputation… and that of the 2,500 lawyers in its employ, many of whom would have avoided a debacle like this if it were up to them. The question is, when do your company’s stupid actions begin damaging your ability to make a living? Is it at the point when people gaze in awe at the statement “2,500 lawyers” and begin wondering a) if they’re ever all in one room at the same time, and b) if that room could be quickly filled with water?

Filed Under: censorship, trademark
Companies: jones day

USPTO Cancels Trademark Registration For Washington Redskins

from the finally dept

Given that I’ve been quite vocal about my interest in the Washington NFL team changing its name from the disparaging “Redskins” moniker to something more civil, you might think that I’m doing some kind of happy dance in my office now that the USPTO has rescinded the trademark registration for the team (something I had predicted, along with others, a while back). Look, I won’t pretend like any steps moving us closer to a world where that team’s name is changed don’t make me happy, but I do take the counterpoints seriously. I don’t particularly care for a world where speech deemed “offensive” can’t be uttered, nor do I generally like when the government sticks its nose in most things. I understand that completely — I just think there are some serious arguments for ensuring the government doesn’t grant exclusive rights to organizations on the backs of horribly racist terms. So when the USPTO says they’re removing the registration because the term is disparaging and they don’t want to grant rights for the team to seek trademark damages to that kind of language in all of our names, I happen to think that make sense.

“We decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered,” the board wrote in its opinion, which is here.

Again, if you think this is yet another example of government’s intrusion on free enterprise, I get where you’re coming from. After all, damn it, we wouldn’t need to have come to this point if the citizens of D.C. had risen up and refused to go to games until the name was changed. That would have been a far preferable solution. That said, the provision in trademark law forbidding marks of a racial nature is fairly clear and I think there’s fairly good reason for that language. As plaintiff Amanda Blackhorse said:

“I am extremely happy that the [Board] ruled in our favor,” Blackhorse said in a statement. “It is a great victory for Native Americans and for all Americans. We filed our petition eight years ago and it has been a tough battle ever since. I hope this ruling brings us a step closer to that inevitable day when the name of the Washington football team will be changed. The team’s name is racist and derogatory. I’ve said it before and I will say it again – if people wouldn’t dare call a Native American a ‘redskin’ because they know it is offensive, how can an NFL football team have this name?”

This ruling isn’t only in the name of being politically correct to Native Americans, it’s about a government office that purports to represent all of us granting exclusive rights based on language that an overwhelming majority of outlets define as racist. The public can and does have an interest in how government represents us and granting trademark to that kind of term just isn’t okay.

Now, before anyone gets their First Amendment panties in a twist here, the team doesn’t lose the right to use the name and even keeps its registered mark during the appeals process, which has already begun.

The team will almost certainly appeal the case, and it will be able to keep its trademark protection during appeal. Losing the trademark would not force the team to change its name, but it would allow anyone who wanted to use “Redskins” on merchandise or through other means to do so, which could cost the team — and, because of the NFL’s revenue-sharing model, other NFL teams — “every imaginable loss you can think of,” as the team’s lawyers argued in the original case. For that reason, the trademark has long been thought of by opponents of the team’s name as the easiest avenue to changing it.

If Dan Snyder, a man who has filed lawsuits claiming anti-semitism, wants to stick to his racist guns and keep the team name, he can. He just doesn’t get the ability to seek damages that a registered mark affords him. Speech is actually opened up by this ruling, not infringed upon. In other words, for those of you that think the team name is awesome and/or the USPTO shouldn’t be getting involved in this, all is not lost. The racist term you wish to protect can still be used by the team if it wishes, it’s just that those of us who think the government shouldn’t be sanctioning that kind of thing are finally being represented.

Filed Under: dan snyder, free speech, redskins, trademark, uspto, washington redskins
Companies: washington redskins

Disaster Preparedness Company Thinks People Shouldn't Be Allowed To Use The Words 'Emergency Essentials'

from the PLEASE-DELETE-FROM-YOUR-VOCABULARY dept

Some entities cling to the belief that if a trademark isn’t vigorously and ridiculously “defended,” it will slip out of their grasp. This attitude has led to legal action (and legal threats) over common English words, with the complainant often bypassing any sort of reasonable confusion claims and heading directly towards claiming the entity “owns” certain words. (See also: “Super Bowl,” “footlong” and “monster.”)

Bateman IP Law Group, representing a company called Emergency Essentials, LLC, sent a cease and desist letter to a website owner, claiming its client has exclusive rights to the words “emergency essentials.”

Dear Ms. [Recipient]:

We represent Emergency Essentials, LLC. with respect to certain intellectual property matters. Emergency Essentials, LLC. and its predecessor has been operating for more than 25 years selling food storage and other emergency supplies. Emergency Essentials has spent substantial amounts of money in developing goodwill in its marks and has a large number of U.S. Trademark Registrations, including Registration Nos. 3,665,475; 3,659,764, 3,582,153; 3,582,152; 3,574,562; 3,571,179; 3,571,178; 3,571,177; 3,571,176; 3,571,175; 3,571,174; 3,571,173; 3,571,172; 3,568,952; 3,568,951; 3,439,473 for the mark EMERGENCY ESSENTIALS.

It has recently come to our attention that the website, www.theemergencylady.com. for which you are listed as the registrant, has been using the mark “EMERGENCY ESSENTIALS”, as in the webpage found at www.theemergencylady.com/emergency_essentials_001027.html. (see exhibit, attached).

While Emergency Essentials appreciates the work your website is doing to promote emergency preparedness, it is also required to enforce its trademarks against those who are using the marks in such manner as may lead to a likelihood of confusion. After reviewing the website, we believe that consumers may incorrectly associate the website as being from or affiliated with our client. Therefore, we would respectfully request that you change the description on the website to replace the trademark “Emergency Essentials” with terms such as “emergency supplies,” “emergency provisions,” “emergency goods,” or some other term which does not use our client’s trademark. Likewise, we would request that you do not use “Emergency Essentials” unless you are referring specifically to our client.

Within 10 days of this letter please confirm that you have ceased all use of our client’s mark. We appreciate your cooperation in this matter and wish you the best with your endeavor. If you have any questions, please do not hesitate to contact us.

Very truly yours,
[Attorney Signature]

Enclosure: Exhibit [A print out of the web page at www.theemergencylady.com/emergency_essentials_001027.html]

Seeing as this was sent Feb. 26th and the page is still live, the Emergency Lady was completely unfazed by the bogus claims, even when confronted with a hard copy of her own post. “Save a trademark, kill a tree,” as the saying goes. While Emergency Essentials, LLC has done an admirable job of pushing down web results that make use of its registered trademarks place these two words next to each other, there’s still plenty of work to be done in terms of completely eradicating any “confusing” use these common English words.

Here’s CNN with a list of emergency essentials. Here’s Dr. Oz with another. Here’s an emergency essentials list created by the Texas Department of Health.

Any feelings that the average person might confuse an “emergency responder in a rural area’s” personal website with a company that markets dehydrated food and other disaster preparedness supplies reside solely in the vivid imagination of the company’s trademark protection squad. And Bateman IP isn’t just going after small-time website owners. It’s also suing bigger names as well.

Here’s its current lawsuit against Amazon for providing competitors’ products in response to search results for “emergency essentials,” as well as under the tag itself. Two C&D notices, sent three years apart, ask the online retailer to refrain from showing competitors’ products on this “page” or in search results. Good luck with that.

But here’s the most ridiculous aspect of Emergency Essentials, LLC’s war of words. For a company so easily irritated by the use of common English words, it has no problem borrowing a well-known phrase as its own URL.

http://beprepared.com/

But this is apparently OK because the site carries the following disclaimer at the foot of the page.

EMERGENCY ESSENTIALS, LLC IS NOT AFFILIATED, ENDORSED BY OR HAS ANY RELATIONSHIP WITH THE BOY SCOUTS OF AMERICA®.

Thanks for clearing that up. If it’s good enough for the BSA, then one imagines a small disclaimer hidden somewhere at Emergency Lady’s site or Amazon itself should eliminate any customer confusion without having to use awkward phrases or remove content. It seems incredibly hypocritical to pursue a site that sells no product but uses certain words while operating a site that sells products conceivably related to the general outdoorsiness of Boy Scouting under the name beprepared.com. (This URL choice likely has something to do with a legal battle over a domain name [theemergencyessentials.com] that doesn’t seem to have panned out for the company.)

The letter claims the company is “required” to “enforce its trademarks” in situations of possible confusion, but there’s nothing in trademark law that stipulates misguided actions like this one. A district court judge summed it up thusly:

The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer.

That’s certainly what appears to be going on here.

Filed Under: disaster preparedness, emergency essentials, trademark
Companies: emergency essentials llc

Pentagon Gets Busy Trademarking After Seeing Disney Try To Cash In On SEAL Team 6

from the taxpayer-money dept

Three years ago, we wrote about how Disney applied for a trademark on “SEAL Team 6” just two days after the Navy SEAL’s Team 6 killed Osama bin Laden. While public outcry resulted in Disney dropping the trademark application a few weeks later, the situation apparently woke up some trademark lawyers at the Pentagon to get busy trademarking.

We wrote about this situation a few months ago, in noting that the military has suddenly been looking to trademark just about everything, but a recent NY Times piece suggests that it was that run-in with Disney that really ramped things up.

The Marines registered only one trademark in 2003 and four in 2008. But as troops came home from Iraq and then Afghanistan, efforts began picking up. In 2010 and the first half of 2011, the Marines registered nine trademarks.

Then Navy SEALs killed Osama bin Laden in May 2011, Disney tried to trademark the name SEAL Team Six, and things ratcheted up from there. The Navy immediately fired back at Disney, filing its own trademark for the phrases “SEAL team” and “Navy SEALs,” terms that, the Navy said in its filing, imply membership in a Navy organization that “develops and executes military missions involving special operations strategy, doctrine and tactics.”

Of course there had been some earlier abuses, including this story we had back in 2008 concerning trademarks on military hardware. Still, it’s difficult to see how the government should be able to gain a trademark in the first place on things like the name of a military team or division. Trademarks are supposed to cover use in commerce. And the government isn’t going out and selling the “SEAL team.” You can make an argument that no one should be able to get such a trademark, but it’s unclear why the government should get it at all.

Filed Under: defense department, navy seals, pentagon, trademark
Companies: disney

Creator Of Flappy Bird Clone Claims His Duplication Is Covered By Trademark

from the who's-the-actual-moron-in-a-hurry-here? dept

Possibly one of the last bits of cultural detritus from the extremely bizarre Flappy Bird story makes its way to us via chiptune artist Ben Landis, who spotted a rather audacious claim from an entity calling itself “Samuel David Entertainment.”

Samuel David Entertainment recently released “Flappy Bird: Remake,” a game that appears to be a very slightly altered “Flappy Bird” clone. Despite it being an obvious knockoff, this message appears in the game’s “Description.”

Please note: ‘Flappy Bird: Remake’ is trademarked property of Samuel David Entertainment. All items, names, places and other aspects of the game are owned by Samuel David Entertainment.

Samuel David Entertainment is not affiliated or related to Dong Nguyen and the legacy Flappy Bird.

Should you have any enquiry regarding intellectual property issue please contact us at outlet.shopapp@gmail.com

First off, “Flappy Bird: Remake” is certainly not a registered trademarked, at least not in the US. Pending trademark applications for the original Flappy Bird — filed by Dong Nguyen — are currently pending in the US Patent and Trademark Office database. And while you don’t need to register to have a valid trademark, it’s difficult to see how “Flappy Bird: Remake” could even have a common law trademark. Either Nguyen is going to have the trademark or there won’t be one. Secondly, it takes a special kind of person to copy someone else’s game entirely and then try to prevent future cloning via a bit of peremptory legalese.

Samuel David couldn’t even be bothered to use his own screenshot on the game’s iTunes page.

> Note that the shot still contains the “© .GEARS 2013” message put there by the game’s original creator, .GEARS. And the infringement runs into multiple layers, considering the original Flappy Bird was accused of utilizing Nintendo assets, something this clone would contain as well.

Adding to the sheer ridiculousness is the fact that the “Flappy Bird: Remake” support page is… a Vietnamese news website.

You know, if you’re just going to clone someone else’s game, at least have the self-awareness to realize that trying to “protect” your “work” (especially with bogus claims) going forward just makes you look like an idiot, and a hugely disingenuous one at that.

Filed Under: clone, copy, copyright, dong nguyen, flappy bird, flappy bird remake, samuel david, trademark
Companies: gears, samuel david entertainment

Trademark Holder Sends Cease-And-Desist To Zazzle Over Products Using 3,000-Year-Old Greek Letter

from the once-again-removing-the-'intellectual'-from-'intellectual-property&# dept

Over the past few days, an IP battle has erupted at print-on-demand service Zazzle over a 3,000-year-old Greek letter. New York artist Paul Ingrisano was granted a trademark for the following symbol, apparently in reference to his initials.

This safely stashed in his pocket, he directed attorney Ronald Millet to order takedowns of infringing merchandise. Ingrisano’s cease-and-desist demanded that Zazzle not only remove any items including the pi symbol (with or without the full stop) but to provide a full accounting of what had been sold and cooperate on a full audit of pi-related merchandise sales. The letter warned that failing to do so would open up Zazzle to accusations of “willful infringement.”

The proper response — a tersely worded hahahawhat? letter — was nowhere to be found. Instead, Zazzle yanked a bunch of merchandise and told vendors/customers they were free to file counterclaims, but otherwise it wouldn’t be reinstating products. (Zazzle has since reversed course and has restored many of the removed items, while thanking its community for feedback, but never actually apologizing for the quick trigger takedowns.)

Ingrisano’s trademark, as ridiculous as it is, contains a period at the “end,” something most pi-related merchandise does not include. (People have also pointed out that his trademark appears to be a direct copy of Wikipedia’s pi image.) On top of that, the trademark covers a very narrow category of goods (albeit one that could be read expansively).

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms

This narrow category would exclude many of the items taken down by Zazzle to comply with the C&D. His attorney’s letter doesn’t specify which sort of items are infringing and worse, makes a general claim over the pi symbol itself, rather than Ingrisano’s registered pi-and-full-stop.

It has been brought to our client’s attention that your business… has been using the mathematical symbol “pi,” referred to herein as the “pi trademark.”

That claim isn’t remotely true. The trademark registration actually says this:

Description of Mark: The mark consists of the pi mathematical symbol followed by a period.

This appears to be Ingrisano attempting to cash in on the work of others. With ridiculous trademark in hand (and a willing attorney in tow), he’s now attempting to enforce his trademark, starting with a whole lot of Zazzle users who aren’t even using the registered mark. His lawyer at least seems to understand that this legal action isn’t going to be warmly welcomed.

Attorney Millet defends the cease-and-desist letter. He says that to his knowledge none of the designs sold through Zazzle included the exact trademark π.—pi followed by a period—but some of them were confusingly similar to his client’s design.

“Some clearly have a pi sign and look similar enough that folks out there might confuse it with products that my client also sells,” he says. “I saw the back and forth on the blogs of some of the sellers on Zazzle expressing their disappointment. I can see that as an understandable reaction, from a personal standpoint.”

That’s great and all — an attorney with some intact humanity — but “confusingly similar” apparently means the pi symbol itself, at least in this context. When the only difference between a registered trademark and an ancient Greek letter is a period, everything is “confusingly similar.” And as for his claim that these products might be “confusing” for people seeking Ingrisano’s goods, it would help greatly if he could point to anything as evidence of his client’s market presence. (Zazzle customers have only been able to track down this single Etsy listing, which is decidedly not athletic apparel.)

Of course, Millet may not be the best person to be tasked with enforcing trademarks, seeing as he states the following (and in all-caps) in the C&D’s opening paragraph.

Accordingly, you are hereby directed to CEASE AND DESIST ALL COPYRIGHT INFRINGEMENT.

Yeah. That’s not even what’s going on here.

Kevin Poulsen at Wired asked Millet if Ingrisano had trademarked any other mathematical symbols.

“No,” he says. “None that I’m aware of at least.”

But he is seeking a trademark on this:

Currently published for opposition, it’s already run into a dispute from Reebok (which has a trademark on “I3”), which has resulted in the following exclusion being written into the super-long list of products Ingrisano is hoping to market with his co-opted texting symbology.

all of the foregoing excluding special-purpose basketball apparel, namely, basketball footwear, basketball headwear, basketball shoes, basketball jerseys, basketball uniforms, basketball warm-up suits, basketball pants, basketball bottoms and basketball tops

The US trademark office has entertained many, many opportunists, and Ingrisano’s trademarked “pi.” is no exception. That an attorney might pursue baseless claims on behalf of someone like Ingrisano isn’t surprising either, but that says at least as much about Millet as it does for the Brooklyn artist who has yet to enter the same market he’s seeking to exclude others from.

Filed Under: paul ingrisano, pi, ronald millet, takedowns, trademark
Companies: zazzle

Google Trademark Bullies Obviously Non-Commercial Parody Site

from the no-need-to-do-this dept

We’ve been disappointed in the past to see Google descend into the land of trademark bullies, and had hoped that the company had learned its lesson. Unfortunately, it appears that the company still will dip into trademark bullying when it really should know better. The latest came in response to some pranksters setting up a (quite amusing) parody site called Google-Nest.org, playing on the fact that Google recently purchased Nest, the makers of internet connected thermostats and smoke detectors. The site was clearly mocking Google’s expansion into… well… everything, with fake product announcements for things like Google Trust, Google Hug and Google Bee (your personal drone). The whole thing was clearly parody, and while it was clearly making a statement about how integrated Google has become into many people’s lives, you would have hoped that Google’s trademark lawyers would have a sense of humor and let it go.

They did not.

If you go to the link above, you now see a message from Peng! Collective, who put the site together for the Republica event in Berlin, saying that they didn’t want to get involved in a big legal battle. Of course, the internet never forgets, and there are plenty of archives of the original.

The whole thing is incredibly questionable on Google’s part. Not only is the work clearly parody, but it’s non-commercial. And trademark only applies to commercial uses.

The EFF has stepped in and sent a letter to Google on behalf of Peng! Collective questioning why Google decided to be a trademark bully over this, and reminding Google (and us) of the neat practice that Linden Lab pioneered years ago — a proceed-and-permit letter instead of a cease-desist-letter on trademark issues.

The site is a pure political commentary. Indeed, its launch has long since been recognized as such by a variety of news organizations. U.S. authorities consistently support the basic notion that trademark law does not reach, much less prohibit, this kind of speech regarding a matter of substantial public concern. Simply put, “The Lanham Act regulates only economic, not ideological or political, competition . . . Competition in the marketplace of ideas is precisely what the First Amendment is designed to protect.” …

First, use of the Google name and logo on the site is fully protected by the nominative fair use doctrine…. Indeed, courts have noted that nominative fair uses are particularly likely to be found in parodies….

Second, given the content of the site, and the ample publicity the spoof has generated, all of which recognized as satirical and parodical commentary, it is difficult to imagine that any Internet user would be confused.

Third, the site is sheltered by the First Amendment…. Again, there is nothing on the site that would lead consumers to purchase goods or services based on a mistaken affiliation.

Finally, my client’s action is entirely noncommercial and, therefore, statutorily exempt from the Lanham Act.

There’s even more in the letter, including the fact that since this all happened in Germany anyway, the Lanham Act (which governs trademark law in the US) doesn’t even apply.

Either way it’s disappointing to see Google go down this path. Yes, as trademark lawyers love to point out, unlike with other forms of intellectual property, there is more of a requirement that you actively protect your marks under trademark law, but (contrary to what some believe) this does not mean that you have to go after everyone using your mark, especially when it’s clearly not infringing for all of the uses listed above.

As in nearly every case of trademark bullying, the end result just makes the bully look silly and legalistic, where they could have come out much more reasonable and accommodating. Hopefully, this time, Google learns its lesson on these kinds of things. Sure, the Google-Nest site was mocking Google, but big companies need to learn to not just have a sense of humor about these things, but to recognize that this is part of the public discussion and debate about their role in the world. Google could have jumped into that discussion or avoided it all together. But, it chose one of the worst options: to go with a threat.

Filed Under: cease and desist, germany, google nest, peng! collective, proceed and permit, trademark, trademark bullying
Companies: eff, google