Trademark protection is limited to specific product categories in most cases, but in cases where a "famous" mark is involved there is the claim of "dilution" which can reach across product classes. One of the aspects in judging of a dilution claim is duration of use and consumer recognition, and these old brands have both of those things in spades.
And I would agree that if Macy's had used the old store brands as house brands they would probably be in a better position to defend the names broadly, assuming they used them prominently and consistantly. If they had been used, even minimally, it's likely the brand recyclers would just pass them over until the brands finally kick it for good.
That said, Macy's is flailing. They're putting up as many road blocks and causing as much delay as they can, but they will lose if it goes all they way.
These marks are not only merely dead, they really, most sincerely dead.
This seems to be an attempt to "keep the register clean", which is a classic corporate IP strategy that is all about quantity and not quality. A big pocket company will oppose, threaten to oppose, or send C&Ds to any and every new applicant using certain words, in hopes that most applicants will just withdraw. After a time this means there are fewer and fewer people using those words, thus making it easier for the big pocket company to stake out their claim around that word, and then using that as ammunition to go after yet more new applicants. It becomes self fulfilling, as more the sophisticated applicants recognize the pattern and avoid those words, the less knowledgeable applicants fold quickly.
Yeah, that was uncalled for. I get frustrated when I try to bring up counter points here and get jumped on. My apologies. I'm usually much less prickly.
Honestly, I had no idea what Mike's did elsewhere until your comment, but I appreciate TD and the efforts of the folks here. My concern remains how certain aspects of IP get glossed over, misinterpreted, or just down mistreated, and by some writers here more than others. Even if the writer doesn't agree with the various aspects of trademarks or IP and the related law, they should be part of the discussion, and when that's absent it seems like the writer doesn't completely understand the subject.
Sorry John, I'm not sure I understand. Sriracha had once meant only one specific sauce to Americans, but that now no longer holds. With others using the term, it now generally describes a type of chili sauce. Is that not the same as Frisbee, or Asprin, or Thermos?
I guess you could say the loss of Mr Tran's once valuable trademark to descriptiveness?
"Sriracha" may well mean "chili sauce" in other places, but not here, and with use over time, Mr Tran most certainly gained the "acquired distinctiveness" that would allow the registration and protection in the US of what may be a descriptive term in other places.
Ouch, amoshias, I was going for sarcastic, not sneering, and I actually like TD a lot so what you see as trolling I see as trying to widen the perspective here and spread some info. I have no idea how much Mr Tran knows about trademarks, but I do know enough to hold my own.
And while Mr. Tran has allowed sriracha to roam free in the world, bless his heart, to say that he is not "getting into the trademark game" would be incorrect. Mr Tran's still brands his products with label graphics and a bottle shape that are protected by registered US trademarks.
One doesn't need to file an application for the use of the term to be considered trademark use, regardless of how the esteemed Mr Tran viewed the name. He created a unique product, put a name on the product, consistently sold the product under that name, and in time his customers came to identify the name with this product of a certain flavor and quality - boom, a trademark is born.
Now once Mr Tran allowed others to use the same name on their products of varying quality and taste, customers could no longer trust that the name identified Mr Tran's unique product, and now his customers have to look for Mr Tran's unique label design and/or bottle shape, both of which Mr Tran has protected with trademark filings and does seem to defend consistently and regularly.
So yes, Mr Tran had created recognizable tradeamrks in his brand name, label design and trade dress, but he has chosen to allow his word mark to become generic and only defend his other IP.
"Chalk up another victory for Tran, who allowed the use of his brand name so widely that he's effectively protected against someone trying to come along and lock it up." - A novel way of looking at the loss of Mr Tran's once valuable trademark to genericide.
"Tran goes on to note his belief that more exposure through use of his product's name will mean even further growth." - It surely will mean more growth, and hopefully Mr Tran will see some of that growth himself. Hey, as long as Mr Tran is happy, good for him.
Your efforts to explain the law here are admirable, but it's a waste of time. There is a POV here that must be maintained and no ammount of logic or reasoned application of the law will make it through the filter. Hey, it gets them their clicks, but that dripping sound they don't want to hear about is the loss of credibility. Ah well.
Indeed, your comment is spot on, but you won't get many positive responses here when you try to talk about basic trademark law concepts. One doesn't really have to go far beyond the headline (or the byline) to know where this would go.
I mean, it really doesn't matter that FAT and CHUBBY are synonyms, or that both logos are similarly shaped black bowls full of noodles, or that the new business is opening in close proximity to the first business, right? How could anyone possibly confuse the two?
It's unfortunate that you don't recognize the effect that the omissions have on the article, and the teenie bit of credibility it drains from the TD reservoir. The subject may rank low in the grand scheme of IP problems, but the story does highlight some of the issues I have with TD lately. Hopefully those issues will be limited to stories about beer.
Sorry, I think I misunderstood the question. Use of a mark is essential for gaining trademark rights, but as John says government entities are allowed to register trademarks even when they aren't being used for commercial purposes.
I'm actually glad we don't have the public entity category thing here in the US. Those marks get cited against new applicants even if the goods and services are completely different. Worse, the marks remain perpetually as applications and never register (I guess because no use is required and renewal would be impossible) so they stay active on in the Canadian database long after the entity has stopped using them.
"Portland, a city, initially sent a cease and desist letter to Pabst Brewing Co." - there were a number of pertinent events that occurred prior to the C&D, the most important being that Pabst submitted their design to Portland for approval, which is not even mentioned here.
"one is a god damned city and the other is a brewery." - as mentioned, the design in question is for music festival in the city of Portland, not a brewery. When looking at the question of confusion, that matters.
"first off, they're obviously similar. So similar that moronic visitors or residents of the city of Portland will somehow think that Pabst bought their town, or vice versa? Probably not." - Pabst created the design with the Portland sign in mind, an homage perhaps, and submitted for permission from Portland to use the ad. The act of Pabst seeking permission is acknowledgement that the designs are similar. It may be moronic to think Pabst bought the city, but it would not be a jump to think that the city sponsored, or was somehow associated with, the festival. Further, when a sponsor's product is for adults only, any association of the event with the city of Portland may raise even more concerns.
"It may be that the city had planned on using images of the sign on shirts and clothing and the like, but even if that's the case, it wouldn't conflict with Pabst putting on a concert. Pabst and the city of Portland aren't competing with one another in any kind of marketplace, so the whole dispute was fallacious to begin with." - Saying they aren't competitors is as misleading as saying that no one will confuse the city with the brewery. We’re not talking beer or t-shirts, were talking about Pabst's use of a design that they acknowledge is based on an iconic design owned by the city of Portland for use at an event within that same city.
There are more than enough trademark owners who abuse the system and overreach to fill these pages over and over. In this case it seems like key facts were left out, which ends up portraying a reasonable effort to balance IP rights and public use as an overreach by a trademark bully.
The most interesting thing that I took from this is that Portland apparently has a process in place to grant permission to private parties who want to incorporate the city’s iconic images into their advertising. That seems unique and forward thinking, and something that TP and its readers could really support.
The US doesn't have anything like the kind of protection granted for "public authority" trademarks like Canada grants under Section 9(1)(n)(iii).
However, the US follows common law, which means there are certain rights gained simply by using a trademark in the US without having to file an application or registration. How the Portland mark is actually "used" in this case is subject to debate.
Does Portland actually own a US registration for the design? If they don't they should consider filing an application.
Oy! What is left out of this story really does put Portland in a pretty bad light, and that strikes me as unfair.
Many factors make the two signs quite similar, the use of a four-legged horned animal jumping upwards to the right, above the outline of the state, in a very similar font. But that really doesn't matter a lick because Pabst has essentially admitted that the two designs are similar when they asked the city of Portland to approve the ad.
From the linked story, Pabst "created its own likeness of the sign" which is an "iconic sign" to the folks in the area, and followed Portland's "process to authorize using the sign in media, promotional materials or other causes". In filing that application Pabst is acknowledging publically that what they have created is a "likeness of the sign". That would likely give Portland all they needed in court to be successful.
The Pabst ad is not an ad for a brewery, it is an ad for an event taking place in the city of Portland. If such an event uses a likeness of a sign known to the people of Portland as officially representing the city of Portland some may mistakenly believe that the event is sponsored or approved by the city of Portland.
TD made similar mistakes with the Long Trail beer label story too. Is there something about beer trademarks that make TD writers get loopy?
My first thought was that it was a dig on all the back doors the NSA slips/forces/coerces into software and systems that can also allow the bad guys in. Regardless, this seems like a sentence that is open to a number of interpretations, and to spend the time calling it out and dissecting it strikes me as a bit silly.
I agree. In this context it seems like a fitting response to turn off the spigot. But in the context of a monopoly or near monopoly, Google throwing its weight around and punishing anyone who dares suggest they pay for some form of content might not be such a good idea.