"given that AB has admitted its run into this situation in the past, it's a bit surprising that the company hasn't even attempted to get a trademark on "the queen of beers" to avoid this very thing in the present."
It's not surprising really, because AB knows that they have a famous mark and that they have the legal means to protect their tagline without filing applications for every possible iteration of their mark. Why should AB have to file "The Prince of Beers" or "The Duke of Beers" just to protect their mark? They don't, because they understand, and courts understand, how language works.
The other reason they don't file such marks is because that would be fraud in the eyes of the trademark office. When you file a trademark application for a mark that is not yet used, but based on your intent to use it in the future, you must attest, under penalty of law, that the applicant intends to use the mark. In the eyes of the law, if AB doesn't intend to use the slogan "The Queen of Beers", any new application would be considered fraudulent. That's not to say it doesn't happen all the time, but it's not a sound method of protecting one's trademarks.
"King of Beers" is a well known slogan, and most folks know the Budweiser tagline. I'm actually surprised that they didn't get an outright rejection from the trademark examiner to begin with. Any application for a tagline for a beer using "(insert any royal title) of Beers" will get AB's attention and if it goes to court AB will win in a heartbeat. It is most certainly confusingly similar and it would easily mislead consumers as to the source of the product.
Again, ask yourself this question - would party B have chosen the name/brand/trademark that they did if it were not for the existence of the name/brand/trademark of party A. If the answer is no, then there's a good chance that party B is trading off the goodwill, the notoriety, the fame of party A.
The Doobie Brothers seem to own the only registered trademark that includes the word DOOBIE for entertainment services (there is another recently filed application for DOOBIE DEMOLITION but it's a good bet it get's rejected based on the existing reg), but whether the Doobie Brothers will be successful or not in this suit may indeed depend on whether they have been defending the name consistently in the past. If there are a slew of other "DOOBIE" named bands making music and they have been allowed to perform without challenge for a long period of time it will be very hard for the DB to put that genie back in the bottle. However, if the DBs have a been enforcing the DOOBIE BROTHERS trademark consistently and taking action against other "DOOBIE" named bands in the past then they will most likely prevail.
In these situations I always ask this question: would party B have chosen the name/brand/trademark that they did if it were not for the existence of the name/brand/trademark of party A. If the answer is no, then there's a good chance that party B is trading off the goodwill, the notoriety, the fame of party A.
"The other day I went to a restaurant and asked for a Coke. The crazy waiter man said, "We have Pepsi."
I think the scenario is more like…I walked into the restaurant and before I sat down I asked the hostess seating me "Do you have Coke?" She says "we have an extensive beverage menu". Then, I ask the waiter for a Coke he comes back with the beverage menu. After looking up and down a few times at the menu to see where the Coke was I ask "do you have Coke?" The waiter asks if I want a Pepsi. I say "I don’t like Pepsi, I’d like a Coke". The waiter queries, "Would you like a Fanta or one of our other refreshing beverages?". "Do you not have Coke?". "These are the beverages we offer" says the waiter, again presenting the beverage menu. "Whatever", I say. Not wanting to leave and find another restaurant, I say, "Just give me a glass of water", and you stay and have dinner anyway.
My mom used to call that a “lie by omission”. The lie got you in the door, rather than move on to the place next door. Then the continued lie kept you looking at other items on their extensive menu, and the lie was not discovered until you were well invested in having dinner and getting hungier by the minute. If they were honest and told you they didn’t have Coke right up front you would then have the informed option of moving on right away, or choosing one of their other options.
Amazon wants to string you along because the longer they can get you to stay the better the chances you will make some kind of purchase from their extensive menu.
Uber does seem to pick and choose which laws it wants to follow and which it chooses to ignore, and where. Either that or things are just moving so fast that they're making it up as they go along. Risky either way with those kinda semolians involved.
As with so many of these stories here, one should ask this question - would party #2 have selected the trademark they did if it were not for the fame of trademark #1. If the answer is no, then you have to wonder if company #2 is trading on the fame of company #1.
Looking at the first view it's pretty clear that the chocolate folks were playing off Channel mark. They probably thought it was cute. But that's risky, and even after they made changes they are now on Channel's radar.
The headline should really reflect that the issue is not with ownership of the number "5" but a slightly more distinct "No 5" where the "o" is of a certain style, the use of which conjures up Channel's brand.
Agree completely about the ability of drinkers on various levels to discern what's what, but on the retail level, and even for promotions in bars and restaurants, these products share advertising space, and they are, to some degree, competing for the same "share of stomach". That would suggest they are related goods. Channels of trade is an element that will be consider, along with the sophistication of the user.
Yeah, I agree. The original is a pretty unique tune, and the second sounded like a copy to my ear from the moment I heard it.
I get the idea that everything is copied and nothing is original, riffs get borrowed, producers want to capture a "feel". If Robert Johnson were around he'd have beef with a full half of the British invasion. But this isn't just a riff, to me the new song sounds pretty much like a copy of the whole old song, complete with 'woo's.
It's surprising it came out of the studio like that without someone catching it. Some remixing might have blurred the lines between the two songs enough to keep it out of court.
Or they could have just done what Sam Smith did with Tom Petty...http://www.rollingstone.com/music/news/tom-petty-on-sam-smith-settlement-no-hard-feelings-th ese-things-happen-20150129
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.