Hold the pickles…

There is one thing to be said for being famous in the trademark world, you get to have your trademark and eat it too.  MacDonald’s (yes, that MacDonald’s)  has apparently threatened suit against a startup restaurant in Oakland, California, for use of the name “Little Mac” in connection with their  food shop featuring a macaroni and artisan cheese dish. Arguing that use of the Little Mac mark would infringe upon their well-known brand “Mac” in connection with restaurant services, MacDonald’s has not so subtly demanded owners Erin Wade and Allison Arevalo go in a different direction.  From a trademark perspective, this could be an interesting case pitting the fame of MacDonald’s brand and the ubiquitous “Mac” against arguably descriptive use of “Mac” for macaroni, which is a principal ingredient to the shop’s signature meal.  A quick search on the USPTO website shows there already are variety of “Mac” formulated marks for food stuffs, including macaroni items,  including “Mac’s Market”, “Mac’N Cheese Munchies”, “Mac Iver”, “Tastee-Mac”, “Quick Mac” and others.   Mac List Why MacDonald’s chose to put its foot down here is still unclear, but they are almost certain to have it their way.

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http://blog.ceb.com/2010/05/19/when-is-a-chocolate-bar-iconic/

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Breaking Up the Ninth Circuit Is Not Ruled Out

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Parody? Me thinks not.

Just how far can a competitor go in parodying a competitor’s trademark to promote its own goods or services?  Courts have been fairly liberal in allowing use of names or slogans which, although not exact copies of registered marks, clearly trade on the goodwill or familiarity of that mark.  Take for example the case THE NORTH FACE v. THE SOUTH BUTT where both businesses market winter clothing and sports apparel.  It is not difficult to see why this is a concern for The North Face Apparel Company but any legitimate trademark owner has a hill to climb in enjoining such use.  Remember that the standard for infringement generally is whether a mark is “likely to confuse” the consumer or whether consumers may believe an association exists between the original trademark owner and a wayward competitor.    It seems self evident that a mark invoking comedic parallels or other distinctions from the registered mark is most likely not sponsored by the original mark owner.  In the North Face case, South Butt founder eighteen year old Jimmy Winkelmann has readily admitted that the fleece jackets and other clothing sold by his company are intended to mock people who wear brand-name clothing sold by outfitters like The North Face.  The fact that the case has now settled, and that South Butt continues to promote products on its website, suggests that the power of parody has won out again.  See North Face v. South Butt

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Lindsay Lohan Gone Too Far

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As a lawyer, there are not too many cases I see that don’t have some merit. But the latest foray by Lindsay Lohan against Etrade for the baby “milkaholic” commercial absolutely takes the cake.  Does she really think she is the only “Lindsay” out there?  Apparently so.  So much that consumers watching a baby commercial with three babys, one of which happened to be named Lindsay, would immediately associate it with her trial and tribulations?  Get over yourself please.   It takes more than a name to draw a connection (Madonna or Sting notwithstanding) and certainly a fairly common “Lindsay” with nothing else associating the character with the charming little baby (don’t even go there) is not so “substantially similar” that some association can be drawn.  Either Ms. Lohan is growing desparate for publicity or her lawyer has sold her on herself- which probably is not hard to do.

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A Place Unknown

January 28, 2010 Leave a comment

One of the often cited reasons for denying trademark registration is the contention that a certain mark is “geographically deceptively misdescriptive” which involves situations where a proposed mark includes or is principally made up of a geographic indicator material to the consumer’s decision to purchase those particular goods or services but the goods or services are in fact not derived from that particular geographic region.  Marks such as “boston baked beans”  for example, or “Colorado steaks” may be rejected from registration if the USPTO concludes that the reason a consumer would purchase such goods is the (mistaken) belief that the goods emanate from those areas.  While there may be a basis to register geographically deceptively misdescriptive marks that have been in use pre NAFTA (circa 1993), the majority of claims these days would be denied.  As a result, businesses hoping to trade off of well-known geographic locales had better be prepared to move there if they want to register such marks.

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