CEASE AND DESIST LETTERS FROM BEYOND THE GRAVE–SINATRA ED.

Bill Loizon, a Birminghan, Michigan entrepreneur with a self-proclaimed “passion for humor,” sought to register the trademark FRANKS ANATRA for his award-winning catering business.  FRANKS referred to his specialties, hot dogs and sausages, and ANATRA is Italian for “duck.”  Get it?

Neither did Frank Sinatra Enterprises, which filed an opposition proceeding in the Trademark Office to prevent Loizon from registering the mark.  In an opinion which in places reads like a fan letter to Old Blue Eyes, the Trademark Trial and Appeal Board last week ruled against Loizon.

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COOKIES & MILF

Vermont’s finest ice cream purveyors, Ben & Jerry, scored a quick, preliminary legal victory this past week against porn producer Caballero Video.  A few excerpts from the Temporary Restraining Order issued by the U.S. District Court in Manhattan will convey the flavor of the dispute:

 Defendants are hereby restrained from using the designations BEN & CHERRY’S, HAIRY GARCIA, EVERYTHING BUT THE BUTT, LATE NIGHT SNATCH, AMERICONE CREAM, NEW YORK SUPER FAT & CHUNKY, BOSTON CREAM THIGH, COCONUT 7 LAY-HER BAR, CHOCOLATE FUDGE BABES, PEANUT BUTTER D-CUPS, BANANA CLIT or any  substantially similar designations . . .    

and . . . engaging in any conduct that tends falsely to represent that, or is likely to confuse, mislead or deceive purchasers, Defendants’ customers and/or members of the public to believe that, the actions of Defendants, the products sold by Defendants, or Defendants themselves are connected with Plaintiffs, are sponsored, approved or licensed by Plaintiffs, or are in some way affiliated with Plaintiffs.

Unfortunately, the Court has sealed all visual images, so it is not possible to see what Ben & Jerry’s alleges to infringe its logos.

It appears that this TRO was entered ex parte; that is to say, without the Defendants appearing to oppose it.  Such orders are permissible provided an opportunity to be heard is promptly provided after the fact, and the court has scheduled a Preliminary Injunction hearing for Wednesday, September 12th.  Here’s hoping that Caballero will appear with capable counsel and defend vigorously.  The small body of law on what constitutes permissible parody, and is therefore protected by the First Amendment, can always use more elucidation.  Does this fall on the permissible parody side of the line, like the San Diego Chicken’s use of a Barney look-alike in some of his routines, or on the infringing side, like “a poetic account of the O.J. Simpson double murder trial entitled The Cat NOT in the Hat! A Parody by Dr. Juice”?

UPDATE (9/13):  We’ll never know.  Caballero threw in the towel and agreed to a permanent injunction yesterday.

RED SHOES DON’T MAKE IT

Here is what I know about Louboutin shoes — the bottoms (what I have now learned are called “outsoles”) are bright red.  Given how far removed I am from the vanguard of women’s shoe fashion, my association of red outsoles with the Louboutin brand ought to be conclusive evidence that red outsoles are one very powerful trademark.  That the red outsoles clearly operated as a symbolic indicator of the source of Louboutin’s goods, however, was not enough for one federal district judge in New York, who last year rejected Louboutin’s attempt to enjoin Yves Saint-Laurent from marketing its own red-outsoled shoes, holding that in the fashion industry color was an inherently “functional” feature, and therefore could not be granted trademark protection.  Now the U.S. Court of Appeals for the Second Circuit has partially reversed that ruling.  According the Court of Appeals opinion released yesterday, the red outsole may indeed be  a valid and enforceable trademark, provided it is limited to shoes, like those pictured, in which the color of the outsole contrasts with the other parts of the shoe.  Because the YSL shoes were monochromatic, the denial of an injunction was affirmed.

An explanation of how the Court arrived at this Solomonic result follows the jump.

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THE BIG GAMES IS UPON US

With the opening ceremonies of the Games of the XXX Olympiad just a few days away, the media are awash in stories about the U.S. Olympic Committee’s trademark bullying.  (Olympic Gyro, a mainstay of Philadelphia’s Reading Terminal Market, it is reported, has been pressured into changing its name to Olympia Gyro.)  The Committee’s aggressive tactics are rationalized as essential to protecting a financial model that is highly dependent on the sale of official sponsorships, giving certain commercial enterprises that pay dearly for it the right to use the Olympic name and symbols.

Trademark enforcement by sellers of official sponsorships is especially obnoxious when it spills over into an attempt to monopolize the language itself, a phenomenon I first noticed back in 1999, when Atlanta Falcons coach Dan Reeves, in an ad for I-forget-what- pharmaceutical, remarked that it had allowed him to return just weeks after coronary bypass surgery to coach “the biggest game of the year.”  Could the NFL really stop him from saying “Super Bowl XXXII”?  (And what is it with trademark bullies and their roman numerals?)  Must your local appliance store resort to euphemisms like “get your big screen TV delivered in time for the big game”? A quick refresher on the oft-neglected trademark doctrine of nominative fair use after the jump.

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HERSHEY BAR GETS ITS ®

As a kid I was partial to the simple bas-relief design of the classic Nestlé’ bar.  Once the raised border that surrounded the entire confection had been breached, the size of the next bite was limited only by the size of my mouth.  I preferred to eat one letter at a time, beginning with the final ‘e’ and its puzzling acute accent.  The Hershey bar, in contrast, with its division into individual, separable pieces, seemed overly fussy, as if it had been designed by my mother to discourage gorging, to enforce her edict: “Don’t be a pig, you’ll make yourself sick.  And share some with your brothers.”
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