Trademark Litigation | "Chicken Chain Says Stop, but T-Shirt Maker Balks"

By: JESS BIDGOOD
Source: http://www.nytimes.com
Category : Trademark Litigation

For Bo Muller-Moore, a folk artist from Vermont, the T-shirts he hand-screens with the slogan “Eat More Kale” are a dream fulfilled: a quirky project that has emblazoned this leafy mandate across the chests of people worldwide, and one he wants to trademark.

So when Chick-fil-A, the fast-food chain that says it sells 537 sandwiches a minute with the help of the slogan “Eat mor chikin” (the words have been penned by cows), sent him a cease-and-desist letter this fall, Mr. Muller-Moore decided to fight the company, setting off a groundswell of local support and national media attention.

“This is corporate bullying,” Mr. Muller-Moore said. His lawyer, Daniel Richardson, sent Chick-fil-A a letter in November, contesting its claim that the slogan “is likely to cause confusion of the public and dilutes the distinctiveness of Chick-fil-A’s intellectual property.”

Chick-fil-A does not have any stores in Vermont. The closest one is in Nashua, N.H., about 120 miles from Montpelier, where Mr. Muller-Moore, an Alabama native, has lived for years. He began making the shirts in 2000, at the suggestion of a local farmer. The few dozen printed at first have swollen into thousands of orders filled every year, he said, but he still works out of the overflowing studio above his garage, buying his art supplies nearby.

“Someone called me a Vermont institution, and it made me blush,” said Mr. Muller-Moore, who has received plenty of local help. His legal representation has been pro bono; a local soup purveyor put a petition on Change.org; and a onetime aide to former Gov. Jim Douglas is assisting him with public relations. And the current governor, Peter Shumlin, has also thrown his support behind the cause and was planning to appear with Mr. Muller-Moore at a news conference.

Mr. Muller-Moore has also taken to Facebook to rally fans of his work, who posted on his wall, sent supportive e-mails and put more than 16,000 signatures on the petition in just over two weeks. Their motivations varied, he said.

“There are certainly the purists and they think of kale as this superfood,” Mr. Muller-Moore said. “I think other people see it as more of this local food movement. I think, in Vermont, other people see it as a shirt printed by Bo down the road.”

For those supporters, the message is simple: Don’t mess with Bo, and don’t mess with Vermont. “I think I’ve given away enough stickers and shirts around here that Vermonters take this very personally,” Mr. Muller-Moore said.

It is a place that prides itself on an artisanal, local business culture and, Mr. Muller-Moore says, is “very supportive of its artists and what it deems as its own.”

In 2009, the Rock Art Brewery, in Morrisville, Vt., received a letter from Hansen Beverage Company, which owns Monster Energy drinks, saying the microbrewery’s Vermonster beer violated their trademark.

Matthew Nadeau, the brewery’s president and co-founder, said one of the state’s largest beverage stores immediately boycotted Hansen’s beverages. “This is the biggest store in the state and they’re standing behind us, so we knew we weren’t going to fight alone,” Mr. Nadeau said.

That story spread on social and traditional media and Vermont’s senators, Bernard Sanders and Patrick J. Leahy, got involved. Mr. Leahy wrote legislation that required the government to survey how trademark law is used by large corporations, though Mr. Nadeau lamented that it was not distributed widely enough to solicit many responses from small businesses. The two sides eventually came to an agreement without litigation, and Rock Art continued to use the Vermonster name.

Chick-fil-A sent Mr. Muller-Moore a warning once before, in 2006, but did not pursue that matter. Now, Mr. Muller-Moore and Mr. Richardson are awaiting a response from the company, and they plan to continue with their trademark application.

In a statement, Chick-fil-A said, “We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.”

But Mr. Richardson does not think the company’s argument would hold up in trademark court. “We believe it’s pretty clear, the issue of dilution and confusion aren’t really triggered here,” he said. “There’s no one out there that’s going to come forward and say, ‘I thought I was buying a Chick-fil-A product but I got this T-shirt.’ ”

For Mr. Muller-Moore, the fight is about those T-shirts, and his small business — not kale. Although he does not mind kale.

“If it’s cooked well, it’s good,” he said. “If it’s cooked poorly, no thank you.”

Source: http://www.nytimes.com/2011/12/05/us/eat-more-kale-t-shirts-challenged-by-chick-fil-a.html

Trademark Litigation | "BMW’s Long March to Court"

By: Stan Abrams, China Hearsay
Source: http://www.businessinsider.com
Category: Trademark Litigation

BMW

This intellectual property case is really funky, as in “WTF is this all about?” Here are the basic facts, and then I’ll chime in with a bit of admittedly confused commentary:

The China Academy of Launch Vehicle Technology (CALT) is suing BMW China for allegedly using images of the Long March rocket in advertisements without permission. The case opened in the Fengtai district court Wednesday.

I didn’t know there was a China Academy of Launch Vehicle Technology (中国运载火箭技术研究院). Cool. You learn something new every day.

So it sounds like some sort of trademark infringement case. CALT apparently has the rights to a logo that was used by BMW without authorization. Case closed, yes?

These additional facts do not help at all:

According to the court, CALT filed the lawsuit alleging BMW used its figurative mark CZ-2F rocket in an advertisement in Vistastory magazine in 2010. The academy is asking for 100,000 yuan ($15,708) in compensation.

“CZ-2F rocket’s image is well-known for being designed to launch the Shenzhou spaceship and Tiangong-1,” said Deng Zemin, the lawyer representing CALT. “Clearly BMW used the fame of the rockets to promote their products and increase their market influence without approval, which constitutes ‘unfair competition.’”

OK, first, is it the figurative “mark CZ-2F rocket” or the “figurative mark,” which is an image of the “CZ-2F rocket”? In other words, are we talking about a trademark here or is the word “mark” being used as a military-style identifier along with the number? I already have a headache.

Right, on to the IP case. Thanks to whoever wrote this story, I really have no idea what sort of legal theory we’re dealing with. At the top of the list, we’d have to put unfair competition, since that was mentioned specifically. However, that quote probably isn’t definitive.

What are the other possibilities? Copyright? A rocket isn’t protected by copyright law, even if the design is distinctive. Images and renderings of the rocket would be protected (e.g. a photograph, blueprint, schematic, or painting) if CALT owned those rights.

Not much to go on in the article, although this sounds a lot like copyright:

BMW argued, since the Long March rocket family has been launched more than 100 times, the images in the advertisement are considered public domain, according to a court press release.

Does that mean that BMW was using photographic images, which might be protected? Unfortunately, that’s the only indication of a copyrighted work, and since the article also contains the words “trademark” and “unfair competition,” I am rightly confused. (More on this later when we get to trademark.)

Just to be thorough, what about a design patent? Possible. The aesthetic features of the rocket could be protected via industrial design, but there is no indication that we’re dealing with that sort of IP here.

That leaves us with trademark as the “anchor” form of IP that would be used in an unfair competition case. Does CALT own some sort of trademark on the image of the rocket as a logo?

Let’s assume for the moment that CALT does have such a trademark. If so, what products/services would it be registered under? Which class includes “rockets and other launch vehicles”? Class 12? What about automobiles? (I assume that BMW’s ads involved car sales).

Crap, I might as well waste more time by doing a quick search . . . yeah, there it is. Class 13, some sort of rocket logo on several different mechanical devices including rockets and launch platform technology. And yes, they also have the logo in Class 12 under . . . wait for it . . . automobiles. Pretty wide trademark coverage for a rocket.

So if BMW used an image in car ads that looks like that logo, then I’d say their case is in trouble. Doesn’t matter that the image of the rocket is out there in the public domain, that’s copyright-speak. If their image looks like that logo, then there’s a trademark argument to be made.

[Note: According to a super secret source of mine working on a similar litigation with CALT as the plaintiff, the trademarks in that matter were not identical or substantially similar.]

If you’re still confused as to why that “public domain” argument is irrelevant, consider a company like Great Wall Wine, whose logo includes an image of the Great Wall. That image is certainly out there in the public domain, yet a private company like that can still get protection for it as a trademark. Copyright never enters into the picture. Get it?

This brings us back to unfair competition and this claim:

“The slogan ‘BMW: experience the passion while improving our society,’ copied an idea on CALT’s website reading ‘rocket boosters help China take off,’” Deng told the Global Times. “It also implies the company has something to do with the launch. It’s totally inappropriate.”

This suggests “passing off,” which is a violation of the Anti-unfair Competition Law. I’m open to the trademark infringement theory (although now that I’ve seen the actual logo (which is kind of ugly), I’m skeptical that BMW used an image that was substantially similar), but I don’t really have enough information to say anything about the passing off charge. Without seeing the ad itself, all we have is the language “BMW: experience the passion while improving our society.”

It’s possible that the ad is suggestive of a BMW role. You never know. But so what? Unfair competition is all about the competition, and there needs to be commerce going on here. BMW is not passing off its own rockets as originating from CALT, it’s selling cars. Where’s the consumer confusion? And as BMW’s lawyer said: “as an incredibly famous automotive brand, it’s unnecessary for the company to use CALT’s trademark to boost its image.” That’s not a defense, but it’s true nonetheless.

By the way, in that other ongoing litigation involving CALT and this trademark, the legal theory there is also unfair competition, even though the defendant is in no way a competitor of CALT. Maybe that was chosen because the straight-on trademark infringement case was weak.

If I was CALT, and the two images are indeed similar, I’d stick with the trademark infringement theory. If the trademarks are different, I really don’t know where this whole thing is going.

Also, if anyone can send me a link/image to that BMW ad, that would be nice.

Source: http://www.businessinsider.com/bmws-long-march-to-court-2011-12