Tag Archive for: Trademark

Ch-Ch-Ch-Chia Pet Just Applied For Trademark On Jingle For Some R-R-R-Reason

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I’ll forgive you if you haven’t spent a lot of time thinking about Chia Pets lately. This is, after all, 2020 and not the 90s and we a couple of things going on that have probably held your attention. If you’re so young that you don’t remember these things, they’re essential potted plants shaped like a variety of animals, objects, and celebrities, laden with grass seeds that grow and look like hair and oh my god why is this a thing? Regardless, the product, first developed in the 70s, became popularized in the 90s and was advertised with a well-known jingle: ch-ch-ch-Chia! While Chia Pets are still sold today, they are no longer the cultural icon that they were in these earlier times.

And yet, for some reason, it was only this past week that the folks behind Chia Pets decided to try to trademark that famous jingle.

Standard Character Claim: No

Mark Drawing Type: 6 – NO DRAWING-SENSORY MARK

Description of the Mark: The mark consists of the sung words CH CH CH CHIA in the notes E4, E4, E4, A4, G4.

Now, while that trademark description does indeed look decidedly silly, it certainly is possible to trademark sounds and jingles. The bar for trademarking sounds is a bit higher than other marks, mostly centering on the public’s association with a sensory mark and a product, but Chia Pets’ jingle probably fits the bill.

This means that sound marks – just like visual trademarks – may be easily registered when they are:

“arbitrary, unique or distinctive and can be used in a manner so as to attach to the mind of the liste­ner and be awakened on later hearing in a way that would indicate for the listener that a particular product or service was coming from a particular, even if anonymous, source.”

It’s worth noting that any jingle like the above would also be immediately covered by copyright protection upon creation. That’s one of the many factors that has me wondering why in the world this trademark had to be applied for in 2020. Add to that the waning notoriety of Chia Pets and its jingle generally, along with my having never heard of anything remotely like any competitors in the “Clay planters for flowers and plants” industry trying to use the jingle, and this all becomes all the more confusing.

Why, after fifty years in business and decades of using this jingle, does it need to suddenly be protected by trademark law?

Techdirt.

No, Trademark Trolls Collecting Various Fake Names For A Washington Football Team Will Not Get In The Way Of The NFL Team’s Renaming

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As was widely expected, the NFL team based in Washington DC, formerly using the “Redskins” as their team name, will be renaming themselves after years of people pointing out that the name is racist, and the team being so obnoxious that it has literally sued native Americans who had previously sought to cancel the team’s trademark. Either way, what finally got the Dan Snyder-owned team to ditch the name was… money, of course. The biggest sponsors of the team began to threaten to pull support, and that finally convinced Snyder to do something he should have done a long time ago.

Of course, the story that many are focusing on following the official announcement to find a new name is… the fact that some dude has been busy filing trademark applications on a bunch of possible replacement names.

And if you don’t understand trademark law, that might sound legit, except that none of this is getting in the way of the team picking a new name. We’ve talked in the past about how people always try to rush in and trademark stuff in hopes of getting some crazy payday, but that’s not how trademark law works. You can apply for any trademark (though the costs will add up) but you’re unlikely to get it unless you have actual plans to use it in commerce and you’re not just registering it as a troll.

To his credit, Philip Martin McCauley at least claims that he understands all this and has even set up a website (which I’m not linking to) which offers merchandise featuring the logos of his totally fake Washington DC football team names. That at least gives him a modicum more defensibility than your everyday trademark troll.

United States law requires that the holder of a trademark actually use the term in question.

McCaulay is aware of the provision, which is why he’s spent thousands of dollars creating team merchandise to back up his claims.

In doing so, he said he’s no ordinary trademark squatter, a term with negative connotation used in similar situations.

“A squatter reserves a name with no intention to use it,” McCaulay said. “I went to the extreme of buying a lot of merchandise, making it my brand, and selling it.”

But the idea that this will, in any way, prevent the actual football team from choosing a name it likes is pretty silly. Perhaps the team would pay off McCauley just to avoid the hassle, but it won’t be because of any legitimate claim to the trademark — just a pure nuisance fee to avoid bad press and wasteful litigation. And, to be honest, Dan Snyder has never struck me as someone who cares much about avoiding bad press or wasteful litigation.

Techdirt.

JaM Cellars Sues Franzia For Trademark Over ‘Jammy’, An Incredibly Common And Descriptive Term In Wines

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The alcohol trademark wars continue! Now, usually when we talk about trademark disputes in the booze business, those disputes tend to center around creative names and trade dress of specific craft brands. This is most common in the craft beer arena, but it also happens in wine and liquor. While the sudden turn towards corporatism in the craft alcohol industries is more than mildly annoying, it is at least understandable when there is a trademark fight over the more unique aspects of branding.

Much more annoying is when trademark disputes arise from one party trying to fight over the more generic terms in the alcohol industry. An example of this comes to us from JaM Cellars, the makers of the JaM brand of wine. Full disclosure: I’ve consumed roughly a metric ton of JaM wine in my time and really, really love it. What I love less, though, is that JaM decided to sue The Wine Group, makers of Franzia boxed wine, over its newly branded “Bold and Jammy” brand of boxed red wine.

On April 1, 2020, JaM Cellars filed a trademark infringement lawsuit against The Wine Group, makers of the popular Franzia brand boxed wine. Plaintiff JaM Cellars is the owner of trademarks relating to the word JAM used in wine products (U.S. Trademark Registration Nos. 3,787,229 and 3,855,785). According to the complaint, since being introduced in 2009, wine using the JAM marks has received several awards, and JaM Cellars has expended millions of dollars in advertising the wine using the JAM marks.

JaM Cellars filed the complaint in the U.S. Federal Court in the Northern District of California. In addition to allegations of trademark infringement, the complaint also includes unfair competition claims under federal and state law.

The full complaint is embedded below, but a couple of items worth highlighting. First, this is not the first such case between these two entities. JaM also has a “Butter” branded wine and sued The Wine Group over its “Butterkissed” wines, as well as a more recent and pending suit over The Wine Group’s “Rich and Buttery” branded Franzia wines. What should immediately strike most everyone, and especially those of you who, like me, consider yourself amateur sommeliers, is that all of these terms are incredibly common in the wine industry. Why the Trademark Office approved these marks is a totally valid question, but it doesn’t seem as though JaM Cellars should be able to wield the USPTO’s ignorance as a way to keep descriptive terms out of the brands of its competition.

And yet that is exactly what it’s trying to do. Explicitly, even, right in the pages of the complaint.

Plaintiff’s JAM Marks for wine are not descriptive when used in association with wine and therefore are inherently distinctive. The inherent distinctiveness of Plaintiff’s JAM Mark is presumed and incontestable given its ownership of the incontestable federal trademark registrations.

That’s some 91 pt. sophistry right there. The argument is essentially that it cannot be argued that the terms in question on either side of this trademark lawsuit could be considered descriptive because the Trademark Office approved the trademark JaM is using to file the lawsuit. As though the USPTO has never approved a descriptive trademark in error, or made any error of any kind, apparently. One hopes the courts or defendants smack that particular passage around in open session.

Beyond that, this all comes down to customer confusion. JaM Cellars spends far less time in its complaint on anything to do with customer confusion and instead focuses on how The Wine Group branded its Bold and Jammy boxed wine differently than its other brands. The image below is directly from the complaint.

Is the branding different? Well, sure! One might call the branding for Bold and Jammy more…bold and jammy? But you might also notice that the same Franzia branding across the top is in place. And then, compare that to the branding on the JaM wine, which looks very, very different (again, straight from the lawsuit):

I feel quite confident that the average consumer walking up and seeing these two products side by side (which they aren’t in stores) would not be confused into thinking they were related. I’m all the more confident that the average wine drinker isn’t going to have that confusion given the stature of each brand among wine drinkers.

In the end, all of this is a stupid fight over incredibly common terms in the wine industry. While The Wine Group has a history of settling with JaM Cellars out of court, this is a fight I hope they see to the end.

Techdirt.

Florida Atlantic University Suddenly Decides Owl Tutoring’s Name Is Trademark Infringement After Over A Decade

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As some of you may be aware, Florida Atlantic University’s sports teams and mascots are the Owls. As some of you may also be aware, the southeast is home to Owl Tutoring, a college tutoring service with a fairly good reputation. Owl Tutoring has existed for over a decade and has even promoted itself by advertising in FAU publications. That’s probably why it took the folks at the company by such surprise to suddenly get a C&D letter from FAU’s legal team accusing it of committing trademark infringement.

Owl Tutoring has had a close relationship with the university for many years, including operating on campus for almost five years before moving off-campus to the FAU business incubator. Despite this long-standing association, FAU is now claiming that Owl Tutoring is violating its trademark.

Owl Tutoring believes the university can’t claim exclusive rights in the term “owl” in connection with tutoring services because the term is highly suggestive for these services given that owls are a well-known symbol for wisdom and knowledge. The company also notes there are over a dozen coexisting registered and pending trademarks incorporating the term “owl” for educational services.

In addition to pointing out that using the term “owl” for educational services is both widely done and potentially generic, Owl Tutoring also wondered out loud in its response letter to FAU just where the school has been for the past decade if it had a problem with the company’s name.

In response to FAU legal filings, Owl Tutoring asserted that FAU’s claims of trademark infringement are invalid because the university slept on its rights to object for more than 10 years, while actively supporting Owl Tutoring’s activities. Owl Tutoring has advertised its services in the FAU College of Business’ lobby, posted flyers approved by FAU and rendered services in FAU classrooms reserved by university staff explicitly for Owl Tutoring’s use.

Owl Tutoring, which is headed by an FAU alumnus, ends its response by politely suggesting that perhaps the legal team for FAU wasn’t aware of the close relationship between the two entities. Regardless of whether or not that is true, it sure would be hard to imagine a jury or court finding that the company suddenly infringed after a decade of coexisting with the university.

Let’s hope this is just a case of an overeager legal partner.

Techdirt.