MediaTech Law

By MIRSKY & COMPANY, PLLC

Can Social Media Use Save a Trademark?

Posted December 24, 2015 by Roman Vayner 0

Maintaining a social media profile has become standard practice for most businesses advertising their services. Savvy trademark owners may also know that they must “use” their mark in order to establish trademark rights – meaning that the mark must be actually used in connection with providing a good or service. But what type of use is sufficient? Is simply using a mark on a Facebook or Twitter profile enough to show “use” of the mark for trademark purposes? A Trademark Trial and Appeal Board (TTAB) decision says no, but offers useful guidance to trademark owners on using “analogous” trademark use to establish trademark rights. The decision is The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC.

Spendology attempted to register the mark SPENDOLOGY for web-based personal finance tools. PNC Financial Services Group (PNC), which used the same mark for an “online money management tool,” opposed Spendology’s application, claiming that PNC had used the mark first. Both parties filed motions for summary judgment for likelihood of confusion and priority.

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Budweiser Protects Its Throne From the Queen of Beer

Posted December 2, 2015 by Roman Vayner 0

Anheuser-Busch’s Budweiser brands itself as the king of beer and the company’s recent trademark defense shows it’s not willing to share the throne. A California craft beer company named She Beverage Company recently filed a trademark application with the U.S. Patent and Trademark Office (PTO) for THE QUEEN OF BEER for “beer,” and Anheuser-Busch quickly moved to oppose it.

Anheuser-Busch argued in its opposition that She Beverage Co.’s trademark would cause consumer confusion with several of its KING OF BEERS word and design marks, the oldest of which was registered in 1968 for “beer.”

Anheuser-Busch also argued that THE QUEEN OF BEER would dilute the distinctive nature of Budweiser’s famous trademarks. Famous marks are afforded heightened protection from similar marks because of the strong connection in the mind of the public between the source of the product and the mark. And there is little doubt that Anheuser-Busch’s marks, including Budweiser, qualify as famous considering the hundreds of millions of dollars that it spends annually on advertising, and its place as one of the world’s most valuable brands.  

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Tootsie Roll vs. Footzy Roll: Clever Marketing or Trademark Infringement?

Posted August 14, 2012 by Britnie Morris 0

As a twentysomething female who likes to dress for success but not suffer without end in the unrelenting DC humidity, flat, practical shoes can offer a sweet reprieve from uncomfortable heels.  Rollashoe’s premier product, the Footzy Roll, a ballet-style, compactible slipper can be stored easily for the girl on the go.  They’re great to casually slip on after a night out on the town or for happy hour after a day in the office.  They’re also edible.  Just kidding.

Tootsie Roll seeks to block Rollashoe’s trademark for “Footzy Rolls” in the US Patent and Trademark Office, as Reuters reported last fall.  Tootsie, which, as reported in the Chicago Tribune, earned $521 million in 2010, filed suit against Rollashoe, LLC in federal court in Chicago, claiming that Footzy Roll will confuse and deceive consumers and dilute Tootsie’s trademarks. 

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What is a “Trademark Use”? Using Other’s Trademarks

Posted October 14, 2011 by Andrew Mirsky 0

What is a “trademark use”?  This question comes up in this way: You want to use a trademarked name or brand or logo (not yours).  You want to make commentary about the trademark, or simply reference the trademark in some way.

Trademark protections give their owners the right of exclusive use to the trademark, but only when used “as a trademark”.  If the use of the mark is for any purpose not a “trademark use”, that use does not fall within the exclusive rights of the trademark owner.

The Good and The Ugly – Trademark Use Examples

Some examples illustrate the point:

1. A magazine story features a photograph of a woman wearing a tee-shirt with picture of a Marvel Comics character.  The story is about the woman and her battle with a difficult disease, having nothing to do with the Marvel trademark.  The trademark is clearly incidental to the photo and to the story.

2. A cash-for-gold jewelry dealer in Toronto (featured in a New Yorker profile this past week) promotes his business through television commercials featuring the character “Cashman” dressed in a red cape and pair of blue tights and dollar signs on his chest.  “Cashman” bursts out of telephone booths to frighten desperate Torontonians into parting with their family heirlooms.  The owner of the Superman trademarks felt compelled to ask – nicely at first, not so nicely in the subsequent lawsuit – that “Cashman” stop trading on the Superman goodwill.

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Actual Halloween (Trademark) Story (Part 2): “Field of Screams”

Posted October 3, 2011 by Kate Tummarello 0

In March of this year, the U.S. District Court for the District of Maryland denied the preliminary injunction that the Pennsylvania “Field of Screams” had sought against the Maryland “Field of Screams.” Andrew Mirsky wrote about this case last fall, a trademark infringement action involving a haunted amusement house in Pennsylvania operating under the name “Field of Screams” and a Maryland operation of the same name.

The court’s opinion denying the preliminary injunction can be viewed here.  The preliminary injunction was denied on the grounds that the plaintiff was unable to show that its case was likely to succeed in court – the standard required to obtain a preliminary injunction.  

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Trademarks: Apple Still Fighting “Video Pod”

Posted August 21, 2011 by Andrew Mirsky 0

Sector Labs, a California company that makes a smartphone-size video projector, filed a federal trademark registration in 2003 for the name “video pod”.

Apple, Inc. challenged the registration, filing an opposition to Sector Lab’s registration with the U.S. Patent and Trademark Office.  Apple claimed (among other things) that Sector Labs’ “video pod” “is extremely similar to Apple’s [“iPod” trademarks]”, “consists in part of a significant portion of [iPod] and the entirety of POD, which consumers use as an abbreviation to identify and refer to Apple’s iPod mark and products”, and that Video Pod “covers a device that is or will be used to transmit video for entertainment and other purposes” – much like Apple’s iPod.

Apple’s legal position is that Sector Labs registration would cause source confusion, namely a likelihood of confusion among consumers as to the source of the two companies’ products, and trademark dilution.  Or in other words, “video pod” would dilute the value of Apple’s iPod franchise by reducing the exclusive association in the marketplace of “pod” with Apple and its ubiquitous iPod.

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