Rimon Law Blog
Posts from Lara Pearson
Watch out greenwashers; here comes the FTC
The Federal Trade Commission ("FTC") was created in 1914 to regulate unfair trade practices. It issued its first set of Guides for the Use of Environmental Marketing Claims (commonly known as the Green Guides) under in 1992, which it then updated in 1996 and 1998. The Green Guides are meant to provide guidance to marketers so they can avoid making unfair and/or deceptive environmental advertising claims. Imagine that! Technically, the Green Guides informally interpret Section 5 of the FTC Act (15 U.S.C. §§ 41-58) ("The Act"), which governs unfair and/or deceptive advertising claims, including claims about environmental benefits and practices. Essentially, the Guides are a play book for how to stay out of trouble with the FTC.
First, the Green Guides outline general principles applicable to all environmental marketing claims and make suggestions for avoiding greenwashing, which means making false green claims. For example, the Guides state that an environmental claim on product packaging should make clear whether it refers to the product itself, or just the product's packaging.; Likewise, a claim that a service has an environmental benefit should make clear what aspect of the service produces the claimed benefit. The Guides also caution against making overstated and unqualified claims. It's pretty simple, really; if you cannot prove it, you shouldn't use it. Use of specific "green" terms in marketing and advertising, namely, biodegradable, compostable, recyclable, recycled content, refillable and ozone safe & friendly also is addressed by the Guides. The Guides state that marketing claims using these terms should be substantiated by competent and reliable scientific evidence and qualified to the degree necessary to avoid consumer deception.
Although the Green Guides are advisory in nature, the FTC may order a company to take corrective action if it believes that the company's marketing or advertising claims are unlawfully unfair or deceptive under the FTC Act. From 1990 through 2000, there were 37 FTC Environmental cases. Most of the cases challenged the use of the terms listed above, like biodegradable and recyclable. Not surprisingly, there were no FTC environmental cases during George W. Bush's Presidency. Since President Obama took office, the FTC has brought seven environmental enforcement actions. In 2009, the FTC pursued four bamboo clothing and textile companies for deceptively labeling products as made from bamboo, when really they were made from rayon. The FTC also pursued Kmart and others in 2009 for making false biodegradability claims. In February of this year, the FTC sent letters to 78 retailers, including Wal*Mart, Target and Kmart, cautioning them not to sell rayon products labeled as bamboo. One would think these companies would know better, though apparently not.
Since green claims now are as common as sarcasm on the Colbert Report, the FTC began reviewing its Green Guides in November, 2007, a year earlier than originally scheduled. Who knew the U.S. Gov't did anything ahead of schedule; that alone seems newsworthy. The FTC previously requested public comment on the Guides and also held workshops to discuss various green marketing issues, including the marketing of carbon offsets and renewable energy certificates (RECs), green packaging claims and green building and textiles over the past few years.
Apparently, the FTC plans to release the new guidelines by the end of this summer. For now, companies will have to wait and see if they have what it takes to continue calling themselves green. A recent article in Advertising Age on-line magazine relayed concerns over the effect of the new Green Guides. In addition to increased FTC enforcement, presumably, the new Guides will have a expanded the list of regulated environmental terms which may include frequently used buzzwords like sustainable, carbon neutral, zero waste and zero emissions. According to the AdAge article, some experts predict that many, or most, enviro "seals of approval" will violate the new Green Guides, especially if their claims are not substantiated.
Despite all the questions about the forthcoming updated Green Guides, one thing is certain; just as greenwashing is becoming more common, thankfully, better tools are being developed to combat it.
Has the PTO Gone to Pot?
Pipe dreams of trademark protection for marijuana go up in smoke . . .
On April 20, 2010 the USPTO issued a federal service mark registration to Sunny Chan d/ba Good Leaf Collective for the mark GOOD LEAF COLLECTIVE for "Retail store and on-line retail store services featuring medical marijuana". Ironically (and probably much to the delight of Mr. Chan), April 20 is a counter-culture holiday amongst marijuana users. Unfortunately for Mr. Chan and the nearly 100 other applicants who are waiting for the USPTO to issue registrations for their marijuana related products and services, on July 20, 2010 the PTO had a change of heart and the applicant's pipe dreams may have gone up in smoke.
On July 20, 2010, the USPTO sent Mr. Chan a letter informing him that his federal service mark registration was issued mistakenly and has since been canceled. The letter continues to state that Mr. Chan's application has been restored to pendency and the file returned to the Examining Attorney to issue a refusal.
In a related twist, the USPTO publishes a Manual of Acceptable Identifications of Goods and Services on its website for use by federal trademark registration applicants . According to a July 19, 2010 WSJ article, on April 1, 2010 the PTO approved an ID for "Processed plant matter for medicinal purposes, namely medical marijuana". The USPTO offers a public service whereby applicants (or their counsel) can suggest IDs to be added to the manual. I have used this service many times to assist clients in the sustainabiltiy space get their innovative product and service descriptions pre-approved by the PTO. Apparently, someone suggested the medicinal marijuana ID, which the PTO approved given that there are fifteen states in which medical marijuana is legal (AK, CA, CO, DC, HI, ME, MI, MO, NV, NJ, NM, OR, RI, VT, WA). The addition of marijuana to the manual apparently created a rush on the PTO with several new applications filed for marijuana and marijuana related products and services. Apparently, the marijuana ID was removed in mid-July admist questions from the Wall Street Journal about its prudence.
Thus, for now, legal medical marijuana growers and purveyors will have to rely on common law rights, or use broader categories in their trademark applications -- such as dried plants or agricultural seeds -- to protect their trademarks nationwide.
Is It a Barbie World?
We all can agree that Barbie is a famous brand, regardless of what we may think of her or the thin values she espouses. Barbie dolls have been around since May 9, 1958. The first Barbie trademark registration (Reg. No. 0,689,055) for a “doll” was issued on December 1, 1959.
This is interesting because “doll” in the singular form is no longer allowed to be used in the listing of goods and services in trademark applications. Rather, applicants must state “dolls” in the plural because using a mark in only one transaction is not enough for trademark rights to attach. In other words, you must sell multiple items (even if the items are identical dolls) for trademark rights to attach.
OK, back to Barbie.
In 1997, Aqua produced the song Barbie Girl on its album Aquarium. The song, somewhat surprisingly, made it into the Top 40. The Chorus goes like this –
“Barbie Girl”
I’m a barbie girl, in the barbie world
Life in plastic, it’s fantastic!
you can brush my hair, undress me everywhere
Imagination, life is your creation
Come on Barbie, let’s go party!
* * *
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)
* * *
In September, 1997, Mattel brought a trademark infringement lawsuit against the music companies who produced, marketed and sold the Barbie Girl song, including the band Aqua and its record label, MCA Records. In July, 2002, the 9th Circuit upheld the District Court’s ruling in favor of Defendants, finding use of the Barbie mark in the Barbie Girl song to be a nominative fair use and a parody. The court found that “the song pokes fun at Barbie and the values that Aqua contends she represents.” The case was publicly contentious, which led Judge Kozinzki to end with the best final sentence ever written in a judicial opinion, “The parties are advised to chill.”
In an ironic twist, Mattel apparently recently licensed Aqua’s song. It re-wrote the lyrics and released the song this year as its The Barbie® Official Music Video 2009. The video is part of a promotion to celebrate Mattel’s October 2009 release of new poseable Barbie dolls. The video is intended to teach you how to “Do The Barbie” dance. Look out country fans — the Barbie is soon to take over line dances everywhere! I wonder who owns the copyright on that choreography The next line of Barbie lawsuits awaits.
How did I find myself Blogging about Barbie on a Friday night It started this morning with the e-mail digest from the VERB LinkedIn Group asking for guesses on which song has the most brand mentions. Not knowing that the question really meant how many different brands were mentioned in a single song, I guessed Barbie Girl, which repeats Barbie over and over and over and over and over . . .
After posting to LinkedIn, I read the linked article and learned that the question originated with one of my favorite blogs, DuetsBlog, as the culmination to an entertaining blog about brands in songs.
The Skinny (Cow) on Weight Watchers v. Nestle
This posting is about the recently filed trademark case Weight Watchers International Inc. v. Nestle U.S.A. Inc., 09-07964, U.S. District Court, Southern District of New York (Manhattan).
MY DISCLAIMER — I have not read the complaint.
Instead, I saw Joel Rosenblatt’s article in the news section on the e INTA LinkedIn Group.
Joel’s article states that Weight Watchers sued Nestle because it’s Dryer’s ice cream sub-brand, SKINNY COW, improperly displays the Weight Watchers POINTS mark on the SKINNY COW packaging. So, next I looked at a package of SKINNY COW ice cream sandwhiches.
It states:
WEIGHT WATCHERS* POINTS=3
* Weight Watchers(R) and POINTS(R) are registered trademarks
of Weight Watchers Int’l, Inc. The points provided here were
calculated by Dryer’s Grand Ice Cream, Inc. based on published
Weight Watchers information and do not imply sponsorship or
endorsement of those points or of The Skinny Cow(R) by Weight
Watchers Int’l, Inc.
I don’t think this is a trademark use, especially with Nestle’s disclaimer (albeit in smaller font than the Nutrition Facts,may people would need glasses or a magnifying glass to read it). If consumers actually read the language below the POINTS, then none will be confused into believing that a sponsorship or endorsement exists between Weight Watchers & Nestle. I won’t speculate as to whether anyone other than curious trademark counsel actually reads that teeny, weeny disclaimer.
I do think it is unfair for Nestle to benefit from using Weight Watcher’s POINT system without permission. Nestle must have intended to and likely will lure customers away from Weight Watcher’s by use of Weight Watcher’s nutrition measurement POINTS brand. Further, presuming that Weight Watchers licenses its POINTS brand to competitors, then Nestle’s unauthorized use hasthe demonstrable effect of denying Weight Watchers’ licensing revenue.
It will be intresting to see how this case boils down.
Open Brands?!?
A few weeks ago, I attended the Social Media for Sustainability conference hosted by Justmeans. I met Joey and Stacie Shepp there and Joey told me about their project, Open Brands. Open Brands uses Twitter to follow and measure the real life conversations that consumers are having about brands. Open Brands is able to do this through the use of “brand tags” on Twitter. Brand tags are hashtags about brands. Hashtags consistof use of the # hash symbol — #love — & a word. Simply put, brand tags are hashtags used with brands — #Patagonia.
Brands symbolize the relationships consumers have with companies and their products and services. Now, Open Brands is providing a way to watch and track that relationship. By monitoring these Brand Channels, as Open Brands calls them, Savvy brand owners will work with this information to maintain and improve the relationship they have with their customers in real time.Pretty cool!
PTO Shortens Time of First OA
On Thursday, June 4, 2009 the USPTO reduced its goal for “trademark pendency” to two months. “TM Pendency” determines how large of an inventory of unprocessed applications the USPTO should keep at any given time. The time frame discussed in relation to pendency is the time that it takes the PTO to issue a First Office Action (“OA”) from the application filing date.
The PTO TM Public Advisory Committee (“TPAC”) stated that the previous goal had been 2.5-3.5 months (for issuance of the initial OA). However, as a practicing trademark attorney, I’d say that OAs most commonly issue 3-4 months after the filing date.
I presume that most clients will be pleased with a shortened examination period, as most clients want their applications to issue as quickly as possible. The clients who will be negatively impacted by hastened examination are Intent to Use clients who sometimes have trouble brining their products and services to fruition as quickly as they initially hoped.
It will be interesting to see if the PTO meets its new goals and if so, how this effects the speed of the registration process overall.
2009 LOHAS Forum
I am attending the amazing LOHAS Forum in Boulder, CO. Ted Ning and his team blessed us with many engaging speakers.
Yesterday morning, I really enjoyed hearing Ray Anderson, who taught us how mimicking nature creates sustainable business. Next was Rob Katz, CEO Vail Resorts (owner of Heavenly on the south shore of Tahoe, among many others) discussed several of the cost saving, environmentally beneficial programs that his company’s resorts implemented. The morning ended with Spencer Sherman, CEO of Abacus Wealth Management. Spencer ran us through one of Byron Katie’s exercises designed to help us overcome our main fears about our businesses or our financials lives. Spencer’s believes that 2009 is the time of reinvigoration, which sounds exciting to me.
The afternoon session Leveraging the Power of Social Networks was overflowing! The panel got us excited about the power of social media to quickly and effectively reach our target audience and motivate people to action. McCarthur from Free Range Studios showed a YouTube teen rebuttal to her company’s well known Story of Stuff. It was inspirational & astounding to see this public teen response.
Today has been spent in deep conversations with friends, after Hunter Lovins powerful presentation this morning. I also got to see Hunter skiing on a Wii in the Vail Resorts exhibition room, which was something! While she beat Ted Ning’s score, she’s apparently not the most adept Wii player in the LOHAS community! Whomever beats Ted the worst wins free tickets to LOHAS next year. Now I know to train for next year.
ABA Award for Excellence in Enviro, Nrg & Resources Stewardship
Last Thursday I had the honor of being nominated by Russ Gaskin for the American Bar Association’s Award for Excellence in Environmental, Energy and Resources Stewardship.
Founded in 1982, Green America is a national-for-profit membership organization with 120,000 individual members and 5,000 business members who are committed to creating a green economy.
The ABA Award honors the accomplishments of a person, organization, or group that has distinguished itself in environmental, energy, and resources stewardship. The ABA is particularly interested in nominations that point to specific milestones of achievement by those persons or entities being nominated, with an emphasis on creative thinking, diligence in execution of a plan or program, or sustained progress in innovation or leadership.
The Nomination Narrative Russ submitted may be found here: Lara Pearson Nomination Narrative . I hope that it will inspire you and make you smile.
Support for Seattle’s Plastic Bag Fee
A client of mine that owns reusablebags.com recently was contacted by the Mayor of Seattle, Greg Nickels, who requested my client’s support with Seattle’s proposed Plastic Bag Fee. Residents of the city of Seattle vote on August 18 whether to implement a twenty cent tax on plastic bags distributed by merchants such as grocers and convenience stores. Many of the grocers and big drugstores already participate in a voluntary education program encouraging consumers to use reusable bags.
Seattle’s proposed tax is modeled after Ireland’s successful tax (affectionately known as a Plastax), which has been in place since March, 2002. Ireland implemented a 33 cent tax per plastic bag, which is paid by consumers at the time of purchase. This charge for plastic bags all but eliminated these harmful devils from the country (and the countryside where they’re often found blowing about in the wind).
Although nay-sayers claim that the bag tax will have a disparate negative impact on people of low income, there are several groups in the Seattle area working to ensure that such folks do get reusable bags to use. In fact, an alliance of merchants, together with the city, just donated 50,000 bags to Northwest Harvest (a supplier of Seattle are food banks) for distribution to the people it helps.
Ultimately, as long as folks who need reusable bags can get them, I think that the Seattle Bag Fee makes perfect sense and hope to see something similar implemented in and around Lake Tahoe soon.
One Tribe Creative mktg tips from BALLE Conference
I am in Denver, Colorado for the 7th Annual (yet my first) BALLE Conference. BALLE is the Business Alliance for Local Living Economies. BALLE’s Mission is to build Local Living Economies in North America that foster vibrant communities, a healthy natural environment, and prosperity for all. This is done through:
Catalyzing, strengthening, and connecting networks of locally owned independent businesses
Providing education and community economic development tools; and
Developing and promoting public policies that enable Local Living Economies to thrive
Paul Jensen from One Tribe Creative of Ft. Collins, CO offered a breakout session full of helpful tips for marketing local (and other) socially and environmentally responsible organizations and businesses. Of these, I found the following most helpful: (1) A brand really is others’ perception of your organization — it’s the relationship that your community has with you; and (2) branding is the way in which you tell your story, which you must do continually to thrive.
Paul used the Be Local Northern Colorado campaign that One Tribe worked on to demonstrate several ways in which an organization can brand themselves locally in order to showcase and increase the value they offer to their community. Gailmarie Kimmel, the Co-E.D. of Be Local Northern CO also shared her experiences with the branding of her BALLE network.
What a refreshing way to conclude a great conference!