Rimon Law Blog

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)

* * *

(Full lyrics found here)

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.

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!

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.

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.

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.

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.

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.

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!

Who would have thought that two museums would be battling out for the right to use THE COLD WAR MUSEUM? Although the Cold War ended in 1991, two museums currently are warring over who gets to use the term COLD WAR MUSEUM as their service mark.

The Cold War Museum endeavors to maintain a historically accurate record of the people, places and events of the Cold War.

The Cold War Air Museum is a non-profit flying museum dedicated to the preservation of Cold War era aircraft.

On February 27, 1997, Francis Gary Powers, Jr. applied to register the service mark THE COLDWAR MUSEUM for museum services. His application lists a first use date of July 13, 1996. Presumably, the PTO found the mark merely descriptive and Mr. Powers therefore registered his mark on the Supplemental Register. On February 4, 2003, Mr. Powers, again applied to register the service mark THE COLD WAR MUSEUM for museum services on the Principal Register. (The Principal Register provides numerous benefits, including nationwide ownerhsip rights and presumed notice of those rights.) Not surprisingly, by Mr. Powers’ second application also was denied under Section 2(e) of the Trademark Act, based on the mere descriptiveness of the mark.

In response to the descriptiveness refusal, Mr. Powers filed a 2(f) Declaration of Acquired Distinctiveness alleging that his mark had become distinctive of museum services by virtue of the fact he made use of THE COLD WAR MUSEUM mark exclusively and continuosly for the 5 years prior to his making the claim of distinctiveness. This is common practice amongst applicants.

In order for marks to be registerable on the Principal Register, they must be “distinctive”, meaning that they have the ability to function and be recognized as a brand. A mark that describes a purpose, feature, characteristic, or function of the product or service that it’s used to promote typically does not function as a brand and will be considered “merely descriptive” by the USPTO. The PTO will not register “merely descriptive” marks on the Principal Register unless acquired “distinctiveness” is proven. Distinctiveness sometimes may be proven through 5 years’ exclusive and continuos use, though more proof is required for more descriptive marks.

Unfortunately for Mr. Powers, given the highly descriptive nature of THE COLD WAR MUSEUM mark, the PTO Examiner remained unconvinced that the mark had acquired distinctiveness and she therefore maintained her 2(e) refusal to register. In response to this, Mr. Powers submitted over 200 pages ofevidence that his THE COLD WAR MUSEUM mark had indeed acquired distinctiveness. Based on the evidence submitted by Mr. Powers, the Examiner withdrew her 2(e) refusal and allowed the mark THE COLD WAR MUSEUM to become registered on the Principal Register.

Three years later, on April 18, 2007, Cold War Air Museum, Inc. filed a Petition to Cancel the federal service mark registration for THE COLD WAR MUSEUM on the grounds that the mark was merely descriptive at the time of registration and thus should not have been registered. After a full Cancellation proceeding, the Trademark Trial and Appeal Board (TTAB) granted the Petition filed by Cold War Air Museumon October 20, 2008, ordering the THE COLD WAR MUSEUM mark cancelled. Mr. Powers appealed the TTAB’s ruling to the Federal Circuit (CAFC), which just reversed the TTAB on November 5, 2009.

The issue on appeal was whether or not the Registrant (Mr. Powers) was required to submit evidence of distinctiveness during the Cancellation proceeding. The CAFC found that Mr. Powers’ THE COLD WAR MUSEUM application (and more importantly, all of the evidence submitted therewith ) was made of record in the Cancellation proceeding because Trademark Rule 2.122(b) provides that the record in a Cancellation proceeding automatically includes the file of the registration at issue. Because Mr. Powers proved acquired distinctivenes in his registration application, and the Air Museum did nothing to rebut this evidence, the CAFC ruled that the Board erred in determining that the mark had not acquired distinctiveness. Therefore the Board reversed the TTAB and the THE COLD WAR MUSEUM registration will not be cancelled.

The morals of the story?

If museums can engage in lengthy trademark disputes, so can you! Descriptive marks cost more and are more difficult to protect, which is why trademark attorneys routinely discourage you from falling in love with them. Choose and protect your marks wisely.

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