TM Registration for Hot Springs National Park logo challenged

Hot Springs National Park logo challenged

The Interior Department is moving to block a city tourism board from attaining a trademark for the “Hot Springs National Park” logo, a symbol that is used throughout the resort town and in promotional advertising.

The logo does not delineate between the national park itself and the city, and the federal agency said in a filing that the two should be kept distinct.

Here is a link to the registration

Aside from what the article implies, the Hot Springs National Park TM was granted in 2003 (TM # 2706344). The 5 year period for incontestibility was about to toll, so that is why the challenge is happening now.  You will notice that the registration date was 4-15-2003, and the date of challenge 4-14-2008. The Dept. of the Interior beat the tolling by 1 day.

Here is the status page with notice of cancellation pending.

Here is the TTAB status page.

Fark.com Files NSFW Trademark Application

On December 3, 2007, Fark.com (NSFW) filed an application to trademark “Not Safe For Work,” pertaining to the following:

(1) “Entertainment Services namely providing a website featuring photographic, audio, video and prose presentations featuring comedic captions regarding current events and online discussions and/or reviews of web materials of an adult nature”
(2) “Entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials”
(3) “Entertainment services, namely, providing on-line reviews of photogrpahs and /or web postings of an adult nature”
For those of you unfamiliar with the phrase (or NSFW), sites use this tag for links that go to places that are, well, not work safe. A spin through Fark finds this on everything (usually photos or videos), including mother-daughter sex tag-team photos, strange asian schoolgirl/animal copulation, and body-part combat pics (thank you seach engines!).

Fark’s first date of use in commerce is claimed to be June 7, 2000. While Fark may have been around back in 2000 (http://web.archive.org/web/20000815065407/http://www.fark.com/) it is doubtful that they used this phrase then.

Barriers to approval will be:  Proving date of first use, Genericide of the term (or it being highly descriptive), and much, much third party use.

Arkansas IP Litigation Cases for the Week of November 10, 2007

The U.S. District Court for the Eastern or Western District of Arkansas was chosen as the forum for litigating the following case(s), as published by Justia:

  • Coulson Oil Company Inc v. Deweese Enterprises Inc; No. 4:2007cv01102; Filed: November 9, 2007; Court: Arkansas Eastern District Court
    Here is a Trademark Infringement lawsuit involving gas stations run by both companies, both called “Super Stop.” Coulson Oil, an Arkansas based company, seeks a declaratory judgment that they are not infringing the trademark of Deweese Enterprises, a Mississippi based company. Deweese registered a federal trademark for “Super Stop” in 1982. Coulson is arguing that it obtained Arkansas trademark rights due to its continuous use of the name in commerce. Coulson also operates the Super Stop Co-op, a bulk purchasing group for convenience store owners.

SSCOOP

Dell Cybersquatting Case

Last week, the U.S. District Court for Southern Florida unsealed a lawsuit that Dell filed in October. See story here: Dell Takes Cybersquatters to Court. The cybersquatting/typosquatting lawsuit is unique in that they are going after several registrars as being “responsible for registering and profiting off of nearly 1,100 domains that were “confusingly similar” to Dell’s various trademarks.” In the suit they allege that the companies earn “millions of dollars from Internet traffic intended for Dell and dozens of other Fortune 500 companies.” For me, this is the best case this year.

Red Hot Chili Peppers vs. Showtime in Californication Showdown

The band the Red Hot Chili Peppers have sued Showtime Networks for their use of the word “Californication” as the title of one of their shows. It was also the name of RHCP’s 1999 album and song. Claims are being made under federal trademark law and state unfair competition law. There are a number of issues her that could go both ways, but what I found amusing is singer Anthony Kiedis’s statement that:

“Californication’ is the signature CD, video and song of the band’s career.”

I always thought that it was John Frusciante’s guitar in Under The Bridge and Give It Away and the wise hand of Rick Rubin on Blood Sugar Sex Magik that put the band on the map and everything good since has been trying to recapture the feel of those songs. But then again, I became an attorney, so what do I know. Kiedis say’s that Californication is everthing that the band is or has been and I will have to take him at his word.

Full story here and Here.

Complaint here.

And for those who need a history lesson, Californication is a word coined to describe out of control urban sprawl, as noted in this 1972 Time Magazine article:

“Legislators, scientists and citizens are now openly concerned about the threat of “Californication”—the haphazard, mindless development that has already gobbled up most of Southern California.” 

Album info at Amazon

Show info at Showtime.

Arkansas IP Litigation Cases for the Week of November 3, 2007

C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, LP. – Affirmed on appeal; Player names and statistics are in the public domain

Monday, the 8th Cir. affirmed U.S. District Court Judge Mary Ann Medler’s ruling last year in C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, LP. At issue was a purely contractual issue, which we don’t care about here (CBC had a contract with MLB to use players names and stats. When it ended they kept using them), and an issue over the use of the names and likenesses of players, which we very much care about. At issue was whether CBC needed to pay Major League Baseball (or the MLB Players Association) for the use of player’s names and statistics. Last year, the district court said no – that the First Amendment trumped any right of publicity claim the players might have.

On appeal the 8th Cir. first laid out the elements of a right of publicity claim under Missouri law:

In Missouri, “the elementsof a right of publicity action include: (1) That defendant used plaintiff’s name as a symbol of his identity (2) without consent (3) and with the intent to obtain a commercial advantage.”

While the district court found that all the elements of a claim had not been met, here the court held that all three elements were met, and so CBC’s use did support a right of publicity claim. The Court found that there was no consent and, differing from the district court, that the names were being used as a “symbol” of the player’s identities. Here the Court found that while the commercial advantage was not of the type to be included in a right of publicity claim, CBC still derived commercial advantage:

CBC’s use does not fit neatly into the more traditional categories of commercial advantage, namely, using individuals’ names for advertising and merchandising purposes in a way that states or intimates that the individuals are endorsing a product. . . .

Because we think that it is clear that CBC uses baseball players’ identities in its fantasy baseball products for purposes of profit, we believe that their identities are being used for commercial advantage and that the players therefore offered sufficient evidence to make out a cause of action for violation of their rights of publicity under Missouri law.

The Court’s court’s decision helps us all for recent precedent on the First Amendment preempting the type of right of publicity sought to be protected in this case. In doing so it cited to the Supreme Court’s decision 1977 decision in Zacchini v. Scripps-Howard:

The Supreme Court has directed that state law rights of publicity must be balanced against first amendment considerations, see Zacchini v. Scripps-Howard Broad., 433 U.S. 562 (1977), and here we conclude that the former must give way to the latter.

However, in the end, though, the Court talked so much about the “public value of information about the game of baseball and its players” because baseball is “the national pastime” that any value on the First Amendment issue may have been reduced to the facts of this case.

After affirming the contract dispute (there was a dissent on this issue) the 8th Cir. affirmed the district court’s decision. 

Note to students. This case was affirmed on, arguably, different grounds than the district court’s decision and was an appeal from a grant of summary judgment. This case was won and lost on the merits of the arguments contained in the brief’s.

Apologies to Judge Arnold, who wrote this opinion. I typically praise his writing. But knowing he is a baseball fan, I think the subject was too tempting to pass up, and so the precedential portion of the opinion is chock full of information that only serves to reduce its long term value. I will, however, look for you at the next Traveler’s game.

Additional Material:
USA Today story,
Bloomberg story
full text of C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 443 F. Supp. 2d 1077 (E.D. Mo. 2006), and
full text of C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., Nos. 06-3357/3358 (8th Cir, Oct. 10, 2007).

Follow

Get every new post delivered to your Inbox.