Monthly Archives: January 2010

Bing! or bing – Who Owns the Mark?

One of the most important tasks in marketing a new product or service is finding just the right word that will stick in the public’s collective mind. Some of these words, like Chevrolet’s Volt, are suggestive of a characteristic of the product (namely, an electric car). Others, like the Blackberry® mobile phone, are purely arbitrary. But when coming up with le mot juste, or the 
right word, care must be taken to make sure that no one else has already staked a claim to this word for similar goods or services. Even corporate giants with a litany of lawyers sometimes find themselves in trademark turf wars. A recent example involves a small design company that’s taken on Microsoft over the word BING.

When Microsoft decided to enter the lucrative search engine market, the company began looking for a catchy word that would rival Google® for public recognition. It was finally decided that BING would be that word.On September 22, 2008, in a globally strategic move, Microsoft filed for trademark registration, not in the United States, but in New Zealand. By doing so, Microsoft was able to claim an earlier priority date when it filed two “intent to use” applications in the United States nearly six months later for a variety of goods and services centered around search engines.

In the United States, as well as many other common law countries, the ownership of a trademark or service mark is usually based on which party was the first to use the mark. One exception to the First to Use Rule is when an applicant claims a bona fide intent to use by filing a federal application prior to actually using the mark. The filing date then becomes the “constructive date of first use.” By filing in New Zealand first, Microsoft might have gained an additional advantage over any party that started using the BING mark between September of 2008 and March of 2009 in “first to use” countries, as well a similar leg up on parties that filed for that mark in “first to register” countries during that same period.

Nearly three months after Microsoft filed its intent-to-use applications, Bing! Information Design, LLC (BID), a small design firm started in St. Louis, Missouri, filed a “use” application for the mark BING!, claiming a date of first use at least as early as April 1, 2000. In December 2009, BID filed both a Notice of Opposition in the Trademark Trial and Appeal Board (TTAB) to block registration of the Microsoft mark, and a lawsuit in St. Louis circuit court for common law trademark infringement and unfair competition.

Is there any way BID could have increased its leverage over Microsoft in this situation? Hindsight is always 20/20, but by filing for federal trademark registration when it first began using the BING! mark instead of waiting nine years until a software giant started using it, BID could have already had a federal registration, with the possibility of incontestability after five years of continuous use.

If BID had an exclusive right to use the mark through a federal trademark registration, Microsoft probably would have been deterred from adopting the BING mark in the first place. But even if Microsoft had decided to name its search engine BING, with a federal registration in hand, BID could have sued Microsoft in federal court and claimed attorney’s fees as well as statutory damages. By not possessing a federal registration, BID had to resort to filing suit in state court for common law trademark infringement, greatly limiting its options.

It remains to be seen how the battle of the Bings will be resolved, but this much is clear: trademarks are an asset that can greatly increase in value almost over night. By acquiring maximum protection of that asset as early as possible, a trademark owner is better prepared to take on the biggest of foes.

Trademarks & Parodies: The North Face versus The South Butt

Parody has been an effective tool used for centuries by comedians and social commentators to poke fun at well-known celebrities, politicians and institutions through mimicry. But when someone mimics a trademark, when does it cross the line from parody to trademark infringement?

According to North Face Apparel Corp., manufacturers of outdoor


equipment and apparel that bear The North Face logo, a teenager in suburban St. Louis has crossed that line. On December 10, 2009, North Face filed suit against James A. Winkelmann, Jr. for “marketing apparel that directly and unabashedly infringes and dilutes The North Face’s famous trademarks.”  Winkelmann, through his limited liability company and website, as well as a chain of local pharmacies, has been selling outdoor apparel similar to that of The North Face under the trademark “The South Butt.”  The word mark, along with a similar (albeit inverted) logo, is an obvious spoof on the more famous mark.  Winkelmann is even using a parody of the North Face slogan, “Don’t Stop Exploring.”  Winkelmann’s slogan: “Don’t Stop Relaxing.”  In an attempt to emphasize the humuorous nature of his brand, Winkelmann has included the following disclaimer on his website: “If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

But there has been no smile on The North Face. In its complaint against Winkelmann, The South Butt, LLC and Williams Pharmacy, Inc., the outdoor apparel giant asserted that “[w]hile defendants may try to legitimize their piracy under the banner of parody, their own conduct belies that claim.”  Citing two attempts to federally register THE SOUTH BUTT and a proposal to sell the business to The North Face for $1 million (an offer which was later withdrawn in light of increased sales as a result of the publicity from the dispute), The North Face claimed it had no choice but to protect its famous brand and trademarks.

Where does the law stand on parody marks? The U.S. Trademark Manual of Examining Procedure (TMEP) acknowledges that there are “confusing parodies” and “non-confusing parodies,” but case law seems to favor the owner of the mark being parodied. In 1981, theTrademark Trial and Appeal Board (TTAB) held that the mark CLOTHES ENCOUNTERS was likely to be confused with CLOSE ENCOUNTERS OF THE THIRD KIND for men’s and women’s clothing, and in 1986, a U.S. District Court ruled in favor of Mutual of Omaha Insurance Company when an anti-nuclear activist sold t-shirts with the mark “Mutant of Omaha.”  In 2006, the TTAB held that LESSBUCKS COFFEE was confusingly similar to the more famous STARBUCKS COFFEE.  However, sometimes the parody mark is determined to be non-confusing.  In 1987 a U.S. Circuit Court of Appeals ruled that LARDASHE for pants was not an infringement of theJORDACHE mark.

So where does this leave The North Face and its southern counterpart? Trademark owners need to defend the often hard-earned good will associated with their marks against those who would trade off of that good will by using confusingly similar marks. There is also the problem of dilution famous marks if the good of the infringing party are of a lesser quality.

But there can also be a down side to taking legal action against an infringer, especially if there is a large disparity between the size and fame of the two parties. When a clothing Goliath like The North Face takes on a David in the field like The South Butt, the public often sides with David, creating a public relations nightmare for the larger company.  And there’s also the issue of free publicity for the alleged infringer.  The South Butt was a relatively unknown brand with primarily local sales prior to The North Face taking it on.  As a result of the national attention caused by the controversy, sales of The South Butt products have skyrocketed.

When protecting its trademarks, big companies like The North Face need to find a delicate balance between defending against unfair competition and being able to laugh at itself.