moron in a hurry – Techdirt (original) (raw)
Hey North Face! Our Story About You Flipping Out Over 'Hey Fuck Face' Is Not Trademark Infringement
from the hey-fuck-face,-hire-better-brand-protection dept
Update: After this article was published The North Face reached out to me, admitting that it was “ridiculous” to send this threat letter, and that they were using the mistake to improve their processes to (hopefully) avoid this kind of thing happening again.
The “brand protection” industry is endlessly fascinating to me, in that it seems to be a near total scam that preys on gullible big company execs who believe that if anyone uses their brand or logos in a way they don’t approve of, it’ll mean the end of the world. That’s not to say there aren’t legitimate “brand protection” steps that large companies need to take, but so much of it is overblown fluff and nonsense, and all of the various “brand protection” companies out there feel the need to justify whatever bizarrely lucrative contracts these giant companies hand out. So they completely overreact to the smallest of things — and the end result is not brand protection, so much as brand destruction for demonstrating just how over aggressive you are as a company.
The clothing company The North Face seems to have a particularly itchy trigger finger in overreacting based on its “brand protection” strategies — and their latest target is… Techdirt. Now, I’m pretty fucking sure we don’t compete with The North Face in any real way (I don’t think our limited selection of self-designed tech policy nerd t-shirts counts). We do, however, sometimes report on the ridiculous ways in which The North Face overreacts to parodies.
It started, back in 2009, when The North Face decided to sue a student who created a sophomoric parody line of clothing called South Butt. Absolutely no one was going to be confused about where the clothing was coming from. No one was accidentally going to buy South Butt clothing, thinking it was really from The North Face. There was no likelihood of confusion. There was no dilution or tarnishment. There was just over-protective marketing execs who didn’t like being made fun of. Unfortunately, the judge in the case didn’t dismiss it upfront, meaning that it was about to get super expensive, and The North Face’s lawyers started dragging the family of the student through the mud. Given all that, it was unfortunate, but not surprising, that South Butt settled the case. Of course, a few years later, South Butt showed up again, but this time as… Butt Face, giving The North Face lawyers some billable hours.
Anyway, soon after all that happened, we wrote about a different overreaction by The North Face. Some guy made parody patches mocking The North Face (it’s not even clear if he actually made any patches, or just Photoshopped images of such patches). A key one was a patch with the phrase “Hey Fuck Face” on it, and The North Face’s three-line Half Dome wannabe logo design.
I mean, not the most clever of parodies, but a parody. “Mr. Smashy” posted the image to Flickr, and the hypersensitive lawbots at The North Face sent Flickr/Yahoo a takedown notice. And then, we at Techdirt wrote about this completely stupid overreaction by The North Face.
That was nine years ago. On Friday, we got a notice from a company “Yellow Brand Productions” on behalf of The North Face, complete with legalistic sounding language to make us think that us writing a story about The North Face overreacting to a parody image of a parody patch that has never actually been sold anywhere is actually trademark infringement.
Subject: Notice of infringement – techdirt.com
Date: November 12, 2021
Dear Sir/Madam,
I, the undersigned, state under penalty of perjury that:
* I am the owner, and/or an agent authorized to act on behalf of the owner, of certain intellectual property rights. * I have a good faith belief that the listings identified hereto offer items and/or contain materials that infringe on The North Face and Design trademark (see attached file) and are not authorized by the Intellectual Property Owner, its agent, and/or the law. * Please act expeditiously to remove the listings identified.
Intellectual Property Owner: The North Face Apparel Corp. Email Address for communication: [redacted] Website: https://www.thenorthface.com/
URLs at Issue:
Best regards,
Yellow Brand Protection on behalf of, The North Face Apparel Corp.
The email also, helpfully, included the Trademark Registration of The North Face logo, which notes that it covers specific trademark categories including backpacks, sleeping bags, tents, and clothing. As far as I know, a news article about a stupid overreaction to parody is not one of those things. The “notice of infringement” also included a signed letter from Christine Hernandez, saying that Yellow Brand productions and Matthew Leclerc are “authorized to represent The North Face, in trademark enforcement”. Usefully, this lets me know who I should address our response to: Christine Hernandez, who (according to her LinkedIn profile) is currently General Counsel at “VF Corporation” which is the parent company to a bunch of outdoor-focused brands that I will now start keeping track of to avoid ever supporting again, including The North Face, Vans, Timberland, Altra, Icebreaker, Smartwool, Jansport, Eastpak and more (this is unfortunate as I have a few Icebreaker and Smartwool products, and didn’t realize they were owned by an evil overly aggressive corporate conglomerate bully).
So, here’s our response:
Dear Christine Hernandez,
I wanted to make sure you were aware that you were throwing away money with “Yellow Brand Protections” (who itself appears to have bought up its own conglomerate called Corsearch.) While the company promises to “protect your brand to grow its value” and claims that it uses “advanced technology to detect, monitor and protect your brands,” it appears that it employs people who can’t tell a news story about your company’s itchy trademark trigger finger from actual infringement.
Sending out completely bogus trademark threat letters to news organizations covering your company’s bad practices seems like the kind of thing that might come back to bite your brand. In fact, rather than “brand protection” this feels a lot like “brand destruction.”
I’d suggest revisiting your contracts with “brand protection” companies who you give the authority to use your name in bogus threat letters, and maybe (just maybe) easing up on believing you need to threaten everyone over parodies.
Sincerely, Techdirt
Filed Under: brand protection, hey fuck face, moron in a hurry, trademark, use in commerce
Companies: corsearch, the north face, vf corporation, yellow brand protections
Hollywood Chamber Of Commerce Trademark Bullies Kevin Smith's Podcast Over Hollywood Sign
from the likelihood-of-confusion? dept
The Hollywood Chamber of Commerce is somewhat infamous for its constant trademark bullying over the famed Hollywood sign (you know the one). Its latest target is apparently the Hollywood Babble-On podcast that is done as a live show each week by radio/podcast guy Ralph Garman and filmmaker/entertainer Kevin Smith. Before the show this past weekend, Garman had tweeted out that it might be the last Hollywood Babble-On ever. In the opening minutes of their latest episode, Garman explains that they’ve received a cease and desist letter from the Hollywood Chamber of Commerce “re: unauthorized use of Hollywood stylized mark and Hollywood Walk of Fame mark.”
While I haven’t seen the full cease-and-desist letter, from what Garman said on the podcast, the issue is so ridiculous that the Hollywood Chamber of Commerce should be called out for blatant trademark bullying. You see, while this is the normal logo/image promoting the podcast:
At times, they’ve used other images, such as this one:
It’s that image that is apparently part of the problem (even though it’s not clear how often it was used). The Chamber of Commerce is using the Hollywood style lettering, which is an approximation of the famous Hollywood sign, and the star behind their heads (which it apparently believes is an implied reference to the stars on Hollywood’s walk of fame), to argue that this is unauthorized use of their marks. Some trademark lawyers will likely disagree, but this seems like classic trademark bullying.
If you’re unfamiliar with the podcast (and I’ll confess to being a loyal listener from Episode 1 through the latest, and got to see the show once live at Kevin’s invitation after he was on our podcast a few years ago), it’s a fun (frequently not safe for work) show looking at some highlights from the week’s entertainment news, mixed in with a series of re-occurring bits, frequently involving Garman’s rotating cast of impressions. In short, it’s two funny guys, who are both in show business and have been for many years, goofing off talking about show business, frequently mocking some of the crazier news stories coming out of that business.
In other words, there’s no way in hell that anyone in their right mind thinks that this podcast is officially sanctioned by “Hollywood” as some sort of official Hollywood product. The whole thing is kind of gently mocking some of Hollywood’s sillier foibles. Indeed, this seems like a perfect use case for the old standby in trademark law: the “moron in a hurry” test. And, to make it more relevant to the hobbies of choice of Ralph and Kevin, I think it could be argued that neither a drunk, nor a stoned “moron in a hurry” would ever face even the slightest “likelihood of confusion” that Hollywood somehow had endorsed the podcast, just because it briefly had images showing slightly askew letters and a star.
It remains one of the more frustrating aspects of trademark law that so many people believe that it means you get total control over the marks in question. That’s not how it’s supposed to work. It’s only in cases where there is a likelihood of confusion that people would be confused and believe that the mark holder is behind (or otherwise endorses) the products and services in question. And here, that seems pretty difficult to believe. Of course, rather than fight these kinds of things out, it’s frequently much easier to just pay up, which may be what the lawyers for the Hollywood Chamber of Commerce are banking on.
Filed Under: hollywood, hollywood babble-on, hollywood sign, kevin smith, likelihood of confusion, moron in a hurry, podcast, ralph garman, trademark, trademark bullying, walk of fame
Benihana Thinks Morons In A Hurry Will Be Confused By Rap Artist Benny Hunna's Name
from the can-i-get-that-rapped? dept
Trademarks, ostensibly to do with preventing customer confusion, sometimes get quite strange. Just in recent days, we’ve seen ESPN use a trademark to magically turn a Saturday into a Thursday, we’ve seen a serious discussion occur over whether or not people might confuse chicken with kale, and all the breweries everywhere are fighting over trademark quite possibly because they’re drunk. Sigh.
But if you just can’t get your silly-trademark-dispute fill, get ready for dessert: Benihana, a restaurant chain, is challenging Benny Hodges’ trademark application for his rapper stage name “Benny Hunna,” suggesting that customers looking for Japanese fusion food might accidentally end up at a hip hop concert.
Mississippi rapper Benny Hodges is currently up against the Florida-based teppanyaki chain Benihana in a legal battle over the right to trademark his would-be stage name, “Benny Hunna,” because the chain alleges that the similarity would create “confusion in the marketplace,” reports TMZ. Now, protectors of the Benihana legacy have reportedly challenged Hodge’s application to the U.S. Patent & Trademark Office, which would surely get in the way of the rapper’s alleged plans to “build an entertainment empire called Benny Hunna TV.”
What moron in what kind of a hurry is going to somehow think that Benny Hunna is in any way an extension of the Benihana restaurant chain? In what way are these two entities operating within the same marketplace? Also, who would actually think that filing this kind of trademark opposition is in any way productive, endearing, or good business? It’s like the lawyers were just bored or something, because Benny Hunna isn’t even a thing in the rap game yet.
At 290 Twitter followers and a scant 490 views on his latest music video, Hodges has a long way to go, but we wish him well on his road to building his Benny Hunna entertainment empire.
Bet you he has more followers and views now that Benihana decided to give him, and his disputed name, all this free publicity. Way to go, guys.
Filed Under: benihana, benny hunna, likelihood of confusion, moron in a hurry, trademark
Companies: benihana
Texas A&M Goes After Washington Brewery Over 12th Man Trademark
from the and-the-crowd-goes-wild dept
For some reason that I can’t explain, the convergence of alcohol and trademark disputes seems to be a thing. Previously, we’ve seen how disputes over labels and area codes in beer brands have resulted in this sort of thing. More recently, we’ve also seen how these trademark disputes can result in new label artwork and brew names from sarcastic and creative breweries.
That last example was top of mind for me when I read about what seems to me to be a silly cease and desist letter sent to a small brewery in Washington State by Texas A&M over a brew they had made using the term “the twelfth man.”
A family-owned brewery in Bothell, Wash. planned to sell “12th Man Skittles IPA” on Superbowl weekend but canceled the plans after receiving a cease-and-desist notice from A&M, which has trademarked the phrase. A&M lawyers actively police unlicensed uses of the trademark, which have increased with the Seahawks’ run to the Super Bowl. Bothell is a town of about 34,000 located about 20 miles northeast of Seattle. The brewery is operated by Jim Jamison and his family, who have full-time jobs but run the business on the side from property in a residential area. It’s only open on Saturdays from noon to 4 p.m.
The 12th Man Skittles IPA was thought up somewhat last minute by Jamison as a way to celebrate the Seahawks’ 12th man tradition and star running back Marshawn Lynch’s affinity for the candy. He brewed 5.6 gallons of the beer, which isn’t even a full batch, with home brew equipment.
For those of you that aren’t sports fans out there, the 12th man is a reference to the crowd in Seattle, who are so unbelievably loud as to both confuse the opposing team’s offense and generate enough decibels to wind up on the Richter scale. What’s strange in this case is that a brewery ostensibly isn’t in the same business as a public university. So, while A&M indeed has a trademark and a long tradition on the concept of “the 12th man”, it’s unclear to this writer how these two entities are competing in commerce. Add to that the fact that it’s quite unlikely that any morons in any stages of hurry would be confused enough to think that a tiny amount of beer in Washington had something to do with a college over two thousand miles away, and the common retorts offered by A&M don’t seem to hold much water.
Shane Hinckley, A&M’s interim vice president for marketing and communications, said A&M has employees who actively watch for trademark violations but that he didn’t remember how the small brewery got on the giant university’s radar. He said A&M officials have been more actively watching for trademark infringements in the last few weeks.
“The reason we send out cease-and-desist letters is to, No. 1, show we are protecting our brand, which is important in the eyes of trademark law,” Hinckley said. “And No. 2 is that infringing use has the potential to dilute our brand.”
Fine, but those provisions in trademark law don’t really apply if there isn’t an element of brand confusion in the same arena of commerce. What might otherwise be the legitimate proactive protection of a trademark is instead just behaving dickishly. But, alas, Jamison didn’t have the resources or the will to fight this nonsense, so he relented, calling his brew by another name. A wonderfully appropriate name.
The beer will still be on tap Saturday, just under a different name — “Cease & Desist IPA.” Jamison said he received no other legal notices but dropped “Skittles” from the name just to be safe.
“We’re going to serve it in 12-ounce glasses, going with a ’12th man’ theme, but we won’t call it the 12th man pour,” Jamison said. Jamison is not upset about A&M’s legal action and said that more than anything he is amused. He said A&M’s lawyers were really nice and were satisfied with his actions to comply with their demands.
I don’t know if I’ve ever heard of a business model centered around gaining notoriety via cease and desist notices, but Jamison appears to be Streisanding his way to success.
Filed Under: 12th man, beer, likelihood of confusion, moron in a hurry, trademark
Companies: texas a&m
How Drunk Would You Need To Be To Confuse Jack Daniel's With Cayman Jack?
from the this-town-ain't-big-enough dept
Apparently JDPI, the company behind Jack Daniel’s whiskey, has no trademark inhibitions. Through LexisNexis we learn that Mark Anthony International, another alcohol company, has filed a lawsuit (pdf and embedded below) seeking declaratory judgement that they can obtain and use the trademark “Cayman Jack”, after JDPI disputed their trademark application and sent them a legal threat.
Quick, look at these two bottles:
How hurried and moronic would you have to be to get them mixed up? Yes, they both use the name “Jack”. If a customer is drunk enough to confuse the world’s best selling whiskey with a “margarita-flavored malt beverage”, they are probably well past the point of distinguishing individual words, let alone of thinking, “Wow, this clearly Jack Daniels-endorsed luxury liquor certainly changes my opinion of that brand”. If such a person does exist, they must get pretty confused sometimes, since as Mark Anthony points out in its filing, the liquor store has no shortage of Jacks:
The [trademark] application was examined by the United States Patent and Trademark Office (“USPTO”) and found to be entitled to registration and published in the Official Gazette on March 9, 2010.
The fact that the USPTO believed CAYMAN JACK to be entitled to registration is wholly unsurprising given the prevalence of other “Jack” named drinks in the marketplace. The JACK DANIEL’S mark already coexists with other “Jack” named alcoholic beverages, including PANAMA JACK and CALICO JACK for rums; CACTUS JACK for tequila; PAPA JAC for alcoholic cocktails; YUKON JACK for liqueur; SCRUMPY JACK for cider; DEADEYE JACK, THIRSTY JACK, BLACK JACK STOUT, JACK RABBIT PALE ALE and JACK’S PUMPKIN SPICE ALE for malt beverages; HONEYJACK for mead and hydromel; and BLACKJACK PASTURE, JUMPIN JACK and BLACKJACK WINES for wines.
The lawsuit gets into a lot more detail, showing how the products are marketed in different ways to entirely different audiences, and walking through the entire brand development process for Cayman Jack to demonstrate that it had nothing to do with Jack Daniels. Hopefully the court sees that there’s no chance of confusion here and grants them their declaratory judgement—but as we’ve seen in similar cases, some judges prefer to feed the ownership culture by granting companies total control over simple symbols and words.
Filed Under: alcohol, confusion, jack daniel's, moron in a hurry
Companies: jdpi, mark anthony international
Tootsie Roll Suing Footzyrolls Over Trademark
from the sweet-feet? dept
Trademark is one of the few intellectual property laws left that I think generally serves its original purpose. For the uninitiated, trademark was originally created to avoid customer confusion over branding, thus keeping the buyer from deceit and harm at the vicious hands of fake goods. And, while trademarks can be abused, such as when Nintendo trademarked a phrase it didn’t coin for publicity purposes, their existence hovers on the border of benign.
Enter Tootsie Roll, the popular candy product that made a name for itself by being thrown at you in every holiday parade you ever attended. They’ve decided to take bold action against two ladies selling shoes, which they cleverly named Footzyrolls. Via CNN:
“According to the lawsuit filed in federal court in Illinois, Rollashoe, which makes rollable ballet slippers called Footzyrolls, is infringing on the brand name of Chicago-based Tootsie Roll. Tootsie Roll, which made 521millioninsaleslastyear,allegedthatthe521 million in sales last year, alleged that the 521millioninsaleslastyear,allegedthatthe2 million Footzyrolls brand will confuse and “deceive” consumers into thinking that the shoes are associated with Tootsie Roll’s portfolio of products.”
Now, in fairness to Tootsie Roll, I can’t tell you how many times I went searching in my house for a tasty treat and ended up gnawing on my shoes. Wait…no, that was the dog, who I happen to have named “Moron In A Hurry”. Actually, I’m having trouble wondering how either of these companies is in each other’s industry stratosphere. Footzyrolls are ballet slippers and a quick perusal of the Tootsie Roll site offers nothing in the way of footwear. And really, who outside of the New York Jets coaching staff is going to think feet are a sweet treat to be munched upon?
In all, this smacks of a legal department with a tad too much time on its hands, particularly with Tootsie Roll requesting “damages” be paid by the startup footwear company. Rollashoe is fighting back, though the company’s lawyer notes the collateral damage:
“‘Tootsie Roll is flexing its muscle. This case could now proceed for another year. It will cost the Caplans a lot of money. It could kill their business,’ he said.”
And thank God for that, for what a pitiful sight it would make to walk down the street and see morons hurrying everywhere, chewing not on the chocolate goodness that is a Tootsie Roll, but on the soles of their sneakers instead.
Filed Under: candy, footzyrolls, moron in a hurry, tootsie rolls, trademark
Companies: rollashoe, tootsie roll
Can A Moron Driving A Porsche Recognize The Difference Between The Car And A Pair Of Crocs?
from the that's-for-the-judge-to-determine dept
Reader Sceptic alerts us to a new lawsuit that seems perfect (on various levels) for the old “moron in a hurry” trademark test. Automaker Porsche — for drivers in a hurry — has sent a cease-and-desist letter to footwear maker Crocs, claiming that the company’s use of “Cayman” for one of its shoes is a violation of Porche’s trademark on the same term. As the folks at Footnoted point out:
Now few people would probably confuse Crocs Cayman sandal for the Porsche Cayman. After all, one sells for 29.99andtheotherstartsat29.99 and the other starts at 29.99andtheotherstartsat51,000.
Of course, this is apparently taking place in Germany, and (tragically) the moron in a hurry test (as far as we know) has still only been used in the UK, the US and Canada. But here’s a perfect opportunity for its introduction (in a hurry) in Germany.
Filed Under: cars, cayman, moron in a hurry, sandals, shoes, trademark
Companies: crocs, porsche
North Face Goes After South Butt Over Trademark Infringement
from the morons-in-a-hurry-in-heavy-fleeces dept
Another day, another story of a company reacting overly aggressively with a trademark infringement claim. North Face, the well known clothing company, apparently is not at all pleased with a student who created a parody line of clothing called “South Butt.” The lawyer representing the student had a great quote:
“I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt.”
And, indeed, that’s the central question in most trademark lawsuits. Are the customers confused into thinking that they’re buying one product, rather than the other. It would be pretty difficult for North Face to claim with a straight face that those buying South Butt clothing don’t realize it’s a different company…
Filed Under: clothing, moron in a hurry, parody, trademark
Companies: north face, south butt
Board Game Maker Sues Google, Claiming Trademark Infringement
from the publicity-stunt dept
Yehuda Berlinger points out that a board game company in South Africa that has a Cricket-themed board game called “Googly” is suing Google over trademark, claiming that Google’s registration of the google.co.za domain name violates its trademark. Of course, as the site writing about the story notes, no moron in a hurry would ever confuse the two (though, I’m unaware of whether or not South Africa accepts the moron in a hurry test for trademarks). My guess is that this is really just a publicity stunt by the board game maker, (correctly) realizing that this little lawsuit would get them some press.
Filed Under: board games, googly, moron in a hurry, south africa, trademark
Companies: google
Can A Moron In A Hurry Tell The Difference Between A Hershey Bar And A Couch?
from the yummy-cushions... dept
There are some legal decisions that just make no sense. Gunnar writes in to let us know of a story in Michigan, where a judge has ordered a furniture store to stop using a design that shows a couch being unwrapped from a candy bar. Hershey’s sued the furniture company, claiming it violated their trademark on unwrapping chocolate bars:
But here’s the thing: even the judge admits that trademark law shouldn’t apply here because it’s a totally different business and there’s little chance of customer confusion: “While both parties cater to the general public, there is no indication that their customers are predominantly the same. Even if their customer bases overlap to some extent … the risk of consumers confusing a furniture outlet with a candy store, or vice versa, appears remote.” Those are all things a judge says right before denying the trademark claim, but in this case, it went the other way. If a moron in a hurry isn’t likely to be confused, then there’s no trademark infringement. The furniture store wasn’t even using the image yet — but just had it in a contest for truck designs. At least the company hadn’t spent too much money painting up all the trucks.
Filed Under: chocolate, couch, furniture, logo, moron in a hurry, trademark
Companies: hershey