Posts Tagged ‘ Trademark ’

Five Dollars says Footlong not Subway Trademark Infringement

February 17th, 2011. By AbiK

[vimeo]http://vimeo.com/10535376[/vimeo]

Any any any…FIVE…five dollar…five dollar footlong…any any any… Ok, if you sat transfixed in front of the tube during the last Olympic games, you could not have possibly missed the Subway jingle touting their five-dollar footlong sandwich. For that matter, if you’ve EVER sat in front of a television, you’ve probably needed some form of medical help to get that “any, any, any FIVE” exorcised from your brain.

Be that as it may, it seems Subway has taken claim to the word, “footlong”. Now, I use the term “word” loosely—as, after all, any self-respecting writer or editor would tell you that “footlong” is not, actually, a word. (Don’t believe me? Refer to the layman’s abridged Merriam-Webster online edition of the dictionary. It simply is not a word.) But, let’s just assume for now that it is.

Iowa chain store Casey’s General Stores, Inc.—which uses “footlong” on its menu boards—has filed a lawsuit against Subway seeking a federal judge to rule that “footlong” is a part of the vernacular, part of the “general English language” and not a word that can be the special property of Subway. Why, it would be as silly as suggesting that “yardstick” or “half-gallon size” were trademarkable. And what? Would every vendor who pushes a footlong hot dog be subject to trademark infringement if Subway could put a claim on the word?

You can see the absurdity of it. And, for that matter, why The Washington Post reports that the lawsuit filing also charges Subway with “frivolous litigation”. Think about it—there are well-paid attorneys working on this for Subway.

Speaking of Subway in-house counsel, Valerie Pochron is the attorney who had written to Casey’s to inform them that Subway had applied for a trademark on “footlong” and that Casey’s should cease and desist from using the word or face the consequences…the wrath of Subway in the form of legal action.

Interesting thing about Pochron though. This isn’t her first at-bat over trademark issues—hell, let’s hope not as she’s apparently a trademark attorney. Pochron had not too long ago gone after a website “MySubwayRewards.com”, claiming trademark infringement. She filed a complaint with the WIPO Arbitration and Mediation Center in January, 2010. Now, yes, it’s a similar looking and sounding name and if Subway, the food chain, had actually been using “MySubway” or “MySubwayRewards” maybe Pochron would’ve been onto something.

But, while acknowledging that “Subway” is a fairly well known—perhaps even “famous” name—the owners of “MySubwayRewards.com” apparently never responded to the complaint (bluemaumau.com), and, here’s the kicker, the decision as it’s stated on the case document was as follows: “For all the foregoing reasons, the Complaint is denied.”

Ouch! It was pretty plain as day that such a URL could ultimately be a trademark issue—ok, maybe not right at that moment, but you could see where Pochran may have stood a chance. But no! And more specifically, the case doc states that “Inasmuch as the Panel finds that Complainant has failed in these proceedings to discharge its burden of establishing that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, it is unnecessary to consider whether the second and third elements of the Policy have been met in the circumstances of this case.”

Failed to discharge it’s burden?!?

Slam! Case closed!

Don’t get me wrong here—I’m sure Pochron is a good lawyer who’s won a case or two. Be that as it may though, with the MySubwayRewards.com case as a backdrop, let’s see how successful Pochron is at claiming “footlong” is trademark infringement when she couldn’t even cough up enough to establish trademark violation when the company namewas being used. Note also that Subway tried to go after Sheetz Inc. convenience stores in Pennsylvania in 2009 for use of the word “footlong”—and they left that one empty-handed as well.

Given that neither Pochron or Subway had either offered comment or responded to the Casey’s lawsuit, maybe they’re taking a move out of MySubwayRewards.com’s playbook and figuring silence is golden. More to come.

Tags: Casey's General Stores, Five Dollar Footlong, Footlong, Subway, Trademark, Trademark Infringement, Valerie Pochron
Posted in Emerging Issues, Intellectual Property | No Comments »

Damn IHOP – Went for Pancakes and They’re Fasting!

September 16th, 2010. By AbiK

How the heck did that happen? I was told it was “IHOP”, and it’s a 24/7 operation, and they’re not serving pancakes. Hell, it gets worse—they’re FASTING!

Oh, my bad. Seems that this IHOP is not that IHOP. And, to be fair, I did not actually go to any IHOP.

Let me explain. First off, this IHOP is actually IHOP-KC—which stands for International House of Prayer – Kansas City. And well, it seems that the other IHOP—the one you all know that serves up pancakes with a portfolio of syrups on each table (and the never empty coffee pot™)—is a bit miffed that the Prayer IHOP is using its well-established acronym. So miffed that they’ve filed a trademark infringement lawsuit against the religious organization. They want IHOP-KC to stop using the IHOP acronym.

By the way, while I included the above video from The Onion as it just seemed apropos, IHOP–the pancake IHOP–does operate some 24/7 locations, however, the decision to open 24/7 is left to the franchisees (in case you were wondering).

So I checked out IHOP further—the one with the prayer.

There’s lots of info online about IHOP-KC. Commentary about it ranges from pure devotion to accusations of its being a cult. I don’t care what folks think about it (though it does make me reflect on that Seagram’s Bronfman sister story), it doesn’t serve pancakes. And I’m not sure I’d confuse it with a place that does. Though I can understand the other IHOP’s desire to own their brand and its symbols.

For those of you wondering what IHOP-KC is all about, here are some of their own words about themselves:

The Lord has called us to be a community of believers committed to God, each other, and to establishing a 24/7 house of prayer in Kansas City—a perpetual solemn assembly gathering corporately to fast and pray in the spirit of the tabernacle of David.

[Note, I checked with Guinness World Records for the record for longest prayer session, Read the rest of this entry »

Tags: IHOP, IHOP-KC, Trademark, Trademark Infringement
Posted in Emerging Issues, Intellectual Property | No Comments »

Hey, Leave my Nurdle Alone! (Glaxo & Colgate go at it…)

August 5th, 2010. By AbiK

The beauty of blogging about all things legal is that you just never know what you’ll come across. Many times there are heart-wrenching personal injury stories. Sometimes there are lawsuits that need to be filed under “ridiculous“. And then, there’s the nurdle.

For those of you not-in-the-know, a “nurdle” would be the dollop or blob of toothpaste that sits so beautifully with nary a smudge or drip on top of a toothbrush in a toothpaste ad. You’ve seen it hundreds of times—it ranks up there in ad-land with the Philly Cream Cheese dollop spread on a bagel or the Cool-Whip dollop (below) on some strawberry dessert. It’s photo-styling perfection and you best not mess with it.

Especially if it may be trademarked.

And, it appears Glaxo is claiming that the nurdle is, indeed, a trademark of theirs—for their Aquafresh “Triple Protection” (oh, btw, “triple protection” is also part of this trademark infringement case) toothpaste. You know, the one made famous by blending three color stripes of toothpaste into one squirt of the tube.

But see, then came Colgate-Palmolive with its “Triple Action” toothpaste. Uh-oh. Now things are getting fired up. “Triple Protection” vs. “Triple Action”. And Glaxo was thinking that was sounding pretty darn close to their long-established triple-play (note, “triple play” is not trademarked) toothpaste.

So, upon seeing the new Colgate toothpaste, Glaxo had raised objections with Colgate over its branding. And apparently Colgate didn’t back down, which got Glaxo’s dander up.

According to Bloomberg.com, Glaxo filed new trademark applications for the nurdle. In a complaint filed by Colgate, this move—filing the trademark application—is a “shot across the bow” in which Glaxo is attempting to gain exclusive rights for the nurdle design. The complaint seeks to have a federal court rule that the Colgate toothpaste does not infringe Glaxo’s trademarks for Aquafresh.

Glaxo’s take on this? According to an emailed statement from Glaxo’s spokeswoman to bloomberg.com, “More than 20 years ago, GSK’s Aquafresh brand created the highly distinctive nurdle device to promote its range of Aquafresh oral care products. These extremely valuable trademarks are the exclusive property of GlaxoSmithKline’s world famous Aquafresh brand and GlaxoSmithKline will take all necessary steps to defend its rights.”

Tags: Colgate, Glaxo, Nurdle, Toothpaste, Trademark
Posted in Intellectual Property | No Comments »