Posts Tagged ‘ Trademark Infringement ’

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 »

Yes, I’m defending Paris Hilton

January 13th, 2010. By AbiK

I’ll say it again: Yes, I’m defending Paris Hilton.

Paris has been slapped with an infringement lawsuit over her Paris Hilton shoes’ insole cushion. They’re heart-shaped. And wouldn’t you know, Gwyneth Shoes has very similar insoles—so similar, in fact, that they claim Paris stole the idea!

Now, admittedly, I don’t have the inside scoop on where and how Paris’ biz team gets their ideas—though as with every celebrity product launch we continue to hear how “closely involved” or “hands on” Paris is in the “complete” design-manufacture-marketing process for her shoes. Yeah. Ok.

But, here’s where I’m coming from. First, you can buy heart-shaped insoles (see pic) from Foot Petals. Secondly, have you seen Gwyneth’s lineup of shoes? No? If you’ve seen Paris’ shoes, Jessica Simpson’s shoes, Steve Madden, Chinese Laundry, and even Payless, you’ve basically seen Gwyneth’s lineup. Note also, you won’t find Gwyneth on zappos.com, shoes.com or piperlime.com either.

So here’s my bet: Gwyneth saw an opportunity and took it. Think about it, I’d never write about or stop by Gwyneth shoes’ website if it hadn’t been for Paris Hilton. So unless something comes out in the wash here, I’m saying drop it. And Gwyneth can shoot Paris a thank-you email for the bump in their traffic number for January 2010 vs. prior month…year…all-time history…

I don’t find myself in Paris’ court too often, but on this one, yes, I’m defending Paris Hilton.

Tags: Infringement, Paris Hilton, Trademark Infringement
Posted in Intellectual Property | 4 Comments »