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 Chilling Effects Clearinghouse > Trademark > Notices > Pork Board has a cow over slogan parody (NoticeID 6418, http://chillingeffects.org/N/6418) Printer-friendly version

Pork Board has a cow over slogan parody

January 30, 2007

 

Sender Information:
The National Pork Board
Sent by: [Private]
Faegre & Benson
Denver, Colorado, 80203

Recipient Information:
[Private]
The Lactivist Breastfeeding Blog
Ohio, 43074


Sent via: email
Re: Infringement of Trademark Rights by "The Lactivist" webstore on

Dear [private]:

This law firm represents the National Pork Board in connection with its intellectual property rights.

We are writing to you in connection with your activities at "The Lactivist" webstore at the Cafe Press website, wherein you have been marketing t-shirts and other products containing a variation of National Pork Board's famous trademark/service mark THE OTHER WHITE MEAT@. As outlined in the enclosed letter that we have contemporaneously delivered to Cafe Press, the sale of these products is unauthorized and unlawful, and we hereby demand that you cease and desist from all commercial promotion of any slogan that is confusingly similar or diluting of National Pork Board's rights in its famous mark THE OTHER WHITE MEAT@.

In light of your willful infringement of National Pork Board's rights, we assume that you already are familiar with the following information. Nevertheless, for the record, please be advised that National Pork Board is the owner of the mark THE OTHER WHITE MEAT@ in the United States and elsewhere around the world, with the following formal trademark registrations:

THE OTHER WHITE MEAT U.S. Reg. No. 3,129,186
(Classes 16, 25 and 43)

The family of THE OTHER WHITE MEAT@ marks has been used and promoted extensively for many years, with National Pork Board having invested hundreds of millions of dollars in advertising since 1986 in the promotion of these marks. As a result, the mark THE OTHER WHITE MEAT@ has become instantly recognizable and famous in connection with the promotion of the pork industry. In addition to the use of these marks on pork products themselves, these marks are also used to promote high quality pork products through display on all manner of ancillary goods from cookbooks to coffee mugs. National Pork Board even sponsors a ARCA racing team under the mark THE OTHER WHITE MEAT@. Of course, National Pork Board also distributes clothing, including t-shirts, bearing the mark THE OTHER WHITE MEAT@.

THE OTHER WHITE MEAT
THE OTHER WHITE MEAT
THE OTHER WHITE MEAT
National Pork Board considers your use of the slogan "The Other White Milk" to be a trademark infringement and also trademark dilution. The slogan "The Other White Milk" is an obvious attempt to call to mind National Pork Board's famous mark THE OTHER WHITE MEAT@, and it is clearly likely to cause confusion as to whether the products being offered by you under that slogan are associated with or endorsed by or otherwise affiliated with National Pork Board's long-established promotional campaign for the pork industry.

Moreover, even were this use of the slogan "The Other White Milk" found to be not confusing, which we think is unlikely, this slogan nevertheless damages National Pork Board's rights in the famous mark THE OTHER WHITE MEAT@ because the slogan significantly dilutes the distinctiveness of National Pork Board's mark. In addition, your use of this slogan also tarnishes the good reputation of National Pork Board's mark in light of your apparent attempt to promote the use of breastmilk beyond merely for infant consumption, such as with the following slogans on your website in close proximity to the slogan "The Other White Milk": "Dairy Diva," "Nursing, Nature's Own Breast Enhancement," "Eat at Mom's, fast-fresh-from the breast," and "My Milk is the Breast."

(See http://www.thelactivist.com/store/cpshopi/3283 192404/thelactivist/97 1406.)

U.S. Reg. No. 1,486,548 (Class
42)
Canada Reg. No. TMA 506,870
(Class 42)
European Union, CTM No.
926,097 (Class 42)
U.S. Reg. No. 3,126,072
(Classes 35 and 43)

In light of all this, National Pork Board hereby demands that you provide us written confirmation no later than 5 p.m. Mountain time on February 5, 2007, that you have taken the following steps:

1. You have disabled or terminated all display of the slogan "The Other White Milk" at any website that you own or control.

2. You have requested the disabling or termination of any other display of the slogan "The Other White Milk" at any website that you are associated with, but which you do not control.

3. You have destroyed all goods and any tangible promotional materials that bear the slogan "The Other White Milk."

4. You agree never in the future to offer for sale or otherwise commercially promote any product or service under the slogan "The Other White Milk."

In the event that you promptly comply with these demands, National Pork Board is willing to waive its various claims against you, which include, without limitation, trademark infringement, trademark dilution, and unfair competition. Please bear in mind that if you fail to comply with National Pork Board's demands herein, National Pork Board would otherwise be entitled to recover from you a judgment for all of your profits in connection with any infringing sale as well as all of its reasonable attorney's fees and costs and a permanent injunction against you and anyone associated with you.

We trust that after you have reviewed this matter, you will conclude that the better course is to promptly comply with National Pork Board's demands herein. However, to the extent you do not so comply, please be advised that this letter is without prejudice to any rights or remedies that National Pork Board may have.

If you would like to discuss this matter, please do not hesitate to contact me. All correspondence in connection with this matter should be addressed to me.

Sincerely yours,
[Private], Esq.
Enclosures
cc: [private], Senior Vice President for Governance & Operations
National Pork Board
[private], Cafe Press

 
FAQ: Questions and Answers

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Question: Can I use a trademark in my blog's name or in the title of a blog post?

Answer: Yes, if it is relevant to the subject of your discussion and does not confuse people into thinking the trademark holder endorses your content. Courts have found that non-misleading use of trademarks in URLs and domain names of critical websites is fair. (Bally Total Fitness Holding Corp. v. Faber, URL http://www.compupix.com/ballysucks; Bosley Medical Institute v. Kremer, domain name www.bosleymedical.com). Companies can get particularly annoyed about these uses because they may make your post appear in search results relating to the company, but that doesn't give them a right to stop you.

Sometimes, you might use a trademark without even knowing someone claims it as a trademark. That is permitted as long as you're not making commercial use in the same category of goods or services for which the trademark applies. Anyone can sell diesel fuel even though one company has trademarked DIESEL for jeans. Only holders of "famous" trademarks, like CocaCola, can stop use in all categories, but even they can't block non-commercial uses of their marks.


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Question: Does the product or service on which I am using the mark matter? Do dates matter?

Answer: It matters if the mark is not famous. The C&D should disclose your opponent?s products and/or services and the date on which it commenced use of the allegedly infringed mark. This will help you guesstimate whether a likelihood of confusion between the marks exists. For instance, if your opponent uses ?opera? on truffles and you use "opera" on silk gloves, consumers are not likely to confuse the products. If the mark is determined by a court to be famous, however, confusion is irrelevant and [non-fair] use on any type of goods may be an infringement.

The date on which your opponent began using the mark is significant because a junior (later) user cannot displace a senior (first) user in the senior user?s geographic region. In other words, if you have owned a chain of donut shops called "Lucky Donuts," with locations in New Jersey, New York, and Connecticut since 1943, a national chain called "Lucky Donuts" founded in 1979 has no trademark infringement claim against you in the NJ-NY-CT tri-state area. If your opponent has begun using its allegedly infringed mark after your use, you have another reason to question the merit of the C&D.


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Question: What is a famous mark?

Answer: A famous mark is a mark that has become so well known, that it has become almost universally recognized. An example of such a mark would be "McDonald's" or "Coca-Cola." Famous marks become important where an owner of a trademark is claiming trademark dilution against a defendant. The Federal Anti-Dilution Act of 1996 provides that an owner of a famous mark is entitled to an injunction where a defendant's use of the mark causes dilution of the distinctive quality of the owner's famous mark. In determining whether a mark is famous, a court will consider a list of eight factors, found in the 1996 Federal Anti-Dilution Act.


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Question: What is the difference between a trademark and a service mark?

Answer: Trademarks refer to goods and products, that is, physical commodities which may be natural or manufactured or produced, and which are sold or otherwise transported or distributed.

Service marks refer to intangible activities which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.

Because the legal rights are essentially the same, the term "trademark" is frequently used to refer to both types of marks.

To learn about other types of marks, see Chapter 100 of the USPTO's Trademark Manual of Examining Procedure.

To tell whether something is a good or a service, see 37 C.F.R. ?6.1.


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Question: What can be protected as a trademark?

Answer: You can protect

  • names (such as company names, product names)
  • domain names if they label a product or service
  • images
  • symbols
  • logos
  • slogans or phrases
  • colors
  • product design
  • product packaging (known as trade dress)


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Question: What exactly are the rights a trademark owner has?

Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.

There are two trademark rights: the right to use (or authorize use) and the right to register.

The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.

The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.

Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.


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Question: What are the limits of trademark rights?

Answer: There are many limits, including:

  • Fair Use
    There are two situations where the doctrine of fair use prevents infringement:
    1. The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
    2. Nominative fair use
      This is when a potential infringer (or defendant) uses the registered trademark to identify the trademark holder's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
      • the product or service cannot be readily identified without the mark
      • he/she only uses as much of the mark as is necessary to identify the goods or services
      • he/she does nothing with the mark to suggest that the trademark holder has given his approval to the defendant
  • Parody Use
    Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
  • Non-commercial Use
    If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
  • Product Comparison and News Reporting
    Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt.
  • Geographic Limitations
    A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy's Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy's Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused.
  • Non-competing or Non-confusing Use
    Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark.


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Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?

Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this, then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is confusingly similar, even if it isn't exactly the same.

Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless of any confusion.

You can roughly assess the validity of your opponent?s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.

A fanciful mark is a mark someone made up; examples include KODAK or H?AGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.

A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.

A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.

Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.

There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.


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Question: What facts should a C&D include?

Answer: Recitation of Facts. Read this section of the letter carefully. It should contain some or all of the following information:
(1) the trademark that is allegedly being infringed;
(2) the trademark, domain name or other use that is allegedly doing the infringing;
(3) the products and services on which your opponent uses the allegedly infringed mark;
(4) the date your opponent commenced such use; and
(5) the registration numbers, if the trademarks are registered with the Patent & Trademark Office.


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Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute?

Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it?s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer?s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you?re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994).


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Question: What implication does alleged confusion have on claims of trademark infringement?

Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include:

  • proof of actual confusion
  • strength of the established mark
  • proximity of the goods in the marketplace
  • similarity of the marks? sound
  • appearance and meaning
  • how the goods are marketed
  • type of product and how discerning the customer is
  • intent behind selecting the mark
  • likelihood of expansion in the market of the goods


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Question: What are the limits on dilution?

Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark.

A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games.

Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer.

The following uses of a famous mark are specifically permitted under the Act:

1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary.

In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient.

Many states also have antidilution laws protecting mark owners.


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Question: What is trademark dilution?

Answer: A type of infringement of a famous trademark in which the defendant's use, while not causing a likelihood of confusion, tarnishes the image or blurs the distintiveness of the plaintiff's mark. For example, if someone tries to sell "KODAK" pianos, KODAK could stop the person--even if consumers were not confused--because "KODAK" is a famous mark, and its use on products other than film and film-printing accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness.

Many states have anti-dilution laws. The federal government only recently enacted anti-dilution legislation; see the Federal Trademark Dilution Act at 15 USC 1125(c).


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Question: When is parody protected from a charge of trademark infringement?

Answer: Parody is a usage of a mark that pokes fun at the mark and does not confuse the public as to the source of the usage. In determining whether there is infringement the court balances the public interest in free expression against the public interest in avoiding consumer confusion. "A parody must convey two simultaneous--and contradictory messages; that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the consumer will be confused." From Cliffs NOtes, Inc. v. Bantam Doubleday Dell Publishing Group, 886 F. 2d 490 (2d Cir. 1989)


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Question: Where can I find federal trademark law?

Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered.

Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute.


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Question: How can I find out if someone has a valid trademark?

Answer: It isn't easy. In the United States, a trademark owner isn't required to register the mark anywhere, so there is no single central list of them all. Unlike most other nations, registration here is optional.

Many owners do register their marks with the government, however, to better notify the world of their claims. Each state has its own trademark registry for goods and services sold locally. For companies that sell in more than one state, there is a US federal registry that is accessible online through TESS. TESS is searchable by key word as well as by registration number.

Because registration is not required, however, a word might still be a protected mark even if it doesn't appear in any of these locations.

When a company is selecting a new brand, its trademark attorney will usually conduct a "trademark availability" search which will look in many different locations to try and ferret out competing uses of the desired name. Business directories, Internet search engines, telephone directories are other searched sources. Multi-national vendors will search trademark registries in foreign nations as well.

Even the most exhaustive search will not be conclusive, however, but it will usually indicate that if there is any other commercial use, it is probably limited to a very local area. It is OK to use the same mark as another company, so long as the new use isn't likely to confuse consumers.


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Question: What do these registration numbers mean? or Why don

Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement.

If your opponent has registered its mark on the Patent & Trademark Office


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Question: What is this laundry list of things the C&D says will happen if I don't obey?

Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you unless you capitulate. This list generally includes, but is not limited to:
(1) ceasing use of the allegedly infringing mark or surrendering the domain name;
(2) rendering an accounting;
(3) posting corrective advertising;
(4) obtaining an injunction;
(5) recovering costs and fees.

Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that Torquemada never thought of them).

Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied:
(1) your domain name is identical or confusingly similar to your opponent?s;
(2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona fide business or for non-commercial fair use purposes); and
(3) your name is registered and used in bad faith.

An accounting basically means that you disclose the following information to your opponent:
(1) the date you began using the allegedly infringing mark;
(2) the names of individuals who knew of the use when it began;
(3) the amount of traffic at your web site or business at your store; and
(4) your profits and revenues during the time you used the allegedly infringing mark.

Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your opponent?s, and that you are not affiliated with your opponent.

An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing trademark.

Some provisions of the Lanham Act permit a trademark holder to recover attorney?s fees and court costs from an infringer.

That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the smorgasbord of legal options with your opponent?s right to inflict any of them on you.


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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?

Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.


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