Trademark Infringement In The Wild

John Di Giacomo:
Hey everyone, this is John Di Giacomo. You are listening to the Revision Legal, May It Please the Internet podcast. And today I am joined as always by Eric Misterovich. Hello, Eric.
Eric Misterovich:
Hey John. How are you?
John Di Giacomo:
I’m good. Had some friends in from Japan and they remarked about my Midwestern accent. So if you are listening to this and you hear a Midwestern accent, tell me because I don’t hear anything. So I’m now very conscious of the fact that I sound like I’m from the Midwest. And today-
Eric Misterovich:
We definitely have an accent. I remember my wife got called out when she was at a Subway one time. She said, “Black olives,” and everyone started laughing at her. I think we were in South when she did that.
John Di Giacomo:
My wife definitely has one and I give her a hard time about it. I don’t allow anyone to say pop in my house. They have to say soda and she hates it. She just absolutely despises it. And it’s all because I was on a rooftop in LA once having drinks with some dentist that I had met at the bar and he said, “Where are you from, Michigan?” And I was like, “Yeah, how can you tell?” And he said, “Because of your accent.” I was like, “What? This is pure generic American. Come on, bro.”
Eric Misterovich:
It’s bad. I mean the Saturday Night Live does it with Governor Whitmer pretty well. They nail it pretty good.
John Di Giacomo:
Yeah, but you and I lived in East Lansing. No one in East Lansing talks Whitmer. I think she’s putting it on.
Eric Misterovich:
Yeah, that’s true. There’s a little folksiness added on to it. Sure.
John Di Giacomo:
Well, today we’re talking about trademark infringement in the wild, and this is a discussion about trademark infringement cases that have been recently filed that we find to be funny or interesting. And today we’re going to start with one from Seattle, which is Pike Place Market Preservation and Development Authority, the Pike Place Fish Market. And Eric, have you been to Seattle?
Eric Misterovich:
I have, yeah.
John Di Giacomo:
Did you go to the Pike Place Market?
Eric Misterovich:
Of course. Definitely. You have to.
John Di Giacomo:
Yeah, it’s pretty cool, really cool city. But tell us what happened in this case.
Eric Misterovich:
Yeah, so trademark cases in general have a way of being entertaining in a way that a lot of other lawsuits aren’t and it usually comes down to, and I think all of these cases are really good examples of it, but this one has an interesting real property lease component to it that I don’t think I’ve ever seen before.
So we all know that there is the market in Seattle and within that market there’s the Pike Place Fish Market, and that fish market has to lease that space from the overall market. There’s now a fight over whether or not the fish market can use the name or the mark Pike Place Market on their goods. This is stemming from a lease agreement that’s been in place between the parties for, I want to say over 20 years now, where the landlord has a contractual restriction in there saying the fish market cannot sell its products bearing the name Pike Place Market outside of the market without their permission.
And what happened is the fish market changed hands, new ownership came in, and of course they want to expand the business and grow it. And so they want to sell goods in retail stores throughout the country. They went to the landlord and said, “Hey, we see this contractual provision, we’re intending to sell outside of the market.” Allegedly the market said, “Okay, tell us what you want to do.” But the fish market never really responded and just started selling goods. And so now they’re in a lawsuit. The market has filed a federal court lawsuit for trademark infringement. The fish market is trying to cancel the market’s trademark registration and it’s a big messy fight. So Johnny, here are these facts, initial thoughts, what do you think about this case?
John Di Giacomo:
Well, outside of the legal context, it sounds like somebody walked into a new business that they didn’t do a whole lot of due diligence on, didn’t review the lease agreement, probably bought it at a premium, thought they were going to grow the business, realized that there was a contractual restriction that prevented them from growing the business and got scared. This seems like that’s the first factual thing because if they’re trying to sell outside of the market itself, they probably should have looked at that before they bought the business.
Eric Misterovich:
Yeah. I mean this seems like a real mess up if they were not aware of this because it seems like the restriction was pretty clear. It is a funny kind of intersection between a lease agreement and trademark rights that you don’t see very often. But I mean, I understand the market’s position, their name is Pike Place Market, and now you have Pike Place Fish Market selling these pre-packaged smoked salmon products all over the United States. And man, it’s kind of hard to separate these two, but I certainly understand the market’s position.
John Di Giacomo:
Yeah, it seems like there’s a license solution where the development authority that runs the market gets to control the name, but the fish market gets to use it because I’m looking at the trademark first use and commerce dates and it looks like the fish market was 1975 and then the actual market was 1987. So the fish market has a prior date of use. But thinking through this, it sat on its rights from 1987 when the Pike Place Market apparently opened or started using Pike Place Market as the name till now. That seems like a big problem.
Eric Misterovich:
Yeah, I find myself saying this to clients all the time when they call with a trademark issue is, “Trademark problems that exist now will continue to exist forever unless something changes.” And that is exactly what happened here where there was a problem on day one and effectively no one did anything and just operated business as usual. And now it’s 25, 30 years later and you have this very difficult web to try to untangle. And I mean the license agreement seems like an obvious way to solve it. Terms of that of course are the devil’s in the details there, but it’s a mess. And it’s one of these where it was always a mess, but it was always fine because they were working together and now the fish market’s making money without the larger market and they want a piece.
John Di Giacomo:
It seems like the fish market could pay 20 cents a package of smoked salmon. Who are these people that buy smoked salmon? I’m just disgusted right now. Our producer Mark is looking at me like, “That’s me.”
Eric Misterovich:
What do you have against smoked salmon?
John Di Giacomo:
I don’t know. It’s just of the fish that I would smoke. Salmon is the lowest of them. I mean, look, I’m not opposed to some smoked white fish but smoked salmon. I don’t know, man, just not my thing.
Eric Misterovich:
I mean, I like it. I don’t know that it’s my favorite in the world, but it’s pretty good. And if I saw it in the store and “Oh, it’s Pike Place, that would certainly get my attention. And that’s part of what trademarks are intended to do.
John Di Giacomo:
Yeah, that’s a great segue because it is exactly what trademarks are supposed to do. I would believe that it had a higher quality or a higher level of freshness because if you’ve been to the market, you see them throwing fresh fish and you realize this is about as good as it gets. So for sure there’s value there. And I think you’re right. I think a license does make sense.
Eric Misterovich:
I think so. Hopefully they can work it out. It’s a bummer to see. Everyone loves the Pike Place Fish Market and it’s a bummer to see this happening. It seems like there’s plenty of money to go around. They just got to figure out a fair way to split it up.
John Di Giacomo:
Yeah, definitely. So the next one we have is Rolls-Royce, the HexClad. Rolls-Royce obviously is the car company. Car company. There’s that Midwest accent. Again, HexClad is a new maker of cookware. Eric, do you own any HexClad products?
Eric Misterovich:
I don’t, but I have been looking into it.
John Di Giacomo:
We have a few HexClad pans and they’re pretty good. They’re cool because they’re like a mix between cast iron and non-stick aluminum. It’s an interesting setup. They have this little matrix system in the bottom of the pan that actually works really well. I think it’s one of the only products that I bought off a Facebook ad that actually works the way it was intended to. So both interesting companies, HexClad obviously has become very popular in the last few years. They scored an endorsement or got Gordon Ramsey to recommend their products, so they’re obviously doing relatively well. Tell us about this case.
Eric Misterovich:
That’s what it stems from is Gordon Ramsey apparently called it the Rolls-Royce of pans, of cookware, and the complaint details and I have screenshots of social media posts after post after post and advertisement where they are just repeatedly using that line where they are the Rolls-Royce of pans. And I think we all know exactly what they mean when they say that. And Rolls-Royce is saying, “Well, why are we brought into this? We don’t have anything to do with it. You’re not Rolls-Royce. We don’t know if you’re up to a Rolls-Royce level of quality or not.” So they filed suit in New Jersey. They’re alleging trademark infringement, unfair competition, trademark dilution, the usual suspects here.
One thing I thought that was interesting when going through the complaint is Rolls Royce actually does sell cookware and you can actually buy a car that has a built-in cookware set essentially where a spare tire would go, which I’m sure their attorneys were like, “Well that’s perfect. That helps us go from just cross the line of this is a silly lawsuit to a very useful fact for them,” even though I’m sure nobody really knows Rolls Royce based on their cookware, but it is a very useful fact for them in this case. And so this one, it feels like this one could have been resolved without a lawsuit. I’m sure they tried. And my guess is HexClad just said, “You’re not really going to sue us over this.” Well, they did. This one’s an interesting one. Trademark dilution certainly comes to play. John, can you help everybody understand what these major brands and these famous marks, that elevated protection they have under trademark law?
John Di Giacomo:
Yeah. So even before I talk about that, I want to make two comments. One is the first thing that came to mind when you said Rolls Royce cookware in the back of the car. I thought of Arthur. Do you remember the movie Arthur?
Eric Misterovich:
Yeah.
John Di Giacomo:
Oh, man, it’s so good. I just imagine Arthur with, he has a wine set that he just rolls out of his Rolls Royce. And then the second is I also thought of Will Smith and Will Smith being the embodiment of Rolls-Royce slapping HexClad and saying, “Keep our damn name out of your mouth.”
Eric Misterovich:
We need to find a way to get a Gray Poupon mixed into this whole…
John Di Giacomo:
Yeah, we do. But trademark infringement extends to the use of a mark and association with some goods or services. So a good example is Delta Air Lines versus Delta Faucets. They are the same mark used in association with different goods and services, so there typically will not be overlap or a claim for infringement between the two of them. But there is a larger breadth of infringement analysis when it comes to famous marks and famous marks are marks that have become so ingrained in the public eye that anyone knows who they are, everyone knows who they point to.
Under the umbrella of famous marks, there are two claims that can be made by somebody who holds a famous mark. One is dilution by blurring and the other is dilution by tarnishment. And dilution by blurring is this idea that if you use our mark on a product that is maybe not the same thing that we sell, it dilutes our brand. And people may be either confusing into believing it originates from us or the quality is poor and they believe that we’re responsible for the poor quality. So I’m assuming that’s probably what happened here.
Or alternatively, there’s dilution by tarnishment where a famous brand is infringed upon allegedly by someone who tarnishes their brand even though they’re using the mark in association with different goods or services by casting the brand into some kind of disrepute. And a good example of that would be Microsoft for cannabis products or something along those lines where there’s a real risk that the use of that mark in association with some typically non-infringing product would otherwise tarnish a famous brand’s brand. So Eric, do you know whether it’s dilution or tarnishment in this case?
Eric Misterovich:
It looks like blurring.
John Di Giacomo:
Yeah, that seems right.
Eric Misterovich:
Well, it’s both.
John Di Giacomo:
When I said dilution, I meant blurring of things.
Eric Misterovich:
They allege both, you’d expect. But yeah, and I’ve always thought the expanded rights for famous marks feel wrong. They just feel wrong. I think I remember, isn’t there a case about Tiffany’s and a breakfast place or something like that and the jewelry company won on a claim for tarnishment or blurring? Something like that. It just feels unfair because no one’s really thinks of breakfast place is selling diamonds, but they have these very strong rights and they can enforce them. And it’s a difficult defense I think for HexClad, even though it doesn’t feel like they’re doing anything wrong. It feels like they’re trying to paint Rolls Royce in a positive light. The dilution claim is going to have legs.
John Di Giacomo:
Yeah, I think you’re right. There was another case, Louis Vuitton v. Chewy Vuitton. Chewy Vuitton was a dog toy company. That’s one of the cases you read in law school when you talk about dilution. And every conversation in law school is exactly about the thing you mentioned, which is that why are we giving these brands so much power that they’re able to go after smaller brands that don’t cause confusion within the same categories of goods or services. So there’s definitely a debate there, I think to be had.
This particular case, on the way the law is currently written, I think HexClad’s got some problems. In trademark law there’s this idea of nominative fair use. Nominative fair use is referencing another’s trademark for the purposes of specifically raising it to say something about it. But in doing that, you can’t imply endorsement or sponsorship. You can only use so much of the mark as necessary for the purposes of the use. There’s also some classic fair use defenses relating to comparative advertising. This is neither of those. It just feels intuitively like you are evoking one of the largest brands in the world for the purposes of saying that your products are really high quality. I wouldn’t want to be in the shoes of HexClad’s attorneys right now.
Eric Misterovich:
Yeah, I think my take on it is they probably started the slogan and then it just, they doubled down and it grew and it grew and it grew and they’re just using it more and more and more. And Rolls-Royce is like, “Okay, enough. You can’t have your entire business model be based on comparing yourself to us.” They could obviously say the gold standard or the ultimate, best in class. There’s a lot of ways to describe being the best without saying Rolls-Royce. So it’s maybe is this innocent slogan that morphed into, “Wow, they’re really depending on this,” and at some point Rolls-Royce has got to enforce their own rights.
John Di Giacomo:
Yeah, I don’t know that I would’ve chosen a British car company either. If you’re going to talk about quality and reliability, British car companies is not where I’d start.
Eric Misterovich:
Burn. Burn on British car companies.
John Di Giacomo:
Sorry, all you Range Rover fans. Well, we got another one. So Trader Joe’s v. Trader Joe’s United, what is this one about?
Eric Misterovich:
Trader Joe’s has sued a labor union that represents Trader Joe’s employees. And the main reason is because the union sells merch that has the Trader Joe’s logo-ish on it. It’s not their exact logo, it’s more like they use a similar font that Trader Joe’s uses. They have the same circle, Trader Joe’s logo. It certainly doesn’t look identical when I’m looking at, we have the pictures we’re looking at, they’re not identical, they’re somewhat similar. Trader Joe’s in Red.
Anyways, the problem here is the grocery store says, “Why are you using this in a commercial manner? You are making money off of merchandise that is effectively our trademark.” So I understand where they’re coming from. The complaint in this case goes to pretty great lengths to say what they do not consider to be infringement. So reference to Trader Joe’s, they are very expressed that this is not infringement. They of course are allowed to use the words Trader Joe’s. They also pointed out some of the other merchandise the union sells that has nothing to do with Trader Joe’s but is more related to labor union rights and collective bargaining and employee rights. And they say, of course, “None of this is infringing.” So it does feel, I don’t know, what’s your take on it? What was your initial reaction?
John Di Giacomo:
It sounds like Trader Joe’s being fairly reasonable. I mean the idea that they allow them to use the Trader Joe’s mark for the union seems to be a pretty large concession, although maybe it’s some form of fair use. I’m not quite sure which form it would be. I guess it might be nominative fair use. I’d have to think about it more, but that seems like a pretty reasonable concession. What’s the basis for selling the merch? Is it fundraising purposes? Do you have any idea?
Eric Misterovich:
That’s my guess. I don’t know. Some kind of revenue creation. Yeah, on the one hand it’s like, well, would you expect the Trader Joe’s union to look completely different than the Trader Joe’s actual logo? Certainly it could, but I think one would also expect it to have some similarity. And I don’t know, when I look at the pictures, they’re just not that similar. It’s just Trader Joe’s is in red writing and the font, not identical, but it’s close, I would say.
John Di Giacomo:
Yeah, I agree. The font is definitely close-ish. It’s not identical at all. There’s, I don’t know, a Romanesque script to the Trader Joe’s font and the Trader Joe’s United font is more like Arial or I don’t know. My font knowledge is terrible, but that’s what it looks like. It looks a little bit blockier. That seems like a tough one. Why name the union Trader Joe’s United. Why not name it some other term? You can get more members, you can avoid these claims. I don’t know. It just seems like a poor choice. And then it seems like an equally poor choice to sell products that could… I mean, these are bad. There essentially like grocery bags. So you do seem to be stepping right into the market that Trader Joe’s is selling in.
But I can also see it from their side where the uses are not that similar. There’s no copyright claim because there’s not a font copyright claim from what I can see from the complaint. Yeah, I don’t know. This is a tough one. It intuitively feels like fair use, but at the same time it doesn’t fit on all fours with any of the traditional fair use doctrines.
Eric Misterovich:
Yeah, I think it’s a tough one to reconcile and figure out who do I like, what side do I like more? I think ultimately the problem for the union is they pick all of these things for a reason. They picked that font for a reason. They picked the color for a reason, they sell that certain bag for a reason, and it’s because Trader Joe’s is really popular and has a very popular brand and their stuff looks similar to it. It’s not identical, it’s different-ish. But if you want to talk playing off the goodwill of someone else, that’s definitely what’s happening here. And just because you’re the union that represents Trader Joe’s people, doesn’t give you the right to do that.
John Di Giacomo:
It reminds me of the difference between litigating trademark cases in the ninth circuit, which is California and Washington state versus litigating trademark cases in the sixth circuit. In the sixth circuit, we don’t have the idea of nominative fair use. We just have the likelihood of a confusion analysis, which nominative fair use in the ninth Circuit is basically, again, the ability to use someone else’s trademark to reference that company, to compare it to your own, but you can only use so much as necessary. This seems to step over that line a bit because it is, as you said, similar enough to make me question why didn’t they do something completely dissimilar and maybe they went over the line a bit, but if we were to analyze this here in the sixth circuit, is there likelihood of confusion? I don’t know. I don’t think so. I mean, somebody seeing Trader Joe’s union probably isn’t going to think that that bag comes from Trader Joe’s, right?
Eric Misterovich:
Yeah, I agree. I mean they’re very clear and the imagery they use is, it’s this fist, it’s holding a box cutter. It’s clear it’s intended to be this labor force thing where it doesn’t look like a Trader Joe’s logo. It’s different. And they’ve added changes consistent with their purpose, I guess. And so that would weigh against a likelihood of confusion. It’s a tough one. I mean it’s one where overall it’s like, hey, here’s a real parent corner answer. It’s disciplining this is a lawsuit. That’s the overall feeling I have. Can’t you guys figure this one out without it being a lawsuit?
John Di Giacomo:
Yeah, it seems like this should have been resolved way earlier, although there’s probably just some bad blood between the two of them because obviously they’re on separate sides. It’s an interesting case that’s more complex than I intended to think about today. We have another one, Wrigley v. Turpogs, llc. All right, what is this one?
Eric Misterovich:
Turpogs is about terpenes and cannabis. And so Turpogs, it sells cannabis infused products. And they had a mark. I don’t know how they pronounced it. It looks like Skittles to me. It’s just the S’s are Z’s. So instead of an S at the front and the end of Skittles, it’s a Z at the front and the end. And they use slogans such as “Taste The Z Train,” “Taste the Strain, Bro.” And Skittles of course, was not real happy with this. And they filed a lawsuit to stop them claiming it’s obviously too close to the Skittles trademark. And the slogan “Taste the Strain, Bro,” was too close to “Taste the Rainbow.” See, this is why you love Trademark Law. You don’t get to say that in creditor’s rights cases.
John Di Giacomo:
No, not at all.
Eric Misterovich:
That’s why I love working in this niche of laws. You can’t make this stuff up. It’s amazing. So my takeaway from this one is obviously the Turpog company was in the wrong. This is very clearly infringement. It’s almost definitely dilution by tarnishment. There’s not really a valid defense at all changing an S to a Z. It’s not nearly enough to mitigate against the likelihood of confusion. I didn’t see any pictures, but I’m guessing the actual products also look like Skittles. So in terms of what was this cannabis company doing? My takeaway is they didn’t really care. They’re going for it. And now people are talking about them, which ends up being a good thing.
John Di Giacomo:
Yeah, we had a case like this for a client that’s famous in Michigan, and I had to send a demand letter to a cannabis company that was using their trademark for cannabis. And at the time we discussed, when you have this conversation with the client, you’re like, “Well, do you want to grant them a license?” And our clients were not interested in that. They were like, “We don’t want to be associated with cannabis.”
I wonder how long it takes until you start to see Skittles or any of these other larger companies licensing to cannabis brands. Obviously it’s probably not going to be something that might be tailored to kids also being sold in association with cannabis. But stranger things have happened. I mean, we see crossovers between alcohol and different flavors in the marketplace and food products, Apple Pucker, these types of things. I wonder if it’ll ever happen.
Eric Misterovich:
It could. I mean, I know Michigan actually has a law that prevents cannabis infused products from coming in packages or being shaped in a manner that looks like kids’ candy. So this would not be allowed under Michigan law related to cannabis, although I will say that law is not strictly enforced.
John Di Giacomo:
Yeah, I was going to say, I’ve seen PotDots in Michigan, which are like little Skittles that have, I mean, geez, I just said Skittles. They do look like Skittles though, but they’re Skittles that have cannabis in them.
Eric Misterovich:
Yep. I’ve seen peanut butter cups, I’ve seen Hot Rocks like Pop Rocks. So there is a rule. I think it is a good rule, but it’s not really being enforced the way you would expect. So here, this was a no-brainer, I think. I can’t imagine this litigation lasted very long, but they made the news and I’m sure that ended up working out for them and they probably got some publicity out of it.
John Di Giacomo:
Yeah, that’s probably right. So the next one is Real v. Amazon or is it Wreal? I’m not quite sure. What’s this case about?
Eric Misterovich:
This company had a streaming service called Fyre TV that was called the Netflix of porn. And it existed. It existed apparently before Amazon came out with Fire TV. And so this was what’s called a reverse confusion case, which is somewhat rare in the trademark world, but it’s interesting. John, you want to give an overview of reverse confusion?
John Di Giacomo:
I mean, it’s basically the opposite of confusion in the sense that the opposite of likelihood of confusion where someone is likely to be confused into believing that your product is associated with theirs. Reverse confusion is where in this case Amazon is such a powerful brand that people believe that the original mark holder or the person with priority is associated with Amazon. So they’re saying, “We don’t want to be associated with Amazon, but the Fire TV brand has gotten so large that now we are, and that’s a problem.”
Eric Misterovich:
Yeah, no one thinks they are Fyre TV promoted by Amazon. But Amazon’s Fire TV is so big it engulfs the plaintiff here. And so the plaintiff, the Netflix of porn, filed suit and the case was decided on summary judgment in favor of Amazon. Amazon Fire TV, I’m sorry, the plaintiff, Netflix of porn appealed the 11th circuit, which ruled in favor of the plaintiff and sent the case back to district court where it is now settled. My takeaway here is Amazon should have settled this one on day one. I’m sure they have the money to do so. They would’ve avoided all the news on it. I can’t imagine they wanted this news to come out. It takes two to settle, so maybe the plaintiff was unwilling unless they got a certain dollar figure. And then once the case went on so long and through an appeal, everyone calms down and settlement becomes much easier to find.
John Di Giacomo:
So Fyre TV, I am a tech person. So one of the first streaming devices was Roku. I had a Roku, I think the first generation of Roku and Fyre TV was actually one of the apps on the first generation of Roku. So that existed way prior to the Fire TV stick that Amazon sells, et cetera. You’d think that Amazon would’ve by proxy, just silently bought the company and shelved it. Something along those lines. This seems like a really bad idea on the part of Amazon’s attorneys, and they’re not stupid. I mean, Davis, Wright and Tremaine, typically. Some of the best attorneys in the country, you would’ve thought that they would’ve done this trademark search and advise them correctly. But again, trademark law is oftentimes a crapshoot. You take risk, sometimes you win, sometimes you lose. It’s never always one thing or the other.
Eric Misterovich:
Yeah, that’s true. That’s a good point. And we have a lot of clients sometimes and they get frustrated if we’re telling them the risks associated with the marks they really want to use. And it’s like, listen, you have the biggest company in the world here, Amazon, losing a trademark infringement lawsuit that I don’t know, it was fairly obvious was going to happen if they went with Fire TV and they chose to do so. So sometimes you just take it and take the risk and see what happens and let the chips fall where they fall. And in this case, Amazon did that and lost.
John Di Giacomo:
Yeah, I think it’s also worth mentioning because this case and the last one involving Zkittlez or Z Kittle Z, whatever we’re describing this as, both involve changes to the lettering of the words. So in the case of Fyre, it’s the use of a Y as opposed to an I. In the case of Skittles, it’s the addition of Zs instead of Ss. In trademark law, we don’t just look at the strict textual representation in the mark. You look at sight, sound, meaning, commercial impression, et cetera. So if you’re thinking about a trademark and you think you can just change the lettering, even though it sounds like something else, that’s probably a no-go. And it’s worth keeping that in mind. And these two cases are really good examples of that.
Eric Misterovich:
Yeah, that’s a great point. I mean that’s something that I think is a common misconception. “Oh, I used a Z where the S is.” No, it’s not this scientific test, it’s a much more flexible test and small changes like that just aren’t enough.
John Di Giacomo:
So the next case involves the Isley Brothers. Let’s talk about this one. What happened here?
Eric Misterovich:
This is one more of the long history of band name trademark cases. And the question is, who owns the trademark registration for the Isley Brothers? And this band started in 1954. We have two brothers now suing each other. It seems like one brother basically made the claim that the band was no longer in existence once a third brother passed away. And the court’s opinion literally said, “Band name trademark cases are very difficult. And I’m not going to dismiss this case right now.” And this has happened, John, you probably, I can’t think of one right now, but I know there’s a few other cases and bands that have fought about this.
John Di Giacomo:
Grand Funk Railroad, Flint band. Mark Farner from Grand Funk Railroad got in a lawsuit with his former bandmates. And this happened in Michigan. They filed a motion for preliminary injunction against his use of, I think The American Band or something like that. And he ended up winning. And I think the case settled. But yeah, this is pretty common in bands. So if you are in a band, get everything in writing. You should have entities shown on the trademark, there should be shares allocated to each member, et cetera.
Eric Misterovich:
And of course, bands maybe not the most organized in terms of legal matters. So of course no one is thinking about who owns the trademark registration to our new band name when everyone’s starting out. And then next thing you know, it becomes a real question. So this one is just one of the many band name cases that it really shouldn’t get to this point. They’re family. It’s a valuable trademark registration. Why don’t you guys figure out how to get along?
John Di Giacomo:
Yeah, You guys should just fight each other like we Italians do.
Okay, the last one, Michigan lawsuit. This is one that we are handling that we can’t talk specifics on, but it’s interesting fact pattern. So let’s talk through this.
Eric Misterovich:
I think we’re going to have Drew come on the next pod and dive into this. We have filed a notice of appeal regarding the denial of a Michigan trademark registration. And short story is that Michigan has a, I don’t know if it’s a law or an administrative rule or exactly how they have this grounding, but they don’t allow a trademark to be registered if there is a business entity name with that exact name. So for example, if we are Revision Legal, you have Revision Legal, PLLC registered as a business entity. If we tried to file Revision Legal, a state trademark application for Revision Legal, it would be rejected. And we’d think that rejection doesn’t really make sense.
John Di Giacomo:
And the distinction here is that an entity name is what we would call a trade name and a trademark is something different. So if you’ve ever owned a business or know of someone who owned a business that had a entity name that didn’t match the brand name, which is pretty common, that’s the distinction. The brand name is the trademark. The entity name is the entity name that’s called a trade name. So it does seem like this admin reg or whatever it might be, doesn’t make a whole lot of sense and it hasn’t caught up to the law on trademarks at all.
Eric Misterovich:
Yeah, it seems very bizarre. I mean, it’s black letter law that registering and business entity is not a use in commerce. And so trademark rights only exist with a use in commerce. So to prevent a trademark registration based on a use that is something other than a use in commerce just really stands out as being inconsistent with traditional trademark law.
John Di Giacomo:
Yeah, it’ll be interesting to see how this goes and we’ll have to have Drew on to have a conversation about it since he’s handling the case. Well, that’s all we have for this week. Thanks again. Again, this is John Di Giacomo and I’m joined by Eric Misterovich. This is the May It Please The Internet podcast and we will see you later.