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Yesterday it was revealed that Coca-Cola was replacing its Coke Zero line of soft drinks with a new drink called Coca-Cola Zero Sugar. This is an interesting development for trademark lawyers because Coca-Cola has been engaged in a years long fight over its ability to protect its trademark in the Coke Zero name. Coca-Cola was embroiled in a bitter trademark dispute with Royal Crown Company and Dr. Pepper/Seven Up, Inc. over whether the term “Zero” was generic for zero calorie soft drinks. Now, however, it appears that Coca-Cola is no longer interested in asserting trademark rights in the “Zero” term for zero calorie or zero sugar soft drinks. Coca-Cola claims that a reason for the change is that it wants the label to be as “clear and descriptive as possible.” Coca-Cola is replacing Coke Zero. This is a striking admission for Coca-Cola that it doesn’t consider “zero” to be a trademark and instead considers it a descriptor for the fact that its drink contains zero sugar. As trademark attorneys know, a descriptive trademark can only be protected if the trademark owner using the term in a trademark sense, that is, to act as an indicator of source, and can show acquired descriptiveness or secondary meaning. Coca-Cola’s action is all the more surprising given it appears there are still several challenges pending at the Trademark Trial and Appeal Board (TTAB) with Coca-Cola opposing various “Zero” trademark applications. This is a classic example of marketing and legal at an organization being at cross purposes. But in any event, this seems to have been a wasted effort on the part of Coca-Cola for the last ten plus years. Coca-Cola’s filings with TTAB indicate that it has spent hundreds of millions of dollars to promote its “Zero” brand so that it could claim trademark protection in this descriptive term. Now, however, in one statement, Coca-Cola has undone all of that marketing by admitting that it wants to use “Zero” not as a trademark but to simply describe that its drink contains zero sugar.

There are some interesting developments going on in the world of Copyright Law, specifically, the Digital Millennium Copyright Act (DMCA). The DMCA was passed in the 90s ostensibly to protect against hackers breaking digital locks or protection on software. However, manufacturers are now using it as a basis to challenge some fundamental concepts people have about ownership of the products they buy. The latest example comes from John Deere who recently told the Copyright Office that, due to the heavy use of software code in modern tractors, farmers do not own their tractors. Instead, they have “an implied license for the life of the vehicle to operate the vehicle.” Other vehicle manufacturers have made similar arguments, namely, General Motors. Anyone who has had to have a new key FOB made for their modern vehicles I imagine has first hand experience of how much control vehicle manufacturers can retain over vehicles through software. My opinion is that there will be a day of reckoning on when and how consumers can modify the software to products they buy. The ad hoc process currently being employed by the Copyright Office is not tenable. Today it is legal (subject to certain restrictions) to hack your smartphone but it may not be legal to modify the software in your tractor in similar ways. In any event, it should be interesting to see where the copyright office comes down on the debate.

The hiring of Shaka Smart by the University of Texas may lead to a trademark dispute between UT and Smart’s former school Virginia Commonwealth University. Shortly after the hiring of Smart, Texas filed for trademark registrations for “Horns Havoc” and “House of Havoc”. However, the term “Havoc” has been associated with VCU’s high intensity style of play for at least the last 5 years. It is unclear if VCU ever actually used “Havoc” in connection with actual merchandise or marketing, but reportedly they did at least register for a state trademark registration. Given the limited use of a state registration relative to a federal registration, this was a strange decision by VCU. VCU would likely have to rely on its common law trademark rights for protection of “Havoc” in markets outside of Virginia. In any event, it will be interesting to see how these trademark rights play out.

Even big entities like Sony sometimes forget to keep track of their trademarks. Sony has filed a Petition to Revive its trademark application for BloodBorne it registered on an intent to use basis for computer games. Sony claims that its reason for letting the mark lapse was unintentional. Luckily for Sony, it doesn’t appear that a notice of abandonment was sent yet so the petition will likely be granted. According to 37 C.F.R. ยง2.66, the Petition to Revive must be filed within two months of receiving the notice of abandonment. Still, when filing intent to use applications it is best practice to keep track of your deadlines because the trademark office is not always so forgiving.

http://www.dualshockers.com/2015/03/25/sony-petitions-to-revive-lost-bloodborne-trademark-calls-failure-to-extend-it-unintentional/

One of the most frequent questions I get from entertainers in all industries is “what kind of entity should I form?” This is a really important decision to make for bands especially. David Valenti, a partner at my firm Reed & Scardino, recently gave a talk for Austin Startup Week about what factors you should think about when deciding what type of entity to form. I encourage everyone to check it out and of course if you have any questions feel free to post.

I was interviewed by NPR today concerning the efforts of Texas A&M and then family of Johnny Manziel to trademark the nickname Johnny Football. Check it out here. http://www.marketplace.org/topics/business/johnny-football-name-sparks-field-battle

Many people, trademark lawyers included, do not give a whole lot of thought to state trademark rights. Instead, they focus on obtaining Federal rights culminating in a Federal registration. While the Federal rights are critical, I believe it is a mistake to forget about state rights, especially in Texas. The simple reason why I believe this is a mistake is the Texas state anti-dilution statute, Sec. 16.103 of the Texas Business and Commerce Code. Normally, a trademark owner can only stop someone from using a similar mark if they are in competition. However, dilution allows a trademark owner to stop any use of a similar mark notwithstanding any competition between the parties. This dramatically broadens the right of the trademark owner. In order to take advantage of dilution’s protection, the owner must show that they own a famous mark. Proving a famous mark is very hard to do on the Federal level because the trademark owner must show a broad reach and recognition across the entire country which can be very hard to do. In Texas, the famous requirement will be much easier to prove because it must simply be wide recognition within the state or within a geographic region of the state. Therefore, if you have a distinctive mark in Texas it is good idea to secure these state rights in order to have as broad a coverage as possible.

There is a big copyright case being argued in front of the Supreme Court this week. The crux of the case is the inherent conflict between the First Sale Doctrine and copyright owners’ desire to market their goods internationally. Here is a link for more information on the case. http://www.scotusblog.com/?p=153984

It was brought to my attention that a workout web page on facebook Blogilates has gotten in some trouble for posting “Hunger Games” workout videos. The post I saw said that the creator of the video believed she was protected by the “parody law.” I have not seen the video but claiming protection of something as a parody can be very difficult to do. Copyright gives the creator of a work the exclusive ability to create derivative works. In layman’s terms this means that the author of The Hunger Games had the exclusive right to create the movie for which I am sure the producers of the movie paid the author handsomely. But derivative works are quite a bit broader than just the movie. The author will also have to give permission to create all the Hunger Games video games, posters, action figures, and any other work based upon the books. A parody is allowed but it must be very clear that the new work is poking fun at the original work and is only using elements of the original work so that the audience knows what is being parodied.

Another issue involved here is trademark. I am willing to bet that the author of Hunger Games has a trademark or two either pending or already registered for Hunger Games. If that is the case, the owner of the trademark would object to the workout videos because it could suggest endorsement or sponsorship of the videos by the author. This is a touchy area of the law because it often causes copyright/trademark owner to go after their own fans who are very likely just trying to pay homage. But fans need to be careful before borrowing any elements of their favorite works because they may be in for a nasty surprise.

The Wall Street Journal recently wrote an article about intellectual property protection as it relates to the fashion industry. http://online.wsj.com/article/SB10001424052702303592404577364333707766366.html?mod=WSJ_topics_obama

There are a few things to keep in mind when fashion and IP law intersect. First, you cannot copyright a fashion design in the United States. The reason is that copyright does not extend to functional things such as clothing. The fashion industry has tried for years to amend the copyright act but so far they have not been successful. You can however trademark a distinctive design that consumers associate with a particular company. A good example of this is the Burberry plaid design. The Burberry design is protected, not because a copy might damage the creative expression of Burberry, but instead to protect consumers from being confused as to the source of a competing clothier.

Jewelry is another matter. Jewelry designs can be protected by copyright and knockoffs are quite prevalent in this area so it is a good idea to constantly register new jewelry designs so that any copyright claim can be enforced.

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