Blinded by the dilution doctrine. Tone deaf to the Internet. Kellogg Co. may have reserved for itself a special place in the trademark hall of shame. Toucan Sam has been hawking FROOT LOOPS children's cereal for over 30 years. Kind of cute. Harmless enough.

Unless you are a serious non profit institute. Unless you seek to preserve the culture of Northern Guatemala by preserving artifacts and seeking to save the rain forest. And you use a Toucan, along with other Mayan imagery, as your logo.  Then you will get Kellogg Co. asking you to stop using a Toucan bird, to symbolize Mayan culture. Why? Because  Kellogg has immersed its FROOT LOOPS cereal in Mayan culture. And they now own the right to present that culture.
I have included the two Toucans. Suffice it to say they are nothing alike. 

But that's not what qualifies this as a hall of shame candidate. It's the idea that by carefully and accurately seeking to portray and preserve Mayan culture the Institute is somehow diminishing the cartoon, sugar coated vision of that same culture that Kellogg created to sell cereal. As the lawyer for the Mayan Institute put it ( and here I paraphrase) " It's like the Washington Redskins football team complaining to an authorized American Indian foundation about  how Indians are being presented."
As I have said so many times before " WHAT WERE THEY THINKING?" But I never meant it more than today.




By way of Lara Pearson, author of the blog brandgeek I now know more about the band Phish than I ever expected to know. I'm a car guy so you can ask me about Firestone tires. And I am a father who remembers the Where's Waldo books and posters.

What's the connection? Not sure there is one. But let me tell you a story.
There's a guy in Vermont nicknamed Waldo. This guy has, for years been selling hats, hoodies, and baby clothes that are meant to express a loyal fan's undying support for the band Phish. Waldo's stuff isn't licensed. And it goes right up to the imaginary trademark infringement line. But does not cross that line. Or so said somebody when the band Phish sued him several years ago.

Here's where the story gets weird. Waldo brought out a hat to pay tribute to a well known Phish song called First Tube. The hat had a passing similarity to a hat sold by Firestone the tire Company. Not a slavish copy.

And the hat carried the word FIRSTUBE in a script typeface similar to the script typeface that Firestone sometimes uses to promote its FIRESTONE brand. But it also had the letters PH proudly displayed on the back. In sum: yet another tribute to Phish, using the term FIRSTUBE in a script format.

And apparently Firestone went ballistic. Of course you can understand why. When I say PHISH you immediately say Firestone tires. Oh you don't? Well how about if I say FIRSTUBE?

FIRSTUBE /FIRESTONE? They don't sound at all similar to me. But of course I'm not blinded by the Firestone light. And what about all the hard core Phish fans? Will they automatically link their beloved First Tube song with Firestone tires?

Too often, major brand owners start to see the external world through the prism of their internally generated understanding of that world. An understanding that puts their products at the center of the known universe. We're talking tires here folks.



Keeping an eye on trademark law used to require a sense of humor. Watching fast food companies, cosmetics barons, and aging teen idols shape American law was, at times, awkward, but usually entertaining. Not exactly getting prisoners off death row. But intellectually interesting.

But trademark law has changed. The stakes are as low as ever. But lawyers who represent established brand owners now seem more and more willing to employ tactics that border on the unethical to advance the interests of their clients. Apparently professional standards have been sacrificed on the altar of greed. The only real check on such tactics is the power of the Internet to bring shame on brand owners who are guilty of misstating and exaggerating their legal rights.

And so it is with W. H. Capital, LLC.(and their lawyers). These folks own the chain of WAFFLE HOUSE branded restaurants. They have federally registered the term WAFFLE HOUSE for restaurant services. So, naturally when a new rap artist J.R. Bricks named his first iTunes rap song WAFFLE HOUSE, they set out to squash him.

What's the connection between restaurants and rap music? There is none. These folks have absolutely no business hassling this guy. And their lawyers have absolutely no business helping them.

But hassle him they did. He caved. He changed the name of the WAFFLE HOUSE song. Even though they did not have a legal leg to stand on.

I sure hope that the text of the cease and desist letter winds up on the Internet. It's hard to imagine a better candidate for a shaming campaign.




First, let me be clear. I am no fan of color trademarks. Especially single color trademarks. Yes I know the Lanham Act says "Any word, name symbol or device” may qualify as a trademark. But, unless I get too close to your word trademark, I am free to slavishly copy your needlessly expensive designer shoes. And market them as my own.

Color trademarks can often be more powerful. Once the law allows me to claim the red soles of my needlessly expensive shoes as a trademark, you, my competitor will not be able to slavishly copy my product. Not only that, but even if your needlessly expensive designer shoe is quite different from my needlessly expensive designer shoe, you may not be able to use my “trademark/color” in your product.

Not a bad world to live in for the trademark owner. And I suspect that’s how the folks at Louboutin felt. At least until yesterday. That’s when Judge Marrero of the SDNY brought them back to the real dog eat dog fashion world.

In a very readable, clever opinion, Judge Marrero concluded that because color was such an integral part of the fashion industry, nobody, including Louboutin, could establish trademark rights in a single color.

I should be thrilled. Bucking the trend towards too much protection for brand owners, an enlightened federal judge preserves competition.
Consumers benefit.

Perhaps. But the best I can say is right result based on puzzling legal analysis.

My strongest objection to the decision is the way in which Judge Marrero conditions the very definition of what constitutes a trademark on a particular industrial setting. No such limitation can be found anywhere in the plain wording of the statute. And, to the best of my imperfect knowledge, no other judge has used such logic to define a trademark.

To support his analysis Judge Marrero cited the well-known legal doctrine of functionality. Functionality is meant to limit the reach of product features claimed as trademarks. But here too, Judge Marrero seemed to use the functionality doctrine in puzzling ways to support his decision.

M. Louboutin readily admitted that he chose red for the outsoles of his shoes because red was sexy, has energy, and is engaging. Sounds to me like the logic behind millions of brands, packages, and graphic symbols.

The plain fact is that nobody had ever thought to use a vibrant color as part of the outsole of a shoe. Louboutin did it. Louboutin promoted it. The world of needlessly expensive designer shoes strongly associates red outsoles with just one manufacturer. The judge turned a strength into a weakness.

Often a brand owner will be anxious to claim a feature as a trademark because that feature makes the product easier or less expensive to make. Again, the functionality doctrine, properly applied, preserves competition by allowing competitors to use that feature.

Typically, when a claimed feature makes an item more expensive to produce it argues for trademark protection because no rational competitor would want to spend more to produce a competing product.

Not so for Judge Marrero. While he readily acknowledged that producing red outsoles with a lacquered made such shoes more expensive to produce, in the upside down world of high fashion more costly to produce was a competitive advantage. Again, the judge turned strength into a weakness.

A thoughtful reader- that is to say anyone who has ventured this far- may be inclined to ask: What’s going on here?

Here’s the best I can offer.
The defendant in this case was the world famous design house Yves. St. Laurent. Did YSL have any interest in producing shoes with a red lacquered outsole? Nope. Does YSL want anyone to mistake their shoes for those made by Louboutin? Nope.

But YSL loves to produce needlessly expensive monochromatic designer shoes. In a rainbow of colors. Including an all red shoe with a red outsole.

IMHO the all red YSL shoes spooked Judge Marrero.
Could the good judge have upheld the validity of the Louboutin mark but then concluded that YSL’s monochromatic red shoes were not infringing the red outsole trademark?

Don’t see why not. I suspect that his will be somewhat of a hot potato for the Second Circuit Court of Appeals. Surely the decision will be appealed.


Big biz battles over patents all the time. But it's not that common for titans of industry to clash over trademarks. At least industrial titans.

Oh sure I can give props to Georgia-Pacific. With the 4 billion ( with a B) dollar toilet paper market to protect they played the "let's convert out patents into trademarks so that we will always have a monopoly" game absolutely according to rules and strategy. First, they came up a quilted and raised design on their toilet paper. This design fluffed up the sheets and prevented sheets from nesting. As sophisticated players what did they do? They bombarded the United States Patent & Trademark Office with numerous utility patents.

But that's not all they did. G-P also filed design patent applications. And they sought to claim trademark status for several diamond designs. The always compliant PTO helped them play the game by issuing them design patents and federally registering these same designs as trademarks.

Long ago the famous ( later infamous) music producer Phil Spector, created a wall of sound musical effect. G-P tried to establish a wall of IP effect to scare off competitors. But it didn't work.

Some time in the early 1990s Kimberly Clark, another titan of the toilet paper industry, began producing a quilted design on its toilet paper. And so you have it. Godzilla v Rodan.
By the time the case got to the Seventh Circuit, a dozen witnesses had testified and 675,000 documents had been reviewed.

Judge Evans reviewed and dismissed all of G-P's arguments. The essence of his decision was that, by their own words, G-P acknowledged that the diamond designs helped the toilet paper function better. To summarize eons of trademark doctrine. If you make it function better you are wasting your time to claim that folks associate you with that functional improvement.

And yes the earth is still rotating on its axis. I can't help but wonder, did G-P really think they would win? Did the litigation keep Kimberly Clark from competing more vigorously? Does such litigation only serve to strengthen the view that intellectual property laws hinder rather than promote competition?

I guess from now on such questions are properly considered in the rooms where the quilted diamond designs are directly on display.