Technology + Law®

A deli in Philadelphia has filed suit against the U.S. Patent and Trademark Office over an apostrophe, claiming that its “Philadelphia’s Cheesesteak” is “so superlative,” so “gloriously gluttonous,” it could not possibly be confused with the generic “Philadelphia Cheesesteak.”

Campo’s Deli sued the U.S. Patent and Trademark Officer Director David Kappos in Philadelphia Federal Court. The deli applied for a trademark in 2009, was rejected in 2010, appealed, and were rejected again after an oral hearing in March of this year. The family says that they’ve been using the trademark since at least January 1, 2009 at four retail outlets, including the stadiums for the Phillies, the Flyers and the Sixers.

The Campos insist that their trademark request is valid given that it is specific to an exact variety and quality of sandwich. They say that their trademark “is not, in any sense, an attempt to improperly control the phrase ‘Philadelphia Cheesesteak.’” They acknowledge that the phrase without the apostrophe is a generic term used only to describe a type of sandwich.

The complaint went on to say that, “The difference in the two phrases, of course, is an (‘s), which demarcates a particular kind of gloriously gluttonous sandwich provided only by the plaintiff – not just a Philadelphia Cheesesteak, but ‘Philadelphia’s Cheesesteak.”

The family says that their attempt at a trademark is descriptive of a unique and “tremendously delicious” product and is not meant only as a geographic description of the product. They say that the mark will be used to allow the company to franchise; something that will be needed to demonstrate to customers that the brand is the very best example of what is otherwise a common, simple sandwich. The complaint was certainly creative, at one point saying that their product has such a “propensity for myocardial infarction that it could only be called ‘Philadelphia’s Cheesesteak.’”

The Campos do acknowledge that the Patent and Trademark Office has a point about similar trademarks having been issued in recent years. Three nearly identical trademarks have been issued which the Office has deemed too similar to the Campos’ proposed mark, these include: Philadelphia’s Cheesecake Co., Philadelphia Cheesesteak Co. and The Original Philadelphia Cheesesteak Co.

Though these may seem almost indistinguishable from the Campos’s mark, the family insists that there could be no confusion between the brands. This is because they claim the name is not about identifying the company, but instead identifying a special variety of an otherwise generic sandwich. They say that there’s no likelihood of confusion between the marks given that the other three companies produce wholesale sliced meat. “They have different products, different consumers, and entirely different avenues of commerce.” Whether that argument holds water remains to be seen, the case is currently awaiting an initial hearing.

Source: “Deli sues feds for refusing to trademark its ‘Philadelphia’s Cheesesteak’,” by Michael Hinkelman, published at Philly.com.

See Our Related Blog Posts:

Trademark fight moves to apples

The next patent battleground: your dinner table

New Yahoo! CEO Marisa Mayer has attracted a good deal of attention since her appointment as the youngest chief executive of a Fortune 500 company. Not all of her new decisions however have been especially momentous. For example, one recent announcement involved the physical logo of the company which was created when the site launched back in 1995.

As reported by the Huffington Post, the new CEO decided to abolish the ® symbol after ‘Yahoo!’. She gave credit for the idea to a new employee, someone named “Andrew,” who thought the registered trademark symbol was unnecessary and annoying. Ms. Mayer posted a picture of one of the removed “R’s” with a note saying:

“One of our new Yahoo!s Andrew was really bugged by the registered trademark symbol at the end of our logo; he’s gone on a mission removing all the R’s from our site and our campus. This is one on the random R’s we pulled off a wall :).”

In a subsequent post, Mayer wrote that “Legal assures us that our trademark is implied and quite secure :).”

Interestingly, there is value in the ® symbol. The symbol exists as a means of giving notice to others that a mark has been registered with the Patent Office. This can become important in cases involving claims of innocent infringement, where the alleged infringer claims not to have known that a trademark existed. If the person holding the mark failed to give notice of his mark, then damages can be reduced or eliminated in a subsequent infringement suit as the defendant must have actual notice of the registration. Mayer likely rightfully believes that Yahoo’s brand is so well established that no potential defender could plausibly claim not to have known that the trademark was in use.

One of the other ideas that has been floated is dropping the exclamation mark from the end of the company’s name, possibly in an attempt to simply and streamline the logo to match Mayer’s vision for the firm. The exclamation mark was not created just for fun, but instead served a useful purpose. Apparently the co-founders were unable to register the name “Yahoo” because there were already “Yahoo” trademarks registered with the U.S. Patent and Trademark Office. As a result, they decided to tack on the exclamation mark to secure a name capable of trademarking.

Source: “Yahoo Removes Trademark ‘R’ From Logo – Is The Exclamation Mark Next?,” by, published at HuffingtonPost.com.

See Our Related Blog Posts:

Microsoft Patents ‘Emotions’

Miscellaneous IP Nuggets #8

A recent performance in North Korea has captured the attention of U.S. State Department officials, though not for the usual reasons. This time the problem centers on the North Koreans use of Disney cartoon characters in a nationally televised concert event for the benefit of the reclusive country’s new leader, Kim Jong Un.

The realities of the current diplomatic situation meant hat the State Department is unable to raise the issue in the typical way. State Department spokesman Patrick Ventrell said that since Washington and North Korea do not have diplomatic relations the State Department would be unable to formally file a complaint. He instead settled for vaguely asking that the North Koreans follow international law and respect intellectual property rights.

North Korean state television stirred up the controversy after earlier this week broadcasting a show where performers were dressed as Minnie Mouse, Tigger, Winnie the Pooh and other characters dancing against a backdrop of footage from Disney movies. The Walt Disney Co. says it did not authorize the performance.

The move was seen as an unusual and possibly significant departure for the incredibly isolated nation. Experts believe that the decision is meant to project an image of youth and modernity for the new leader. North Korea’s young dictator, still only in his 20s, is taking unprecedented steps to breathe some fun into his repressive regime.

The unusual gala performance took place on Saturday and featured other emblems of American pop culture including a rendition of Walt Disney’s “It’s A Small World” and Frank Sinatra’s famous “My Way.” Also showcased at the concert was the “Rocky” theme song including showed clips of Sylvester Stallone boxing against his cold war, Communist rival Ivan Drago in “Rocky IV.” Appearing to glorify a popular American entertainment icon is an unusual move for Pyongyang, which regularly unleashes harsh tirades against the United States and its cultural icons.

Source: “US chides NKorea over unauthorized performance of Disney favorites for Kim Jong,” by The Associated Press, published at Newser.com.

See Our Related Blog Posts:

Louis Vuitton Sues Over Fake Bag in “The Hangover: Part II”

President Obama sues over trademark infringement

As the “Pink Lady” brand of apples increasingly includes those imported from other countries, particularly those in the Southern Hemisphere, Pink Lady America is reminding shoppers to look carefully at the fruit they buy to make sure that they are only purchasing apples packed under trademark quality standards.

The Pink Lady apple was developed in Australia in the 1970s. It ripens in the southern hemisphere in May and is sold in U.S. markets when local varieties are not in season. It is now also grown in the U.S. and bears fruit in the northern-hemisphere apple season.

Alan Taylor, marketing director of Pink Lady America LLC, said, “…it’s been good to see the vast majority of the domestic fruit marketed with the quality standards coming with the ‘Pink Lady’ trademark. However, it’s not good to now see some fruit being imported into the United States without the benefit of the trademark and those standards which ends up hurting the domestic growers’ efforts.”

The company is asking that consumers only buy apples that have a clearly displayed Pink Lady trademark and that they also compare the stickers on the apple to those on the store signage display. To be extra safe, consumers should make sure that the Pink Lady trademark name on the apple match up with the Pink Lady name on the display. Taylor says that, “It’s unfair to the grower and the consumer when what’s on the PLU isn’t the same as the signage because it’s not only potentially a quality issue, it may also be a trademark violation.”

Pink Lady America says that it’s unfair for other growers to take advantage of the efforts in quality growing and marketing made by genuine suppliers. Consumers lose by buying fruit of inferior quality and growers lose market share to those with the misleading labels.

The use of the Pink Lady trademark in domestic markets is free, only requiring the signing of a license that explains the brand requirements.

Source: “Consumers Told to Look for ‘Pink Lady’ Stickers on Imports,” by Victoria Slind-Flor, published at Businessweek.com.

See Our Related Blog Posts:

T. Marzetti Co. Gets Texas Toasted By the Sixth Circuit

The next patent battleground: your dinner table

File this under bizarre trademark requests: Anthony Marshon Davis, a basketball player with the University of Kentucky, has applied to register two trademarks related to his eyebrows, or eyebrow as the case may be. Davis, who just completed his first season with the Wildcats is applying for protection of several phrases related to his overgrown eyebrows, or unibrow as he calls it.

The U.S. Patent and Trademark Office says Davis has filed an application to register “fear the brow” and “raise the brow.” Davis says he plans to use both phrases to market a range of products and services, including potential cosmetic lines, lunch boxes, clothing, entertainment, charitable services, sports training and even a website. Apparently there’s no end to the products a man can associate with his busy brows.

Apparently quite the savvy businessman, Davis says he doesn’t want anyone attempting to grow a unibrow because of him and then make money off of it. He says he decided to file for a trademark because a prominent athlete with a unibrow is unique.

He isn’t the first athlete to try and trademark a famous phrase. New York Knicks star Jeremy Lin recently applied to the “Linsanity” trademark, only five games into his memorable winning streak. NBA coach Pat Riley also filed for protection of his famous phrase “three-peat” after he coached the Lakers to two consecutive NBA championships. Sadly, Riley wasn’t able to make much use of the phrase given that he failed to win the third championship in 1989.

NCAA rules prevent athletes from financially profiting from athletics while in school which is why Davis has not filed the application himself. The University of Kentucky stepped in and helped out with the trademark request and is taking the matter quite seriously. The school’s associate athletic director in charge of marketing has already had to send out multiple cease-and-desist letters.

Only one problem stands in his way of a unibrow empire. Another man, John Salcido of Lexington, Kentucky (where the University of Kentucky Wildcats is based) filed his own application for “fear the brow.” His application came in November, seven months earlier than Davis’. Salcido says he wants to use the phrase to make and market a line of clothing.

Source: “Anthony Davis Trademarks ‘Fear The Brow’ Catchphrase,” by James Sunshine, published at HuffingtonPost.com.

See Our Related Blog Posts:

Louis Vuitton Sues Over Fake Bag in “The Hangover: Part II”

Microsoft Patents ‘Emotions’