Top 10 Lists

Trademark top tensI was recently asked by an attorney friend about using the phrase “The Top Ten Reasons…” in relation to a top ten list (á la David Letterman) that she was planning on using in a marketing piece.  This wasn’t a comic work meant to mimic the David Letterman version, but rather a serious piece meant to provide useful information regarding estate planning strategies.  So the question to me was whether she could use the “Top Ten List” format without running afoul of Letterman’s intellectual property.

My response was that there was a very low probability of risk – the term “Top Ten List” is descriptive and therefore not generally protected by trademark unless it has acquired such distinctiveness that the term is pretty much only associated by one source.  While, in certain contexts it is undoubtedly a very famous list, it is hardly the only place in which you can find people putting together lists of things in quantities of 10.

Further, there would need to be a showing that her use was so similar, that consumers were likely to be confused as to the source – i.e. people looking to enjoy a late night comedy show routine, were somehow distracted by her “Top Ten Reasons” and were confused as to the source of the information thinking it came from David Letterman. While it’s always important to make sure that you aren’t infringing other’s IP rights, it’s equally important to not let the use of descriptive terms by others prevent you from describing your own goods and services and sharing what you have with the world.

When is a farm boy just like any other farm boy?

When is a farm boy just like any other farm boy? That’s the question at the heart of a recent Federal Circuit decision (Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, No. 09-1473) involving a decision by the USPTO to grant a trademark registration to FF Acquisitions (a SuperValu company) over the objection of Odom (a retail food conglomerate).

Despite the fact that the registration in question was merely adding the body onto an already registered mark making up the torso of a farm boy (mark on the right), Odom was concerned that the mark was now likely to confuse consumers and opposed the registration, citing its own registrations. Even though Odom argued that there were other factors to be considered under the DuPont test for likelihood of confusion, the USPTO and the Circuit court summarily dispatched the complaint by noting that the registered marks differed in the size and shape of the hands, styles of hats, shoes on the feet, and apiece of straw hanging from his mouth.

In its appeal to the Federal Circuit, Odom argued that the USPTO was wrong in basing its decision that there was no likelihood of confusion based a single DuPont factor and not considering other factors. The legal question was whether consideration of the single DuPont factor involving similarity of the marks was enough for the court to conclude that there was no likelihood of confusion and to allow registration – it was. The Circuit court went further and noted that even if the USPTO had considered all the other factors, the dissimilarity of the marks was , by itself, a strong enough reason to deny Odom’s claims and to allow registration of FF Acquisitions’ mark.

This opinion is a reminder that trademarks are limited and do not create ownership in an entire concept. The focus when adopting a mark is its overall distinctiveness. A mark cannot be deconstructed into individual pieces for the purpose of eliminating distinctive qualities, because that is not what a consumer does. It is the overall impression that makes the difference.

FTC Endorsement Guidelines – Typicality Claims

Effective December 1, 2009, the Federal Trade Commission (FTC) has adopted new advisory guidelines concerning use of testimonials in advertising. These modifications and clarifications concerning FTC enforcement have raised concerns in many industries that rely heavily on testimonials as a large component of their marketing efforts.

What are these guidelines about?
The FTC is charged with enforcement of federal laws prohibiting deceptive trade practices – i.e. false advertising. To accomplish this mission, the FTC adopts rules and issues policy guidelines regarding the laws.

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