Thursday, January 10, 2008

Barack Obama faces trademark infringement threat over “Change Rocks” campaign slogan



In 2004, Stefan Doyno, currently a 19-year-old student at SUNY-Buffalo, came up with an idea for jewelry with interchangeable stones. As he states on his Change Rocks website, he got the idea for the ring after creating a homemade gift for his mother: "I wanted to create a high-quality, yet affordable ring that women could change to match what they were wearing or how they were feeling. There was nothing out there like it, and I've been developing the high-end design ever since."

He thought the idea was novel enough that, after consulting a patent attorney, he filed a provisional patent application on August 11, 2004 (U.S. Provisional Application No. 60/600,513). A year later, on August 10, 2005, he filed his patent application for “Adaptable jewelry apparatus” (U.S. Patent Application No. 20060032270), which is still pending and can be viewed here). The following is from the abstract:

An adaptive jewelry apparatus includes a mechanism for allowing quick and secure interchange between stones or stone and base assemblies. In one embodiment, a stone is fixably joined to a base assembly, and the combined assembly is threadably interchanged with a receiving socket on a jewelry member. In an alternative embodiment the base assembly remains fixed to the jewelry member and includes mechanical or other means for release-ably securing a variety of interchangeable stones. In each embodiment the interchangeable stone is retained securely to the jewelry member while allowing ready release and replacement.

Approximately one month later on October 7, 2005, Doyno, recognizing the value of intellectual property, filed a Section 1(b) intent-to-use trademark application, to register the mark CHANGE ROCKS (for jewelry). His mark was registered on July 17, 2007.

Doyno’s business has been growing and his jewelry is now being sold in select stores in New York, New Jersey, Pennsylvania, Texas, and even Canada. Doyno has stated that he has also come out with pendants and is planning a line of T-shirts.

Doyno was surprised when one day last month, after doing a Google search for “Change Rocks,” discovered that Barack Obama’s campaign had used the phrase for a December 7th concert and fundraiser in Chicago. A poster on an Iowa campaign headquarters website indicated that Obama had at least one other “Change Rocks” concert in Des Moines, Iowa on December 29th.

On December 18th, Doyno’s lawyers sent Obama’s campaign a letter regarding Doyno’s registered mark warning Obama that use of the slogan on any T-shirts or campaign memorabilia may constitute trademark infringement.

Doyno’s lawyers apparently suggested pursuing an arrangement whereby Obama could continue to use the mark:

Mr. Doyno is far more interested in exploring possible synergies between Mr. Obama's use of Change Rocks as a slogan or theme and the Change Rocks mark and products than he is in preventing Mr. Obama from using the mark in connection with the campaign.

While Obama’s campaign has not responded to Doyno, one Obama spokeswoman has stated that no merchandise has been sold with the slogan “Change Rocks” and wished Doyno the best of luck with his business.

Vegas™Esq. Comments:
Doyno has what looks like a very promising venture based on a very creative idea that is likely to spawn numerous Chinese knockoffs, which hopefully Doyno can combat if his patent is issued. With an issued patent, Doyno can is also likely to find several licensees who will license his patent.

And while I praise Doyno’s ingenuity and appreciation for intellectual property and wish him the best of luck with his business, I doubt very much that any court would find Obama’s use of the slogan “Change Rocks” to be likely to cause confusion with Doyno’s jewelry goods.

First, while the marks are identical, there is little chance of any likelihood of confusion because Doyno’s mark is not very strong or distinctive and the "goods" at issue are completely unrelated. Even if Doyno sells T-shirts with his “Change Rocks” mark on them, such use is likely to be deemed ornamental, and not as a source identifier, and the mark has not been so widely used for Doyno’s goods that the public would recognize the phrase on a T-shirt as an indicator of secondary source or sponsorship.

Second, Obama’s use may not even be actionable “use in commerce” given that its use is as a campaign slogan (even when placed on T-shirts and buttons sold at the campaign event) and not as a mark “in the ordinary course of trade.” See 15 U.S.C. §1127.

Finally, Obama’s use is likely protected by the First Amendment and would be considered “fair use” since the campaign is using the phrase for an expressive purpose – people will recognize the word “Change” to be associated with political change (after all, aren’t the candidates always saying this election is about “change”) and the term “Rocks” to be a reference to the rock music being played at the concert or a suggestion about “change” being something “cool” that the likely younger voters attending the campaign event should support.

It was perhaps serendipitous that Doyna discovered Obama’s campaign using the phrase because it allowed Doyna to use the coincidence to get some wide-scale attention for his product. The subsequent media attention to Doyno’s product has probably helped him sell more of his goods than any harm that could possibly come from Obama’s use (either in the past or even in the future) of the slogan. The publicity also helps strengthen his mark should real infringer decide to infringe the mark.

So while there is not much of a trademark controversy here, I would not be surprised if this letter to Obama’s campaign warning of trademark infringement was actually an ingenuous way to garner attention for his product (he is certainly smart enough to have considered entertained the thought).

Rock on!

1 comment:

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