Court Preliminarily Enjoins U.S. Government's Seizure of Items Bearing MONGOLS Membership Mark

Pamela Chestek’s Property, Intangible blog provides an update on the Mongols trademark saga (previously blogged here) that dominated the headlines last October when, after the government seized the registered collective membership mark MONGOLS as part of a U.S. government racketeering indictment against the Mongols Motorcycle Club ("Mongols"), a court entered a broad injunction order which essentially prevented members of the Mongols from wearing any clothing bearing the MONGOLS mark. [Note: while there does exist a second registered trademark for M.C. (and Design), this registered mark was not part of the court’s amended restraining order at issue].

A Member of the Mongols (who was not part of the criminal indictment) brought a civil action seeking injunctive relief against the government from any seizure of his items bearing the MONGOLS mark which identified his membership in the Mongols. The court concluded that the government’s seizure of the trademark under the RICO statute was improper because the government’s RICO indictment was against individual members of the Mongols and not against the entity which owns the MONGOLS mark, and thus the U.S. government could not seize such property under RICO. Accordingly, the court granted the preliminary injunction enjoining the government from seizing any property items bearing the MONGOLS collective membership mark. See Rivera v. United States, Case No. 09-cv-2435 (C.D. Calif. Aug. 3, 2009).

What are the differences between a trademark, service mark, certification mark, collective mark, trade dress, and trade name?

I am asked the questions often enough that their answers are worthy of a blog post.

Trademark
A “trademark” is any word, name, symbol, or device, or any combination thereof, used by a party to identify and distinguish its goods from those manufactured or sold by others and to indicate the source of the goods (even if that source is unknown). See §45 of the Lanham Act (15 U.S.C. §1127).

Service Mark
A “service mark” is the same as a “trademark” except that it is used by a party to identify and distinguish the services of that party from the services of others and to indicate the source of the services (even if that source is unknown). See §45 of the Lanham Act (15 U.S.C. §1127). The law specifically states that titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

In short, the two basic functions of a trademark or service mark is 1) identifying the source and origin of particular goods or services and 2) distinguishing for the consuming public the goods or services of one party from the goods or services of others.

Certification Mark
A “certification mark” is any word, name, symbol, or device, or any combination thereof, used by a person other than the mark owner which certifies:

1. Regional or other geographic origin of such person’s goods or services (e.g., CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE);


2. Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services (e.g., the UL logo certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.; NSF certifying that certain food equipment meets the public health standards established by NSF International); or


3. That the work or labor on such person’s goods or services was performed by members of a union or other organization or by a person who meets certain standards and tests of competency set by the owner (e.g., UFCW UNION MADE certifying that the goods were produced by members of the United Food & Commercial Workers International Union and AFL-CIO).

See §45 of the Lanham Act (15 U.S.C. §1127); see also prior blog post here on certification marks.

Collective Mark
A “collective mark” is a mark used by members of a cooperative, an association, or other collective group or organization. See §45 of the Lanham Act (15 U.S.C. §1127). There are two basic types of collective marks:

1. A collective trademark or service mark, which is a mark adopted by a collective group for use by its members who use the mark to identify their goods or services and to distinguish such members’ good or services from the goods or services of nonmembers (e.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS); and


2. A collective membership mark, which only serves to indicate membership in the collective group (e.g., the logo used by members of the Sheet Metal Workers International Association).

While collective trademarks and service marks are classified in the international class as the underlying good or services which the collective mark identifies, a collective membership mark has its own international class (IC 200) (see 37 C.F.R. §6.4).

One important distinction with respect to a “collective mark” compared to a trademark/service mark is that it only serves to indicate membership in the collective group – the collective group itself does not actually use the collective trademark or service mark to identify or distinguish any goods or services although it can advertise and promote the goods sold or services rendered by its members using the collective mark.

Trade Dress
“Trade dress” refers to the design or packaging of a product or service which serves to identify the source or origin of the product or service – the arrangement of identifying characteristics or decorations connected with a product or service (through its packaging, design, or otherwise) that make the source of the product or service distinguishable from others making the same products or offering the same services and which promotes the sale of such product or service. Trade dress involves the total image or overall appearance of a product or service, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, and even particular sales techniques. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000); Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993).

In order for trade dress to be protected as a trademark or service mark, it must be a) nonfunctional and b) distinctive enough in the marketplace to serve as a source identifier (i.e. either because it is inherently distinctive, which is often the case for “product packaging,” or because the trade dress has acquired a secondary meaning, which is often necessary to show for “product designs”).

A product feature is considered functional, and thus cannot serve as a trademark, if the product feature is essential to the use or purpose of the product or if the product feature affects the cost or quality of the product (i.e., exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage). See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.10 (1982).

The basis behind the functionality doctrine was explained by the U.S. Supreme Court in Qualitex as follows:

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

Qualitex Co., 514 U.S. at 164-65.

Some of the factors used by courts to determine functionality are: (1) whether there exists a utility patent directed to the design, (2) whether the owner touts the utilitarian advantages of the design in advertisements, (3) whether there are alternative and competitive designs, and (4) whether the design is cheaper and simpler to manufacture than alternative and competitive designs. See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). If trade dress is found to be functional, it will not be protected as a trademark or service mark regardless of the extent to which the public may attribute such trade dress to a single source and regardless of any public confusion over competing parties’ goods or services.

You will sometimes hear the labels de facto functional and de jure functional. De facto functionality refers to a product design that may be functional but which is not necessary for its function (e.g., the design of the Coca-Cola bottle is functional, in that it serves as a container for Coca-Cola soda beverages; however, the particular design is not necessary for the bottle to serve as a container). This is the type of functional design that can be protected as a trade dress. De jure functionality, on the other hand, refers to a product design that, because of the particular design, provides the owner with a competitive advantage. This type of functional design cannot be protected as a trademark because such protection would allow a owner to control in perpetuity a “useful” product feature thereby inhibiting competition.

Trade Name
Unlike a trademark or a service mark, which serves to identify and distinguish the source and origin of goods and services, a trade name is any word, name, symbol, or other designation, or any combination thereof, which serves to identify a particular business, vocation, or enterprise and which distinguishes such business, vocation, or enterprise from the business, vocation, or enterprise of another. See §45 of the Lanham Act (15 U.S.C. §1127); see also Restatement (Third) of Unfair Competition, §12 (1995). While trade names will typically include such entity designations such as “Inc.,” “Corp.,” “Company,” or “LLC,” a trade name can include the name under which the company is “doing business as” (d/b/a). In addition, a trade name does not function as a trademark or a service mark, and will not be protected as such, unless it somehow attaches to goods or services in such a way that purchasers and prospective customers would recognize the business identified by the trade name as the source and origin of such goods or services.

House Mark
A “house mark” is a mark that is used by a business in conjunction with a line of products to identify the business as the source of such products. A house mark is closely related to a trade name because often times a trade name will serve as a company’s house mark in conjunction with a trademark or service mark used to identify a specific product or service. For example, Toyota Corp. uses the Toyota trade name as a house mark in identifying its line of automobiles including TOYOTA SIENNA, TOYOTA COROLLA, TOYOTA CAMRY, and TOYOTA PRIUS. While house marks are often the same as the business’ trade name, a house mark can also be a separate trademark or service mark, such as the name CRAFTSMAN, which Sears uses in conjunction with a line of hardware tools.

Family of Marks
Finally, you will occasionally hear about a company that has a family of marks. A family of marks is a group of trademarks or service marks that have some kind of common element which allows consumers to recognize the source and origin of the goods or services identified as such. The classic example of a family of marks is McDonald Corp.’s use of the “Mc” prefix attached to some other word to identify one of its products or services including MCRIB, MCMUFFIN, MCFLURRY, etc. (For a recent blog post on McDonalds’ efforts to protect its family of marks, check out this post (here) on Michael Atkins’ Seattle Trademark Lawyer blog).

Jesse James’s Cogwheel Logo – Trademark Infringement or Parody?

The Smoking Gun® reported the other day (link here) about a trademark infringement lawsuit filed by a U.S. labor organization against Jesse James, the head of the West Coast Choppers motorcycle empire (or Mr. Sandra Bullock, as he may be better known to some people), for using a logo confusingly similar to that used by the union.

On October 4, 2007, the Sheet Metal Workers International Association (the “Union”) filed a trademark infringement complaint in the U.S. District Court for the District of Columbia against West Coast Choppers, Inc., Vanilla Gorilla, L.P., Jesse Gregory James, Meadwestvaco Corporation, and Wal-mart Stores, Inc.

At issue is the Union’s distinctive cogwheel logo with intersecting hammer, scissors, and poker.

The Union registered the logo as a trademark (Reg. 718,265) for its monthly publication titled "Sheet Metal Workers' Journal." The Union also registered the logo as a collective membership mark indicating membership in the Union. (Reg. 718,364). Furthermore, the Union incorporated the logo into a union label, which the Union registered as a certification marks. See Reg. 1,268,822, certifying that the goods (sheet metal, copper, lead, aluminum, and other common metals) are made by building trades journeyman and apprentice members of the Union; and Reg. 1,366,048 certifying that various products or component of a finished product were manufactured by members of the Union.

The logo used by Jesse James (pictured above) has the same cogwheel look and even features the identical tools as in the Union’s registered mark. The only differences are that Jesse James decided to replace the Union’s name on the top and bottom part of the wheel with “Jesse James Union” and the slogan “Less Talking More Working.” Jesse James’ logo also replaces the Union’s founding date (January 25, 1888) with the acronym "FTW” (“F**k the World”) and James’ year of birth (1969).

The Union asks for an injunction to stop James from using this colorable imitation of the Union’s logo, the destruction of all calendars and other materials bearing such logo, an accounting of profits, treble damages, and costs and attorney’s fees.

While the fame of the Union’s logo and the blatantness of Jesse James’ copy of its logo would seem to favor the Union, Jesse James may have one possible defense to the Union’s claim of trademark infringement – parody.

One reason that parody is a defense to trademark infringement is because with true parody, there is no likelihood of confusion. If the parody is successful, it will evoke humor and thought in the viewer’s mind, but will be recognized as a parody of the original trademark and not as a source identifier of goods or services that the public would confuse with the original trademark. See Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997) (a true parody will be so obvious that a clear distinction is preserved between the source of the target and the source of the parody); Mutual of Omaha Insurance Co. v. Novak, 648 F. Supp. 905 (D. Neb. 1986), aff’d, 836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988). If the parody does not go far enough to distinguish itself and to create a clear distinction that it is not the original, then arguably, the parody is not very good and will create a likelihood of confusion.

Jesse James’ logo does have some elements of classic parody. A famous trademark (the Union’s logo has been in use since 1924). The logo uses a portion of the famous trademark so that it brings to mind the original trademark (the cogwheel and work tools in James’ logo are identical to the Union’s logo). The issue is whether his logo distorts the Union’s famous trademark enough so that a member of the public would clearly distinguish it as a parody of the original.

The only distortions consist of James’ own name and slogan in his logo along with his own birth year and the acronym FTW. Not a very dramatic distortion, and certainly not evoking any humor or political statement (unless the “Less Talking More Working" is a commentary on the laziness of the Union's workers).

Another consideration is the extent to which the parody is being used in a commercial context as opposed to a non-commercial context. The complaint is not clear about what type of goods on which the James logo appears, other than calendars, but it does appear as if James is using his logo more in a commercial context, and not just as a parody of the Union’s logo.

In a case similar to this case involving the Hard Rock Cafe logo, the court rejected a parody defense of the maker of t-shirts emblazoned with a logo resembling the Hard Rock Cafe logo except that it read “Hard Rain Café.” See Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776 F.Supp. 1454, 1462 (W.D. Wash. 1991) (parody is no defense where the purpose of the similarity is to capitalize on a famous mark’s popularity for the defendant’s own commercial use).

While parody may be a defense that James can assert, its chances of success are slim given the lack of any obvious commentary or social statement made by James’ logo. His imitation of the Union’s logo seems more likely used to get attention (and sell goods), and not to make a social commentary about the Union.

As for Meadwestvaco and Wal-Mart's role in all this, Meadwestvaco probably printed the calendars at issue and Wal-Mart probably sold some of these calendars in their stores; however, this is just speculation since the complaint is not exactly clear about their roles in the trademark infringement.

A lesson in applying for a Certification Mark

I stumbled across an interesting trademark application the other day. On September 10, 2007, three individuals filed a §1(b) intent-to-use application for the mark AIDS HAPPENS (for shirts and hats). What makes this application interesting is the type of trademark for which the applicants filed, namely a certification mark. The certification statement set forth in the application is as follows: “The certification mark, as intended to be used by authorized persons, is intended to certify Ramos, Joshua I Mozg, Thomas W Derousseau, Philip.”

So, the applicants are seeking a certification mark, to be used by authorized persons, to certify that the shirts and hats with the mark AIDS HAPPENS are certified as Josh Ramos, Thomas Mozg, and Philip Derousseau. Hmmmm. Not surprisingly, the applicants filed the application on their own, and did not seek counsel from a trademark attorney. If they had, they would have been told that what they are seeking is a regular trademark, and not a certification mark.

This happens more often than some may think – applicants filing a certification mark application, when what they are really seeking is a more traditional trademark or service mark. While I do not understand how such applicants exploring the USPTO’s trademark website could end up mistakenly filing for a certification mark rather than for a trademark or service mark , it happens enough that a basic review of certification marks is in order.

What is a Certification Mark?
Unlike a trademark, which is used to identify the source of goods and services, a certification mark is any word, name, symbol, or device, or any combination thereof used by a person other than its owner to certify to:
(1) Regional or other geographic origin of such person’s goods or services;
(2) Material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services; or
(3) That the work or labor on such person’s goods or services was performed by members of a union or other organization or by a person who meets certain standards and tests of competency set by the owner.
See § 45 of the Trademark Act, 15 U.S.C. §1127.

There are two main differences between a certification mark and a trademark or service mark. First, a certification mark does not indicate commercial source nor distinguish the goods or services of one person from those of another person, but instead inform consumers that the goods or services of a mark user meet certain standards established by the mark owner. Second, a certification mark is not used by its owner in the sense that the owner of a certification mark does not apply the mark to the owner’s goods or services. Rather, the mark is used by other persons on their goods or services, and the owner of the mark controls the use of such by other persons by ensuring that the goods or services bearing the certification mark meet the certification criteria the owner has established for the mark.

Certification Marks certifying to Geographic Origin

Examples of certification marks that certify that goods or services originate in a specific geographic region are CERTIFIED MAINE LOBSTER and JERSEY FRESH FROM THE GARDEN STATE.

One issue that arises with respect to geographic region certification marks is the authority of the owner to control the use of the mark. Normally, a government agency or quasi-governmental organization with power and authority in the named geographic region is the owner of such a mark because such governmental bodies are perceived as being in the best position to fulfill the duties of ensuring the right of all persons in the region to use the term and preventing improper uses of the mark by those not entitled to do so. Using the above two certification marks as examples, CERTIFIED MAINE LOBSTER is owned by the Maine Lobster Promotion Council and JERSEY FRESH FROM THE GARDEN STATE is owned by the New Jersey Department of Agriculture.

Certification Marks certifying to Quality Standards
Examples of certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture are the UL logo (certifying that certain electrical equipment meets the safety standards of Underwriters Laboratories Inc.) and NSF (certifying that certain food equipment meets the public health standards established by NSF International).

Certification Marks certifying that Labor Was Performed by Specific Group
Examples of certification marks that certify that the work or labor on the goods or services was performed by a member of a union or other organization or by a person who meets certain standards and tests of competency set by the owner are UFCW UNION MADE (certifying that the goods were produced by members of the United Food & Commercial Workers International Union, AFL-CIO, CLC and in accordance with adopted standards) and CONCRETE HOME SPECIALIST (certifying that the designated contractors and installers meet the certifier's standards of training and experience in the installation and use of insulating concrete forms for home construction). The owner of this type of certification mark is not certifying to the quality of the work being performed, but rather only that the work performed was by a member of the union or other organization or by a person meeting certain standards established by the owner.

Certification Marks of Competency versus Titles or Degrees
One issue that arises with respect to this type of certification mark is where the mark serves more as a title or a degree of a person signifying the professional qualifications of such person. Whether a mark that appears to be a title or degree can function as a certification mark depends on the standards set by the owner. See, e.g., CERTIFIED SOFTWARE MANAGER (certifying persons who passed the certifier's examination and have met certifier's standards for software asset and licensing management), which when used on a certificate was found to indicate only that the holder of the certificate had been awarded a title or degree; compare the registered certification mark CERTIFIED CONTROL SYSTEMS TECHNICIAN (certifying such persons as having met certain educational and experiential criteria, has passed the core and specialty examinations in the field of industrial instrumentation and process controls, and adheres to ethical standards established by applicant). Where the standards set by the owner appear to be nothing more than passing a test and following certain established rules, such mark would be deemed more of a title, and not a certification mark. However, where the standards set by the owner involve having certain academic and work experience in addition to passing an exam and following established rules, the mark serves more of a certification function.

Certification Marks of Work done by a Group versus Collective Marks
A certification mark used to certify that the work or labor on the goods or services was performed by a member of a union or other organization is not to be confused with a collective mark, which is a type of trademark indicating membership in a group. A collective trademark or service mark serves to indicate the origin of goods/services in the members of a group. E.g., THE FTD BELOVED BOUQUET and AII AMERICAN INSTITUTE OF INSPECTORS. A collective membership mark indicates membership in an organization. E.g. REALTOR ASSOCIATE (Interesting tidbit: the famous REALTOR mark is actually a registered service mark, and not a collective membership mark). In the case of a collective mark, the users of the mark are all members of the same collective group and the collective organization owns the collective mark for the benefit of all members. Contrast this with a certification mark used to certify that the work or labor on the goods or services was performed by a member of a union or other organization. In such case, the certification mark is not certifying that the user is a member of an organization, but rather that the labor which worked on the user's goods or services was performed by a member of a union or other organization or by a person who meets certain standards and tests of competency set by the owner.

Examination of Certification Marks
Certification marks are subject to the same laws governing the registration of regular trademarks (e.g., descriptiveness, disclaimers, likelihood of confusion, etc.). One exception is with respect to marks that are “primarily geographically descriptive” – while such a mark may be rejected as a trademark or service mark, it can be allowed as a certification mark indicating geographic regional origin.

Because of the different purposes served by certification marks compared to trademarks/service marks, an owner of a registered trademark for goods or service mark for services cannot register the same mark as a certification mark for such goods and services, and likewise, an owner of a registered certification mark which certifies particular goods or services cannot register the same mark as a trademark/service mark for such goods or services. See §4 of the Trademark Act, 15 U.S.C. §1054. The rationale behind the prohibition is obvious – having the same mark used for two such different purposes would cause consumer confusion about the meaning of the mark.

However, an owner may have what is called a composite certification mark, which is a certification mark that includes a trademark or service mark. A composite certification mark is allowed so long as it does serve the function of certifying the goods or services to which it is attached, and not used to indicate origin of the goods or services. In such case, the trademark/service mark part of the composite certification mark serves an informational role, such as to identify the certifying owner. See., e.g., the certification mark AAA APPROVED contains the registered trademark AAA. In order to obtain a composite certification mark, the trademark owner and the certification mark owner must be the same.

Certification mark applicants must provide a statement of the characteristics, standards, or other features that are certified or intended to be certified by the mark. Such a statement can begin with "The certification mark, as used (or intended to be used) by authorized persons, certifies (or is intended to certify) . . . ." See 37 C.F.R. §2.45. In addition, when specifying dates of first use, applicants must indicate that the certification mark was first used under the authority of the applicant or by persons authorized by the applicant. Applicants must also make a statement that the applicant is not engaged in or will not engage in (for §1(b), §44 or §66(a) applications) the production or marketing of the goods or services to which the mark is applied.

Certification marks do not have the same classifications of goods and services as typical trademark and service marks. In certification mark applications, all goods are classified in Class A and all services are classified in Class B – and a single application may contain both classes. The goods and services do not need to be identified as specifically as a traditional trademark/service mark application. For an application based on §66(a), the classification is already established by the International Bureau of the World Intellectual Property Organization in accordance with the Nice Agreement for the International Classification of Goods and Services for the Purposes of the Registration of Marks, and therefore, cannot be changed to conform to the PTO’s Class A-B system. If the §66(a) application appears to be for a certification mark, the PTO will keep the original international classification.

An application to register a certification mark may be based on a foreign registration under §44 of the Trademark Act; however, the scope of the foreign registration may dictate whether such registration can serve as a basis for registering the mark in the U.S. For example, a foreign trademark registration cannot serve as a basis for registration as a certification mark in the United States.

The specimen of use that must be submitted with the application (or with the amendment to allege use or the statement of use for §1(b) applications) must show how persons other than owner will use the mark on goods or services in order to serve one of the three main certification functions mentioned above.

In addition, a copy of the standards established by the owner to determine which persons can use the owner’s certification mark for their goods or services must be submitted with the application (or with the amendment to allege use or the statement of use for §1(b) applications). These standards do not have to be original, and can be the standards established by a government agency or adopted by a private organization.

Finally, the applicant must assert that the applicant is exercising control over the use of the certification mark in commerce (for §1(a) applications) or has a bona fide intent to exercise control over the use of the certification mark in commerce (for §1(b), §44, or §66(a) applications). For a §1(b) application, the applicant must make this statement in either the amendment to allege use or the statement of use before the certification mark can be registered.

Finally, and most importantly for the AIDS HAPPENS applicants and any other applicants who wrongly file for a trademark using the certification mark application form, an applicant can amend the application to a different type of mark. The examining attorney will typically attach the form necessary to the non-final office action and will suggest the proper classification of goods and services.

So let that be a lesson to you, Messrs. Ramos, Mozg, and Derousseau. Good luck with the prosecution of your trademark application (emphasis on the word trademark).