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 Chilling Effects Clearinghouse > Trademark > Notices > Louisiana Lt. Gov.'s Office Issues TM Cease-and-Desist to MoveOn.org Re: Billboard (NoticeID 1596218, http://chillingeffects.org/N/1596218) Printer-friendly version

Louisiana Lt. Gov.'s Office Issues TM Cease-and-Desist to MoveOn.org Re: Billboard

March 05, 2014

 

Sender Information:
Louisiana Lt. Governor's Office
Sent by: General Counsel

[Address]

Baton Rouge, LA, 70804-424,

Recipient Information:

MoveOn.org PAC
[Street Address]
[Street Address]
Washington, DC 20005, USA


Sent via: Certified mail and fax
Re: Cease and desist use of the "LOUISIANA Pick Your Passion" registered service mark

Dear Mr. [Recipient]:

It was brought to my attention today that MoveOn.org has been using the service mark "LOUISIANA Pick Your Passion" in association with its billboard campaign to support Medicaid expansion in Louisiana.

Please be advised that "LOUISIANA Pick Your Passion" (Mark) is a registered service mark of the Office of the Lieutenant Governor of the State of Louisiana and has been in use since 2011. As you are aware, the registration and use of a service mark provides its owner certain proprietary rights, including the right to restrict the use of the mark or a confusingly similar mark by others.

Accordingly, MoveOn.org is directed to cease and desist its use of the Mark and any similar mark that is likely to cause consumer confusion.
The Lieutenant Governor of the State of Louisiana is statutorily responsible for the state's culture, recreation, and tourism programs. Upon taking office, the Lieutenant Governor
conceived of, approved, and invested in the Mark to brand and promote Louisiana's tourism industry, arts and artists, cultural institutions and heritage, museums, parks, libraries, and historic
sites to statewide, national and international audiences. The Office of the Lieutenant Governor has devoted significant resources in the Mark. The effectiveness of the Mark is evidenced by the
success this office has achieved in fulfilling its statutory mandates and generating recordbreaking visitation for Louisiana's tourism, cultural, and recreation stakeholders.

Because the Mark is closely affiliated with the Office of the Lieutenant Governor, there is a strong likelihood that a reasonable consumer will believe the Lieutenant Governor is the source, sponsor, or is in some way affiliated with the billboards. That is, consumers are likely to be confused into believing this office is involved in a dispute with the Governor over Medicaid expansion.
The Mark is inherently distinctive in its verbiage, colors, and inverted "i," (see ftnt 1) all of which MoveOn.org has misappropriated for its own purposes. 1Move0n.org's use of these elements:

1. Has already caused confusion regarding the source of the message and is likely to continue to do so in the future,

2. Is an intentional infringement and/or dilution of the Mark by MoveOn.org, and

3. Is likely to tarnish the Mark and result in substantial harm, injury and damage to this office and the individuals and industries that benefit from the Mark.

Any argument that MoveOn.org's use of the Mark should be treated as a parody or satire does not withstand scrutiny. According to its own media, MoveOn.org hopes to target Louisiana's governor in its billboard campaign. By its obvious use of the "LOUISIANA Pick your Passion" iconography and verbiage, it appears that MoveOn.org may have been under the mistaken impression that the Mark is owned by or otherwise affiliated with the Office of the Governor. When an infringer is not commenting on the owner or his mark. but rather is using the owner's mark to lampoon a third party, and if there are alternative avenues for expression, a defense of parody is rejected.

There are other avenues by which MoveOn.org may express its opinion - avenues that do not dilute the value or infringe upon a Mark that is associated with the efforts of the Lieutenant Governor to support and promote Louisiana tourism, culture, and recreation resources, and the thousands of Louisiana citizens whose livelihoods depend on these efforts. That is, it is possible to make your point without making a mockery of an important industry in our state.

It is imperative that this office shall protect the Mark against any misrepresentation or dilution that may cause substantial harm to the many individuals and businesses statewide that this office is legally mandated and proud to promote.

We understand that it is possible that MoveOn.org unaware of this infringement. It is also possible that MoveOn.org is unaware of the distinctions between the responsibilities of the Office of the Governor and the Office of the Lieutenant Governor in Louisiana. We hope that this issue may be amicably resolved so we may avoid any further legal action.

To that end, we respectfully request that an authorized representative respond by letter assuring us of the organization's immediate actions taken to cease and desist the use of the Mark "LOUISIANA Pick Your Passion" or any confusingly similar mark within 10 calendar days of your receipt of this letter. In the alternative, an authorized representative may sign and return the cease and desist agreement included with this correspondence.

Per our conversation this afternoon, you indicated that you are the proper person to receivethis directive.

If you have any questions about this letter, please feel free to contact me.
Regards,


{Signature]
General Counsel

(1) LOUISIANA PICK YOUR PASSION LOGO: "LOUISIANA" IS IN PURPLE UPPERCASE LETTERS, WITH EXCLAMATION POINTS REPLACING EACH LETTER "I". "PICK YOUR PASSION" IS IN RED, IN A MODIFIED CURSIVE FONT, ANGLED UPWARDS FROM LEFT TO RIGHT, BENEATH THE WORD "LOUISIANA".

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FAQ: Questions and Answers

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Question: What is the difference between a trademark and a service mark?

Answer: Trademarks refer to goods and products, that is, physical commodities which may be natural or manufactured or produced, and which are sold or otherwise transported or distributed.

Service marks refer to intangible activities which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.

Because the legal rights are essentially the same, the term "trademark" is frequently used to refer to both types of marks.

To learn about other types of marks, see Chapter 100 of the USPTO's Trademark Manual of Examining Procedure.

To tell whether something is a good or a service, see 37 C.F.R. ?6.1.


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Question: What exactly are the rights a trademark owner has?

Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.

There are two trademark rights: the right to use (or authorize use) and the right to register.

The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.

The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.

Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.


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Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?

Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this, then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is confusingly similar, even if it isn't exactly the same.

Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless of any confusion.

You can roughly assess the validity of your opponent?s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.

A fanciful mark is a mark someone made up; examples include KODAK or H?AGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.

A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.

A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.

Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.

There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.


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Question: What implication does alleged confusion have on claims of trademark infringement?

Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include:

  • proof of actual confusion
  • strength of the established mark
  • proximity of the goods in the marketplace
  • similarity of the marks? sound
  • appearance and meaning
  • how the goods are marketed
  • type of product and how discerning the customer is
  • intent behind selecting the mark
  • likelihood of expansion in the market of the goods


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Question: What are the limits on dilution?

Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark.

A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games.

Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer.

The following uses of a famous mark are specifically permitted under the Act:

1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary.

In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient.

Many states also have antidilution laws protecting mark owners.


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Question: What is trademark tarnishment?

Answer: Trademark "tarnishment," a kind of dilution, can occur if a non-owner uses the mark in connection with shoddy or unsavory products or services, illegal activity, or activity that is likely to offend the average person. For example, using a Walt Disney trademark on a website filled with pornography could be claimed to tarnish the reputation of the Disney mark in the minds of viewers who saw this material. Tarnishment is not always actionable -- it might be non-commercial or parody use.


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Question: What are the limits of trademark rights?

Answer: There are many limits, including:

  • Fair Use
    There are two situations where the doctrine of fair use prevents infringement:
    1. The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
    2. Nominative fair use
      This is when a potential infringer (or defendant) uses the registered trademark to identify the trademark holder's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
      • the product or service cannot be readily identified without the mark
      • he/she only uses as much of the mark as is necessary to identify the goods or services
      • he/she does nothing with the mark to suggest that the trademark holder has given his approval to the defendant
  • Parody Use
    Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
  • Non-commercial Use
    If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
  • Product Comparison and News Reporting
    Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt.
  • Geographic Limitations
    A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy's Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy's Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused.
  • Non-competing or Non-confusing Use
    Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark.


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Question: What is non-commercial use of a trademark? Is non-commercial use infringment of a trademark?

Answer: Non-commercial use of a trademark is generally that use which is not related to the sale of goods or services. If no funds are solicited or earned by using someone else's mark, this use is not normally infringement.

Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.

One example of non-commercial use is descriptive use (where the name is used to describe something, such as "He went to MacDonald's for lunch" or "She was wearing the MacDonald tartan.")


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