trademark infringement accusations are opinion without a final judgment

Posted on April 28, 2025 by rtushnet

Trevari Media, LLC v. Colasse, 758 F.Supp.3d 1175 (C.D. Cal.
2024)

Colasse accused Trevari of infringing its trade dress in a
“[s]pring-loaded glass-breaking device. Although the trade dress was registered
in 2014, when Colasse emailed Trevari alleging infringement in 2021, Trevari
responded that the putative trademark was invalid because it was functional,
and defendant didn’t respond. Instead, Colasse sent trade dress complaints to
Facebook and Instagram, and, as a result, Facebook and Instagram removed posts
which advertised Trevari’s glass breaker. While Trevari was petitioning for
cancellation at the TTAB, Colasse continued to cause Trevari’s glass breaker
product to be removed from various online sites including Shopify, WordPress,
Facebook, and Instagram, and also messaged Trevari’s followers on Facebook and
Instagram, claiming that its glass breaker infringed its trademark. In 2023, the
TTAB cancelled the registration because the design was functional; Colasse has
sought de novo review in district court.

accused design

cancelled registration image

Trevari sued for trade libel, intentional interference with
contractual relations, and unfair business practices under California law.

The court found that Colasse’s statements were only opinion.
For example, Colasse’s counsel told Shopify that Trevari’s listing was “counterfeited.”
The court found it “unclear” whether an assertion of IP infringement could ever
be considered provable fact, “at least before a tribunal determines finally
whether the IP is valid and infringed.” Although Trevari alleged that Colasse
always knew or had serious doubts about the invalidity, the design had been registered
at the time the statements were made, providing prima facie evidence of
validity. “Given the legal complexity in determining IP validity and
infringement, and in line with the above cited cases, the court finds the
validity or infringement of IP only becomes a provable ‘fact’ when a final,
unappealable decision has been rendered.”

The court also held that “the surrounding context further
supports the statement was one of opinion, as the statement was asserted as a ‘reasonable
belief’ made in ‘good faith.’” Plus, as to the non-lawyer defendant, “his
statement regarding complex legal issues can only reasonably be interpreted as
an opinion.”

What about complaints to Shopify calling the product a “Chinese
counterfeit” or “cheap low quality made copy from China”? That was also
opinion.

Without false factual statements, all the claims failed.

from Blogger http://tushnet.blogspot.com/2025/04/trademark-infringement-accusations-are.html

Posted in Uncategorized | Tagged , | Leave a comment

package claim that required users to double serving size and add ingredient was plausibly misleading despite disclaimer

Posted on April 28, 2025 by rtushnet

Mencia-Montes v. Fit Foods Distrib., Inc., 2025 WL 1185372,
No. 24-cv-01768-EKL (N.D. Cal. Mar. 31, 2025)

Courts in the 9th Circuit have increasingly held,
in consumer protection cases, that an asterisk puts the consumer on notice of
important qualifications. But sometimes an advertiser goes too far with that;
so here. Defendant’s protein supplement, “Mutant Mass Extreme 2500 Muscle Mass
Gainer” says “92G PROTEIN†††” on the front of the package. A disclaimer on the
bottom right-hand corner of the package reads” “†††Per 2 servings when taken as
directed with milk.” The disclaimer in the bottom right-hand corner is even
smaller font than the “PROTEIN†††” text.

front label with 92 gram representation

The back shows three columns of nutrition facts. The first
column, “Per 1 serving with water,” reflects 30 grams of protein; the second
column, “Per 2 servings with water,” reflects 60 grams of protein; and the
third column, “Per 2 servings with 1% milk (31.8 fl. oz total),” reflects 92
grams of protein.

Mencia-Montez brought the usual
California statutory claims.

The court found that it was plausible that reasonable consumers
were likely to be deceived into thinking there were 92 grams of protein per
serving, rather than 30.  “This type of
statement is likely to deceive a reasonable consumer because it represents a
seemingly concrete detail about the Product’s nutritional content.” What about
that triple-dagger mark? Whether it was sufficient to put a reasonable consumer
on notice was a fact question that couldn’t be resolved at this stage. First, plaintiff
alleged that the reference mark is “barely legible, insufficiently offset by
the much larger and prominent text that surrounds [it], and [is] lost within
the various other symbols contained elsewhere on the Product’s label.” Second,
the triple-dagger symbol wasn’t “an ‘asterisk’ but, rather a less familiar
symbol, which evidently lacks a name in common parlance, and, at best, leads
the consumer to a partial disclosure.” Third, Plaintiff the purported
disclaimer itself was allegedly “buried on the bottom of the label, in small
print and among other fine print language, and is completely separated from the
at-issue ‘92G Protein’ claim such that it can easily be missed by a reasonable
consumer.” (There was also at least one other “dagger” disclaimer on the front
relating to protein, so the consumer would have to find the right one.)

Moreover, the disclaimer itself was plausibly misleading
because it required consumers to both double the serving size and add an
ingredient.  Then they’d have to figure
out how much additional milk would be required (31.8 fluid oz).

However, plaintiff lacked standing to seek injunctive relief,
which kicked out the CLRA claims entirely.

from Blogger http://tushnet.blogspot.com/2025/04/package-claim-that-required-users-to.html

Posted in Uncategorized | Tagged , , | Leave a comment

nonprofits’ promotion of “abortion reversal” services was commercial speech

Posted on April 22, 2025 by rtushnet

National Institute of Family and Life Advocates v. Bonta,
No. 2:24-CV-08468-HDV-(MARx), 2025 WL 1140450 (C.D. Cal. Mar. 6, 2025)

Not sure this one survives appellate review, but we’ll see.
NIFLA sued for injunctive relief against California AG Bonta over his public
statements and pending consumer protection lawsuit against third parties
involving abortion pill reversal (“APR”). APR is “a controversial and unproven
practice that attempts to ‘reverse’ a chemical abortion through the
administration of high doses of progesterone.” NIFLA alleged that his
statements and lawsuit chilled its First Amendment right to advertise the
practice using language that the AG considers false and misleading.

The court denied the motion, finding that plaintiffs were
engaging in commercial speech when they advertised medical services, for which
they had an economic incentive despite being nonprofits. The First Amendment
does not protect commercial speech that is inherently misleading. “APR has been
tested in the crucible of litigation by three separate federal courts, and in
all three cases the safety and efficacy of APR has been found wanting.” The
court also conducted its own independent review of the expert submissions, and found
“a dearth of credible scientific evidence supporting the APR-related statements
upon which Plaintiffs seek injunctive pre-clearance.” The plaintiffs were
entitled to their own religious beliefs, but not to their own facts. The court
couldn’t find likely success on the merits given the evidence.

Plaintiffs alleged that, as the result of the AG’s
statements and enforcement actions, California NIFLA members have canceled or
postponed plans to advertise about APR options, or to offer APR[.]” Their main
worry was a lawsuit the AG filed in late 2023, which is still pending, against
two anti-abortion nonprofits for alleged false and misleading statements about
the safety, efficacy, and impact of APR, alleging violation of the consumer
protection laws.

Plaintiffs accepted that, as a matter of state law, the
false advertising provisions invoked by the AG applied only to commercial
speech. That might be dispositive in a future enforcement action. “Preliminarily
enjoining the Attorney General from enforcing the state’s laws against speech
that the laws do not apply to is unnecessary at best and violative of
federalism at worst, as it would require the Court to assume that State
officials will improperly enforce state law in the future.”

Identifying commercial speech is fact-driven. “[S]trong
support that the speech should be characterized as commercial speech is found
where (a) the speech is an advertisement, (b) the speech refers to a particular
product, and (c) the speaker has an economic motivation.”

Plaintiffs conceded their intent to advertise, but argued
that only advertisements “in the context of commercial transactions” count as
commercial. Their speech couldn’t be commercial, they reasoned, because the APR
service providers do not charge for APR services. But First Resort, Inc. v.
Herrera, 860 F.3d 1263 (9th Cir. 2017), found that a nonprofit’s advertisements
to non-paying recipients were “advertisements” in the commercial sense because
they were about the provision of medical services rather than the “exchange of
ideas.” Such was also the case here.

Likewise, the speech referred to a particular product—a
medical treatment—also favoring commercial speech treatment. Finally, one of
the benefits that plaintiffs provide to members is advising them on APR, which
“is a powerful economic motivation since it is through their members that
Plaintiffs raise funds. And Plaintiffs do not dispute that they engage in grant
fundraising based, in part, on their APR advocacy and technical support.”

The court distinguished Bernardo v. Planned Parenthood
Federation of America, 115 Cal. App. 4th 322 (2004), which found that Planned
Parenthood’s statements about the lack of a link between abortion and breast
cancer weren’t commercial speech. In that case, though, PP had provided
summaries of and citations to research both supporting and challenging the existence
of a link, and even a caveat conceding that “abortion does not offer the same
protection against breast cancer as a full-term pregnancy.” “Thus, in Bernardo,
it was clear that defendant was presenting a position on a scientific debate
rather than promoting a particular treatment.”

By contrast, plaintiffs “are encouraging the proliferation
of a specific medical intervention.” Indeed, instead of encouraging consumers
to contact a “qualified medical provider for personal medical evaluation and
services” as in Bernardo, plaintiffs direct the public to contact
providers of APR or conduits thereto. For example: “Contact your Medical
Director and other physicians and providers in your community to let them know
of the successful abortion pill reversal rates…[and] [u]rge these medical
professionals to review the research article offer [sic] this protocol as part
of their practices.” In Bernardo, PP provided information for “personal
education, but nothing on [its sites] constitutes a recommendation for medical
care.” “The opposite is true here.”

Because the speech was commercial, Central Hudson
applied. There’s no protection for false or misleading commercial
speech—except! “Inherently misleading” commercial speech may be banned
outright, but if the speech is only “potentially misleading,” it’s protected
when the “information may be presented in a way that is not deceptive.” On this
record, the statements that plaintiffs wanted to make were inherently false and
misleading. In very brief, “reversal” is false because even taken on its own
terms, APR is just adding a higher concentration of progesterone, “ostensibly
to better the odds that these molecules ‘outcompete’ the mifepristone in
binding to the progesterone receptors,” which in theory would then increase the
chance of continued pregnancy (if the patient hasn’t already taken the second
pill—this only works even in theory if only the first pill has been taken).

Also, there’s no credible scientific evidence that APR is
safe. The American College of Obstetricians and Gynecologists and others warn
of an increased risk of hemorrhage or serious complications. In one especially
telling detail, plaintiffs’ expert opined that progesterone can be used safely
based in part on a study finding “no statistically significant difference [in
preterm delivery or birth defects] compared to the general population” in cases
where mifepristone was unsuccessful in terminating the pregnancy. As the court
noted, that study nowhere even asked whether the women were ok.

And there’s no credible scientific evidence that APR is
effective.

Even if the statements were only potentially misleading, Central
Hudson analysis applied, and California has a substantial interest in
protecting consumers from misleading advertising by medical professionals. “While
the advertising at issue here is not strictly by medical professionals, it is
about medical treatment purportedly carrying the weight of medical
authorities—which is the principal concern underpinning the state’s interest.”
The state also had the burden to show that the regulation directly advances the
asserted government interest, and the fit between interest and regulation must
be reasonable/narrowly tailored to achieve the ultimate goal. That test was
satisfied: the fit between consumer protection and enforcing against false
advertising for a medical procedure was “more than reasonable.” (For what it’s
worth, I think this is a weird application of the difference between inherently
and potentially misleading, which I understand to mandate, for the latter, a
requirement to let the speaker to try again with a more nuanced version of the
claim. But given the procedural posture, it may not make any more sense to ask
whether there are some pro-APR claims that could be clarified enough to be
nonmisleading; I would think plaintiffs would have to identify qualified claims
they wanted to make, which they didn’t.

Nor would enforcement against plaintiffs constitute
viewpoint discrimination. The government is presumed to be acting
unconstitutionally when enforcing laws against speech if “the specific
motivating ideology or the opinion or perspective of the speaker is the
rationale for the [enforcement].” This requires a showing of both
discriminatory purpose and discriminatory effect. But there was insufficient
evidence of a “policy plan, or pervasive pattern” of enforcement sufficient to
merit an injunction. The AG filed a grand total of one enforcement action on this
topic; that case was scheduled for trial this year. Two press releases and a
few public appearances on the matter didn’t override 18 months without a second
action. “Indeed, perhaps the strongest evidence that Plaintiffs themselves are
not concerned about a ‘pervasive pattern’ or ‘plan’ is the fact that this
motion for injunctive relief was filed nearly a year after the state court
proceedings were initiated.”

Plaintiffs complained that the AG was going after them and
not after Planned Parenthood, but what distinguished the two was “the
undeniable fact that California’s law enforcement officer views the APR
statements as false and injurious to public health (again, correctly in all
likelihood based on the submitted evidence). That should be the end of the
analysis.” There was no nonenforcement against a pro-choice center making the
same inherently false claims.

from Blogger http://tushnet.blogspot.com/2025/04/nonprofits-promotion-of-abortion.html

Posted in Uncategorized | Tagged , , | Leave a comment

“defeat devices” in trucks plausibly deceptive because they rendered vehicles unlawful to drive

Posted on April 21, 2025 by rtushnet

Biederman v. FCA US LLC, — F.Supp.3d —-, 2025 WL 458831,
No. 23-cv-06640-JSC (N.D. Cal. Feb. 11, 2025)

This is a putative class action over alleged “defeat
devices” in diesel engines installed in RAM 2500 and 3500 pick-up trucks.
Plaintiffs alleged that defendants’ representations about the trucks’
performance and compliance with regulatory standards were false and misleading
since the vehicles could only perform as advertised while emitting pollutants
beyond established limits. In addition, defendants’ emissions recall, issued to
make the trucks legally compliant, allegedly reduced vehicle performance beyond
defendants’ representations.

Plaintiffs alleged RICO claims, which failed because they
were RICO claims, as well as California statutory and common-law claims,
including fraud and breach of express and implied warranty. Some of the non-RICO
claims survived.

First, plaintiffs couldn’t bring fraudulent concealment
claims on behalf of a nationwide class, as to which they lacked standing.

Preemption: Are claims of compliance with regulatory
standards preempted?

The Clean Air Act includes an express preemption provision:

No State or any political
subdivision thereof shall adopt or attempt to enforce any standard relating to
the control of emissions from new motor vehicles or new motor vehicle engines
subject to this part. No State shall require certification, inspection, or any
other approval relating to the control of emissions from any new motor vehicle
or new motor vehicle engine as condition precedent to the initial retail sale,
titling (if any), or registration of such motor vehicle, motor vehicle engine,
or equipment.

But defendants didn’t explain how this would expressly preempt
consumer protection claims, and there was a presumption against preemption for
those. Plaintiffs’ state-law misrepresentation claims mostly didn’t “exist
solely by virtue of” defendants’ disclosure requirements to the EPA. The court
asked “whether Plaintiffs’ allegations could plausibly state a
misrepresentation claim absent EPA regulation.” Plaintiffs alleged
misrepresentations about: 1) “a clean-burning DEF system that made it so it
would emit less pollutants than earlier models and/or equivalent
gasoline-powered trucks;” 2) “good fuel economy;” 3) “low cost of ownership;”
and 4) “strong towing and hauling capabilities.” Defendants also allegedly didn’t
disclose the existence of “defeat devices” in the trucks, which could only
perform as advertised while emitting pollutants beyond the legal limit,
consumer expectations, and a comparable gasoline-powered vehicle. These “claims
require proof of both more and less than what is required to enforce the
federal standards.” No proof of an actual violation of EPA emissions standards was
required, nor that the device would qualify as a “defeat device” as defined by
federal regulation. Instead, defendants could be liable if they “installed and
concealed software in the cars that reasonable consumers would have wanted to
know about.” “Mere reference to regulatory standards, such as EPA emissions
levels, does not alone infringe on the regulatory scheme.”

However, the court did find preempted claims relating to ads
that the trucks complied with EPA and California Air Resources Board
regulations. If the alleged false statement is that the trucks “complied with
emissions law and regulations,” then plaintiffs could not prove their case
absent a finding that defendants violated EPA regulations. (I gotta wonder
whether this type of analysis should survive Loper Bright—I guess it’s
an EPA regulation and not a statute, but if we exclude this, then do defendants
get to argue that there’s no material difference to consumers between just claiming
compliance with federal law versus also making the nonpreempted claims, thus
insulating their other claims from liability as well? This decision seems to
conflict with cases holding that a clear misrepresentation of FDA approval is
actionable, but maybe the argument just below answers that.)

It didn’t matter that the EPA determined that defendant
Cummins committed fraud, so a jury wouldn’t be second-guessing the agency’s
determinations. Cummins denied the allegations despite entering into a consent
order. And a fact finder could find that defendants did comply with EPA
regulations, which would throw the agency’s allegations into doubt.

Both deceptive statements and deceptive omissions were
plausibly alleged; as to the latter, plaintiffs pled that defendants had
exclusive knowledge of material facts not known to the plaintiffs; materiality
was alleged via allegations that plaintiffs would not have purchased the trucks
or would have paid less had they known about the defeat devices. “Additionally,
the EPA’s regulatory scheme and the Clean Air Act’s prohibition on defeat
devices further suggest the presence of such devices in vehicles is material to
consumers.” Even if plaintiffs also needed to allege that the omitted fact
“affects the central functionality” of the product, which was not clearly
required by California law, they’d done so, given that it’s illegal in
California to “operate or leave standing upon a highway a motor vehicle that is
required to be equipped with a motor vehicle pollution control device …
unless … [the device] is correctly installed and in operating condition.” So
this was a driveability issue.

Express warranty claims under the California Commercial Code
failed because plaintiffs didn’t show that the defect persisted past multiple
attempts to fix it. Implied warranty of merchantability claims failed for want
of vertical privity; plaintiffs weren’t third-party beneficiaries to the
contract between defendant FCA and the dealerships selling the trucks. But California’s
Song-Beverly Act does not require vertical privity between the parties as an
element of an implied warranty claim, and plaintiffs plausibly alleged that the
trucks were unmerchantable because they could not be legally driven.

from Blogger http://tushnet.blogspot.com/2025/04/defeat-devices-in-trucks-plausibly.html

Posted in Uncategorized | Tagged , | Leave a comment

Washington’s anti-spam law covers any misrepresentations in subject line of commercial email

Posted on April 21, 2025 by rtushnet

In re Brown v. Old Navy, LLC, 2025 WL 1132243, — P.3d —-,
No. 102592-1 (Wash. Apr. 17, 2025)

Deciding a certified question, the Washington Supreme Court
held over dissent that the state’s anti-spam law covers all commercial emails
with false or misleading information in their subject lines, not just false or
misleading information about the commercial nature of the message. The majority
reasoned that the statute’s language is plain: “No person may initiate the
transmission … of a commercial electronic mail message … [to] a Washington
resident that: … (b) [c]ontains false or misleading information in the
subject line.”

Plaintiffs alleged that Old Navy violated the law by sending
them e-mails that, for example, announced that a 50 percent off promotion was
ending even though the retailer continued to offer the 50 percent off promotion
in the days following the initial e-mail.

Along with ordinary statutory interpretation principles, the
majority reasoned, “[w]e construe remedial consumer protection statutes …
liberally in favor of the consumers they aim to protect.” But even without
that, plain meaning settled the question: to violate this provision, “an e-mail
subject line does not need to deceive consumers about the subject or purpose of
the email—it merely needs to contain false or misleading information … even
when the false or misleading information in the subject line does not deceive
consumers about the advertising purpose or commercial nature of the e-mail.”

Old Navy argued that the legislature intended to prevent
spammers from tricking people into opening spam, but not to create an “enhanced
anti-fraud provision” that provides statutory damages only when deception is in
the commercial e-mail’s subject line. The majority disagreed: targeting the
header and subject lines made sense to fight spam because these are “the two
pieces of information consumers first glean when faced with the choice of
deleting a message or engaging with its content.” The legislature targeted a
specific deceptive practice, and also made violation of the anti-spam law a per
se violation of the general consumer protection statute. This is a
categorically deceptive practice, as to which the legislature concluded that statutory
damages were appropriate. “Accordingly, CEMA [the anti-spam law] does not
require a showing of injury for statutory damages to be awarded because the
injury is receiving the e-mail that violates CEMA. There is nothing absurd
about CEMA’s focus on subject lines or CEMA’s allocation of statutory damages
to falsity in the subject lines.”

Old Navy also argued that “banal hyperbole” like “Best Deals
of the Year” could lead to liability if there was an end-of-the-year sale. But
that was about what falsity/misleadingness meant, and puffery was the right
doctrine to deal with it. “Promotions that state ‘Best Deals of the Year’ are
not misrepresentations and do not communicate information that retroactively
becomes false (and actionable) under CEMA because market conditions change such
that a better sale is later available.”

A dissenting justice would have read the law as
unambiguously narrower; it concluded that the legislature was concerned about
the costs to consumers of having to open mail to figure out that it was
commercial, and the examples cited focused on subject lines that were not clear
that they were ads.

from Blogger http://tushnet.blogspot.com/2025/04/washingtons-anti-spam-law-covers-any.html

Posted in Uncategorized | Tagged , | Leave a comment

New in my TM collection

Posted on April 16, 2025 by rtushnet

 Ebay is really great for this sort of thing:

Glade Plug-in in the shape of a pine tree

See Car-Freshner v. S.C. Johnson & Son, 70 F.3d 267 (2d Cir. 1995).

from Blogger http://tushnet.blogspot.com/2025/04/new-in-my-tm-collection.html

Posted in Uncategorized | Tagged | Leave a comment

The Battle for Our Attention: Empirical, Philosophical and Legal Questions: Northeastern University School of Law

Posted on April 11, 2025 by rtushnet

 Panel 3 – Media and Communication Systems for Attention
Capture

 This panel will address how different fields, from media
studies to economics, think about attention, how it is captured and valued. Do
different types of media (political news, advertisements, sexual content, etc.)
produce different attentional patterns? How is attention captured through
technology? What issues does attention distortion raise? 

David Simon, Associate Professor of Law, Northeastern
University (moderator)

Nick Seaver, Associate Professor of Anthropology, Tufts
University

Attention as a method of control—a name for how we can be
disciplined/enrolled into projects of bosses or other people who want to
control us. If we thought of attention that way we’d change how we regulated
and valued attention.

Mouse jiggler: one form of resistance to this type of
discipline. Bosses use bossware to surveil whether you’re “working.”

That also reveals just how lousy our techniques for
detecting attention are. Very hard to know! We use “impressions” or sales as
proxies. Self-driving cars use torque on the steering wheel to check whether
you’re prepared to take over—but that means that you can just use a weight to “pay
attention” for you. Even the most safety-focused forms of “attention” have been
turned back into discipline from above.

Bridget Todd, Fellow at Berkman Klein Center

Podcasting: what makes it different? Identity mediates our experience
of digital technologies. Podcasting is inherently a medium for people who like
to talk. Opposite of short-form content, with some exceptions. Deep dives into
complicated/nuanced issues. [Books?] Requires attention!

Asking “who benefits from this attention?”: conflict
entrepreneurs. They effectively hijacked conversations around identity. Our
current media landscape is tailor-made for conflict entrepreneurs to do this.
It makes us more divided, suspicious, lonelier, and less curious. Focuses
attention on differences among individuals, values, identities. Bite-size
journalism makes people more black-and-white in their thinking, less nuanced. What
can we do? More exposure to complicated narratives: a man who waited for 6
hours to speak in support of an anti-trans bill in Wisconsin, and listened to
the advocates speaking about their lives, and changed his mind.

Rebecca Tushnet, Professor of Law, Harvard University

Maybe by accident the flip side of Professor Seaver’s talk. My
fields are IP and advertising: and what I suggest those fields tell us is that attention
can be owned, but when attention is not an object of ownership, it is not regulated.
We value ownership of attention but not its other possible characteristics. One
thing that means is that we often are unable to measure the thing that we say
is ownable. A well-known quote, attributed to retail mogul John Wanamaker,
says: “Half the money I spend on advertising is wasted; the trouble is I don’t
know which half.”

I also have something of a side note, or a cautionary one:
courts often believe things about human cognition that are simply wrong, and it
is hard to make them change their minds because they often consider their
beliefs about cognition to be common sense. An example from copyright:

In an important copyright case, Judge Learned Hand wrote
that “everything registers somewhere in our memories, and no one can tell what
may evoke it” – Learned Hand was a great judge but a terrible neuroscientist:
as it turns out, we do not process a lot of sensory input that we get, and it
is never encoded in memory, not long-term or short-term. But courts still rely
on this principle to hold that musicians may have engaged in subconscious
copying without knowing about it, and it is very hard to get a court to reject
a factual assertion made by Learned Hand.

Lots of similar assertions about how consumers think in TM.

More relevantly to attention in particular, copyright’s fair
use test distinguishes between unauthorized uses that are justified and
unauthorized uses that use another’s work “merely . . . to get attention or to
avoid the drudgery in working up something fresh” which are less likely to be
fair—so one of the things the copyright owner owns by default is the right to
your attention based on their expression.

Similarly, TM: TM focuses on the ability of a mark to
identify the source of a product—a mark is communicative, and a good mark
captures attention. The ability to be recognized and noticed is at the core of
what a good trademark is! That means that unauthorized attention-getting uses
might be infringing. Initial interest confusion is a concept that explicitly
relies on the idea that a trademark might get a consumer’s attention and then the
seller might sell them something else, and that’s infringing even though no
sale is ever completed as the result of confusion. At the same time, we distinguish
between initial interest confusion and mere distraction/comparison—it can be
legitimate to catch the consumer’s eye by, e.g., comparative advertising.

Likewise, trademark’s protections for truthful uses can be
limited if the user uses “too much” of the mark—relies too heavily on its
attention-getting power, as courts have ruled in cases like a former Playboy
playmate’s website that repeated that she was Playmate of the Year too many
times, or a luxury resale website emphasizing Chanel products too heavily in
its advertising.

Dilution: making it harder for a mark to stand out/capture
your attention—Delta is diluted versus Xerox which is not: no real empirical
evidence this does harm to TM owners but the sense of unfairness suffices to
get courts to condemn what they see as free riding

Outside of ownership, my fields don’t have ways to think about
attentional harms

Advertising law: getting attention is unregulable because
only falsifiable claims can be evaluated—even advertising systems that purportedly
require factuality don’t generally regulate attention-grabbing in general,
especially in the visual or oral realm.

Regulation of sponsorships and endorsements are an example:
FTC is focused on metadata disclosure—disclosure that content is sponsored—as well
as on whether endorsers make claims that need substantiation. The thought is
that audiences can calibrate their attention or the credibility they give to
the claims once there’s disclosure—but it’s important to understand the
underlying dynamic which is that sponsored content is something that audiences
have a harder time tuning out—it’s not like a banner ad that you can just have
attentional blindness towards.

Indeed, advertising is often seen as a tax on audiences or the
price they pay for other content, even though availability of information is
necessary for an efficient market. James Kellner, the chairman and CEO of
Turner Broadcasting, stated that people who skip TV commercials are violating
their contract with TV companies who provide ad-supported programming. He grudgingly
accepted that “there’s a certain amount of tolerance for going to the
bathroom.”

Attention is owed—but the givers of attention are not the
ones who are in control. That assumption or expectation that advertising is
hostile to its audiences’ interests, perhaps perversely, itself gives some
credibility to the idea that most attempts to capture audience attention are legitimate—we
expect the audiences to be running away, so we also expect the advertisers to
be lunging forward to catch the audiences in any way they can.

Emily West, Professor of Communication, UMass

Attention, inattention and convenience: from book Buy
Now: How Amazon Branded Convenience and Normalized Monopoly. Inattention
allows us to draw attention to things that we find more rewarding; can distract
us from consolidation of corporate power. Production of user inattention is
strategic and purposeful. If content was the bait for ad-supported media, convenience
is the bait in the digital economy for greater platform enclosure of time,
spending, attention. Ease at the center of any interaction/exchange;
facilitates inattention to multiple steps, research, complexity—a structure of
feeling and a logistical form. Decreases discernment and price sensitivity—decisional
muscles get flabby. Get out of the habit of going to the store, the news, etc.—these
things come to us. Google’s AI answers remove even the need to consider the
search results. Offering itself as authoritative source, but it’s a digital ad
company and not a library.

Simon: Different visions: Attention & control; attention
as an asset or point of conflict; attention as ownership/ownership of
attention; attention as convenience. TM law allocates control over
attention-getting to make it easier to find stuff. Attention can also be an
asset to employers. And to sellers who offer convenience (or maybe your desire
not to pay much attention is the asset there).

Seaver: there are boundary objects or trading zones where
disciplines meet—but people are often talking about different things (a “suitcase
term”). Are these definitions of attention all the same? Attention is a big
bag, but that can be appropriate!

West: the temptation is to go to individualized responses—“I
just need to be more careful/buy less/pay more attention”—but it’s the mental
infrastructure we live with. The firms have 150 psychologists on staff and it’s
not a fair fight.

Q: Seaver/Tushnet: Does attention exist or is it just about
metrics that we use for owning, controlling people/their behaviors? A proxy for
something deeper. Todd/West: podcasting and convenience—podcasts are regularly being
used to fill free time, raising the question whether they are really deeper
dives. Attentional experience different from that of reading books (we can do
other stuff while we listen). Current attention ecosystem: media strategy that
has to do with trying to reach the individual or the population that is the
most remote from the issue; anyone who actually knows what’s going on is alienated
by the way the news promotes the issues, but the goal is not to reach people
who understand—instead, it’s to reach the people who know the least.  

West: longform content is just another method of platform
enclosure. Amazon/Tiktok equivalents of QVC where you can just watch and click
to buy.

RT: TM doctrines prioritize form over substance: TM is a
shortcut to compress information about the product/service: you see Coca-Cola
and remember the taste and the advertising and the lifestyle. But the TM owner
is allowed to change quality/characteristics without notice even though continuity
is supposedly the justification for the right. The obligation created by
reputation is not reciprocal.

Seaver: Attention is used as a proxy for productivity (the
mouse jiggler) or safety (the steering wheel)—the real value is the thing that
the attention is attached to, like truth (for media). Historically specific in
the modern era, perhaps.

Q: Do you think that attention can justly be owed?
RT: I’m attempting to describe how IP thinks about these issues; it depends on
the doctrine. Bundle of content and attention—attention might be owed if it
were really an efficient market if you were really free to choose it instead of
something else. It’s not fair if there’s monopoly control or market distortion.

Seaver: we tend to assume that neuroscience has to be
consulted, but if attention is just a word for “people should be able to do
things on their own schedules and at their own behest” you don’t need
neuroscientists for that. When Trump was elected in 2016, there was a lot of
attentional discourse: (1) how could this have happened, we (the polity) weren’t
paying attention; (2) everything he does is a distraction (to/for the polity) from
something else; (3) he has no attention span. These are three levels of
attentional discourse. The polity pays attention by writing things in the papers
even though we traditionally assume that writing things in papers leads to the
polity paying attention.

West: Advertisers like digital advertising because it can
show you the breadcrumbs of how you spent your ad dollars and whether someone
clicked—more behavioral.

RT: disagree—that’s only for some types of ads. Coca-Cola
doesn’t use behavioral advertising, and there’s lots of ad fraud. And only some
types of transparency. Amazon may tell you cost per click, but it doesn’t tell
you how you get put on the first page of search results, and it could change
how it organizes its site and destroy you at a moment’s notice.

Seaver: note that the jiggler is not super effective
resistance; interesting to see the pushback. Doesn’t find it morally
objectionable, but defeating the safety device on a car is—but they’re framed
the exact same way by their users.

from Blogger http://tushnet.blogspot.com/2025/04/the-battle-for-our-attention-empirical.html

Posted in Uncategorized | Tagged , , , | Leave a comment

trademark use is easier with a suggestive mark than with a descriptive one

Posted on April 11, 2025 by rtushnet

Medical Depot, Inc. v. Med Way US,
Inc., — F.Supp.3d —-, 2025 WL 948334, No. 22-CV-01272 (OEM) (SIL)
(E.D.N.Y. Mar. 28, 20

This case focuses on trademark “use.” The parties are
medical supply companies who use similar marks—“Med-Aire” and “MEDAIR®”—to
brand the medical air mattresses they sell.

Plaintiff, dba Drive, has sold air mattresses using the
“Med-Aire” mark since 2007. From 2007 to 2023, Drive’s “Med-Aire” mattresses
amassed gross sales of $160 million. “Med-Aire” was used on at least some of
Drive’s external packaging for its medical air mattress products intermittently
since 2007. Drive used the ™ symbol in connection with its “DRIVE” trademark for
its “Med-Aire” mattress products between 2007 and 2020. But it didn’t use the ™
symbol in connection with its “Med-Aire” mark until 2020, two years after Med
Way started using its “MEDAIR®” mark. “Med-Aire” appeared on at least certain
shipping labels for Drive’s air mattress products, alongside product
descriptions in the same font, color, size, location, typeset, and style as the
rest of the product descriptions, at least intermittently, since 2007. “Med-Aire”
appeared inside and on the cover of a user manual included with at least some
“Med-Aire” air mattress systems, and on the face plate of the air pump that
accompanied the mattress system, which is sold separately. “Med-Aire” also
appeared in at least some of Drive’s catalogs and brochures since “as early as
2007.” Drive also distributed monthly promotional “Med-Aire” product catalogs. And
“Med-Aire” was displayed in flyers at retailers of “Med-Aire” products since
2011, at trade shows since 2007, and on websites since at least as early as
2009.

Med Way, meanwhile, displayed MEDAIR on its goods in
interstate commerce since at least as early as April 1, 2019. Med Way stamps “MEDAIR®”
on its medical air mattresses and pumps. In late 2019, Med Way hired counsel to
conduct a trademark clearance search for the term “MEDAIR,” and variations
thereof, which did not reveal Drive’s “Med-Aire” mark. It filed a use-based
application for “MEDAIR” in connection with “air mattresses with pump, for
medical purposes” with a first use date of April 1, 2019; it was registered in
2020.

Drive and its affiliates have 67 federally registered
trademarks. Drive waited until July 8, 2020, to do a clearance search for the
term; having done so, it found MEDAIR and then tried to register Med-Aire for
“[m]edical products, namely, therapeutic mattresses” and the like. The PTO
ultimately suspended Drive’s application pending disposition of Med Way’s
prior-filed application; Drive’s cancellation petition is suspended pending the
outcome of this litigation.

The court found that Med-Aire was suggestive because “it
requires some imagination and some thought” to understand the kind of goods it
refers to; it was obviously medical, but it wasn’t obviously a mattress. This
is the wrong standard because it’s only half the question: the appropriate
inquiry is, knowing the goods, does it require imagination to connect
the goods with the mark? The classic Abercrombie spectrum gets its name
from a case in which the court found SAFARI distinctive for some apparel items
but not others. Noodles would be descriptive for a restaurant, but arbitrary
for a furniture store. Courts often get this wrong, but they shouldn’t. Here,
the court was apparently encouraged in its error by both sides.

The court then turned to trademark use. Citing Alexandra J.
Roberts, Trademark Failure to Function, 104 IOWA L. REV. 1977 (2019), the court
stated: “To merit protection, a trademark must be ‘used in a trademark way,’
meaning that it ‘must appear where consumers expect a trademark to appear, and
it must be sufficiently set off from the surrounding text and images to attract
notice.’” The court also looked to Jack Daniel’s and the TTAB. A mark
“must be used in such a manner that its nature and function [as a trademark]
are readily apparent and recognizable without extended analysis or research and
certainly without legal opinion.” Scholastic Inc. v. Speirs, 28 F. Supp. 2d 862
(S.D.N.Y. 1998), aff’d, 199 F.3d 1323 (2d Cir. 1999) (cleaned up).

“Common indicators suggesting that a word or phrase might be
viewed by the public as a trademark include large font relative to surrounding
text, all capital letters or initial capitals, distinctive print style, use of
color, and prominent position on a label or in an advertisement. In short, a
mark must stand out from the surrounding text.” Advertising expenditures can
also be circumstantial evidence, as can sales. (Though you still need to know
which part of the sales experience counts as a trademark!)

Conceptual strength also matters.  “For example, where a mark is fanciful, ‘even
though [the mark] may be embedded in other text, there is no danger that [the
mark] will be interpreted as merely descriptive or informational matter … As
such, its only purpose is to provide a unique identifier to a product that is
otherwise identified only by a generic name and technical explanatory,
information’” (citing In Re Eli Lilly & Co., 2015 WL 4241138 (T.T.A.B.
2015)).

Using these principles, plaintiff used “Med-Aire” as a
trademark. “Med-Aire” “consistently appears as the first word or phrase in
product descriptions, uses initial capital letters, appears at the product
point of sale listings, appears in advertising and promotional materials, is
referred to by consumers as ‘Med-Aire’ in voluminous consumer communications,
is suggestive, and products bearing the mark have amassed millions of dollars
in sales, all of which supports finding that the mark has been used as a source
identifier.”

The court distinguished Jaymo’s Sauces LLC v. Wendy’s Co.,
19-CV-01026, 2021 WL 4712685, at *4 (C.D. Ill. Oct. 8, 2021), which held that “S’Awesome”
was not an adequate source identifier for sauce in part because of the term’s
nonprivileged placement, the sauce label’s emphasis on other (descriptive)
terms, and the comparatively small, plain font of “S’Awesome,” as well as
marketing materials that featured only “occasional” use of the “S’Awesome” term.
Here, Drive used “Med-Aire” as an individual product mark and also used a house
mark on its products; that’s fine. “Drive does not emphasize other
non-trademarked phrases, images, or terms relative to ‘Med-Aire’ on labels and
in promotional materials,” and frequently used “Med-Aire” in promotional
materials.

The lack of brand awareness surveys or marketing experts was
not dispositive, nor was it dispositive that consumers often refer to “Drive”
mattresses or product numbers. Drive also submitted evidence of consumer
communications about “Med-Aire” products, demonstrating that consumers did
perceive “Med-Aire” as a source identifier.

“Size, location, and other characteristics may be
determinative for trademark use for descriptive terms that have acquired
secondary meaning,” but were less important for suggestive terms.

With nothing else in serious dispute, Drive had priority and
showed likely confusion as well as its entitlement to cancellation of Med Way’s
registration.

But its state law unfair competition claim, which required
bad faith, failed because Med Way presented evidence that it relied on a
trademark clearance search and advice from counsel. There was also no fraud on
the PTO.

Med Way’s dilution counterclaim also failed because Drive
was the senior user and because Med Way’s mark was not famous.

State law false advertising counterclaims also failed for
want of public injury. “Med Way’s evidence consists of a reference to ‘mediocre
reviews,’ but many products receive ‘mediocre reviews,’” and anyway there was
no showing of how Med Way’s mattress reviews compared.  

The court declined to award disgorgement. There was no finding
of extreme difference in quality or bad faith, or even that Med Way benefited
from its infringement. Even though Med Way’s principal physically examined
Drive mattresses to see what a competitor’s mattresses looked like, “a person
could reasonably examine the physical mattress alone—without the point of sale
listing, or the user manual, or an advertising flyer—and not encounter the ‘Med-Aire’
mark” based on Drive’s own exhibits. And, though Med Way continued its use
after Drive’s objection, Med Way’s CEO and Med Way’s attorneys expressed a
genuine belief that although Drive used “Med-Aire,” it was not the senior user
of the mark.

Although Drive didn’t delay in protecting its rights or have
unclean hands, the balance of the equitable factors weighed against profit
disgorgement. Instead, it was entitled to a permanent injunction.

from Blogger http://tushnet.blogspot.com/2025/04/trademark-use-is-easier-with-suggestive.html

Posted in Uncategorized | Tagged , | Leave a comment

Trademark question of the day

Posted on April 7, 2025 by rtushnet

 At a hotel recently, I was presented with this gem: “Staybill,” a guide to hotel/local attractions.

Does it matter that PLAYBILL is registered for, inter alia, “making hotel reservations for others”?

from Blogger http://tushnet.blogspot.com/2025/04/trademark-question-of-day_7.html

Posted in Uncategorized | Tagged | Leave a comment

whether a product was discontinued doesn’t relate to its “nature, characteristics, qualities, or geographic origin”

Posted on April 4, 2025 by rtushnet

Memjet Technology Limited v. Vanguard Graphics International,
LLC, 2025 WL 976915,  No.
3:23-cv-1810-JES-AHG (S.D. Cal. Apr. 1, 2025)

The parties sell digital inkjet products for use in
commercial industries. Plaintiffs alleged that defendants disseminated a
communication to approximately twenty businesses in the digital inkjet printing
industry stating that “Duraflex print head will no longer be produced by Memjet
effective immediately” and that they were “disappointed in Memjet’s decision
…” and will “provide even better options …” moving forward. This allegedly
libeled Memjet by telling its customers that Memjet was discontinuing Duraflex
printheads immediately without warning to its customers and suggested that the
Duraflex printheads were “substandard, obsolete, and becoming irrelevant within
the print industry.” Plaintiffs also alleged that the communication “violated”
Memjet’s trademarks by displaying the Duraflex name and logo. Plaintiffs sued
for Lanham Act false advertising, trade libel, intentional/negligent
interference with prospective economic relations, and California UCL violations.

Defendants successfully sought dismissal of the dismiss the
trade libel claim, the UCL claim, and the Lanham Act false advertising claim.California
trade libel requires: (1) a false or misleading statement; (2) which
specifically refers to the plaintiff’s product or business; and (3) clearly
derogates that product or business. Statements about Duraflex being
discontinued weren’t clearly derogatory, despite allegations that they prompted
“countless” phone calls, emails and in-person inquiries and that one of plaintiffs’
larger OEM providers “indicated that it would significantly reduce its DuraFlex
printhead forecast as a result of the Communication.” But ‘[t]he defamatory
character of the language must be apparent from the words themselves.’ ”  “[A] statement that the Duraflex printheads
are being discontinued effective immediately, even if true, would not
necessarily or clearly carry an implication that something was wrong with the
product or business. For example, unexpected discontinuation of a product could
result from a supply chain issue with a part or from a personal issue with the
business owner that has nothing to do with how the business is run or the
product’s quality.”

UCL: Only allows injunctive relief/restitution. Plaintiffs’
claim for money spent on corrective advertising wasn’t restitution but damages,
and they didn’t seek injunctive relief, so the claim had to go.

Lanham Act: This one I’m dubious about, but the court held
that a statement that a product was being discontinued didn’t relate to its
“nature, characteristics, qualities, or geographic origin.”

Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th
Cir. 2008), says that phrase relates to “characteristics of the good itself” and
not to false statements regarding their copyright license status. Characteristics
of a karaoke recording, for example, include “the original song and artist of
the karaoke recording, and the quality of its audio and visual effects.”
Whether a product was discontinued was not a characteristic of the good itself.
(What about plaintiffs’ services or “commercial activities”? The court
dismissed the complaint without leave to amend, because this was their second
try.)

from Blogger http://tushnet.blogspot.com/2025/04/whether-product-was-discontinued-doesnt.html

Posted in Uncategorized | Tagged | Leave a comment