Taco John’s Claims Rights in Taco Tuesday

The “Taco Tuesday” battle exploded on Twitter, blogs, NewsOK, Fox 25 News, and even Facebook.  Taco John’s owns U.S. Trademark Registration No. 1,572,589 for the mark TACO TUESDAY (seen below).  It appears that Taco John’s attorneys sent the Oklahoma City based Iguana Mexican Grill a letter notifying Iguana of Taco John’s alleged rights and registration.  Taco John’s also ordered Iguana to cease and desist usage of the hashtag #tacotuesday.

What started as an attempt by Taco John’s to assert its trademark rights, resulted in some fantastic PR for Iguana Grill.  For those of you that are not from Oklahoma, you should know that as Oklahomans, we stick together.  Iguana Grill has generously invested time and money into the community through volunteerism and food donations.  The Oklahoma City community is extremely loyal to Iguana and when everyone caught wind of Taco John’s requests, a frenzy of tweets ensued.  The community rallied around Iguana by voicing their support for the usage of “Taco Tuesday” on Twitter and Facebook.  Fans also showed their support by gathering at Iguana.  Iguana sold a record number of tacos on Tuesday – approximately 2,000 tacos.

Tuesday’s tweets included things like:

• “petition @tacojohns to stop copyright enforcement of #tacotuesday hashtag”
• “#tacotuesday is used all over CA! But qdoba uses #tacomonday. Who want #tacowednesday…Patent pending”
• “Potential new @iguanaokc promotion: @TacoJohns Sucks Tuesday #tacotuesday (They don’t have a patent on that one.)”
• “So does anyone know if ThirstyThursday has a copyright? If so, Who will hold a big party to celebrate the end? #tacotuesday”
• “Their trademark can’t keep the customers from calling it #TacoTuesday”

@TacoJohns even tweeted:

“Taco John’s holds the copyright to Taco Tuesday giving us the exclusive right to use and protect it.”

(Emphasis Added.)

So which one is it?  What exactly is Taco John’s trying to assert?  A patent?  A copyright?  A trademark?  It seems that even @TacoJohns needs some guidance as to the differences between copyrights and trademarks.  Taco John’s claim is centered around its alleged trademark, not copyright, for the phrase “Taco Tuesday.”

Generally speaking, patents protect inventions, copyrights protect creative works of authorship like music, photos, videos, and literary works, and trademarks protect brands.  Taco John’s is alleging that Taco Tuesday is their brand name, that they have trademark rights in it, and that Iguana cannot use it without their permission.  Are there legal arguments that could be made in response to Taco John’s?    Sure.  Does it matter that several other companies use the phrase “Taco Tuesday?”  Possibly.  But that is another post for another day.

For more information on the difference between patents, trademarks, and copyrights check out this PHOSITA blog post posted earlier last year.

Posted by Emily E. Campbell, August 4, 2010 at 6:43 am
Permalink: Taco John’s Claims Rights in Taco Tuesday
5 Comments

Google’s April Fools’ Day Switcheroo to Topeka Brand Name

Google takes the prize for one of the best April Fools’ Day pranks of 2010.  If you haven’t heard, be sure to visit www.google.com before the days end.  Also, check out The Official Google Blog for more information about their “new” company name, Topeka.  The best part of the Google blog post is at the bottom.  Google notes that branded products can achieve such popularity that they can sometimes become generic (much like aspirin, cellophane and trampoline).  To be sure that Google’s new name is not subject to genericism, Google provides tips on how to use their new name. 

Kudos to Google for a great April Fools’ Day prank! 

Also thank you to Owen Smigelski (a fellow member of the International Trademark Association (INTA)) e-mail list, who pointed me to the Google blog post.

Posted by Emily E. Campbell, April 1, 2010 at 10:37 am
Permalink: Google’s April Fools’ Day Switcheroo to Topeka Brand Name
1 Comment

Google gets a design patent – aka the Twitterverse’s collective head explodes

Just a warning – this may sound a little snarky.

So, you may or may not have heard – although I find it tough to believe you haven’t heard – but Google received a patent on the familiar search page interface we all know and love.

It’s been a hot topic on Twitter the last two days – and I would hazard a guess that it is being viewed as akin to Darth Vader doing the Macarena while shopping for sheets.  Or some such nonsense.

From a few of the more “interesting” tweets:

tompolk: Who’s on crack in the patent office? Google Patents World’s Simplest Home Page   http://ow.ly/nZqN

estauthamer: Is Google or the US patent Office getting nuts???? Patent on 2 button search interface http://bit.ly/39SDjq

yelvington: Don’t de-crapify your homepage. Google has a patent on that.http://tinyurl.com/kro7ol

patrics: Patent on Google Homepage?! Not Funny! http://ow.ly/nYmm #software#patents

ratkat: @stevelitchfield I think it is a bit scary that even such an iconic design asgoogle’s home page should be granted a patent

GyrRaven: Lauren Weinstein’s Blog: Will Google’s “Home Page” Patent Embolden Patent Abuse? http://ow.ly/nY2p

So – do you hear the sound of the apocalypse coming? Patent abuse!  Patent abuse! (Are they talking about the intellectual property right or about not cleaning your leather shoes?)

Well, it doesn’t surprise me that PHOSITA readers are probably not too concerned about the issuance of Design Patent No. D599,372 (PDF) because you are well aware that it is a design patent and not a utility patent.  It is only one word, I know – but that one word makes a tremendous amount of difference.  A difference that is obviously lost on the twits above.

A utility patent protects the functional expression of an idea while a design patent protects the ornamental design of a functional product.  A design patent does not protect the functional aspects of the product itself – rather, it protects how the product is decorated and/or designed.

Google cannot keep anyone from “de-crapifying” their website (e.g., the functional aspects of a product) – it can merely keep you from “de-crapifying” your website in a manner in which embodies the patented design or any colorable imitation.  It is kind of like a trademark – you can’t look like Google’s ornamental design – but you can still “de-crapify” your website and/or create a better search engine.  (I wonder how high I will rank in Google now for the term “de-crapifying”?)

As such, the scope of protection afforded a design patent is much more limited in nature, scope and breadth than a utility patent.  And it only lasts for 14 years.

So – to the twits (or is it twitts?) – CHILL OUT.  The world is not ending, the system is not spinning off the rails – Google was granted a property right in the ornamental design of its unique website.

Furthermore, why shouldn’t Google be allowed to protect it’s unique design?

From a cursory review of the history of the page – at the time (and up to this day) many people thought the design was (1) dumb, (2) two simplistic, (3) moronic, (4) genius… no one thought it was “done before” – i.e., it was novel – no one or only very few designers were taking the simple and clean route Google took at the time.  It stands out in a crowd and has become a very important symbol of Google – i.e., something that they would want to protect and keep people from copying.

It also protects the user – if you see the interface, you know it is Google – and not some porn site or spammer.

I know it is the hip cool thing right now to “fight the man” – with the “man” being the patent system, but I really wish people would take a few minutes to actually figure out what occurred and what it means.  It would save you a lot of wasted “outrage” and tweeting.  There are abuses of the patent system – Google getting a design patent is not one of them.

Then again – what would patent attorneys do with their evenings if they didn’t have to correct the record?

/snark  (End of snark for those of you “not in the know”)

Image by Mermay19 on Flickr Creative Commons

Posted by Douglas Sorocco, September 3, 2009 at 3:25 pm
Permalink: Google gets a design patent – aka the Twitterverse’s collective head explodes
5 Comments

Scrabble v. Scrabulous

Check out this statement from an article that I read today:   

Now, as if you needed more proof that we live in a time in which stuffy lawyers don’t dig the digital age, take a look at this: It looks like toy-makers Hasbro and Mattel have sent their legal goons to Facebook and demanded that it remove the immensely popular ‘Scrabulous’ from its site.

Woah, woah, woah.  Come on, that wasn’t very nice.  Let me explain.  Hasbro and Mattel have probably asked their Intellectual Property attorneys to look into this matter.  Intellectual property attorneys dig the digital age.  In fact, we are advocates for the digital age.  That is why we have chosen to devote our working lives trying to protect the very technology and innovation that you create. 

If intellectual property attorneys did not step in and advocate for our clients intellectual rights, like the copyright and trademark rights of Scrabble®, everything would be free game and copying and stealing would suddenly become the norm.  In fact it’s legal goons like us that advocate and protect the copyright held in the very article written above.

Trust me, I may be a legal goon, but I dig the digital age. 

Posted by Douglas Sorocco, January 17, 2008 at 2:01 pm
Permalink: Scrabble v. Scrabulous
1 Comment

1st annual dcr patent poetry throwdown –2007

Mr. Michael Schade did an excellent job for the first round of poems.  Now, it is time for my creation. 

Everyone loves a good limerick….especially when it involves a little bit of “trolling”.

There once was a troll from the city,

who opened the trial with this ditty,

“Now the object of my patent

was to be non-combatant,

I simply just wanted your pity.”

To the rest of PHOSITA…..Bring it.

Posted by Douglas Sorocco, October 3, 2007 at 7:12 pm
Permalink: 1st annual dcr patent poetry throwdown –2007
1 Comment

say it aint so – incompetence at the USPTO?

Morningstar reports that four individuals have sued Secretary of Commerce Carlos M. Gutierrez for appointing an allegedly unqualified Deputy Director of the USPTO, Margaret Peterlin.  But really, incompetence in government, where’s the beef?

Well, as amended in 1999, 35 U.S.C. § 3(b)(1) requires that the Deputy Director be a citizen of the U.S. “who has a professional background and experience in patent or trademark law.”

According to her executive biography, Ms. Peterlin was Counsel for Legal Policy and National Security Advisor for the Speaker of the House, J. Dennis Hastert, . . . where she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as IP protection . . . .”  Prior to that,  Ms. Peterlin was General Counsel to Richard Armey, Majority Leader of the House; clerked on the Fifth Circuit Court of Appeals; and served as a Naval Officer in the communications field.  Ms. Peterlin also earned her legal degree sum laude from the University of Chicago.

No doubt an impressive resume, but is it really “a professional background and experience” in patent or trademark law?  Many patent and trademark practitioners would probably be insulted by the suggestion.  In fact, the complaint filed Monday alleges that Ms. Peterlin is not, and could not become, registered to practice before the USPTO; has never drafted or prosecuted a patent or trademark application; and, overall, has never had direct exposure to patent or trademark practice.  And so, these four plaintiffs have asked the D.C. District Court to declare Peterlin’s appointment illegal and order appointment of a qualified alternative.

Morningstar quoted the USPTO as responding, in an emailed statement, “Margaret Peterlin is well qualified for her job as Deputy Under Secretary and Deputy Director, having had direct involvement in oversight of the USPTO and every piece of patent, trademark, and copyright-related legislation considered on the House floor over the past five years . . . .”  Well there you have it, the USPTO, of which Peterlin is second in command, says Peterlin is qualified.

On a side note, the suit alleges Peterlin’s appointment “perpetuates USPTO management’s inability to handle egregious delays” in processing applications.  Suing the Secretary of Commerce does seem like an innovative way of attempting to fast-track their applications.  No word yet on whether the plaintiffs plan to file a patent application for a business method of expediting patent prosecution by suing USPTO personnel.

Posted by Douglas Sorocco, July 20, 2007 at 10:44 am
Permalink: say it aint so – incompetence at the USPTO?
No Comments

An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes

Over the Memorial Day weekend my husband and I went to Austin, Texas to visit his family and low and behold while we were there visions of intellectual property danced in my head. 

Other than being the home of the University of Texas Longhorns (a huge rival of my alma matter, the University of Oklahoma), Austin is a great town rich with arts and entertainment and outdoor recreation.  While in town we wanted to try and get tickets to see Mr. Sinus Theater.  Mr. Sinus Theater was a live comedic spin off of Mystery Science Theater 3000 mocking films such as Top Gun, The Terminator, and yes, even Britney Spear’s breakthrough film, Crossroads.  As you might have guessed, a quick search on the internet to find tickets revealed that Mr. Sinus Theater was sued in 2004 by the creators of Mystery Science Theater 3000 over trademark issues.  Apparently earlier in 2003, Mr. Sinus Theater contacted Best Brains Inc., owners and producers of Mystery Science Theater 3000, to license the mark but to no avail.  After deciding that Mr. Sinus’ adult-type humor went against the spirit of Mystery Science Theater 3000, Best Brains Inc. filed suit.

But don’t worry this was not the end of Mr. Sinus Theater.  Mr. Sinus Theater later changed its name to The Sinus Show.  Although the comedy group decided later to part ways, in January 2007 one of the original members formed Master Pancake Theater under the same movie-mockery premise.  You can see Master Pancake Theater at the Alamo Drafthouse in Austin, TX.  Currently they are showing The Breakfast Club, for show times click here. 

Also during my weekend, I woke up after a nap to a television blasting in the background, “Katie Holmes Threatening Legal Action Against Porn Star”.  What?!  Sure enough, a fashion student who is hoping to launch a career as a porn star recently changed her name to Katee Holmes.  Apparently, “Katee is using the name as a tribute to Katie, who has always portrayed in innocence in everything she’s done, beginning with ‘Dawson’s Creek.’ “. 

This could get interesting.

Posted by Douglas Sorocco, May 30, 2007 at 4:07 pm
Permalink: An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes
No Comments

Celebrity Inventors

Along with Laura’s article about the next season of American Inventor (posted on March 16, 2007), read the following article, I Coulda Been an Inventor by Mindy Laster. Who knew that Marlon Brando, Eddie Van Halen, Jamie Lee Curtis, and Michael Jackson were all patent-toting inventors?

Here’s some food for thought. What if the producers of American Inventor and the producers of Dancing with the Stars combined their creative juices to create a show called Inventing with the Stars? Imagine the possibilities.  We may be on to something here.

Posted by Douglas Sorocco, March 20, 2007 at 2:33 pm
Permalink: Celebrity Inventors
No Comments

Them’s fightin’ words

Check out this week’s WAR OF THE WORDS:

Businessweek reports that in Beijing, China, a pharmaceutical company was refused permission to use the name of a disgraced official as a trademark to sell rat poison.

Forbes reports that Jimi Hendrix’s sister, Janie Hendrix, is suing a Seattle company, which is backed by other relatives, for using the legendary guitarist’s image to sell vodka under the name Electric Hendrix.

The Hill reports that two well-known business trade associations, namely the U.S. Hispanic Chamber of Commerce and the U.S. Chamber of Commerce, are embroiled in a legal battle as to the right to use the words “United States” and “chamber of commerce.”

JSOnline reports a “food fight” between Palermo’s Pizza and Trader Joe’s. The complaint claims that Trader Joe’s Pizza Palermo frozen pizzas are trading unfairly on the Palermo’s Pizza frozen pizza brand. The fun twist to this story is that Palermo is not only the last name of the family that owns the company that makes Palermo’s Pizza, Palermo is also a city in Sicily, Italy, having a style of pepperoni pizza distinctive to the region.

Posted by Douglas Sorocco, March 9, 2007 at 3:30 pm
Permalink: Them’s fightin’ words
No Comments

Magic and Intellectual Property Law: A Mysterious Combination

Last weekend my husband and I went to see The Prestige with Hugh Jackman and Christian Bale – great movie, I would definitely recommend it.  The movie is about two rival magicians who are constantly trying to steal one another’s ideas and illusions.  During the movie I knew that I had officially become an IP nerd when I thought to myself, “I wonder if these illusions could be protected by trade secret law?”  Well, after a quick search on the internet I found a fun article on Wikipedia applying the various aspects of intellectual property law to magic.  Enjoy!

Posted by Douglas Sorocco, November 2, 2006 at 4:14 pm
Permalink: Magic and Intellectual Property Law: A Mysterious Combination
No Comments