A Term We’re Going To Hear: Booking Trademark

The Supreme Court Case of USPTO v. Booking.com is just about everything that is exciting about trademark law. While copyright law has paired with telecommunications and patent law to be at the forefront of the interface of how law evolves to meet society’s needs as technology advances, this case reminds us that trademark law is never too far away from its siblings.

It is almost perfect that this case is the first case that is heard by teleconference. The reason for the change in structure is entirely unrelated to the case, but few cases in the history of the Supreme Court (on the subject of telecommunications or copyright law) could have been more fitting for the occasion. This is a case about interpreting a 19th century precedent and a 20th century statute when evaluating domain name of an e-commerce website as a candidate for trademark registration.

BOOKING.COM: PROBABLY A WEBSITE WHERE ONE DOES BOOKING.

The core question of the case is whether “Booking.com” is eligible for trademark registration. The USPTO rejected the application to register the trademark on the grounds that it is generic. In order to be registered as a trademark, the USPTO must conclude that a trademark is more than merely descriptive of a good or service. The USPTO found that “Booking.com” was a generic term for a website that one might go to in order to “book” reservations; the trademark merely described exactly what the service was, and therefore the application was rejected. Booking.com fought this, and the case made its way to the Supreme Court.

Now the trademark world waits to see if there will be a new ruling regarding the use of top-level domain indicators in trademarks.

The USPTO relies on the 1888 case about rubber manufacturer Goodyear, and the effort of that company to prevent other companies from using “Rubber Manufacturer” in their names. Booking.com argues that this case is superceded by a more recent Federal statute, and relies on the interpretation of the Lanham Act test for determining generic marks, the primary significance test, found in section 1064(3), according to Prof. John Duffy.

TRADEMARK TURMOIL

In a year in which most of the world has been turned upside down, the world of US trademark law has also been flipped by a few rulings. The 9th Circuit has issued a ruling in VIP Products LLC v Jack Daniel’s Properties Inc.  on tarnishment that, some argue, departs from previous understandings about that doctrine. Only a few months later, the same Circuit Court handed down a ruling in San Diego Comic Con v Dan Farr Productions that raised concerns   

The ruling of the Court of Appeals for the Federal Circuit in In re Forney Industries is already seen as a direct rejection of a 1995 Supreme Court ruling (Qualitex Co. v Jacobson Products Co.) on the guidance for registration of color marks. Almost exactly one year ago, in Iancu v Brunetti, the Supreme Court overruled the statutory rule that offensive or immoral marks were not eligible for registration. Only two years before that, in the 2017 case Matal v Tam, the Supreme Court ruled that disparaging marks could be eligible for registration. Now, the Supreme Court has another opportunity to rule on trademark law. It is tempting to look to the previous two decisions to predict the ruling on Booking.com, but those opinions are probably not much help.

The Supreme Court turned to the treasured First Amendment when evaluating the last two trademark law cases. The issues in those cases emerged out of questions about trademark registrations, but the Supreme Court saw them as issues of free speech and constitutional law. This time, the Bill of Rights will provide no guidance on a narrow point of substantive trademark law: is the mark “Booking.com” generic or not? Surely, the Court must answer “Yes” or “No” and clearly establish a rule regarding the status of “.com” and whether two generic components can make a non-generic trademark! Well, the Supreme Court may find a way to avoid addressing the issue quite so directly.

Many attorneys are likely to see this as a case of trademark law. However, the Supreme Court may see it as a question of whether a 19th century US Supreme Court case ought to hold precedent over a 20th century Federal statute: Booking.com has argued that the mark should be evaluated according to the Lanham Act, while the USPTO maintains that the 1888 Supreme Court ruling in Goodyear Rubber Co. v. Goodyear’s Rubber Mfg. Co. justifies rejection of the application.

It is important for the Supreme Court to address questions of administrative law and set a clear general course for the interpretation of laws in the United States. However, the Supreme Court has shown that it can address substantive questions of material fact in questions of intellectual property protections issued by the USPTO:  six years ago, in Alice v CLS Bank, the Court explicitly commented on the technology and substantive concepts at issue, and held that merely using a computer as a tool to carry out the concept of escrow could not be protected by patent. It would be consistent with that opinion to attend to the substantive question of whether “Booking.com” is a generic mark, rather than ignoring the issue in favor of broadly interpreting the function of Common Law in the United States.

RULING ON DOTCOM-GENERICISM IN A DOTCOM WORLD

Although it is an accident forced by the conditions of a national emergency and a global pandemic, the fact that the Supreme Court held argument by teleconference is relevant to this case. For me, it is actually dispositive insofar as it demonstrates in the most unignorable fashion that digital technology is ubiquitous and inescapable in US law and commerce. If the true heart of this case is the assertion that the suffix “.com” adds something meaningful and not generic to a mark, that assertion drops dead at the moment a court is held in a digital environment to evaluate that assertion. The term “.com” is perhaps the most general, generic indication of an online presence. It is the digital equivalent of “Street” or “Avenue” and does nothing more than indicate address. If the addition of “.com” is nothing more than generic, and if “Booking” is also generic, the Court could only rule in favor of Booking.com with the claim that two generic components create more than a generic trademark.

IMPLICATIONS FOR A RULING IN FAVOR OF BOOKING.COM

Perhaps more important than whether the Supreme Court upholds or remands is exactly how the opinion is worded. Will the Court explicitly rule on the use of “.com” or other TLD appendages? Will the Court promulgate a broad rule about generic trademarks? I think it will not be enough for the Court to merely declare that the Lanham Act overrules the 1888 Goodyear case; I do not think the “Booking.com” mark is eligible for registration under either the Goodyear case or the Lanham Act. I do not think “Booking.com” can pass the “primary significance test.” Moreover, section 1064(3) is specifically referring to cancellation of marks already registered that become generic after registration. If “Booking.com” is a generic mark, it isn’t because the company has so thoroughly dominated the market that all consumers only identify that service with that name—it’s because consumers have a vague idea of what the word “booking” usually means, and they also have an idea of what “.com” entails.

I am not sure why the mark could not be placed on the supplemental register and then Booking.com can demonstrate acquired distinctiveness; as I understand it, the litigation has been replete with consumer surveys that should be sufficient to demonstrate acquired distinctiveness.

A viewer of a discussion on this subject raised a concern about the possible failure of Booking.com to maintain its domain name. The disconnect between owning the domain and owning the mark presents further complications to the business decision. Even if Booking.com wins, it would be prescient to pause and consider carefully whether a company should register its domain name as a trademark, even if the Supreme Court ruling would appear to allow it.

Slaying Monsters of Copyright Before They Climb The Spire of Creation

Slay the Spire and Monster Slayers are both roguelike deck-building video games in which players attempt to complete a series of dungeons comprised of distinct categories of encounters, including combat, merchants, occult rituals, and campfires. Both games allow the player to equip a few items to give enduring boosts to core stats. Both games allow the player to make constrained choices about which encounter to pursue next. In both games, combat is presented in a 2D, side-view with a hand of playable cards held in the foreground; playing cards prompts simple combat animation movements depending on which kind of card is played.

Slay the Spire released on Early Access in “late 2017,” with a full release in January 2019. Monster Slayers was initially released in March 2017.

I’ve spared a lot of other details of the overlap between these games. Is this copying? Plagiarism? An infringement of intellectual property?

Probably not, no—even though it’s genuinely difficult to describe these games in a way that makes them sound very distinct from one another.

So, how similar can two video games be before there is a problem?

 

I. The Purpose and Limits of Intellectual Property (in a paragraph or two)

 

The concept of genres, generally, presents challenges for intellectual property protection. In both the arts and the sciences, most people understand and accept that there are concepts, toolsets, and constraints that tend to push creative works towards certain points in the same way that the center of a galaxy holds the planets, stars, and cosmic dust in orbit. Debate rages around some points of overlap, some outliers, some fringe data points– but people nevertheless use terms for genres and categories as though these terms have meaning. Pop songs tend to sound similar to one another, but are usually recognized as distinct from jazz, classical, or metal. First-person shooters look and feel similar to one another, but are usually recognized as distinct from real-time strategy, puzzle, or fighting games.

Law is always an effort to balance competing claims. Sometimes those claims are brought by sentient parties. Sometimes those claims are brought by reason itself. Intellectual property law, generally, is an effort to help creators (of various stripes) realize gains from their efforts, but it is quickly obvious that there must be room for many creators. Different categories of intellectual property do this in different ways. Patent law (backed by cases like Mayo and Alice) prohibits ownership on the laws of nature. Trademark law recognizes that merely describing a good or service is a very weak basis for a trademark and therefore merits very weak protective power. Copyright law understands that art draws from a common area of tools, techniques, and cultural concepts that allow art to operate and function as a means of expression and communication. Copyright law uses the term “scenes-a-faire” to describe those elements of artistic expression which are so common or fundamental that to grant copyright protection to it would do meaningful harm to the capacity of future creators.

In considering computer programs, the Supreme Court recognized that the use of a menu in a computer program could not reasonably be subjected to copyright protection; it was just a foundational part of how users used programs. The Court didn’t call computer menus “scenes-a-fair” in this ruling, unfortunately—probably because computers were relatively new devices and also because “scenes-a-fair” is historically tied to ideas in literature. I don’t think anyone else would use “scene-a-fair” to describe ideas in video game development in 2020; I’m just ahead of my time, which is to say, I’m wrong until the rest of the world catches up to me.

Video games have an established history of dealing with similar products in a small market. Games that displayed the player character’s hands and gun in the foreground and focused primarily (or exclusively) on navigating a level and shooting enemies weren’t widely called “first-person shooters” for most of the 1990’s; we called them “Doom clones,” in reference to the singular, incredibly successful game that defined the style of the genre for that decade. There is current debate over whether to make a similar linguistic shift around the use of the adjective “MetroidVania” as a descriptor of… well, it’s a matter of debate just what it describes (but the term is a reference to two popular and successful games, Metroid and Castlevania).

Slay the Spire and Monster Slayers both draw on basic, well-established genres, tropes, themes, and mechanics that are extremely unlikely to be subject to copyright protection. If campfires, dungeons, level-breaks, repeated run-throughs, block cards, or turn-based strategy could be “owned,” it would very seriously hurt the ability of other game developers to make new games.

 

II. If This Doesn’t Cross The Line, Is There a Line to Cross?

 

So, if there is room in the genre of deck-building and rogue-likes for both Slay the Spire and Monster Slayers, is there still such a thing as copyright infringement? If these games aren’t too close, is there such a thing as too close?

The easiest way to identify infringement would be the art-assets themselves. Although the design layout and placement of the art assets is similar, the art style and the actual images are very different between the two games. There are also some meaningful differences between the mechanics of the two games (Monster Slayer allows for the permanent unlocking of benefits for future run-throughs, for example). Generally, the similarities between the two games can be accounted for by noting that both games rely heavily on well-established and understood features of games and the relevant genres. Two games can be very similar without infringing on one another if both games rely heavily on widely- recognized tropes and themes without significant addition, detraction, or transformation.

 

III. Conclusion

Something that copyright and trademark law have in common: your claim to legal protection is generally better when you’re more creative and original.

Creepy or Creeping Bureaucratic Policy?The Problem With the USPTO E-Mail Requirement That People are Missing

A new USPTO rule combines trademarks, data privacy, and telecommunications policy. There’s a lot of concern about the privacy question, but not a lot of concern about the practicality of the precedent being set.

I. The New Rule: Provide An E-mail Address

Trademarks and data privacy don’t overlap very often. I got interested in law because of consumer protection issues in the telecommunications and consumer electronics industries, and I fell into trademarks because it turned out that copyright law borders both areas. The USPTO recently issued some new rules and guidelines, including some requirements for trademark applications. The most controversial is Requirement III(A), which requires applicants to provide an e-mail address for correspondence regarding the trademark application.

II. The Concern: Publishing an E-mail Address Could Compromise Privacy and Safety

Attorneys at the firm Loeb&Loeb express the worried reaction of many trademark practitioners: “By requiring the owner’s email address, however, the USPTO is making this information available to the public via the USPTO website, which increases the opportunities for spam and scams as well as the risk of this information being compromised.”

I agree that bureaucratic policies should take into consideration the impacts on the safety and well-being (digital and physical) of the people who must abide by the policies. However, I do not agree that this requirement poses a serious, significant, or new threat to data privacy or security. Quite simply: creating a business e-mail address neither difficult nor unusual, and publishing a business e-mail is neither exceptionally risky nor unusual.

III. Glib and Pithy Riposte: Welcome To 2020, E-Mail is Used

It’s not hard to set up a new e-mail address. Most trademark applicants file a trademark related to a business*, and it is and should be a common practice to set up a business e-mail address as part of starting any business. Publishing a business e-mail cannot be seriously interpreted as a breach of data privacy. The e-mail address requirement requires the e-mail to be a dedicated e-mail specifically set up for the purpose of correspondence with the USPTO. This actually reduces the concerns about data privacy, because any e-mail that does not appear to be from the USPTO is obviously illegitimate, therefore making it easier to detect spam and phishing attempts.

IV. Broader, Serious Concern: Collecting E-mail Addresses Can Creep, Even if it’s not Creepy

A greater concern that this policy introduces is one I did not see anyone mention: creep. This happens in video games when a new concept or mechanic is introduced to the game, and it slowly affects the rest of the game in unintended ways. The paradigm example is introducing something that is more powerful than anything already existing in the game, so it becomes the dominant strategy. In order to keep the game interesting and balanced, the game designers are forced to introduce other new elements to the game that can provide competitive alternatives to the preferred option. Soon, the entire game has shifted as a result of introducing just one new element.

Introducing the idea that a government office can require a citizen to have a dedicated e-mail address specifically for that government office could lead to every single government office requiring every citizen to have an e-mail inbox dedicated to correspondence with that office (and from there, maybe every subdivision within each office requires a dedicated inbox, etc.). This could grow out of control very quickly.

Todd Howard has a rule for his team when making open world games: “We can do anything, but we can’t do everything.” The same rule can apply to government bureaucracies. A government office can implement a policy to streamline an administrative process, but an office really shouldn’t try to implement every possible policy that could streamline every administrative process. A policy that seeks to do something new, however simple it may be, should consider the implications of that policy on the world outside that office.

V. Conclusion: Broader Implications for Tech Policy

One of the implications of this entire discussion that should not go unmentioned is that the US government increasingly expects citizens to have reliable internet access. The way that internet-dependent technologies have permeated our lives increasingly cause internet access to feel like a utility—something like water or electricity or heat that we expect any livable home to have, even the most modest one. As more government offices take for granted that citizens have reliable internet access (for example, by creating policies that require e-mail addresses and only accepting online applications), the more pressure there is for the telecommunications industry. Certain regulations and standards regarding internet access are continually debated, and government reliance on the efficacy of this technology puts pretty on the internet service providers (and other companies involved) to deliver a certain minimum quality with minimum consistency and with a certain level of accessibility. I expect government agency rules like this to be cited in future cases in the DC Appeals Court and US Supreme Court rulings regarding the role of the FCC and FTC in regulating telecommunications companies.

 

 

*remember that all trademarks can only be registered if the mark is connected to a good or service in commerce

Actual Enforcement of Trademark and Copyright Laws

There are two discussions to have about intellectual property in the ecosystem of the internet: one is about what laws, policies, and procedures are fair, ideal, economically optimal, and so forth; the other is a discussion about what is workable, functional, or feasible.

Actually enforcing trademark, copyright, or telecommunications law has proven to be a significant challenge in the 21st century. It is worth remembering that the distribution of songs on Napster was a violation of copyright law from the day the site launched. The legal action around Napster was only partly to settle any ambiguity around the question of whether digital copying and distribution of media constituted infringement—the new chapter that opened with Napster was a world in which copyright infringement became almost unenforceable.

AN ENVIRONMENT OF MISINFORMATION

The public perception of how copyright and trademark law work has been significantly shaped by the inability of rights holders to enforce protections over their trademarks and works. In a recent discussion on a potential trademark opposition, the comments on YouTube included numerous references to the abundance of available products that would be potentially infringing the trademark in question. I cannot be sure about why attention was drawn to these examples, but I suspect that many people thought that the availability of [potentially] infringing goods is evidence that a trademark is invalid. I’m pretty confident that the TMEP does not specify that trademarks are invalid if they are infringed.

The internet is awash in examples of copyright and trademark infringement. Most memes involve at least copyright infringement (transformative analysis notwithstanding), if not also trademark infringement. Etsy has published guides for its sellers to specifically point out that the availability of other infringing products does not mean that the product is not subject to trademark or copyright protection.

BUILDING SOLUTIONS WITH AN EXPECTATION OF RESISTANCE

The problem is not just a question of whether a work ought to be subject to protection, or the scope of the protection. The problem is also how to enforce those protections. Adobe, Twitter, and the New York Times Company have been working on a new solution: The Content Authenticity Initiative. The idea, still in its earlier stages, seems to be a kind of metadata tagging system to allow images to be traced back to their sources—thereby giving credit to the original artist or photographer.

There are, I’m sure, concerns that adding such traceability to images compromises security, insofar as it compromises anonymity. It always seems to be the case that those who want to optimize their security and anonymity tend to avoid products and services provided by the market-dominant companies. The question of whether preserving anonymity is in the interest of either the internet or society is a larger discussion for another post (or maybe another blog entirely)—but as far as copyright and trademark are concerned, reducing anonymity is essential in adjudicating infringement claims.

I’m not sure if the idea will ever see implementation. I suspect that if it does, it will be used more as an opt-in tool for communities of artists and rights holders to track their works. This still has very useful implications, but I have little doubt that those who want to find ways around it will be able to do so. It is the nature of the digital era to be continually skirting around efforts to enforce the law, particularly where the capacities of new technology and new media have made [re]production and distribution possible in a new way and to a new extent. It feels like there is a cottage industry build around fighting and breaking any efforts to enforce copyright or trademark protections, and the ongoing escalation between the rights holders and the resistance has lead some industries into places they might not have otherwise gone. I suspect that always-online gaming would not have become as prevalent as it now is if previous, off-line DRM efforts had not been so viciously demolished—and I further imagine that loot boxes and “surprise mechanics” would not have become an industry norm without that push towards always-online game models.

CONCLUSION

I don’t think I can win any prognostication points for predicting that this war will continue through 2020. If this Content Authentication Initiative does see implementation, it will be undermined and circumnavigated.

 

Tyreen’s Mean Streams in Borderlands 3

People are going to make a lot of interpretations and analyses about the story of this game: A violent psychopath unites disparate pockets of violent psychopaths and becomes their entertainer and their leader.

Tyreen Calypso and her brother Troy are the biggest social media stars in a lawless and murder-filled galaxy, far, far away. In the setting of Borderlands, there are no laws and no authorities or institutions to enforce them.

Third party hosts and platforms have endured criticism over the last decade, either for their failures to stop odious behavior (especially when it yields revenue) or for their treatment of less profitable users. Does Borderlands 3 paint a grim picture of the downsides of a social media ecosystem without independent platforms? In doing so, does it clarify the role and responsibility of these platforms?

 

Stream Queen Tyreen

Before the player joins the story, Tyreen builds up a following of murderous bandits through her social media presence. By providing entertaining live streams and a sense of community, she creates a cult (“Children of the Vault,” or COV). The player is tasked with opposing Tyreen and stopping her quest for opening a mystical vault that will grant her the power to destroy all life in the galaxy. As her social media follower count grows, her resources to thwart the player and to achieve her goal also grow.

As a fictional character in a fictional setting, Tyreen’s social media ecosystem is very different from ours. One factor is obviously absent from Tyreen’s social media: a third-party hosting platform. Tyreen doesn’t stream on some fictional version of Twitch or Mixer, and she doesn’t upload videos to YouTube or Vine or Twitter. She apparently owns all of the hardware and does her own broadcasting.

 

Murder in the Safe Harbor

As the behavior of various influencers, personalities, content creators, streamers, and others who make use of recent accessible broadcast technology comes under scrutiny, the hosts and platforms for this technology also comes under scrutiny. Even though there has been substantial criticism of some of the most popular social media stars, there has also been a fraction of that criticism directed towards the platforms that allow the behavior to continue (and profit as it does).

In our current social media ecosystem, the platforms we know and use and sometimes love have their own concerns. Among other things, they have to worry about whether they can be in trouble for the things that people do while using their platform.

There is a law to help platforms. Title II of the DMCA, the Online Copyright Infringement Liability Limitation Act, found at 17 USC 512, allows platforms, hosts, or service providers to avoid getting in trouble (“safe harbor” protections) if they meet some requirements (such as taking down material that infringes copyright, not profiting from it, and banning repeat infringers).

Despite the criticism of these third party hosts, I still expect that any platform would be very quick to ban the account of Tyreen, who regularly broadcasts videos of murders and explicitly offers rewards to her followers for killing her enemy (the player). In addition to the very obvious criminal laws around murder, uploading content depicting illegal and/or obscene acts would certainly be against any Terms of Service agreement. According to law professor Daphne Keller, there isn’t currently a law that governs the obligations of a platform when a user uploads content depicting a crime. There was an effort in 1996 to better govern this kind of thing, but almost the entire title of an act was struck down by the Supreme Court on the assessment that it violated the 1st amendment.

In the US, social media professionals like Tyreen are often at a crossroads of several areas of law: copyright, trademark, consumer protection/ advertising, and telecommunications. These people need to build and maintain a fan base while abiding by FTC disclosure guidelines, working within the constraints of the structure established by the FCC, and avoiding infringing the copyrights and trademarks of other businesses and artists.

Tyreen doesn’t have to worry about any of that, of course…

 

Mad Moxxi is a Guerrilla Genius

Moxxi is a successful entrepreneur and business owner in her own right, and she recognizes that Tyreen cannot be stopped by the kinds of methods that we might use in the US. There is no third-party host that might be liable for Tyreen’s behavior, so there is no authority that can ban her or even respond to a notice-and-takedown request. Even if there was a Borderlands Trademark Office, Tyreen wouldn’t seek to protect her trademarks because that doesn’t align with her business strategy (she’s hoping to destroy the galaxy in the time it would take to get a trademark registered). And in a setting where guns and grenades are purchased from vending machines, there isn’t any kind of recognition of consumer protection law.

However, the telecommunications infrastructure is unregulated (like everything else), and Moxxi sees that as an opportunity. Maybe Moxxi read Lessig and applied her understanding of architecture as law. Moxxi assigns the player the task of finding and sabotaging the broadcasting devices throughout the galaxy. As the player goes to the terminals of these broadcast antennae and changes the channels, Tyreen is unable to reach her audience, leaving her effectively de-platformed (or “cancelled”).

I appreciate the (perhaps accidental) fact that accessing these transmitters requires repeated use of the platforming mechanic: It’s platforming to de-platform. **

Moxxi’s de-platforming strategy is effective, and it underscores the limited options available in the social media ecosystem of the story. It also shows what is possible in the extremes of lawlessness: the worst and most dangerous people are more difficult to stop, and the methods of stopping them are available to anyone, to be used against anyone. It’s a kind of Hobbsiean state-of-nature, but it turns out that both the lives and the livestreams are nasty, brutish, and short.

 

Conclusion

The absence of a third party hosting platform facilitates Tyreen’s ability to achieve her nefarious goals. She can broadcast what she wants and gets 100% of her revenue—that’s definitely an appealing concept to anyone looking to upload, post, or stream. But she’s also a threat to the existence of the galaxy, tries to kill you, personally, and the only way to de-platform her is literal warfare. The only way that a platform can provide a better world than this is if the platform takes effective measures to avoid such extreme scenarios. I don’t think we’ve seen any content creators aim for galactic destruction yet, but the rising generation is nothing if not ambitious. As social media becomes increasingly lucrative and legally complex, the next year might be a good time for platforms to carefully and seriously evaluate their business strategies, visions, goals, and values.

 

 

Next time, maybe I’ll evaluate whether Claptrap violated 17 USC 1201 by salvaging dead robots to build a new friend.

 

 

 

**Platforming

De-platforming is a term that means “to remove someone from a position of broadcasting, or to remove or severely diminish the ability of a person to broadcast.” It often implies denying a person access to an established host or platform, and most often for reasons related to behavior or the content of a message.

Incidentally, Borderlands 3 introduces a new playable mechanic to the game: the ability to climb designated ledges. As in the Assassin’s Creed series and the Mirror’s Edge series, this mechanic can go by a few names: parkour, free-running, free-climbing, mantling (the term I heard most at Gearbox press conferences for this game), or platforming (a more archaic and less accurate term, but the one which suits my purposes here).

The Very Hungry Caterpillar: Is Caterpillar Going Too Far To Protect Its Trademarks?

A thousand years from now, the legends will say that cats invented the internet as part of their plan. Of course, sophisticated scholars will snort, scoff and explain, “Actually, cats only invented the meme.”

If that is funny, it’s mostly because of the ubiquity of cats in 21st century culture. Domesticated felines have been a dominant, widely-recognized force on the internet. My evaluation of the Caterpillar v Cat & Cloud trademark dispute is that it shows how the internet affects trademark strategies (a break from the persistent and well-established analysis of how the internet has affected copyright strategies). I think it also raises an interesting, esoteric question about truncated marks and interpretation of meaning.

I think Caterpillar has two problems: 1) Cat is a really terrible mark in a cat-crazed culture, 2) The truncated mark foists cat troubles on them

Caterpillar’s Trademarks

It’s important to protect trademarks. Trademarks, arguably more so than other IP, have a way of slipping away if you leave them unattended. Copyrights and patents eventually expire, but trademarks last as long as they are used, maintained, and defended. A trademark can become generic, or it can be slowly encroached on in ways that make it harder to defend later. Caterpillar understands the importance of trademark vigilance, and has initiated at least two major trademark proceedings in the last few years, following a significant number of new trademark registrations in 2015. (See CAT Registrations: 4804263-275. All filed in 2014 and issued in 2015.)

PetraCat, An Energy Services Company

In April 2015, Caterpillar and PetraCat argued before the Trademark Trial and Appeals Board (TTAB) on the question of whether PetraCat’s trademark was too close to Caterpillar’s trademark. Caterpillar opposed the registration of PetraCat’s mark out of concern that consumers would be confused by the similarity of the marks. It was an interesting question with reasonable arguments from both sides, but the TTAB ultimately concluded that there was enough similarity to be concerned about consumer confusion.

 

Cat & Cloud, a Coffee Shoppe

In August 2018, Caterpillar filed a cancellation proceeding against Cat & Cloud, a coffee shop based in Santa Cruz, CA. The easy criticism to make is that there is no likelihood of confusion between the goods or services of these companies, but that criticism would be misguided. Trademarks are registered with the USPTO according to categories (called “classes”). Caterpillar is not concerned about the use of trademarks with respect to providing beverages; Caterpillar is concerned about the class of goods that the two companies share: shoes, hats, t-shirts, and other merchandise. This at least establishes some overlap about which there is even fathomable confusion or contention—but is Caterpillar reasonable for pursuing a cancellation proceeding?

 

When discussing any trademark dispute, two subjects are virtually unavoidable: the strength of the marks and the likelihood of confusion.

 

Trademark Strength: Ranking Your Advertising Department’s Imagination

Trademark strength (or distinctiveness) can be thought of as existing along a spectrum that runs from “weak” on one end and “strong” on the other.

Fanciful – When you make up a word that has no other meaning in the language (Xerox, Frisbee)

Arbitrary – When you pick a word that already exists and has a meaning, but has nothing to do with your goods or services (Apple, for a computer company)

Suggestive – When you use words that are related to your goods or services, but don’t quite describe them.

Descriptive – When your trademark more or less describes your goods or services.

————————————————–

Generic (no protection) – When your trademark is the word everyone uses for your product, and then you lose trademark protection because the language has claimed your trademark as its own. This happens most tragically when a fanciful mark dominates the market too well. Aspirin is the seminal example of a trademark lost to genericism. Xerox corporation fights this risk, as does Google. Marks frequently at risk for this include Band-Aid, Frisbee, Velcro, and anything that everyone you know calls by its trademark name even when referring to the general good or service.

So, how do we rate these marks?

I would argue that Caterpillar’s full mark is descriptive, as it describes a style of tread-and-wheel movement for heavy machinery. (I could also see the argument that Caterpillar is a suggestive mark, because it could be said to suggest to the mind the slow and steady motion of a grub… but I’m not entirely convinced.) On the other hand, the mark “CAT” is… well, truncated. It wouldn’t even be part of Caterpillar’s trademark portfolio if it weren’t for the fact that it’s just the first three letters of the word “caterpillar.”  But “cats,” conceptually, have nothing to do with Caterpillar’s business.

And this is where Caterpillar’s problems start.

Caterpillar is not interested in aligning their branding with felines- Caterpillar is interested in the first three letters of their company name. As a mark, it’s arbitrary (insofar as cats have no conceptual relationship with bulldozers or cranes—though maybe there’s a long-shot argument that cats sometimes dig, and some of Caterpillar’s machines dig). But it’s only an arbitrary mark if Caterpillar can claim the feline meaning of “cat.” The recurring question that determines a lot about Caterpillar’s mark is what the mark actually means.

Here’s the most interesting question in this dispute that I’d like to see the USPTO answer: when a truncated mark happens to spell a new word that has no common meaning with the original mark, does the truncated mark adopt the meaning(s) connected with the truncated mark as though that mark was not a truncated mark? To put that in context: does Caterpillar’s “CAT” mark mean “a feline” or does it mean “short for caterpillar”? If Caterpillar can claim the new meaning, this could elevate their mark strength from “Suggestive/Descriptive” to “Arbitrary.”

On the other hand, “Cat & Cloud” is either arbitrary (because neither cats nor clouds have anything to do with coffee) or suggestive (because cuddly cats and cloudy, overcast whether evoke an image that seems more complete with a warm cup of tea or coffee). If it is suggestive, it is one of the most abstractly suggestive marks I’ve seen. If it is arbitrary, it is one of the more thematically-attuned marks I’ve seen.

 

Likelihood of Confusion: The Quintessence of Trademark Disputes

Almost every trademark dispute comes down to an examination of the likelihood of consumer confusion.

The Likelihood of Confusion Factors Are:

Relatedness of Goods or Services

Similarity of Marks

Similarity In Appearance

Similarity In Sound

Similarity In Meaning

Design Marks

Likely to Deceive

The actual goods and services of these two companies are far apart. However, the subject matter at issue is the merchandise that is ancillary to both businesses. As far as the trademark analysis is concerned, a shoe is a shoe, and a t-shirt is a t-shirt, so the goods are considered related for the purposes of this analysis. I think there is still some argument to be made for Cat & Cloud that the shoes themselves might be very distinguishable (as I understand it, Caterpillar shoes tend to be steel-toed boots designed for rough construction work, while Cat & Cloud makes lighter-wear, everyday walking shoes). A significant distinction between shoes might be enough to argue that there is less likelihood of confusion.

The marks display a weak similarity. Both marks contain the word “cat,” though the shortness and commonplace nature of the word make this barely noteworthy. The inclusion of a substantive element with “Cat” is sufficient to establish the marks as dissimilar. This also addresses questions regarding similarity in sound and in meaning.

Similarity in appearance only seems plausible if the words “& cloud” are significantly smaller than the word “Cat” in the mark of the defendant. Furthermore, to address the design elements, Caterpillar has carefully cultivated a stylized typeface and design that is distinct and recognizable and, to my understanding, this has not been remotely imitated by Cat & Cloud.

To the factor of similarity in meaning: this is sufficiently addressed in my analysis regarding mark similarity, but I think there is an additional point to be made. Given the context of the trademark “CAT” for the company Caterpillar, it is not clear on its face that the plaintiff’s truncated mark is actually intended to mean or signify a member of the taxonomic family felidae. I don’t think this matters much because of the dissimilarity of the marks, but I am not convinced that there is actually any similarity in meaning. I bring this up because I think it points to the central, recurring problem for Caterpillar’s trademark.

Finally, it seems profoundly unlikely that either mark will serve to deceive consumers. It is truly difficult to imagine a serious scenario in which a consumer seeks out a hat or t-shirt sporting the trademark of one company and mistakenly purchases a product from the other company.

 

Bonus Find: Google Hints at a Huge Branding Problem for Caterpillar

While researching for this blog post, Google offered me additional helpful information regarding other inquiries about Caterpillar, Inc. Google indicates that the number one question that average users have about Caterpillar is whether it is also Cat:

 

Caterpillar problem

 

That is a huge problem. That is a failure of branding. That is the “Where’s the Beef?” advertisement all over again. (An enormously popular advertisement, yet consumers failed to correctly identify the advertisement with the correct brand, product, or company.) Maybe Caterpillar is scrambling to bat down other trademarks in the hopes that consumers will know who they are if they are the only company left with a cat-related trademark.

This is a bitterly ironic discovery. This lack of brand understanding isn’t Cat & Cloud’s fault. It isn’t anyone fault besides Caterpillar’s. If consumers don’t connect a trademark to a company, it doesn’t matter how thoroughly that company defends the trademark. Caterpillar doesn’t have a likelihood of confusion problem with competitors or other companies outside of their industry. Caterpillar has a likelihood of confusion problem with itself. Maybe marketing should work on reconciling the “CAT” and the “Caterpillar” before the company invests in aggressive trademark protection.

Perhaps this confusion is the effect of Caterpillar’s own identity crisis: Is this a Caterpillar company or is this a Cat company? Caterpillar might resolve a lot of its problems if it picked one animal and stuck to it. Perhaps Caterpillar set itself up for an IP portfolio headache by stretching its trademarks as far as its goods when it decided to become a clothing and heavy machinery company that is known as two completely different kinds of animals.

 

The Charitable Interpretation

Despite the bad press Caterpillar is getting, I think there is an empathetic viewpoint: Caterpillar is actually in a very weak position, and they are compensating with an aggressive strategy. “CAT” is actually a sub-optimal trademark, and Caterpillar feels stuck with it.

Caterpillar has two facts against them:

1) Their truncated mark spells “cat”

2) Cats are exceptional popular, wide-spread, well-liked, and generally excellent subjects for brands

I don’t think Caterpillar ever wanted to be a cat company; they didn’t name their company after anything remotely feline. The irony is that Caterpillar probably doesn’t want to be defending “cat” as a trademark — after all, the company never really picked it. Caterpillar is unlucky to have a truncated mark that happens to spell “CAT,” and the company is concerned about how difficult that mark is to protect. After careful consideration, the company has decided that their best chance at protecting their truncated mark is to aggressively seek out trademarks that involve the word “CAT” and pursue actions against those trademark holders.

Caterpillar seems to be leaning into the hand they’ve been dealt: the company applied for two more trademark registrations last August that incorporate some honeycomb design into the mark (Serial numbers 88080972 and 88080934). I think we’ll know that Caterpillar has gone too far if the company pursues actions against other companies that make any use of honeycomb lattice designs in their logos, marks, such as Post Foods (for their Honeycomb cereal) or the American Beekeeping Federation.

 

Conclusion: Can’t Own Every “Cat”

The troubling fact for Caterpillar’s IP management is that their truncated mark happens to be an entirely different English word—an extremely common, extremely brand-able (because of the American fondness for cats) English word.

This accidentally expands the range of what Caterpillar has to consider when thinking about IP protection. It turns out that Americans like cats, and associating with something positive is a classic brand-building technique. So a lot of companies are prone to incorporating felines into their branding. This shouldn’t have anything to do with a company named after a butterfly larva, but trademarks are more about language than they are about zoology.

There are 2459 results for live marks in the USPTO Trademark Database with the word “CAT.” Caterpillar can’t deny IP ownership of every “cat.” But Caterpillar can’t idly sit by and let their trademark fade into oblivion because cats got a popularity boost from social media.

The central battle in IP is defining the boundaries of ownership (this is what it has in common with other types of property law). Caterpillar surely understands that no single company can own every instance or usage of the word “CAT.” But Caterpillar just as surely understands its risks: that a mark like “CAT” is extremely difficult to protect, and is likely to become a weak mark without constant vigilance.

There are strategic reasons for defending IP aggressively. But somewhere, there is a line between an aggressive defense and an offensive offense. Although Caterpillar’s strategy is understandable, there has to be a limit to a trademark portfolio. If Caterpillar hasn’t crossed that line with its cancellation action against Cat & Cloud, it surely must be getting very close.

 

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I have to include the caveat that there may be more to this particular case than is apparent. Research on open litigation is challenging. Seemingly insignificant or unimportant details can completely alter the course of a legal analysis. As always, nothing in this post constitutes legal advice and is for educational purposes only.

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Fun Fact: Caterpillar owns the second oldest “Cat” mark in the TESS database.

Second oldest CAT mark: 0564272, issued Sept 1952

Oldest Mark: TOMCAT:  0552420, issued Dec 1951.

***

Bonus Background Trademark Knowledge: Two Types of Proceedings

What is an Opposition?

An opposition proceeding is when one party applies for a trademark, the USPTO says, “If anyone doesn’t think we should approve this trademark, speak now or … well, file a cancellation proceeding later.” An opposition is another party speaking up just before a trademark is granted.

Trademark owners sometimes file oppositions that sound egregious. But filing an opposition is sometimes just a way of announcing that you care about your trademark; in some of the more outlandish cases, the opposing party doesn’t really expect the USPTO to deny the application—the opposing party is just establishing a record. Other times, the opposing party really does think that there is a legitimate concern with the applicant’s trademark. The proceeding between Caterpillar, Inc. and PetraCat was an opposition proceeding (and as a result, PetaCat was not granted a registration for their trademark).

 

What is a Cancellation?

After the USPTO has approved an application and given a certificate of registration to a trademark holder, sometimes another party realizes that there is some reason that the trademark registration should be cancelled. A cancellation is different from an opposition in the fact that the defendant has already received a trademark registration. This gives a little bit more of a presumption of legitimacy to the defendant than the applicant has in an opposition proceeding. The proceeding between Caterpillar and Cat & Cloud is a cancellation proceeding.

 

What Slay the Spire can Teach About Digital Media Access Decisions

When I heard that iTunes was scheduled for destruction, I was baffled and alarmed. I have since learned that the service is being split and re-branded, in a sort of platform-mitosis. But I had several conversations in which my interlocutors were not persuaded of the merits of media ownership over streaming media. Having collected my thoughts, and faced with Google’s Stadia announcement as well as even the phantasmal threat of an iTunes closure, I hope to make a case here that media ownership reduces wildly unpredictable and uncontrollable elements of media consumption.

Slaying The Spire, With Just a Little Luck (Or a Lot of It)

Slay the Spire is a rare case in which combining a lot of ideas into a game doesn’t make the game feel chaotic and confusing. The game consists of progressing through the levels of an eponymous spire, each level consists of some encounter or event—very, very often, a combat event. Combat in this game is a resource-management card game: using a limited pool of “energy,” cards are played that either deal damage or prevent damage from being taken. Each card costs a different amount of energy, so strategic choices have to be made to optimize offense and defense. At the end of a combat, the player is presented with three choices for a new card to add to the deck. The same deck is carried through the spire, so each completed combat presents an opportunity for new cards for future encounters.

Slay the Spire gets its replay value from the unpredictable factors that permeate the game. There is randomness within the combat encounter, as a player’s options are defined by the cards that are drawn from the deck on any given turn. Then there is further randomization in the events themselves (what enemies you fight, if any, on any particular level of the Spire). Slay the Spire adds randomness in the building of the player’s deck: there are no guarantees that you will even have the option to add a certain card to your deck in a particular run of 50 levels in a Spire. (I once spent an entire run through a Spire trying to assemble a deck centered around one specific card that would greatly amplify my defensive capabilities—I never even saw that card, and inexplicably still got to the final level.) And I haven’t even discussed the role of Relics in the game, which can provide small bonuses or fundamentally alter game mechanics. All of these unpredictable, randomly-generated chances and choices give the game replay value and make it interesting, fun, and challenging. Putting choices out of a player’s control can be an element of a great game, but it’s not a part of a great day.

 

Unpredictable Elements

There are a lot of components involved in the everyday digital tasks that fill (and sometimes sustain) our lives. The device has to work properly, it has to connect to a network, the network has to function, and we also rely on the server that hosts the data we want. Anything from dropping a cell phone to a power outage to an unplugged cable somewhere in a distant city can cause the entire process to fail. It is really amazing and awe-inspiring that the entire system works as well as it does. Of course, sometimes, something goes wrong.

For purposes of today’s discussion, I think it’s helpful to divide the possible problems into two categories: those in the user’s control, and those outside of the user’s control. So, whether I charge my cell phone, whether I spill water on my computer, whether I use a program correctly—those are, practically speaking, in the domain of the user. However, the city’s electrical power grid is not something a user can single-handedly maintain or repair. Similarly, the user cannot control conditions at a distant server farm, or control the telecommunications network that links the user to those servers.

This, it seems, is where I diverge from so much of my demographic cohort. I don’t want my access to media to rely on these two additional components (telecommunications and data-holding servers). Maybe I would feel differently if I had better experiences, but I have repeatedly been unable to play games or watch movies because at least one of these components has failed. I have encountered this setback for over a decade- in some cases, I have experienced it daily, over the course of months. In contrast, when I think back to those halcyon days in which I owned my media, the only obstacle was a scratched DVD or a VHS tape that was just too-well-loved (we all have a childhood story of the tape that we watched so many times that the playback became warped and distorted).

Conclusion

The unpredictable nature of the available choices in Slay the Spire keeps an otherwise repetitive game novel and engaging. By forcing the player to consider various probabilities and possibilities, the game creates challenge and the kind of frustration that invites a player to learn, try again, and do better next time. I cannot understand the kind of person who willingly invites this kind of challenge and frustration into the process of trying to listen to music or watch a movie. Conversely, if a player had control over any of these random elements in Slay the Spire, the game would be easier. For both Slay the Spire and media access, generally, the same rule applies: the more control one has over the variables, the less challenging the experience.

There are other issues implicated in this debate that I didn’t touch on: the data privacy questions that come with streaming and DRM protections, the reasonable efforts of artists and publishers to protect their copyrights and profit from their works, the legal status of digital goods, etc. Those issues deserve consideration (which is why I have written about them before and will do so again), but I wanted to keep my focus narrow for the sake of clarity. My perspective on this question can be distilled to one personal point: I do not feel that there is evidence to support the claim that US telecommunications networks are more reliable than I am. I simply trust myself more than I trust those corporations, their services, and their infrastructure. Likewise, I trust myself more than I trust the media companies that provide the platforms and media. This is true on a day-to-day basis (for telecom), and it is true for long-term planning (media providers make no promises that they will last longer than my interest in the media they provide).

I can trust electricity providers—they have proven themselves. Power outages certainly do occur, but their frequency, cause, and duration are within acceptable parameters.* Maybe it comes down to what inconveniences, unknowns, and probabilities we are willing to accept. I can live in a world where my electricity is out for maybe 30 minutes per year. I’m not excited to choose a world in which I can access my own leisure at the leisure of so many other people.

 

 

 

 

*The fact that power failures necessarily cause network failures would be a meaningful riposte if my point were strictly confined to unadjusted uptime comparisons.