Seattle Trademark Lawyer

NEWSBOYS and NEW BOYZ:
Similar marks for bands, but no likelihood of confusion  

Newsboys, Inc. v. Warner Music Inc., illustrates that similar marks paired with similar goods or services may not create a likelihood of confusion.

The secret is enough of a difference in the goods or services.

Plaintiff’s mark is NEWSBOYS.  Defendants’ mark is NEW BOYZ. Both marks look and sound a lot alike. And both are used in connection with live musical performances.

But plaintiff uses its mark in connection with Christian rock. And defendants use their mark in connection with hip-hop. What’s more, according to plaintiff’s complaint, defendants’ group sings “‘sexually-charged,’ ‘sexually-explicit’ lyrics.”

The Middle District of Tennessee found this difference was enough to grant the defendants’ motion to dismiss plaintiff’s complaint. The services were just too different as a matter of law for confusion to be likely.

“[G]iven the stark differences in Plaintiff’s ‘Christian-based music’ versus New Boyz’s ‘sexually-charged’ hip-hop music,” the court wrote, it is “implausible that ‘Newsboys’ and ‘New Boyz’ are likely to cause confusion in the marketplace” — despite plaintiff’s claimed evidence of actual confusion.

This finding is unusual. The court itself acknowledged that “dismissal for failure to state a claim upon which relief can be granted is appropriate in only the most extreme trademark infringement cases….”

The case cite is Newsboys, Inc. v. Warner Music Inc., No. 12-0678 (M.D. Tenn. April 19, 2013).

Folks who talk with a lawyer for the first time often wonder, “Is this confidential?”

I know they wonder it, because they often wonder it out loud.

The answer is yes. Even if you haven’t signed anything, or paid your lawyer anything, what you tell your lawyer in that first phone call or during that first meeting is completely confidential.

That means it would be illegal for the lawyer you’re meeting with to disclose anything you say to anyone else without your permission. No one can force your new lawyer to say what you’ve told him or her, either. There’s a statute that prohibits a lawyer from testifying against you. It codifies the attorney-client privilege. If your lawyer violated that trust, he could lose his license. That means he’d lose his livelihood. As you might guess, lawyers take that very seriously.

So why does your lawyer want to know things about your trademark that you think are confidential?

Without knowing what your trademark is, he or she can’t advise you about its enforceability or the risks it might pose through its use. Not to mention its registrability, meaning whether your trademark is likely to be registered by the U.S. Patent and Trademark Office. He or she can’t tell you that it is descriptive, scandalous, primarily a surname, or likely to cause confusion with a prior-filed registration — any of which could frustrate your ability to register your mark.

Your lawyer also wants to know about your mark so he can make sure he doesn’t represent someone else who has an interest in your mark. In other words, to make sure he doesn’t have a conflict of interest with another client. This is to make sure he can represent you with only your interests at heart.

In other words, when your lawyer asks you questions about your trademark, or your business, she isn’t being nosy. She just wants to learn the information she’ll need to best advise you.

So confidently tell all, knowing your new lawyer’s job is to give you the best advice he or she can.

It’s always fun to find examples of trademark infringement when traveling. (See the last installments from China here, here, and here.)

It was harder than usual when I was in Spain. Only two examples come to mind: a knockoff of a Starbucks logo and the fairly ubiquitous “Women’Secret” lingerie stores.

Starbucks is in Spain (like everywhere else), but I’m not sure I saw any Victoria’s Secret stores. Not that I was looking.

The prize for most descriptive trademark goes to WEFIX for computer repair services.

If Spain has a trademark, it’s probably ham. Spaniards really love their ham.

I ate it every day — and I’m a vegetarian. (Ok, not much of a vegetarian when I’m overseas.) Gotta love that they keep the hooves on, so there’s no doubt where the meat came from.

Last but not least, this has nothing to do with trademark law, but certainly was memorable. Asian Tex-Mex?

I almost regret not giving it a try. Almost.

Photos by STL.

The New York Times today has a great example of what’s represented by a brand.

A food writer laments that Breyer’s ice cream isn’t all-natural any more — nothing like what he remembered from his youth.

Breyer’s used to market its ice cream as having only a few ingredients — vanilla, sugar, cream. Maybe ice. (I don’t know; I’m not much of a cook.) But nowadays, the ingredients of some of its products read like a chemistry exam.

That disappoints the NYT’s food writer. And it demonstrates what’s expected from a brand: consistency.

This is a lesson all brand owners can learn from. You build loyalty through consistent quality. And both of those components are equally important: consistency and quality.

Ignore either, and your customers will be disappointed.

I heard this story during my first day in Spain.

There’s a worldwide problem with labeling fish.

You think you’re ordering something tasty and sustainable, and that’s what you pay for when the bill comes. But it turns out what you’re served is a lower-quality fish, or one that’s not ecologically sound. Deceived!

Sorta like European consumers who recently picked out hamburger at the grocery store — and paid for hamburger — but ate horse.

It may not be your restaurant’s or grocer’s fault. Someone in the distribution chain decided they could make an extra buck if they upgraded their product by calling it something it’s not. It’s outrageous and fraudulent, but apparently it’s common. And the consumer suffers.

If you can’t trust the label, what’s a purchaser to do?

This shows how important labels are. And — by extension — brands. If you buy from a brand you trust, you figure they’re being straight with you. You’re banking on it. And the magic is, so is the brand owner — because if they burn you as a consumer, you’ll never buy from them again.

You trust the brand owner. Not wanting to abuse your trust — because it will go out of business if it does — the brand owner makes darn sure its suppliers accurately identify what’s being sold. You hold the restaurant you trust responsible. The restaurant holds its fish distributors responsible. The distributors hold the fishermen responsible.

Clearly, this scheme isn’t perfect. There’s no substitute for strong labeling laws. People should go to jail for misbranding. But it’s nice how brands encourage better behavior than might exist otherwise.