» trademark infringement

The question of what is or isn’t protectible as a trademark comes up all the time. ESCALATOR, THERMOS, ASPIRIN and even HEROIN were all registered trademarks at one point in time, but for a variety of reasons they became unprotectible generic terms. On the other hand, KLEENEX®, FRISBEE®, and XEROX® still remain protectible trademarks. Go figure.

What about THUMBDRIVE for flash drives? Is it a protectible trademark or an unprotectible generic term? The U.S Patent Trademark Office has just issued a very interesting ruling that answers this question.

Why is this important? Because it highlights the problems with choosing descriptive or generic terms as trademarks for goods or services. Yes, the applicant for the THUMBDRIVE trademark registration ultimately won. But it took several years and probably several tens of thousands of dollars in legal fees to get there. Most entrepreneurs and small businesses can’t waste that much time or risk that much money. It is therefore much wiser to choose a unique, clever, fanciful and easy-to-remember name for a trademark than a weak descriptive or unprotectible term.

In a case that is both interesting and humorous on so many levels, Larry Flynt – the publisher of Hustler magazine – is suing two of his nephews for trademark infringement. The trial started earlier this week in U.S. District Court in Los Angeles. The nephews – Jimmy Jr. and Dustin Flynt – used to work for their uncle, but he fired them in 2007 for being “unproductive”. In an effort to show he wasn’t an altogether bad fellow, Uncle Larry gave each of the nephews $100,000 as severance money. The nephews then used the money to start an adult film company using the brand name FLYNT that competes with Hustler’s adult film company. In what would otherwise be a fairly typical trademark infringement case, Uncle Larry filed suit to stop the nephews from using his name and arguably confusing the public into thinking the nephews’ company is somehow associated with Larry Flynt and Hustler. This aspect of the case highlights one of the unique facets of trademark law: trademark laws are designed not just to protect the trademark owner; they are also supposed to protect the public from being confused as to the source of the goods or services sold under the trademark.

Uncle Larry hired an expert to conduct a survey and the survey showed that a majority of consumers presented with images of the nephews’ films with the FLYNT name on them associated the nephews’ FLYNT films with Uncle Larry. If the jury is persuaded by that evidence, that is going to help Uncle Larry’s case. So will the fact that the nephews used the following phrase in their promotional flyers: “You know the name, you know the game”. That might convince the jury that the nephews were trying to trade on their uncle’s fame. The nephews’ lawyer has countered with a good – if slightly tongue-in-cheek – response: consumers of pornographic films are “careful and discerning” when it comes to choosing the films they watch or buy and carefully study the product before making a purchase. Therefore, there is not much of a chance that consumers will be confused or led to think that the nephews’ FLYNT films come from the same source as Hustler’s films. Although many people find jury duty boring, we suspect that the eight jurors in this case will be able to pay attention during the trial. After all, as Uncle Larry has said in criticizing the films produced by his nephews: “I think there is a thin line. As a society we’ve come to accept what I like to refer to as ‘vanilla sex’. But if you get too trashy, people get uncomfortable”. We can hardly think of anyone these days who would be able to speak more authoritatively than the elder Flynt on this subject. Filtering out the subject matter for the moment, from a pure trademark perspective we believe Uncle Larry has a compelling case. More to follow as the trial is scheduled to end next week.