Orange County Trademark Attorney® Blog

March 2012 Archives

Pepsi's "Choice of a New Generation" Trademark Lapses - Better Oats Snatches it Up

March 20, 2012,

oatmeal.jpgOrange County - Whoever is in charge of handling the intellectual property for Pepsi may be feeling some heat for allowing a valuable trademark to lapse. The trademark for the slogan, "The Choice of a New Generation" expired, unnoticed by Pepsi, and gave way for a small oatmeal brand to acquire rights to it.

Better Oats, owned by MOM (previously known as Malt o Meal) jumped at the chance to use the lapsed trademark and has launched a new advertising campaign using the slogan as its own.

"Our Better Oats brand is bringing new, younger and more affluent consumers to the instant oatmeal category, and that trend, coupled with our non-traditional campaign, is why the 'Choice of a New Generation' tagline is such a good fit," stated Better Oats corporate communications manager, Linda Fisher.

It appears that Pepsi allowed the trademark to expire in 2006, three years before MOM Brands first applied to register it in 2009. Interestingly, the CEO of MOM (since 2007) happens to be a former marketer for PepsiCo/Frito Lay. Pepsi used the trademarked slogan between 1984 and 1991 with expensive television commercials featuring mega-stars such as Michael Jackson and Tina Turner, making it all the more confusing as to why it allowed it to expire.

Better Oats, which has a meager 1% share of the oatmeal market, has a much different advertising approach than Pepsi. The company does not retain an advertising agency, but instead uses a crowd sourcing platform called Poptent to get the word out about its brand. The move to acquire rights to the famous slogan can be a good way for the small company to attract publicity for its small brand.

There is a possibility that Pepsi can take legal action against the oatmeal company to get its trademark back. Pepsi could argue that it has residual goodwill and that consumers will still associate the slogan with the soda.

Regardless of whether the cola giant attempts to get its famous trademark back or not, this latest snafu will likely cause it to pay more attention to protecting its intellectual property.

Hulu Joins Fight to Stop "TV Everywhere" Trademark Registration

March 12, 2012,

tv_remote_control.jpgOrange County - Hulu, the subscription-based ad-supported website that streams videos of television shows, movies, and webisodes, has recently joined in a fight to stop Dish Network's registration of the trademark "TV Everywhere."

Co-owned by the Walt Disney Co., News Corp., and NBC Universal, Hulu filed a formal opposition with the United States Patent and Trademark Office and Appeal Board on February 29, claiming that Dish Network's "TV Everywhere" is merely descriptive and too generic of a term to be a trademark. Hulu also contends that allowing Dish Network to obtain exclusive trademark rights to the term would infringe on its business platforms, namely advertising and subscription-based video-on-demand services.

The platforms for the TV Everywhere service are designed to allow authenticated pay-TV subscribers to access on-demand (and some live) programming 24/7 on multiple consumer electronics devices around the home. Supporters for TV Everywhere, which include Time Warner Cable and Comcast, insist that the new platform is a solution to subscription-based services like Netflix, Hulu, and Amazon Prime.

Colorado-based Dish Network, which owns the flailing Blockbuster LLC, filed a trademark application in 2009 for "TV Everywhere" to cover all areas of television transmission, including Internet-transmitted content, streaming, data transmissions and file sharing across multiple electronic devices on a network. Dish Network is also reportedly attempting to secure trademark rights for a term that is synonymous with the developing technology in home entertainment and how viewers receive their consumer content from television. The satellite TV operator currently markets the Slingbox and SlingPlayer to stream, rather than download, content to mobile and connected devices both in and out of the home.

The TV Everywhere platform has been slow to gain momentum as MVPD service providers like cable television providers, direct-broadcast satellite providers, and wireline video providers struggle with content owners seeking additional revenue for unlimited access.

In an ironic twist to the fight, Hulu co-owners Disney and News Corp. have demanded that content designated for TV Everywhere also be available on Hulu, a concept that is under fire from Time Warner and CBS Corp. CBS is reportedly in opposition to Hulu being an advertisement-supported service, however CBS does support the subscription-based Hulu Plus due to its more lucrative content licensing agreements.

Trademark Board Rejects "CrackBerry" Trademark Applications

March 2, 2012,

cellphone_blackberry.jpgOrange County - The trademark trial and appeal board for the United States Patent and Trademark Office has rejected four trademark applications for the term "CrackBerry," ruling that the trademarks would dilute Research in Motion Ltd.'s "BlackBerry" trademark. The term "CrackBerry" is jokingly used by people to describe their "addictive" BlackBerry smartphones as something they cannot function without.

According to the trademark board's decision passed down on February 27th, Defining Presence Marketing Group had filed four applications to register the "CrackBerry" trademark between December 2006 and May 2007 for different types of goods and services. Specifically, the applications were to use the term in connection with Web-based marketing services, computer services, online chat rooms, and apparel.

Soon after the trademark applications were published for opposition between July and November 2007, Research in Motion (RIM) opposed all four applications on the grounds that use of the "CrackBerry" trademark would cause a likelihood of confusion with the public and also that the trademarks would lead to dilution, which is a weakening of the distinctive quality and reputation behind a trademark.

Defining Presence, which had assigned all four trademarks to Axel Ltd. Co. in September 2007, argued to the TTAB that the registrations should be sustained because the term CrackBerry is simply a parody of BlackBerry and that no likelihood of confusion would exist. However, the administrative trademark judge ruled that RIM's BlackBerry devices were already widely referred to by the term "Crackberry" long before the applicants attempted to register the trademarks, thus further supporting the device-maker's claim that a likelihood of confusion would be created if the term was to be registered as a trademark.

With the exception for the class for apparel, the judge also observed that there was "a close relationship between opposer's registered goods and services and applicant's recited services."

A multinational telecommunications company, Research in Motion is based in Ontario, Canada and designs, manufactures, and markets wireless mobile devices for the global telecommunications market. Its BlackBerry line of smartphone devices was produced in 1999 and are designed to function as personal digital assistants, providing mobile phone services, media capabilities, Internet browsing, gaming, and much more.