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Rudolph Trademark Counterfeiters Have Nose Rubbed In It

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

Single_Gene_Autry-Rudolph,_the_Red-Nosed_Reindeer_cover.jpg

       -1949 Gene Autry Single-

Brand Image Protection:  This just in from the trademark battlefield. Although not one to use this blog as a platform for blowing my own horn, I can't help but share this seasonally-relevant success: protecting the goodwill of my client, Rudolph, to his famous RUDOLPH-branded trade dress: the world-famous "nose so bright" reputed for guiding Santa's sleigh on Christmas night.

Many years ago Rudolph consulted me, believe it or not, about maximizing protection for his bright-red lighted nose prominently featured on reindeer-themed tree ornaments, toys, and over-the-top lawn statuary. I obtained federal protection for the look, and five years later diligently stewarded the registration through to federal "incontestable" status. The revenues from exploitation of the signature trade dress were plowed by Rudolph back into making more toys and delivering them to deserving children throughout the world.

But where hope springs eternal, so lurks the infernal. As the 2015 Christmas season swung into action, so did that serial counterfeiter and tireless corporate sycophant, Grinchex Unlimited Ltd. Grinchex branded its uninvited knockoff reindeer under the mark ROOD, which indeed it was, copying as it did the distinctive "nose so bright" feature of genuine RUDOLPH goods.

At the court hearing Grinchex went right where I had calculated: proving that the lighted nose is in some way functional and therefore not protected by trademark law. It's about the only way to beat a federally incontestable mark. The smarmy lawyers for Grinchex insisted that the lighted nose was functional for navigation on a dark Christmas night, and therefore judgment should be entered for Grinchex, cancelling Rudolph's federal registration.

I wisely conceded, if I do say so, that it was true the bright nose was functional for Rudolph's worldwide logistics and delivery service on Christmas night. However, I then argued that an illuminated noggin was in no way functional for tree ornaments, toys, and excessively exuberant-about-Christmas lawn statuary.

The brief I submitted noted that courts carefully consider any "look-for" promotion and advertising - or the absence thereof - in determining the strength or weakness of trade dress protection, i.e., ad slogans that say "Look For The [color/distinctive look/design]" that reinforce to the public the striking feature of the trade dress. I argued that the Rudolph trade dress more than delivered on that front. That's because Rudolph had ensured that all advertising and promotion referred to "Rudolph the Red-Nosed Reindeer," even licensing a catchy 1949 song by that title performed by Gene Autry and known throughout the world.

The federal judge was favorably impressed by the bounty of proof that I'd carefully wrapped and placed under the evidence tree. A preliminary injunction was promptly issued against Grinchex, requiring it to cease all sales and distribution of the trade-dress infringing merchandise. All remaining Grinchex merchandise was ordered to be turned over to Rudolph's attorneys for destruction. A huge bonfire was built on the street in front of my offices. All the ROOD reindeer were corralled and tossed into the fire, around which were gathered many gleeful children, a motley bunch of festively-clad friends of Rudolph, along with me and my loyal support staff. Together we roasted yummy smores and chestnuts on the open fire, all the while celebrating the justice that had been done, Peace on Earth and, of course, Protected Goodwill For Clients.

Seasons Greetings to one and all, and best wishes for the New Year!

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