If u cn rd ths, then you’re either over 50 and remember the old shorthand print ads, or you use your phone to text messages. Amazon continues to push the digital envelope, recently launching its Text-To-Buy program. Adding to its existing mobile phone program (launched last Fall), consumers can set up an account online and then text the UPC, ISBN number, or even a keyword to AMAZON” (262966), and make purchases.

Text-to-buy is likely to pick up speed over the next year, with online and brick-and-mortar companies expanding their clientele and extending their shopping hours by allowing consumers to text purchases, either for pick-up or delivery.

Practice Note: Clients who want to add mobile interaction to their online sites should update their privacy and terms of use policies. The federal CAN-SPAM Act applies to all mobile devices.

Question: When can you decide a trademark case based on a single factor? Answer: when the two marks share not a single common term.

Applicant, PAC Trading Group sought to register the mark PAC BOOSTER THE PERFECT SOUND for audio equipment. The mark was opposed by Ava Enterprises, Inc. on the grounds that it believed the mark to be confusingly similar to its registered trademark, BOSS AUDIOSYSTEMS. Applicant moved for judgment on the pleadings on the ground that Opposer could not even claim a “threshold of similarity” between its mark and Applicant’s mark. Opposer responded that the term BOSS and BOOSTER are “nearly identical because they both start with the letters “BO” and contains an “S;” and moreover, the goods are identical. Acknowledging the similarity between the goods, the Board nevertheless granted the motion.

The Board wasn’t buying the notion that BOSS and BOOSTER are nearly identical, pointing out the obvious: they don’t look alike or mean the same thing. The Board concluded that “notwithstanding the overlap of the respective goods, a likelihood of confusion cannot exist as a matter of law and that this case should be decided on the first du Pont factor as being dispositive.”

Practice Note: OK, I give up. Why exactly did Opposer file this action? As a threshold matter, a potential opposer should find at least one similar word (or similar sounding or meaning word) before bringing an opposition on the grounds of likelihood of confusion. That two parties sell the same goods is insufficient.

In an promotion that sounded more like a Wacky Packages spoof, Nestle promoted its new Butterfinger Comedy Network by making fun of its own brand. Claiming on April Fool’s Day that it was shirking the “clumsiness of the Butterfinger brand” and renaming its brand ‘The Finger,’ the promotion was designed to promote Yahoo’s YouTube alternative. The promotion includes links to local 7-Eleven stores where consumers can actually purchase the candy bar with the fake packaging.

Practice Note: Offering a rare product is a very good way to create stickiness on a website. In this case, in order to find out which stores are carrying the specially branded product, consumers must register with the site. Better than a sweepstakes, which only rewards a few winners, Butterfinger drives consumers to its website, and if consumers want the candy bar, they have to pay for it.

Appellants will get their day in court after all, and St. Paul Fire & Marine Insurance Company many have to pony up in the end. The case arises out of defense of two underlying lawsuits related to false advertising and trademark infringement. Raymond Manzarek, a founding member of the epic rock group The Doors began using the mark DOORS TOURING COMPANY in conjunction with music tours, as well as with various merchandise being sold on its website and at the concerts with the DOORS logo on it. Parents of the former band’s singer Jim Morrison, and Morrison’s widow sued the company for trademark infringement and trade dress infringement. Another suit, brought by former drummer John Densmore, alleged, inter alia, breach of contract, economic damage, and damage to Densmore’s reputation by either express or implied claims that Densmore was at best, The Unknown Solider, and at worst, not an integral part of The Doors legendary band.

Appellants tendered the lawsuit to their insurance company, which contained advertising injury liability. Tendering to the company, however, turned out not to be an Easy Ride to coverage: the insurance company promptly denied coverage and Appellants, determined to Break On Through the wall of denial, sued. The district court granted the insurance company’s motions to dismiss and appellants appealed.

Inching along in The Soft Parade toward reversing the lower court’s decision, the 9th Circuit stated that dismissal of the claim was premature, since the insurance company did not know exactly what items were being sold under the DOORS infringement, and by its own contract language, certain types of merchandise were expressly covered. The allegations by the former drummer relating to damage to his reputation, the 9th Circuit held, were sufficient to “raise the potential of an award of mental anguish or emotional distress damages.” No Back Door Man he, Densmore’s claims, if proved, could be covered under the policy.

Practice Note: With apologies to readers that this blogger will post anything up that references Jim Morrison, clients really should carefully read their media policies and other insurance coverage paperwork to make sure they are getting the coverage they believe they are paying for.

For years, health crisis centers for pregnant women have fought against rogue elements providing false information about abortion services. Using the Internet and phonebook advertising, anti-abortion groups pose as counseling centers and pretend to offer counseling and information services about abortion to pregnant women. In actuality, these groups direct viewers to fake sites that provide false information about abortion options, and provide counseling designed to persuade women to keep their unwanted babies, even when keeping the baby represents a significant risk to the mother’s health.

This month, women’s health centers are asking women to contact their congressperson about a bill recently introduced to “direct the Federal Trade Commission to prescribe rules to prevent deceptive advertising of abortion services.” The ”Stop Deceptive Advertising for Women’s Services Act” would provide special guidelines specifically related to how crisis centers would be able to advertise what they offer.

Practice Note: The bill seeks to tie the act to the already existing powers held by the FTC under Section 5 of The FTC Act, which regulates false and deceptive advertising. Even if the bill does not pass, under the current power, the FTC could independently go after these agencies for their deceptive ads.

The National Advertising Division of the Better Business Bureau has found that Wal-Mart’s claim that it saves Wal-Mart shoppers $2500.00 a year is misleading, and the self-regulatory organization has requested Wal-Mart discontinue the advertising campaign.

The Wal-Mart ad campaign claim is not based on the actual savings of Wal-Mart shoppers, but rather on a calculated number derived from a study it commissioned in 2005. The study in 2005 found that Wal-Mart’s advertising focus on low prices, had resulted in an actual overall price drop in consumer products of 3%. A 3% drop is roughly equal to $287 Billion, which means roughly $2500.00 per household. The statistic, therefore, represents the cost savings to every household, whether the consumer shops at Wal-Mart.

Practice Note: In any advertisement where a measurable statistic is used, the ad sponsor should be able to point to evidence supporting that statistic. Even when a statistic is numerically accurate, as it is here, if the implication is false, then the ad may be deemed false, too. The test for misleading advertising is not merely what is said, but what is implied by the statement.

Engadget came out swinging when it received a trademark infringement demand letter from Deutsche Telekom (which owns T-Mobile). The demand letter suggests that Engadget’s use of the magenta color for its “imobile” section is a violation of Deutsche Telekom’s trademark rights in the color magenta for T-mobile and requests the company stop using the color.

Engadget regularly receives mail from disgruntled companies, primarily pertaining to Engadget’s reviews of certain electronic products, but this letter made Engadget see, uh, magenta, and it responded by posting the letter on the website, and inviting its readers to comment. Moreover, the letter appears to have enraged the company sufficiently that now it is using its trademark in a way that actually could be confusing.

Practice Note: Posting of demand letters by their recipients is nothing new; indeed, this blog has made several references to the practice in the past. Nevertheless, it is a reminder to attorneys to advise clients that demands can be made public. The mere fact that a demand letter might be posted should not deter a client with strong rights, but it may color the tone of the communication. In addition, attorneys want to guide their clients through the legal elements of the claims asserted in a demand, as well as the ramifications of those claims in the court of public opinion. In some cases, if the rights held are thin and the potential backlash is significant, perhaps a well-placed phone call is warranted.

A district court in Georgia has found that a political activist’s use of the term “WAL-OCAUST” coupled with Wal-Mart’s familiar smiley face and recognizable letter and typeface style is fair use.

Defendant sells t-shirts, buttons and other merchandise containing the WAL-OCAST trademark to protest what he believes to be Wal-Mart’s massive contribution to unemployment and U.S. destabilization by shipping jobs overseas where labor is cheaper. The campaign also used terms like WAL-QAEDA. Wal-Mart alleged trademark infringement and dilution by tarnishment. Defendant claimed fair use.

Wal-Mart submitted survey evidence of actual confusion to bolster its position that the activist’s use of the mark confused consumers. The court rejected Wal-Mart’s survey evidence of actual confusion as unpersuasive and of “dubious value” because, among other things, the sample size was not significant, and the conditions that were used to get the results did not reflect actual marketplace conditions. The court found that while Wal-Mart did have recognizable trademark rights in WAL-MART, and the blue stylized lettering, it has failed to show consumers would be confused as to the origin of the products.

Regarding Wal-Mart’s tarnishment claim, the court found that if there was tarnishment, it was the result of satire. A tarnishment claim based upon satire is not actionable under the anti-dilution statute because the speech is protected under the 1st Amendment.

Practice Note: The court early on recognized the campaign as parody, but correctly noted that parody is not an absolute defense to trademark infringement; in a defense against trademark infringement where parody is an element, a party must still prove no likelihood of confusion.

A U.S. District Court in Nevada granted Plaintiff Paradise Canyon’s motion for preliminary injunction against Defendant Integra Investments for Integra’s advertising of its resort properties. The court found Defendant attempted to lure consumers into buying homes by creating a false impression of association with Plaintiff’s famous Wolf Creek Golf Club.

Paradise Canyon owns and operates the famous Wolf Creek Resort and Golf Club in Mesquite, Nevada. The club is renown for its golfing and has been featured as one of the “50 Toughest Courses” in the world. Plaintiff holds four trademark registrations in various classes that include the words WOLF CREEK. Defendant owns a 33 acre parcel of land adjacent to the golf club, which it had earlier attempted to name “Wolf Creek Estates,” but was enjoined from doing so by a court order. Defendant now calls its community Hidden Wolf, and has created advertising to entice buyers to the new development. One such advertisement begins, “WORLD CLASS GOLFING” and goes on to suggest that residents of Hidden Wolf can “play this amazing [Wolf Creek] course every day – just by stepping outside your door.” Various other ads reference the Wolf Creek Golf course by name and then suggest that Hidden Wolf provides access privileges to the famous club.

The court found that while the statements in the ads were not literally false (Defendant never stated it was part of Wolf Creek), the ads had a tendency to deceive potential buyers into thinking a Hidden Wolf home purchase came with golf privileges.

Practice Note: Clients should look critically at their use of third party trademarks in advertising. There are many ways in which defendant might have fairly used the WOLF CREEK. For instance, making an association with the town of Mesquite, which is home to the Wolf Creek Resort, and noting Hidden Wolf’s proximity to the resort, would likely have achieved the same marketing effect without raising the ire of Plaintiff.

Reuters is reporting that the well-known rock band Smashing Pumpkins has filed suit against Virgin Records, claiming that the record company sullied its image by associating it with a Pepsi/Amazon promotion.

According to the law suit, filed in Los Angeles Superior Court on Monday, March 24, 2008, the band claims Virgin used the band’s name, music and images in its “Pepsi Stuff” Promotion, which allows Pepsi drinkers to purchase selected merchandise. In the law suit, the Smashing Pumpkins claim that by using the Band’s image and music as part of the promotion, Virgin has falsely given consumers the impression that Smashing Pumpkins endorsed and was affiliated with the Pepsi Stuff campaign.

Practice Note: Promotions Sponsors must not advertise their promotion in such a way that they create a false sense of Sponsorship with a third party. For instance, while a Sponsor may list the brand name of the prize to be awarded, it may not be able to display a third party trademark or call special attention to that brand in its advertising.