End of semester amusements

As I finish up writing this year's exams, I thought I'd post my favorite question from last year's trademark exam. Pictures are fun! I made some of these facts up, but not others.

Jones Soda is an upstart company known for its unusually named and decorated bottles. Flavors vary over time and seasonally, including Green Apple, Root Beer, Orange and Cream, and the Thanksgiving-themed Mashed Potato and Butter soda. But flavor isn’t the basic Jones Soda selling proposition. According to the company, “Jones Soda has been recognized and awarded for its unique packaging that features constantly changing labels that are generated and submitted by its consumers.”

Jones Soda Bottles:

Jones Soda Co. distributes sodas in skate, surf and snowboarding shops, tattoo and piercing parlors, as well as in individual fashion stores and national retail clothing and music stores. The company has now begun to achieve larger chain store listings with companies such as Starbucks, Panera Bread, Barnes & Noble, Safeway, Target, and 7-Eleven stores.

Jones Soda has hired a number of “extreme” sports stars to promote its brands. In addition, the Jones Soda RVs travel around the country handing out sodas and advertising the brands. One recent stop was the Motor City Music Conference in Detroit, where numerous local bands performed. The RVs have also shown up at various skateboarding events, public beaches, music venues, and Oscar parties.

Jones Soda RV.

MyJones Independent Music is another Jones Soda promotional tool. It allows independent musicians to upload their music for others to hear and includes message boards. Jones Soda also plans to sell music CDs through the site in the future.

In addition, as part of its “Be a Pop Star” promotion, Jones Soda features 20 music artists and/or bands each month on its soda labels. The selected labels, each of which are applied to 50,000 to 150,000 bottles, bear a band’s picture, name and website. Anyone, including a band, can also pay Jones Soda to produce labels with a customized picture and customized wording on the back of the label. Jones Soda requires that any recognizable individuals in a picture sign a release form allowing Jones Soda to use the photo on labels and any associated advertising.

Along with customized batches of soda, Jones Soda also sells Jones Soda merchandise, including T-shirts and other clothing, stickers, posters, patches, postcards, hats, and messenger bags.

Jones Soda has recently introduced a new flavor, Strawberry Manilow:

So far, the new flavor is selling briskly. One reviewer calls the flavor “More bubble-gum than strawberry, which is appropriate for a soda named after a singer of ‘bubble-gum pop.’”

Barry Manilow dominated the 1970s soft rock scene with a string of top ten hits and multi-platinum albums. “Mandy,” “I Write the Songs,” and “Copacabana.” He’s won Grammys, Emmys, American Music Awards, a Tony, and numerous other awards for his music and showmanship. Despite frequent barbs from critics and lampooning by comedians, Manilow's fans and music soldier on, as evidenced by the No. 1 debut of his 2002 greatest hits album Ultimate Manilow, and Rolling Stone’s accolade that Manilow is the "showman of our generation.” Manilow appeared as a guest judge on and arranged music for American Idol in 2004. Following the success of his popular 'Farewell' tour, Manilow opened a standing show in Las Vegas in 2005 at the Las Vegas Hilton. He also regularly appears on national news and entertainment shows, from Good Morning America to Oprah.

Manilow is the federal registrant of the incontestable mark BARRY MANILOW for entertainment services, clothing, backpacks and tote bags, posters, and jewelry. Licensed BARRY MANILOW merchandise currently available includes mugs, T-shirts and other casual clothing, books, jewelry, blankets, license plate holders, calendars, pins, stickers, posters, purses, magnets, stuffed animals (the “Barry Fanilow” bear), keychains, CDs, and DVDs.

Manilow had been negotiating with Ben & Jerry’s, the ice cream makers, for a licensed “Berry Manilow” flavor. (A “Copabanana” flavor was proposed as well.) Ben & Jerry’s, whose ice creams are sold in supermarkets, convenience stores, stand-alone ice cream stores, and restaurants, has previously partnered with musical celebrities for special ice cream flavors, most notably “Cherry Garcia” with The Grateful Dead’s Jerry Garcia and “Phish Food” with the band Phish. A week after Jones Soda released its new flavor, however, Ben & Jerry’s broke off negotiations, explaining that “We expect Jones Soda’s brand recognition to interfere with the uniqueness of the ‘Berry Manilow’ flavor; moreover, Jones Soda’s reputation for novelty and ironic ‘hipness’ is inconsistent with the Ben & Jerry’s focus on long-term quality and sincerity.”

Shortly thereafter, Manilow sued Jones Soda in federal court in California. (California Business and Professions Code Section 14330 provides that “Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark registered under this chapter, or a mark valid at common law, or a trade name valid at common law, shall be a ground for injunctive relief notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.”) Jurisdiction over Jones Soda is proper. Please discuss the various theories Manilow might assert and evaluate his chances of success on each.