Misunderstanding Intellectual Property

Every Saturday morning, I go to The Bagelry at UNH and meet with other NH lawyers. Two Saturdays ago, I was made aware of an effort by a hotel owner to trademark "Mount Washington" (apparently, I should read the Bar News more often). Of course I asked for elaboration, and I learned that a Florida based company, CNL Financial Group, was trying to get a federal trademark registration after buying the hundred-year-old Mount Washington Hotel. Further, CNL is now trying to get other local businesses to stop using the words "Mount Washington" in a way that truthfully advertises their goods or services.

NH, as a state, likely owns the identifier "Mount Washington" in the same way that Idaho potatoes are from a defined region in Idaho, Champagne (real Champagne) only comes from a defined region in France, real Feta comes only from Greece, etc. The premise of this argument is that when a region of the world is responsible for the quality of the goods or services, that region, and not an individual entity, owns the trademark. Thus, if you own a store in the Mount Washington area, you should be able to affix the name "Mount Washington" to the store's signs as a truthful indicator of source. However, if NH doesn't even try to claim ownership, it is unlikely to be awarded the rights to "Mount Washington".

People also seem to continually conflate the terms patent and trademark. From an Associated Press news post: "Larry Magor, managing director of the hotel [that is claiming exclusive rights to "Mount Washington"], said the company is trying to protect the resort's identity, not patent the name." Of course the company is not trying to patent the name - patents are for inventions and they haven't invented anything. Perhaps having such management is the reason that CNL hasn't asserted its trademark rights already.

The local newspapers covering this issue are not asking the right questions. Fosters said in an article on November 16, 2010 that: "Florida-based CNL Lifestyle Properties said Tuesday it has revised its application for the trademark to say it's just for lodging services, such as a hotel or inn." This quote is misleading because CNL has applied for not one but six trademarks at the US Patent and Trademark Office - none of these has been amended recently. The first application (Serial Number 76690738), which has never been amended, is to be used for retail services, not lodge services. The second application (76690740) is for restaurant services - it was amended two years ago. The third application (76690735) is for entertainment services - it was amended two years ago. The next two applications (76690739 and 76690736) seem to be for the hotel services. The last application (76690733) is for health spa services, and it was last amended two years ago. It seems that Fosters didn't dig enough.

Another local station, WMUR, reported on the topic: "'We're not about trying to put a fence around the name 'Mount Washington' as it could relate to other businesses," said Stephen Rice, senior vice president of CNL. "Those properties have nothing to fear.'" Given the sever applications listed above, it appears that CNL is trying to build a fence around the name "Mount Washington" but the confusing nature of intellectual property allows him to say the opposite, and few people have the wherewithal to dissent.

Most people believe that one cannot have a trademark unless one registers it. This is not true. As soon as you use a mark, like "Mount Washington", you can ask later users of the mark to stop if the later use is likely to be confused with your use. So, considering CNL is claiming in its trademark applications that the mark was first used in 1902, why have they been silent on owning the mark until filing a federal application? Answer: people ascribe too much value to federal applications and registrations and are unwilling to rely on their common law rights. Seems to me that laches may apply in such a way as to bar CNL's assertion of ownership of "Mount Washington".

This case may be analogous to the Concord Coach, where the world's finest horse-drawn coaches were allowed exclusive rights to call themselves by the name Concord. The argument is that the Mount Washington Hotel offers services which are superior to other hotels in the area, and those "other hotels" should not get a free ride on the Mount Washington Hotel's expenditure of time and money in making its name. The only way for the Mount Washington Hotel to stop others from free-riding is to assert ownership in the mark.

16-bit, Silver Screen, or Lyrics... A Race to Register.

Who owns the phrase: "It's on like Donkey Kong"? Is it the maker of the video game which takes its namesake directly from the quoted phrase? Is it the giant gorilla that dominated the pre-video game era? Or is it the rapper that popularized the phrase in its entirety?

Donkey Kong was originally a game where the player would control Mario, bringing the Italian plumber up a series of ladders and ramps. The player would also have to jump and hammer the barrels thrown by Donkey Kong, an evil Princess kidnapping gorilla. Since its inception, the game has evolved into several spin-offs. Nintendo released Donkey Kong in 1981.

The chain of title of King Kong's intellectual property is well described in Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F. 2d 112, (2nd Cir. 1984): "Universal, a giant in the entertainment industry, maintains that it owns the trademark in the name, character and story of "King Kong." The King Kong character and story, of course, need no introduction. Universal traces its ownership of the trademark from RKO General's (RKO) efforts to exploit the goodwill created by its 1933 film classic of the same name. It asserts that RKO's commercial use of the name and character of King Kong created the trademark; that the rights to the trademark were passed from RKO to Richard Cooper, son and heir of King Kong creator Merian Cooper, pursuant to a judgment resulting from a claim brought by Richard Cooper against RKO alleging that RKO had exceeded the license originally granted by Merian Cooper to make the original King Kong motion picture; and that Richard Cooper subsequently transferred to Universal for consideration the rights he obtained from RKO."

The phrase, "It's on like Donkey Kong" was used by Ice Cube on his acclaimed 'The Predator' album. The first tercet of his song, 'Now I Gotta Wet'cha' reads, "It's on like Donkey Kong. You wanted that fast buck, now I gotta light that ass up." The album came out in 1992.

On November 9, 2010, Nintendo filed a trademark application for "It's on like Donkey Kong". One can find the application in a search at USPTO.GOV. The application is filed under Section 1B of the Lanham Act (Trademark Act), which means that it is not based on use of the phrase in selling anything. However, trademark law allows one to register a trademark with a mere intent to use that mark, as opposed to actually using the mark to sell video games in interstate commerce (Section 1A). Thus, Nintendo, although it claims the phrase has been used to describe its games, isn't willing to swear on it.

On November 21, Nintendo will be releasing Donkey Kong Country Returns and actually using the phrase in commerce in its likely pervasive ad campaign. After that date, Nintendo is likely to amend its trademark application to amend use, effectively converting the 1B (non-use based) application to a 1A (use based) application. The importance of the distinction between 1B and 1A filing bases is that only that latter will have any real commercial viability. An application wherein use is never alleged (the trademark is never used in commerce) can only remain an application for a total of three years. But, twelve days is all Nintendo needed to be first in line for federal protection of the phrase, "It's on like Donkey Kong". This protection would preclude Universal Studios and Ice Cube from making any video games using the same famous phrase.