DeepThroat.com UDRP

[Dave_Z]

Not sure whether to post this here or the break room, but I figured here is a
better fit since it's a UDRP:

http://domains.adrforum.com/domains/decisions/1213977.htm

Hmm, the complainant had this decision shoved down deep in their throats, I
guess.

 

[Jake]

Hmmm...... :lol:
wow.

Thats all I can say..

 

[weblord]

deep throat problem that is.

 

[maxeaus]

That one seemed to be "going down" to the wire, a close call,
but again John Berryhill saves the day, nice result John.

 

[jberryhill]

The decision is impressively long, but some of it is hard to swallow.

You know, writing the response for that one with a straight face was tough. When you state a proposition such as "deep throat" is commonly understood as a reference to "an act", you have to support that with evidence.

Well... compiling the evidence in this case was an education I really could have done without. Putting together a collection of "How To" articles on the subject, you reach a point where you're not sure whether your point is proven. So, I offered to provide the Panel with more "evidence", but did note that it was "an offer, not a threat."

 

[labrocca]

It's a nice battle but it makes me wonder if the TM holder of Deep Throat had protected it's mark earlier and been aggressive that this wouldn't have gone the other way. That's why many mark holders do spend their time and resources to continue holding their TM status.

Glad you didn't blow the job... hehe

 

[jberryhill]

It's a nice battle but it makes me wonder if the TM holder of Deep Throat had protected it's mark earlier and been aggressive that this wouldn't have gone the other way.

"protected its mark earlier"....

The decision is somewhat fractured, and doesn't really go into the arguments.

Without more, the title of a film - even a famous one - is not a trademark. Okay, so some schmuck spent $25,000 in 1972 to make a porno flick that got a lot of attention, and he made another porno flick in 1974 that nobody has ever seen.

This is 2008.

You know "Burma Shave" was a hell of a mark in the 1930's. It's not made anymore.

What we have here is a copyright assignee engaging in an amazing over-reach.

Look up their applications.... "DEEP THROAT" as a mark for....

wait for it....


....an ENERGY DRINK?

WTF? I don't even want to IMAGINE what that tastes like or what the ingredients are.

 

[bobbie]

I was surprised to see this one go this way, but I was wondering just the other day whether or not book titles and movie titles were a trademark.

 

[jberryhill]

I was wondering just the other day whether or not book titles and movie titles were a trademark.

As a title of a single work, no.

Now, you can easily go wrong there. For example "Star Wars" is much more than the title of a single work. It's a huge marketing franchise. Ditto "Harry Potter" and other serial works, or titles which are associated with a range of products and services.

1202.08 Title of a Single Creative Work

The title of a single creative work is not registrable on the Principal Register or the Supplemental Register. Examples of "single creative works" include books, videotapes, films and theatrical performances. Herbko International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (title of a live theater production held unregistrable); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (title of single phonograph record, as distinguished from series, does not function as mark).

The name of a series of books or other creative works may be registrable if it serves to identify and distinguish the source of the goods. In re Scholastic Inc., 23 USPQ2d 1774, 1778 (TTAB 1992) (THE MAGIC SCHOOL BUS, prominently displayed on the cover of a series of books, has come to represent a source to purchasers and would be recognized as a trademark). However, a term used in the title of a series of books is not registrable if it merely identifies a character in the books. In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) (THE LITTLES, used in the title of each in a series of children's books, does not function as a mark where it merely identifies the main characters in the books). Cf. In re Caserta, 46 USPQ2d 1088 (TTAB 1998) (FURR-BALL FURCANIA, used as the principal character in a single children's book, was found not to function as a mark even though the character's name appeared on the cover and every page of the story); In re Frederick Warne & Co. Inc., 218 USPQ 345 (TTAB 1983) (an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark).

 

[bobbie]

That makes sense. So really, deep throat was basically one enormously famous movie and how many ... 1? sequel ... that I never heard about at all and no real products other than the movie?

 

[jberryhill]

....and consider what a "sequel" really is, in the context of movies.

If you go to see a "James Bond", "Indiana Jones", "Harry Potter", or "Star Wars" sequel, there are certain features , characters, plot lines, production values, and so forth that you know are going to be there.

On the other hand, if you are going to watch a Deep Throat "sequel", you probably know that it is going to pretty much feature a particular type of activity, because that is what the activity is called.

How many times have you called a bureacratic tangle a "Catch-22"? How many times has anyone referred to an alcoholic as having a "Lost Weekend" or to a politician as a "Manchurian Candidate". There are titles which, yes due to association with a single work, take on an independent primary meaning not as a reference to that work, but in their own right as common parlance.

 

[bobbie]

yeah ... I just asked my father what he thought about Deep Throat and he said, you mean the secret informant in the Watergate scandal? I said, yeah Dad. lol

 

[Ben42]

Good decision IMO, They guy regged the name in 1997, you can't get a tradeMark for it in 2005 and they go after stuff that came before your trademark...even if the movie was made before their were PC's.

 

[flamewalker]

So, I offered to provide the Panel with more "evidence", but did note that it was "an offer, not a threat."

LOL... wow. Just wow... good job... erm... *insert witty deep throat comment here*
:tu:

 

[JulieLA]

yeah ... I just asked my father what he thought about Deep Throat and he said, you mean the secret informant in the Watergate scandal? I said, yeah Dad. lol

For many of us who were teenagers or young adults in the 70s, that's how we associate it, however. When I see the term "deep throat," I immediately flash to Watergate!

 

[maximum]

What we have here is a copyright assignee engaging in an amazing over-reach.

Look up their applications.... "DEEP THROAT" as a mark for....

wait for it....


....an ENERGY DRINK?

WTF? I don't even want to IMAGINE what that tastes like or what the ingredients are.

John, you didn't want to know what the ingredients were? Isn't that ignoring potential evidence in your client's case? J/K with you Another nice job done, Mr. Berryhill :tu:

 

[liquidcherry]

For many of us who were teenagers or young adults in the 70s, that's how we associate it, however. When I see the term "deep throat," I immediately flash to Watergate!

Why do i have a strange comment in my head reading your reply??? :lol:

Anyway, Mr. Berryhill, kudos to another well reserved victory...!

Cheers

Frank

 

[HuntingMoon]

Definitely a verb