Umami Burger Chain Loses Bid to Block Pizzeria's Use of "Umami"

According to its Wikipedia entry, "UMAMI /uːˈmɑːmi/, a savory taste, is one of the five basic tastes, (together with sweet, sour, bitter and salty)."  Its linguistic origins are Japanese:  "A loanword from the Japanese (うま味), umami can be translated "pleasant savory taste".

A non-profit organization, the Umami Information Center (UIC) was established in 1982 in order to convey accurate information about umami as a basic taste. According to the UIC, the umami flavor is attracting the attention of chefs around the world, in part due to the boom in Japanese food.

However, the word has not left those American chefs trying to brand it into a trademark with a very pleasant taste in their mouths.

For example, just this week, California-based Umami Burger Licensing USA, LLC lost a bid to preliminarily enjoin upstart Umami Mia Pizzeria from further use of its name.

The gourmet hamburger chain had filed a trademark infringement case against Umami Mia Pizzeria, LLC in federal court in Austin, Texas. The Umami Burger chain boasts numerous locations in high-end areas in southern and northern California, as well as in Miami, Florida and Greenwich Village, New York.

According to its website, Umami Burger's founder Adam Fleischman developed the high-end burger restaurant concept dedicated to the all-American classic food after developing a palate for fine wines and managing some of Los Angeles' finest wine bars. He opened his first Umami Burger on La Brea [California] in 2009.

Its menu boasts burgers covered in "house-made truffle cheese," "port-caramelized onions," and even "Welsh Rabbit burgers." The New York City establishment boasts a 3 hour wait.

The Texas upstart, Umami Mia Pizzeria is located solely in Austin, and offers a more pizza-centric menu, devoid of any type of hamburgers.

After holding a hearing, Federal District Court Judge Sam Sparks was apparently unconvinced that UMAMI could function as a trademark in this instance, and rejected the argument that consumers would likely be confused into associating the restaurants.

It is worth noting that Fleischman's recent difficulties in successfully monopolizing "UMAMI" as a trademark are not novel, and the word has endured a tortured history under U.S. trademark law.

For example, in 1995, Tucker Food Products, Inc., a Missouri company, had sought to trademark the word UMAMI in connection with sauces and marinades, volunteering that the "English translation of 'UMAMI' is 'deliciousness', 'taste', 'flavor' and/or 'relish'."  The mark was approved for publication, but Tucker never filed any statement of use, so the mark was later deemed abandoned.

Subsequently, the trademark "UMAMI" became successfully registered in 2009 by Mastronardi Produce, a Canadian company, in connection with tomatoes.

Initially, the Trademark Office deemed the word UMAMI "merely descriptive" as used in connection with tomatoes and refused Mastronardi's application on the basis that the term UMAMI merely described its taste.  According to the U.S. Trademark Office, UMAMI "is sometimes considered to be a fifth basic taste along with sweet, sour, salty, and bitter."  Further, ripe tomatoes are apparently rich in components that lead to UMAMI.

However, Mastronardi's trademark lawyers were able to convince the Trademark Office that "UMAMI TOMATO" currently has no particular linguistic significance in the trade or industry, and as such, is not descriptive of anything in particular about tomatoes. By further offering to disclaim any rights to the word "TOMATO," the Trademark Office permitted the mark UMAMI to become a registered trademark for tomatoes.

Subsequently, Fleischman was also able to register multiple federal trademarks on "UMAMI CAFE," and "UMAMI BURGER." He is apparently now attempting to register "UMAMI CHIPS," and "UMAMI ENERGY" (for energy drinks).

But Fleischman has company.  Many other companies and individuals have been similarly attempting to register "UMAMI BEER", "UMAMI SUSHI", "UMAMI OYSTER", and "UMAMI TSUNAMI" (for condiments).

The recent battle in Austin over use of the word is clearly not the end of the conflict. Even though Judge Sparks denied Fleischman's bid to stop Umami Mia Pizzeria, that is only a preliminary decision.  A full trial on the merits is expected in 2014.

Are the Boy Scouts of America Above the Law?

One of the more interesting pieces of "trademark trivia" is that the Boy Scouts of America (the BSA) were granted a special protection by Congress nearly a century ago, and can now threaten and accuse targets of perceived trademark infringement without having to demonstrate any likelihood of confusion whatsoever.

The BSA is one of the nation's largest and most prominent values-based youth development organizations.  According to its website, the BSA provides a program for young people that builds character, trains them in the responsibilities of participating citizenship, and develops personal fitness.

Recognizing the unique position that the BSA offers to American youth, in 1919, Congress codified a special protection for the Boy Scouts of America, making it “a body corporate and politic of the District of Columbia with perpetual existence.”  The law further provides that  “[the BSA] has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases [it] adopts.”

Because the Boy Scouts' "exclusive right to use" these marks is not part of the federal Lanham Act that governs trademarks (which was passed by Congress in 1946), the BSA is not governed by the "likelihood of confusion" standard that applies to virtually everyone else.

Indeed, in Wrenn v. BSA, 2008 U.S. Dist. LEXIS 91913 / 2008 WL 4792683 (N.D. Cal. Oct. 28, 2008), a California District Court ruled that the “BSA need not demonstrate the likelihood of confusion because it has been granted special protection by Congressional charter,” citing The Last Best Beef, LLC v. Dudas, 506 F. 3d 333, 339 (4th Cir. 2007) and S.F. Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 531 (1987), accord, Boy Scouts of Am. v. Teal, 374 F. Supp. 1276, 1278 (E.D. Pa. 1974) (enjoining use of “Sea Scouts”).

This piece of trivia is not purely academic.  Ask the “Hacker Scouts,”a non-profit organization that was recently threatened after receiving an overt cease and desist letter from the BSA that cited the special Congressional charter.

To be sure, the use of special Congressional exemptions from ordinary law is not unique to the Boy Scouts.  Major League Baseball, another storied American institution, enjoys an odd exemption from federal antitrust laws, and of course, Congress itself is exempt from most laws that apply to everyone else, such as the Fair Labor Standards Act, the Civil Rights Act, and laws against insider trading.

President Obama's "IP Czar" Steps Down After Four Successful Years

Victoria Espinel, President Obama's "IP Czar," has stepped down from her role four years after she was confirmed by the Senate as the U.S. intellectual property enforcement coordinator.

Until the President nominates a successor who is confirmed by the Senate, Howard Shelanski, the administrator of the office of information and regulatory affairs at the Office of Management and Budget, will serve as acting IP coordinator.

Espinel's position had been created by the Pro-IP Act, signed into law by President George W. Bush in 2008.  The position was intended to serve as a liaison and coordinator for the wide variety of federal, state and local agencies involved in intellectual property matters.  

Espinel's efforts to improve coordination of law enforcement efforts and private-public partnerships were uniformly lauded by stakeholders including the U.S. Chamber of Commerce, labor unions and consumer groups.  In the most recent 2013 Joint Strategic Plan on Intellectual Property Enforcement, Espinel had been a proponent of strengthening IP enforcement through international coordination and encouraging "best practices" by intermediaries such as search engines, advertisers and payment processors.

Chinese Car Company Seeks to Trademark "SNOWDEN"

HYLX, a small Chinese electric car technology company has reportedly submitted formal applications to register the name “SNOWDEN” as a commercial trademark in both Chinese and English language characters last week.

Zhu Hefeng, the company’s manager and the trademark applicant, reportedly said that he thought that "Snowden" would be the perfect name for the company’s new top secret technology that is currently in development and will, says the company, change the market for environmentally-friendly cars.  

No word from Edward Snowden on whether he will object to the trademark applications, but Snowden may have his hands full fighting America's intelligence establishment’s attempts to have him extradited to face trial for treason.

The article doesn't report on HYLX's efforts to register the trademark in the United States.  Snowden is already a federally registered trademark in the U.S. for wine.

"Pirate Joe": Innocent Victim or Trader Joe's Nemesis?

An interesting set of legal issues has emerged in a trademark case arising out of conduct occurring in Vancouver, British Columbia. The popular supermarket chain Trader Joe's Company apparently does not operate any retail stores in Canada, but has 390 grocery stores in 30 states, including 14 in the state of Washington.

Consequently, each week, current Vancouver/former San Francisco resident Michael Hallatt drives his van across the international border to Seattle, Washington to purchase several thousand dollars worth of genuine Trader Joe's merchandise.  He then drives back to Vancouver and resells the goods at his own shop "Pirate Joe's", for a profit.

Trader Joe's has now filed suit against Hallatt in federal district court in Seattle, claiming that his conduct amounts to trademark infringement and unfair competition with the supermarket chain there.

Hallatt's lawyer has moved to dismiss the complaint on the basis that the complained-of conduct is occurring entirely outside of the United States, is having no clear impact on U.S. commerce, and is therefore wholly outside of the U.S. federal courts' jurisdiction to regulate.

There are several quirky legal issues here.

Generally speaking, even conduct occurring outside the United States can have some effect on U.S. commerce, and could be lawfully regulated by federal courts.  For example, if some Vancouver residents were ordering online from Trader Joe's, but instead shop at Pirate Joe's, that allegation could have sufficient impact on the supermarket chain to sustain a possible cause of action for trademark infringement.  However, Trader Joe's website does not seem to offer any shipping options to British Columbia.  This threshold issue requires resolution.

Further, there may be an even deeper problem with Trader Joe's allegations of trademark infringement.

Typically, once an authentic item is sold for the first time, the intellectual property owner loses all right to control any further sale or redistribution of that item, regardless of whether the further sales occur within or outside of the U.S.

It is this "first sale" or "exhaustion" doctrine that permits both casual sellers on eBay or Craig's List, as well as secondhand antique shops and used car dealers to exist, without constant fear of being sued for patent, copyright or trademark infringement.

Since trademark laws exist primarily to protect the public from confusion, as long as the consumer is fully aware that he is not purchasing an original item from an authorized retailer, there is generally no trademark infringement or unfair competition occurring.  Hallatt noted in interviews that he posts large, conspicuous disclaimers so that customers in his store are aware that he is not operating a legitimate, authorized "Trader Joe's" establishment.

Matters get even more complicated once you add international borders to the mix.

Authentic items that are sold outside the United States and then imported for resale are often called "gray market" goods.  Gray market goods can present significant problems for those brand owners who have different quality control standards abroad as compared to the United States.  

For example, aspirin packaged and intended for sale in Mexico will be labeled differently (and may even have different dosages) than those bottles which are intended for U.S. markets.

When school text books were at issue, Justice Stephen Breyer writing for a 6-3 majority of the U.S. Supreme Court in March 2013, held that once the school textbooks were sold overseas, they were free and clear to be resold within the U.S., labeling notwithstanding.  This gray market would likely have an impact of lowering the prices of textbooks.

But here, the "gray market" is essentially operating in reverse:  Hallatt is traveling to the U.S. to purchase goods and reselling them in Canada, not vice versa.

In this context, even if Hallatt's sale of Trader Joe's goods to Vancouver residents could conceivably cause some kind of consumer confusion as to source, it is unclear how his conduct is having any appreciable impact on U.S. commerce, in light of the first sale doctrine.  

In other words, how is Trader Joe's actually injured if, instead of a Vancouver resident driving to Seattle, he instead essentially just pays a nominal fee to Hallatt to do it for him?  

In both cases, Trader Joe's is selling the same merchandise:  Hallatt is just an unauthorized middleman.  Assuming there is no confusion, Trader Joe's appears to be unharmed.

It will be very interesting to see how the district court in Seattle ultimately rules.