More Fun With "For Dummies" Trademarks

tonescope wrote to us with a fun narrative from Oz about Corporate Standover Tactics for Dummies in which Octapod, a small non-profit arts group has done a fun job of cataloging the dialogue between them and IDG Books. In the same vein, check out our first story about this as well.

Comments

Re:How about a *fact* or two?

[psaltes]

Auto Repair for Dummies
Hardcover 2nd edition (March 1990)
Ten Speed Pr; [NOT by IDGB and published prior to their products] ISBN: 0070558841

from http://www.users.one.se/~feltby/idgb_s mells/

Don't Roll Over Easily

[Doc Technical]

A few links down in the featured article, the author references a link to "CVS for Dummies", a site that received a similar letter from IDG.

Apparently, IDG only has a case against for-profit organizations. Here's a quote from the page:

The provisions of the 1995 Trademark Dilution act are, in a nutshell, that

"The owner of a famous mark shall be entitled to injunctive relief against another person's commercial use of a mark or trade name if such use causes dilution of the distinctive quality of the mark."

But

"... to be actionable the use must not fall within any of the statutory exemptions. Under the Act, 'fair use' of a mark in comparative advertising, 'non- commercial' use of a mark, and news reporting and commentary are not actionable."

It seems that IDG was either unaware of this or felt that people's ignorance of the law or fear of litigation would allow their tactics to prevail.

"Phantom" Marks not Allowed?

[CBM]

IDG's use of "phantom" trademarks may not be allowed. Phantom marks are those that contain elements unspecified at application time, like ".... for Dummies." Apparently trademark applicants are allowed only one trademark name per application.

I found this little tidbit in a USPTO newsletter here.

Trademark applicants may not register phantom marks: The Federal Circuit upheld the Board's refusal to register a phantom trademark in In re International Flavors, 51 USPQ2d 1513 (Fed. Cir. 1999). A phantom trademark is "one in which an integral portion of the mark is generally represented by a blank or dashed line acting as a placeholder for a generic term or symbol that changes, depending on the use of the mark." International Flavors sought to register "LIVING XXXX FLAVORS," "LIVING XXXX FLAVOR," and "LIVING XXXX," where the "XXXX" serves to denote a specific herb, fruit, plant, or vegetable. The phantom marks would provide protection for such marks as "LIVING STRAWBERRY FLAVOR" and "LIVING CILANTRO FLAVOR." Thus, the applications sought to obtain registration of a potentially unlimited number of marks. The examining attorney refused registration of the marks, and the Board affirmed. International Flavors appealed to the Federal Circuit.

The Federal Circuit agreed with the Commissioner that under the Lanham Act and the rules pertaining to it, a trademark application may seek to register only a single mark. The court therefore saw no reason to disturb the Board's finding that International Flavors sought to register multiple marks in violation of the one-mark-per-application requirement of the Lanham Act.

The Federal Circuit further explained that federal registration benefits the market by providing constructive notice to the public of the registrant's ownership of the mark, thus preventing innocent misappropriation of the mark as a defense to an infringement charge. Phantom marks with missing elements fail to provide meaningful constructive notice to the public because they encompass too many combinations to make a thorough and effective search possible. Finally, the court also rejected International Flavors' argument that the PTO's failure to register the phantom marks denied it due process or equal protection under the U.S. Constitution.

There are still a few questions. If IDG already had their application approved by the USPTO, it may be harder for "infringers" to defend against it, even with the court ruling. Also, IDG may have legitimate claims to specific titles like "The Internet for Dummies" or even just "For Dummies," but anything "for Dummies" seems right out. As the federal court says, such phantom marks do not serve the public good, since there are too many potential infringing variations.

Pre-IDG "for Dummies" titles

[kevin805]

I did a search on Melvyl, which searches all the UC's, and also Stanford and a couple other universities' libraries. I found three pre-IDG uses of "for dummies" in the title of a book.

Author: Sclar, Deanna.
Title: Auto repair for dummies / Deanna Sclar ; Don Donesley, technical
advisor. New York : McGraw Hill, c1976.

Author: Sclar, Deanna.
Title: Auto repair for dummies / Deanna Sclar ; Don Donesley, technical
advisor. Rev. ed. New York : McGraw-Hill, 1983.

Author: Winenger, Dwight.
Title: Music for dummies / Dwight Winenger. Desert Hot Springs, Ca. :
Minuscule University Press, c1981.

Someone ought to buy the rights to "Music for Dummies" and use it for a music web site. I'm sure it would really piss off IDG, since it isn't going to be good for public relations to sue someone who was using their "trademark" before they were.

I found one book using "for Dummies" published in 1997. I'm curious what IDG has done about this. My guess is that it's non-commercial, and so out of their reach.

Author: Morebeck, Nancy Justus.
Title: Census for dummies : a quick guide "by example" to use indexes,
soundex, CDs and the census ; includes a soundex coding card /
by Nancy Justus Morebeck. Vacaville, CA : N. Morebeck, c1997.
Description: [7] leaves : chiefly ill. ;c28 cm.

Notes: Title from cover.

What's interesting is who is the author of the Auto Repair for Dummies published back in 1976:

1. Sclar, Deanna.
Auto repair for dummies / Deanna Sclar ; Don Donesley, technical advisor.
New York : McGraw Hill, c1976.

2. Sclar, Deanna.
Auto repair for dummies / Deanna Sclar ; Don Donesley, technical advisor.
Rev. ed. New York : McGraw-Hill, 1983.
3. Sclar, Deanna.
Buying a car for dummies / by Deanna Sclar. Foster City, CA : IDG Books,
c1998.
Series title: --For dummies.

She's now writing for IDG.