February 2009
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Air-O-Matic’s claim of trademark infringement doesn’t pass the smell test

picture-2iPhone application developer, InfoMedia, Inc., filed a complaint last week, seeking a declaratory judgment from a U.S. District Court in Colorado.  The pleading seeks to end a dispute that has been bubbling up between InfoMedia and one of its competitors, Air-O-Matic (AOM).  What are these two companies fighting over?  Dominance in the cutthroat realm of iPhone flatulence apps.  (source)

Late in 2008, Apple decided to relax its draconian content censorship rules which govern the kinds of applications that could be offered for sale in its iPhone application store, allowing novelty applications that simulate farting noises.  The app store quickly filled up with new entries into this niche market.  Currently, a search for the term "fart" in the app store yields nearly 150 results, including such classics as "iToot", "Fart Box", and "Fart Piano" – to name a few.

AOM’s current offering is entitled "Fart Lighter – Pull My Finger, Pro Edition" and sells for 99¢.  On December 18, 2008, they filed an application with the United States Patent and Trademark Office (USPTO), seeking to register the phrase "Pull My Finger" for use in connection with "[c]omputer application software for mobile phones."  (taken from Federal Trademark Application, Serial No. 77,635,715.)  That application is currently awaiting examination by the USPTO, so AOM is not entitled to any presumption of validity or enforceability for the "Pull My Finger" mark, which has only been in use by AOM since December 13, 2008.  But that isn’t stopping them from asserting that other fart app developers have infringed on their trademark rights.

According to emails that were attached to InfoMedia’s complaint, AOM is upset about press releases and advertising that InfoMedia has put out, which contain the phrase "pull my finger." In particular, AOM believes that an alleged user quote that appeared in such advertising, stating that InfoMedia’s iFart Mobile application is "way better than Pull My Finger," should be actionable as a trademark infringement.  There are a few issues with AOM’s claim.

First, as stated above, the USPTO has not granted AOM’s request for registration.  AOM may have a serious uphill battle in front of them before they can march into federal court, waving an allowed trademark registration.  As InfoMedia’s attorney points out, the phrase "pull my finger" is arguably descriptive, if used in connection with simulated flatulence.  Since a descriptive mark cannot be registered unless the marketplace has attached some association between the mark and the registrant’s goods or services, AOM will have the significant burden of proving that association to the USPTO.  Their current application contains no such evidence, and given the number of competing fart app developers who are already using the phrase in Apple’s app store – all arriving near the end of 2008, AOM may never be able to prove that association, let alone that they were the first to claim it.

AOM will likely have other barriers to registration.  Who’s to say that the examining attorney won’t declare the mark "scandalous," because it is a vulgar reference to bodily functions?  Even if the examining attorney does not, when the mark is published for opposition, any member of the public can make that claim.  Any one of AOM’s competitors can also raise a claim during opposition, stating that they were the first to use "pull my finger."  In the end, any of these scenarios will leave AOM without a federal trademark registration.  Without a federal registration, AOM is stuck trying to bring a claim of infringement based on common law trademark rights – a long and expensive process that, again, puts the burden on AOM to prove that the marketplace has come to recognize "pull my finger" as referring to their goods or services.

Even if AOM can either get a notice of allowance from the USPTO or prove their common law trademark rights, they are going to have a hard time getting around InfoMedia’s argument that the "pull my finger" mark can be used in comparative advertising, without violating AOM’s rights.  Such use is commonly referred to as "nominative fair use" and is specifically allowed by the Lanham Act.  Trademark law is not supposed to impoverish the English language by declaring certain words and phrases "off limits."  It is supposed to prevent consumer confusion.  AOM’s trademark rights, if any exist at all, are secondary to that ultimate goal.

Perhaps there are details of this case that I am unfamiliar with.  AOM is certainly welcome to spend its hard-earned fart money attempting to take down competitors, but from where I’m sitting, their trademark infringement claim against InfoMedia stinks.

This story was originally published on The Legal Satyricon.

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