Trademark Screw-Ups of the Month

Eagles Sue Hotel California for Trademark Infringement: OK, so let me get this straight. The hotel originally opened under the name Hotel California in 1950. Eagles released their song in 1976. And now it's the hotel that's infringing on the band's trademark? Hmmm... At least they got some fresh publicity, I guess...

Prey for the Gods forced to change name after trademark complaint from Bethesda: It's a happy resolution to a silly problem. If you're caving to the demands of a larger company that claims you can't use the word "Prey" in the name of your game, if you thought about fighting this but chose not to, why in the world would you pick a name, Praey, that could STILL get you in trouble? You say you didn't want to spend your precious kickstarter funds, but you picked the name that was close enough for the bully to still have a viable argument that your new name is confusingly similar? Good news for the startup is that they were able to settle with Bethesda. But it's a trend that I see a lot. Someone gets a demand letter. They don't want to go into a direct fight, but they pick way to meet the demands and also insult the rich and powerful IP owner. This is typically a very bad strategy because rich and powerful IP owners usually do not enjoy being insulted.

N.J.'s Halo Farm sues Halo Top ice cream over trademark infringement: What's interesting is that both HALO FARMS and HALO TOP were registered as trademarks with USPTO. So the Trademarks Office didn't think they were confusing, HALO FARMS didn't oppose HALO TOP's trademark application, and now they're trying to go the litigation route. What is even more interesting is that there are two more registered trademarks, MEET THE MILK SO GOOD IT HAS A HALO and MRSD SHAVED ICE HALO-HALO SWEET & CREAMY owned by two completely unrelated companies. In these circumstances, HALO FARMS would have a hard time proving that they should be granted the monopoly over the word HALO.

The State of Trademark Protection in Fashion and Luxury: Some very trademarking stats here. In a nutshell, the number of trademark applications filed every year is growing significantly—both as a result of growing entrepreneurship and the rise of China, Korea and other countries.

Targeting your competitor’s brand name – shady practice or just business?: As much as the practice of using a competitor's brand to advertise your own is shady or in some jurisdictions even illegal from the trademark infringement perspective, to say that it never works is misleading.

In fact, the reason this practice is shady and illegal is precisely because, in many cases, it can be very effective since often, people who are looking for something from a specific brand are also open to learning about alternatives.

There is a legal theory called "Initial interest confusion" doctrine that is designed to prevent such misleading advertising. The idea is that even when the customer KNOWS that the ad does not come from the trademark owner whose brand was used as a keyword, the consumer ends up CHECKING OUT what they would not have checked out unless they were looking for the hijacked brand.

Usually, in order to win a trademark infringement case, the trademark owner needs to prove that customers are likely to be confused into believing that the competitor's products and services and those of the trademark owner's come from the same source. This is, of course, problematic, when those who click on the ad know, without any doubt, that the competitor's website is not linked with the brand they were looking for. The "Initial interest confusion" doctrine allows you to sue for trademark infringement even no confusion exists AFTER a visitor lands on the competitor's website.

Intel’s processor business was massive, but a lengthy legal battle with a former business partner exposed a major flaw in its CPU designs—a trademark flaw.: Wow, a fascinating story you probably didn't know about. And to know that trademarks played a significant part in the development of the CPU maker giants is even more fascinating.

New York steakhouse sues Scranton steakhouse for trademark infringement: Famous since 1887 or not, the only active trademark registration for "Carl von Luger" was registered in 2009 by the defendant, which incidentally is now considered incontestable—unless the plaintiff can prove that the registration was fraudulent. Which brings me to my favorite point, if you have a brand that you claim has been famous for 130 years, how in the world do you not trademark it for 130 years? A brand with even the minimal potential for becoming known and valuable must be trademarked ASAP.

Amazon sets sights on U.K. grocery with checkout-free trademark: Isn't it interesting how the media finds out about plans of successful businesses through trademark applications that they file? Apple, Amazon, Microsoft, and many-many others. Filing a trademark is usually the first step on the way from an idea to making this idea known outside the company. The reason is, the last thing successful businesses need is having to deal with someone stealing their brands. We're taught to emulate successful businesses. And in case of trademarks, it's really an easy and inexpensive thing to do.

Scalebound Trademark Renewed by Microsoft: The headline is misleading. You can only renew a registered trademark. What Microsoft did is they requested and received an extension of time to file the statement of use after Microsoft's trademark application was allowed. In the U.S., a trademark will not get registered until the applicant provides evidence of use to the Trademarks Office. But the applicant may request several extensions of time to file the statement of use, each extension lasting 6 months. During this period, the trademark application is still considered "live" and will prevent anyone else from getting the similar trademarks approved by the Trademarks Office. If the applicant fails to file the statement of use by the time the last extension of time expires, the application will be considered "dead"—and anyone will be free to use or even trademark it, unless the former applicant can prove that they somehow established a common-law right in the name, which is a lot harder than filing the statement of use to satisfy the Trademarks Office. We'll see how this one turns out.

Marvel reportedly trademarks 'Hail Hydra' after site redirects to Trump's bio on the White House website: The real question here is, how come they haven't trademarked it before. Knowing Marvel's strategy to trademark everything remotely trademarkable, you would think that the phrase that is found in many of their comics would have been trademarked long ago.

ENTOMBED Trademark Ruling Paves Way For New Music, Live Shows From HELLID, CEDERLUND, ANDERSSON: Yep. Another dispute among band members as to who can use the band name after the band composition changes. You would think that these bands would have management that would have some semblance of reason and business knowledge to make sure that the band name and logos are trademarked in such a way as to allow the band to carry on if a band member departs. It's not a question of which of the members is more important (although sometimes it is), it's a matter of HOW do you determine the rights of current and former band members to use the name of the band after there is a change in the band. It's really three things: (1) incorporate a company that will own the band's assets, (2) register the trademarks in the company's name, and (3) have a simple agreement that regulates what happens to band assets, including the trademark, if something goes wrong. It's not like it's a completely unpredictable scenario, is it?

Warriors' Daymond Green files for 'Dray Day' trademark: When it comes to trademarks, with hardly any hard costs, you get an asset that can easily be worth millions. When you look at trademarking as an investment that the potential of giving you the highest possible ROI, it all suddenly starts to make sense.