Trademark Screw-Ups of the Month

Ivanka Ordered To Testify In Trademark Dispute With Italian Shoemaker: Aside from the issue of personalities, and whether the shoes are indeed similar (they are very much alike), the question is whether Aquazzura has a protectable right in the overall look of their shoes, and if yes, protectable how. The headline states that it's a trademark dispute, which is not entirely accurate. Technically, Aquazzura claims rights in the design of their shoes not through a trademark but through "trade dress," which is how you protect a recognizable shape of the product itself or its packaging. It can be registered as long as the design is distinctive and not functional. However, from Aquazzura's claim it follows that they haven't registered the trade dress of this shoe. Interestingly, the only two entries for "Aquazzura" in the USPTO database are owned by one of Aquazzura's shareholders, a Monaco individual, Ricardo António Reis De Almeida Figueiredo, rather than Aquazzura Italia SRL. Failure to register trade dress doesn't mean it cannot be enforced, but the path to victory would be more difficult. It would be interesting to follow this one.

Surfwear Brand O'Neill Seeks to Block Thaddeus O'Neil's Trademark On the one hand, just because you share the same last name doesn't mean you can use the name as a brand—if your name is too close to a registered trademark. On the other hand, no one can prevent you from using your own name. Usually, disputes like this result in some form of coexistence where specific steps are defined to ensure that consumers don't get confused which brand they're buying from.

Trump's effort to make America great must include strengthening intellectual property rights 100% agree with this statement: "...the cost of obtaining and defending an American patent is at an all-time high, while the value of a patent is at an all-time low." Intellectual property was designed to help the little guy. Often, IP is the only thing that allows the little guy to compete with big guys, who—with all their money they can dump on advertising and litigation—don't really need protections conferred by intellectual property as much as little guys do. Patents take forever to get registered, they don't last very long, they cost a fortune to get, examination of patents creates a whole lot of uncertainty as to what would be patentable and what wouldn't—and, to add insult to injury, enforcing a patent is outside of what most small businesses can afford. To start with, let's stop calling anyone who dares enforce their IP rights a troll!

HAWKWIND WIN NIK TURNER TRADEMARK CASE Another band. Another dispute around the band name. Another lesson to musicians who want to form a band: if you give your band a name, decide early who will own the name in case your paths part ways. Otherwise, it's going to get ugly. It always does.

Gucci VS Forever21: Trademark Infringement or Takeover? Looks like after Forever21 was sued by Adidas and Gucci, they suddenly became a fan of suing others for using stripes. Forever21 is not really trying to prove that Gucci infringes on Forever21's IP. What they're seeking is a declaratory judgement that would prevent Gucci from using Forever21 for trademark infringement over the stripes. This is a usual tactic when you receive a cease and desist letter and you disagree that it has substance. Yet, you don't want to continue business as usual knowing that there might a threat lurking out there. So instead of waiting to be hit with a lawsuit, you make the preemptive strike and seek a declaratory judgment that—if you succeed—will put an end to claims against you.

Bill Cosby Filed for New Fat Albert and 'Hey Hey Hey' Trademarks Before Sexual Assault Trial Life goes on. Even when you're being made a pariah in the public's eye, you still want to protect your assets. Trademarks among them...

Order in Greg LeMond lawsuit temporarily stymies alleged 'cybersquatters' Sometimes, UDRP (Uniform Domain Name Resolution Policy) is the easiest way to deal with cybersquatters. But if you want to send a clearer message, sometimes you have to take them over to court. This is exactly what was done in this case. So instead of going for domain names as such, the court decision is targeting people and their actions, preventing them from registering more domain names that would infringe on LeMond's IP. Failure to comply with the court decision may lead to contempt charges.

Vogue's Parent Company Sues Jewelry Brand Over "Vogue" Trademark The issue would be down to whether a fashion magazine and a jewelry brand are close enough products for consumers to be likely to be mislead into believing that both the magazine and jewelry come from the same source. Trademarks don't give you a monopoly over the name itself. They give you a monopoly over the mental link between your name, logo, or tagline AND the specific products and services you use (and have registered) your trademark for. Vogue (magazine) is not making any jewelry. But the question is whether their brand is famous enough to spill over onto other related industries and if yes, how far-reaching that spillover effect would be.

South Carolina takes action to trademark 'Spurs Up' If your tagline or slogan resonate with your audience, you owe it to yourself and your business to protect it. Really, hardly anything is more valuable than your customers' loyalty and attention. If your supporters value your tagline enough to remember it and chant it back to you, you know you've got an asset. Losing it will cost you lots more compared to what it would cost to protect and own it forever.

Why you can trademark a Toblerone but not a Kitkat As much as the article is trying to rationalize the decision (KitKat's shape is hidden by the packaging at the time of purchase, the shape is less distinctive compared to triangular shape of Toblerones), the fact remains that these decisions (whether or not a brand is truly distinctive) are extremely subjective. I've said before that KitKat's shape is really somewhere in the middle between a generic chocolate bar with grooves (most of them are) and a Tobblerone that has a very recognizable shape. The question is which of the two extremes would KitKat be closer to. And the answer would be different from one person to the next. Which is best demonstrated by the opposite decisions that courts and Trademark Offices of different countries reach in virtually identical circumstances (Loubotin's red soles would be the perfect example).

Homophobe wants to trademark the rainbow because it’s been ‘raped’ by ‘deluded’ LGBT people As unfortunate as many people may find the hijacking of the rainbow colors for a political agenda (whether or not you agree with the agenda itself), it would be impossible to "reclaim" it through trademarking. First of all, a trademark must have an owner. "Christians" is just too general of a group. And any attempt to localize the owner through a particular entity would result in the same complaints about usurpation. Second, trademarks can only be registered with respect to and enforced against specific products and services. What this means is that the mere fact of trademarking the rainbow colors does not automatically mean that no one can use rainbow colors ever again. Only if such use is with respect to the same or substantially similar products and services as those for which you managed to trademark it. It might have been possible to get the trademark on all sorts of merchandise (tshirts, hats, etc. and entertainment events in the form of parades etc.) if not for the fact that a trademark must be capable of distinguishing products and services of the trademark owner from identical or similar products and services of everyone else. And this is the third and the biggest problem of all here. The ship has sailed. Like it or not, lots of people associate rainbow colors with LGBTQ movement. They may not own it legally but they have managed to turn what used to be an innocent symbol and turn it into something that symbolizes the opposite of innocence. Which is precisely what usurpation claims are about. To turn back to trademarking laws, while Christians would not be able to reclaim the rainbow to own it as their trademark, the way to reverse what they believe is usurpation would be from turning the rainbow back into the realm of non-distinguishing signs. In other words, if the rainbow symbolizes not one, not two, but dozens, hundreds, and thousands of completely unrelated things, then it no longer symbolizes anything in particular. If LGBTQ activists and anti-LGBTQ activists use the same imagery to root for their ideas, the imagery stops being representative of either of them. Definitely not an easy thing to do but surely more realistic than trademarking the rainbow at this point.

British Weetabix seized by New Zealand customs in breakfast bowl battle with rival It's very difficult for companies to secure the same brand throughout the world. Despite all efforts to come up with a unique name and to trademark it everywhere early on (which only bigger players usually do), there's usually some preexisting trademarks in at least some countries that make it problematic. So the brand owner's dilemma is: do I keep looking for a brand that's perfectly unique in every single country (which, most often, is a losing proposition); do I use one brand in some countries and different brand in other countries; or do I use the same brand and only protect it where I can. No option is perfect. In this case, Weetabix chose the third option and got caught. Interesting how they're going to deal with it now.

Up Energy Drink accused of trademark infringement Not only is Up Energy Drink confusingly similar with Uptime Energy, they're even using a logo based on the same idea of an up arrow in the middle of the image. So no surprise that Uptime Energy is going after Christian Guzman. What is surprising is that Christian Guzman didn't see it coming.

Summerfest sues Red Lobster for trademark infringement in slogan If you're wondering what kind of supercreative slogan Red Lobster "borrowed" from Summerfest, it's "Lobster and Shrimp Summerfest." To call it a slogan is going a bit too far, but apparently, Milwaukee World Festival, Inc. has owned the SUMMERFEST trademark for "arranging and conducting an annual summer entertainment festival" since 1972. The question here is whether the trademark is still enforceable, given that a Google search for SUMMERFEST returns over 5 million results, most of which have nothing to do with Milwaukee and its annual festival. What could have been a distinguishing name back in the 1970s might have become generic by 2017. Unless Red Lobster didn't think this through at all, they probably thought that they'd be able to get Milwaukee World Festival off their back in exchange for the promise not to attack the validity of the festival's trademark. Now that the lawsuit is brought against Red Lobster, we'll have to wait and see how things develop.

Kroger sues Lidl for trademark infringement "Preferred Selection" is indeed similar to "Private Selection." The logos are somewhat similar, too. The real question is, how strong is the "Private Selection" brand in terms of enforceability, given a potential argument that "private selection" merely describes a feature or characteristic of Kroeger's products and services. Lidl is not a whipping boy who's going to quietly take it. It would be interesting to see how far this dispute will go.

Trademark jurisdiction becomes focus of Cleveland Indians’ Ontario court case Just when the U.S. Supreme Court has found that hurt feelings of some people do not trump commercial rights of brand owners, there's this push in Canada in the opposite direction. Canadian Human Rights Tribunals are notorious for being venues where you can get bullied for a totally made-up reason without the possibility of getting the malicious claimant to pay for the time and other resources you are wasting responding to their vexatious claim. Unfortunately, we are seeing more and more cases of misguided "snowflake" activism where the go-to solution for those brought up in the trigger-warning environment is to ban all instances of speech and expression that may potentially hurt their feelings. To witness it in a country that claims to respect freedom is sad and, frankly, disappointing.

Jollibee fast food chain loses 'jolli' trademark battle to Philippines' adult entertainment king Trademarks are different: Jollibee vs. Jolliville. Services are different: restaurants vs. real estate. Plus on top of that, there was a legitimate reason for the real estate firm to choose a name that starts with Jolli: its founder, the night entertainment king, happens to be named Jolly. So no wonder that Jollibee was unsuccessful in challenging that mark.

Swedish neo-Nazis lose trademark battle with German deep-freeze firm What's interesting here is not that Nordfrost, a deep-freeze company, was able to force a German neo-Nazi out of using Nordfront brand. It's not even that the names are not identical (can you spot the one letter difference?) and that neo-Nazis are not in the deep-freeze business. It's not even that neo-Nazis agreed voluntarily to no longer use Nordfront in their promotional materials. What's fascinating is that, according to the article, the deep-freeze company has their trademark registered for "marketing materials." They don't. Their trademark is registered, among other things, in class 35 for advertising, for this doesn't mean advertising your own products. It means running an agency that sells advertising services to others. I doubt the courts would hand the victory over to the deep-freeze company if it ever got that far. But at this point, it's a non-issue, I guess.

Nintendo Applies For Nintendo Check-In Trademark Wow, what an amazing logo they came up with. Super memorable, super smart, super tongue-in-cheek. Definitely one of the best location pin trademarks I've seen.

Launched July 8, 2017: New USPTO Rules to Clear “Deadwood” in the Federal Trademark Registry The underlying idea behind trademark registrations in the U.S. and Canada is that trademarks that their owners are no longer interested in (often referred to as "deadwood") should no longer prevent others from using such brands. The problem with that is finding the balance between giving trademark owners enough of a stretch to own their trademarks without having to prove that they're still using them, while also giving the rest of the public an opportunity to "kill" a dead trademark. USPTO has just released new rules to shift the balance slightly to the side of making it easier to kill unwanted trademarks. For brand owners it only means one thing: make sure you don't miss any deadlines and make sure you properly document the use of your trademark for all products and services listed in your trademark application.

Design of Mother Teresa's sari trademarked to combat "misuse" No matter what you think of Mother Teresa, whether you cherish her accomplishments or think of her as a tool in someone else's hands, whether you think altruism is good or bad, Mother Teresa was, first and foremost, a BRAND. What "Google" is for search engines, "Mother Teresa" was for altruism. And brands—even when the brand represents altruism—need to be built, protected, and, eventually, monetized. Trademarking the pattern of her sari is a pretty clever idea—as long as it indeed symbolizes Mother Teresa. Idols and myths, just like brands, only endure as long as their use by the masses is centrally controlled. Religions do this, rock stars do this, armies of PR agents do this. And trademarks provide a great vehicle for doing just that.

The Supreme Court Explains Trademark Registration, And It's The Best Ever Amazing when practically the entire story is just a long quote from the Supreme Court decision, but here it is. Indeed, Justice Alito wrote an amazingly clear and concise explanation for the reason that trademarks are protected, and if you don't want to read the entire judgment, you should at least read the summary quoted in this article.

What Filmmakers Should Know About Featuring Logos & Trademarks In An Independent Movie The myth that you can't show logos and trademarks in a movie persists for two reasons. On the one hand, most people do not understand the concept of "use" within the sense of the trademark law. You can only infringe someone's trademark if you are "using" it. And "use" has a very specific meaning with trademarks. You are only "using" a trademark if you are using it to offer or sell products or services that are identical or substantially similar to products and services for which that trademark is registered. Simply mentioning a trademark is not "using" it. Having a protagonist wear a t-shirt that features a big Nike Swoosh, is not infringing Nike's trademark rights—because you are not "using" their trademark. But, as I said, most people don't know this and are simply playing safe.

On the other hand, the bigger reason for the myth is insurance companies. They care less about your legal arguments as to whether having the protagonist wear a Nike shirt constitutes "use" in the trademark law sense. They care more about minimizing risks or making you pay a higher premium. So it has been their policy to basically say, "Doesn't matter if you can get away with this, we want to make sure that this issue never even has a chance to arise. If you want us to insure your movie for a reasonable amount, you will remove everything that can potentially become an issue. You will censor yourself to all but eliminate all risks. And if you insist on leaving things like that in, it's OK. We'll be happy to sell you the same insurance. It would just cost you a lot more.

You 'jacked' my trademark, Kingston rapper scolds Coca-Cola Interestingly, the tagline "OUT FOR A RIP" was indeed properly trademarked for various items, including, stickers, drinking cups and beer steins. It's not the same as a beverage or a bottle, but it's very close. History shows that if you can orchestrate a PR campaign revealing how a big company ripped off the little guy, it can be a lot more effective compared to sending a demand letter in secret. That's what happened with the video United Breaks Guitars (https://www.youtube.com/watch?v=5YGc4zOqozo) that went viral with over 17 million downloads. That's what I suspect will also happen here—unless Coca-Cola nips it in the bud by reaching out to Brendan Richmond before his video gets too much attention. But even if he doesn't force Coca-Cola to settle, he's already won: by getting the media attention, which, for a musician, is more valuable than money.

He is a monkey': Federal appeals court appears doubtful that a monkey who took a selfie can sue 
Attacks against intellectual property continue from different fronts. When the usual entitlement arguments don't work, they want to turn the system of IP protection into a circus by filing absurd claims that would, if successful, vest copyright in a monkey. By definition, copyright only subsists in creative works. It requires a degree of creativity and originality over a mechanical, thoughtless action. In fact, monkeys have been used as an example of what CANNOT be protected by copyright. "If a monkey can do this, it's not creative enough to deserve copyright protection." Don't be fooled though. In essence, by equating authors to monkeys, this argument ab absurdo is not about protecting monkeys' rights. It's about destroying rights of humans.

Uh Oh: Writer Suing Chelsea Clinton for Copyright Violation As much as I'd like to gloat over Clinton's predicament, this lawsuit doesn't appear to be very strong. Ideas for books are not protectable by copyright. The idea of having a book with inspirational quotes is hardly original. The fact that there is some overlapping in the quotes is to be expected. Neither Christopher Janes Kimberley, nor Chelsea Clinton own the quotes they use in their respective books. They are allowed to use those quotes through the fair use doctrine. The only copyright ownership would apply to the selection and arrangement of such quotes. And using 3 quotes is probably not sufficient to prove that Clinton infringed copyright.

The hunted becomes the hunter: How Cloudflare’s fight with a ‘patent troll’ could alter the game This is my pet peeve. Using a right recognized by the government to obtain a competitive advantage is NOT trolling. There is NOTHING wrong with enforcing trademarks, patents, or copyrights. Those who call people and companies involved in such enforcement lawsuits "trolls" simply hate the idea of intellectual property. The REAL problem are idiot patents that should have never been issued in the first place. It's truly unfathomable that in 2017, when data stored by Google, Facebook, and the NSA about virtually everything is measured in exabytes (millions of terabytes), when AI is all the rage, patent examination is still done pretty much using the manuals from 19th century. With so much subjectivity that goes into patent searches and examination, no wonder, we end up with some ridiculous patents. But the solution is not to attack those who were successful in obtaining those patents when they try to actually get some value out of their efforts. The solution is in radically changing the examination process and—even more importantly—simplifying cancellation of wrongfully issued IP.

At This Point, Amazon Can Crush a Company Just By Filing for a Trademark In Amazon's case, the trademark application is, of course, just a way to tell the world about their plans. Unlike with Amazon and other giants, the world is not watching what little Johnnys and Jennifers are doing with their small businesses. Yet, intellectual property laws are designed to help the little guy. Big guys don't really need intellectual property as much: they have all the advertising and litigation money they need to gain a competitive advantage. Not that there is anything wrong with being big, megasuccessful and having boatloads of money—but it's the small businesses and startups with no extra cash lying around that can make the most out of having their IP protected. Often, IP is the only thing that gives them a chance to compete. Even more often, IP is the only reason small businesses and startups get bought up by the big fish. Well-protected intellectual property is often what makes a difference between being bought up and having your business stolen from you.

Report: MLB Considers Trademark Dispute With Overwatch League Over Logo Similarities It's easy to oppose someone's trademark. It's even easier to request for an extension of time to oppose someone's trademark. The real question here is, does MLB really think that the logos are confusingly similar or is it just an attempt to say, "We're watching you. Let's see if we can get our way because we're big and strong and you are not so much." While the idea behind logos is the same (a while outline of a player separating two contrasting colors of the background), the real question is, how likely is it that the public would be confused into believing that goods and services that come from Overwatch League and those that come from Major League Baseball come from the same source. I don't know much about baseball or Overwatch, but to me, it doesn't look like something a reasonable person would confuse.

Trademark infringement: Wrigley sues e-liquid maker This issue arises more and more often. Generally, a trademark only protects the brand in respect of products and services for which the brand is used by its owner. In theory, anyone may use the same or similar brand to make or sell completely unrelated products or services under that same brand. But then, there's the issue of famous marks which—at least in those countries that recognize the concept—allows their owners to enforce their famous marks against those who use them even for unrelated products and services. This only brings up an issue of unfair competition, which may be separate from straightforward trademark infringement. In other words, even if using the brand of a chewing gum in respect of e-juice is not trademark infringement, it surely is about getting a free ride on a brand that's not yours. The idea that the same trademark may be owned by two separate entities in two separate industries is based on assumption that the public would not link the two together and that one company is not using the brand in order to parasite on the fame of the other. Here, the chewing gum giant would have no problem proving the intent to take advantage of the brand that is unmistakenly linked in the public's mind to Wrigley—and something tells me that Chi-Town Vapers' lawyers would not be successful in convincing the court to let them off the hook based on the difference in products and services.

Jeffree Star Sued For Copyright Infringement... Again With trademarks, it doesn't matter when you "develop" your brand. What matters is when your brand has reached enough eyeballs on the market for it to be treated as prior use. In fact, that's precisely what "intent-to-use" trademarks are for: they allow you to protect your brand BEFORE it reaches any noticeable level of notoriety. That's why when you come up with a great idea for something that can be trademarked, the right strategy is not to wait until someone beats you to implementing it. The right strategy is to file for a trademark and then figure out how to monetize your great idea. I don't know all facts of the case. If Jeffree indeed stole Lunatick's design, then he would quite deservedly be found to have infringed Lunatick's trademark. But if, as he claims, he had come up with the idea first, it would just serve as a reminder that even though U.S. trademark system is not "first to FILE", it's not "first to THINK of it" either. It's "first to USE." If you know you can't launch your brand immediately, don't take your chances. Apply for a trademark.