Trademark Screw-Ups of the Month

Jägermeister faces lawsuit from outdoor wear brand I wonder if the outdoor wear brand (Alfwear) is aware of the KÜHL trademark registered in respect of wines by Bison Capital, LLC. If there's someone who should be upset at Jägermeister for using a name too similar to someone's registered trademark, it would be Bison. Trademark infringement requires likelihood of confusion, which takes into account not just the trademark itself but also the products (or services) that it covers. If Alfwear's and Bison's registered trademarks can peacefully coexist without creating such confusion, then so can Jägermeister's ad promote Jägermeister's drinks without causing confusion with an outdoor wear brand.

Marvel Opposes Puny Trademark Registration for “CallHulk” Movers Marvel is notorious for aggressively and vigorously defending their IP. I wonder if the law firm that took the moving company's money to apply for 3 trademarks that were guaranteed to attract the wrath of the comics giant bothered to explain to the moving company what they'll have to be dealing with.

Atari sues Nestle, says Kit Kat video game ad violates Breakout copyright Copyright doesn't protect the underlying idea behind the code, just the code itself. Same goes for the images: the actual game screens may be protected but with graphics as basic as this, it's not difficult to overcome attacks of copyright infringement. That's why there were dozens if not hundreds of breakout clones out there. I don't see how it could be trademark infringement either, because obviously Kitkat is not in the video games business, so there is virtually no likelihood of confusion either.

GUATEMALAN ARTISANS ARE GOING AFTER 64,000+ ETSY PRODUCTS FOR COPYRIGHT INFRINGEMENT Some countries limit the reach of copyright over useful articles where designs must be protected though design patents (industrial design) or not at all. It may limit the viability of the artisans' case.

Gene Simmons Shrugs Off Devil Horns Trademark Criticism: ‘I Can Do Anything I Want’ I already commented on this story when it was just beginning to unfold. You can read my original comment at: https://trademarkfactory.ca/tm-news-and-screw-ups/the-horns-kiss-the-devil-and-the-battle-for-the-hook-em-sign . With respect to Simmons's latest comments, again, like him or hate him, he knows what he's talking about. Trademarks are a great way to generate recurring income. Given that investment in getting your trademarks registered is virtually nominal compared to trademarks' actual and potential value, trademarking is definitely among Top10 best investments there are!

Supreme Court asked to nullify the Google trademark In my comment at https://trademarkfactory.com/tm-news-and-screw-ups/genericide-legal-assault-to-nullify-the-google-trademark-fails I said that it's only a matter of time before Google's trademark is found to have become generic. The court case that Google won at the appellate level is now going to be heard by the U.S. Supreme Court. The bell may toll for Google's brand much sooner than many have anticipated.

Microsoft v MikeRoweSoft and Iceland v Iceland: Five of the strangest trademark disputes Trademark disputes happen every day. Some are stranger than others. The article highlights 5 newsworthy ones, which is great. The real moral of the story is successful businesses take their brands seriously and do whatever it takes to establish and broaden their monopoly over the use of their brand and brands similar to theirs. Sometimes they succeed, sometimes they fail, most often they come to a settlement.

New Balance Wins $1.5 Million in Landmark China Trademark Case Not only is this one of the largest awards for trademark infringement in China, it demonstrates that China is gradually evolving from a hybrid of piracy haven and protectionist state that would always favor Chinese companies over large international brands. Looks like things are changing. No wonder more trademark applications are filed in China every year than in any other country. In fact, almost as many trademarks are filed in China every year as in all other countries combined. If your products or services have a potential market in China, you should trademark your brand there.

Hit cannabis brand Gorilla Glue slapped with trademark lawsuit When I was a little boy and would say the Russian version of the word "asshole", my grandmother, who adamantly disliked the use of bad words, would say, "There's no such word!" My response to that was, "What do you mean? We've all got one but you say there's no word for it?" We're witnessing a similar hypocrisy with multi-million dollar cannabis industry openly existing in the U.S. with dope brands popping up daily. And yet, you can't trademark your cannabis brand on the Federal level, because marijuana is not legalized federally in the U.S. This leads to unnecessarily difficulties that brand owners need to go through—without benefiting anyone. The public is not an iota safer because growers can't protect their brand in every state. Maybe it's finally time to realize that your ability to sell a product in each and every state and your ability to secure your assets are not one and the same thing.

Does Cateau Marmont Infringe Trademark of Iconic Los Angeles Hotel? Another example of a trademark dispute with a potential "parody in unrelated goods and services" defense. The general rule is that trademark infringement only exists when there is a likelihood of confusion between goods and services of two parties. The Trademarks Office and the courts are usually of the position that as long as the goods and services are unrelated, two parties can get away with using (and even registering) very similar (and often identical) trademarks. This rule is sound. Where it gets interesting is when one company is deliberately creating an association in the public's mind with some other brand—even if their products and services are totally different. What the courts should recognize in this situation is that intent matters. It's not just about whether the public will be mislead into believing that the second company's products and services come from the same source as products and services of the first company. It should also be about whether the second company intentionally attempted to take a free ride on the popularity of the first company's brand.

Long Trail Sues Burton Over 'Take a Hike' Trademark They may be primarily known for their beer, but Long Trail Brewing Company does indeed own a federal trademark registration for "Take a Hike" in class 25 for various apparel items. Which makes you wonder, did Burton simply not bother to check if the tagline had been trademarked previously or they had known it was and simply didn't care? The former would show deficiency in decision-making process around adopting new brands. The latter would show reckless arrogance. A case like that is the plaintiff's lawyer dream: the defendant's got deep pockets and it looks like proving infringements shouldn't be that much of a problem. Eventually, the question will be, at what point in the process will the parties want to settle?

General Mills loses bid to trademark yellow color on Cheerios box What can I say, it was definitely something worth trying. The possible reward would have been the ability to spot all competitors from placing their cereals in yellow boxes. The risk was losing a couple of thousand dollars in USPTO fees and legal representation. The best part for General Mills is that they didn't lose their main brand. All they did is they happened to broaden their trademark portfolio by adding another trademark application. It didn't go through. But all their other brands are still intact.

In-N-Out sues Smashburger over alleged ‘Triple Double’ burger trademark infringement When you register your trademarks, you really don't want to have to enforce them against copycats. You'd rather know you could win but rather not be in the situation to actually find out. In-N-Out has got several trademarks that cover DOUBLE DOUBLE. And while a consumer who frequents Smashburger would not be likely to be mislead into believing that their burgers are made by or with authorization from In-N-Out Burger, the whole point of trademark registration process is that likelihood of confusion is presumed when a similar name is used by a competitor in association with identical or very similar products or services. If you look it from this perspective, TRIPLE DOUBLE does look too close to DOUBLE DOUBLE for Smashburger to be able to get away with it.

HINDER Sues Former Singer AUSTIN JOHN WINKLER Over Trademark Musicians! For everything that is holy, when you form a band or when you invite a new member to join the band, please have an agreement that will specifically detail the rules about using the band's name, logo, and music if any of the musicians leave or if the band gets dissolved. It is really so much easier to settle these things early on, while you still like each other–as opposed to when you hate each other's guts!

Rubik's Brand launches US trademark fight On the one hand, the appearance of Rubik's Cube is dictated by the function of the product–and functional trademarks are unenforceable. On the other hand, the choice of colors really CAN be about identifying the source. So the real question is, is Rubik's Cube now a generic puzzle that anyone can make with impunity or is it something that signifies a specific source in the customers' mind?

Kim Dotcom Wants K.im to Trigger a “Copyright Revolution” Generally, I agree with Kim Dotcom that there needs to be a viable alternative for people who want to pay for content to do it in a way that is more convenient than what is currently offered to them. Often, there is content that can only be obtained through illegal downloads. Instead of forcing people to be pirates, it's a good idea to create some sort of a marketplace that would make it convenient for people to buy legitimate, licensed copies of content. However, Kim's idea has three problems. The first problem is of course the mechanism of policing content by rightowners. If they have to manually fish for each infringing file to "claim the file and change the price," it could end up being a logistical nightmare. The second problem is one of liability. I don't expect Kim Dotcom to waive his share of each and every transaction, and by profiting from distribution of infringing files, he would be setting himself up for a legal nightmare. Finally, the third problem is that people who are set on getting infringing content for free would be looking for ways to bypass whatever measures K.im would have to secure the files.

A&W Restaurants sues El Paso's Papa Burgers, claims trademark infringement The only question here is how did it even come to an actual lawsuit. A&W has owned "Papa Burger" trademark for over 50 years. They certainly have the funds to litigate this case. I assume that they had first sent a demand letter to the defendants. Why on earth the defendants didn't amicably settle this? The only reason I can think of is that A&W's initial demands were too high. But frankly, from the trademark law standpoint, this case is a no-brainer. The only question the judge would need to really decide would be the amount of damages payable to A&W.

TAYLOR SWIFT LOCKING DOWN 'THE OLD TAYLOR' ... Legally Speaking Some of these trademarks may be rejected if they're found to be 'ornamental,' which means that they do not function as trademarks, that is to help the market tell products of one person or company from identical or similar products and services of everyone else. Such rejections are common for tshirt designs. USPTO is vigilant in making sure that protection is being sought not for the design itself, but for the design's ability to act as an identifier of the applicant's products and services. Having said that, she's doing the right thing. If she CAN get these brands trademarked, she'll end up with a valuable asset. If not, she can live with it, since the cost of trademarking is relatively low—actually, barely noticeable compared to the potential value.

Conor McGregor limbers up for European trademark fight over ‘The Notorious’ The moment you realize the brands you were planning to cash in with are not trademarkable... With $100M, McGregor would possibly find a way around the parties who oppose his application, but this only shows you that as soon as the applicant is seen to have deep pockets, a LOT of people suddenly are on the lookout to make some money off of you and your brand. In Europe, the Trademarks Office does not check whether the trademark you apply for is confusingly similar with preexisting marks of others. It's the responsibility of the owners of those preexisting marks to oppose newer applications. And the vast majority of applications go unopposed because those owners are not constantly monitoring newly filed trademark applications. I can almost guarantee that if McGregor had filed his trademark applications before the megafight was announced—or better yet, before he became well-known in the MMA world—his trademark applications would have gone through without any opposition. Now, on the other hand, after so much money was spent on making sure that every living soul in the world knew who McGregor was and what brands he used, no wonder every owner of preexisting marks was waiting for the moment to say, "Hello, not so fast, this is actually our trademark. Have a good day..."

CRADLE OF FILTH Frontman Says GENE SIMMONS Is 'An Idiot' For Attempting To Trademark 'Horns' Hand Gesture So Gene Simmons has been getting massive free publicity ever since he filed his trademark application. Apparently, he's an idiot, as we're told by someone who is trying to get publicity by giving an interview about Gene Simmons. The irony of that...

Kodi Declares ‘War’ on Trademark Trolls Yes, trademarks are registered on a per-country basis. Just because you secure your name in the U.S. doesn't mean someone else couldn't trademark it in Canada. Which is exactly what happened here. That in combination with Amazon trademark enforcement rules makes it absolutely crucial to make sure that you own your brand in all jurisdictions where you have enough of a market. Trolls or not, it would have been infinitely easier for Kodi to secure its brand if they trademarked it right away, rather than wait for someone else to snatch it from under their nose.

Side Project, Modern Brewery settle lightbulb logo trademark fight The owner of the brewery that was forced to rebrand said that it was a painful decision because he had come up with the design years before they ever brewed a drop of beer. That's precisely the point. Trademarks are not about who comes up with the idea first. Trademarks are about who becomes known under that brand first—or who registered the brand as a trademark first. Sitting on a good idea for a brand gives you zero rights over it. If you have an idea for a brand but you're not ready to start a business just yet, trademark the brand as an "intent-to-use" trademark. This way, you won't have to make painful decisions in the future.

Another Craft Beer Brand Gets Bullied To Death Over Shaky Trademark Claims Which is why the lesson is: if you start a beer brand without having secured trademark rights in it, you should be prepared to lose your brand. With beer, the brand IS the business. The brand is what people are buying. Nobody can truly distinguish between thousands of variations. It's the brand that sells. By not owning the most valuable asset in your brewery, you're just not being serious about your business.

VICTORY: US Patent and Trademark Office APPROVES Stop the Islamization of America trademark While it's great to see that after the "Slants" decision of the U.S. Supreme Court other trademark owners may register trademarks that were previously considered "disparaging," it's never a good idea to draw the world's attention to a potentially scandalous trademark just before it's about to be published for opposition. It's just asking for trouble. When the Trademarks Office sends you a notice that your trademark application is about to be published for opposition, the best strategy is just to lay low and wait for the opposition period to quietly lapse. THEN, after it lapses and your trademark application is allowed, this is when you go to the press and celebrate.

Coachella Sues “Filmchella” for Trademark Infringement I understand Coachella's position that there is virtually no reason for anyone to call their festival Filmchella other than to parasite on the fame of Coachella. The article mentions that the demand letter did not cause Filmchella to rebrand, which probably means they think they can convince the judge the two marks are not confusingly similar. The standard for whether trademarks are confusingly similar is whether a potential customer with imperfect recollection of one trademark, when exposed to the second trademark, would be likely to conclude that two trademarks come from the same source. Here, even though the names are different, it looks like Coachella would be able to make the case that people may think that Filmchella is ran or was authorized by Coachella, thus causing confusion. We'll see how this plays out.

Starbucks, Brooklyn cafe settle spat over unicorn drinks Your trademark may not stop someone with deep pockets from attempting to use it without your permission. But it can result in quite a settlement... Given that Starbucks had to actually buy the company that had owned Frappucino trademark in the first place, it's kind of ironic that "Unicorn Frappucino" is basically a mashup of two brands that Starbucks did not come up with and had to pay up for.

Prelude To Disaster: Craft Beer Trademark Applications Have Doubled In Ten Years So market players realizing that they have a valuable asset to protect is a prelude to disaster? Are you suggesting that the craft beer industry can only succeed if craft beers of various breweries can be so similar as to cause confusion on the marketplace? I'm not buying that argument. Just because several (ok, many) smaller breweries wouldn't bother to check if their brand is available doesn't signal that the industry is broken. What is demonstrates is that many business owners are being duped by the media (this article being a good example) into believing that intellectual property is some kind of anachronistic hurdle that must be overcome.

Lawsuit over monkey's selfie ends in settlement Just because we love animals doesn't mean that animals have rights. They don't. This lawsuit is a mockery on the sheer concept of rights in general and copyright in particular. This settlement is unfortunate. There is nothing wrong with donating 25 percent of any future revenue to charities. What is wrong, however, is that this ridiculous issue remains unresolved opening the door for PETA bullies to go after other defendants.

Amazon’s ‘1-Click’ patent expires today, and soon you’ll be able to accidentally order stuff across the entire internet This patent is a perfect example how intellectual property can be at the core of a business's massive success. And to know that Apple's appstore was only possible because of the licensing deal between Amazon and Apple is just mind-blowing!