Trademark Screw-Ups of the Month

LEGO Logo & LEGO Name Recognised As ’Well-Known’ Trademarks In China Yet another proof that China is moving away from favoritism to local businesses and toward recognition of intellectual property of world-famous brands.

Aaron Myers closes DCistNOW amid trademark spat, launches TheDistrictNOW This sounds like a unwritten chapter from Atlas Shrugged. A successful mogul shuts down his media empire reacting to the staff of the network's two New York sites voted to unionize. Essentially, the owner went on strike. But when a third party decided to start a website with a name confusingly similar to that of one of his websites, he was having none of it. A swift cease-and-desist letter—and DCistNow was no more. Love the irony: "DCist" and "cease-and-desist" kind of rhyme, too :)

Global trademark database developed by IP Australia As legal AI (artificial intelligence) is getting more and more sophisticated, we will be seeing more and more tools that make the life of business owners and trademark professionals easier. Can't wait to see and test TMLink in action.

Disney Accused Of Plundering ‘Pirates Of The Caribbean’ In Copyright Lawsuit Wonder if it's self-righteous arrogance or fact-based certainty on the part of Disney. On the one hand, it's hard to imagine that they would have let this whole thing become so public if they weren't sure they could win. Of course, it could be that the plaintiffs are too greedy and Disney is willing to take a chance on the amount of damages they'd have to pay but it could be a really dangerous gamble. On the other hand, it wouldn't be the first time when a company becomes so big and feels so invincible that they assume they're going to simply muscle their way to a favorable judgment because they are "too big to fail." I don't know the details of the case and certainly I don't know the true details about the way the script made it into the movie. One thing I know for certain: waiting for almost 20 years until you bring about a copyright lawsuit against a multi-billion-dollar empire will not make your story look more believable.

Coca-Cola accused of ‘corporate bullying’ as it threatens legal action against tiny New Zealand cafe because its name is too similar to the drinks giant’s Innocent Foods trademark If you have 10 daughters—are you being a bully if you do whatever it takes to stop one of them from being raped? Just because Coca-Cola is a huge business with billion-dollar assets does not mean they are supposed to just let others rip them off—even if proportionally the damage to Coca-Cola is negligible compared to the costs to the smaller players. There are some truly interesting stats in this article: the couple spent $40,000 to set up their business initially and are claiming it would cost them another $7,000 to come up with a new name. I really hope the $7,000 will include the fees to do a proper trademark clearance search and hopefully a proper trademark application so they could secure their new brand. If they don't do that and simply spend the $7,000 on new signage, it would mean they haven't learned anything from this lesson.

Polaroid vs. Fujifilm Over...Borders! On the one hand, it became much harder to register "functional" trademarks now compared to a few decades ago. In other words, if a feature is dictated by the functional requirements of a product, it's unlikely to be accepted as a trademark by the Trademarks Office. On the other hand, Polaroid's trademarks have long become incontestable. It will be curious to see who wins this fight...

Amazon files prepared food kits trademark at IPO Once you have a famous brand and massive market reach, it looks like anything you touch is destined for major success! I don't remember where I heard it, but I thought it was brilliant when Jeff Bezos was reported to have said that Amazon is not trying to predict what the next big thing is going to be next year and go in that direction. Instead, they're trying to predict which of today's goods and services will still be around in 10 years and focus on becoming the best at it. Well, guess what? People are still going to be buying food and they're still going to be wanting to have their kids have the best meal options in school. No wonder Amazon bought Whole Foods and is now entering the food kits markets.

Ninth Circuit Nixes Rap Label’s ‘Empire’ Claim Against Fox The court found that Fox's use of the word "Empire" did not constitute infringement of the "Empire" trademark owned by a music label Empire Distribution because the word "Empire", used as a title of Fox's show, was "artistically relevant to the themes and setting of the show." Under the second prong of the 2-part test, the court found that the title would not confuse consumers. What's important here is that the court went out of its way to find artistic relevance in the use of the name. To put it bluntly, the court said, "if someone uses your brand for an artistic purpose and your brand is artistically relevant to that artistic purpose, we're willing to disregard your trademark rights—as long as there is no actual customer confusion." This could create a dangerous precedent that would undermine the value of trademarks. But kudos to Fox's lawyers—they managed to do the one thing that is the utmost important thing in a courtroom. They convinced the judge that their client had a better story than the other side. Finding the law to justify the decision was secondary.

Weird Al' Yankovic Distances Himself From Other Weird Als With New Trademark Yet another way celebrities can turn routine trademark renewals into a PR opportunity. Good for you, Al!

City, brewery at odds over trademark dispute In Canada, the city could have just lawfully taken the name through the horrible mechanism of "official marks" that allows government-controlled entities to just claim whatever they want as their trademark, and such marks would cover any and all goods and services imaginable, forever, without any opportunity for existing owners to dispute or cancel such marks. Totally unfair and arbitrary. This atrocity doesn't exist in the U.S.—yet there are cities that apparently act as if there does. The city of Portland, OR, is at war with a small brewery that was successful in registering a trademark that the city now badly wants. It's good to see that other, larger breweries, are expressing their support to the small business in its battle with the city Goliath.

Open-source defenders turn on each other in 'bizarre' trademark fight sparked by GPL fall out I'm known for saying that worst fights always come from best friendships. The dispute about two factions of what used to be unified open source movement fighting each other is yet another proof of that. This is probably the best article that walks you through the history of the dispute. On another note, I find the words of Bruce Perens, the "grandfather of free software and open source," to be spot on in showing the difference between what open source was supposed to be and what anti-IP advocates have been trying to turn it into. Perens said, "Free Software developers give away a whole lot of rights. Now, you are telling us that's not enough. Having given the world our software on the most liberal of terms, we are not to enforce even that license?" You see, it's never been just about the money. What anti-IP people are really after is your right to control the use of what you had created and your ability to enforce it. It's your control, not your price tag, that they have as their target.

Michael Jackson's estate files trademark for museum Since MJ's death, I've often wondered how underutilized his brand is. I mean, I would have expected that it'd be exploited right and left to generate gazillions of dollars. But the use has been, let's face it, underwhelming. So in 2017, they decided it might be a good idea to have a Neverland Ranch trademarked in association with museum services? The King of Pop legacy deserves better than this!

DIDDY LOSES BROTHER LOVE TRADEMARK To Nashville Rocker Usually, when it comes to trademarking, if it's urgent, it's already too late. So Diddy, a.k.a. Puff Daddy, announces he might start calling himself Brother Love, and someone, a rocker Larry Florman, who had been using the name since 2000 and has released 2 albums under that name suddenly realizes he might just as well trademark the name! Question to Larry: "What took you so long?!"