trademark wars

In Gilt v. Gilt Trademark Spat, There's Guilt Enough for Both Sides

Posted by Dale Buss on October 16, 2014 10:01 AM

Less-than-robust trademark protection by brands can result in the needless spending of a lot of money on legal fees—and even personal "heartbreak."

That's the lesson of a cautionary tale about a lack of trademark vigilance told by the Trademarkologist website in the case of a dispute between Gilt Groupe, the giant members-only discount retailer known for its "flash-sale" business concept that operates Gilt.com, and Gilt, a tiny Portland, Oregon, jewelry store.

It seems, according to the site, that the name "Gilt" was first used by Paula Bixel's jewelry store in 1998. But while registering it with the Oregon Secretary of State, Bixel apparently didn't log the trademark with the US federal government, which wouldn't have cost much to do.Continue reading...

see you in court

Chuck Amok: Nike’s Converse Sues Big Brands Over All Star Knock-Offs

Posted by Mark J. Miller on October 15, 2014 12:56 PM

More than a billion pairs (give or take) of Converse Chuck Taylors have been worn on basketball courts around the globe, but now the 97-year-old brand is hoping it can pull out a few wins in a totally different court: the court of law.

Nike’s Converse has filed suit against 31 companies, including such big names as Walmart, Kmart, Ed Hardy, Skechers and Ralph Lauren, claiming that its All Star trademark has been infringed upon and that imitations of its iconic athletic shoe must stop being sold, the BBC reports.

The legal action covers a lot of geographic ground since some of the companies are based in Australia, Italy, Japan, and China. In addition to the suits, Converse has also asked the International Trade Commission to ban imports and sales of the imitation shoes.Continue reading...

sporting brands

Nike Sues CrossFit Gym for Jumpman-Like Logo

Posted by Mark J. Miller on October 13, 2014 10:23 AM

The lawyers at CrossFit are big on protecting the company’s trademark. One lawsuit essentially put the Italian CrossGym out of business. It sued the National Strength and Conditioning Association for claiming that its program “causes injury at a high rate.” And Outside magazine felt the ire of CrossFit when it published an article entitled “Is CrossFit Killing Us?”

Now CrossFit is tangling with a bigger foe: Nike. That behemoth’s legal team is unhappy with a CrossFit gym in West Palm Beach, Fla., which Nike feels looks an inverted version of the Jumpman logo its Jordan Brand with Michael Jordan uses.

As the Washington Post reports, Nike has filed suit to put a stop to the image of the man balancing on a kettle ball at the CrossFit CityPlace gym. Nike claims the gym's logo will not only confuse but also causes “grave and irreparable damage.”Continue reading...

trademark wars

Trademark Watch: Taylor Swift, Apple, Spanx and more

Posted by Nicole Briggs on September 19, 2014 06:29 PM

By Nicole Briggs and Courtney Cantor Sohn

Taylor Swift gets unlucky in law with “Lucky 13”: America's sweetheart and her besties at American Greetings are battling it out in the courtroom with California-based Blue Sphere Inc. over trademark infringement and unfair competition for use of the name “Lucky 13,” which AG used for a Swiftian sweepstakes promotion. Blue Sphere owns a company called Lucky 13, and holds registered trademarks bearing the name for clothing, jewelry and paper products. The judge dismissed Swift and AG’s singing for summary judgment, so the case will move forward, and in a Swift-like way, she’ll probably just “shake it off, shake it off.”

Apple keeps USPTO busy: Between filing trademark applications for Apple Watch and Apple Pay, and patents for CarPlay, Touch ID and Deep Audio among others, Apple has been busy on the IP front. Apple Watch and Apple Pay came as a surprise, as the media-coined names “iWatch” and “iPay” never came to fruition. And yet, even though Apple Watch and Apple Pay are descriptive of the goods and services with which they seek registration, a no-no in the trademark registration world, they just may be able to see it through. By filing for design mark with their Apple logo, and disclaiming any right to use the words “PAY” or “WATCH,” they have added a distinction to the marks.Continue reading...

trademark wars

Trademark Watch: Honey Badger Don't Care, Fish Sauce Wars and more

Posted by brandchannel staff on September 16, 2014 06:02 PM

Creator of "Honey Badger Don't Care" Brand Sues for Trademark Infringement (UPI)

"Defendants not only sold infringing merchandise, but strategically chose to advertise their infringing merchandise by using plaintiff's video, which was generating millions of views. Defendants even provided a website link to plaintiff's video, right alongside their advertisements of infringing merchandise, causing customer confusion and ramping up unlawful sales in the process."  

In Court, a Trademark Battle Turns Personal for Two Fish Sauce Makers (Los Angeles Times)

"Last week's federal trademark trial between the two fish sauce companies pitted a family-owned, three-decade behemoth in the Asian food industry that sells five lines of fish sauce against a newcomer that prides itself on making a premium, artisan version that has become the darling of celebrity chefs. The testimony ventured beyond the legal technicalities of trademark law into the personal stories behind the making of the odoriferous sauce."Continue reading...

brand and bottle

Bud Light's Whatever is a ¯\_(ツ)_/¯ Brand Campaign

Posted by Abe Sauer on September 12, 2014 05:46 PM

As if sent by Snapchat, the new light beer campaigns accompanying a new football season are too often self-erasing. Remember Bud Light's campaign "theme" last football season? Miller Lite's? Coors'? We didn't think so.

Aside from occasional great Super Bowl ads and Bud's "Wassssssup?" home run, mainstream beer advertising is insipid, loud, fast, still often shockingly chauvinistic, overly complicated and, worst of all, brand interchangeable. Is it any wonder sales of craft and imported beer brands, which offer substance and character, have skyrocketed, especially among Millennials?

Now along comes Bud Light with "Whatever," perhaps the most appropriately named mainstream beer campaign ever. Luckily for Bud, its Whatever campaign is turning out to be somewhat memorable. Unluckily for Bud, it's because it's for the wrong reasons. And yes, Vanilla Ice—yes, that one—is involved. Continue reading...

trademark wars

Trademark Watch: Deadmau5 vs. Disney, Twitter vs. Twitpic and more

Posted by Courtney Cantor on September 5, 2014 05:05 PM

Now ear this: Canadian DJ Joel Zimmerman, better known by his stage name Deadmau5, is entangled in a trademark dispute with Disney after the media giant filed a 171-page document in opposition to the DJ’s US trademark registration. 

Disney has argued that the Deadmau5 mouse-shaped headgear, which Zimmerman wears while performing, is too similar to their staple Mickey ears. Though the two mice logos are reminiscent in their shape and structure, Deadmau5 has received trademark rights over the mark in over 30 countries, including the UK, Japan, and Italy.

Even so, a foreign registration should have little or no bearing on how the US Trademark Trial and Appeals Bureau (TTAB) decides the dispute. The TTAB will look at the marks as they are used in the United States, and any potential confusion in light of the American public. There are many interesting angles to the case.

Zimmerman has kept the public abreast of the case with a flood of tweets, telling Disney to “Lawyer up”, and posting his own cease and desist letter claiming Disney has infringed on his copyright to the song “Ghosts ‘n’ Stuff.” The copyright claim is unrelated, but it shows that Zimmerman is up for a fight—as is Disney, of course.Continue reading...

trademark wars

Chanel vs. Chanel: Coco's Brand Steps Off the Runway and Into the Courtroom

Posted by Courtney Cantor on September 4, 2014 04:04 PM

Chanel is ubiquitous—on the runway each fashion week, in its boutiques lining Fifth Avenue and Rodeo Drive, and now in the courtroom as it seeks to uphold its trademark rights against a little-known salon and spa in Indiana. Merrillville, Indiana, to be precise.

According to papers filed in the US District Court in Hammond, Indiana, Chanel Inc. has filed a trademark infringement action against Chanel’s Salon, arguing that the salon is benefiting from an association with the chi-chi brand’s reputation. The brand also claims it has sent cease and desist letters that have been ignored.

The fame of the Chanel trademark is hardly disputable, a factor weighing in the luxury brand’s favor. When the average consumer thinks of Chanel, images of that expensive interlocking C logo are likely to come to mind. The strength of the Chanel trademark is only one factor, however, that the court would consider in deciding whether the salon’s use is confusing to the public and therefore infringing on the brand’s rights.Continue reading...

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