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...

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...

trademark wars

Trademark Watch: Ice Bucket Challenge, Hershey, High Times and more

Posted by Courtney Cantor on August 29, 2014 08:04 PM

Since the end of July, the ALS Association, which fights Lou Gehrig’s disease through research, care and education, has raised over $100 million thanks to the viral Ice Bucket Challenge. Now it seeks to use that money, in part, to trademark the phrase “Ice Bucket Challenge” in connection with charitable fundraising.

In deciding whether ALS’s application for trademark registration will be successful, the United States Patent and Trademark Office (USPTO) will take into consideration the Ice Bucket Challenge in light of how consumers view it. Although the association between ALS and the Ice Bucket Challenge is as clear as the water in the bucket, others have also begun to use the phrase to create awareness for different causes. For example, Matt Damon used the Ice Bucket Challenge to promote his clean water organization, Water.org, and several other "challenges" for charitable causes have popped up over the last month. 

Some argue that the USPTO should not allow the ALS Association to register the mark because it will prevent other charities from raising money by using the Ice Bucket Challenge. However, even if the association is granted trademark rights, charities should not get cold feet. After all, there are plenty of creative ways to get around this by still taking inspiration from the success of the Ice Bucket Challenge. Warm Water Challenge, anyone?Continue reading...

trademark wars

Trademark Watch: Coinye Gets Caught, Seattle's 12, Washington ____ and more

Posted by Nicole Briggs on August 22, 2014 07:14 PM

From the lyrics of Yeezus himself, “Oh when it all, it all falls down, I’m telling you all, it all falls down," and earlier this week it all fell down for the virtual currency Coinye in Kanye West’s triumphant trademark-infringement lawsuit.

Back in January, the famous rapper sued websites involving the operators of Coinye, the logo for a web-based currency. Coinye featured a cartoon likeness of Kanye West, in half-man, half-fish form, wearing West's signature shutter sunglasses.

On Wednesday, West won a default judgment against the operators of Coinye when the defendants failed to timely respond to the allegations, and permanently banned them from the “Kanye West” mark or any parody of it. In July, cases against four other defendants were settled out of court.Continue reading...

trademark wars

Trademark Watch: Redskins Appeal, Tesco Dashed, Don't Cross Warner Bros.

Posted by Jerome McDonnell on August 15, 2014 04:04 PM

It's a busy time for trademark watchers, as brands including the Quaker Oats-owned Aunt Jemima and the Clif and Kind health bars have found themselves tussling over trademarks. Some other trademark news of note:

As expected... The Washington Redskins are appealing a federal decision to cancel the team's trademarks. “We believe that the Trademark Trial and Appeal Board ignored both federal case law and the weight of the evidence, and we look forward to having a federal court review this obviously flawed decision,” Bob Raskopf, trademark attorney for the Washington Redskins, stated. Fierce lobbying on both sides includes a new video supporting the team's controversial name, counteracting a video during the Super Bowl protesting the name.

Tesco hopes dashed: European supermarket giant Tesco was rebuffed in its attempt to trademark the blue dashes underlining its iconic wordmark, as the UK's Intellectual Property Office ruled that the logo's Tevrons (as Tesco insiders call them) were too simple and not distinctive enough to merit trademark protection. While simplicity may be the ultimate sophistication, for trademarks, it's better to be complicated.

Who wants to live forever? In the midst of the mourning over the passing of Robin Williams and Lauren Bacall this week, Mondaq.com took at look at the actors' respective personal trademark registrations and praises both for savvy personal brand management. After all, patents expire and copyright runs its course—but (only) trademarks can last forever...Continue reading...

trademark wars

Clif Bar vs. KIND: A Clear Case of Trademark Infringement?

Posted by Mark J. Miller on August 14, 2014 11:41 AM

Health bars claim to be good for everyone, but that's not the case when it comes to trademark claims. 

KIND has taken Clif Bar to court, claiming that the latter’s new Mojo bars bear a little too much resemblance to their own packaging, Lexology reports. Clif, of course, “disputes that the packaging of KIND bars is distinctive,” the site notes. KIND asked the court to temporarily stop Clif from selling the Mojo bars, which are packaged in a clear wrapper, like KIND bars, while the suit is underway, but the court has declined. KIND has appealed that decision.

While the court discovered that Clif marketers thought the KIND packaging was “best in class” when the Mojo design was created, it also found that a few other health bars had similar designs and that consumers weren’t confused about whether they were buying a KIND bar or not when they purchased a Mojo bar.Continue reading...

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