trademark wars

Trademark Watch: Dunkin' Donuts, GM, Mike Gundy and more

Posted by Jerome McDonnell on October 31, 2014 04:41 PM

Dunkin’ Donuts settles the Cronut debate, calls it like it sees it: In this case, the chain's croissant-doughnut hybrid is definitely not a Cronut, which we all know is the trademark of Monsieur Dominique Ansel. Rather, Dunkin' Donuts decided on a purely descriptive naming approach, and christened its new pastry the “Croissant Donut.” While Ansel received plenty of criticism for asserting rights to the word Cronut, this situation serves to perfectly illustrate what a trademark is and is not. A trademark is a name associated with a specific product from a particular provider; it is not an attempt to monopolize the actual product or how that product can be made. As Ansel puts it on his Facebook page, “McDonald’s has a burger named the Big Mac and Burger King offers one known as the Whopper. Neither prevents the other from serving up a hamburger.”

Meanwhile, brand and trademark folk will gladly weigh in on the merits of “Cronut” (a suggestive name) vs. “Croissant Donut” (a purely descriptive name). While there should only be one Cronut for this type of pastry, the Dunkin’ Donuts “Croissant Donut” will have to contend with versions from Jack in the Box, Japan's Mister Donut, Rich's Food Service, Disney (available at Epcot), and Moe's Doughs Donut Shop in Brooklyn—to name just a few. Continue reading...

trademark wars

The Cronut Contenders: Dunkin' Donuts, Crumbs Bake Shop and #NotaCronut

Posted by Shirley Brady on October 27, 2014 07:02 PM

Just as New York-based pastry chef Dominique Ansel is launching his new book—called, fittingly, The Secret Recipes—comes news that Dunkin' Donuts is launching a Croissant Donut, which sounds an awful lot like Ansel's now-trademarked Cronut.

Only, as the Associated Press reports, Dunkin' doesn't want anyone calling it a cronut.

As John Costell, Dunkin's president of global marketing and innovation, told AP's Candice Choi

"that bakers around the country have been mixing doughnuts and croissants for at least 20 years. He said Dunkin' is constantly tracking consumer and bakery trends and has been looking at pastry 'combinations' for several years now.  'Are we copying a specific bakery in New York? The answer is no,' Costello (told AP)."

According to Choi, the Not-a-Cronut will be available in November for a limited time at $2.49 each (vs. Ansel's $5.00 Cronuts), and follows the brand's test of "a croissant-doughnut in South Korea it dubbed a New York Pie Donut" last year.Continue reading...

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...

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...

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