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trademark wars

Kale Yeah: David Beats Goliath as 'Eat More Kale' Beats Chick-fil-A

Posted by Mark J. Miller on December 22, 2014 02:02 PM

Eat More Kale Chick-fil-A Eat Mor Chikin

A Vermont artist who has been battling with Chick-fil-A for three years over a trademark issue has finally emerged as the victor.

The food chain wanted Bo Muller-Moore to stop silk-screening "Eat More Kale" onto T-shirts, sweatshirts and bumper stickers, due to worries that those few consumers that crossed paths with Muller-Moore would confuse his work with the company’s bovine "Eat Mor Chikin" slogan.

But last week the USPTO approved his trademark application to use the slogan, meaning Muller-Moore has won the battle—and the right to keep on making the merchandise and ignore the company’s cease-and-desist letters.Continue reading...

trademark wars

Trademark Watch: Wrigley, Jaguar, Burger King and more

Posted by Courtney Cantor on November 21, 2014 05:10 PM

What the….Fresh?! There is a frosty chill in the air as the “Icy Cool Breath”-maker Wrigley tries to block fellow gum maker and competitor Perfetti van Melle from registering the trademarks “WTF” and “What the Fresh” in the U.S. Wrigley is concerned the marks could be confused with its Winterfresh brand, and claims that they are too similar. Maybe Perfetti is treading on thin ice, but would you be confused?

Jaguar’s On the Road to EV Town: Or so we think. Recall that “Intent to use” trademark registrations filed at trademark offices around the world allow peeks and guesses as to a company’s future endeavors (remember Apple filing for Apple Watch in Trinidad and Tobago?) On October 30th, Jaguar sparked rumors when it filed for the mark “EV-type.” Auto experts seem to think the combination of “EV” and “-Type” mark a potential move into electric vehicles. We can’t be sure, but we’ll keep our eyes on the road for further indications.Continue reading...

trademark wars

Trademark Watch: Crayola, Burt's Bees, Jack Daniel's and more

Posted by Shirley Brady on November 7, 2014 02:26 PM

Crayola Sees Red Over Crayons: Hallmark Cards' Crayola brand filed suit in Kansas City (Hallmark's hometown) on Nov. 4 accusing New Jersey-based Alex Toys of using its name. The case involves the use of the word "crayola" on Alex's crayon wrappers and packaging such as the crayon tub above. Crayola wants any Alex materials using its trademark destroyed and a monetary reward for damages and legal fees. 

According to the suit, "The CRAYOLA mark has been used since at least as early as June 31, 1905 by Crayola and Crayola’s predecessors in interest with respect to the CRAYOLA marks on goods including, without limitation, crayons, chalk, crayon sharpeners, markers, modeling clay, art kits, art supplies, art materials, and many others. The CRAYOLA mark was coined by Alice Binney, the wife of company co-founder Edwin Binney, from 'craie,' the French word for chalk, and 'ola,' from 'oleaginous,' meaning oily." Now you know.Continue reading...

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...

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