Posts Tagged: "trademarks"

The cover of the October 2010 edition of O prominently features the words “Own Your Power” superimposed over a picture of Oprah. The use of this phrase sparked a trademark infringement case which Oprah has recently defeated on appeal. On September 16th, a panel of judges from the U.S. Court of Appeals for the Second Circuit (2d Cir.) struck down an appeal brought by a party holding trademark rights for the limited use of the phrase “Own Your Power.”

The California state law states that state park concession contracts are prohibited from providing a contracting party with trademark or service mark interests for names associated with a state park venue. Any such contracts offering trademark or service mark interests will be considered void and unenforceable under the terms of this law as of January 1st, 2017. Concessionaires who make a legal claim to trademark rights on names associated with state park resources will be disqualified from further consideration as a bidder on California state park concession contracts.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

William J. Kelly and his television production company RevDigital had secured the trademark rights to “media malpractice.” U.S. Trademark Registration No. 5027942 was issued as a standard character mark to Kelly and it is listed on the Principal Register. It protects the use of the term on entertainment services such as the production and distribution of ongoing television programs in the field of politics, entertainment, media, pop culture, news, commentary, criticism and subjects of general human interest. It also protects the use of “media malpractice” in continuing programs which are delivered by radio, podcast, television, cable, satellite, Internet, mobile or electronic distribution.

The USPTO, through its Trademark Trial and Appeal Board (TTAB), denied a standard character mark for “The Slants” to be used with live music performance entertainment on the basis that the term is a highly disparaging reference to people of Asian-American descent. The writ of certiorari was issued for this case after the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) issued a decision last December in In re Tam, an appeal filed by Simon Tam to overturn the TTAB decision. In that case, the Federal Circuit voted 9-to-3 to vacate the TTAB decision to deny the trademark to Tam because § 2(a) of the Lanham Act was unconstitutional “under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.” The majority opinion issued by Federal Circuit noted that the First Amendment protects even hurtful speech and that the federal government has offered no legitimate interests justifying § 2(a) of the Lanham Act.

There are a large number of trademarks owned both by the Cubs and by MLB which are being infringed upon, according to the suit. The Cubs want to prevent the sale of goods including indicia associated with the team including famous former players like Ryne Sandberg and Ernie Banks; references to team successes like 1908, the last year in which the Cubs won the World Series; traditions like the “W” flag or “Go Cubs Go”; broadcast personalities; and famous Cubs managers. The Cubs are also looking to block goods depicting Wrigley Field as the Cubs own word and design marks related to the stadium, its iconic marquee and its ivy-covered red brick walls.

A series of 12 trademark applications filed by Black Knight Sports and Entertainment, LLC, the consortium which owns the new NHL franchise, with the U.S. Patent and Trademark Office gives us a good idea of the three team nicknames which have made it to the final round of consideration. According to these trademark applications, the NHL team in Las Vegas will take one of the following names: Silver Knights, Golden Knights or Desert Knights. Interestingly, the Las Vegas franchise cannot use Knights by itself as the team will play in Canada and the Canadian rights to that name are held by the London Knights of the Ontario Hockey League.

Estimates for renewing the trademark for one term (including the attorney costs) in the U.S. and the other seven Convention countries vary from $320 in Thailand to $2,120 in the U.S., while the same amounts to $4,556 under the Madrid Protocol (Figure 5). The estimates are inclusive of the costs for filing combined affidavits under Section 8 (affidavit of use) and Section 15 (incontestability) in the U.S., in addition to the costs for filing an “Affidavit of Continued Use” under Section 9 in the U.S. The individual country renewal fees under the Madrid Protocol vary from $80 in India to $925 in the EU (Figure 6).

Part of GiGi New York’s trademark infringement allegation is directed at how Tommy Hilfiger has styled the name TOMMYxGIGI, especially in the use of a “unique upper and lower case treatment.” By styling the brand name as TOMMYxGIGI, Tommy Hilfiger has copied an alternating case which has never been used by Gigi Hadid, which GiGi New York argues increases the risks for customer confusion. At least one advertisement for TOMMYxGIGI, included in this post published by fashion law news source The Fashion Law, uses an alternating case which mirrors the “GiGi” form used by GiGi New York.

Trader Joe’s sued Hallatt (d/b/a Pirate Joe’s) for trademark infringement in the Western District of Washington, invoking the court’s federal question and supplemental jurisdiction. Trader Joe’s alleged that: (1) Hallatt misled consumers into falsely believing Pirate Joe’s was authorized or approved by Trader Joe’s; (2) utilized a confusingly similar “South Pacific” trade dress for his Pirate Joe’s store; (3) displayed Trader Joe’s trademarks in connection with the sale of products at Pirate Joe’s; and (4) resold Trader Joe’s products without authorization and without adherence to Trader Joe’s’ strict quality control practices. Trader Joe’s claimed Hallatt’s behavior diluted its trademarks, confused consumers, and damaged Trader Joe’s reputation by associating it with high price, lower quality products. Trader Joe’s sought damages and to permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.

On August 20th, the Oakland Raiders filed three trademark applications with the USPTO for standard character marks on “Las Vegas Raiders,” suggesting the team is very serious about relocating to Las Vegas in the near future. U.S. Trademark Application No. 87145341 would protect the use of Las Vegas Raiders on football helmets, downloadable software and electronic guides related to football, jewelry, trading cards and other souvenir items. U.S. Trademark Application No. 87145339 would protect the use of Las Vegas Raiders for the conducting of professional football games, football fan club services, sports and entertainment information provided via cable or satellite as well as live shows featuring football competitions. U.S. Trademark Application No. 87145331 would protect the use of Las Vegas Raiders on a variety of clothing items, including jerseys, caps, visors, earmuffs, T-shirts, sweaters, gloves and scarves.

During the recruiting process and job interviews, open dialogues and an exchange of ideas take place between the job applicant and the company. However, when intellectual property is involved, both employers and applicants must walk a fine line between building trust versus over-disclosure. Here are some guidelines every prospective employee and employer should know about intellectual property and the interviewing process.

hipotle Mexican Grill is gearing up to launch a new franchise brand of restaurants. The first Tasty Made will open this fall in Lancaster, OH, and locations will feature menus focusing on burgers, hand-cut fries and milkshakes. As Tasty Made has been making headlines, a Boston-based chain of burger fast food restaurants has raised a legal issue over trademarks, which it believes Chipotle is infringing. Reports indicate that Tasty Burger has issued a cease and desist letter to Chipotle which charges the latter company with using a brand name and logos that are similar to marks held by Tasty Burger. Tasty Burger operates six locations, including four Boston stores and two in Washington, D.C. The burger chain is alleging that not only are the names very similar but the color scheme and shape of the logos share many similarities as well.

A developer asserting trade dress protection must, therefore, establish that a game’s design does not yield a utilitarian advantage by demonstrating that “the product feature serves no purpose other than identification of the game developer.” A developer must also identify alternative designs that offer the same functional features as the asserted trade dress. Alternative designs available to competitors ensure that a developer is not monopolizing a useful or aesthetically pleasing game feature.

We understand governments have a responsibility to protect the health of their citizens and therefore, should regulate harmful products. However, there is no compelling evidence that restricting the use of brands will improve public health… The standardized packaging of tobacco products also sets a dangerous precedent for other goods and services, including alcoholic beverages, soft drinks, snack foods, fast foods and even baby formula, a number of which are already being targeted with severe packaging restrictions, including tobacco style plain packaging.