Trademarks

Chubby Checker Gets “Twisted” Over Cufflinks

By: Alexandra Braverman* | Staff Writer 

The famous musician known for recording “The Twist,” Ernest Evans, aka “Chubby Checker,” brought suit against major retailers Nordstrom, Inc., Amazon, Inc., Macys, Inc., Squire Fine Men’s Apparel LLC, and Würkin Stiffs over a recently released line of cufflinks bearing the Chubby Checker trademark.  The complaint, filed in Florida federal court, included claims of federal trademark dilution and infringement, federal unfair competition, and false endorsement.  According to Mr. Evans, the cufflink manufacturer – Wurkin’ Stiffs – manufactured and marketed the cufflinks with the Chubby Checker name without obtaining consent from Mr. Evans or his related entities.  In light of the use, Mr. Evans seeks injunctive relief, treble damages, and punitive damages to the tune of 8-figures, according to Mr. Evans’s lawyer. 

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Snack Subscription Services, Thinking Inside the Box?

By: Alexandra Braverman* | Staff Writer

Subscription snack and food box businesses are popping up everywhere, hoping to cash in on America’s insatiable appetite for novelty, convenience and munchies.” – The New York Times 

Fancy Food Box Subscription

Fancy Food Box Subscription

Since the introduction of Birchbox in 2010, the demand for specialized goods via subscription has boomed.  With the option of having personalized boxes delivered monthly, customers are now choosing to buy beauty products, clothes, and food through online subscriptions.  According to the New York Times, the competition among the subscription snack market is particularly fierce.  Entrepreneurs have exploded into every corner of the food box market, introducing variations on the original box that feature regional, organic, portion-controlled, and novelty-themed options. Continue reading »

Offensive Penalty: The Cancellation of the Redskins Trademark

By: Sarah Remes* | Summer Guest Writer

This summer, the Washington Redskins lost.  Although defeat is nothing new to the infamous franchise, this time it came off the field when a federal judge upheld the cancellation of the team’s federal trademark registrations, finding that the term “redskin” was disparaging, and therefore that the mark had been registered in violation of the Lanham Act.

The namesake of the Redskins, William “Lone Star” Dietz

The namesake of the Redskins, William “Lone Star” Dietz

The Redskins began defending their trademark registrations in the early 1990s but until recently had been successful in fending off legal opposition.  The first major challenge was brought in 1992 when a group of Native Americans filed a petition to cancel multiple Redskins trademarks, claiming that their protection violated the Lanham Act, a federal law that prohibits protection of marks that “consist of or comprises immoral, deceptive, or scandalous; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt.” That case was successfully appealed by the team on two grounds: first, that the theory of laches barred the petition, as one of the plaintiffs was only one year old at the time the Redskins trademarks were registered in 1967; and second that the plaintiffs had not provided enough evidence as to the “disparaging” nature of the trademark, which must have occurred at the time they were registered.  While controversy surrounding the name continued to grow – even President Obama couldn’t avoid commenting – legally the team appeared in the clear.

This time, the plaintiffs, led by Susan Blackhorse, were determined not to make the same mistakes.  In June of 2014, Blackhorse challenged six Redskins trademarks, again under the Lanham Act, which led to their cancellation by the United States Patent and Trademark Office.  Not surprisingly, the team contested the decision, arguing instead that the name represents a strong and proud history that serves to celebrate and pay tribute to Native Americans, not degrade them.  “A Redskin is a football player.  A Redskin is our fans,” owner Dan Snyder explained.  “The Washington Redskins fan base represents honor, represents respect, represents pride.  Hopefully winning.” (This last part is definitely still up for debate).  On appeal, the court sided with Blackhorse, holding that the trademarks were disparaging at the time of their registration, and should not have received protection.

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Time to Trademark: Athletes Capitalize on Phrases, Nicknames

Beast Mode Apparel Hat

Beast Mode Apparel Hat

By: Blaydes Moore* | Staff Writer

“I’m just here so I won’t get fined.”  This statement from Marshawn Lynch, aka “Beast Mode,” dominated the weekly ESPN news cycle leading up to the Super Bowl.  Mr. Lynch responded to all twenty-nine questions posed to him at Super Bowl Media Day with these eight words.  The NFL saw this as an improvement over last year when he did not even attend the event.  The Pro-Bowl running back from Seattle, famous for his attachment to Skittles, won even more fans by refusing to engage in the hoopla surrounding arguable the biggest event in sports. Continue reading »

Princess Property: A Consideration of Copyright Laws and the Alteration of Disney Princesses

800px-Disneyland_2012-02-14_Princess_and_Princesses_b

By: Katie Ott* | Staff Writer

Imagine: the Disney princesses, childhood heroes for many young American girls, featured topless with skin and scars for all viewers to see. Viewers of the art have described the images as “disgusting,” “terrifying,” and “propaganda.” But these critics miss the essential point: the princesses’ scars support breast cancer survivors with similar scars from the mastectomy procedure used to treat the deadly disease. The artist, AleXsandro Palombo, explains the paintings honor a woman’s pain connected to “the acceptance of [a woman’s] body mutilated by a mastectomy [which] is one of the devastating moments that is part of the disease.” Continue reading »

How Can “How” Be Trademarked?

By: Alec Roberson* | Staff Writer

Credit: ibtimes.com

Credit: ibtimes.com

Having trademark protection over certain words or phrases is perfectly adequate and sometimes even necessary for the preservation and profitability of a business.  However, where is the line drawn over what words or phrases should or shouldn’t be protected? According to bestselling author Dov Seidman, the simple, common word “how” is included in this protection.

Seidman is the founder and CEO of the company LRN, a business that helps companies create ethical cultures, and is the bestselling author of the book HOW: Why HOW We Do Anything Means Everything.  Earlier this year (2014), Seidman brought suit against the Greek yogurt company Chobani and advertising firm Droga5 for Chobani’s use of the word “how” in their marketing campaign stating, “How Matters” (which Chobani has a trademark on) to push that their yogurt is 100% natural.  Seidman claims that Chobani’s use of the word “how” was to convey that they are an ethical company and this is the same way LRN has used the word in its business.  This suit is premised on the assertion that the meaning of “how” was trademark protected and not the word “how” itself.  Chobani responded by denying they had knowledge of Seidman or of the trademark protection, and by asking the court to deny LRN’s trademark protection over “how”.

Almost any phrase, word, logo or symbol can be registered for trademark protection under the Lanham Act as long as two requirements are met: it’s used in commerce and it is distinctive.  Seidman’s use of “how” is clearly used in commerce.  The second requirement, trademark distinctiveness, is usually divided into four categories: arbitrary/fanciful, suggestive, descriptive, and generic.  A descriptive category is only protected if it has a secondary meaning known to the public that refers to the specific product or service, while a generic category is never protected because it refers to common terms that do not refer to any particular source. Continue reading »

Upcoming Publications: JBIPL’s Student Authors Discuss Their Work

By: Samantha Berner* | Staff Writer

One great aspect of the Journal of Business and Intellectual Property Law is the opportunity for law students to get published. Each semester, the Journal picks a select few submissions from within Wake Forest to be published and featured within each issue. The following three students were selected from the Spring 2014 submissions and tell us a little about their note or comment, their inspiration, and a little bit about themselves.

From Left to Right: Hannah Nicholes, Rebecca Winder, Chase Smith

From Left to Right: Hannah Nicholes, Rebecca Winder, and Chase Smith.

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The Trademarked Fans

By: Stephen DeGrow*

footballThe Seattle Seahawks finished the 2013 football season as Super Bowl champions. And, of course, a lot of the credit belongs to the fans. Throughout the football year, Seattle fans showed their reputation for passion by setting two world records for loudest crowd noise. The most recent record came on December 2, when the crowd clocked in at 137.6 decibels. And now that the NFLShop.com has released jersey sales figures for last season, it appears that Seattle fans put their money where their mouth is.

According to the espn.com and NFLShop.com, the Seattle Seahawks sold more jerseys than any other team in the NFL. In fact, four different Seattle jerseys are in the top ten most selling jerseys. Russell Wilson came in at number one. Not surprising. Marshawn Lynch and Richard Sherman came in at five and six, respectively. Not surprising either. And the fourth Seattle jersey in the top ten? A jersey with the name “FAN” and the number 12 on the back. Continue reading »

Disney’s Frozen Wins Trademark Lawsuit Against Similarly Titled Frozen Land

By: John Hodnette *

Frozen ScreenshotImitation may be the sincerest form of flattery, but when it comes to the film business companies like Disney are glad that trademark law exists to protect them from some imitators. The facts of this recent case could not be more indicative of classic trademark infringement. Here is what happened.

“The Legend of Sarila” is Canada’s first 3-D animated film. The story draws inspiration from Inuit culture and legends, and involves blizzards, journeys though frozen tundra, sled dogs, and mystical shamans. This film had little in common with Disney’s blockbuster hit, “Frozen” about a land that magically send into eternal winter. In fact, the trailers of “The Legend of Sarila” and of “Frozen” share nothing in common aside from being animated films involving snow.

However, after a slow start in sales for “The Legend of Sarila” Phase 4 Films, a Toronto based distributor, decided to retitle the film and change the packaging for the U.S. DVD sales. The new name they chose was “Frozen Land” and the packaging bore such a striking resemblance to that of the logo of Disney’s “Frozen” that it is no shock that Disney immediately filed suit. Continue reading »

“Dumb” Starbucks lives up to its name: possible trademark infringement

By: Caitlin S. Hale*

Peacock_CloseupAs law students, it’s likely that we have all been “that person” in a conversation. You know; that one annoying guy (or girl) that tries to come off as smarter than they really are, or even if they really are that intelligent, tries to flaunt intelligence in front of others. Let’s call this person the peacock. The peacock is often charismatic, always confident, and loves to strut his stuff.

I mean, we’re proud of what we’ve learned, so we have a good reason be a peacock, right? Wrong.

We all know how annoying it is to come across a peacock, flaunting knowledge and using big words. But you know what is even more annoying than encountering a peacock? Being called out for being one. Especially if you have built your whole personality around being a peacock, or even worse, your business. Continue reading »