Posted: March 31st, 2013
By: Allison McCowan *
It might not come as a shock that you cannot name your computer company “Apple Computers” because, of course, the name is already trademarked by a huge multibillion dollar international company, Apple. However, the same obvious factor doesn’t ring true for all brand and company names. Surprisingly, if you were planning on launching a line of women’s sportswear with the name “Jesus Couture,” you are going to run into some problems because an Italian pants maker beat you to the “Jesus” name years ago.
In 2007, the U.S. Patent and Trademark Office granted ownership of the word “Jesus” to Jesus Jeans, owned by a publicly-traded Italian company, BasicNet, giving the company exclusive rights in America to sell clothing bearing the name “Jesus.” The Jesus Jeans trademark applies to clothing articles including jackets, vests, shirts, pants and belts. With the exception of the U.S. and the European Union, other countries haven’t been so keen to allow “Jesus” to be trademarked. BasicNet’s attempts to trademark “Jesus” have been turned down in Turkey, Uzbekistan, Tajikistan, Kyrgyzstan, China, Switzerland, Australia, Norway, and Cuba. Britain’s patent office rejected Jesus Jean’s application as “morally offensive to the public.” Britain’s patent office feared that the name “Jesus” would be “debased” if it were used to sell articles of clothing or other household products. Continue reading »
Posted: March 8th, 2013
By: Lena Mualla *
Russian Railways (RZD) has sued Apple, alleging that Apple has committed trademark infringement. It is seeking 2 million rubles, which is about $66,000. The state-owned railway reported: “RZD intends to protect its intellectual property, especially since the trademark is well known in the Russian Federation.” Basically, the company alleges that by allowing a third-party app developer to use its logo, Apple has committed trademark infringement. The app allows users to calculate their cargo tariff when traveling. The app picture features the RZD logo with a picture of train tracks below it. Continue reading »
Posted: March 4th, 2013
By: Stephen DeGrow *
Cracker Barrel Old Country Store recently launched a new strategy that analysts, quoted by USA Today, say is “a low-risk way to broaden brand awareness, appeal and revenues.” The strategy involves a licensing agreement with Smithfield Foods’ subsidiary John Morrell and entails selling ham, bacon, glazes, and other meats in grocery stores under the Cracker Barrel name.
The agreement follows older attempts by Cracker Barrel to expand beyond its restaurant chain. The company once started an unsuccessful fast food branch and a stand alone retail store. This time around, however, analysts are saying good things about the new strategy. Continue reading »
Posted: February 27th, 2013
By: Lindsey Chessum *
CREATE A NEW ACCOUNT
Cisco Systems, Inc. (“Cisco”), one of the largest producers of computer networking equipment, embarked on a campaign in December spending $100 million in hopes of creating a new image. It launched its campaign with a meeting of analysts in New York, quickly followed by a deluge of print materials, webcasts, and commercials. The tagline, “Tomorrow Starts Here.”
This was meant to be a turning point for Cisco. In summer 2012, Cisco’s stock hit a low of $15.12 (compare with low of $15.17 in November 2008), and negative press revolved about the layoff of 1,300 workers. This was Cisco’s coming out after a period of underperformance. This was to be a milestone turning point. Continue reading »
Posted: February 25th, 2013
By: Stephen C. Pritchard *
On January 28, 2013, the World Trade Organization (WTO) authorized the Caribbean nation of Antigua and Barbuda to revoke U.S. intellectual property rights in order to recoup damages stemming from a decade-old trade disagreement between the two countries. The dispute is based on a decision by the U.S. to bar its citizens from using remote casinos based in Antigua and Barbuda, which the smaller country claims violates the General Agreement on Trade in Services by protecting American casinos from international competition in violation of free trade. Antigua and Barbuda obtained WTO permission to implement the same measure in 2007 but had remained in negotiations with the U.S. in hopes of opening up its gambling operations once again. Having won in 2007, Antigua and Barbuda would have normally been entitled to impose tariffs on the U.S., but because of its size, there would be no noticeable impact, so the WTO authorized a separate avenue for recompense.
The Caribbean country still hopes to reach a settlement with the U.S., based in part on the differences in the amount of profits it could potentially receive under either option. Under the WTO’s 2007 ruling, the country would only be allowed to recover approximately $21 million annually via intellectual property sales. Continue reading »
Posted: February 11th, 2013
By: Claire Little *
As reported by Reuters, China is taking steps to crack down on “malicious” trademark registrations within the country. In December, the official Xinhua news agency reported that the Chinese legislature will consider an amendment which “will offer protection to major international brands, giving copyright owners the right to ban others from registering their trademarks or from using similar ones, even if such trademarks are not registered” in China.
The move comes after several high-profile international brands and individuals faced litigation in the country stemming from trademark misuse. In one such case, Apple found itself fighting for the right to use the “iPad” trademark within the country’s borders. Shenzhen Proview Technology registered the iPad trademark in China in 2001; the company used “IPAD” in the past for a product no longer on the market. Continue reading »
Posted: February 7th, 2013
By: Stephen DeGrow *
Around wintertime, shape is on everyone’s mind. There are holiday pounds, gym memberships, and weight loss commercials. As January progresses, worries mount over broken resolutions and dusty dumb bells. For just about everyone, shape is a challenge. Except for Nestlé. On December 19, 2012, Nestlé won an appeal against Cadbury that secures a trademark for the shape of its Kit Kats.
The Kit Kat battle began in 2002 when Nestlé applied for a three-dimensional trademark in the European Union. Four years later, the Office for Harmonization in the Internal Market granted a trademark for a class of goods covering sweets, bakery products, pastries, biscuits, cakes, and waffles. Continue reading »
Posted: January 2nd, 2013
By: Allison McCowan *
In August 2012, Apple Inc., (“Apple”) took a large bite out of Samsung Electronics Co., (“Samsung”) with its $1.05 billion lawsuit award. In early spring 2011, Apple filed a 38-page complaint in federal court alleging that Samsung infringed on Apple’s iPad design. Apple’s complaint included federal claims for patent infringement, unfair competition and trademark infringement. Following a lengthy litigation, a nine-person jury found that Samsung infringed on all but one of the seven patents at issue.
As soon as the jury returned with the large lawsuit award, the U.S. litigation between Apple and Samsung was highly publicized among the media and public alike. Everyone knew about the patent infringement allegations and the U.S. people followed the trial in anticipation of the outcome. Unbeknownst to many, the U.S. litigation was just one of many litigations between Apple and Samsung taking place around the world. When Apple took its claim across the pond, its luck in the courtroom seemed to run out. Continue reading »
Posted: December 10th, 2012
By: Lindsey Chessum *
January 2010, Ferrero S.p.A. (owner of Nutella) filed suit against The Connoisseur Concerto (“TCC”), a chain of sophisticated art cafés in Singapore. TCC has modern décor, a splendid menu, and a wealth of drinks: espressos, lattes, brews, and frappes. What is now absent from the menu is “Nutello,” an in-house created espresso drink flavored with Nutella. Nutello set off the suit with Ferrero.
Ferrero brought its claim before the High Court in Singapore, and the court found for Ferrero on several counts.
The Court analyzed trademark infringement with a step-by-step test requiring similarity of signs, similarity of product, and then likelihood of confusion. In the first step, in a prolonged discussion the court determined “Nutello” was similar to “Nutella.” Then the court blew through the second step, the question of similarity of products, refusing to compare the drink and the spread; instead, the court compared the chocolate drink to the “chocolate products” registration specifications under which Ferrero registered Nutella, a large target. In the last step, a survey stating 30% of the relevant public mistakenly associated or linked the two businesses established likelihood of confusion. Continue reading »
Posted: December 6th, 2012
By: Claire E. Little *
The Chicago and Alexandria-based, non-profit National Parent Teacher Association (“PTA”) has sued its rival, PTO Today, a for-profit organization based in Massachusetts. After years of attempting to settle their trademark dispute out of court, PTA brought suit against PTO Today accusing PTO Today of “denigrating the established group[, PTA,] in a bid to siphon off members.” The lawsuit includes PTO Today’s parent company, School Family Media Inc., a marketing and media company also based in Massachusetts. Filing in U.S. District Court for the Northern District of Illinois, PTA’s suit seeks injunctive relief and punitive damages for trademark infringement, false advertising, deceptive trade practices, and other allegations.
While PTA is a non-profit organization founded in 1897, PTO Today is a for-profit relative new-comer to the business of parent-teacher alliances. A historic powerhouse for child advocacy, PTA’s peak membership in the 1960’s of 12 million has dwindled to approximately 5 million. According to PTA’s complaint, new competition with PTO Today is at least partially to blame for PTA’s steep decline in membership over the years. Continue reading »