Trademarks

Say “Cheese!”

By: Stephen DeGrow *

800px-Cow_female_black_whiteCracker 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 »

CISCO’S NEW START IS FRUSTRATED BY A TRADEMARK FIGHT: East Carolina University Sues Cisco over slogan “Tomorrow Starts Here”

By: Lindsey Chessum *

CREATE A NEW ACCOUNT

CiscoCisco 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 »

Caribbean Nation Plays Its Hand with Bold Move over U.S. Intellectual Property Rights

By: Stephen C. Pritchard *

Picture 4On 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 »

China to Get Tough on Trademark Registrations

By: Claire Little *

FlagAs 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 »

Break Me Off a Piece of That Trademark Suit

By: Stephen DeGrow *

chocolatesAround 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 »

A Slap on the Wrist and a Kick Out the Door: Apple v. Samsung Continues in the UK

By: Allison McCowan *

UK Flag the Union JackIn 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 »

NUTELLA: A Flavored Spread Best Served Cold (note: only partake after thorough consideration)

By: Lindsey Chessum *

Container of NutellaJanuary 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 »

“Not your Mother’s PTA”—Parents, Teachers, and Trademarks

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. Dirksen Federal BuildingFiling 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 »

A Trademark for Tebow

By: Stephen DeGrow *

Football teams in stance positionTim Tebow attracts questions. Is he a starting quarterback? Is he overrated? Is he compatible with Taylor Swift? Can he trademark Tebowing? Since October 9, 2012, the last question has an easy answer- yes!

Tim Tebow is the official owner of “Tebowing,” which gives him the rights to use “Tebowing” on “hats, T-shirts, . . . jewelry, clocks, watches, cuff links,” and even pantyhose. The Patent and Trademark Office (PTO) awarded the trademark after receiving requests from two internet entrepreneurs. The founder of Tebowing.com filed for “Tebowing” rights on October 27, 2011. And on December 6, 2011, the founder of Tebowinggear.com did the same. The PTO refused both registration requests. Continue reading »

Is McDonald’s the New Dunkin’ Donuts?

By: Allison McCowan *

Double espressoWhen you walk down the coffee aisle in your grocery store you will see familiar brands such as Maxwell House or Folgers. In recent years new coffee brands have crept onto your grocery store shelves. Currently on a walk down the coffee aisle, along with the Maxwell House and Folgers, you will see Starbucks, NesCafe, and Dunkin’ Donuts bagged coffee. While it would seem that Starbucks, Folgers, or Dunkin’ Donuts has the bagged coffee covered, McDonald’s might be throwing its coffee in the ring for some more friendly competition.

On September 18, 2012, McDonald’s made an unexpected move and filed a trademark using its name for ground and whole-bean coffee. The trademark registration, filed with the U.S. Patent and Trademark Office could signal that McDonald’s intends to follow Dunkin’ Donuts’ or Starbucks’ path by selling bagged coffee under its own famous name. Otherwise, McDonald’s could hope to use the trademark to deter competition from a competitor from using its coffee. McDonald’s is being very quiet regarding its reasoning behind filing this trademark with a McDonald’s spokesperson downplaying its importance by stating “future plans are not something I can speculate on or confirm.” Continue reading »