Trademarks

Fund Name Game: Winning with Trademarks

By: Claire Little *

Registered trademark logoIn the world of fund firms, picking a distinctive fund name may be a topic of little consideration. However, distinctiveness opens the door to trademark protection for the fund name and potentially gives the firm “an invaluable asset” and the benefit of competitive advantage, assuming the name carries a positive connotation in clients’ minds.

Two firms recently clashed over trademark rights to the phrase “absolute strategies.” The competitors Loomis, Sayles & Co. and Absolute Investment Advisors, LCC, went head-to-head over whether “absolute strategies” was a generic industry term. Absolute Investment Advisors trademarked the phrase and sued Loomis, Sayles & Co. after the firm “rolled out Loomis Sayles Absolute Strategies.” The two firms settled out of court. (Loomis renamed its fund Loomis Sayles Strategic Alpha.) As similar disputes play out, use of descriptive investing terms will leave firms walking a fine line between what can and cannot be protected by trademark. Continue reading »

Introducing Gold: The Latest Contender in the Battle to Trademark a Color

By: Allison McCowan *

Gold Glove Award attributed to Ken Nagano

Attributed to Ken Nakano

Any baseball fan has heard of the Gold Glove Awards. For non-baseball fans, the coveted Gold Glove Awards are given annually to nine of the best defensive players from the National League and American League respectively. Since its inception, the award has been bestowed on some of baseball’s greatest defensive players– Ken Griffey, Jr., Willie Mays, Derek Jeter, and Ozzie Smith. As well-known as the Gold Glove Awards are, some fans may not be aware that the award is associated with a company.

In 1957, Rawlings Sporting Goods Company, Inc. (“Rawlings”), a sporting goods manufacturer and distributor, created the Rawlings Gold Glove Award. Rawlings gives winners of the award a trophy of a functional gold colored glove. In 2012, Brandon Phillips, a three-time winner of the Gold Glove Award and defensive player for the Cincinnati Reds, was spotted wearing a Wilson Sporting Goods Co. (“Wilson”) baseball glove with “metallic gold-colored webbing, stitching and lettering.” Rawlings immediately filed suit for trademark infringement. Continue reading »

Apple Settles iPad Trademark Dispute in China

By: Cheston Tang *

PROVIEW LogoBefore Apple Inc.’s iPad tablet had become the standard of tablet computing, the trademark “iPad” was owned by Proview Electronics, a Chinese computer monitor company. Proview had been using the trademark term “iPad” on its products since 1998. According to the Wall Street Journal, Apple retained British lawyers in 1999 to set up IP Application Development as a United Kingdom subsidiary company to purchase the global rights to the iPad name from Proview. IP Application Development purchased the rights to the iPad name for 35,000 British pounds ($55,000). However, once Apple introduced the iPad tablet with immediate success, Proview began to pursue legal action against Apple. Proview filed a lawsuit in a California Superior Court in Santa Clara County and in Chinese courts.

The suit filed in California on February 17, 2012 claims Apple was acting “with oppression, fraud and/or malice,” when they did not disclose that they would be the eventual trademark holder once it was acquired by IP Application Development. In addition, Proview claimed that while the rights to the iPad trademark were purchased from Proview Electronics of Taiwan, the rights to the iPad trademark in China were owned by Shenzen Proview Technology, the mainland Chinese subsidiary of Proview, and were, therefore, never properly transferred. The lawsuit in the California Superior Court was dismissed by Judge Mark Pierce, who agreed with Apple’s argument that the parties had contractually agreed to settle any disputes in Hong Kong. Proview’s lawsuit in China focused on their claims that Proview Electronics of Taiwan never had the rights to sell the iPad trademark for mainland China. A lower court in China ruled in favor of Proview, which prohibited the sales of the iPad in 40 cities. There were reports by Chinese newspapers that iPads were being seized from retailers because of the trademark dispute. Continue reading »

What Can Your Cash Surplus Do For You? Apple’s Eight-Figure Settlement to Obtain Chinese iPad Trademark

By: Stephen C. Pritchard *

China iPadApple is undeniably one of the most successful companies in the world and, as such, has surpassed its competitors over the last decade in nearly every category as the company has created a dominating formula for mixing innovation with consumer desires. The iPod, iPhone, and now the iPad have all been crucial to Apple’s rapid growth, and have resulted in a $100 billion cash surplus, allowing the company to wield enormous power at a time when debt and a stagnant economy are crippling so many others.

In recent years, China has become an essential market for Apple in terms of growth and opportunity, with Chinese sales accounting for two percent of total revenue in 2010, twelve percent in 2011, and in the most recent quarter of 2012, twenty percent of total revenue. Apple CEO Tim Cook has frequently noted that China is one of the biggest growth opportunities available to Apple, illustrating the company’s commitment to the region at the highest level. As China has become a crucial market for Apple, the company’s legal rights there have been thrust to the forefront, most particularly in a recent court-mediated settlement with Shenzhen Proview Technology (Proview). Continue reading »

The Sweet Smell of Victory: Car-Freshener Corp. Wins Licensing Case Against Getty Images

By: Andrew Powell *

Little Trees Air FreshenersGetty Images, Inc., a major stock photography company, licenses out over 80 million still images and illustrations to creative professionals, media publications, and advertising firms alike. While Getty Images is known for fiercely protecting the photographs in its portfolio from theft or misuse, the company recently found itself on the other end of a licensing lawsuit filed against it by Car-Freshener Corporation over images that contained depictions of the Freshener’s famous Little Trees air fresheners.

Car-Freshener Corporation holds trademarks and product configuration registrations to the specific tree shape of its ubiquitous air fresheners. The company has engaged in previous lawsuits to protect its product trademarks, including a lawsuit with Old Navy when the clothing retailer used an image of the tree-shaped freshener on a line of t-shirts. In its latest suit against Getty Images, Car-Freshener’s central claim was unauthorized use of trademarks in at least eleven images that contained an image or likeness of Car-Freshener’s product. Freshener’s claims ranged from trademark infringement and dilution of trademark to assertions of unfair competition. Continue reading »

The Black Keys File Suit as Pizza Hut and Home Depot Play a Familiar Tune

By: Rachel Waters *

Black Keys group members“Just a matter of time, before you steal it . . .” Those lyrics from The Black Keys’ “Gold on the Ceiling” proved to be prophetic when the duo along with Danger Mouse, a producer and the song’s co-author, filed a complaint in federal court in California last month. The song was another in a line of hits propelling the group’s members, Patrick Carney and Dan Auerbach, to popular fame – notably, the group scored the unique invite to perform on Saturday Night Live twice in one season. The complaint alleged that Pizza Hut (YUM) infringed on the group’s copyright by using portions of the song in one of its commercials for “Cheesy Bites Pizza.” Several days after the Cheesy Bites complaint was filed, the group initiated another infringement lawsuit against The Home Depot (HD). The Home Depot complaint contained similar allegations to those against Pizza Hut, but accused the construction megastore of using portions of the track “Lonely Boy” in commercials for a line of its power tools. Both songs were featured on the groups’ seventh album, “El Camino,” which debuted at number 2 on the Billboard 200 Chart to critical acclaim.

The complaints filed in both actions allege copyright infringement and, although an out-of-court settlement is likely, any judicial resolution of the duo’s claims will hinge on just how similar the original and commercial versions of the songs are. Both the Home Depot and Pizza Hut commercials are viewable on YouTube (clips were available as of the date this article was published). The Home Depot commercial uses an instrumental recording that sounds strikingly similar to the “Lonely Boy” track. The Cheesy Bites spot goes one step further by using sound-a-like instrumentals and ending with a familiar vocal snippet. Given the substantial similarity between the originals and the ad versions, it is difficult to see how a court would not find infringement. Still, past artists faced with similar music theft have turned to areas of the law other than copyright to enforce their claims. Continue reading »

It’s in the Bag for Warner Brothers

By: Claire Little *

Bicycle playing cardsWhen the world feasted its eyes on The Hangover Part II last year, it was obvious that the Warner Brothers’ sequel lived up to the hilarity and awkwardness of The Hangover original. Not only were the “Wolfpack” reunited, but their bags were packed, and they were ready for a party. None were more ready than Alan Garner, whose knockoff Louis Vuitton luggage is the focus of one of the film’s many references to his social deficiencies. Unfortunately for Warner Brothers, Alan’s knockoff luggage created problems for the movie-maker long after audiences left the theaters.

In the film, Alan arrives at the airport with his fellow leading men with a luggage cart full of what appears to be Louis Vuitton luggage; however, the luggage set is in fact made by Diophy, a company known for creating knockoffs of the premier luxury brand. As the scene continues, Alan sits on a bench with one of his knockoff Louis Vuitton bags placed next him in an empty seat. Stu tosses the knockoff bag so his soon-to-be brother in law, Teddy, may sit. Scolding Stu for his treatment of the bag, Alan states: “Careful that is . . . a Lewis Vuitton.” Continue reading »

Mondelez – A Name to Divide and Conquer

By Lindsey Chessum *

A Name Fit for a King

Associate picking a company name with choosing a baby name but with a couple differences. First, the name has to be Grocery store aisleapproved by opinionated extended family members (board of directors), then by half of the people you invite to your baby shower (shareholders). Second, you have to think ahead so that later in your baby’s life the name will fit a prospective career. So when it comes to protecting a company name with a trademark, the preparation justifies protection in the short run while the development of goodwill justifies continued protection in the long run.

Strategy When Picking a Name

Mondelez, meaning “delicious world” from the Latin words “delez” and “monde,” is the name chosen by Kraft to embody the international snacks spin-off set for sometime later this year. The disapproval of the last couple of weeks is embodied in headlines such as Mondewhaaaat? or Mondelez? Puh-leeze! Advertisers and consultants condemn the name as lacking creativity and being a meaningless word to millions unfamiliar with the Romance languages. Some criticisms sarcastically suggest that Mondelez be presented with a pronunciation guide and a definition. Continue reading »

“Win While the World is Watching:” Nike Stakes Claim to Tebow Jersey

By Joseph Norman *

NFL players in Nike apparel‘Win while the world is watching’ is Nike’s objective for success in sports marketing.  Last week, Gary Way, general counsel of Nike Global Sports Marketing, let a group of Wake Forest law students in on the strategy.  The objective is to have the world’s best athletes wear Nike while they are performing on the world’s biggest stage.  For example, when Maria Sharapova and Serena Williams face off in the Wimbledon finals.  Or when a popular quarterback is traded from the Broncos to the JetsIt seems that Nike follows this same strategy when enforcing its IP licensing rights. Continue reading »

Epic Court Fight Leaves Barbie Reeling: Mattel Appeals Multi-Million Dollar Award to MGA in Copyrights Case

By Tierryicah Mitchell *

Mattel Barbie doll battling MGA Bratz dollThat’s right.  There is trouble in the dollhouse with no hope of a truce in sight.  Barbie vs. Bratz.  Who needs professional boxing when Mattel (Barbie) and MGA (Bratz) have been duking it out in court for years with no end in sight?  However, these dolls aren’t fighting for the love of Ken, but rather over the intellectual property rights to the Bratz franchise.  More specifically, attorneys for Mattel alleged that MGA’s creation of the Bratz doll constituted trademark and copyright infringement against the Mattel Empire.

But how did all of this fighting start?  Surely, there must have been a time when Bratz and Barbie peacefully coexisted in the dollhouse.  Sadly, there was not.  Like all epic battles, the legal war between Mattel and MGA’s conflict has a beginning, or, a first shot fired.  In this case, the proverbial gun was fired by a former Mattel designer named Carter Bryant, and the proverbial first shot was Mr. Bryant’s creation of the scantily clad, edgy Bratz doll in 2001.  An article written by Margaret Talbot on New America Foundation’s website provided the following description of the Bratz doll: “Bratz dolls have large heads and skinny bodies; their almond-shaped eyes are tilted upward at the edges and adorned with thick crescents of eye shadow, and their lips are lush and pillowy, glossed to a candy-apple sheen and rimmed with dark lip liner.”  Interestingly enough, Mr. Bryant was still a designer at Mattel when he created the Bratz doll.  Perhaps this would not have ruffled Robert Eckert, who is the CEO of Mattel, the wrong way had the Bratz doll not been a such a success.  At the peak of the Bratz doll in 2006, it generated almost $1 billion in sales. Continue reading »