“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 »

Even Large U.S. Companies Struggle With China’s Trademark System

By Rob Abb *

Air Jordan logoSeveral prominent U.S. multinational corporations are struggling to navigate through China’s trademark system and, for some, the lack of brand protection is delaying entry into the Chinese market.  Even with the help of experienced (and expensive) law firms, more and more corporations are being denied trademarks and/or taking legal action to obtain their trademarks, many of which are held by local Chinese entrepreneurs.

For example, several well-known athletes have been forced to sue (or at least attempt to) others who have registered trademarks in their own names.  Even the greatest player to ever play in the NBA, Michael Jordan, does not own the trademark in his own, very popular, name.  As most people know (at least anyone who has ever watched ESPN), Jordan has established his name as a popular brand in the U.S. and all over the world.  From his “Air Jordan” Nike shoes to his quintessential #23 Bulls jersey, Jordan’s brand represents very valuable intellectual property.  Since he first appeared on Chinese TV in 1984 (at least), Jordan’s name has been translated as “Qiaodan” in Chinese and that is how he is known and referred to in China.  So, one might expect that the Chinese company Qiaodan Sports would be owned by (or at least affiliated in some way with) Jordan.  However, Qiaodan Sports is in no way affiliated with Jordan.  It has filed for over 100 trademark applications associated with Jordan’s brand, including his famous “Jumpman” logo (a registered Jordan brand U.S. trademark) and it uses a logo of Jordan dunking on all of its products. Continue reading »

Trademark Star . . . Again: ‘Linsanity’ Phenomena Makes Its Way off the Court and Into the Trademark Office

By Tierryicah Mitchell *

LinsanityThe United States Patent and Trademark Office has seen its fair share of celebrity filings over the years, and the year 2012 is no different.  Just a month ago, famous parents Beyoncé and Jay-Z filed an application to trademark their daughter’s very unique name– Little Blue Ivy.  On February 13, 2012, New York Knicks basketball player and seemingly overnight sensation, Jeremy Lin, has filed an application for the trademark on the name given to the recent phenomena called Linsanity. Linsanity is the term that was given to reference Mr. Lin’s meteoric and spectacular rise to stardom and recognition.

In what the Associated Press called the “most surprising story in the NBA,” Jeremy Lin’s rise to fame is nothing short of remarkable.  On February 4, 2012, during a game against New Jersey Nets, Mr. Lin came off the bench and scored 25 points and garnered seven assists, which pulled the Knicks out of a losing slump and was the start of a six-game winning streak.  Mr. Lin’s status as an Asian-American and Harvard graduate has arguably led to higher television ratings, ticket prices, and a revived international interest in basketball, especially in China.  Mr. Lin is the first Harvard University graduate to play in the NBA since Ed Smith in 1953, and according to Bloomberg, the first Chinese- or Taiwanese-American to ever play in the league. Continue reading »

Warner Brothers Erects Barbed Wire Fence Around The Emerald City, Closes Yellow Brick Road

By Rob Abb *

Wizard of Oz yellow brick roadIn the classic 1939 film, The Wizard of Oz, Warner Brothers Studios (WB) taught us the value of persistence.  Even if someone tells you that “nobody sees the Wizard!” as long as you are persistent (and accessorize correctly) you can not only see the Wizard, but he will give you free stuff.  However, based on WB’s recent legal positioning, the movie studio has apparently decided that no one can see the Wizard, or even say his name.

In October, WB filed a trademark application for “The Great and Powerful Oz.”   The timing of their application is significant because only one week earlier, Disney filed a trademark application for the same phrase.  Because Disney filed its application first, the United States Patent and Trademark Office (USPTO) suspended WB’s application. Continue reading »

Made in China but Not Sold in China: Why a Company is Trying to Ban the Sale of iPads in China

By Chris Hewitt *

Sony DSCA few months ago I examined Apple’s patent dispute with Samsung that originated in the United States and has since spread to several countries throughout the world.  Samsung, however, is not the only company that the tech giant is currently battling over an intellectual property dispute that has transcended continents.  Apple is in the midst of a legal battle with subsidiaries of Proview International Holdings Ltd. over the ownership of the iPad trademark.

The trademark dispute began in China with Proview alleging that Apple is not the owner of the iPad trademark.  Proview trademarked “IPAD” in a number of countries in 2000.  The company planned to use the trademark to market a handheld device capable of accessing the Internet but the plans never materialized. Apple claims that it purchased the trademark from Proview several years ago and that Proview is now refusing to honor the agreement.  Apple, however, actually purchased the trademark from a Taiwanese subsidiary of Proview in 2009.  Proview contends that its Shenzen subsidiary, which registered the trademark in China, still owns the trademark because it was not covered in the agreement executed in 2009. Continue reading »

Crimson Tide Rolls Over on Artist

By Sarah R. Riedl *

Alabama Football TeamArtist David Moore has been painting images of University of Alabama football victories since the late 1970s and selling them to Crimson Tide fans.  Moore exhausted his welcome with Alabama in 2005, however, when the University demanded the payment of royalties in the sum of 8% of profits for the use of the school’s trademarks due to Moore’s alleged infringing activities spanning the course of several decades.  Faced with the school’s assertion of property rights in the trademarks used in his paintings, Moore countered with his fundamental right to free speech. Continue reading »

Creative Advertising: Working Around the NFL’s “SUPER BOWL” Trademark

By Joseph Norman *

Chipotle Super Bowl Ad

This is not a Super Bowl promotion.

Someone in the blogosphere each year talks about the National Football League’s zealous [some might say overzealous] enforcement of its SUPER BOWL registered trademark. But the truth is, the Super Bowl is one of the most highly sought after commodities in the commercial world. The Super Bowl is the most highly watched American television event in America’s favorite sport; in 2011, 111 million people watched the Super Bowl on Fox, and this year 111.3 million viewers tuned in to see the Giants beat the Patriots. Compare that with American Idol, where a paltry 20 million viewers watched the finale. Yawn. Actually, have a look at the five most watched TV shows ever. Four Super Bowls. This is why advertisers and promotional partners are willing to pay millions for seconds of television time during the Super Bowl; simply, it’s the most watched, and anticipated, TV event each year. Continue reading »

Trademark Baby: Hip-Hop Royalties, Beyonce and Jay-Z, Aim To Protect Blue Ivy’s Name From Outside Use

By Tierryicah Mitchell *

Beyonce and Blue IvyDid you know that it was possible to trademark a child’s name?  Better yet, did you know that people actually did and do trademark their children’s names?  According to the United States Patent and Trademark Office, a trademark is “any word, name, symbol, device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.”  In laymen’s terms, a trademark is a brand name.  Some of the more familiar and common trademark names are Coca-Cola and Sony brands.  It is possible to trademark a wide variety of things from sounds such as the famous and instantly recognizable “Sweet Georgia Brown” Harlem Globetrotters Theme Song to shapes such as the unique cube shaped design of Apple stores.

Blue Ivy Carter is barely a month old and has already found herself in the realm of the intellectual property world.  Perhaps this should not come as a surprise considering that her parents are hip-hop and pop royalties, Jay-Z and Beyonce, respectively.  On January 26, the proud new parents filed a trademark application to stop others from using Blue Ivy’s name and possibly to save it for future commercial use.  According to family law attorney and author Vikki Ziegler, “[Seeking the trademark] forestalls competitors from using the child’s name and or third parties from attempting to sell the baby’s name back to the couple . . . [Beyonce and Jay-Z] are likely trying to protect what they rightfully own or created, shall we say, by trademarking Blue Ivy’s name.” Continue reading »

Careful Football Fans: If You Cheer Too Loudly for Your Team, Texas A&M Might Sue You

By Rob Abb *

Denver Broncos 12th Man Sunday“FYI #Broncos, the 12th Man belongs to Texas A&M.  We saw the flag today and will defend our trademark.  #TAMU #gigem.”

If you read that on Twitter, without any context, what would you assume?  First, the author is clearly affiliated with Texas A&M University.  Second, the author sounds upset about something.  Third, the author sounds like a 12-year-old boy throwing a tantrum.

Would you be surprised to learn that instead of a whiney 12-year-old boy, that tweet belongs to none other than A&M’s Vice President for Marketing and Communications, Jason Cook?  Mr. Cook decided that he was going to aggressively protect his school’s trademark.  He was in fact so serious about protecting the school’s intellectual property that he turned to Twitter. Continue reading »