Trademarks

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 »

Electronic Arts Issues Preemptive Strike in True Battlefield Fashion

By Chris Hewitt *

Call of Duty game helicopterLike all males of my generation, I remember countless afternoons spent with friends huddled around a television and gaming console with a controller in hand, playing the newest rendition of Call of Duty, Madden, or Medal of Honor.  We eagerly awaited the arrival of the newest version each year.  We had our favorites, the games that we preferred over the competitor’s version.  It is this favoritism that earns games like Call of Duty: Modern Warfare 3 the title of most games sold in 2011, while other competitors’ games receive a lower ranking.  This is a testament to the competitiveness of the video game market, showing the need for companies to find some way to make their product different from the rest.  This can mean improved graphics, better game play, or a wider range of multiplayer capabilities.  For some, authenticity of weapons or vehicles can provide the necessary distinguishing quality.

Electronic Arts has attempted to provide such a distinguishing characteristic in Battlefield 3, a first person shooter released last fall.  Though the underlying military conflict in the game is entirely fictitious, some of the aircraft have a more realistic element.  Electronic Arts included a few of Bell Helicopter’s aircraft in Battlefield 3, including the Bell UH-1Y Venom, the V-22 Osprey, and the Bell AH-1Z Viper.  The inclusion was meant to “help depict realistic combat.”  Electronic Arts did so without the permission of Bell Helicopter and Textron, Bell’s parent company, claims that the use of the helicopters in the game is an unlicensed use. Continue reading »

‘Shaqtus’ Apparel Slam Dunked: Shaquille O’Neal Scores a Win off the Court in Trademark Infringement Suit

By Tierryicah Mitchell *

Shaqtus Orange Clothing Company LogoRetired basketball player, Shaquille O’Neal is no novice when it comes to victory. Throughout his nineteen year career, O’Neal was the recipient of the 1999–2000 MVP award, the 1992–93 NBA Rookie of the Year award, three All-Star Game MVP awards, three Finals MVP awards, and two scoring titles.  However, one of O’Neal’s most recent victories occurred off the basketball court and in the courtroom against an Arizona company, True Fan Logo Inc., Michael D. Calmese of Phoenix, and Utah resident Dan Mortensen. Continue reading »