Trademarks

High Drama in High Fashion: Trademark-able Colors?

By Joseph Norman *

Louboutin heelsRed soles, blue boxes; are these proper trademark subjects?  French high-fashion house Christian Louboutin and New York City American iconoclastic jeweler Tiffany & Co. think so.  Both companies are known for using a specific color to represent their brand.  Louboutin is known for its stiletto heels adorned with its signature bright red lacquered outsoles and Tiffany & Co. is known for the famous blue of its Tiffany boxes.  Whether these specific uses of color are trademark proper arose earlier this year when Louboutin turned heads in the fashion world by suing fellow French couture fashion house Yves Saint Laurent (YSL) for infringing on Louboutin’s signature red soles in YSL’s Cruise 2011 collection.  Louboutin received a trademark on the red soles in 2008 and its shoes have featured the distinctive red color since 1992.  Sex and the City, the hit television show, is mostly responsible for popularizing the $445 to $4,645 (www.barneys.com product search “Louboutin”) a pair shoes. Continue reading »

Occupy Wall Street Succumbs to a Capitalistic Process

By Chris Hewitt *

Occupy Wall StreetOne simple, three word phrase has captivated, or has at least been imprinted upon, the minds and hearts of many Americans.  It has become the headline of the morning paper, the topic of water cooler chatter, and the subject of the nightly news.  It has come to signify a political movement and to describe the distribution of wealth in America.  The phrase: “Occupy Wall Street.”  Occupy Wall Street is a “leaderless resistance movement” that began on September 17, 2011, with a protest in New York’s financial district in Lower Manhattan.  The protestors profess to represent the 99% (the “have nots”) that are standing up against the greed and corruption of the 1% (the “haves”).  What began as a localized movement has spread to other cities throughout the United States and even across the Atlantic to Europe.

Despite the purpose of the movement, entrepreneurs are attempting to cash in on the movement in true capitalistic fashion.  Shirts appeared just days following the initial protest and now both camp sites and the Internet are riddled with vendors peddling coffee mugs, shirts, and various other products bearing phrases related to the movement.  Even millionaire rapper and entrepreneur, Jay-Z, is creating a line of Occupy Wall Street themed apparel that will bear the phrase “Occupy All Street.”  With such business potential, it is not surprising that the United States Patent and Trademark Office (USPTO) has been bombarded with a flurry of trademark applications for phrases dealing with the movement, including “Occupy” and “We Are The 99 Percent.”  But what about the original phrase, the one that represents the movement in its entirety, “Occupy Wall Street?” Continue reading »

Urban Outfitters Under Fire… Again

By Sarah R. Riedl *

Urban OutfittersUrban Outfitters has been the target of numerous complaints over the years for lacking sensitivity to various ethnic, racial, and religious groups.  Among the most notable examples are a parody of Monopoly called “Ghettopoly,” a t-shirt stating “I Love Jewish Girls” surrounded by dollar signs, and a “Jesus Dress Up” magnet game.  The most recent incident to add to the list of Urban Outfitters’ rap sheet involves the Navajo Nation.

The Navajo nation recently saddled Urban Outfitters with a cease and desist letter demanding the clothing marketer take uses of the word “Navajo” out of its descriptions of the company’s products.  The source of the Navajo’s trademark claims stem from the use of the word “Navajo,” not the use of Navajo patterns in the items, which many fashion companies have borrowed throughout the years. Continue reading »

Trademark Bullies Force Small Businesses to Give up More than Their Lunch Money

By Jason Weber *

Scut Farkus

Scut Farkus

After a successful National Bullying Prevention Month in the books, parents can rest assured that classic bullies like O’Doyle and Scut Farkus will no longer be stalking the halls and playgrounds of the nation’s schools.  But there is another breed of bandit out there that terrorizes small businesses instead of small children – the “trademark bully.”  While typical bullies might hurl insults or twist your arm until you scream “Uncle,” these trademark bullies engage in even more sinister tactics: driving their victims out of business with meritless trademark infringement claims.

There is obviously nothing wrong with bringing trademark infringement suits.  Businesses, large and small, are entitled to protect their intellectual property rights under § 1114 of the U.S. Trademark Act.  Trademark bullying, however, is when a large business with unlimited resources tries to enforce its trademark beyond a reasonable interpretation of the rights granted to it by the U.S. Trademark Act.  Basically, trademark bullies use trademark law as a guise to harass smaller competitors by sending cease-and-desist letters and using other threats, regardless of the spurious nature of their claims.  These larger corporations, with deep pockets and powerful attorneys, bank on the fact that many small businesses simply cannot afford to defend themselves because of the exorbitant costs of intellectual property suits.  Instead of fighting back, most defendants are forced to give in to the bully’s demands or face the possibility of going bankrupt during the litigation process. Continue reading »

Giants’ Trademark Gets Picked off at First Base

By Joseph Norman *

San Francisco Giants LogoAlright, who forgot to lock the equipment shed?  Apparently, the intellectual property lawyers at Major League Baseball (MLB) and the 2010 World Series Champions San Francisco Giants.  It seems that while the Giants have been using their cursive script logo since 1993, nobody thought to trademark it.  Well, an entrepreneurial clothing maker from close-by Hayward, California did.  On March 15, 2011, Gogo Sports, Inc. registered a markvirtually identical” to the Giants’ cursive logo in the United States Patent and Trademark Office Supplemental Register.  All is not lost for the Giants, however, as it is likely they can establish a prior use claim to the trademark.

In April 2011, the Giants finally wised up to their failure to register the mark.  On April 26, the Giants submitted a Trademark Application to the USPTO for a mark consisting of the words “San Francisco in stylized text.”  Complaint at 37, Exhibit K, Gogo Sports, Inc., v. Major League Baseball and The San Francisco Giants Baseball Club, (C.D. Cal. 2011)( No. 11 Civ. 7992JHNTJEM) (hereinafter “Complaint”).  On August 8, the Giants’ application was refused “because of a likelihood of confusion with the mark in U.S. Registration No. 3933119.” Id. It is not clear whether they were aware of Gogo’s mark, but the Giants did not seek to assert any right against Gogo until September.  Complaint at 4. Continue reading »

EA Sports: It’s in the…Name?

By Rob Abb *

Electronic Arts logo and energy armor logoIf you are one of the 130 million registered users who play Electronic Arts’ (EA) video games, then you should recognize their logo.  If you are one of EA’s 54 million registered users in the United States, then there is a good chance you have seen this logo, followed by the phrase: “ EA Sports: It’s in the game.”

Best known for video games such as Madden NFL Football, Fight Night, FIFA Soccer, andTiger Woods PGA Tour, EA has spent the better part of the last two decades building its brand image in both the gaming and sports community.  In 2010, Forbes magazine actually ranked EA Sports as the 7th most recognized sports brand in the world, along with such brands as Nike and ESPN.   Additionally, EA not only advertises its products regularly online and on social networking sites like Facebook and Twitter, but also markets and sells its products, all bearing the EA trademarked logo, in several of the largest retailers in the world, including Wal-Mart, Target, and K-Mart.  It follows that EA would obviously be concerned about protecting the integrity of its brand from both confusion and dilution. Continue reading »

So I Can Get a domain-name.eruption: ICANN Votes to Open the Floodgates to New Domain Names

By Pierce Harr *

URL bar http://....Always wanted to have your own domain name?  Been hoping to realize your dream of your very own dot.awesome site?  Well, you just might be in luck.  The Internet Corporation for Assigned Names and Numbers (ICANN) has recently voted to end restrictions on suffixes for site names.  Previously, there were only 22 generic top-level domain names, such as dot.com and dot.gov, and approximately 250 country leveldomains, such as dot.uk for the United Kingdom.  ICANN will be accepting applications from January 12, 2012 to April 12, 2012 for new generic top-level names.  Applicants should be “an established corporation, organization, or institution in good standing.”  The application fee will be $185,000 and a single year renewal of the domain will cost $25,000, not to mention the inherent bidding for coveted domain names.  ICANN will implement several safeguards.  New domain names that violate an organization’s trademark will not be allowed, so no dot.coke for you, unless you are Coca-Cola.  New domain names also cannot be similar to existing generic top-level domains, such as dot.com. Continue reading »

If you don’t have an iPhone, well, you don’t have an iPhone

By Leslie Daniel *

iPhoneThe catchy and not least bit modest tagline from Apple’s latest commercials relates closely to its latest legal battle.  Apple is suing Samsung for “slavishly” copying the “look and feel” of the iPad and iPhone 3G/3GS with its Galaxy S 4G.  Apple’s intellectual property infringement claim is as follows: “Rather than innovate and develop its own technology and a unique Samsung style for its smart phone products and computer tablets, Samsung chose to copy Apple’s technology, user interface and innovative style.”  Apple’s spokeswoman Kristin Huguet did not hold back in the company statement calling the copying “blatant” and “wrong.”

The lawsuit focuses on “Galaxy’s design features, such as the look of its screen icons” and alleges Samsung violated Apple’s patents and trademarks, including the look, product design, packaging and user interface of the iPad and iPhone.  Samsung is not going to go down without a fight, though.  A Samsung representative, Kim Titus, said Samsung “would protect its intellectual property and ‘actively’ respond to the lawsuit: ‘Samsung’s development of core technologies and strengthening our intellectual property portfolio are keys to our continued success.’” Continue reading »

Celebrating the IP Start-Up: JBIPL’s Symposium Tackles the Challenges of a Growing Industry in its Second Panel

By Tiffany R. Johnson *

On Friday, March 25th, the Journal of Business and Intellectual Property Law’s symposium tackled the hard-and-fast growing issues associated with “creative capital,” and topped off its energetic morning panel with Bob Young – the founder of two incredibly successful creative capital ventures, Red Hat and Lulu.com.  Young’s address to a full crowd was not only inspiring because of his unique journey to success (often noting that his “ADD” prevented him from focusing on any one project for too long), but also because of his candor.  He opened to a crowd full of law students with the sentiment that he had some bad news for aspiring lawyers – the world does not revolve around us; and, especially for the IP start-up, it operates in spite of us. Continue reading »

Competition or Commentary: Vitaminwater’s Trademark Potentially Strengthened by Phony Infringer

By Tiffany R. Johnson *

Water isn’t just water anymore.  Infused with everything from vitamins to protein, suped-up water is being marketed as a virtual dietary supplement.  But in 2007, Till Krautkramer and Brian Kane decided that water should not only supplement a diet, it should be the diet – enter Meat Water.   Meat Water boasts to be “dinner in a bottle” with meat flavored water, best served warm.  While their first flavor was a modest Weiner Schnitzel, the brand now carries a flavor for every occasion: from Chicken Salad to Texas BBQ to Venison Confit.  You can’t make this stuff up.  Or maybe you can.  And in the case of Meat Water’s so-called inventors, it might be better if it is all a hoax.  Meat Water is undoubtedly a riff on Vitaminwater’s trademarked bottle, label, and marketing scheme.  But while the copying is incredibly brazen, Vitaminwater hasn’t even blinked at its potential infringing competitor.  I can think of only three reasons why the owner of a famous mark would neglect to seek an injunction against a possible infringer:  the owner isn’t aware of the infringer, the infringing product isn’t a real product, or, rather than diluting/harming the mark, the “infringer” is somehow benefiting the famous mark.  Continue reading »