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  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 »

Trademarking the Top Ten Earning Athletes

By Joseph W. Norman *

Recently, while investigating Zlatan Ibrahimović’s recent transfer from Barca to AC Milan, I ran across this interesting note on his wikipedia page:  “The name Zlatan was trademarked in May 2003 by PRV for “most likely being perceived as Zlatan Ibrahimović”, which meant that he received exclusive rights to the name for certain products, including sporting goods, clothing, and shoes.”  So it appears, that Ibrahimovic has trademarked his first name in Sweden.  I then began to wonder about what trademarks other athletes may own related to their names and associated entities.  What follows is a short survey of trademarks owned by the Top 10 athletes in Sports Illustrated’s 2010 Fortunate 50.  (Note: the majority of my research was performed using the U.S. PTO’s trademark search service Trademark Electronic Search System.  Where athletes (or companies) had at some point registered a mark, I attempted to correspond with the attorneys of record, and some of the information contained herein came from those sources.) Continue reading »

Why It Should be Hard to Prove Someone’s Cramping Your Style: Analyzing the “Similarity” Factor in a TDRA Dilution Claim

By Luke MacDowall *

Trademark law has traditionally been thought of as a shield to protect consumers from mistake and deception in identifying the source of goods.  Mark owners would wield this shield on behalf of consumers by brining infringement claims against confusingly similar marks.  But a distinct cause of action has been recognized for nearly seventy years that does not fit neatly into this conceptualization.  Following Frank I. Schechter’s famous article in 1927 “The Rational Basis of Trademark Protection,” states began to enact anti-dilution statutes to plug the hole in trademark protection that Schechter argued existed:  namely, the inability to protect the distinctiveness of one’s mark.  40 Harv. L. Rev. 813 (1927).  But protection for this particular attribute would not be recognized at the federal level for decades.  Congress first provided a federal dilution cause of action in 1996 with the passage of the Federal Trademark Dilution Act (“FTDA”).  Marred by inconsistencies in its application, Congress revamped the statutory scheme with the Trademark Dilution Revision Act (“TDRA”) of 2006. Continue reading »

Foreign Ferrari F150 Finished After Feud with Ford

By Rob Abb *

In the world of trademark infringement, it looks like size trumps speed.

On January 25, Italian sports car manufacturer Ferrari unveiled the design for its new Formula 1 race car. To commemorate the 150th anniversary of the unification of Italy, Ferrari named its new car the Ferrari F150.  Sounds reasonable enough, right?  Not to the Ford Motor Company, which sued Ferrari in Federal Court in Detroit to make sure that “F-150” remains synonymous with trucks.

As Ford routinely mentions in its commercials, the Ford F-Series pickups, “have been America’s best-selling trucks for 34 years and the best-selling vehicle in the U.S. for 29 years.”  In its complaint, Ford alleged that Ferrari infringed upon the trademark of its popular Ford F-150 pickup truck.  Ford claimed that Ferrari’s logo for the car and its name, “F150,” were similar to Ford’s F-150 name and logo (though Ford’s has a “-“ between the “F” and the “1”).  “Ferrari has misappropriated the F-150 trademark in naming its new racing vehicle the F150 in order to capitalize on and profit from the substantial goodwill that Ford has developed in the F-150 trademark.” Continue reading »

Subway’s Pending Attempt to Trademark the Word “Footlong” Amidst the Backlash

By Vlad Vidaeff *

“Five, five dollar, five dollar footlong.  Five, five dollar, five dollar footlong.  It’s ca-ca-catching onnnnnn!”  Over the past few years, Subway has made an effort to advertise its sandwiches by using the aforementioned catchy jingle.  Through its advertising efforts and delicious sandwiches, Subway is now a major power player in the restaurant industry with 34,125 stores in 96 countries.  Perhaps trying to capitalize on its popularity, Subway requested to trademark the word “footlong” for its sandwiches and is currently waiting to hear back from the U.S. Patent and Trademark Office (“USPTO”).  Interestingly, the  USPTO has already rejected Subway’s request to trademark “footlong” for its restaurant services, but Subway is still waiting to hear back about the trademark referring to its sandwiches.  With its trademark registration pending, Subway is not pleased with the actions of Casey’s General Stores, a convenience store with around 1,600 stores in the Midwest.  Casey’s has been describing its sandwiches as “footlong” on signs and menu boards in some of its stores.  Subway’s counsel recently sent Casey’s a cease and desist letter demanding that Casey’s stop using “footlong” or face legal action. Continue reading »

Between Right and Responsibility: The Susan G. Komen Foundation’s Abusive Trademark Strategy

By Luke MacDowall *

In one of his famous “Tip of the Hat, Wag of the Finger” segments, Stephen Colbert “tipped his hat” to the Susan G. Komen Foundation’s (“the Foundation”) recently publicized efforts to protect its trademarks.  It is not the attempt to protect its marks that has drawn mounting criticism, but rather the chosen targets of its legal actions:  other non-profit, charitable organizations dedicated to raising revenue to support medical research.  As one of the most vocal supporters of the Foundation’s efforts to find a cure for breast cancer, Colbert’s satirical gesture made headlines.  He highlighted the seemingly wasteful expense of millions of dollars in donor funds spent on protecting these trademarks each year.

Over the past fifteen years, the Foundation has reviewed eighty-three different groups who have attempted to use the phrase “for the cure” or “for a cure” and pursued legal action against half. Continue reading »

Which One is More Dangerous: Knock-Off Handbags or Suppression of Free Speech?

By Lauren M. Tozzi *

At the end of November, after 90 days of investigation, the Department of Homeland Security (“DHS”) shut down 82 websites for allegedly violating intellectual property rights.  DHS selected the sites, at least in part, based on rights holders’ complaints that the sites were stealing their intellectual property.  (CNN)  Despite the investigation and tips, the website owners did not receive any notice that their sites would become inoperable.  (To try to visit one of these sites now, click here.)  Democrat Senator Patrick Leahy from Vermont called the seizure of these websites an “innovative use of the tools currently available to law enforcement,” and likened it to the tactics that could become law under the Combating Online Infringement and Counterfeits Act (“COICA” or “the Act”). Continue reading »

Owning Krishna: High Court Holds No Trademark Rights to Popular Deity’s Name

By Tiffany R. Johnson *

Imagine a sausage manufacturer taking the famous Triangle K symbol and plastering it on millions of packages of non-kosher links.  The Triangle K symbol is a visual indicator of the word “kashrut” – or kosher – and functionally brands food products.  In the U.S., regardless of the common usage of the word kosher, unauthorized use of the Triangle K symbol would undoubtedly constitute infringement of the trademark.  Similar branding practices in India, however, may not have as much teeth under the High Court’s latest interpretation of the Indian Trademark Act, 1999.   Continue reading »

The U.S. and Japan Differ in Court Analyses of Gray Market Goods, But Yield Same Results

By Lauren M. Tozzi *

“Gray market goods” or “parallel market goods” carry valid U.S. trademarks, but are imported without the U.S. trademark holder’s consent.  There are several ways this may occur, but here are three common examples: (1) A fictional company, American Goods, registers a U.S. trademark for widgets made abroad, but a third party resells them in the U.S.  (2) American Goods purchases the rights to a foreign company’s trademark, but a third party imports the trademarked goods into the U.S.  (3) American Goods licenses a foreign company to sell its widgets abroad, but a third party purchases them and resells them into the U.S.  Generally speaking, gray market goods increase competition and lead to lower prices for consumers, but companies are displeased when increased competition cuts into their profit margins.  Furthermore, these scenarios threaten intellectual property rights; so many countries have devised means of regulating gray market transactions.  One way of controlling gray market trading is to legislate against particular types of relationships, while another is to litigate particular relationships based on their potential for harmfulness.  A quick comparison of a landmark decision on gray markets in Japan with three critical cases on the same topic in the U.S. suggests that the two legal systems take strikingly different approaches to these issues, but reach the same end results. Continue reading »