Trademark

Does the Emperor Really Have No Clothes?

A Teachable Moment in the Way of the TRUMP Brand and Naked Licensing of Trademarks

 

The current POTUS has a lot of things on his plate right now, and the status of his trademark rights (or, perhaps, more appropriately, the trademark rights of the Trump Organization) around the globe shouldn’t be top of mind. That said, the Trump Organization’s pattern of not controlling the quality of services that are provided under the TRUMP brand provides a teachable moment in the world of trademarks and branding.

The news media have reported repeatedly about the Trump Organization’s penchant for distancing itself from TRUMP-branded projects that have failed, including those in Baja California, and Tampa and Fort Lauderdale, Florida, as well as developments outside the U.S. in Panama and Azerbaijan, among others. While the details of these projects vary, all of them follow a similar narrative. The Trump Organization involves itself in the promotion of an upcoming TRUMP-branded real estate development, and then, despite hype and ample purchases by willing consumers and investors seeking to own a piece of TRUMP real estate, the project never properly gets off the ground, the developers flee with the deposits, and the purchasers … Keep reading

IP Challenges for Ganjapreneurs

Like any industry, cannabusinesses and ganjapreneurs need to be thoughtful about protecting their proprietary material, in order to mitigate their risk of being ripped off – or worse, being accused of infringing other people’s rights. This post provides a brief overview of trademark and copyright issues to consider when developing and protecting your business in this space.

Protecting Cannabusiness Branding

If your product is king, then your brand is certainly queen. Your brand name, or trademark, tells consumers that a product or service comes from you and not your competitors. Accordingly, identifying and protecting the name of your new business could be fundamental to your success.

Some Quick General Rules on Trademark Protection
Regardless of your industry, under U.S. law, trademark rights involve a business’s use of a name, term, phrase, or logo in connection with the sale of specific goods and services. Generally, the first business to use a name in the marketplace is entitled to claim ownership of it. It is, however, possible to obtain rights beforehand, if an application for registration with the U.S. Patent and Trademark Office is filed. If your business adopts a trademark that is too similar to a mark used by an … Keep reading

shutterstock_244812262 (2)Trademark owners are in the midst of another ‘think’ about the best way to protect and preserve their reputations online.  Specifically, beginning on March 30, 2015 the Sunrise Period opened for brand owners to fork over $2499 for domain names that end in .sucks. This $2499 payment is necessary annually to keep yourbrand.sucks from the clutches of an unhappy customer who might use it to make a career out of publishing any material they wish (fair, unfair or otherwise) about your company, or if you are celebrity – about your performance or personal  life.  To add insult to this expensive injury, after the end of the Sunrise Period, pretty much anyone (other than the brand owner) can pick up the same domains for $9.99 making the barrier to entry for complainants rather low.

As reported by The World Trademark Review and others, the CEO of .sucks registrar Vox Populi, John Berard, claims that intent of the apparently inapt pricing scheme is to encourage brand owners to engage with consumers.  By making the price high, there will be less warehousing of domains and some brand domains will find their way into the hands of people who will … Keep reading

I can’t define disparagement, but I know it when I see it…

On Wednesday, June 18, 2014 the Trademark Trial and Appeal Board, the judicial body that provides review to all Federal trademark filings and disputes relating to such filings, released its second decision to CANCEL the trademark registrations owned by Pro-Football, Inc. and used by the National Football League’s Washington Redskins football team.  The decision is interesting for many reasons, legal, political, and socio-cultural.  But to me the most bloggable angle is how the media has exploded about the decision in the last couple of days, often misreporting the facts (and the law) and suggesting odd conclusions that purportedly flow from the decision.

CNN proclaimed: “If you want to start selling T-shirts with the Washington Redskins’ logo without permission, you may be in luck.”  This unsubstantiated assertion was repeated in other media outlets including Ad Age, which suggested that losing the registrations meant everyone could sell branded items without “fear of reprisal.”

First.  False.  If the decision of the Office stands, the Redskins team, and Pro-Football will still be able to sell their wares and stop others from doing so.  Thousands of unregistered trademark … Keep reading

You Can Trademark That?  They Can Own What? Who Knew?

There are many reasons we have IP laws – but primary among them is to encourage creative types like artists and inventors to profit from their efforts by way of royalties or exclusive rights.  To encourage those efforts, the intellectual property laws give authors and creators a relative monopoly over something they’ve created – a trademark, an invention, a script, a computer program, etc.  It’s like society is saying “you made it, so you can own it – at least for a while…”

But a natural tension immediately presents itself when we grant these exclusive rights.  Our culture wants to embrace, use and assimilate all that is cutting edge and new without having to ask for permission.  We take – no, we borrow Pharrell Williams’  “Happy” riffs and make them background music to our YouTube® videos of our cats and our dogs.  We expropriate “just a” screen capture from the Godzilla movie and create e-cards or embed them on our Facebook® pages.  Our post-90s, crowd sourced, media-centered sensibility has created this “if it’s out there it must be free” (or “it wants to be free”) ethos … Keep reading

Last week I blogged about a common deceptive technique used by some publishers around the world that send apparently official invoices to trademark applicants in the hopes that people will reflexively pay outrageous sums for a listing of their brand in a catalog few will read.I wanted to follow up on that post and summarize another common scam that befalls trademark owners and applicants.  I get an inquiry from a client at least 2-3 times per month:

“Is This Domain Name Email Legitimate?”

The ruse works likes this: Trademark owner applies for a trademark in the U.S. or with another office in another country.  Information about the mark and the owner is publicly available to scammers through simple searches.  The scammer sends an email to the trademark owner purporting to warn the mark owner of the ill behavior of a potential domain name squatter.  Below is an actual email received recently by a client.  I have changed the names in the email to avoid any embarrassment of the recipient, but I otherwise have left the text, including the grammatical errors of the original, intact.

Dear CEO/Principal,

We are the department of [Domain Name] Service in China. Here I have

Keep reading

Scam AlertThere are few things more annoying than the feeling that you have been duped into paying for something that you neither need nor want.   IP owners, and particularly trademark owners, are common targets for scammers seeking to obtain fees for bogus, unnecessary or questionable services offered at outrageous prices.  No doubt these scams work because people are busy – but the notices also are steeped in what looks like official language, may appear to come from official governmental auspices, and seem to suggest that the fees cover “renewal,” “registration” or “publication.”  These activities are all items that IP owners are accustomed to paying for, so when they see notices requesting payment (rather than merely soliciting interest in a service) they tend to pay the invoice rather than ask questions about the content or source of the purported services.

Here’s how it works.  A trademark owner files to protect its mark in the U.S. or abroad.  They might use a law firm for that service or file directly.  Regardless, information about the applicant and the mark is publicly available through the online database maintained by the U.S. Trademark Office (or other international offices).  The purported scammer service provider picks up

Keep reading

As the political season in the U.S. heats up and the campaigns continue to hone their messages, the branding of the campaigns and the candidates becomes more visible to a larger portion of the U.S. electorate.

Political campaigns are entertaining and instructive fodder for thinking about the power of branding since, after all, they are the genesis for all things “swag.”  Political messaging has provided us with a litter of campaign pins, bumper stickers, mugs and key chains and other give-aways meant to help spread the essential messages of the candidates.   These branded collectibles are the archaeological evidence of each campaign’s attempt to sway voters with some essential pith or short message conveyed in words and images.

Each of the buttons to the left had an explicit message, coupled with an express or subliminal message.  McGovern was for women, Ike and Dick had a personal commitment to you, Hillary Clinton was Rosie the Riveter, working for change…

What of this year’s imagery?  The Romney campaign has adopted a simplified branding consisting of a red, white and blue triple “R” design (Romney, Ryan, Republican?) which is variously used as part of Romney’s name, and as a stand alone logo at … Keep reading

I can hardly think of Christain Louboutin’s (“Louboutin”) “red soled shoe” case without hearing Elvis Costello’s Red Shoes in my head.

Angel in Red Shoes

…Oh I used to be disgusted 
and now I try to be amused. 
But since their wings have got rusted, 
you know, the angels wanna wear my red shoes
Red shoes, the angels wanna wear my red shoes

For awhile, at least in the Second Circuit, we were wondering who could sell red shoes and/or whether angels might have to go barefoot for awhile…  But now we seem to have some clarity on the issue.

To review, Louboutin has been fighting since 2011 to stop Yves St. Laurent (“YSL”) from copying his trademark red-soled shoes.  In what had been a somewhat surprising opinion, the Southern District of New York had denied Louboutin’s request for an injunction against YSL’s monochrome red shoes (that included a red sole) last August, on the grounds that color was per se functional as applied to fashion items.  We’ve been waiting for months for Louboutin’s appeal to reach a decision, which finally came down on September 5, 2012  from the Second Circuit Court of Appeals.

My earlier ruminations on … Keep reading

Should Colors Be Protected as Trademarks? If Not, Should Letters? How Shoe Soles and Mobile Apps Might Be Related

One of the pleasures of practicing law, perhaps especially in the technology space –is in observing how technology trends and legal theories n Qualitex v. Jacobson, determined that single colors could be protected as trademarks—as long as the color, as applied to the relevant products, was not merely functional. Previously, some feared that granting trademark protection to single color (even if the color was non-functional) would be anti-competitive because colors were in short supply. Hence, no one should own one color exclusively. The Qualitex ruling seemed to provide closure on the issue by focusing the analysis on the functionality of the color shade rather than the potential for that color to be removed from the designer’s pallet.

But recently, as the trademark community knows, the Second Circuit Court of Appeals took up the appeal in Louboutin v. Yves Saint Laurent, a case that revisits the protectability of color, this time as used to identify a brand of shoes. The District Court opined that the use of red on a shoe sole (or on any fashion item) was “functional” by its very nature and that granting a monopoly to color on a fashion item was outside the bounds … Keep reading