What's In a Name?


Question: What do Sean Combs, J.K. Rowling, LeBron James, Lionel Messi, and Mark Wahlberg have in common? Two things, actually. First, they are all listed on the Forbes 2017 Celebrity 100 List; second, they all have gone to the trouble of registering their personal names as trademarks with the U.S Trademark Office. Indeed, of the first 20 celebrities on this “A” list, 19 have sought registration of their names as trademarks.

Trademark Protections For Personal Names

Under Federal law, everyone is entitled to seek protection of his or her name as a brand. The Lanham Act expressly provides that:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.

As indicated by the language of the statute, in addition to names, likenesses (portraits) and signatures of individuals are entitled to trademark registration. Several well-known entertainers have taken advantage of this right, including Meryl Streep, Robert De Niro, and Anthony Hopkins … Keep reading

Alert to Privacy Shield Participants: You Could Lose Your Privacy Certification If You Ignore This Warning


Does this look familiar?

Recently, Privacy Shield participants started receiving these troubling alerts, purportedly from the International Trade Administration, warning that the recipient organization owes a new fee, and threatening to cancel that participant’s Privacy Shield certification if payment is not remitted by February 16, 2018. These alerts have all the classic markings of a phishing scam—appearing very official but containing a generic salutation, demanding payment for some otherwise unheard of fee, threatening dire consequences for failure to remit payment—so some of these alerts have undoubtedly gone ignored.

Unfortunately, this is not another blog post about a new fraud alert. Rather, this post is an alert that, if you participate in the Privacy Shield program, you may need to take action before February 16, 2018, to maintain your certification.

Alternative Dispute Resolution Under Privacy Shield Prior to September 13, 2017

The EU-U.S. Privacy Shield is a self-certification program run through the Department of Commerce that provides a safe harbor for U.S. companies that process or transfer heavily regulated personal data of EU citizens in the U.S. Because the U.S. has comparatively lax laws on privacy and data security, to comply with EU regulations, its businesses must voluntarily agree to … Keep reading

That Sound Reminds Me of...


Part of the fun of trademark practice is its unique overlap with literature, art, science, culture, and psychology. Words and symbols are used as trademarks to identify sources of commercial goods; convey messages to consumers that go beyond their pure literal meaning; and, through a curious alchemy of psychology, repetition, aesthetic attraction, and cultural filtering, somehow evoke brand loyalty, leading consumers to open their wallets. Subtle, but powerful messaging animates buyer behavior.

However, if psychology and/or science were the sole driver of branding campaigns, a lot more marketers would stop trying to find the next catchy phrase or word—”Covfefe,” “Google,” “Yelp“—and instead focus on what subliminal force is most likely to create the strongest bond between the consumer and the manufacturer. Despite smell and sound being the more profound links to human feelings and motivations, marketers rarely do more than play at the edges of these forces—by using a jingle occasionally, for example.

Psychoacoustics and the Associations Created by Sound

We’ve all experienced the sensation of hearing a piece of music, or even a familiar sound, and having it transport us back in time to some experience from our youth. When it happens, … Keep reading

Choosing the Ideal Venue for IP Disputes: Recent Developments in Federal Case Law


The venue of a lawsuit can be a crucial, even dispositive, decision in managing the strategy of a successful outcome in an IP dispute. Defending a lawsuit on your home turf is often easier than in a distant state – defendants may be more inclined to settle lawsuits that are brought in inconvenient or hostile jurisdictions far from home. Moreover, venue can affect the adjudication of the merits of the dispute, since the various tests for infringement, and even the availability of injunctive relief, can vary by circuit. Accordingly, litigants will often try to tilt the possibility of success by considering all these variables before choosing where to file a case. However, recent developments in venue and jurisdictional law may impact a litigant’s ability to access favorable venues.

The Supreme Court’s recent decision in TC Heartland LLC v. Kraft Foods Group Brands LLC radically changed the law regarding venue of patent lawsuits. Until July 2017, about 40% of patent cases were brought in the Eastern District of Texas. In Heartland, the Supreme Court ruled that defendants in patent cases could be sued only where they are incorporated, or where they have a regular or established place of business. … Keep reading

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

The "Lowdown" on DMCA Regulations and Take-Downs


Chances are, if you have ever posted or published content on the web, or your company operates a website, you have heard the term “take-down notice.” Perhaps you have even been on the receiving end of such a notice, claiming that content on your website is owned by a third party, and that if you do not remove the content, your website will be taken down or a lawsuit will be filed claiming copyright infringement.

These notices are part of a mechanism available to copyright owners—including those who have not registered their copyrights— under a U.S. law called the Digital Millennium Copyright Act.  This statute was enacted in the late 1990s as an attempt to bring the U.S. Copyright Act up to speed with society’s increased engagement via the Internet. The take-down procedure was introduced to provide a “safe harbor” for internet service providers that provide platforms for others to post content. Essentially, by following the procedures detailed in the DMCA, a website owner (or ISP) may be able to shelter him/herself from liability for infringement if a user posts infringing content, provided the website owner is not actively participating in or encouraging infringement and otherwise … Keep reading

To Refresh or Relaunch...That Is the Question


If you work in marketing, you know what a “brand refresh” is, and how it differs from a “brand relaunch.” Both can be equal parts perilously challenging and thrilling. And both can serve useful purposes, both in reminding customers about a product’s continued existence, and in introducing a product to a new audience as a way of increasing market share.

Legally, most trademark lawyers will face brand refreshes and rebrands with some skepticism. Our traditional view, predicated on legal principles, is that trademarks are easier to enforce and maintain if nothing changes and the branding remains utterly consistent. Making changes that undermine consistency of use can result (albeit rarely) in a loss of rights, or at least a loss in priority. But a skillful refresh is marvelous, not just because it can manage to maintain the tradition (and enforceability) of the original brand, but because seemingly subtle changes to branding can result in profound and novel messages to consumers.

Depending on scope and goals, the result of a refresh can be akin to renovating your house. You might add a new kitchen or a fresh coat of paint, and suddenly something that seemed tired is reborn and reinvigorated. … Keep reading


… and “How a Doll Can Help Teach Networking to the Next Generation of Trademark Lawyers”

 

shutterstock_112218026Dateline: May 2, 2015, San Diego, CA. The International Trademark Association (INTA) has just launched its annual ginormous conference here in “America’s Finest City.” My colleagues back at the office feign jealousy that we are in San Diego on a ‘junket.’ But the truth is, this five day mega-networking meeting presents tremendous challenges.

The opportunity beckons: Come and network with 10,000 of your colleagues (some of whom are your competitors!). Highlight your talents and skills! Be erudite, witty, knowledgeable, magnetic and fun, all while running (really, literally, running) from venue to venue meeting as many people as you can, current and potential clients and colleagues for about 18 hours a day for 5 days straight…

shutterstock_81091828It’s grueling. It requires a plan, a steely yet warm exterior, and boundless energy. Without a plan, it can feel like you are back on the playground egging to get picked for someone’s team and wondering what you need to do to get in the game.

While 10,000 potential targets is obviously a daunting number, INTA tries to reduce the intimidation by helping young practitioners learn … Keep reading


shutterstock_268287902Anyone who knows me at all knows that I suffer from a terrible affliction called “early adopter syndrome.” I had a cell phone when it really was more of a brick with a speaker and the first smartphone, I can tell you, was not terribly smart at all. There was a lot of staring at the screen waiting for it to bring up a website or a low res photo… As a result of my affliction, there is a veritable cemetery of old devices at my house, all acquired soon after launch.

So now I’ve been hit again – this time with Apple’s… iWatch, er… the Apple Watch. What is that thing called? Officially it’s the “Apple Watch.” A simple name. All business, elegant design, understated but direct. The name fits the device. Just a watch – but it’s not just a watch right? It’s the Apple watch. It’s about as much of a watch as a Tesla vehicle is just a car. Why is a company that has invested so much in the “i” prefix to connote that its devices are “new,” “more,” and “unique” suddenly reverted to referring to its super integrated wrist candy as a mere … Keep reading