This week starts Michael Jordan’s trademark trial against Chinese sportswear company Qiaodan Sports Co. Qiaodan translates in Mandarin to mean Jordan.
Qiaodan Sports sells basketball shoes and jerseys with Qiaodan and #23. If Jordon wins this case, he will use his proceeds to promote basketball in China.
Blow Dry Bar – Houston
While in LA I marveled at all the hair salons for blow drying hair. Who knew these salons were all over Texas. And, as much as we Texas gals like our hair fixed, it does seem like a natural fit.
Houston, Texas-based Blow Dry Bar, LLC seeks a declaratory judgment of non-infringement against Dallas, Texas-based DryBar Holdings, LLC’s trademark and trade dress. DryBar sent several cease and desist letters to Blow Dry Bar after Blow Dry Bar launched their first location and announced the opening of their second store. DryBar’s founder Alli Webb has been credited by many as creating the “blow dry salon” trend.
The term “blow dry bar” is descriptive at best and is quickly becoming generic for a hair salon that provides “blow drying.” A consumer sees blow dry bar and immediately knows the service available. Perhaps salons should start thinking less descriptive in order to develop a strong and defendable brand. The case, filed in 2012, is still active with a hearing on a Motion for Summary Judgment scheduled on April 25, 2013.
Blow Dry Bar, LLC v. Drybar Holdings LLC, 4:12-cv-02425 (S.D. Tex – Houston, filed Aug. 8, 2012).
Plano, Texas-based retailer, JC Penney Corporation, Inc., asked a judge in Texas federal court to find JCP’s use of the name Aspen to describe a pair of winter boots is not infringing of Aspen Licensing International, Inc’s “Aspen” trademark for footwear.
By filing a declaratory judgment action, JCP kept the case in the Eastern District of Texas requiring Aspen Licensing, a Florida entity, to come to JCP’s home court. According to court documents, Aspen sent several demand letters to JCP and made phone calls threatening litigation if JCP did not make a monetary settlement.
J. C. Penney Corporation, Inc. v. Aspen Licensing International Inc., 4:13-cv-00066-RAS-DDB (E.D. Tex. filed Feb. 8, 2013).
Plano, Texas based Frito Lay, Inc. was unsuccessful in their claim that Ralcorp Holdings’ snack chip infringed the “Scoops” design trademark or patent for the process of making a formed snack chip. The jury’s decision of non-infringement may give the go-ahead to other snack food manufactures to begin offering similarly shaped chips.
In addition to losing the lawsuit, Frito Lay may be on the hook for costs and attorneys’ fees. Ralcorp Holdings filed sealed documents related to costs and fees on April 18, 2013.
Levi Strauss sued and succeeded in a claim of trademark infringement against a German competitor that attached a “red tab” to its jean pocket.
In the US, Levi Strauss has been using the “red tab” since 1936 on pants/overall pockets. In the US the “red tab” federal trademark registrations from 1936 do not mention the word “LEVI’S” on the tab. The concern raised in the recent dispute with German company Colloseum Holdings was that Levi Strauss does not offer jeans in the EU with only a “Red Tab.” The tab always includes the word “LEVI’S.”
Research Group 3, Inc., known by its brand and common law trademark RG3, may oppose the trademark application filed by football star Robert Griffin III for the mark RGIII for clothing items.
Research Group 3, a motorcycle parts company, claims in its trademark application use of the mark RG3 for clothing items since 1999. But, Research Group 3 only filed a trademark application in January 2013, months after Robert Griffin III filed his application.
We should know next week if the parties worked something out or if an opposition will proceed with the Trademark Trial and Appeals Board.
“When The Band Gets Divorced – Mediating The Band Partnership Dispute”
1 hr CLE pending
Join attorney/mediator Tamera Bennett at the Belo Mansion at Noon on Wednesday, March 27, 2013 for a discussion on common issues band members mediate when a member departs and/or the band dissolves.
We’ll be taking a look at the “Sugarland” partnership dispute, the recent “En Vogue” dispute, as well as the “J Geils Band” dispute and applying those fact patterns to structuring a successful mediation for your client.
Dallas Bar Association
Belo Mansion
2101 Ross Avenue
Dallas, Texas 75201
214-220-7400
The NFL is more than diligent in protecting its SUPER BOWL brand, along with the SUPER SUNDAY brand. With the amount of money spent on the brand, I often say more power to the NFL in protecting their rights and protecting consumers from inferior infringing products.
The NFL has stepped up their protection efforts to block trademark registrations filed a year ago by football fan Roy Fox for “Harbowl” and “Harbaugh Bowl.” Roy was planning on a head-to-head match of brothers and coaches Jim Harbaugh and John Harbaugh. Roy’s goal was pure and simple: profit off someone’s name. This is where the trademark laws do work. While I’m not sure the NFL was the correct party to oppose Ray’s trademark filings, either Harbaugh brother had grounds to stop a registration from being issued. In my mind consumers would believe that either or both brothers had consented to the use of their names and/or endorsed the products that would be sold. Both trademark applications have been abandoned.
Colin Kaepernick, the San Francisco 49ers quarterback filed trademark applications for KAEPERNICKING, KAEPERNICK7, KAP, KAP7, KAEPERNICK CK7, COLIN KAEPERNICK all in Class 025 for clothing items. None of the marks have actually been used by Kaepernick on any clothing items. It will be interesting to see if Colin uses the marks, or has filed the applications as a blocking mechanism so that he doesn’t have to defend his name in the event a third-party were to seek a registration.
Trademark practice pointers:
1) Before the USPTO approves an application that references a living individual, consent to registration must be on file. If an entity or individual other the Colin Kaepernick had signed the trademark application, an additional document confirming he is a living individual and he consents to his name being used as part of a trademark must be filed. To save your client money – file that form with your application so you don’t have to respond to an office action down the road.
2) Every item in which Colin’s applications listed were found in the TEAS Plus application at the USPTO. The filing fee for a TEAS Plus application is $275 per class as compared to the $325 filing fee for using a TEAS application. Not only does using the TEAS Plus form save money; it also expedites the review process by the examiner.
The City of New Orleans will enforce “clean zones” from January 28 to February 5 to comply with NFL policies to thwart ambush marketing.
Read more about the City of New Orleans efforts.
Read more about how ambush marketing can de-value a costly sponsorship.
Get Hot — The US Copyright Office issued a ruling in June 2012 that yoga sequences are not protected by copyright. Studios offering “hot yoga” should now be in the clear from lawsuits brought by Yogi Bikram Choudhury so long as the name BIKRAM is not used.
Yogi Bikram Choudhury developed the “Bikram” style of hot yoga and according to records at the US Patent and Trademark Office has been using the brand name “Bikram” since 1971 in offering his yoga classes and instructional materials. The craze of “hot yoga” (which even as a yoga student, I do not understand), has taken the US by storm.
Choudhury, diligent about licensing his rights to the BIKRAM trademark and instructional method, sues yoga studios offering “traditional hot yoga” even if the name BIKRAM is not used to describe the course. Choudhury has multiple copyright registrations for his yoga instructional videos and materials. He is claiming a copyright in the sequence which is a compilation of 26 poses and two breathing techniques.
Two very different results were reached in recent court cases filed by Choudhury. In the Central District of California (Western District), Choudhury sued the studio Yoga To The People claiming copyright infringement of the sequence. The suit, after discovery and mediation, settled in November 2012 with the defendant agreeing not to offer “hot yoga” at his studio. Perhaps the defendant should have stuck it out with the case a bit longer as a different result was reached in a very similar case.
Choudhury sued Evolation Yoga, LLC also alleging copyright infringement of the Bikram sequence. In a motion for summary judgment ruling, The Central District of California held:
There are two reasons why the Sequence is not copyrighted: 1) Choudhury’s copyrights cover his literary and audiovisual works—but only his expression of the facts and ideas contained within, and not the facts and ideas themselves; and 2) even though Choudhury’s works describe the Sequence (and teach one how to do it), a compilation of exercises or yoga poses itself does not fall into any of the copyrightable categories under 17 U.S.C. § 102(a) and is not copyrightable under § 102(b) because it is a system or procedure.
The Evolation Yoga case (Bikram’s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 2012 WL 6548505 (C.D. Cal. Dec. 14, 2012)) continues with other issues not resolved by the Motion for Summary Judgment ruling.
Join music lawyer and music mediator Tamera Bennett and film/tv/theatre lawyer Gordon Firemark for Episode 36 of the Entertainment Law Update Podcast. It’s the podcast by entertainment lawyers for entertainment lawyers.
The following changes impact trademark applications filed or pending as of September 1, 2012.
Please review additional information on the new Trademark Act.
Please review additional information on new Trademark Administrative Rules (PDF).
Qwerky, Ltd., the owner of Swig Martini Bar in San Antonio, Texas is facing the big guns of Texas in a dispute over the trademark “I Can’t Remember The Alamo” for drinking glasses, t-shirts and restaurant/bar services.
The State of Texas, by the General Land Office, owns several registrations for “The Alamo” for museum services and gift shop services. The Great State of Texas also claims common law trademark rights in the phrase “Remember The Alamo.” The State of Texas filed an opposition with the Trademark Trial and Appeals Board to block the federal registration of “I Can’t Remember The Alamo” claiming the restaurant’s use of the mark conveys a false suggestion or connection with The Alamo and is likely to confuse consumers.
Qwerky’s response to the Opposition is due September 25, 2012.
This isn’t the first trademark battle fought by “The Almo” — read more here.
Qwerky/Swig has had a little experience with trademark battles, too — read more here.
Imagine that one day shoes you designed are gobbled up by Reese Witherspoon, Sarah Jessica Parker and Naomi Campbell. The next day you are fired from your namesake business with no control over a brand that is your name.
Shoe designers and fashion industry darlings Kari Sigerson and Miranda Morrison learned a lesson similar to Steve Jobs when he was fired by APPLE — if you take the investors’ money, you might be giving up a lot of control.
Sigerson and Morrison went into business together in 1991 and had a wonderful run. In 2006, looking for an infusion of cash, they made a deal with Marc Fisher Footwear for$2.6 million to acquire Sigerson Morrison and the intellectual-property rights to the name. Sigerson and Morrison each retained a 10% interest and a salary.
About a year ago Sigerson and Morrison were fired and litigation has been ongoing.
Clearly the trademark of Sigerson Morrison has a huge value. But, will the company be able to fill the shoes of the two namesake designers?
No “freeze frame” for John Geils, Jr “J. Geils” or members of the J. Geils band that announced a tour this year without their name sake. J. Geils and the band are battling it out at the trademark office and the court-house for who owns the name.
John Geils, Jr. through a company I am assuming he has partial ownership in, filed and received a trademark registration of J. GEILS BAND in 2009 for clothing and live performances. The application shows use dating back to 1967. The trademark examiner seemed to fully vet the application and required the consent of J. Geils as he is a living individual.
Fast forward to April 2012 when a company named T & A Research & Development Corp. filed a trademark application for “The J. Geils Band” claiming a date of first use in 1969. Again, the trademark examiner fully vetted the application and issued an initial refusal requiring the applicant to submit a consent from J. Geils and further requiring the applicant to explain its association to the band. The response is not yet due.
In May 2012, Geils Unlimited, LLC filed a trademark cancellation proceeding seeking to cancel the “J GEILS BAND” registration. The petition for cancellation alleges Geils and other band members entered into a written shareholders’ agreement that restricted Geils use of the name J. GEILS BAND.
One more litigious twist – J. Geil’s company filed a trademark infringement suit on August 1 in district court.
Be watching for updates on the blog and a discussion on Entertainment Law Update Podcast.
Christian rockers Newsboys have 28 No. 1 singles and have been together for 26 years. They are just a little upset over possible consumer confusion with the rapper duo New Boyz.
New Boyz, around since 2009, just released a direct to DVD movie and is currently on a European tour.
With the continued consolidation of the record business, the overlap of genres on terrestrial radio and especially on services such as Pandora and Last.FM, Newsboys may have more than a blush of a claim that a music consumer could be confused between the two band names. The test in trademark infringement is whether or not a consumer is likely to be confused that a song or records released by one band was actually released by the other band. If you saw a New Boyz CD you might think it was the Newsboys.
There is a trademark registration with the US Patent & Trademark Office for NEWSBOYS for entertainment services; namely, live musical performances of a religious nature rendered by a group. The registration is incontestable and issued on March 29, 1994. Interesting side note — the owner of the mark is Wes Campbell, the manager of the Newsboys (that tidbit is a topic of discussion for another day on what a band should never do).
I did not find any trademark filings for New Boys.
Here’s a look at more press on Ambush Marketing surrounding the 2012 Olympic Games:
Australia’s Olympic Committee, enforcing a 30 day ban on none approved ads, required the industry lobby group, Australian Mining – This Is Our Story, to pull a television and online ad featuring the 10-time world champion and Olympic gold and silver medalist Ann Meares. Meares, unaware of the launch of the campaign, appears in the video in cycling gear branded with her sponsor BHP Billiton’s logo as she talks about her campaign to win gold in London.
Meares has also been required to remove a TOSHIBA logo from her racing clothes. And the Australian Olympic Committee is actively monitoring consumer electronic companies for any engagements in ambush marketing.
Updated 1/15/2013
On January 9, 2013 the US Supreme Court agreed with NIKE, Inc. holding a covenant not to sue rendered the ongoing litigation moot.
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Updated 11/8/2012
The US Supreme Court is hearing oral arguments today.
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Arlington, Texas based Already LLC dba YUM is in a trademark legal tangle with NIKE over the similarity of the YUM brand “Soulja Boy” and “Sugar” shoes and the NIKE brand “Air Force 1.”
NIKE filed suit against YUM in 2009 arguing a likelihood of consumer confusion between NIKE brand registered trademark for the Air Force 1 shoe and the YUM brand shoes. YUM responded with a trademark cancellation proceeding against NIKE. Risking cancellation of the “Air Force 1″ mark, after a year in the court system, NIKE agreed to withdraw the suit and provided a “covenant not to sue” to YUM. YUM appealed the case to the Supreme Court. The Supreme Court is not that interested in sneakers, but more interested in a split of the circuits regarding the use and implication of “covenants not to sue.”
Already, LLC phrased its “Question Presented” to the Supreme Court as:
“Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.”
Nike Inc. styled its question a bit differently:
“Whether respondent’s covenant not to sue petitioner was worded in a fashion that resolved the ‘actual controversy’ in this declaratory judgment suit.”
Every year we need a refresher course in trademark basics. You may also be interested in Part 2 “Selection to Application,” Part 3 “Intent to Use,” and Part 4 “Post Registration.”
Q: What is a trademark or service mark?
A: A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this post, the terms “trademark” and “mark” refer to both trademarks and service marks.
Q: What is the difference between a trademark and a copyright?
A: A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Examples of well-known trademarks include NIKE, CHANEL and ZYRTEC.
A copyright is an original work of authorship fixed in a tangible medium of expression; such as a song, book, or sound recording.
Q: What should I consider in selecting a trademark?
A: Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive.
Resist the temptation to select a mark that describes the goods or services. It is difficult, if not impossible, to protect a mark that is descriptive. The trademark examiner, when reviewing your trademark application, will categorize a mark in one of four general categories:
On a scale of 1 to 5, a generic mark is a 1 and an arbitrary mark is a 5. A mark that is a 4 or 5 on the scale has the greatest level of protection and is either suggestive of the goods or service offered or has no connection to the goods, i.e., arbitrary. A mark that is a 1 on the scale has no trademark protection. A mark that is a 2 on the scale, has limited protection. A mark that is a 3 on the scale is usually a suggestive mark and is protected.
Here is an example to consider in selecting a mark:
If you decided to create a magazine about mountain climbing you might select names such as the “Mt. Climbing Magazine,” the “Climber’s Journal,” “Reaching Peaks,” or even something arbitrary such as “Orion.” “Mt. Climbing Magazine” is descriptive of the magazine, where as “Climber’s Journal,” “Reaching Peaks,” and “Orion,” will fall somewhere between descriptive and arbitrary.
Take the time to analyze your market and the goods/services you plan to offer. Remember the strongest marks have little or no connection to the underlying product that is being sold.
The U.S. Trademark Office website is very helpful as to the procedure for filing an application and can be found here. If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.
Lady Gaga, via her company “Ate My Heart Inc.” filed a trademark cancellation proceeding with the US Patent and Trademark Office to cancel the mark “Gaga Pure Platinum.” According to USPTO records, the Gaga Pure Platinum brand launched in 2000, well before Lady Gaga adopted her persona.
While Lady Gaga has multiple trademark registrations under the mark “Lady Gaga” and “Haus of Gaga,” for items other than perfume/cosmetics, she has been unable to secure a federal registration in those classes because of “Gaga Pure Platinum.” So far, she has been denied by the USPTO twice.
The arguments seem to center on whether the Gaga Pure Platinum mark is still in use. The recording artist’s side claims it’s not, and that they approached the company about finding a way to co-exist. The cosmetic company denies any such contact occurred, and insists the mark is still in use.
Read more here.
Listen to Dallas trademark lawyer Tamera Bennett and film lawyer Gordon Firemark discuss the case at http://www.entertainmentlawupdate.com Episode 32.
JDSUPRA Entertainment Copyright Trademark
