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Category: Trademark (page 4 of 6)

Has the OREO trademark become generic?

February 23, 2016 / / Comments Off on Has the OREO trademark become generic?

Generic trademarks are no joke. Earlier this week, the Trademark Trial and Appeal Board ruled that the trademark BOOKING.COM was generic for travel agency and hotel reservation services. Legally speaking, if a mark is generic, it no longer serves the purpose of a trademark and cannot be protected or enforced against third party uses. According to the TTAB’s ruling, booking.com operates to essentially identify the product itself and does not operate as a source-identifier to customers. Therefore no one is entitled to exclusive use of this term in commerce.

This news triggered a few things in my mind. Recently, a friend of mine and I had lunch at a nice restaurant in the Houston area. This restaurant offered a particular dessert offering – a dressed-up, fancy Oreo cookie.[1] Now, being a trademark nerd, I noticed the lack of any trademark designation on the menu listing. No ™. No ®. And no disclaimer in the fine print suggesting that “Oreo” is a trademark owned by someone else and licensed to this restaurant. Nothing of the sort. My friend and I joked about this for a while until it occurred to me that I may have stumbled upon something interesting:

Has OREO become a generic term that no longer functions as a trademark?

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Is Donald Trump a cybersquatter?

February 18, 2016 / / Comments Off on Is Donald Trump a cybersquatter?

Donald Trump is an expert level troll. He is in the midst of the most unconventional Presidential campaign of the Internet era. Political scientists still cannot categorize or describe him as a candidate. Meanwhile, Trump continues to hoard the media’s attention for everything he does. Most recently, Trump gained attention when visitors to JebBush.com were instead being re-directed to Trump’s own campaign website.

It seems that as early as December 8, 2015, someone purchased the domain for JebBush.com and, to the chagrin of the Bush campaign, sent visitors and Bush supporters to his rival’s official website – www.donaldjtrump.com. For the record, JebBush.com is not the official website of the Bush campaign. Additionally, Trump and his campaign team deny any direct involvement in the prank, though the current owner of the JebBush.com domain is remaining silent for now.

Just for fun, however, let us assume that Donald Trump is responsible for the domain name purchase and the re-direct to his own campaign site. Is this legal? Does this make Trump a no-good cybersquatter and trademark infringer? Let’s explore!

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Why the NFL does not want you to say “S— B—”… and how the NFL may be wrong

February 2, 2016 / / Comments Off on Why the NFL does not want you to say “S— B—”… and how the NFL may be wrong

On Sunday, February 7, 2016, the Carolina Panthers® and Denver Broncos® will take the field for the kickoff of Super Bowl® 50. This is the annual showcase game for the National Football League®. In the interim time, the NFL® has assembled an army of lawyers that are ready, willing and able to send a bevy of cease-and-desist letters to any individual or entity that has the audacity to use certain terms or phrases that the league perceives might dilute or infringe famous trademarks that belong to the NFL.[1]

The Super Bowl is practically an American institution, now in its fiftieth year. Many groups contend that the Monday after the Super Bowl should be a national holiday. In fact, a formal petition was once initiated for that very purpose. As a result, you will see and hear numerous advertisements leading up to the Super Bowl promoting numerous goods and services. It is kind of a big deal. What you are unlikely to hear in these advertisements, however, is quite noteworthy. You will rarely hear any advertisement use the term SUPER BOWL.

Why are we reduced to using nebulous terms like “The Big Game” or “The Pro Football Championship” to identify and describe a game? Why is the NFL so trigger-happy in seeking to stop all uses of “Super Bowl” that are not made by direct sponsors of the league or the television broadcast? What is the legal basis for the NFL’s position on this matter? Is it possible that the NFL is wrong? (Spoiler alert: YES!)

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Is “joke theft” tantamount to copyright infringement?

January 25, 2016 / / Comments Off on Is “joke theft” tantamount to copyright infringement?

In what seems to be a rite of passage for up-and-coming comedians, Golden Globe® nominee Amy Schumer was recently accused of “joke theft” by a series of fellow comedians. All puns aside, “joke theft” can be a serious matter and allegations of the same have negatively affected the careers of many comedians, including Denis Leary, Carlos Mencia, and Dane Cook.[1] While few jokes are truly original anymore, the blatant lifting of an entire comedic performance from another often subjects the alleged thief to public shaming. In the case of a comedian with the status of Amy Schumer, that shaming can be high-profile. Many have already taken to YouTube to create comparison videos.

But is joke theft a stand-alone basis for a legal claim of copyright infringement?

Yes, yes it can be.  Please allow me to explain…

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Seek and Destroy: Metallica is antagonizing its fan base over IP rights. Again.

January 19, 2016 / / Comments Off on Seek and Destroy: Metallica is antagonizing its fan base over IP rights. Again.

Metallica has always had a love-hate relationship with its fans.  Beginning with its controversial decision to film a music video for the first time for the anti-war song “One” and continuing with the shift from heavy metal thrash to more “commercial” rock songs on the Black Album, Metallica has routinely challenged the expectations of the public.

More famously, on April 13, 2000, Metallica inflamed the good nature of its fan base by suing Napster in federal court for copyright infringement, racketeering, and unlawful uses of digital devices, among other causes of action.[1] As part of this lawsuit, Metallica identified over 300,000 individual users who allegedly copied and unlawfully acquired digital copies of Metallica’s songs through the Napster peer-to-peer (P2P) file sharing service. These users were “temporarily” banned as a result of Metallica’s investigation and lawsuit.[2]  Not surprisingly, Metallica faced a severe public backlash for attacking its purported fans through lawsuits and allegations of copyright infringement. It even inspired a classic South Park episode.

Metallica is accordingly well-known to be litigious. They will strongly enforce trademark rights and all of their copyrights, when necessary. This often does not sit well with music fans that view the band as entitled and out-of touch millionaires. This leads to the most recent unfavorable public relations snafu by Metallica.

On December 30, 2015, Metallica’s lawyers sent a cease-and-desist letter to a Canadian tribute band performing under the name “Sandman.” Why did Metallica go after a tribute band? How is this different from the Napster case?

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NFL Football returns to Los Angeles – and the trademarks are coming with it

January 14, 2016 / / Comments Off on NFL Football returns to Los Angeles – and the trademarks are coming with it

On January 12, 2016, the National Football League approved by near unanimous vote the re-location of the Rams from St. Louis to Los Angeles. Los Angeles has not been home to an NFL team since the Rams and the Raiders both left after the 1994 season. In addition to the Rams, the San Diego Chargers also have the option to move to Los Angeles before the 2017 season, which seems likely. The Los Angeles Rams are back in business.[1] NFL Hall of Fame running back (and fellow SMU Mustang!) Eric Dickerson seems pleased with the news:

Not surprisingly, the Los Angeles Rams Football Company, by way of the St. Louis Rams LLC, has already taken steps to ensure that the LOS ANGELES RAMS trademark rights are active and the federal registration has been renewed.[2]  But there remain other trademark issues that arise from this news of relocation.

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Athlete Trademarks are Getting Absurd

January 4, 2016 / / Comments Off on Athlete Trademarks are Getting Absurd

Two trademark applications have recently caught my attention.  Both involve NFL players and their offhand comments that have become accidental catchphrases.  I highlight these two as a means of underscoring the recent trend among athletes to seek to register trademarks of all kinds.  Most of these marks, unfortunately, have limited commercial value and a short lifespan for relevance among the consuming public.  While I am a champion for protecting your trademark rights, these two particular applications strike me as nothing short of absurd.

Please allow me to explain…

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The First Amendment Embraces “Disparaging” Trademarks

December 29, 2015 / / 1 Comment

On December 22, 2015, The United States Court of Appeals for the Federal Circuit reversed decades of legal precedent and held that the United States Patent and Trademark Office cannot refuse to grant federal registrations for trademarks on the basis of the mark being “disparaging.”[1]  This standard of refusing registrations for “disparaging” marks is derived from Section 2(a) of the Lanham Act, the federal statute that governs U.S. trademark law.[2]

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Coca-Cola is trying to claim trademark rights to “ZERO.” Billy Corgan must be inconsolable.

December 9, 2015 / / Comments Off on Coca-Cola is trying to claim trademark rights to “ZERO.” Billy Corgan must be inconsolable.

Did you know that The Coca-Cola Company applied to register a federal trademark for the term “COCA-COLA ZERO”?  It is true.  Coca-Cola filed the application with the USPTO on March 4, 2005.[1]  The application was published for opposition on April 17, 2007.  Not surprisingly, the companies that own Dr. Pepper and 7-Up immediately opposed this registration.[2]  The battle has been ongoing for over eight years now.

Without going into too much detail, an executive for Coca-Cola testified recently that there are twelve Coke products that use the term ZERO in the product name.[3]  This includes Coke Zero, Cherry Coke Zero, Vanilla Coke Zero and others.  This is consistent with Coca-Cola’s trademark application, which identified the relevant goods and services as “Beverages, namely soft drinks; syrups and concentrates for the making of the same.”[4]  Nevertheless, the “ZERO” part of the mark almost certainly refers to the marketing of these specific products as having “zero calories” per serving size (i.e., one can or bottle).  This presents a series of interesting trademark concepts.

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Kobe Knows Trademarks

December 8, 2015 / / Comments Off on Kobe Knows Trademarks

Time flies.  I was a freshman in college when Kobe Bryant declared that he was going to skip college and go straight to the NBA.  Fast forward twenty years and Kobe has announced that he is retiring from professional basketball at the end of the season.  Through a poem.

Kobe has always been known for being a voracious competitor on the basketball court.  But it appears he has a plan for life after basketball.  Kobe has already formed “Kobe, Inc.” and has started the process of acquiring trademark registrations.  For nearly everything.

It has been a recent trend for athletes to seek to acquire trademark registrations for their names and nicknames and likenesses.  (“Johnny Football,” anyone?)  Kobe is just taking it to the next level, which is entirely consistent with his personality as we know it.  The question is what exactly is he seeking to protect?

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