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Category Archives: Agreements

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Houston (College of Law) Has a Problem

Posted in Agreements, Articles, Branding, Civil Procedure, Goodwill, Infringement, International, Law Suits, Loss of Rights, Marketing, Trademark Bullying, Trademarks

A trademark problem, that is, as reported by the Texas Tribune on Friday of last week. Lest you be fooled by the above reference to Houston College of Law being established in 1923, the name has only been around since June of 2016. In fact, when South Texas College of Law rebranded to Houston College… Continue Reading

Federal Cannabis Laws Don’t Impede Patentability

Posted in Agreements, Patents, Technology, USPTO

While the Lanham Act bars the federal registration of trademarks related to illegal goods and services, there is no such prohibition against patenting illegal products or processes. However, the value of such patents is debatable. State Legalization Leads to Increased Patent Applications Marijuana is now legal, in some form, in 25 states. But under federal… Continue Reading

Worthwhile Uncomfortable Conversations

Posted in Agreements, Articles, Branding, Contracts, Copyrights, Law Suits, Marketing, Trademarks

Seth Godin wrote this past weekend about joint ownership of creations: “Before you create intellectual property (a book, a song, a patent, the words on a website, a design) with someone else, agree in writing about who owns what, who can exploit it, what happens to the earnings, who can control its destiny.” We couldn’t… Continue Reading

Trans-Pacific Intellectual Property

Posted in Agreements, Copyrights, Fair Use, Idea Protection, Infringement, International, Mixed Bag of Nuts, Non-Traditional Trademarks, Patents, Trademarks

The Trans-Pacific Partnership (TPP)—a favored talking point among our presidential hopefuls—is an international trade agreement between twelve nations. The agreement was signed earlier this year, but is not yet ratified in most member countries including the United States. Negotiations took place over seven years and resulted in thirty dense chapters of provisions—some of which are… Continue Reading

Blowing the Whistle on Trade Secrets: Employers Required to Provide Notice of Whistleblower Protections under DTSA

Posted in Agreements, Almost Advice, Law Suits, Loss of Rights

Last month, the federal Defend Trade Secrets Act (DTSA) was signed into law. The DTSA provides remedies for trade secrets misappropriation, including a new federal cause of action, under which private companies can sue for trade secrets misappropriation. The DTSA allows a trade secret owner to seek actual damages, injunctive relief, restitution, and in some… Continue Reading

ELLE Fails to Un-ring Bell, DJ Action Sticks

Posted in Agreements, Articles, Branding, Civil Procedure, Contracts, Dilution, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB

Question for the day, how common is the given name Elle? I’m really not sure, I don’t believe I’ve ever personally known anyone with that name, and Mongabay doesn’t even include Elle in its listing of girl’s first names, but it does rank Ella (210), Elena (412), Ellie (1198), Elly (2802), and Ellamae (3514) among… Continue Reading

Consent or Not, No Trademark Registration for Brewer’s TIME TRAVELER BLONDE Mark

Posted in Agreements, Almost Advice, Branding, Product Packaging, Trademarks, TTAB, USPTO

When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks.  A… Continue Reading

Dude, It’s Gotten GNARLY for Beer and Wine

Posted in Agreements, Almost Advice, Branding, Infringement, Marketing, Product Packaging, Trademarks, TTAB, USPTO

Trademark issues regarding breweries and wineries are increasingly intertwined as both breweries and wineries grow, flower, and spread out throughout the country.  I have talked before about the issues relating to a perceived likelihood of confusion between marks on beer used by breweries and marks on wine used by wineries (see here, here, and here)…. Continue Reading

Energizer Bunny to Drain Duracell’s Battery?

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks

When I first heard last week about a trademark infringement lawsuit between Energizer and Duracell over pink bunny icons, my first thought was, Duracell is The Copper Top battery brand, what would motivate Duracell and how could Duracell possibly believe it had the legal right to use a pink bunny character in advertising and on… Continue Reading

Bright Bulbs Bring Bank Branding Battle

Posted in Advertising, Agreements, Articles, Branding, Famous Marks, Marketing, Technology, Television, Trademarks

Just as the Minnesota Vikings exceed expectations this year and push into the NFL playoffs, the Vikings’ still-unfinished new stadium is producing some interesting (if not expected) branding-related litigation. A major topic of conversation here in the Twin Cities is the 2016 opening of U.S. Bank Stadium, the Vikings’ new home built on the site… Continue Reading

Louisville Slugger and the Flying Dutchman

Posted in Agreements, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

Honus Wagner (aka the Flying Dutchman) was one of early baseball’s great players. He was actually among the original five inducted into the Baseball Hall of Fame in 1936 – along with Ty Cobb, Babe Ruth, Christy Mathewson, and Walter Johnson. In 1905 he joined with Louisville Slugger to produce the first baseball bat with… Continue Reading

All-Star Tips To Avoid Infringement Litigation

Posted in Agreements, Branding, Counterfeits, Famous Marks, Fashion, Infringement, International, Trademarks, USPTO

Shoes are always in the news. From a fashion standpoint, Nike has made headlines this week, with a re-release of the Classic Cortez running shoe (aka, the Forrest Gump shoe) along with the second edition of the LeBronald Palmer.  And yes, the LeBronald Palmer is exactly what it sounds like, LeBron James creating a shoe… Continue Reading

An Energized Trademark Monster?

Posted in Advertising, Agreements, Articles, Branding, Dilution, Famous Marks, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Three months ago we discussed a “trademark bullying” allegation against Monster Energy, detailed in a declaratory judgment complaint filed in Montana federal district court by energy-drink competitor Victory Energize. Last week, Law360 reported the case settled on confidential terms, and the claims were dismissed with prejudice, at Victory Energize’s request, so the “trademark bullying” charge… Continue Reading

Personal Brand Management for Retirees (…of the NFL)

Posted in Agreements, Branding, Law Suits, Mixed Bag of Nuts, Television, Trademarks

–Ben Kwan, Attorney Dozens of former NFL players lit up the federal court docket here in Minnesota with filings on Monday targeted at Defendants including the National Football League, NFL Films, Inc., and NFL Productions, LLC. The retired players’ suits are the latest in a line of cases dating back to about 2009 when former players… Continue Reading

The House That Solitude Built

Posted in Agreements, Trademarks

Ever tried to search for directions on your so-called “smart” phone by the name of your intended destination?   What if it directed you to the museum you searched, but unwittingly not the museum you intended to visit…in the same area?  As if there were not enough things to be afraid of in New Jersey like… Continue Reading

Silicon Valley x Fashion District = Blurred Lines

Posted in Advertising, Agreements, Branding, Copyrights, Fashion, Infringement, Marketing, Patents, Product Configurations, Technology, Trademarks

Growing up in the 80s, it’s amazing how both fashion and technology have evolved since Scrunchies and Commodore 64s – although a quite separate evolution. I can’t recall a fashionable pager (really, go try to find one), or a chic mp3 player (I had an Archos Jukebox, look at that brick). That all changed once Apple… Continue Reading

Dethroning a Right to Register a Trademark?

Posted in Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Last month, you will recall we wrote about the important difference between the right to register a trademark and the right to use a trademark, here and here. Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights — defeating… Continue Reading

Rubber Hits the Road: Rust-Oleum Trademark Case Leaves TTAB for Minnesota Federal Court

Posted in Agreements, Articles, Civil Procedure, Infringement, Law Suits, Product Packaging, Trademarks, TTAB, USPTO

Lately we’ve been discussing more and more the difference between the right to register a trademark and the right to use a trademark. In many trademark disputes the perfect forum for an amicable resolution is the Trademark Trial and Appeal Board (TTAB) of the USPTO. The TTAB can be a cost effective forum for parties to achieve… Continue Reading

New v. Old: Was Tesla’s Model E Blocked by the Model T?

Posted in Agreements, Branding, Famous Marks, Squirrelly Thoughts, Trademarks, USPTO

It’s a rare phenomenon in the 21st century when a US start-up car company can make commercially viable vehicles essentially from scratch, let alone one using new technology and bucking the dealership model.  Tesla’s been in the news a lot recently – fires, new lithium battery factories in the US (curiously the largest lithium deposits… Continue Reading