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Collaborations in Creativity & the Law

JORDAN v. QIAODAN: The Lessons of Trademark Enforcement in China

Posted in Advertising, False Advertising, Famous Marks, Infringement, International, Law Suits

Whether or not you agree Michael Jordan is the greatest basketball player of all time, he is certainly well-known. And after an over four-year battle, China’s trademark courts have agreed.

Michael Jordan and his JORDAN brand have been a staple of Nike’s shoe and apparel business for over thirty years. Nike so values the “Jumpman” logo that it transcends basketball – the Michigan Wolverines, for example, wear the logo on jerseys for all sports, including football.

But in China, where trademark rights belong to the first party to file a trademark, rather than the first to use, the JORDAN wording has effectively belonged to another company. A sportswear company called Qiaodan Sports owned the rights to the JORDAN mark in Chinese characters – Qiaodan, pronounced “chee-ow-dan,” is a transliteration of JORDAN used in China and elsewhere for over thirty years. Qiaodan operates some 6,000 stores in China, and its associated logos also bear a striking resemblance to the Jumpman logo:

Screen Shot 2016-12-16 at 6.30.15 AM

Qiaodan is, essentially, recognized as a knockoff brand in China. So, Jordan brought a lawsuit against Qiaodan in 2012, to seek cancellation of Qiaodan’s Chinese-character trademarks and, separately, a suit to enjoin use of those marks in China. What followed were a series of losses in court. China’s trademark laws do not favor the first to use, so for unregistered mark owners, Chinese trademark enforcement can be near impossible, unless the mark owner can show its mark is “well-recognized” in China.

Qiaodan had registered the Chinese character mark some 10 years before Jordan first objected, although Jordan’s legal team claimed use of the JORDAN name in China dating back to the 1984 Olympics (which were broadcast in China).

Lower courts held that the Chinese character mark would not be squarely associated with Michael Jordan, and that Qiaodan’s “human body in a shadowy design” logo was not recognizable as Jordan.

But finally, earlier this month, Jordan prevailed before the Supreme People’s Court, China’s highest court. It found the Chinese character mark for JORDAN should be returned to China’s trademark office (after which, presumably, Jordan can obtain a registration of his own). And the fight is not yet over – a separate lawsuit in Shanghai is pending over Qiaodan’s use of the JORDAN name.

qiaodan2

That Jordan had to spend such immense time and resources to obtain this decision would surely scare away most “mere mortal” brands, even well-known ones. But there is a valuable lesson here for brands with an international presence.

First, it’s advisable to apply for marks in China as soon as practicable. Unlike other jurisdictions (such as the United States), China does not require proof of use for a trademark to obtain registration. Therefore, the concept of a “defensive registration” exists in China, but not the U.S.

And in most cases, a trademark may not be challenged on grounds of non-use for three years after registration. So long as some genuine good faith use is made in China during that three-year period, the registration will generally avoid a non-use cancellation.

Second, this should apply equally to the concept of “transliterated” marks in Chinese characters (the subject of the JORDAN decision above). A Chinese trademark specialist can propose a variety of potential Chinese character marks that are the phonetic equivalent of an English language mark. It’s also possible that consumers in China may already associate a certain combination with your brand as a “de facto” transliteration.

Finally, it’s also a good idea to obtain a China or global watch service for important trademarks. A watch service will monitor the application and publication databases in various countries and inform of any close matches for which others have applied.

Ultimately, the cost of a timely trademark application in China can save untold costs and prevent various headaches associated with enforcement. A lesson Michael Jordan now no doubt knows better than anyone.

Jager Fears the Deer: Brand Refresh Turns Into Battle

Posted in Almost Advice, Branding, Famous Marks, Trademarks, TTAB

The word “Jägermeister” conjures up memories (or maybe lapses in memory) for many.  I have only had the German liqueur in the beautiful blue-collar town of Milwaukee, WI – home of my college alma mater.  While you would never catch me ordering the liqueur, I was fascinated by the cool and well-lit dispensing machine behind the bar that kept the product at a desirable serving temperature.

dispenser

Milwaukee is also home of the Milwaukee Bucks professional basketball team, which plays at the Bradley Center downtown along with my Marquette basketball team.  Both teams are gearing up to move from the Bradley Center to a new home.  In April 2015, the Milwaukee Bucks did a brand refresh and unveiled an updated logo with a more aggressive looking deer on a partial circular background.

Here’s a look at the progression of the Bucks’ logo since their inception in 1968 (a progression which appears to create its own commentary on our society):

IMG_0005

The owners of Jägermeister have opposed registration of the Bucks’ new logo above on the right in connection with entertainment services based on their well-known Deer Head mark, which they have registered in most classes.   They may have a point – well, a similar 12-point buck to be more precise as the dominant portion of the mark.

Mark Image

While the filing of an opposition proceeding does not mean that the Bucks necessarily have to cease using the mark, the lack of registration may conflict with the Bucks’ agreement with the NBA.  As with most professional sports associations, this agreement likely requires registrations for marks, as well and representations and warranties that the mark will not infringe on any rights of others.  The Bucks likely would have to cease using the mark – and the owners of Jägermeister would likely demand it as well.

Surprisingly, Jägermeister did not oppose the Bucks’ application for the same mark with respect to various apparel goods in class 25, despite Jägermeister having registrations for similar if not identical apparel goods.  That application was allowed although the Bucks’ are still seeking extensions of time to confirm use of the mark on all of the listed apparel goods.

A brand refresh (or a rebrand) often involves updating original elements of a brand identity to give it a contemporary look and tone.  Creative types tasked with this important work should still be cautious about treading on the rights of others, even if the dominant elements of the mark have been used for a long time.  You can rely on the long term use of some of these key elements to some extent, but adjustments even to these elements may create a likelihood of confusion despite years of overlapping use of the old identity without such concerns.  Working together with legal types proactively can help prevent situations like this when rebranding.

It’s highly unlikely that the Bucks would have to cease use of a forward-facing buck all together based on Jägermeister’s contentions.  The Bucks here may be able to make some tweaks to get back into their lane and avoid drawing a foul, such as reducing the points on the antlers from 12 back to the previously used 8 and making some changes to the background while still modernizing the look.  Otherwise, we may be watching this battle on and off the court for awhile.

Do you think the Bucks have an issue here?

Who’s Watching (What) You Create?

Posted in Mixed Bag of Nuts

WatchingCreation

This past weekend, with what appears to be our first lasting snowfall, I enjoyed following my daughter around the chilly alleys of downtown Minneapolis while she created for her photography class. As you can see from the moment I captured, she inspired me to create a bit too.

Thankfully I’m not being graded for my efforts.

Yet, as I reflected on capturing my daughter’s creativity in action, it occurred to me that the results of the creative efforts of our friends in the branding world are frequently watched too, but not always by those with as good of intentions as mine toward my daughter’s activities.

I’m not talking about jealous peers or green-eyed monsters or even the talented and skilled judges who review and evaluate creative submissions for industry awards. The watchers I’m thinking about have a different perspective as the IP counsel for brand owners who evaluate potential enforcement targets as new creative works endlessly flow into the marketplace.

One type or method of this kind of watching is automated and quite routine in the IP world. Many professional trademark search firms provide services allowing brand owners and/or their counsel the ability to be alerted when another files an application seeking registration of a mark, when the new creation has the potential to cause likely confusion.

Receiving a cease and desist letter after an application is filed is a pretty reliable sign that the brand owner behind the letter is watching — either the applicant directly or the penumbra surrounding the brand owner’s trademark rights, to maintain or grow a vibrant scope of rights.

Sophisticated brand owners also are well-versed in using, where appropriate, a more stealth approach of watching with the letter of protest strategy. The letter of protest option can avoid the need for direct interaction with the trademark applicant because it positions the USPTO to do the brand owner’s bidding by erecting road blocks to registration.

Of course, if the concern stems from more than registration and includes a concern of use too, then the brand owner eventually will need to unmask and reveal its concerns directly to the applicant. Having said that, having the USPTO on your side as a brand owner watching the filings of concerning marks can be a powerful tool when one decides to finally unmask and speak up.

With these IP realities in mind, are you watching or being watched or both?

Best to do the former and assume the latter.

Las Vegas hockey team revealed: The Golden Knights

Posted in Advertising, Branding, Marketing, Trademarks, USPTO

A brief update on my post a few months ago about the new NHL team based in Las Vegas, scheduled to begin play in October 2017. As I discussed in my post, the team created some publicity by revealing only part of the team name a few months ago, the “Las Vegas [Something] Knights.” The team kept us on the edge of our seats back in September by hinting that the name would be one of three options: The Las Vegas Silver Knights, Desert Knights, or Golden Knights.

At a ceremony on November 22, the full team name was finally announced: The Vegas Golden Knights. Below is the team’s logo, which was revealed on Twitter:

23-CITY-VEGASHOCKEY-master180

The naming ceremony, with around 5,000 fans in attendance, took place outside the new T-Mobile Arena on the Las Vegas Strip, where the hockey team will play. No word yet on whether the team will make use of the alternative team names it hinted (Desert Knights or Silver Knights). As I mentioned in my last post, the team filed intent-to-use trademark applications on all three alternative names, perhaps to disguise which team name would be chosen. There have not been any status updates on those trademark applications since the time of filing. (See Application Serial Nos. 87147274, 87147273, 87147261, 87147254, 86526792, 87147265, and 87147269.)

From a branding perspective, the new name has been met with some mixed reviews, although some of the reception has been positive, with the caveat that the naming ceremony itself was a mess. However, the name may encounter some legal hurdles, as U.S. Army officials are considering a challenge. The Army announced that it is conducting a legal review of the hockey team’s use of the “Golden Nights” name because the Army has used that name since the 1960s for the U.S. Army Parachute Team, based at Fort Bragg. The team owner, Bill Foley, stated that he is not planning to change the team name in response to the Army’s concerns. It will be interesting to see whether the Army files oppositions to the team’s trademark applications. Stay tuned for updates.

Chartreuse Color Trademark on the Loose

Posted in Advertising, Articles, Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

We’ve written a lot about single color trademarks here over the years. Weems, the owner of the Flexilla brand has unleashed its federally-registered chartreuse-colored non-traditional trademark for “compressed air hoses” against Plews for selling air hoses with a “bright florescent green color” — a color that Plews claims online “reduces chances of tripping while on a job site.

Weems owns a non-traditional trademark registration on the Principal Register for chartreuse in connection with “compressed air hoses” — but, it recently abandoned a single color trademark application for electrical power extension cords, and it hasn’t yet obtained a registration on the Principal Register for chartreuse in connection with garden variety hoses (i.e., garden hoses):

FlexillaHose

Weems owns a pair of Supplemental Registrations for the chartreuse color (one having a black stripe, the other having a green stripe) in connection with watering hoses and garden hoses, but two months ago its attempt to achieve Principal Registration for chartreuse in connection with those goods and others was refused by the USPTO (Weems has until April 2017 to respond to the failure to function as a trademark and lack of distinctiveness refusals).

More thoughts on this case tomorrow, but in the meantime, do you think Plews tripped into this trademark dispute, or does it likely have a plan and a valid defense?

Hat tip to Jason for flagging the Weems v. Plews trademark complaint for us, currently pending in the Northern District of Iowa.

Santa Goes to the Trademark Office

Posted in Advertising, Branding, Contracts, Fashion, Marketing, Social Media, Trademarks

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This is Fashion Santa.

Or at least it was until recently. Fashion Santa is a role that originated with model, Paul Mason and Toronto’s Yorkdale Mall in 2014. He promoted the mall and a successful charitable giving campaign. Mason continued as Fashion Santa during the 2015 holiday season, and became somewhat of a social media sensation.  But this year, Yorkdale Mall has apparently traded in for a younger model.

Meet the 2016 Fashion Santa: Adam Martin.

fashion-santa

It seems the relationship between original Santa Mason and the Yorkdale Mall declined due to a disagreement over intellectual property rights. Both parties claim to own the trademark rights to FASHION SANTA.  Yorkdale filed a trademark application in the Canadian Patent Office for FASHION SANTA on December 8, 2015.  On April 21, 2016, Yorkdale filed a U.S. trademark application claiming priority to their Canadian filing date.  A few weeks after Yorkdale’s first filing, Mason filed an application for FASHION SANTA in Canada on December 21, 2015, and an application in the U.S. on December 22, 2015.

Both parties claim November 2014 as the date of first use on their Canadian applications. Presumably, they are referring to the same use, but the applications are for different categories of goods/services.  Yorkdale filed its mark in both countries for advertising services and charitable fundraising services, while Mason filed his marks for use with a variety of goods, as well as modeling services and charitable fundraising. With both parties claiming ownership of the same mark stemming from the same use, registration and rights in this case may come down to contractual language governing the parties’ relationship. Hopefully they can reach an agreement, and Fashion Santa doesn’t end up in fashion litigation.

The Unfortunate Renaming of U.S. Cellular Field

Posted in Advertising, Branding, Marketing, Mixed Bag of Nuts

I grew up with the White Sox playing in Comiskey Park, then after they tore that down, New Comiskey Park. In 2003 that changed to U.S. Cellular Field. Now, it’s undergoing another name change – Guaranteed Rate Field. Now I don’t think that Guaranteed Rate is any better or worse than U.S. Cellular. Rather it’s the logo that accompanies that change that’s unfortunate.

Guaranteed Rate Field

The Sox will have the misfortune of playing under a logo that includes a red downward pointing arrow. Perhaps that wouldn’t sting so much if the Sox were good. But, they finished in the bottom third of the American League last year. And next year they’ll better their record under a giant red downward pointing arrow.

The Sox tried to offer a compromise. They suggested changing the arrow in the logo into home plate. In my opinion, that’s a pretty ingenious solution. Just for stadium, Guaranteed Rate could subtly change the logo in a way that’s fun and reflects the connection to baseball. The change would be small and the Sox wouldn’t have to play with a reminder that they’re not doing so well lately. Sox fans appreciate and enjoy the shift. But Guaranteed Rate didn’t go for it. And it’s understandable. They paid a lot of money to show their logo and they want the public to see their actual logo, not one used only in one place.

Moral of the story? If you’re a professional sports team, try to get the right to approve logos used on the stadium.

Trademark Scam Results in More than $600,000 in Refunds in New Zealand

Posted in USPTO

The records of applications and registrations at the U.S. Patent and Trademark Office are publicly available, allowing individuals and companies to evaluate the registered trademark rights of third-parties. Unfortunately, these same records are also accessible by individuals for more sinister purposes, including sending “invoices” to applicants that appear to be official requests for required payments. While these scams have been occurring throughout the world for a number of years, New Zealand recently scored a significant win in the fight against these scams.

While most attorneys advise clients of the likelihood of receiving these notices, it does not prevent some unrepresented applicants from mistakenly making a payment. Thankfully, governments have begun to fight back against these scams. Over the last year, New Zealand has sought to obtain refunds from TM Publisher, an entity that sent misleading notices to companies in New Zealand. The company requested a payment of $1,600 NZ in order to “publish” an applicant’s trademark. Over the last six months, the New Zealand government identified and refunded more than $600,000 NZ from TM Publisher. While this is a large sum, TM Publisher is just one example of many scams, suggesting the number of payments could be even greater.

To provide some context in the U.S., it is common for applicants and registrants to receive misleading notices regarding publication, renewal, and other services. Some solicitations offer to publish your trademark in an international database, such as the Trademark Patent Publications solicitation, but doing so provides no benefit to the trademark owner. Other solicitations offer “renewal” services, which may or may not result in the actual renewal of your registration with the relevant authority. Most solicitations are printed to appear to be official, government notices. Some of the solicitations, like this notice, come from misleadingly named companies, like the “Patent and Trademark Office” in New York.

In the U.S., there have been criminal charges brought against individuals running at least one similar scam. The first indictment issued in October of 2015 and two more individuals were charged earlier in July 2016. The charges include bank fraud, mail fraud, and money laundering.

Notwithstanding these minor successes, there are still significant numbers of misleading notices sent to represented and unrepresented applicants and registrants. If you receive any notice regarding your trademark application or registration in the mail or in your e-mail, consult with your attorney. Although the Trademark Office has recently begun reminding owners of renewal deadlines, the Trademark Office does not request payment in these notices (especially through a wire to a bank account in the Czech Republic). If you don’t have an attorney, you can consult the USPTO’s information page regarding these invoices here or contact the Trademark Assistance Center.

Just Wait Until the USPTO Lays Its Hands on These Single and Dual Color TM Applications

Posted in Articles, Branding, FDA Approval, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, Sight, Trademarks, USPTO
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Chou #1

Glove1

Digitcare

Glove3

Chou #2

Glove2

Chou #3

Glove5

Chou #4

Glove6

Avent Green

 

 

 

 

 

 

 

Back in 2009, we wrote about what was then Kimberly Clark’s pair of single color purple trademark registrations in connection with “gloves for medical and surgical uses” and “disposable nitrile gloves for general use,” now owned by Avent and sold under the HALYARD brand:

HalyardPurpleNitrile

Those registrations are still big deals since they both exist on the Principal Register (as opposed to the Supplemental Register), and as far as I can see, no other medical examination glove colors have been able to withstand the reliable USPTO probing to attain Principal Registration status.

As the above six hand drawings reveal, growing numbers in the medical examination glove world have raised their hands at the USPTO to gain federal registration of a single color or a contrasting pair of colors (one appearing on the inside and the other on the outside).

Let’s wait and see what happens to the six pending applications for the drawings shown above (Chou #1, Digitcare, Chou #2, Chou #3, Chou #4, and Avent Green) after the USPTO rolls up its sleeves, and begins a different kind of hands-on examination. We’ll follow the drama as it unfolds.

From where I’m sitting, it seems doubtful that any will pass the vigorous Principal Register examination, but there are also serious questions as to whether survival of the appropriate Supplemental Register probing is warranted either, as explored more deeply further below.

In addition to #1-4 above, Chou also has a blue/white — outside/inside color combination mark and the inverse of those same colors — both on their way to the Supplemental Register.

Ascend Eagle also has a few hands in the color trademark pot for medical examination gloves, orange is registered on the Supplemental Register (tangerine never made it), but this peach and this red one are both suspended for consideration on the Supplemental Register.

Colur World has a suspended pink single color application too, apparently now attempting Principal Registration, since it already has a Supplemental Registration for pink medical gloves.

While, Xela has secured single color copper and single color magenta trademark registrations — both have landed on the Supplemental Register stretcher too; as did this individual’s single color application for gold colored medical gloves.

With all this focus on gaining Supplemental Registrations in the medical examination glove field, you’d think the USPTO’s probing on the question of functionality has been, perhaps a bit soft.

Turns out, the Digitcare trademark application for an outer-white/inner-black medical exam glove contains an enlightening bit of information that could shine like a flashlight on the question of functionality:

  • “Contrasting Black and White ApexPro identifies conformance to infection control protocols”
  • “High contrast perma-white exterior for improved visibility with infectious fluids”

If so, what kind of future does that signal for this otherwise nearly identical Supplemental Registration, interestingly assigned from Chou to Digitcare, a few years back.

Show of hands, how many see the functionality scalpel removing even the Supplemental Registration option to one or more of the above six pending color applications, given the revelations in the Digitcare file history?

It Is Not “Easy Like Sunday Morning” To Use Commodore As A Trademark

Posted in Fair Use, Law Suits, Trademarks

The band’s song “Easy” does not reflect Commodores’ founder Thomas McClary’s court battle to use the trademark “COMMODORES founder Thomas McClary” for his solo career.  As I dug further into the meaning of the song, it is actually about the relief of ending a really difficult relationship.  I guess it fits that the relationship, or rather trademark dispute, between the owner of the COMMODORES trademark and the band’s founder Thomas McClary is ending (at least for now) with a permanent injunction against the latter’s use of the above trademark.

Last week, a United States District Court judge in Florida ruled on a Motion for Clarification Regarding Fair Use Under the Permanent Injunction and for Order to Show Cause Why Defendants Should Not Be Held in Civil Contempt filed by the trademark owner.  The judge began his opinion with “Where words fail music speaks” attributed to Hans Christian Anderson’s “What the Moon Saw,” in What the Moon Saw and Other Tales (1866).  The judge explained that “[h]owever, words have certainly not failed the parties to this lingering trademark dispute involving the Commodores.”

The Florida judge rejected the nominative fair use (“NFU”) defense raised by Mr. McClary.  In doing so, the judge looked at the NFU test factors:  “(1) Plaintiff’s product or service [i.e., singing] is not readily identifiable without the use of the trademark; (2) Defendants’ used only so much of the mark as it is reasonably necessary to identify the plaintiff’s product or service, and (3) the user of the mark does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.”  The third factor was determinative.  The judge found that there was an improper suggestion of sponsorship or endorsement by the Commodores.

The judge looked at other cases and the important factor for his decision turned on the fact that the accused marks preceded the accurate reference that he was the founder and the accused marks were more prominent than other words contained in the band name.  The judge explained that Mr. McClary could use the following marks:  “Thomas McClary formerly of the Commodores” or “Thomas McClary original founding member of the Commodores” and be considered NFU.

As a Commodores fan, I was glad that Mr. McClary and his band were, at least, not found to be in civil contempt or in other words in violation of the injunction.