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Tag Archives: Likelihood of Confusion

Happiness is a Federally-Registered Mark

By on Posted in Famous Marks, Food, Mixed Bag of Nuts, Trademarks, USPTO

It should be no surprise that the famous Coca-Cola brand name is federally-registered. One of the many significant benefits of federal registration is the USPTO’s obligation to refuse registration of third party marks that are likely to confuse — most importantly, without the prompting or involvement of the prior trademark registrant. No doubt Coca-Cola will… Continue Reading

The INTA “Trademark Bullying” Straitjacket

By on Posted in Advertising, Law Suits, Marketing, Trademark Bullying, Trademarks

This past week I’ve been pondering a question of great importance: When might a straitjacket double as a life vest? The answer actually arrived last Monday during INTA’s “The Ethics of Trademark Bullying” panel discussion at the 135th Annual Meeting in Dallas, Texas. In so many words, our good friend and wise guy Ron Coleman, over at… Continue Reading

Canine Inspired Copyright Confusion?

By on Posted in Agreements, Contracts, Copyrights, Infringement, Marketing, Social Networking, Trademarks

When we mention confusion on DuetsBlog, we’re typically referring to the well-known likelihood of confusion test of trademark infringement. But today, we’re focused on the apparent confusion many have about the important question of: When copyright protection comes into being. If you ever have wondered whether something is or has been “copyrighted,” this post is for… Continue Reading

McDonald’s Trade Dress? State Farm is There.

By on Posted in Advertising, Branding, Dilution, Famous Marks, Food, Infringement, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Passing by a roadside billboard recently (below is a miniature version I found in the Minneapolis skyway system), my first thought was, wow, McDonald’s is getting into the juicy lucy business: Until more focus revealed that State Farm Insurance is the one behind the ad. Look familiar? No doubt burgers and car insurance are totally different lines of business and… Continue Reading

Nike and Adidas on the Same Team?

By on Posted in Branding, Dilution, Famous Marks, Marketing, Non-Traditional Trademarks, Trademarks

Knowing how Adidas (or should I say, adidas) jealously guards its three stripe design on shoes, and is notorious for protecting against not only three, but two and four stripe buffers as well, my eyes were drawn to this display of Nike Shox sport shoes at our local Finish Line retail store. While I suppose different… Continue Reading

Louboutin & Lessons Learned

By on Posted in Branding, Copyrights, Infringement, Keyword Ads, Law Suits, Marketing, Non-Traditional Trademarks, Search Engines, Sight, Trademarks, USPTO

As promised, here are some further thoughts, lessons learned, and remaining unanswered questions concerning the recent and long-anticipated decision of the Second Circuit Court of Appeals in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc. Lessons Learned for Marketing Types: Single color trademarks may be owned, registered, and protected when they are distinctive and… Continue Reading

Successful Evolution of an Unlicensed Business Model?

By on Posted in Agreements, Articles, Branding, Contracts, Fair Use, First Amendment, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks, Truncation

Brand owners and managers may wonder, is a trademark license required when another’s unregistered color scheme is used? Depending on the facts, it may very well be. About four years ago brand owners scored a major victory in LSU v. Smack Apparel, when the Fifth Circuit Court of Appeals agreed to the existence and successful enforcement of… Continue Reading

Open Wide and Say Ahh: Probing Brand Name & Trademark Pronunciation

By on Posted in Advertising, Articles, Branding, Marketing, Trademarks

The current series of advertising billboards from Allianz – an international financial services company, with its parent company headquartered in Munich, Germany – are really wonderful, and their creativity inspired this post about brand name pronunciation. Here is one billboard example I recently captured in Minneapolis with my iPad, to the left. How we pronounce words, names, places, and brand names… Continue Reading

Dueling Beauty Queens

By on Posted in Trademarks

Over the weekend I was shopping for a full-length gown to wear to a charity event in August.  I found a beautiful green Badgley Mischka gown.  It was even on sale, much to my delight.  So I may have been feeling like a beauty pageant contestant when I chose my blog post topic for today. … Continue Reading

Using Old Starsky and Hutch to Sell New Furniture?

By on Posted in Advertising, Branding, Fair Use, Infringement, Marketing, Television, Trademarks

There is a new billboard advertisement on the scene in Minneapolis, Minnesota, complete with multiple meanings and at least one obvious third party brand reference. Multiple meanings because I suspect there may be a generational divide on the obvious Starsky and Hutch brand reference (trademark data of owner Columbia Pictures can be found here, here, and… Continue Reading

How Fashionable is the Louis Vuitton “Trademark Bully” Label?

By on Posted in Articles, Branding, Copyrights, Counterfeits, Dilution, Fair Use, Famous Marks, First Amendment, Infringement, International, Marketing, Social Networking, Trademark Bullying, Trademarks

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium appears to be designed as a serious affair, boasting an all-star cast of general counsel from the fashion industry, including those from… Continue Reading

Chick-fil-A Goes Stealth in “Eat More Kale” Trademark Dispute?

By on Posted in Branding, Food, Infringement, Trademark Bullying, Trademarks

The question for the day is not, why did the chicken cross the road, but rather, why did the chicken file an ex parte Letter of Protest with the Office of the Deputy Commissioner for Trademark Examination Policy at the United States Patent and Trademark Office (USPTO), just a few months ago? To get to the other side of the… Continue Reading

Louboutin Red: Blending Into the Background

By on Posted in Branding, Fair Use, Infringement, Law Suits, Non-Traditional Trademarks, Sight, Trademarks

A purely hypothetical puzzle, but I’m wondering, would Christian Louboutin have a viable trademark claim if Yves Saint Laurent sold women’s shoes in boxes bearing the above seemingly random grid of letters, each letter having equal type, style, font, color and emphasis? For those of you who answered with a strong “of course not,” I suspect your answer must change if selected… Continue Reading

Redefining a Trademark Bully?

By on Posted in Almost Advice, Articles, False Advertising, Mixed Bag of Nuts, SoapBox, Trademark Bullying, Trademarks

We’ve spilled a lot of digital ink discussing the trademark bullying topic, going all the way back to my original blog post from 2010: ”The Mark of a Real Trademark Bully.” Within the last several days, there has been quite a bit of online media coverage about Trademarkia’s new features that tout an ability to “Find… Continue Reading

Brilliant Trademark Advice or Baloney?

By on Posted in Almost Advice, Genericide, Marketing, Trademark Bullying, Trademarks

A few bits of trademark advice recently passed across my screen from The Marketing Blog: Turning Entrepreneurs Into Marketers – advice that I believe deserves some friendly comment and critique, leaving you to decide whether any of it rises to the level of brilliant trademark advice or sinks to the level of trademark baloney: “Trademark as you go. Don’t wait… Continue Reading

Protecting the Least Sophisticated Potential Consumers

By on Posted in Famous Marks, Infringement, Trademark Bullying, Trademarks, TTAB

When the “trademark bully” epithet is hurled at a trademark owner “caught in the act” of enforcing or otherwise protecting its intellectual property rights, another common accompaniment is the expressed outrage and indignation that no one could ever possibly be confused. Here are a few points worth noting: The test of infringement is likelihood of confusion, not actual confusion. Likelihood of confusion is… Continue Reading

Willa-n-Wella, Living-n-Harmony Now

By on Posted in Branding, Famous Marks, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB

The New York Times has been following a trademark battle between Christy Prunier’s body and beauty care start-up business apparently geared toward preteen and teenage girls (Willagirl LLC) and industry giant Procter & Gamble, owner of the well-known, if not famous, more than century old WELLA hair care brand, with U.S. trademark rights dating back at least to the early… Continue Reading

No Room at the Inn? Try the Motel . . . .

By on Posted in Branding, Infringement, Trademarks

About a half a mile down the road from a Holiday Inn Express, located in the Wisconsin Dells, is the Holiday Motel, with the above shown vintage signage. I’m sure there must be an interesting trademark story behind the apparently peaceful co-existence of these two highly similar lodging brand names in very close geographic proximity. Wouldn’t you expect Holiday… Continue Reading

Baird on Branding & Trademarks

By on Posted in Advertising, Almost Advice, Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Smell, Sound, Taste, Touch, Trademarks

There aren’t too many things I enjoy more than speaking about the legal implications of branding. Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here. Some of the topics I… Continue Reading

English Company Loses to Magic Kingdom

By on Posted in Infringement, Law Suits, Trademarks

English Company THOIP asserted its rights to a family of unregistered trademarks in a children’s book series involving cartoon characters called “Mr. Men” and “Little Miss” by suing the king of the cartoon characters—Walt Disney Company (and related companies). The products at the center of the dispute are t-shirts. You may have seen Britney Spears… Continue Reading

Aveda, Aveida

By on Posted in Advertising, Branding, Famous Marks, Guest Bloggers, Infringement, Marketing, Trademarks

—Nancy Friedman, Chief Wordworker at Wordworking and author of Fritinancy Imagine my surprise—as a name developer, beauty-brand fan, and trademark aficionada—when I saw this sign in my Oakland, California, neighborhood back in March. It wasn’t the prospect of a new nail spa that piqued my interest; our local commercial strip already has dozens of mani-pedi… Continue Reading