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Category Archives: Trademarks

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The Big Dance Around Trademark Madness

Posted in Advertising, Famous Marks, Guest Bloggers, Infringement, Marketing, Sight, Social Media, Social Networking, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC Last week, the Chicago Sun Times profiled Loeb & Loeb attorney Douglas Masters, the NCAA’s outside counsel in charge of trademark enforcement during March Madness. Licensing the official sponsorships is big business, and enforcement demands require Masters to send out hundreds of cease-and-desist letters to both accidental infringers… Continue Reading

Actually Resisting the Temptation to Tout Function and Hopefully Own a Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Non-Traditional Trademarks, Patents, Product Configurations, Product Packaging, Sight, Technology, Trademarks, TTAB, USPTO

Continuing our ramp up toward the launch of our Strategies for Owning Your Product Designs webinar next week, I’ve been thinking a lot about the Morton-Norwich factors — the common analysis for determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public… Continue Reading

March Madness For INNOVATION

Posted in Advertising, Branding, Food, Marketing, Trademark Bullying, Trademarks

Following a nice evening out chatting with Kevin O’Keefe, it’s time for my favorite weekend of all – the NCAA tournament. Now this post isn’t necessarily about basketball, but rather rivalries. In particular, rivalries between the state of Michigan and the state of North Carolina. Michigan v Duke, Michigan State v. North Carolina…there’s plenty of… Continue Reading

Yea or Neigh: Does “walmart.horse” Dilute the WALMART mark?

Posted in Advertising, Branding, Copyrights, Dilution, Fair Use, Famous Marks, Food, Infringement, Social Media, Squirrelly Thoughts, Trademarks

For every serious-minded, informative website out there (I submit for your consideration this august blog) there are countless others that lean more towards the absurd. The website “walmart.horse” is squarely in the latter column. But can something so lighthearted also constitute trademark infringement? According to Ars Technica, a cartoonist named Jeph Jacques (author of the… Continue Reading

Fear the Brow, or Fear the Trademark Specimen?

Posted in Advertising, Branding, Famous Marks, Fashion, Infringement, Loss of Rights, Social Media, Trademarks, TTAB, USPTO

Celebrity has its advantages in the trademark world. Slogans and taglines are big business for famous athletes, which in turn has led to some entertaining trademark applications: JOHNNY FOOTBALL and LINSANITY, to name a couple. As Martha noted in 2012, Anthony Davis sought to capitalize on his distinctive appearance and “The Brow” nickname with four… Continue Reading

What Do Gripe Sites Have to Do with SCOTUS’s B&B Hardware Decision?

Posted in Domain Names, Fair Use, First Amendment, Infringement, Law Suits, Trademarks, TTAB

In December, the Supreme Court heard oral arguments in B&B Hardware v. Hargis Industries. The case addresses the level of deference to be given to decisions from the Trademark Trial and Appeal Board, if any. We’ve discussed the issue a number of times at DuetsBlog. I’d love to provide you with breaking news, but still… Continue Reading

Easy as 1, 2, 3, 4, 5 — and Functional Too?

Posted in Articles, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

Welcome to another edition of newly filed configuration trademark applications at the USPTO, here is the latest; it is quite a specimen: The question for the day though is whether the claimed mark actually functions as a trademark to indicate that the goods come from a single source. The claimed mark is described this way:… Continue Reading

Single-Letter Trademark Battles: Who Gets the W for “W”?

Posted in Advertising, AlphaWatch, Articles, Branding, Fair Use, Infringement, Social Media, Trademark Bullying, Trademarks, TTAB, USPTO

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot. This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot… Continue Reading

Deck Stacked Against HOUSE OF CARDS

Posted in Television, Trademarks, USPTO

No spoilers here, I promise.  Like many Americans since it was released on Friday, I’ve been binge-watching Season 3 of House of Cards.  If you haven’t watched the program, available only on Netflix, it’s a riveting drama of political intrigue with stellar acting featuring Kevin Spacey and Robin Wright.  The promise of another House of… Continue Reading

Thoughts on the New Mitchell|Hamline Law School

Posted in Branding, Famous Marks, Guest Bloggers, Mixed Bag of Nuts, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC Naming is a tricky business with important marketing and trademark considerations.  Recently, two Minnesota law schools, William Mitchell College of Law and Hamline Law School, took up this daunting task when they decided to merge into Mitchell|Hamline. On February 13, 2015, William Mitchell Dean Eric Janus announced the… Continue Reading

Will #TheDress Impact Color Trademarks?

Posted in Articles, Fashion, International, Non-Traditional Trademarks, Sight, Social Media, Television, Trademarks

#TheDress phenomenon is about to shape the future of color trademarks and trade dress rights. You may recall, we have written a great deal on the subject of non-traditional trademark protection of colors, especially during the Christian Louboutin red-soled shoe trademark lessons, but more recently we wrote about the legal implications of color selections in… 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

The NORTH STAR Guides One to Trademark Issues

Posted in Trademarks, USPTO

Minnesota is known as the North Star State – L’Étoile du Nord.  The state of hipsters, unique dining experiences, bitter cold winters, gorgeous summer nights, and fantastic craft brewers also has an impressive craft cocktail scene.  One of its stars has been Johnny Michaels, formerly barman at La Belle Vie, a restaurant that is consistently… Continue Reading

Trademarks That Violate Public Policy

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association: John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham… Continue Reading

Crafting an Effective Fair Use Defense

Posted in Advertising, Dilution, Fair Use, Famous Marks, Food, Infringement, Marketing, Trademarks

The beer industry is rife with trademark legal issues. We’ve discussed quite a few here, including disputes over brewery names, attempts to register as a trademark the design of a beer glass, or the longstanding issue of whether all alcoholic products are related for likelihood of confusion purposes. Because of the importance of the beer… Continue Reading

Samsung Boards Brandverbing Bandwagon

Posted in Advertising, Articles, Branding, Genericide, Loss of Rights, Marketing, Technology, Trademarks, USPTO

Samsung appears to be the most recent brand to board the brandverbing bandwagon with its Galaxy Note 4 advertising campaign, asking the critical question: Do You Note? Samsung has federally-registered in the U.S. the trademark GALAXY NOTE for smart phones, mobile phones, and tablet computers — note the absence of a disclaimer of NOTE, meaning… Continue Reading

Get to the Chopper: A Service Mark on a Helicopter?

Posted in Advertising, Branding, Marketing, Non-Traditional Trademarks, Product Configurations, Television, Trademarks, USPTO

When a business uses its trademark in connection with an ordinary billboard advertisement, should it try to register the billboard as another trademark unto itself?  I venture that nearly every trademark attorney would say no.  But what if the billboard was a helicopter? MedLegal Network, out of Santa Monica, California, promotes personal injury and worker’s… Continue Reading

The Controversial SAWS of “Justice”

Posted in Articles, Patents, Trademarks, USPTO

What if the Trademark Office took Taylor Swift’s controversial new trademark applications and stalled examination of them, preventing them from getting approved, despite having no legitimate basis to refuse their registration, because of the potential for public scrutiny? Taking that a step further, what if there was an unregulated government program that in cases like… Continue Reading

Take Down for “Chinatown”?

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Infringement, Sight, Trademarks

Famous brand owners, take note: a Turkish artist and designer named Mehmet Gozetlik recently released “Chinatown,” a mesmerizing series of photographs in which neon lights depict famous design marks, with the word mark replaced by its generic wording in Chinese.  Is your brand one of them? The Pepsi logo, for example, has been recreated in… Continue Reading

Red Bull Strikes Again, but Is Old Ox Brewery a Matador in Disguise?

Posted in Articles, Branding, Famous Marks, Food, Infringement, Trademark Bullying, Trademarks

It’s no secret that Red Bull has a strong trademark enforcement strategy. Too strong, according to some. In its defense, IP counsel for Red Bull has stated that With a brand as famous as Red Bull you can certainly imagine the type of coat-tailing that goes on by third parties and we invest a lot… Continue Reading