DuetsBlog Collaborations in Creativity & the Law

Category Archives: Trademarks

Subscribe to Trademarks RSS Feed

Use of NAVAJO – Is Urban Outfitters Infringing or Not?

Posted in Dilution, Famous Marks, Fashion, Genericide, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

Battles continue to wage over use of the “Navajo” and “Navaho” marks in New Mexico federal court. The Navajo Nation (“the Nation”) sued Urban Outfitters and its subsidiaries, including one of my favorite retailers, Anthropologie, (collectively “Urban Outfitters”) in 2012. The suit is now heating up with motion practice. The complaint alleges that Urban Outfitters… Continue Reading

An appetite for the unexpected: Bay Area Restaurant Names

Posted in Branding, Food, Guest Bloggers, Idea Protection, Mixed Bag of Nuts, Trademarks

- Laurel Sutton, Senior Strategist at Catchword Brand Name Development When the San Francisco Chronicle’s “Top 100 Bay Area Restaurants 2015” guide arrived today, I started paging through eagerly. But not to see if my favorite spot made the list, or even to see if I’d eaten at any of the top 100, as most… Continue Reading

Trademark vs. Copyright: Avoid the HAVOC

Posted in Advertising, Articles, Branding, Copyrights, Famous Marks, Idea Protection, Infringement, Television, Trademarks

I’ve come across yet another college-hoops related trademark dispute — but what’s even more interesting is the way the AP covered the story. It’s a reminder that we IP lawyers can and must dispel any public confusion between the different forms of intellectual property. Shaka Smart, the longtime basketball head coach at Virginia Commonwealth University,… Continue Reading

The Juice Runs Out for Yankee Parody Trademarks

Posted in Dilution, Fair Use, Famous Marks, First Amendment, Trademarks, TTAB

A good general business practice is to apply to register trademarks early. You’ll find out if there is an issue. You’ll have time to change rather than having to take everything off the shelf under the threat of a lawsuit. Yet a recent decision from the Trademark Trial and Appeal Board in New York Yankees Partnership… Continue Reading

Trademarks Can Be a Bitch

Posted in First Amendment, Trademarks, TTAB, USPTO

And I mean that literally. We’ve laid down a lot of digital ink in the past about pejorative marks – lately in reference to the Redskins (at least here, here, and here) and  The Slants (here and here), both of which have been deemed disparaging enough to deny them a federal trademark registration.  We’ve even… Continue Reading

Trademark a feeling.

Posted in Branding, Guest Bloggers, Mixed Bag of Nuts, Non-Traditional Trademarks, Sight, Smell, Sound, Taste, Touch, Trademarks

–Aaron Keller, Managing Principal, Capsule How fast are you getting at typing with your thumbs? My high school typing instructor would be so proud of my advancements. I’d say 60 words a minute if I am humming along with an idea of what to write. Not bad, proud to say I am writing this post… Continue Reading

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

Posted in Articles, Infringement, Law Suits, Trademarks, TTAB

Move over likelihood of confusion, there is another sheriff in town, at least when it comes to looking for guidance on best practices and strategic considerations for a brand owner’s clearance, registration, protection and enforcement of trademark rights in the United States. As if us dedicated trademark types didn’t already have enough likelihoods (confusion, dilution,… Continue Reading

Is the Skype Falling?

Posted in International, Trademarks, TTAB, USPTO

  An interesting battle ground may be brewing in light of the United States Supreme Court’s recent ruling in the B&B Hardware case which Duetsblog authors have previously commented on extensively.  Now that the Court has essentially expanded the scope of collateral estoppel applicable to trademark registration decisions made by the United States Patent and… Continue Reading

YourBrand.sucks — Unless You Act Now!

Posted in Advertising, Branding, Domain Names, Marketing, Squirrelly Thoughts, Trademarks

As the INTA Annual Meeting winds down, one memory for me that certainly stuck out was an on-site ad campaign revolving around the new “.sucks” top-level domain (“TLD”). Depending on whom you ask, it’s either ingenious or diabolical. Just outside the San Diego Convention Center, the throngs of orange lanyard-wearing conference attendees were greeted by… Continue Reading

Remember the Alamo® but Don’t Forget the License.

Posted in Articles, Branding, Fair Use, Famous Marks, Infringement, Law Suits, Trademarks

With hard pressed economic times, state and local governments have turned to new sources of revenue: intellectual property licensing. The City of New York has been in the game for decades, licensing use of its the I ♥ NY symbol. San Francisco enforces its rights in the image of its BART transit pass. And Portland is… Continue Reading

Really, Seriously? Frat boys, Go Home to Mommy (Patagonia Sues To Shut Down ‘Fratagonia’ Line)

Posted in Branding, Dilution, Famous Marks, Fashion, Guest Bloggers, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

–Aaron Keller, Managing Principal, Capsule Unfortunately, the phrase “frat boy” or “fraternity” has been dealt another cultural blow by some less-than-impressive gents launching a ‘Fratagonia’ line of clothing. My hope is they are freshmen and just haven’t taken a semester of business law yet. But, likely there are other senior “should know better” individuals involved…. Continue Reading

More Imaginative THANN Other Soap Brands

Posted in Articles, Branding, International, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Sight, Trademarks

On a recent trip to the Washington, D.C. area, I had the opportunity to stay at the Bethesda North Marriott Hotel & Conference Center, and I’ll have to say, as a trademark type, it was difficult to avoid being drawn to their unique and engaging bath soap and packaging: In my experience, most bath soap… Continue Reading

Big Green Egg on Hunt for TM Registration

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Trademarks, USPTO

As it turns out, four days after Easter, the USPTO refused registration of the Big Green Egg’s claimed exclusive rights in the shape and color of its popular barbecue smoker and grill: As you will recall, we wrote about this product configuration trademark application, back in December of last year. Here are the challenges raised… Continue Reading

Coke Walks Tightrope in ZERO Branding

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO… Continue Reading

First dinosaurs, then wooly mammoths. Are trademark attorneys next to go extinct?

Posted in Genericide, Infringement, Law Suits, Look-For Ads, Squirrelly Thoughts, Trademarks

A world without trademark attorneys… frightening, isn’t it? (maybe more for me than for someone who isn’t a trademark attorney). It seems unlikely, but we may be inching closer to this apocalyptic scenario. In Australia, a group of researchers, legal academics, and other organizations are collaborating on the creation of a computer program that they… Continue Reading

Britto v. Apple: Utilizing the IP Kitchen Sink

Posted in Advertising, Articles, Branding, Copyrights, Counterfeits, Dilution, Fashion, Infringement, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Can an artist’s particular style of art constitute both copyrightable expression and trade dress? Brazilian artist Romero Britto has filed suit against two artists known as “Craig & Karl” for copyright infringement — and since the artists’ work was featured by Apple, Britto has sued the company as well for trade dress infringement. Britto’s complaint, filed in the… Continue Reading

Show, Don’t Tell . . . The Preferred Approach

Posted in Advertising, Almost Advice, Articles, Branding, Genericide, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Technology, Trademarks

FUSE 2015 is off to being yet another amazing, inspiring event for brand strategy and design professionals. The keynote speaker for day one was Eric Quint, Chief Design Officer of 3M, who delivered a very interesting presentation called: “Future Forward: Beyond Design Tourism.” Little did Mr. Quint know that he set the table nicely for… Continue Reading

Copycat Characters and the Selective Enforcement of IP Rights

Posted in Copyrights, Infringement, Law Suits, Mixed Bag of Nuts, Trademark Bullying, Trademarks

Spring is here with summer just around the corner. While many are preparing for barbeques and boating, others are finalizing plans and perhaps costumes in preparation for Comic-Con (Comic Book Convention) season. As many know, DC Comics and Marvel Comics are the long-time competitors in comic book publishing. Both companies were started in the 1930s… Continue Reading

Bringing Down the Bauhaus for Trademarks?

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Trademarks, TTAB, USPTO

We’ve been spilling a lot of digital ink lately on the topic of non-traditional trademark protection and how the functionality doctrine serves as an absolute bar for such protection. As you know, for some time, we’ve been stressing the importance of close collaboration between trademark and marketing types when it comes to forming public communications… Continue Reading

Let’s Ignite Inspiration Together: FUSE 2015

Posted in Advertising, Branding, Non-Traditional Trademarks, Trademark Bullying, Trademarks

Last year at FUSE 2014, I spoke about “The Intersection of Brands, Design, and the Law,” this year — and a short ten days from now — I’ll be sharing some valuable thoughts about how to gracefully navigate the many legal pitfalls of naming and re-branding projects. FUSE — one of the premier brand and… Continue Reading

The Pursuit of Trademark Perfection: Can “40-0″ Function as a Mark?

Posted in Advertising, Branding, Domain Names, Fashion, Infringement, Marketing, Social Media, Trademarks

As Kentucky prepares to square off with Wisconsin in the NCAA Final Four and move one step closer to an undefeated, 40-win season, the University of Kentucky has been dueling with one of its own – a fan and attorney claiming he has already secured trademark rights to “40-0.” But can such a term even… Continue Reading

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Posted in Almost Advice, Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB, USPTO

Last week, while I was preparing for and had the unique opportunity of arguing a real, live TTAB final hearing on the merits, outside the TTAB’s typical oral hearing location (because it was selected by the TTAB to be part of the ABA’s IPLSpring continuing education conference in Bethesda, Maryland), the Supreme Court issued its… Continue Reading