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Category Archives: Trademarks

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An Update from Mars: “CocoVaa” Dispute Resolved

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

Earlier this year, I posted about a dispute between candy company Mars Inc. and a small business based in Wisconsin, selling handmade fine chocolates under the mark CocoVaa. In March, Mars Inc. filed a federal trademark infringement complaint in the Eastern District of Virginia, asserting that its registered CocoaVia® mark (Reg. No. 4179465), for a dietary supplement powder, was being… Continue Reading

Are pretzel crisps crumbling into genericness?

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

Marketing types and legal types who review labels, be well advised to choose words used carefully. In other words, if you believe you own rights in Pretzel Crisps as a trademark, it’s not wise to use the number of so-called “Crisps” as the serving size, especially with no trademark notice symbol. Frito-Lay’s successful 2014 generic… Continue Reading

Long Trail Brewing Tells Burton to TAKE A HIKE!

Posted in Agreements, Branding, Fashion, Law Suits, Marketing, Trademarks

What happens when a clothing manufacturer starts selling graphic t-shirts and sweatshirts, perhaps without doing a proper trademark search?  Sometimes a lawsuit. A trailblazing brewery when it comes to trademark disputes, Long Trail recently sued snowboard manufacturer and fellow Vermonter Burton for using TAKE A HIKE on shirts and sweatshirts.  Here’s an example of one… Continue Reading

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II

Posted in Articles, Copyrights, Dilution, Famous Marks, First Amendment, Trademarks, USPTO

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it… Continue Reading

A Special Thank You to Suzan Shown Harjo

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

Today marks the 25th anniversary of the filing of the petition to cancel the R-Word registrations held by Pro-Football, Inc., the NFL franchise playing near the Nation’s capital. Indian Country Today has published an interview with Suzan Shown Harjo, lead petitioner in Harjo et al v. Pro-Football, Inc., and organizer of Blackhorse et al v…. Continue Reading

2017 Minnesota State Fair Comes to a Close

Posted in Advertising, Articles, Branding, Fair Use, Loss of Rights, Marketing, Trademarks

Well, it’s official, the 2017 Minnesota State Fair is almost in the books now, it came and went, without the longstanding Original Deep Fried Cheese Curds stand (notwithstanding a heroic #savethecurds campaign); it was instead replaced by Big Fat Bacon, shown above. Love the prominent use of the TM on the signage, even if it… Continue Reading

Kerrygold Update: A Buttery Settlement

Posted in Branding, Infringement, Law Suits, Mixed Bag of Nuts, Product Packaging, Trademarks, USPTO

A few months ago I posted about a trademark infringement lawsuit filed by Ornua, seller of Kerrygold® Pure Irish Butter, against Defendants Old World Creamery and Eurogold USA, who briefly sold Irish butter under the mark Irishgold. The court granted Ornua’s motion for a temporary restraining order (TRO), concluding that Ornua had a reasonable likelihood of success on its trademark infringement… Continue Reading

Game Over for Nestlé? Atari Sues Over “Breakout” Kit-Kat Ads

Posted in Advertising, Fair Use, Law Suits, Trademarks

For most of us, video games and candy go together perfectly, but that doesn’t mean they always get along. In fact, last week the “original” video game company, Atari Interactive, sued food and candy behemoth Nestlé in California federal court. What put Atari on tilt? It was Nestlé’s incorporation of the game play, layout, and… Continue Reading

I’m Saying, I’m Down with the I’MN Slogan

Posted in Advertising, Articles, Branding, Marketing, Trademarks

Love the new Minnesota State Lottery advertising slogan: I’MN. Or, as one of my college age sons often says, when he’s in agreement with someone’s idea or proposal, I’m down. The lottery slogan cleverly plays off the affirmative and adoptive slang phrase “I’m in” (i.e., “Count me in”) — it also plays off the MN… Continue Reading

Joint IP Ownership Rights

Posted in Agreements, Almost Advice, Contracts, Copyrights, Genericide, Idea Protection, Infringement, Law Suits, Mixed Bag of Nuts, Patents, Trademarks

New ideas, creations, and business ventures are often the product of collaboration.  If lawyers had their way, a written agreement would precede every creative collaboration.  Of course, this is not the case.  Collaborators often do not seek advice of counsel, or see the need for an agreement, until after the new idea, creation, or venture… Continue Reading

My Namesake Triumphs: Tiffany & Co. awarded $19.35 million

Posted in Advertising, Branding, Famous Marks, Law Suits, Product Packaging, Trademarks

The four year saga ended (at least for now) with Tiffany & Co. being awarded for its vigorous fight to maintain its trademark and protect against genericide.  As previously reported, Tiffany & Co. filed suit against Costco Corporation (“Costco”) to protect its trademark with respect to engagement rings on Valentine’s Day in 2013.  (Read my… Continue Reading

Joust Do It? A New Form of Nike Battle Cry?

Posted in Advertising, Articles, Branding, Famous Marks, Marketing, Trademarks, TTAB, USPTO

By now, you’re familiar with my enjoyment in capturing and sharing new billboard signage that hits the streets of the Twin Cities. Question, what tagline might have inspired this one? Was the Minnesota Renaissance Festival inspired by Nike’s famous “Just Do It” tagline? Almost four years ago now, we noted — in this gem from… Continue Reading

Registrations for Golden Knights Still Refused…Partially

Posted in Mixed Bag of Nuts, Trademarks, USPTO

Another update on my series of posts following the newest NHL expansion team, the Las Vegas Golden Knights, and the difficult time they’re having prosecuting their trademark applications. The applicant Black Knight Sports and Entertainment LLC (I’ll call applicant “the team”) applied to register LAS VEGAS GOLDEN KNIGHTS and VEGAS GOLDEN NIGHTS in connection with… Continue Reading

3:16 as a Trademark?

Posted in Articles, Branding, Fashion, First Amendment, Marketing, Mixed Bag of Nuts, Television, Trademarks, Truncation

Over the weekend, IPBiz reported that WWE (World Wrestling Entertainment) has filed an application to register 3:16 as a trademark for clothing items. A Google search confirms that 3:16 has religious significance as it is a common truncation that signifies one of the most widely quoted verses from the Bible, namely, John 3:16. Despite other… Continue Reading

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part I

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, USPTO

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis. As a drum roll leading up to that discussion, and since there… Continue Reading

It’s as Suggestive as a Butter Knife for Steak

Posted in Advertising, Articles, Branding, Food, Marketing, Trademarks, USPTO

We’ve written quite a bit over the years about the Spectrum of Distinctiveness for trademarks, and the all-important difference between suggestive marks and merely descriptive ones, with only the former being allowed immediate rights based on first use. Creativity is what separates the power of suggestion from the weakness and limbo of descriptiveness. Remember the floating feather… Continue Reading

Do You Even Trademark, Bro?

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

Two Bros are competing over their Bro meal delivery services. Jamie Giovinazzo is the owner of Eat Clean Bro, LLC, a meal delivery service providing “a convenient service that is designed to bring chef-prepared meals right to your front door.”  “Whether you are looking to lose weight, live a clean and healthy life, or build… Continue Reading

MLB to Oppose (maybe) Blizzard’s Overwatch League Logo

Posted in Branding, Mixed Bag of Nuts, Sight, Trademarks, TTAB, USPTO

If you’re a video game fan like me, you’re probably familiar with Blizzard Entertainment and their assortment of popular games, such as Starcraft, Diablo, and World of Warcraft. One of Blizzard’s newest games is Overwatch, a multi-player, first-person shooter game. One aspect of this game is the Overwatch League, a series of tournaments and live… Continue Reading

The Brand With 3 Stripes, Bands, or Stitches?

Posted in Articles, Branding, Famous Marks, Fashion, Infringement, Look-For Ads, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

We’ve written a lot over the years about Adidas’ three-stripe non-verbal, non-traditional trademark. Turns out, Adidas actually owns a federally-registered trademark for the verbal, spelled-out, look-for advertising equivalent too, called: The Brand With The 3 Stripes®. We haven’t until now probed the meaning of “stripe” though: “A long narrow band or strip, typically of the… Continue Reading

Sorry Justice Alito, “The Slants” is Not Okay

Posted in Branding, Famous Marks, First Amendment, Guest Bloggers, Law Suits, Mixed Bag of Nuts, Trademarks

– Jason Voiovich, Virtual Chief Marketing Officer, Vojvdec & Sigma According to the unanimous ruling by the US Supreme Court handed down last month, failing to allow registration of trademarks such as the “Redskins,” “Fighting Sioux” and “The Slants” violates the free speech clause of the First Amendment to the US Constitution. Writing for the… Continue Reading