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Although my initial career path was to be one of the Supremes (not the musically talented ones with platform shoes and sequins, but rather, the nine wearing sensible shoes and pressed black robes in DC), I will likely stay in Minnesota as I have never lived anywhere else (though I have traveled across many borders, including the pond, and various state lines).

My calling to the courtroom, led me to earn my law degree from the University of Minnesota, after receiving my undergraduate degree in Economics and Psychology from St. Olaf College. After law school, I quickly realized that I’m more at ease in the courtroom than in my own living room, so I became a litigator. Over the years, I have developed my own style of litigating (I’m trying to trademark it) and aggressively represent my clients whether I am protecting valuable intellectual property or tackling the interests of professional athletes. Although I am not as wacky or as flaky as Ally McBeal, litigation still holds its “entertainment value” after fifteen years in the profession. This year’s Valentine’s Day festivities are evidence (pun intended) of my passion — instead of celebrating the typical Valentine’s Day with dinner and roses, our litigation team celebrated the seventh anniversary of the then largest jury verdict in Minnesota. The verdict came after a nine year battle and, as a result, V-Day has now become known as “Verdict Day.” I’m hoping to rename more holidays soon.

You may recall that DuetsBlog informed you in May of 2016 (here) that Beyoncé filed suit in New York federal court against a company and its owners who were using the mark Feyoncé on apparel and other products, such as mugs. She has now dismissed the lawsuit—likely based on a settlement (although the settlement has not been reported yet, and if there is a confidentiality provision in the agreement we may never know for sure).

Beyoncé was understandably troubled when the company began using both Feyoncé (rhyming with her name, the only difference being the beginning letter) and “Single Ladies,” which is the same name as Beyoncé’s famous Grammy award winning Song of the Year. In her complaint, Beyoncé explains that the song “tells the tale of female empowerment – the protagonist celebrates her newly found status as a single woman in a dance club telling her ex-boyfriend (who is jealous of the attention that she is receiving from other men) that if ‘you liked it, then you shoulda put a ring on it.” Beyoncé alleged that defendants were “seeking to capitalize on the notoriety of ‘Single Ladies’… defendants are selling merchandise bearing the ‘Feyoncé’ mark – a misspelling of ‘fiancé’ intended to call to mind ‘Beyoncé’ and her famous song.”

Beyoncé brought a motion for summary judgment. In denying the motion, the court found that there were genuine questions of fact regarding whether there was a likelihood of confusion. It was not enough that the company had tried to “capitalize off the exceedingly famous ‘Beyoncé’ mark.” There were still questions as to whether consumers would believe that Beyoncé was associated with the ‘Feyoncé’ products.

Beyoncé takes intellectual property rights seriously (as we all should). You may recall we blogged about her efforts to protect intellectual property related to her daughter Blue Ivy Carter, here, here and here.

We have likely not seen the last of Beyoncé’s efforts to protect intellectual property.

I was not caught up in the wizardry of Harry Potter until last April when I saw “Harry Potter the Cursed Child” on Broadway.

Now I understand the importance of wizardry and the Harry Potter brand.

The most recent battle for Warner Bros. Entertainment Inc. (“Warner Bros.”) is related to nine (9) applications it filed for the WIZARDING WORLD word mark and design mark for various goods and services.  Specifically, the company Wizard World, Inc. opposed the nine applications based on a likelihood of confusion with the company’s WIZARD WORLD® mark for “conducting entertainment exhibitions in the nature of conventions for enthusiasts of pop culture genres (e.g., games, toys, media, comic books)” in International Class 41.

Warner Bros. has already successfully obtained fifty-two (52) registrations for marks with “HARRY POTTER,” including eleven (11) registrations for THE WIZARDING WORLD OF HARRY POTTER® mark.  Warner Bros., or related entities, also own registrations related to other characters from the Harry Potter series including: five (5) registrations for marks with DUMBLEDORE and three (3) registrations for the HERMIONE GRANGER® mark.

Will Warner Bros. be able to register the WIZARDING WORLD mark along with its other Harry Potter related marks?

An NFL team and an NBA team are duking it out over trademarks with the word “UPRISING” to be used with eSports.

What is eSports you may ask? It is professional competitive video gaming. Anyone with a teenager has probably heard of Fortnite. Fortnite is a world-wide phenomenon. Over three nights during TwitchCon (which is a Fortnite competition), Fortnite averaged around 65,000 viewers per day across Twitch, YouTube and Facebook. However, there are also numerous other video games such as Hearthstone, Tom Clancy’s Rainbow Six Siege, Star Craft II and Overwatch, among others. Indeed, Overwatch is related to the trademark dispute involving the owner of the New England Patriots.

The dispute involves the marks BOSTON UPRISING and NORTH UPRISING. Specifically, last month, the billionaire owner of the New England Patriots Robert Kraft’s company, Kraft Group, filed a Notice of Opposition against an application filed by the NBA’s Toronto Raptors for the mark NORTH UPRISING (stylized) in connection with clothing and other merchandise that is to be used with video games. The Kraft Group alleges that the stylized mark in the application is similar in stylization and font of its applied for stylized mark for BOSTON UPRISING.

Continue Reading The New England Patriots Are Ready To Battle Off The Field

Florida start-up entity BAD MOMS, LLC beat the producer of the movie with the same name to the punch! Specifically, the company sued the producer for declaratory judgment and an injunction preventing the movie producer from using the mark in connection with any of the Florida company’s goods and services or those related thereto. Both parties have pending applications for BAD MOMS and related trademarks. The lawsuit came after the movie producer sent demand letters to the Florida entity asking it to abandon its applications for BAD MOMS trademarks and cease using the mark. The movie producer brought counterclaims against the start-up company.

The Florida start-up company was founded by a single mom working her way through college and law school. The company organizes and hosts events for single-moms to share experiences, provide education and create a network. In addition, the company sells wines and spirits under the BAD MOMS mark.

Earlier this month, the dispute heated up when the movie producer asked a federal judge to sanction the start-up company for failing to follow a discovery order. The attorney founder of the company denied that the motion is warranted and asked for an extension of time to respond to the motion. The Court granted her request. The hearing on the motion is scheduled for Monday, October 29, 2018.

I have not seen the “BAD MOMS” movie but it was popular enough to spawn a sequel. Many of my friends told me it is a fun movie to watch, even if it is predictable. I heard that the following movie scenes were hysterical:  (1) grocery store scene; (2) limping dog scene and (3) the meeting to discuss the school board.

We will have to wait to see who wins the lawsuit and if the trademark dispute spurs more interest in the movies and/or the Florida company’s events and products.

The popular UGG® branded sheepskin boots are at the heart of a dispute in the Northern District of Illinois. Deckers Outdoor Corp. (“Deckers”) owns 29 federal registrations for the trademark UGG in connection with numerous goods and services, including footwear, clothing, wallets, passport covers, plush toys and retail store services. The company also has four pending applications for UGG to add to this family of UGG trademarks.

Deckers sued Australian Leather Pty. Ltd. and its owner (“Australian Leather”) for trademark infringement and patent infringement for selling “ugg” boots.

UGG® branded boots have become very popular. Fashion forward celebrities, such as Blake Lively and Sarah Jessica Parker, are often pictured wearing the comfortable boots as they go about their daily lives. This provides the brand with free publicity and even more exposure.

Defendant Australian Leather alleged that the ugg mark was generic for sheepskin boots and that the doctrine of foreign-equivalents supported this conclusion. The parties brought cross motions for summary judgment on these issues and others.

Steve Baird has written about trademark genericide before on DuetsBlog. Generic trademarks are those where a brand name has become synonymous with a general class of product or service. Famous examples include: aspirin (Bayer lost this valuable mark), elevator and linoleum. Losing a trademark to genericide allows competitors to benefit from the originating company’s goodwill without being guilty of trademark infringement. Companies have undertaken advertising campaigns to prevent or combat their trademarks from becoming generic. For example, the Velcro Companies came up with the hilarious video, “Don’t Say Velcro,” explaining that the product is a “hook and loop” with the brand name VELCRO®. The company even came up with a sequel video called “Thank You For Your Feedback” that Steve Baird wrote about previously on DuetsBlog.

Luckily for Deckers, the Illinois Court found that its UGG® trademark was not generic. Deckers introduced a survey undertaken in 2017 in the United States of 600 women between the ages of 16 and 54 wherein 98% of the respondents viewed UGG® as a brand name. These results were even better than past surveys commissioned by Deckers in 2004 where 58% of the respondents viewed the mark as a brand, and in 2011 where 89% of respondents viewed UGG® as a brand name.

In turn, Australian Leather asserted that “ugg” was generic among American surfers in the 1970s. The Court found this group to be too narrow. Australian Leather also introduced evidence of “ugg” being generic for sheepskin boots in Australia. Not surprisingly, the Court did not find this evidence to win the day. The Court noted that genericness in another country could be at least relevant to consumer perceptions in the United States. However, it is important to remember that whether a trademark is generic in another country has little bearing on whether it is generic in the United States. Trademark rights are territorial. Having a registered trademark in the United States does not give a company rights in that mark in Australia or other countries.

The Court explained that the foreign-equivalents doctrine did not warrant another result. It explained that “the doctrine is not a perfect fit for English to English [terms, rather, the doctrine] is generally used to analyze non-English terms used in the American marketplace.” Steve Baird did a nice job of explaining the appropriate use of this doctrine in his post, here.

What genericide stories have you heard about?  It can be an ongoing and costly battle for brand owners to protect their valuable intellectual property rights.

The trademark ST. ROCH MARKET is at the heart of a dispute in New Orleans (aka NOLA).  The City of New Orleans is battling in court with the current lessee of the building associated with the trademark.

ROCH MARKET has been associated with a popular market in New Orleans since 1875. Prior to Hurricane Katrina, the market sold fresh seafood. After begin devastated by the hurricane, the City pumped over $3.2 million dollars to transform the place into a food hall with vendors selling seafood, confections, coffee, alcoholic drinks, streetfood, and other food.  Renowned food expert ZAGAT states that it is “An absolute must visit.”  I intend to do so when I visit my friend in NOLA this fall.

Following the renovation, Bayou Secret, LLC leased the building to operate a full service neighborhood restaurant with multiple vendors in a stalls concept.   The company’s sole member Helpful Hound, LLC applied to register the ST. ROCH MARKET mark in April 2017 in connection with food kiosk services and retail vending stand services (Bayou Secret, LLC, and Helpful Hound, LLC and certain individuals associated with the entitityes will collectively be referred to as the “Bayou Secret Parties”).  Because the term ST. ROCH MARKET is descriptive of an actual place, the mark could not be registered on the Principal Register of the United States Patent and Trademark Office.  However, registration for the mark was secured on the Supplemental Register at U.S. Reg. No. 5,293,244 based on the mark’s secondary meaning.

The Bayou Secret Parties launched a similar food hall in Miami in April 2018 and planned to expand into Chicago and Nashville.  Within days of each other in April 2018, the City of NOLA and Bayou Secret Parties filed lawsuits against each other.  The Court consolidated the two cases which involve allegations that Bayou Secret Parties infringed the City of NOLA’s trademark, that the famous trademark was being diluted, among others.

The City of NOLA also filed its own application for the ST. ROCH MARKET in April 2018 in connection with the leasing and management of space for food and drink vendors in a public market at Ser. No. 87/890,988.

In August, the City of NOLA and its management company (NOBC) secured a preliminary injunction that barred the Bayou Secret Parties from using the ST. ROCH MARKET mark for food hall locations other than in NOLA and its newly opened food hall in Miami.

The Bayou Secret Parties brought a motion to dismiss on various grounds.  The City of NOLA defeated the motion with the exception of having its claim for trademark dilution dismissed.  The court found the allegation that the mark “is widely recognized by the general consuming public of the United States” was merely conclusory.

Do you think the EATALY® mark associated with food halls would fare better?  (See U.S. Ser. Nos. 3,065,012; 3,567,939).  It might.  The mark is associated with the well known food halls located near the iconic Flatiron building in New York, downtown Chicago and other locations.

Significantly, famous chef Mario Batali is a partner with the Italian owner of the EATALY mark that was first used in Turin, Italy for a food and wine market before traveling to the United States.

Since last week, the internet has blown-up about what United States Supreme Court nominee Judge Brett Kavanaugh might decide regarding issues coming before the Supreme Court if he joined the highest Court of the land. As a judge on the D.C. Circuit, Judge Kavanaugh has been skeptical about the authority of administrative agencies. This could impact decisions rendered by the United States Patent and Trademark Office (“USPTO”).

Specifically, Judge Kavanaugh has been critical of the authority of the government agencies to promulgate regulations interpreting legislation. Judge Kavanaugh would likely find it inappropriate for an agency to fill in gaps left in a statute.  Judge Kavanaugh would likely chip away or do away with the Chevron doctrine. Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). This doctrine refers to a defense invoked by a government agency that allows a court to show deference to the agency’s interpretation of a law that it administers.

Several years ago, the United States Supreme Court held that issue preclusion should apply (so long as the other elements of issue preclusion are met) when the trademark usages adjudicated by the Trademark Trial and Appeal Board (“TTAB”) are materially the same as those before the district court. B&B Hardware Inc. v. Hargis Indus., _ U.S. _, 135 S. Ct. 1293 (2015).  In other words, the decision of the TTAB can be binding on other courts. DuetsBlog has posted on this decision before:

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion and What Do Gripe Sites Have to Do with SCOTUS’s B&B Hardware Decision?

Justice Thomas and the late Justice Scalia disagreed with the majority in the B&B Hardware decision. In his dissent, Justice Thomas was troubled by the fact that the TTAB was not comprised of Article III judges. Instead, the judges serving on the TTAB lacked input from either the President of the United States or the Senate. The dissent believed that applying issue preclusion raised serious constitutional concerns.

Judge Kavanaugh appeared to have a similar view in connection with a decision related to an underlying decision rendered by the Copyright Royalty Board (“CRB”). He suggested that there was “a serious constitutional issue” with the way judges are appointed to the CRB. Judge Kavanaugh further wrote that “under the Appointments Clause, principal offices of the United States must be nominated by the President and confirmed by the Senate.” Judge Kavanaugh wrote that the CRB had acted arbitrarily.

It will be interesting to see what impact a Justice Kavanaugh (or whoever becomes the ultimate replacement for Justice Kennedy) will have on the USPTO and intellectual property issues in general.

DJ Khaled and his son’s company sued an online retailer named Curtis Bordenave and his company, Business Moves Consulting, Inc., alleging that they are illegally using his and his son Asahd’s intellectual property.

Most of you likely know who DJ Khaled is, but I had not heard of him before reading about this dispute.  When I asked my friend about him on Friday night , she said “I know he is famous but I can’t tell you why.”  In looking at the Complaint, I found that “Khaled has enjoyed tremendous success in the United States and beyond as an entertainer, record producer, radio personality, radio label executive, and media celebrity.”  Wow. It appears I have been missing out.

DJ Khaled himself owns the KHALED mark in connection with musical sound recordings musical video records, disc jockey services, and other entertainment services.

DJ Khaled’s son, Asahd Tuck Khaled, is frequently featured on Instagram. The complaint asserts that Asahd has become a social media phenomenon.  He has lots of followers on Instagram (a social media I need to start using more—I have an account that I only use right now to communicate with my niece and nephew).

In addition, DJ Khaled is challenging Bordenave’s filing an application for “We The Best Lifestyle,” which infringes on his trademark WE THE BEST®.  DJ Khaled has registered the WE THE BEST® trademark in connection with, among other goods and services, musical recordings, entertainment services, online retail clothing store services, recordings and e-cigarette liquid.

Khaled frequently uses the saying “We the Best.”  Forbes even wrote an article entitled “How many Times can DJ Khaled say ‘We the Best’ in 40 seconds?” in November 2014.

Khaled worked the circuit using his catch phrase “We the Best” on shows such as The Ellen Show, Jimmy Kimmel Live, Live with Kelly and Ryan, The Chew, Rachel Ray, The Daily Show, The Late Show with Stephen Colbert, Late Night With Seth Meyers, and Good Morning America.  Khaled formed ATK Entertainment, Inc. to protect his infant son’s interests.

The complaint alleged that “Plaintiffs bring this action to halt the brazen attempt by trademark pirates…to usurp and trade on the names and trademarks of world-famous entertainer Rahled M. Khaled, known popularly as “DJ Khaled, and his 18-month old son, Asahd Tuck Khaled.”  It further describes Bordenave’s actions as “parasitic  conduct and bad-faith act.”  Specifically,  DJ Khaled and his son’s company brought various claims of violation of both Khaled and his son’s trademark rights and right of publicity under New York state law.  Not all states have such laws. Minnesota does not. See a former Duets post on the subject, here.

Specifically, DJ Khaled and his son’s company have brought claims under the New York Right of Privacy Act (N.Y. Civ. Rights Law §§ 50-51), trademark infringement and unfair competition under the Lanham Act and common law, state law claims under the New York Deceptive and Unfair Trade Practices Act (N.Y. Gen. Bus. Law § 349), and commercial defamation.  Finally, they brought a declaratory judgment action seeking a declaration that they are not violating any rights of Bordenave or his company.

Khaled alleges damage because Bordenave attempted to interfere with a deal that Khaled had made with Nike to use his son’s name in conjunction with Michael Jordan to sell clothes.

This is not Bordenave’s first rodeo. The complaint states that he is a “serial trademark infringer.” Bordenave and his company have previously applied to register:

  • CARDI-B—which is the name of a well-known rapper
  • STORMI COUTURE—which it applied to register within a month of the birth of Kylie Jenner’s daughter Stormi Webster.

The complaint also alleges Bordenave improperly filed six other trademark applications based on other famous people, television stations or radio stations.

This appears to be a new trend with the rich and famous: promoting your kids names to sell products. Other famous parents have sought trademarks in connection with their children’s names. For example, Beyoncé and Jay Z applied for the mark BLUE IVY CARTER® in connection with numerous goods and services, including but not limited to, entertainment services, fragrances, cosmetics, skin care products, metal key chains and metal key rings, DVDs, CDs, and audio and visual sound recordings featuring musical performances, handheld and mobile digital electronic devices, baby teething rings, baby strollers and book, bags, and hair accessories. Beyoncé’s company is currently battling an Opposition filed by a company named Blue Ivy that is an entertainment and event planning firm focused on weddings and other elegant events.

We will have to see if DJ Khaled can stop Bordenave from capitalizing on his young son’s fame.

There is a battle brewing over songs by Minnesota’s own Prince.  I, for one, am anxious for the dispute to be resolved so we can enjoy these recordings. Who knows, there may be another worldwide hit “Purple Rain” out there.

The initial lawsuit was brought by Prince’s company Paisley Park Enterprises, which is now owned by his estate and its representative Comerica Bank & Trust, N.A.  (Collectively “Prince’s Estate”). Prince’s estate filed a Statement of Claim against George Boxill who was the sound engineer who worked with Prince on several music performance recordings. Before working with Prince, Mr. Boxill signed a confidentiality agreement. Prince’s estate states that the agreement explicitly stated that all recordings from the consultation remained the property of Paisley Park Enterprise. In 2006, Boxill worked with Prince to record five songs that have not been released yet. Other songs from this work were released on Prince’s album titled 3/21, which credited Boxill as a sound engineer. However, that same year, Boxill refused to return the five recordings to Paisley Park Enterprises. Prince’s estate now argues that this refusal to return the musical recordings violated his agreement.

A year after Prince’s untimely and tragic death, and ten years after working with Prince, Boxill mixed and edited the Prince songs. Boxill and Rogue Music Alliance, LLC and Deliverance, LLC (“music companies”) began promoting and selling the recordings under the name of “Prince” on the website www.princerogersnelson.com (the artist’s full name). They issued a press release announcing a nationwide release of an EP titled Deliverance that included songs by the late iconic Prince. This caused Prince’s estate to commence arbitration against Boxill and another case against Boxill and the music companies in federal court to stop the release of the songs and return them to Prince’s estate.

On April 20, 2018 (five days before the evidentiary hearing in the arbitration proceedings), Boxill and the music companies filed an emergency motion in the United States District Court for the District of Minnesota to enjoin the arbitration. United States District Court Judge Wilhelmina Wright denied the motion.

Boxill and the companies filed another motion to stay the hearing, arguing that the Copyright Act preempted the state law claims asserted in the arbitration proceedings. Judge Wright again denied the motion and ruled that the Eight Circuit lacked jurisdiction to review her order.  Despite this second order, Boxill filed the appeal.  Prince’s estate not only opposed the appeal but also asked for sanctions against Boxill and the record companies. The Eighth Circuit denied both motions.

Hopefully, this dispute will be resolved quickly and we can all enjoy recordings from the late great Prince.

I just got back from my yearly trip to hang out with creative people and learn about branding and design at FUSE. This year we traveled to the brand capital New York City.

On Monday, I participated in the FUSE Trenzwalk through Chelsea, Greenwich Village and the Meatpacking District in New York City. Earlier this week, you may have seen Steve Baird’s post inspired by this walk, What You Need to Un-Suspend a Trademark.

There were two places in Chelsea Market that caught my eye and have trademark registrations:

  1. KIKKERLAND®, and
  2. FAT WITCH®.

The KIKKERLAND® store sells various products such as personal grooming devices, sports spectacles, massage apparatus, electric lamps, electric light fixtures, chronometric instruments, stationery, furniture, household utensils, kitchen utensils, and briefcases.

The FAT WITCH® brand is associated with brownies, cookbooks and recipe cards. Although the brand name itself might not inspire consumers to come in to consume brownies and become “fat,” the cute design of the witch below does invite people into the store.

Day two of FUSE was devoted to presentations at the DREAM hotel. I attended the presentation entitled “The Augmented Body – Sustainable Fashion Futures for a Connected World,” by Dr. Amanda Parkes. We learned about a company that was using waste from oranges to make “Orange Fiber,” which is a sustainable silk fabric. The company partnered with famous designer Salvatore Ferragamo® for his Capsule Collection.

Adidas is also getting on the sustainability train by selling shoes and swimsuits made from ocean plastic. Specifically, the footwear giant partnered with the non-profit organization Parlay for the Oceans. The organization seeks to raise awareness about the precarious state of the world’s oceans and to work on projects to help protect and conserve the oceans.

ZOA™ was another sustainable fabric discussed in the presentation. The brand features biofabricated leather products made without animals. Modern Meadow filed a trademark application for the ZOA mark in connection with various bioleather products.

Has anyone been involved with the development of sustainable products, or bought any products made from them?