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I have always considered myself to be a creative person. Full disclosure: I'm not claiming that I've created anything good, merely that I have created things that exist. Over the years I have made skateboarding movies, played bass and guitar in bands, acted in plays, written and performed sketch comedy, and even acted in an independent (i.e. very low-budget) zombie movie. Unfortunately none of these ever blossomed into a career. I guess it was the classic case of being ahead of your time.

Thankfully these hobbies put me on a path to my current career as an intellectual property attorney. In fact, my first legal venture was obtaining copyrights for my band's debut (and only) album. I had considered law school as an option but I hadn't committed by the time I finished my undergraduate studies. To buy time I signed up for a student work visa and moved to London. Thanks to destiny, dumb luck, or both, I found a position in a law firm specializing in trademark law and brand management. It was my first exposure to the practice of law, and I quickly discovered that I had found my future career.

When I'm not in the office, I spend my time playing my guitar, obsessing over baseball (go Twins!), or talking up a band, movie, or television show that has recently impressed me.

Maybe you’ve heard of Warby Parker. The eye wear company has become quite successful in a previously monolithic industry. But a tongue-in-cheek advertising effort for a new onion ring monacle might just cross the line into provoking a trademark feud. See, Exhibit 1, below:

And, for the main course:

Even if Warby’s doesn’t actually sell the products, the packaging incorporates not only the entirety of the Arby’s trademark, but also the iconic, cowboy hat/maybe-its-a-fishhead logo. Has Warby Parker’s rebellious attitude finally crossed a line?

It turns out, no. No it hasn’t. According to AdWeek, Arby’s and Warby Parker specifically teamed up on this project as part of an elaborate April Fool’s Day joke (and, ICYMI, this is not Warby Parker’s first rodeo, either). So the joint use of the marks is authorized by both parties and not an infringement. As the companies explain in their joint press release:

Arby’s has an eye for meat. Warby Parker has meat for eyes. The result? A new partnership sandwiched somewhere between vision and at least eight different kinds of meat.

If you’re lucky enough to live in New York, New York, there will be two real life Warby’s restaurants, beginning this Friday, March 30th. The participating locations are at 121 Greene Street and 32 E. 23rd Street. I don’t know where those addresses are, but for marketing purposes I hope it isn’t Long Island (no offense, Long Island).

So yes, this isn’t an infringement issue. But this is still a trademark story. At some point attorneys on both sides of the equation received an email because “This sounds awesome, but I think we have to run it by legal first.” Thankfully, the attorneys didn’t get in the way of this project to prevent it from actually happening.

My only complaint is that the companies announced it as an April Fool’s Day joke. You have to at least try to trick people into falling for it. Come on.

Yesterday the U.S. Patent and Trademark Office announced a new pilot program to help fight fraudulent trademark applications. Specifically, the new program addresses situations where the applicant provided the USPTO with a fraudulent specimen to demonstrate use of the trademark.

Only a narrow subset of fraudulent applications would be vulnerable to a claim under this pilot program. One example could include the whiskey specimen shown below.

Based on the name alone, I assume this is some high quality booze. However, it might surprise you to learn that this is not a real bottle of whiskey. I just created it using it in MS Paint (cue mindblown gif).

Most attorneys understand that submitting this as a specimen would constitute fraud on the USPTO. However, not all individuals and companies understand the use requirements for obtaining trademark protection in the U.S. Some may mistakenly believe that registering a trademark is merely a ministerial act, requiring only a picture of how the applicant plans to use a trademark. Others might understand the requirement, but simply don’t care about the legal ramifications of submitting a fraudulent specimen.

It is not unsurprising that many fraudulent specimens come from foreign countries and, in particular, individuals in foreign countries.  A real life example of a possibly fraudulent specimen was submitted for this application, and is shown below.

Based on the lack of information on the label and the positioning of the wording, it appears that the applied-for mark was digitally added to the image. This is an example of the type of fraudthat can be submitted through the new pilot program.

The full details of the pilot program are available here. The basic details include:

  1. Eligibility: the allegedly fraudulent specimen “is potentially not in actual use, but has instead been created for the purpose of submission to the USPTO as a specimen.”
  2. Evidence: Supporting evidence must include either (1) references to prior registrations or applications that show the same “mock up” or digital specimen with different marks (i.e., a company has applied to register five trademarks for whiskey, and submitted five version of the same mock up imagine but with different marks; (2) evidence showing use of the same digital image from a third-party on a website, advertisement, or other publication that shows that the alleged fraudster merely deleted wording and added its own mark.
  3. Reporting procedure: an email must be sent to the USPTO.gov email addressed identified in the Pilot Program instructions. There is not a formal online submission form. The email must include “Duplicative Specimens — [Serial Number]” in the subject line, provide any additional serial numbers in the body, and include the supporting evidence.
  4. Timing: The USPTO will consider evidence sent prior to the opposition deadline, or likely any time if the application has not yet been approved for publication.

 

The program is narrowly tailored, but will certainly be helpful to address some of the most egregious cases of fraud. These types of fraud may also be difficult to uncover before the end of the publication period. Nonetheless, it is encouraging to see the USPTO institute programs like this, as it allows the USPTO to help combat fraud within the applicable statutory constraints.

Last year we took a whiff of Hasbro’s application to register the smell of its Play-Doh® for “toy modeling compounds.” We didn’t think the application was ripe for a functionality refusal, but a refusal on the ground of a lack of acquired distinctiveness seemed like a certainty.

An Office Action issued on May 26th, 2017, refusing the application on the ground of a lack of acquired distinctiveness. The Office Action also included a number of Requests for Information to determine whether a functionality should issue, too.

For the uninitiated, a trademark must be distinctive in order to be protectable. Because a scent mark cannot be inherently distinctive, an applicant must establish “acquired distinctiveness,” also known as “secondary meaning,” to obtain a registration. Essentially, acquired distinctiveness means that the claimed mark may not have been a symbol of the source of the goods, but because of advertising, commercial success, publicity, etc., the public has come to recognize the claimed mark as a identifying a particular source for the goods.

For attorneys looking for a good playbook as to how to establish acquired distinctiveness, look no further than Hasbro’s Response, filed on November 27. The Response includes pretty much every piece of evidence that you could ask for.

It included the classics:

  • Sales numbers, more than a billion since 2004 in the U.S.
  • Advertising numbers, $77 million since 2004 in the U.S.
  • Longstanding use, since the year 1956
  • Unsolicited media attention referencing Play-Doh’s “unique and distinctive smell” and its “legendary scent”

It included new hits, like screenshots of social media of consumers talking about the memory of the smell of Play-Doh as a child. It also included “blogs written by experienced attorneys who opine on the source-identifying function and registrability of the applied-for mark.” Looking at those articles, you might even recognize a familiar blog post. No need for any thanks, Hasbro. But on a completely unrelated note, this R2-D2 Play-Doh set looks pretty great. Just saying.

The Response also included the obligatory declaration from a Hasbro head honcho to support these claims. The declarations always have at least one over-the-top assertion that you just can’t help but include. Here, it was the reference that Play-Doh for some people is “as identifiable as their mother’s faces.” Might be a bit of a stretch, not that I’m saying I wouldn’t have included it though. For me, the gem is the strange but unforgettable fact that since 1956 more than 950 million pounds of Play-Doh had been sold. If only it had included a reference as to how big that Play-Doh boulder would be.

And yes, the Response even included the coveted, but not always available “look for advertising”:

I’m not entirely convinced this qualifies as “look for advertising” though. It doesn’t direct consumers to the claimed trademark like a “look for the purple cap!” might do. Just looking at the advertising doesn’t tell me what type of smell I’m looking for. It’s close enough though, and the rest of the evidence is pretty compelling.

So, do you think the evidence was successful? Could the examiner smell what Hasbro was cooking? If you guessed yes, then congrats. The application published on February 27. Now all that is left is to see whether any of Hasbro’s competitors file an opposition to the application.

It’s certainly possible that a competitor might feel that providing Hasbro with ownership of the “scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough” might put them at a non-reputational, competitive disadvantage. In theory, it doesn’t seem like granting Hasbro the registration will be problematic, but in practice it will depend upon how broadly Hasbro interprets its rights.

But that may be parting the cart before the horse. Let’s wait and see how the next 35 days go before we start talking enforcement.

Words and pictures are so 2017. This year, it is all about the non-traditional trademarks (i.e., something other than brand names and images). In the past, we’ve covered a variety of these types of trademarks, from colors to product shapes, to sounds and even the touch of a product. Even looking only at college football, there are registered marks for the color of a field, player uniforms, and fan chants.

And 2018 has already given us a new category: hand gestures. Music and fashion mogul Shawn Carter (also known as Jay-Z) recently applied to register the hand gesture below for entertainment services.

According to one origin story, the image of a diamond was meant as a reference to the slang term “rock” for diamonds. Jay-Z’s record label is Roc-A-Fella Records, and using the hand symbol has come to be known as “throwing up the roc.”

Whether due to Jay-Z’s popularity or due to the calorie burning benefits of raising your arms briefly, the symbol has become a bit ubiquitous in popular culture. Everyone from Aaron Rodriguez, Fran Drescher, to Warren Buffet and others are documented roc-throwers. But nobody can do it quite like Hov himself:

Also worth adding to the list is professional wrestler Diamond Dallas Page. He’s been throwing the roc since the ’90s:

Although his gesture is just a little bit different, with his fingers extended. Also, he refers to his symbol as the diamond cutter. He also has already registered a version of the gesture (shown below) as a trademark for various clothing items.

And, come to think of it, he sued Jay-Z over the symbol years ago. Although there isn’t much information available, it appears the case settled out of court with Jay-Z making a payment of an undisclosed amount (to keep it fair and balanced, there is a wrestling source and a hip hop source).

As of yet, no word on whether Diamond Dallas Page will take action against Jay-Z’s trademark application. Perhaps the settlement between the parties prevents him from doing so. But if so, then why did Jay-Z wait for nearly a decade to file his own trademark application? And although the Diamond Cutter was registered as a trademark, should either celebrity own enforceable rights in a hand gesture? Does it really signify source? Or does it remind us of something in a non-trademark manner, like trash compactors remind me of Star Wars or triangles remind me of the White Stripes?

And I would be remiss to not mention the elephant in the room: the conspiracy theory that Jay-Z along with many other musicians, politicians, and others are part of a secret society of the illuminati, freemasons, or (more recently) Taco Bell. Fingers crossed the Trademark Office utilizes her power to issue a Request for Information to demand that Jay-Z answer once and for all whether he is, in fact, a member of the Illuminati.

Trademark disputes involving breweries are nothing new, with breweries battling each other, wineries, and even cities over trademarks. We can now add estates of dead celebrities to the mix, as the Estate of Elvis Presley continues its battle against UK-based BrewDog over its ELVIS JUICE I.P.A.

The Elvis Estate first attempted to resolve the dispute through a cease and desist letter. In response, BrewDog’s owners, James Watt and Martin Dickie, changed their first names to “Elvis.”

And before you ask, yes, the above picture is just a marketing version of the official name change document. Although the battle has been waged for decades with the U.K. Employment Agency, “Beer Pirate” is not yet an officially recognized title. For the potential Elvis fans with the proclivity toward belief in aliens and other conspiracies, the official documents are also available here.

When BrewDog failed to heed the Estate’s demand of “Don’t,” the Estate brought an action against BrewDog at the U.K. Intellectual Property Office. Apparently the UKIPO was unmoved by the Elvis Brothers’ claims and, in July of 2017, the Estate prevailed.  But before Elvis could leave the building, BrewDog appealed. Apparently the appellate body had a few more suspicious minds. Just last week, the appellate body reversed the prior decision, concluding:

On balance I do not think that the hearing officer was entitled to take judicial notice that beer consumers who see the word Elvis will always think of Elvis Presley. The two marks are too different for there to be direct confusion. Even with imperfect recollection the average consumer will not mistake Brewdog Elvis Juice for Elvis. Put simply, the common element of Elvis is not enough on its own to make consumers think there is a link between the mark Elvis and Brewdog Elvis Juice.

As the quote suggests, the UKIPO’s decision was based specifically on a trademark that includes the brewery’s house brand BREWDOG. This may mean some extra steps for the brewery to ensure that BREWDOG always appears in close proximity to the ELVIS JUICE trademark, but the steps may be worth it to protect BrewDog’s growing investment in the name. BrewDog recently expanded operations, opening a satellite brewery in the United States near Columbus, Ohio. On top of that, BrewDog even won a bronze medal in its first appearance at the Great American Beer Festival last year.

Although the Elvis Estate may be licking its wounds somewhere in the heartbreak hotel, the war isn’t over yet. As you might expect, the UKIPO’s office has no authority here in the U.S. In fact, BrewDog has a pending application for the mark BREWDOG ELVIS JUICE that was approved for registration by the U.S. Trademark Office. On December 27, the company that manages the intellectual property on behalf of the Elvis Estate filed a Request for Extension of Time to Oppose the application. Will the recent loss temper the Estate’s position? Or is it now or never for the Elvis Estate to make a stand? We might have a better idea after April 25, when the Estate’s first extension request runs out.

As of the date of publication, there is no word on whether Elvis Costello also objects to BrewDog’s beer.

Nearly four years ago, Friend of the Blog Derek Allen and I published an article on our Top 10 Fictional Lawyers of all time. Part 1 and Part 2 are etched in the tomes of Duets Blog for your perusal and criticism. It was difficult to decide on the top ten, but we felt like we covered our bases pretty well with a long list of “honorable mentions.” Yet I recently realized there was a glaring omission from our list, Mr. Oliver Babish from the television series The West Wing, played by the actor Oliver Platt. I knew it was necessary to amend the list as soon as possible (i.e., the next time I was scheduled to post) to correct this injustice, and pass along some nuggets of legal advice that Mr. Babish provided to us all.

With this year’s increased attention to political issues of all kinds, I continued to find myself remembering scenes from the show. When my wife mentioned she had recently finished a new series, and I realized she had not seen The West Wing, the choice was obvious. So now we are knee deep in Season 3, when Mr. Babish arrives. I’ll try to avoid any significant spoilers, but Mr. Babish’s arrival coincides with a major scandal involving all of the main characters of the show, from the President and the First Lady too the assistants, deputies, and advisors. Mr. Babish interviews each of them, one by one, to assist in determining whether any law has been broken, fighting most of them along the way. While each character is initially frustrated and annoyed with Mr. Babish’s questions, he quickly makes clear why his questions are so important. While the substance of the inquiries likely has no direct impact on our lives, I’d like to provide three pearls of wisdom that both lawyers and non-lawyers would do well to remember.

First, gather all the facts before you form an opinion. After speaking with the President for (presumably) a half hour or more, he leaves for another meeting. The Chief of Staff asks, “Well, what do you think?” Babish’s answer? “I am nowhere close to being able to answer that.” Don’t give your clients, fellow attorneys, or others advice based on incomplete advice. When it can’t be avoided, stick to the law school standby “it depends.”

The second pearl involves the White House Press Secretary, C.J. Cregg. In the midst of asking substantive questions, the following exchange occurs:

Oliver Babish:  Do you know what time it is?
C.J. Cregg:  It’s five past noon.
Oliver Babish:  I’d like you to get out of the habit of doing that.
C.J. Cregg:  Doing what?
Oliver Babish:  Answering more than was asked.
Oliver Babish:  Do you know what time it is?
C.J. Cregg: Yes.

 

The point is that C.J. will likely be subpoenaed to testify and be deposed. While limiting the answers is part of the goal, this advice has the added benefit of conditioning a person to focus on the question and think through the answer before speaking. This is great advice not just for those being deposed, but all of us when we’re engaged in important conversations, legal or otherwise.

Finally, the third pearl is that words matter apart from their substance. While questioning the First Lady, Babish is focused on the First Lady’s signing a form on behalf of her then 17 year old daughter (Warning: Possible Spoilers ahead). The First Lady states she doesn’t remember if she read it or not, she just signed it. It was one of hundreds or thousands of forms signed for her multiple children over many years. The reason this matters, is because the President (Spoiler Alert) was diagnosed with MS during the campaign, but never disclosed it. If the First Lady signed the form, then she may have falsely stated that there was no family history of medical problems.  When she claims she didn’t read it, Babish asks her whether when she was a practicing doctor whether she had a habit of signing medical forms without reading them. When the First Lady explains that the illness is not genetic and therefore it doesn’t matter for the form’s purpose of determining whether her daughter might have the illness, Babish asks why she’s changing her story? Did she sign it because she didn’t read it, or did she sign it because it didn’t matter?  It’s important for lawyers, our clients, and most people generally to remember Babish’s point: the way you say something is just as important as the substance of what you’re saying.

These are just some of the helpful nuggets for lawyers and others found in Mr. Platt’s Oliver Babish character. The guest performance netted him a nomination for an Emmy for best guest performance in a drama. Where would a place him in the Top 10 Fictional Lawyers of All Time? I’d probably have to do some reshuffling, so let’s peg him at #11 for now and perhaps we’ll revisit on the fifth year anniversary.

Attorneys in general, and trademark attorneys in particular, have a reputation for heavy handedness. The traditional weapon of choice for these legal pugilist has been, and continues to be, ye olde cease and desist letter. A long, unnecessarily wordy letter sprinkled with “without authorization”‘s and “reserves all rights and remedies”‘s and other thinly veiled and not-so-thinly veiled threats of legal action. There are times when the traditional cease and desist letter is acceptable – Nay! – all but necessitated! But attorneys with an eye on their client’s business goals understand that there is no such thing as a one-size-fits-all enforcement communication. Indeed, the trademark tomes are jammed to the brim with tales of trademark owners whose actions have earned them the alleged label of a “trademark bully.”

But Bud Light’s recent dispute with a local Minneapolis brewery was just the opposite. Instead of creating a public relations nightmare, fanning the flames of “Big Beer” versus “Craft Beer,” Bud Light turned a trademark dispute into an advertising boon! The issue involved Bud Light’s newly adopted advertising tagline DILLY DILLY, which appeared in a Bud Light commercial earlier this year. Modist brewery chose to name its new Mosaic Double IPA “DILLY DILLY.” At the moment, the beer is still posted on the Modist Brewing website. The companies reached a friendly agreement and Bud Light even offered Modist two free tickets to the Super Bowl (which, coincidentally, will be in Minneapolis). And then, like a foam cherry on top, Bud Light hired an actor to visit the Modist taproom and “deliver” a cease and desist message from a scroll in medieval tongue. Modist plans to exhaust its current supply and then, if the beer is brewed again, use a different name. Even if the beer comes back as a new name, Modist will still have Ye Olde Scroll, which Modist has hung in its taproom.

In this instance, everyone seems to win. Bud Light received favorable press coverage throughout the country on the issue and put all other breweries on notice of its claimed rights in DILLY DILLY tagline. Modist received some great free publicity, two months ahead of the biggest sports party in the United States. I have to assume there will be more than just a handful of beer drinkers coming for Super Bowl festivities, wanting to go to the Dilly Dilly brewery and get a picture with Ye Olde Scroll.

Scrolls won’t be the next big thing in trademark enforcement. However, this is another example of how creative legal approaches can not only resolve a problem more efficiently, but end up creating other benefits for your business or clients. And with the number of breweries and beers expanding at an exponential rate the last few years, the industry will need to continue to find creative solutions to these problems. It’s great to see even the big players in the industry recognize this need.

The City of Portland is known as a hub for craft beer, and its local government couldn’t be prouder. The Travel Portland website proudly proclaims that Portland is “home to more breweries than any other city on earth.” Yet the city’s relationship with the local craft beer scene is not so bubbly at the moment, as trademark dispute between the city and local Old Town Brewing has gone public.

The dispute revolves around Old Town Brewing’s logo and a large lighted sign owned by the city, both shown below.

 

This isn’t the first time the city hasn’t gotten into a dispute with a brewery over the sign. The city previously objected to Pabst’s use of a logo derived from the sign back in 2015.  Our 2015 article contains a good back story as to the city’s purchase of the sign as well as the city’s claimed trademark rights in the sign (and for our regular readers, the investigation into Portland’s unicorn burial ground is ongoing). However, for our purposes, a TLDR history will suffice. The sign is known as the “White Stag” sign and was built in 1940. The text has changed numerous times along with the ownership. The City of Portland purchased the sign in 2010 and has since begun licensing reproductions of the sign to third-parties.

Most recently, Portland sought to license production of the sign to AB InBev, the parent company to Budweiser and a whole host of other big and small names in the alcohol business. Jeff Alworth at the Beervana Blog has a great write up regarding the dispute that is worth a read. As you might expect, the small, local craft brewery is not pleased with Portland’s attempt to permit a direct competitor to use a similar logo. The fact that the competitor is Budweiser certainly can’t help.

Luckily for Old Town, they recognized the benefits of obtaining a registration for their design logo at the U.S. Trademark Office. Even better, the registration is now more than 5 years old and can no longer be challenged on a number of grounds, like confusion with a senior user’s mark.

The City of Portland also recognized the importance of registrations and applied to register the image of the sign for a wide variety of goods and services, including alcoholic products. The Trademark Office has refused registration based on a likelihood of confusion with Old Town’s prior registration.

The situation is a twist on the more common David versus Goliath of Big Beer versus Craft Beer, and not simply because the City of Portland is involved. In fact, the city is claiming that David, aka, Old Town Brewing, is the bad guy. The City is arguing that “it is Old Town Brewing that is trying to prevent the City from using its own logo.”

The city isn’t entirely off base. It’s true that the City isn’t telling Old Town to stop using the logo. But the City’s argument makes a lot of assumptions that may not hold water (or other beverages, for that matter).

The city seems to assume that because the City bought the sign, they own the right to use the component images of that sign for any and all purposes. That’s wrong. For a lot of reasons. Owning a sign doesn’t create trademark rights, use does. And if Old Town began using a portion of that sign as a trademark before any other third-party, then Old Town is the senior user. Also, even if the City owns some trademark rights, the law is clear that a trademark does not provide a right in gross. Trademark rights are defined by the goods or services sold under the mark, with protection against goods and services that are sufficiently related to owner’s goods or services.

Also, the City’s white hat isn’t so white. I’m not even sure it’s a hat. Old Town isn’t the bad guy here. The brewery isn’t telling the City not to use the logo derived from the sign design.  I’m not a politician or a mayor, but I can’t think of any reason why a city needs to be able to use its logo to sell beer. If Minneapolis were doing this, I’d kindly ask that they fix the potholes or finish construction on the bridges over 35W first.

At the moment, it seems that public opinion seems to be in Old Town’s favor, at least based on the limited (and biased) sampling of Old Town’s Facebook Page.  From the legal standpoint, it seems that Old Town has an upper hand, but from all public statements it seems that Portland is committed to moving forward with its own applications and a license. But is a deal with Budweiser important enough to risk the bad press and the alienation of the craft beer industry? The City has until March 15 to appeal the Trademark Office’s last Office Action. By then, we’ll at least know whether Portland wants to continue the fight. In the meantime, I’ll be looking to see how far Old Town distributes its products. Their SHANGHAI’D IPA sounds delicious, not to mention, it has an excellent name.

 

Normally when we talk about stripes trademarks , we’re talking about iconic sportswear brand adidas. An avid litigant with respect to use of “three stripe” designs on footwear and clothing, adidas is a regular feature here at DuetsBlog, where we have discussed disputes with lululemon, Puma, and retail store Forever 21. But today we’re talking about a different three stripe brand, the blue-red-blue and green-red-green three stripe designs featured by luxury brand Gucci. Not everything is new though. Gucci’s foil in this dispute is no stranger to stripe-infringement claims, as our friend Forever 21 makes another appearance.

Over the past year, Gucci sent cease and desist letters to Forever 21 regarding the sale of clothing and accessories featuring a familiar striped pattern. Following an exchange of letters, Forever 21 struck first, filing a complaint requesting declaratory judgment that its sale of the products does not infringe Gucci’s rights, and requesting that the court cancel Gucci’s registrations on the grounds of lack of secondary meaning and/or genericness. In its answer, Gucci asserted claims of trademark infringement, trademark dilution, and unfair competition. Excerpts from Gucci’s answer displaying the clothing at issue are shown below (with additional examples here and here). 

 

In its answer, Gucci only addressed Forever 21’s non-infringement count. Prior to filing the answer, Gucci filed a Motion to Dismiss all the claims related to cancellation of Gucci’s registrations. On Monday November 6, the District Court issued an order granting the motion, providing Forever 21 with 10 days to file an amended complaint.  In the order, the court suggests that Forever 21 may have an uphill battle in pursuing these claims, stating

[T]he court is skeptical that plaintiff has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism.

So while I’d love to get into the substance of whether Forever 21 has a chance at cancelling these “three-stripe” registrations, we’ll have to see whether Forever 21 is able to craft an amended complaint to overcome the court’s concerns. In the interim, I’m left considering Gucci’s three stripe marks alongside adidas’ three stripe marks. In reviewing each parties’ registrations, an interesting detail emerges. Both parties own registrations for stripe designs associated with clothing, but that doesn’t mean both parties have the same type of registered rights.

For adidas, it registered its stripes as trade dress for its products. For example, Reg. No. 3,029,127 describes the registered mark as “three parallel stripes running along the sleeve of a shirt, t-shirt, sweatshirt, jacket or coat.” The drawing of the mark is shown below.

Clearly, adidas’ registrations is specifically for a stripe patterned applied to jackets.

Gucci’s registered rights? Not so much. Based on the registrations identified in Gucci’s answer and counterclaim, none of Gucci’s registrations cover trade dress. All of the registrations instead appear to be for an image of stripes. The descriptions for Gucci’s marks are all similar to Reg. No. 4,379,039, which describes the mark as “a stripe containing three distinct bands of color with a red band in the middle of two green band.” The drawing for the registrations is simply a square with three stripes.

Does Gucci’s failure to register its mark as trade dress affect Forever 21’s ability to cancel the registrations for these design logos? Normally use as a trademark is on a tag, label, on the pocket, or emblazoned across the shirt. If Gucci’s actual use of the registered mark is limited solely to the trade dress along the bottom or cuffs of jackets, does it open up any potential claims for cancellation based on non-use? Does Gucci’s failure to register its mark as trade dress affect Gucci’s ability to assert that Forever 21 is infringing a federally registered trademark? I guess we’ll find out whether Forever 21 wades into these waters when (or if) it files its amended complaint. Stay tuned.

 

Moving along from Steve’s post on our alma mater of the University of Iowa, a former Rutgers football player has a more negative view of his former school. A few years ago, the Rutgers football program started allowing position groups to choose a nickname. The wide receivers are known as “Flight Crew,” the defensive linemen as “Rude Boyz,” and the offensive line was formerly known as “Soul Train.” Apparently the steam ran out though and the group chose a new name this year: “Rare Breed.” The players and the coaches use the name in social media like Facebook and Twitter. While Wild Turkey appears unconcerned, the new moniker has ruffled the feathers of John Ciurciu, a former Rutgers fullback who has now filed a trademark infringement complaint in the New Jersey U.S. District Court.

Ciurciu founded Rare Breed after he moved on from his playing career. According to the complaint, the company sells a variety of clothing and football gear, becoming popular among high school, college and professional football players. The complaint counts Adrian Peterson and Brian Cushing among NFL players that wear the brand. The company also designs custom apparel for student athletes at Coastal Carolina College. The company owns registered trademarks for the RARE BREED mark in standard character form as well as part of a design mark. The registered design mark is shown below on the left, and the image displayed on Rutgers social media on the right.

The complaint alleges that the use of the image above as well as the use of the hashtags in social media are all instances of trademark infringement and unfair competition. Rare Breed had earlier sent cease and desist letters to Rutgers. The university’s attorney responded by stating that the coaches had been directed to remove the images and hashtags from their social media. While some of the images were removed, some remained. Rare Breed sent a second letter and again the university’s attorney stated that the coach had been directed to remove the use.

It is worth noting that Rutgers has not sold any goods with the image above. However it seems that Rare Breed is concerned that players, especially recruits, might mistakenly believe that the team is sponsored by Rare Breed. The concern seems plausible, even if Rare Breed doesn’t have the same widespread recognition as bigger companies like Adidas or Nike. While we have to wait and see whether Rare Breed can prevail on its claims, one thing is certain. In the age of recruiting via social media, counsel for colleges and universities should discuss intellectual property and other social media issues with their football programs. The Rare Breed – Rutgers dispute is an excellent Exhibit #1. Without proper guidance, lawsuits like this will be anything but rare.