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Category Archives: Contracts

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Patent IPRs and Allergan’s Sovereign Immunity Defense

Posted in Agreements, Contracts, Law Suits, Mixed Bag of Nuts, Patents

In an age of rising healthcare costs, pharmaceutical companies can be an easy target in calls for patent reform.  Patent protection helps drug manufacturers recoup their investment in developing the new drug,.  It also prevents generic manufacturers from releasing the same drug formulation at lower cost.  The Hatch-Waxman Act provides a pathway for generic manufacturers… Continue Reading

“Brother Thelonious” Monk’s Likeness Protectable Decades After Death

Posted in Advertising, Articles, Branding, Contracts, Food, Infringement, Law Suits, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks

Earlier this month, a California federal judge kept alive a suit brought by the estate of famous jazz musician Thelonious Monk against North Coast Brewing Co. for trademark infringement and infringement of the right of publicity. The dispute centers around North Coast’s popular “Brother Thelonious” Beligan-style abbey ale (beer seems to be on the mind here… Continue Reading

Lawsuit Verdict Makes Grumpy Cat Smile

Posted in Contracts, Copyrights, Dilution, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Trademarks

For anyone unfamiliar with internet cat personalities, Grumpy Cat is a well-known feline whose dwarfism and underbite culminate in a perpetual—and adorable—sour expression.  Grumpy Cat’s real name is Tardar Sauce.  In 2012, when Tardar Sauce was only a few months old, she became an internet sensation after a photo of her endearing scowl was posted… Continue Reading

When Names become Brand Names

Posted in Advertising, Branding, Contracts, Fair Use, Fashion, Goodwill, Infringement, Law Suits, Marketing, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks

And whatever the man called a living creature, that was its name. Genesis 2:19 Naming things is a fundamentally personal, human act that sometimes – in a profession all about brand names – we take for granted. It’s easy to forget when we are clearing, registering, and protecting names, that at a basic level we… 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

All for Saving the Original Minnesota State Fair Curds, Say Aye, Better Yet . . . #s and @s

Posted in Advertising, Agreements, Articles, Branding, Contracts, Food, Marketing, Social Media, Trademarks

When Aaron Keller of Capsule deeply cares about an issue (in a deeply fried kind of way), it’s hard not to stand up, pay attention, and follow instructions, especially when his picture of golden little nuggetized cheese curds are involved and the Minnesota State Fair is at stake. As you might have discerned over the… Continue Reading

What Famous Quarterback Named Elisha Allegedly Provided Fake Helmets To Sports Dealers?

Posted in Articles, Contracts, Counterfeits, Famous Marks, Law Suits

Elisha is the two time Super Bowl MVP New York Giants quarterback Eli Manning. Collecting equipment used, or uniforms worn, during an NFL game is big business. Young and old alike want these items to feel close to their favorite team or player. In a 99 page Amended Complaint, plaintiffs (including,  sports memorabilia collectors/marketers and… Continue Reading

Wawa Not Gaga Over Dawa?

Posted in Almost Advice, Branding, Contracts, Dilution, Fair Use, Famous Marks, Food, Genericide, Idea Protection, Infringement, Law Suits, Look-For Ads, Marketing, Technology, Television, Trademark Bullying, Trademarks

Earlier this month, Wawa, an East Coast convenience store chain, demonstrated it is not gaga over a single location food mart (copy of complaint linked here), called Dawa: As Dawa has vowed to defend its name, will this case come down to a battle over the meanings of the marks? Do consumers really know and… Continue Reading

NASCAR Brand Gasoline at a Pump Near You?

Posted in Advertising, Articles, Branding, Contracts, Marketing, Non-Traditional Trademarks, Sight, Smell, Taste, Trademarks, USPTO

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend: So, what do folks think, does this photograph of a… Continue Reading

Santa Goes to the Trademark Office

Posted in Advertising, Branding, Contracts, Fashion, Marketing, Social Media, Trademarks

This is Fashion Santa. Or at least it was until recently. Fashion Santa is a role that originated with model, Paul Mason and Toronto’s Yorkdale Mall in 2014. He promoted the mall and a successful charitable giving campaign. Mason continued as Fashion Santa during the 2015 holiday season, and became somewhat of a social media sensation.  But… Continue Reading

Worthwhile Uncomfortable Conversations

Posted in Agreements, Articles, Branding, Contracts, Copyrights, Law Suits, Marketing, Trademarks

Seth Godin wrote this past weekend about joint ownership of creations: “Before you create intellectual property (a book, a song, a patent, the words on a website, a design) with someone else, agree in writing about who owns what, who can exploit it, what happens to the earnings, who can control its destiny.” We couldn’t… Continue Reading

Pokemon GO or Pokemon No?

Posted in Contracts, Technology

Unless you’ve been living under a Geodude this past month, you’ve no doubt been exposed (either willingly or unwillingly) to some part of the current social media/mobile gaming sensation, Pokemon GO.  Niantic’s new “catch ’em all” treasure hunting mobile game is lighting up Charmander tails across the globe with approximately 75 million downloads and roughly 25 million… Continue Reading

ELLE Fails to Un-ring Bell, DJ Action Sticks

Posted in Agreements, Articles, Branding, Civil Procedure, Contracts, Dilution, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB

Question for the day, how common is the given name Elle? I’m really not sure, I don’t believe I’ve ever personally known anyone with that name, and Mongabay doesn’t even include Elle in its listing of girl’s first names, but it does rank Ella (210), Elena (412), Ellie (1198), Elly (2802), and Ellamae (3514) among… Continue Reading

Energizer Bunny to Drain Duracell’s Battery?

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks

When I first heard last week about a trademark infringement lawsuit between Energizer and Duracell over pink bunny icons, my first thought was, Duracell is The Copper Top battery brand, what would motivate Duracell and how could Duracell possibly believe it had the legal right to use a pink bunny character in advertising and on… Continue Reading

Apple and The World’s Most Public Privacy Policy

Posted in Advertising, Branding, Contracts, Marketing, Search Engines, Technology, Trademarks

-Wes Anderson, Attorney It bears mentioning when one of the world’s most famous brands releases one of the world’s most prominent and readable privacy policies. That’s just what Apple did this week, and the message to other brands is clear – privacy policies can be a massive marketing opportunity, not just an obscure legal nuisance…. Continue Reading

Yosemite: The Park, the Name, and the Lawsuit

Posted in Contracts, Fair Use, Goodwill, Infringement, Loss of Rights, Trademarks

Tunnel View – Photo by David Iliff. License: CC-BY-SA 3.0 As the saying goes, possession is nine-tenths of the law. That other tenth can be pretty complicated, depending on what you’re “possessing.”   When you’re arguing with an older brother over who “possesses” the remote control, it’s an open and shut case. But what about “possession”… Continue Reading

Dethroning a Right to Register a Trademark?

Posted in Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Last month, you will recall we wrote about the important difference between the right to register a trademark and the right to use a trademark, here and here. Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights — defeating… Continue Reading

Protecting the World’s Most Valuable Non-Brand

Posted in Branding, Contracts, Guest Bloggers, Mixed Bag of Nuts, Search Engines, Technology

– James Mahoney, Razor’s Edge Communications “Brand” and “branding” are the current darlings of the fashionista class. They’re rapidly driving those terms into the realm of cliché by busily associating them with practically everything you can think of. But in the midst of branding’s 15 minutes of fame, a potentially crippling challenge faces the non-brand… Continue Reading

Fair Use of GM’s Corvette Stingray?

Posted in Advertising, Articles, Branding, Contracts, Fair Use, Famous Marks, Genericide, Goodwill, Infringement, Loss of Rights, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Trademarks, USPTO

While filling up my gas tank at our local Costco last week I coudn’t resist capturing this photo of pump signage to ask our dear readers a few pointed questions: Is there any doubt that the automobile depicted in the Costco advertisement is a Corvette Stingray? If so, HiConsumption should resolve any lingering questions. How did… Continue Reading

Victoria’s Secret Defends Dream Angels?

Posted in Articles, Contracts, Law Suits, Loss of Rights, Trademarks, TTAB, USPTO

How important is the DREAM ANGELS brand to Victoria’s Secret? Victoria’s Secret has a robust portfolio of federally-registered trademarks to protect the DREAM ANGELS sub-brand for undergarments and a line of personal care products and fragrances. Years ago, apparently Victoria’s Secret entered into a consent-to-use agreement with Airs International, a company that had rights in ANGEL DREAMS… Continue Reading

Tilt-a-Whirl Trademark, Not a Service Mark?

Posted in Articles, Branding, Contracts, Trademarks, USPTO

It is State Fair time again in Minnesota, so let’s examine the Tilt-a-Whirl brand. The brand originated in Minnesota almost 90 years ago, after the amusement park ride was invented by Herbert Sellner of Faribault, Minnesota. Since 2011 the Tilt-a-Whirl brand and trademark has been owned by J&S Rides, d/b/a Larson International out of Plainview, Texas. The first… Continue Reading

Seagate Technology’s $630 Million Trade Secret Win Reinstated

Posted in Agreements, Contracts, Idea Protection, Law Suits, Mixed Bag of Nuts, Social Media

– Anjali Shankar, Attorney – Protection of a business’s trade secrets may prove more difficult with the rise of social media and the recent debates surrounding the use of non-compete agreements. Social media, while a great tool for expanding networks, carries certain risks for businesses, such as ownership of social media accounts (including any “followers”… Continue Reading

Airing Your Kinky Trademark Laundry: Distinguishing Between Consent Agreements and Concurrent Use Agreements

Posted in Advertising, Agreements, Articles, Branding, Contracts, Marketing, Trademarks, USPTO

Last week I captured a few eye-popping photographs of a delivery truck parked in downtown Minneapolis promoting Kinky Liqueur, “a delightfully fruity fusion of super premium vodka“: And my hunch — that scratching the surface of this interesting brandname would reveal a worthwhile trademark story — actually paid off. As it turns out, Kinky Liqueur didn’t have a straight shot at federal… Continue Reading