Let’s all hope that the Supplemental Trademark Register is not on the death watch.

It appears though to be on life support, at times, and especially with the USPTO’s heightened focus on “merely informational” matter, including laudatory messages.

This is a common basis for registration refusal nowadays: “Merely informational matter fails to function as a mark to indicate source and thus is not registrable.”

Don’t all valid trademarks communicate information? Exactly. How does the USPTO know when at least one of the bits of that information is not about the source?

It cannot be fatal to validity that a mark communicates more information than simply source, see a suggestive mark or a descriptive one that has become distinctive.

Although not a laudatory example, the first precedential decision from the TTAB in 2019 denied Wal-Mart’s application on the Principal Register, for INVESTING IN AMERICAN JOBS, a slogan for retail store services, calling it “merely informational,incapable as a mark:


Wal-Mart recognized that its claimed mark communicated descriptive information, yet it argued that its evidence was sufficient to show acquired distinctiveness.

What’s striking about the Wal-Mart decision is that evidence of descriptiveness was used to support the fatal conclusion that the slogan can never function as a mark.

It relied on a series of prior cases holding certain phrases incapable of functioning as marks (THINK GREEN, GUARANTEED STARTING, DRIVE SAFELY, and others).

It used evidence typically supportive of a descriptiveness refusal to say that Wal-Mart’s slogan would not be perceived as a mark to indicate the source of services.

It also pointed to several examples like “ONCE A MARINE, ALWAYS A MARINE,” “PROUDLY MADE IN THE USA,” and “THE BEST BEER IN AMERICA,” as merely informational or laudatory slogans, incapable of serving a trademark purpose.

Laudatory terms long have been considered merely descriptive (not generic) for the provided goods or services, so they’re ideally suited for the Supplemental Register.

The Supplemental Register exists as a holding cell for merely descriptive phrases not yet distinctive, but capable of becoming distinctive, maybe at some future time.

Incapable matter — subject matter that cannot serve as a trademark — like generic terms and phrases are impossible and hopeless of ever functioning as a valid mark.

TMEP 1202.04(a) actually blends laudatory and informational: “Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark.”

So, now we’re going to differentiate between garden variety laudatory claims that are descriptive, and “highly laudatory claims of superiority” — the latter being incapable, and the former holding out some hope of having at least a chance?

This unfortunate approach is reminiscent of the widely criticized approach of the “so highly descriptive” category as to be incapable of serving a trademark purpose.

All the way back in 1989, I went on the record, questioning the “so highly descriptive as to be incapable” line of cases in “Putting the Cart Before the Horse in Assessing Trademark Validity — Toward Redefining the Inherently Generic Term,” published in the University of Iowa College of Law’s Journal of Corporation Law.

The problem with the “so highly descriptive” category is it treats descriptive matter as incapable and generic without the rigors of an actual genericness determination.

The poster (or coaster) child for the eerily similar approach is the Federal Circuit’s 1999 decision rejecting Sam Adam’s THE BEST BEER IN AMERICA slogan as incapable, blurring the distinction between descriptive and generic designations:

In that decision, Sam Adams had “not met its burden to show” that the slogan THE BEST BEER IN AMERICA for beer, had acquired distinctiveness/secondary meaning.

Had the TTAB and Federal Circuit stopped there, fair enough, doing so would have allowed Sam Adams to seek a Supplemental Registration and try again later (with more evidence of acquired distinctiveness) for a coveted Principal Registration.

But instead, both the TTAB below and the Federal Circuit on review, went on to editorialize that no amount of evidence could ever turn THE BEST BEER IN AMERICA into a trademark, not because it’s generic, but because it’s incapable.

That’s what courts routinely said about single color marks, they’re impossible and incapable of serving a trademark purpose, until Owens Corning came along with the Pink Panther, to reverse decades of thinking against single color trademarks.

And, if “highly laudatory claims of superiority” are actually incapable of a trademark purpose and outside the possible definition of a trademark, then how can Principal Registration of AMERICA’S BEST BEER DRINKING CITY be explained, or these?

Let’s be honest, since the stated test is really to discern how the claimed mark would be perceived by the relevant public, too easily dismissing evidence going to that question, doesn’t help and starts to feel more like an impossible shell game.

I’d rather see the evidence of descriptiveness (which provides information) used to support a descriptiveness refusal, allow a Supplemental Registration, then the USPTO can wage the real evidentiary battle with claims of acquired distinctiveness.

Last week was an incredible opportunity to share some of these thoughts in NYC with those attending Practicing Law Institute’s Advanced Trademark Law 2019 seminar, thanks to PLI, Kenneth Min, and co-chairs Kieran Doyle and Dean Eyler!

In the end, let’s all hope that the USPTO reins in its hyper-focus on expanding the “merely informational” and outcome-determinative category of incapable subject matter, so we don’t have to kiss the Supplemental Register goodbye.

Additional hat tip to Sam Adam’s and its vintage painter’s cap:

 

 

Can a gang become a brand? This is a question asked in the new Netflix show, Trigger Warning,  produced by and starring Michael Render, AKA Killer Mike, one half of the Grammy-nominated rap group Run the Jewels.

Killer Mike of Run the Jewels performing at Pitchfork Chicago on July 19, 2015 (Photo Credit: Me)

In episode three, “White Gang Privilege,” Mike explores America’s love of the Outlaw, real and imaginary, and typically white: Al Capone, Tony Soprano, Tony Montana, Michael Corleone, Johnny Cash, Gordon Gecko, and Hells Angels, to name a few.  The episode begins with Mike asking: How is it possible for Hells Angels, a known biker gang, to sell t-shirts on Amazon? And what’s stopping black gangs from doing the same thing?

As Mike drives to a trap house in Atlanta to find out, he comments that “even though black gangs … are as well known as the Hells Angels, they haven’t been able to cash in and trademark their brands in the same way.”  So he meets with Crips gang members Yayo, Murdo, AC, and Newny to discuss legitimate business ideas, like zipper and button manufacturing, and, eventually, the gang lands on a new brand of soda: Crip-a-Cola.

Crip-a-Cola packaging as shown on The Late Show with Stephen Colbert

Spoiler alert: The episode proceeds to follow the gang through all of the typical startup business challenges: getting a loan (or at least trying), creating a minimum viable product (needs more sugar), working with a graphic designer (his first time working with a gang), consulting a beverage industry expert (impressed by the polished product), focus-group testing (everyone is afraid or skeptical at first, especially Mario!), advertising (a music video like commercial), and making that first sale (at a local farmer’s market), all while handling a new market rival (Blood Pop soda produced by the Crips’ rival gang, the Bloods).

Considering everything that went into the episode, and the seriousness of the effort, I was left scratching my head over the obvious, and perhaps true-to-life, startup oversight:  where’s the trademark lawyer?  I spotted at least four issues where a good trademark lawyer could have really helped.

Trademark Notice

Do you see the little circle-R next to the word Crip-a-Cola on the product packaging?  That means “registered trademark” and indicates that Crip-a-Cola is federally registered in the United States.  The only problem is that it’s not registered.  In fact, there isn’t even an application pending!  We’ve blogged before about misuse of the trademark registration symbol here (fraud?) and here (false advertising?).  A good trademark lawyer would have corrected that to a “TM” and filed an intent-to-use application before going live on Netflix (or even to that first farmer’s market).

Clearance

Another possible problem a trademark lawyer could have helped with: Clearance.  Can the Crips actually use “Crip-a-Cola?” despite at a minimum, perhaps calling to mind Coca-Cola?  While “calling to mind” is not infringement, does Crip-a-Cola step to closely to Coca-Cola, since Coca-Cola is a famous brand, and able to wield the full power of anti-dilution law?  What has Coca-Cola done with similar attempts?  A good trademark lawyer would investigate and find out: of course, Coca-Cola will protect its corner, just take a look at the mark CropaCola, which popped up in 2014, and which Coca-Cola quickly opposed, on likelihood of confusion and dilution grounds, asserting the following:

[Coca-Cola] is the world’s largest beverage company, serving more than 1.6 billion consumers each day, in more than 200 countries around the world.  [The] COCA-COLA brand is the cornerstone of its portfolio, which presently includes fifteen billion dollar brands.  COCA-COLA and DIET COKE are the top two soft drink brands in the world. . . .[T]he ‘CROPA’ term in [CROPACOLA] is confusingly similar in sight and sound to the ‘COCA’ term in [COCA-COLA], containing the same number of syllables and a similar phonetic impression, which is compounded by the addition of the ‘COLA’ suffix, in and identical manner as the use of [Coca-Cola’s] COLA suffix.”

Seems plausible that Crip-a-Cola could expect the same treatment from the largest beverage company on Earth.  This is where having a trademark lawyer in your gang would really help.  For one, to identify issues like these (never mind taste infringement) and identify strategies for going forward, but more importantly, to look for defensible legal positions and creative solutions, for example, perhaps seizing on this line in Coke’s opposition: “Furthermore, the ‘CROPA’ term has no independent meaning, further failing to distinguish it from [Coca-Cola].”  (emphasis added).  Here, Crip-a-Cola may have an advantage: unlike “Cropa”, the term “CRIP,” does have several independent, distinct meanings (perhaps the most helpful is the possible backronym: “Common Revolution In Progress.”) and is likely famous, or infamous, in its own right.

Ownership

What else could a good trademark attorney help with?  How about determining ownership?  Absent a legal entity to own the CRIP-A-COLA mark and the related business, Yayo, Murdo, AC, Newny, and Killer Mike would own Crip-a-Cola jointly as individuals in a general partnership, the worst form of legal entity, due to the shared, personal, and unlimited legal liability each partner shoulders. Better to form an LLC at least, not only to more cleanly own the trademark, but also to remove personal liability, formalize ownership, management, and tax decisions, and adopt buy-sell provisions.

Furthermore, what about competing claims of ownership? Is there an official Crips entity that could claim false association?  Maybe – one trademark application filed July 5, 2018 for the mark CRIPS for “association services” and “Organizing chapters of a Community Revolution In Progress club and promoting the interests of the members thereof” suggests that an entity called Crips, LLC, may have been formed to claim leadership of the Crips.  This would be something any good trademark attorney would investigate, and develop a strategy for dealing with.

Legal Notices

Finally, the last issue in the episode I spotted, where good trademark lawyer would lend a hand, arises from the fine print claim made at the end of the Crip-a-Cola commercial (NSFW):

The fine print states that “unauthorized use of the Crip-a-Cola font is prohibited by law.”  The problem? Fonts, or typefaces, are only indirectly protected by law, and not in gross.  Sure, if your typeface is displayed as a result of computer software code operating on a device, then copyright protects the computer code necessary to display the typeface as a font. This is the main reason why certain fonts are licensed. But if the typeface is “copied” or used without authorization through other means, there is no recourse under copyright law.  Instead, one would have to turn to trademark protection of the stylized mark, which, absent a federal registration would be limited geographically by common law rights based on use, perhaps as narrowly as Atlanta or the State of Georgia.  And except for the famous typefaces of famous brands (for example the Coca-Cola script), such rights would be further limited by the goods in connection with which the typeface is used, to prohibit use on only identical or related goods (for example, complimentary goods, or goods within the likely “zone of expansion”), in this case, rival beverage or food products. So the claim that the “unauthorized use of the Crip-a-Cola font is prohibited by law,” while not entirely untrue, is mostly inaccurate.

Outlaws are known for having their criminal defense attorneys on speed dial.  Maybe it’s time to add the number for a good trademark attorney.

Better Call Saul? Only if he practices trademark law!

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Who comes to mind when I list the following character traits: lives in a dystopian metropolis, has a deceased parent, fights criminals, rides a motorcycle, has seemingly-superhero strength, is fearless, has dark hair, and–oh, by the way–his name is “Wayne.” More than that, you learn all these facts about Wayne by watching a trailer for a series about Wayne on YouTube, which informs you throughout that Wayne is a character “from the guys who wrote Deadpool,” a fictional superhero. Take a look for yourself:

It should probably come as no surprise that many people watching the trailer–myself included–thought this Wayne might be “Bruce Wayne,” the well-known secret identity of Batman. The comments to the official trailer demonstrate as much. Consider, for example, the “top comment” for the trailer:

The Bruce Wayne most consumers know is the wealthy orphan owner of Wayne Enterprises by day, crime-fighting superhero by night. YouTube’s Wayne shares many of the same traits (except, perhaps, the wealth), and one could certainly believe that the Wayne series might be an origin story for one of the most popular superheros of all time. Of course, by the end of the trailer, you get the impression that the Wayne you’re watching probably isn’t (though there’s no disclaimer):

In total there are over 7,200 comments for the trailer at the time of writing this post. Since the official trailer, YouTube has released additional teaser trailers for the series, each making it clearer that Wayne probably isn’t Batman. Yet, viewers still aren’t quite sure:

What I find interesting about these comments is that they are a readily-available (though perhaps unreliable) data set for proving, or disproving, the existence of customer confusion. Assume that DC Comics, the owner of the Batman mark and Bruce Wayne character (which does not appear to have been registered, but to which DC Comics could have common law rights and copyright protection) could sue YouTube for infringement or dilution. Arguably, the comments on the Wayne trailers show that consumers are drawing a connection between DC Comics and the Wayne series given the name, mood of the series, and common character traits with Batman. In this, YouTube may be free riding on Batman’s popularity. Depending on just how many comments reference Batman, the comments themselves could serve as strong quantitative data of confusion–akin to the kind of survey data usually used to prove that element of a trademark claim.

On the other hand, many of the comments for the series do not reference Batman or Bruce Wayne. Do non-references indicate a lack of confusion, or perhaps a confusion that is dispelled quickly after watching the trailers? This relates to the doctrine of “initial interest confusion,” which is temporary confusion dispelled before a sale or some other commercial harm, but still may be actionable because the party creating the confusion free rides on another’s mark to gain attention. Since widespread access to the Internet, initial interest confusion cases have increased tenfold, but courts disagree about the vitality of the rule. Regardless, that confusion appears to persist in this situation–as demonstrated by the comments for each new trailer–shows that the confusion here may be of the continuing and uncured variety on which many trademark claims are based.

Wayne fully releases on YouTube in January 2019. There do not appear to be any lawsuits pending at the moment. And there does not appear to be a “Wayne” trademark registration for the series. But if YouTube (or the series’ creators) file for one, DC Comics could oppose the registration–and has done so for similar marks in the past. We’ll keep you updated with any new developments! In the meantime, let us know what you think in a comment below.

Not all ambush marketing is created equal. Some can cross the line and create a likelihood of confusion as to sponsorship. Some falsely advertises. But, some is totally fair use and lawful.

This current promotional banner by La-Z-Boy is capitalizing on the excitement surrounding the upcoming Super Bowl weekend festivities, but without reasonable risk of heat from the NFL:

The same can be said for this Lunds & Byerlys in-store signage, with the local grocery chain having tiptoed around the issue entirely by using the Big Game code word instead:

Love the fine-print shout out to local darling, Surly’s Cynic Pale Ale, and the additional shout out to Surly’s “Over Rated” — and clever jab at West Coast IPAs — thankfully no risk of offending all the visiting fans from the East Coast for Super Bowl LII.

By the way, since the Home Team, won’t be playing, merely hosting, which team do you favor from the East Coast, the Philadelphia Eagles or the New England Patriots?

We continue to have Super Bowl LII on our minds here in the Twin Cities. It’s hard to avoid thinking about the upcoming “Big Game” with ads like these blanketing our skyway maze:

Turns out, everyone wants to have a little piece of the action in this upcoming event, even without the formality and cost associated with sponsorship, some call it ambush marketing:

Ambush marketing is not necessarily unlawful. It’s tricky, but I’m guessing the above ad may have cleared a legal review. No obvious conflicts with federally-registered rights, it appears.

Having said that, does this little guy change your view on things? Look familiar? It appears to be the same Wilson NFL Pee Wee Touchdown football without the name brands shown:

I’m thinking the JB Hudson ad employed a little airbrush strategy, or at least some strategic and highly precise palm expansion and placement in hiding the Wilson and NFL logos.

Actually, if so, it’s a good move, but will it be enough — especially given this website link — to avoid the aggressive NFL Super Bowl sponsorship police?

Who owns rights in TOUCHDOWN for footballs, if anyone? Anyone?

Neither Wilson nor the NFL appear to own federally-registered rights in TOUCHDOWN for footballs, but do common law rights exist?

If so, who owns them, the NFL or the maker of the NFL’s official game footballs, Wilson?

Moreover, did legal review consider non-verbal marks? What about the stitching design bordering the football laces? Non-traditional trademark? Functional? If not functional, fair use?

So much to think about as we anxiously await the Big Game in our own chilly backyard . . . .

What do you think of when you hear the word Velveeta? Me too, childhood — complete with piping hot Campbell’s tomato soup — and perfectly melted grilled cheese sandwiches. Later in life, at least for me, came liquid gold and RO*TEL queso dip, usually on weekend game days. And, my daughter might add to the Velveeta memory mix, perfectly smooth shells and cheese.

Velveeta can conjure up some less than innocent and charitable thoughts too. Eventual trips to the doctor. Perhaps cardiac stents. And, even probing medical questions like, is that yellow loaf or brick really cheese? Turns out, it’s technically not real cheese, rather the box even calls it “Pasteurized Prepared Cheese Product.” What does that even mean?

Yet, Kraft apparently has felt no shame, remorse, or even second thoughts in continuing to maintain the original 1923 Velveeta trademark registration for “cheese,” despite an FDA warning letter some fifteen years ago that apparently led to the more accurate “Pasteurized Prepared Cheese Product” appellation.

As a trademark type though, and putting aside the interesting trademark abandonment question of whether Kraft actually uses the Velveeta mark in connection with the recited goods, “cheese” — the notion of a coined trademark comes to mind with Velveeta too. The kind of trademark that is invented, or let’s say, made up, or produced for the exact purpose of functioning as a trademark indication of source.

Some other examples of coined marks include Exxon, Rolex, and Google. Some call those types of marks the gold standard since they are the strongest trademarks along the Spectrum of Distinctiveness. They are often singular in meaning, and ripe for dilution protection.

So, imagine my surprise seeing a “room” dedicated to Velveeta, as I walked 6th Street with one of my sons, this past weekend, in Austin, Texas, inspiring me to capture the image shown above to further document and discuss it: The Velveeta Room.

My surprise was especially fine-tuned since the apparently-non-eponymously named room did not appear — at least, on the surface — to be promoting liquid gold, yellow bricks, golden loafs, queso, or even shells and cheese, much less the almost century old Velveeta “cheese” brand or distinctive box.

Mind you, there was a day when Kraft appeared to give a serving of some serious trademark enforcement attention to the likely famous Velveeta trademark, even when the target showed up selling comedy as opposed to calories.

Back in the day, circa 1993, Kraft opposed registration of Blue Velveeta for “entertainment services in the nature of comedy and musical acts.” It appears the improv act melted away in the mid-90s — not sure whether it was voluntary or not.

The Velveeta Room apparently began around the same time as Blue Velveeta, circa 1988. Perhaps either of their fans can help explain their branding, because I’m at a loss. Did the improv group or does the comedy lounge specialize in cheesy humor? Pasteurized jokes? Fake laughter and chuckles? Or perhaps, unhealthy routines and the need for medical attention?

The irony has not escaped me that the Velveeta product was invented to solve the problem of “broken cheese” and the Velveeta brand and trademark was invented or coined to identify, distinguish, and indicate the source of an engineered — or to some, fake cheese product.

It remains to be seen whether the Velveeta trademark registration is itself “broken,” whether the brand simply melts away over the next century, whether its meaning will further evolve and blend into a smoothly-delivered butt of jokes, or whether Kraft will laugh all the way to the bank.

–James Mahoney, Razor’s Edge Communications

Recently violinists Rhett Price and Shiva Chaitoo got two very different lessons on the downside of posting performances on the Internet.

According to an article in The Boston Globe, a fan of Price alerted him to a video of Chaitoo’s playing. Turns out, Chaitoo was pulling a Milli Vanilli, fingering his violin over a sound-track of Price’s recordings. And he’d been doing it for at least a couple of years, and getting paid gigs from people who’ve seen the vids or his “live” performances.

Long story short: Price isn’t looking for anything more than for Chaitoo to stop his “tribute.”

What’s really interesting about the situation, though, is the copyright aspect of it, and the apparent lack of legal remedies available to Price.

According to Paul Litwin, a partner of Shames & Litwin entertainment lawyers, when Price posted his videos on YouTube and offered free downloads in exchange for email addresses, he essentially granted some use-rights. YouTube’s terms of service include “a worldwide, non-exclusive, royalty-free, sub-licenseable and transferable license to use.”

Litwin says, “If you buy and download a song, you can pretend to play and sing along with it. By posting his music on YouTube, Rhett is allowing the YouTube community to use it. [Chaitoo] isn’t saying he’s Rhett, so from a legal standpoint, he does not appear to be infringing copyright laws.”

Really? The YouTube T&S notwithstanding, it seems to me that this would usually come under fair-use category. Since Chaitoo used it for a marketing tool (and probably also “performed” the tracks at his paid gigs), I think he hit some very sour copyright notes. There’s a world of difference between playing air-violin in your living room and what Chaitoo did.

As I’ve mentioned often before, I’m no lawyer (though I play one in the living room by reading aloud Steve Baird postings as if they were my own), so what do you knowledgeable folks think about both the situation and Lawyer Litwin’s assessment?

And one final factor to consider: Chaitoo lives and works in Trinidad and Tobago, which may complicate the copyright issue and Price’s available recourse.

While trademark infringement is the headliner for claims brought under the Lanham Act, the law also precludes false advertising and unfair competition. Most states also have laws addressing deceptive trade practices addressing similar misconduct by advertisers. Recently one consumer sued MillerCools under these laws, claiming he had been deceived into purchasing Fosters beer, thinking the beer was made in Australia.

Image result for fosters beer

The plaintiff pointed to the red kangaroo and star constellation prominently displayed on the front of the can. The red kangaroo is closely associated with Australia and you may recognize the star constellation from the Australian flag (below):

Image result for australian flag

The plaintiff also pointed to the history of Fosters beer. It was first brewed in Australia in 1887, and first exported to the U.S. in 1972, in large 25.4 ounce containers “shaped like motor oil cans.” Into the late aughts, however, the Fosters beer sold in the U.S. was brewed stateside at Oil Can Breweries in either Albany, Georgia or Fort Worth, Texas. Yet television commercials maintained similar themes, such as the “Fosters: Australian for Beer Commercials.” Compare this 1996 commercial with this 2011 commercial. If you watched them both, you likely noticed the word “Imported” disappeared from the front of the can between 1996 and 2011.

Notwithstanding the imagery, MillerCoors prevailed on a Motion to Dismiss. The company pointed to the disclaimer on the side of the can, which states that the beer is “Brewed and packed under the supervision of Foster’s Australia Ltd, Melbourne Australia by Oil Can Breweries, Albany GA and Fort Worth TX.”  The court found this to be a sufficient disclaimer under the circumstances and, in light of the commercial context, no consumer would be reasonably deceived into thinking the beer was imported from Australia.

The Fosters decision is the latest in a trend of victories for beer companies battling consumers who claim that the beer deceptively suggests that the beer is actually imported from another country. Red Stripe and Sapporo both prevailed in overcoming lawsuits alleging the companies’ advertising deceived consumers into thinking their beer was imported from Jamaica and Japan respectively.

Image result for red stripe bottleImage result for sapporo bottle

 

Not all breweries have been as lucky, however. The makers of Kirin and Beck’s both settled lawsuits that resulted in payouts to consumers. And even though Red Stripe prevailed, consumers can perhaps claim a moral victory with the company’s decision to move operations back to Jamaica.

-Wes Anderson, Attorney

I recently purchased a post-holiday present (for myself) – Apple’s AirPods, wireless headphones designed to integrate with Apple’s various products, including the iPhone 7 (which, helpfully, discarded the headphone jack in the name of “courage.”

The earbuds themselves are quite tiny, and likely quite easy to lose, so they come in a case with a flip-up lid, designed to store and charge the earbuds – and many commentators have noticed its similarity to a pack of floss:

Screen Shot 2017-01-13 at 5.57.01 AM

One intrepid Etsy seller certainly agreed – and, in the spirit of theft prevention, “RyanFlosss” offered a sticker for sale on Etsy to disguise the headphones as nothing more than a dental hygiene product.

qnirzqgi30rsv5oylkfh

Proctor & Gamble, owner of rights in the ORAL B trademark, certainly found this design to be quite familiar and issued a takedown notice on Etsy to remove the product.  While it may seem farcical – or downright bully-ish – for a company to attack a sticker designed for electronics, the Lanham Act makes no such distinction. So long as there is the possibility consumers might perceive some affiliation with P&G, or even dilution of the ORAL B or GLIDE trademarks, then these sorts of products can nonetheless fall within the purview of trademark infringement.

The Etsy seller, for his part, took the notice in stride, and ultimately revised his product to look slightly less similar to P&G’s brand of floss. A sticker of your very own can be had for $5 — but, sadly, the listing notes that AirPods are “not included.”

 

-Wes Anderson, Attorney

Whether or not you agree Michael Jordan is the greatest basketball player of all time, he is certainly well-known. And after an over four-year battle, China’s trademark courts have agreed.

Michael Jordan and his JORDAN brand have been a staple of Nike’s shoe and apparel business for over thirty years. Nike so values the “Jumpman” logo that it transcends basketball – the Michigan Wolverines, for example, wear the logo on jerseys for all sports, including football.

But in China, where trademark rights belong to the first party to file a trademark, rather than the first to use, the JORDAN wording has effectively belonged to another company. A sportswear company called Qiaodan Sports owned the rights to the JORDAN mark in Chinese characters – Qiaodan, pronounced “chee-ow-dan,” is a transliteration of JORDAN used in China and elsewhere for over thirty years. Qiaodan operates some 6,000 stores in China, and its associated logos also bear a striking resemblance to the Jumpman logo:

Screen Shot 2016-12-16 at 6.30.15 AM

Qiaodan is, essentially, recognized as a knockoff brand in China. So, Jordan brought a lawsuit against Qiaodan in 2012, to seek cancellation of Qiaodan’s Chinese-character trademarks and, separately, a suit to enjoin use of those marks in China. What followed were a series of losses in court. China’s trademark laws do not favor the first to use, so for unregistered mark owners, Chinese trademark enforcement can be near impossible, unless the mark owner can show its mark is “well-recognized” in China.

Qiaodan had registered the Chinese character mark some 10 years before Jordan first objected, although Jordan’s legal team claimed use of the JORDAN name in China dating back to the 1984 Olympics (which were broadcast in China).

Lower courts held that the Chinese character mark would not be squarely associated with Michael Jordan, and that Qiaodan’s “human body in a shadowy design” logo was not recognizable as Jordan.

But finally, earlier this month, Jordan prevailed before the Supreme People’s Court, China’s highest court. It found the Chinese character mark for JORDAN should be returned to China’s trademark office (after which, presumably, Jordan can obtain a registration of his own). And the fight is not yet over – a separate lawsuit in Shanghai is pending over Qiaodan’s use of the JORDAN name.

qiaodan2

That Jordan had to spend such immense time and resources to obtain this decision would surely scare away most “mere mortal” brands, even well-known ones. But there is a valuable lesson here for brands with an international presence.

First, it’s advisable to apply for marks in China as soon as practicable. Unlike other jurisdictions (such as the United States), China does not require proof of use for a trademark to obtain registration. Therefore, the concept of a “defensive registration” exists in China, but not the U.S.

And in most cases, a trademark may not be challenged on grounds of non-use for three years after registration. So long as some genuine good faith use is made in China during that three-year period, the registration will generally avoid a non-use cancellation.

Second, this should apply equally to the concept of “transliterated” marks in Chinese characters (the subject of the JORDAN decision above). A Chinese trademark specialist can propose a variety of potential Chinese character marks that are the phonetic equivalent of an English language mark. It’s also possible that consumers in China may already associate a certain combination with your brand as a “de facto” transliteration.

Finally, it’s also a good idea to obtain a China or global watch service for important trademarks. A watch service will monitor the application and publication databases in various countries and inform of any close matches for which others have applied.

Ultimately, the cost of a timely trademark application in China can save untold costs and prevent various headaches associated with enforcement. A lesson Michael Jordan now no doubt knows better than anyone.