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.

The parent company of fashion giant Coach found out that there is a lot to a brand name.

Coach’s strategic plan was to expand into a specialty retailer that would branch out beyond the COACH® brand.  To accomplish this strategy, Coach acquired both snazzy shoe company Stuart Weitzman and trendy Kate Spade & Co.

In doing so, Coach wanted to rebrand its parent company to reflect the three distinct brands under the corporate umbrella.  Coach chose the name Tapestry for its parent company.

The public backlash and slight drop in Coach (now Tapestry) stock price was unexpected.  Consumer’s felt that Tapestry sounded “musty” or “old.”  Others were reminded of the Carole King song and were not happy.

Consumers felt better when they were told they would still be able to buy their beloved COACH® bags.

The parent company Tapestry has more impact on the Wall Street shareholders than the individual consumers.  The company explained the origin of the name.  The Tapestry name reflects the long history back to its start in Manhattan in 1941 following the Great Depression and the creativity, craftsmanship, authenticity and inclusivity that the company was founded on.

Coach is not alone in branding a parent company.  Mondelez (formerly known as KRAFT) that owns the Oreos® and Nabisco® brands also received backlash when it unveiled its new name.  Consumers complained that the name Mondelez sounded like a dreadful disease.

With all the acquisitions occurring in the business world, the renaming of parent companies will be a fertile ground for creative agencies to obtain business.

What names do you think would have been less controversial for Coach to have adopted?

The four year saga ended (at least for now) with Tiffany & Co. being awarded for its vigorous fight to maintain its trademark and protect against genericide.  As previously reported, Tiffany & Co. filed suit against Costco Corporation (“Costco”) to protect its trademark with respect to engagement rings on Valentine’s Day in 2013.  (Read my post here.)   On August 14, 2017, the district court increased a jury award to Tiffany & Co. to $19.35 million.  Costco asserts it will appeal – so the saga is not over yet.

In defending against the lawsuit, Costco argued that the “Tiffany setting” encompassing the famous TIFFANY mark is merely a generic term for a type of engagement ring.    You may recall my post where I asked if you thought TIFFANY was generic? (Read it here.)  The district court answered my question in a ruling in 2015:  No, it is not generic.   In ruling on this motion, the judge ruled that Costco willfully infringed the TIFFANY trademark by using it on signage and it was a key part of Costco’s marketing strategy.  Among other things, she relied on a study in doing so.

Costco did not like the ruling and appealed asking the Second Circuit to take up an emergency appeal because of the “ongoing, irreparable harm to Costco’s business reputation which [Tiffany & Co. had] acted to amplify through statements to news media.”   Two months later, the Second Circuit denied this request.

In a ten day trial in September through October 2016, a jury awarded Tiffany & Co. damages in an amount of $5.5 million (adding to the lower profits Costco had actually obtained) and an additional $8.25 million in punitive damages for Costco’s bad behavior.  However, in an Opinion on August 14, the district court judge did not think this was enough.  She explained that the jury’s verdict was advisory only as to recovery of profits and trebled the profits increasing the award of damages to $11.1 million, plus interest, and added the award of $8.25 million in punitive damages.  Accordingly, Tiffany & Co. was awarded $19.35 million dollars from Costco.  In addition, Costco is permanently barred from selling anything that Tiffany did not make as “Tiffany” products, unless Costco uses a modifier such as the product has a “Tiffany style” or a  “Tiffany setting.”

We will have to wait and see if the Second Circuit agrees that TIFFANY is not generic and affirm the award of $19.35 million to Tiffany & Co.

Little Caesers

Although a precedential decision allowing a “Family of Marks” to be considered in the context of an ex parte prosecution of an application that has been refused under Section 2(e)(1) to show acquired distinctiveness, this ruling could not help Little Caesars overcome the refusal of its application for the mark “DEEP!DEEP! DISH PIZZA.”

Because “Deep Dish” is descriptive of a feature of the good (i.e., the pizza), there was no question the mark was descriptive.  Accordingly, Little Caesars sought to register the mark based on acquired distinctiveness under Section 2(f) of the Lanham Act.  To do so, Little Caesars needed to show that the “relevant public understands the primary significance of the mark as identifying the source of the product (i.e., the primary significance was that the goods are from Little Caesars), rather than the product itself (i.e., that it was pizza).

With pizza being one of my absolute favorite foods, I am very familiar with Little Caesar’s

Pizza Pizza

trademark.   The fourth largest pizza chain argued that the applied for mark “DEEP!DEEP! DISH PIZZA” should be viewed in light of its “family” of double word marks with explanation marks.  Unfortunately, the Board found that Little Caesars did not meet the substantial burden of showing such a family of marks.  Mere ownership of marks is not enough.

The Board discussed a prior decision wherein they rejected a company’s claim of a family of marks based on ownership of “SICLE” marks through ownership of the marks CREAMSICLE, FUDGSICLE and FRUITSICLE (among others).   In Consolidated Foods Corp. v. Sherwood Med. Indus., 177 U.S.P.Q. 279 (TTAB 1973).

You might ask what is a family of marks that has been recognized.  The Board observed that the common characteristics of a family of marks is typically the same suffix or prefix.   The most famous is probably the “MC” family of marks owned by McDonald’s.  For example, the company owns:

However, the Board noted that the concept of a “family” of marks was not necessarily limited to prefixes and suffixes.

What is your favorite “family” of marks?   Or, what do you think should be considered a “family” of marks?

It’s that time of year again, the Midwest IP Institute is back in action for the 14th year in a row, and if you’re attending you’ll receive this little gem, the 13th Edition of The IP Book:

2015IPBookCover

So, don’t miss it, Gerard Rogers, Chief Judge of the TTAB will provide us with News from the Trademark Trial and Appeal Board, and he will also share his perspectives on the implications of the Supreme Court’s B&B Hardware Decision on TTAB practice.

Our friend John Welch of the TTABlog will be joining me on the podium for the annual review of trademark cases: The Year in Trademark Law.

In addition, my partner and fellow DuetsBlogger Brad Walz will provide valuable insights on how to avoid the cost and expense of trademark oppositions altogether by utilizing ex parte Letters of Protest at the USPTO.

Please join us this Thursday and Friday at the Minnesota Continuing Legal Education Center in downtown Minneapolis for two days of intellectual property education and networking.

Finally, if you’re wanting a preview of the B&B Hardware discussion, there is a webinar tomorrow you won’t want to miss, my partner and fellow DuetsBlogger Tiffany Blofield is teaming up again with Caldwell Camero of General Mills to discuss their perspectives on how the Supreme Court’s B&B Hardware decision has changed our trademark world.

I had the great fortune to attend the recent FUSE conference held in Chicago for design and branding professionals, and see Oscar-nominated documentary filmmaker Morgan Spurlock speak.

spurlock My friend on the left is Kitty Hart from Capsule, who blogged about FUSE in the post entitled “Day 3: A Morning of Design Heroes.” My friend and colleague Steve Baird also blogged about the conference. Morgan Spurlock’s presentation was as amazing, as you would expect. I will merely focus on one of the areas in which he enlightened us.

When the iconic brand GE approached Mr. Spurlock, asking him to promote their brand by showing their “cool” MRIs, he said NO! Instead, he convinced GE to sponsor an important issue, and thereby connect its brand with an emotional topic. What a success!

It was hard to hold back the tears when he showed the GE-funded Focus Forward video clip entitled “Fire With Fire,” which shows a six-year old girl’s battle with terminal cancer. The GE logo was bookended — being shown at both the beginning and the end of the clip.

SPOILER BELOW! I highly recommend watching the clip before reading more of this blog post.

The Reader’s Digest version (for those of you who did not watch the video clip) is that the doctors in Philadelphia tried an innovative new treatment of injecting modified HIV cells into the girl’s blood. This modification kept the cells from infecting her with HIV, and at the same time these cells violently attacked her tumors. Remarkably, a girl with no chance of recovery was CURED!

I do not know about you, but this clip made me want to buy a GE light bulb. This video clip shows the power of emotion (and Morgan Spurlock’s genius). Indeed, this vignette even made me think that GE may have even had a hand in her recovery, through providing products or medical devices.

Marketing genius!

You may, like me and hundreds of others, have had the “Blurred Lines” verses: “I know you want it, You’re a good girl, You’re far from plastic, Talk about getting blasted, I hate these blurred lines,” stuck in your head. And, who could forget the new word “twerk” with Robin Thicke’s performance with Miley Cyrus at the award show.

thickecyrusThis song is at the heart of a lawsuit brought by Robin Thicke and songwriter Pharrell Williams against Marvin Gaye’s children. Pharrell and Thicke wanted a court to declare that they had not infringed on the Gaye children’s copyright for the written music. The jury disagreed, returning a verdict awarding Gaye’s children $7.36 million in damages based on their rights in “Got to Give it Up.”

The Gaye children have filed an injunction to prevent future sales unless they attribute the writing to their father and provide them with compensation. In turn, Pharrell Williams and Robin Thicke want to file post-trial motions and possible appeals. The jury declined, however, to find Thicke and his ex-wife had infringed on the Gaye’s children’s copyright with their song “After the Dance.”

Only time will tell if Robin Thicke and Pharrell Williams can twerk their way out of the jury’s copyright infringement ruling.