DuetsBlog Collaborations in Creativity & the Law

Tag Archives: Trademark Enforcement

What Is in a Name? That Which We Call Heisman; by Any Other Name Would Be Ambiguous

By on Posted in Articles, Domain Names, Fair Use, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Sight, Squirrelly Thoughts, Trademark Bullying, Trademarks

It’s fall, and you know what that means: football season! For many, this means a return to the couch each weekend to spectate America’s most-watched sport. But the popularity of doing so appears to be in decline. This shift isn’t only affecting the NFL, but also college football as well, as ticket sales continue to plummet…. Continue Reading

When Are You in a Lather About Trademarks?

By on Posted in Articles, Branding, Loss of Rights, Marketing, Trademarks, USPTO

As you know, I enjoy telling trademark stories about soaps encountered on my various trips: Lather® (brand) soap recently caught my eye — and the lens of my iPhone — while in Palo Alto. Interestingly, the USPTO has treated the word as inherently distinctive, in Lather’s registrations. In other words, not merely descriptive, even though using the product surely produces some…. Continue Reading

Is a Wellness Brand Vaped by Nicotine?

By on Posted in Advertising, Articles, Branding, FDA Approval, Law Suits, Marketing, Trademarks

Juut, an award-winning salon and spa founded in Minneapolis, has grown over the last 30 years, expanding into Arizona and California, with a focus not only on beauty, but health and wellness. Juut was founded by David Wagner (author of Life as a Daymaker — How to Change the World by Making Someone’s Day), naturally the Juut name means: “to uplift humanity… Continue Reading

Green Bay Packers Enforce “Titletown” Mark Against High School Football News Series

By on Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Infringement, Mixed Bag of Nuts, Sight, Trademarks, TTAB, USPTO

Tis’ the season for football, not just on the gridiron, but also at the U.S. Patent and Trademark Office. Shortly after the “Minneapolis Miracle,” as we reported this week, the Minnesota Vikings applied for registered marks on the phrase. And with the “big game” approaching, teams have titles on the mind–even those that aren’t in… Continue Reading

Happy Birthday: TTAB Turns Sixty in 2018

By on Posted in Articles, Branding, First Amendment, Infringement, Marketing, Mixed Bag of Nuts, Trademark Bullying, Trademarks, TTAB, USPTO

We follow closely and write a lot about what goes on with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); these ironmongers do too, really well. Serious trademark and brand owners care about TTAB decisions because many trademark disputes begin and end there, as the TTAB determines the important… Continue Reading

Super Bowl Ambush Marketing Games Begin?

By on Posted in Advertising, Articles, Branding, Fair Use, False Advertising, Marketing, Non-Traditional Trademarks, Trademarks

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… Continue Reading

JORDAN v. QIAODAN: The Lessons of Trademark Enforcement in China

By on Posted in Advertising, False Advertising, Famous Marks, Infringement, International, Law Suits

-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… Continue Reading

Who’s Watching (What) You Create?

By on Posted in Mixed Bag of Nuts

This past weekend, with what appears to be our first lasting snowfall, I enjoyed following my daughter around the chilly alleys of downtown Minneapolis while she created for her photography class. As you can see from the moment I captured, she inspired me to create a bit too. Thankfully I’m not being graded for my… Continue Reading

Who’s the PATRÓN Anyway?

By on Posted in Articles, Branding, Famous Marks, Food, Infringement, Marketing, Trademarks, USPTO

PATRÓN (meaning “boss” or “landlord” in Spanish) is a pretty famous brand name of tequila (federally-registered since 1993), and don’t forget this gem from the archives: In my experience, PATRÓN is often requested by name when ordering margaritas, so when visiting this cozy spot, I instantly wondered about the need for permission or a license: Especially… Continue Reading

Zero Tolerance #USOC Trademark Overreach

By on Posted in Advertising, Articles, Branding, First Amendment, International, Law Suits, Marketing, Social Media, Social Networking, Technology, Trademark Bullying, Trademarks

By way of follow-up to Tim’s and David’s recent discussions about Rio2016 and related U.S. Olympic Committee trademark enforcement issues, it appears that a local Minnesota carpet cleaning business called Zerorez, is poised to press the issue of the USOC’s overreaching trademark policies by asking the federal district court in Minnesota to confirm it may… Continue Reading

Thinking Outside Section 2(d) Refusals

By on Posted in Articles, Infringement, Loss of Rights, Trademark Bullying, Trademarks, TTAB, USPTO

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in the context of inter partes cases between adversaries. When an applicant seeking to register its mark… Continue Reading

A Few Weekend Views and Brand Sighting(s)

By on Posted in Articles, Branding, Fashion, Marketing, Non-Traditional Trademarks, SoapBox, Trademarks

My daughter captured some artsy pics from our beautiful Fall weekend, can you guess where we were? I’ll give you three visual hints: Those clues weren’t all that helpful, I suppose, so how about these souvenirs and brand sighting? But, what brand sighting is this really, are there actually two here, one overlaid on the… Continue Reading

Wanted: Brand Deputies at the MN State Fair

By on Posted in Articles, Branding, Copyrights, Dilution, Fair Use, Famous Marks, Infringement, Product Packaging, Trademarks

The Minnesota State Fair continues to provide endless blog fodder for those who care about intellectual property. Last week, we wrote about a State Fair vendor concerned about its claimed, but unarticulated “intellectual property.” This week is a good reminder that brand owners have a lot to be concerned about what goes on with their… Continue Reading

Let’s Ignite Inspiration Together: FUSE 2015

By on Posted in Advertising, Branding, Non-Traditional Trademarks, Trademark Bullying, Trademarks

Last year at FUSE 2014, I spoke about “The Intersection of Brands, Design, and the Law,” this year — and a short ten days from now — I’ll be sharing some valuable thoughts about how to gracefully navigate the many legal pitfalls of naming and re-branding projects. FUSE — one of the premier brand and… Continue Reading

The Pursuit of Trademark Perfection: Can “40-0” Function as a Mark?

By on Posted in Advertising, Branding, Domain Names, Fashion, Infringement, Marketing, Social Media, Trademarks

-Wes Anderson, Attorney As Kentucky prepares to square off with Wisconsin in the NCAA Final Four and move one step closer to an undefeated, 40-win season, the University of Kentucky has been dueling with one of its own – a fan and attorney claiming he has already secured trademark rights to “40-0.” But can such… Continue Reading

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

By on Posted in Almost Advice, Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB, USPTO

Last week, while I was preparing for and had the unique opportunity of arguing a real, live TTAB final hearing on the merits, outside the TTAB’s typical oral hearing location (because it was selected by the TTAB to be part of the ABA’s IPLSpring continuing education conference in Bethesda, Maryland), the Supreme Court issued its… Continue Reading

Would You Feel Friendly Toward Freddy?

By on Posted in Articles, Branding, Food, Infringement, Marketing, Trademark Bullying, Trademarks, USPTO

As the brand manager or trademark counsel for Friendly’s, would you be friendly toward Freddy’s? I remember the Friendly’s restaurant chain when we lived in Columbia, Maryland, back in the days when I clerked for a Senior Judge on the Court of Appeals for the Federal Circuit in Washington, D.C., so at my first sighting… Continue Reading

An Energized Trademark Monster?

By on Posted in Advertising, Agreements, Articles, Branding, Dilution, Famous Marks, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Three months ago we discussed a “trademark bullying” allegation against Monster Energy, detailed in a declaratory judgment complaint filed in Montana federal district court by energy-drink competitor Victory Energize. Last week, Law360 reported the case settled on confidential terms, and the claims were dismissed with prejudice, at Victory Energize’s request, so the “trademark bullying” charge… Continue Reading

The Shiny Bright Red Holiday Star Brand(s)

By on Posted in Advertising, Articles, Branding, Famous Marks, Food, Goodwill, Infringement, Marketing, Non-Traditional Trademarks, Television, Trademarks

In the context of the holiday season, what comes to mind when you see a shiny bright red star? If you’re reading this post from Russia, perhaps the top of a New Year Tree is brought to mind. Of course, I have brands on my mind, and it has been hard to miss the barrage… Continue Reading

Reeejected!

By on Posted in Almost Advice, Trademark Bullying, TTAB

Think an undefended opposition proceeding is a slam dunk, then you better think again.  In Emminence, LLC v. Lisa Kelly, Opposition No. 91205286 (October 8, 2014), the Trademark Trial and Appeal Board dismissed an opposition proceeding even though the defendant did not offer any evidence or even a trial brief in support of her case…. Continue Reading

Will Chick-fil-A, uh Chicken Out?

By on Posted in Almost Advice, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Social Media, Social Networking, Trademark Bullying, Trademarks, TTAB, USPTO

Just so you know, this is not the post I planned to write today. Hat tip to you, Bo! It has been exactly one year since Bo Muller-Moore — the “Eat More Kale” guy from Vermont — submitted a comprehensive 71-page response to the registration refusal based on “Eat Mor Chikin” issued by the USPTO… Continue Reading