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Category Archives: Trademarks

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Celebrity Protects His and His Son’s IP

Posted in Articles, Civil Procedure, Counterfeits, Idea Protection, Law Suits, Non-Traditional Trademarks, Trademarks

DJ Khaled and his son’s company sued an online retailer named Curtis Bordenave and his company, Business Moves Consulting, Inc., alleging that they are illegally using his and his son Asahd’s intellectual property. Most of you likely know who DJ Khaled is, but I had not heard of him before reading about this dispute.  When… Continue Reading

Velcro Sequel Sticks With “Hook and Loop”

Posted in Advertising, Articles, Branding, Genericide, Loss of Rights, Marketing, Trademarks

On the heels of discussing trademark genericide through the Anything is Popsicle prism yesterday, let us turn our attention back to Velcro, who is at it again, this time making a genericide sequel. The sequel is called “Thank You for Your Feedback — Don’t Say Velcro.” Like any sequel I’ve ever seen, I’m not feeling Velcro’s second… Continue Reading

Mission Popsicle: Telling You It’s a Brand?

Posted in Advertising, Articles, Branding, Food, Genericide, Loss of Rights, Marketing, Television, Trademarks

Welcome to another edition of Genericide Watch, where we consider brands on the edge, working hard to maintain brand status and exclusive rights, while trying to avoid trademark genericide. The primary meaning to the relevant public decides genericness, so trademark owners will try to influence how consumers understand the word, to maintain at least 51% brand meaning. As we’ve written… Continue Reading

Dog Toy Manufacturers Really Like Parodies

Posted in Dilution, Famous Marks, Fashion, Food, Infringement, Law Suits, Mixed Bag of Nuts, Product Packaging, Trademarks

A dog toy display at a local pet store caught my attention recently. I did a double take on seeing the familiar fonts, coloring, and packaging.  Not long after, I happened to find these at a different pet store. Once again, the familiar labels, coloring, and bottle designs caught my attention. While certainly reminiscent of… Continue Reading

It’s Not a Wonderful Trademark Examination

Posted in Articles, Branding, Food, Infringement, Marketing, Trademarks, USPTO

It’s a wonderful life, collaborating with brand owners and marketing teams to advance their goals. Our work for brand owners also involves a collaboration of sorts with the U.S. Trademark Office. We work with the USPTO to obtain registrations for our clients and this triggers USPTO obligations. As such, when examining applications, the USPTO must search its records for… Continue Reading

A Minnowsotan Perspective on TM Disclaimers

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

There is at least one more 2018 Rapala billboard out there, just netted this one over the weekend: Rapala’s clever Minnowsotan billboard inspired me to cast a few lines about the law concerning trademark disclaimers, as they often reel in some great questions from branding professionals. Tim did a helpful post on trademark disclaimers, guiding why the USPTO requires them, their legal implications, and encouraging brand owners to properly… Continue Reading

Scandalous Trademark Applications On Hold

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, USPTO

Trademarks consisting of or comprising “scandalous or immoral” matter still won’t be granted federal registration “in the name of the United States of America,” at least for the time being. Immediately on the heels of the International Trademark Association’s 140th Annual Meeting in Seattle, and our well-received panel discussion concerning Trademarks and Free Speech, the United… Continue Reading

Buc-ee’s Beaver Chomps Reptilian Competitor

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, Infringement, Law Suits, Mixed Bag of Nuts, Sight, Trademarks

About a week ago, we reported on an interesting case out of the Southern District of Texas involving two competing convenience stores with cartoon animal mascots: Buc-ee’s (a beaver) and Choke Canyon (an alligator). As someone who has personally visited Buc-ee’s stores, I can tell you that they are quite the destination. Buc-ee’s tend to… Continue Reading

“Square Donuts” – Generic for Cafe Services?

Posted in Branding, Infringement, Law Suits, Loss of Rights, Mixed Bag of Nuts, Trademarks, USPTO

Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts. Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease… Continue Reading

At INTA 2018: Trademarks and Free Speech

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, First Amendment, Infringement, Law Suits, Marketing, Trademarks, TTAB, USPTO

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:… Continue Reading

Hamm It Up? The Latest Brand to Verb It Up!

Posted in Advertising, Articles, Branding, Loss of Rights, Marketing, Trademarks

It’s been a little while since the last example we’ve shared showing a brand turning its face, or a blind eye, on age-old rigid trademark advice, counseling against using a brand name as a verb. Given the more common trend of many alcoholic beverage brands focusing attention and their messaging on drinking responsibly, MillerCoors has made… Continue Reading

Rapala’s 2018 Fishing Opener Billboard Ads

Posted in Advertising, Articles, Branding, Marketing, Trademarks

What would Mother’s Day be, at least in Minnesota, without the fishing opener near by? What would another fishing opener be without Rapala’s distinctive slate of billboard ads? Here is an engaging pair of billboard ads currently running, if you’ve seen others, let us know: My personal favorite between them would be Wassup, dock? — love the double… Continue Reading

Trader Joe’s Takes on Trademark “Schmo”

Posted in Articles, Branding, Dilution, Fair Use, Famous Marks, First Amendment, Food, Infringement, Law Suits, Mixed Bag of Nuts, Sound, Squirrelly Thoughts, Trademarks, TTAB, USPTO

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The… Continue Reading

M22/Michigan Road Sign Dispute: The Saga Continues

Posted in Branding, Mixed Bag of Nuts, Trademarks

My first post on this blog, nearly two years ago, was about a trademark dispute between the State of Michigan, and a Michigan company, M22, LLC.  M22 sells a variety of merchandise bearing an “M22” mark that appears similar to the route marker signs on Michigan Highway M-22, see photos below. M22 was granted several federal trademark registrations, including… Continue Reading

Uncertain Case of Google Trademark Fair Use

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Fair Use, Famous Marks, Infringement, Marketing, Search Engines, Trademarks

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway: My questions, permission, co-branding, no permission, but classic or nominative fair use? Is Google flattered? Free advertising? Do they care? Should they care? Discuss, to quote John Welch,… Continue Reading

The Uncertain Case of Deadwood Trademarks

Posted in Advertising, Agreements, Articles, Branding, Loss of Rights, Marketing, Trademarks, USPTO

Last week, I enjoyed the privilege of returning to Iowa City (where it all began) for Executive Leadership Board Meetings at the University of Iowa College of Pharmacy. Great meetings there! During a stroll through downtown, I was reminded of Deadwood, a legendary Iowa City tavern, so I snapped a few photos, having long forgotten the creative tagline — Institute of… Continue Reading

Owning Some TM Happiness: Bubly ≠ Bubbly?

Posted in Advertising, Articles, Branding, Food, Marketing, Trademarks, Truncation, USPTO

For a few months now, the Minneapolis skyway system has been flooded with a variety of fresh, creative, eye-popping advertising to promote Pepsi’s new bubly sparkling water collection: Although not a lie (the bottles I’ve seen clearly reference Pepsi), you’d never know from this ad or the trademark registration that Pepsi is behind bubly, since an Irish entity… Continue Reading

The Law Rewards Creativity

Posted in Articles, Branding, Marketing, Non-Traditional Trademarks, Trademarks

Toward the end of last week, a couple of friendly ironmongers (John Welch and Ron Coleman) had an interesting dialogue on Twitter, with some great insights about creativity and the law. John noted that copyright’s requirement of “originality” is not the same as the requirement of “novelty” in patent law. Ron then weaved in some nice… Continue Reading

The USPTO Goes to Washington

Posted in Trademarks, TTAB, USPTO

Last week, the U.S. Senate Judiciary Committee held its oversight hearing regarding the U.S. Patent and Trademark Office (USPTO). New USPTO Director Andrei Iancu testified (see his written statement here), for the first time in his new official capacity. It was an interesting hearing–a video recording of the hearing is available here (starting at minute 16)…. Continue Reading