February 4, 2010
Honda Sued for Trying to Save the Earth!
Honda can probably be considered one of the leaders in making more fuel efficient vehicles. They have always put out some pretty good vehicles, and now, with hybrid technologies, they have been manufacturing some vehicles that get between 40 and 45 miles per gallon. If I were Honda, I would want to boast about that too. Apparently, Honda started an ad campaign that offended Save the Earth Enterprises, an environmental group based here in the U.S. Save The Earth Enterprises sued Honda for trademark infringement over their recent ad campaign.
At first, I could not wrap my brain around this issue. I could not figure out who in their right mind would possibly confuse an environmental group with an automobile manufacturer. We have all heard about the (alleged) global warming issues, and if global warming was not enough of a reason to want to buy a more fuel efficient vehicle, then the price of fuel sure should have been. I also could not figure out what attorney in their right mind would possibly encourage their client, an environmental group, to sue a giant like Honda, who could only possibly be found at fault for manufacturing cars that may be too reliable (if you have had a bad experience with a Honda, please disregard that last comment).
February 2, 2010
Who Dat Say They Gonna Sue for Trademark Infringement? Da NFL – Dat Who!
Normally, most people out there know that the NFL gets their panties in a knot if you were to use any of their trademarks. For example, the NFL owns all the names and logos associated with each of the teams, as well as the name for that season ending football game that occurs on a Sunday – I didn’t want to write “Super Bowl” for fear of being sued by the NFL! Everyone who’s anyone knows that “The Big Game” is going to happen in a couple of weeks from now and that it is going to be between the New Orleans Saints and the team that beat my beloved Jets (just out of spite, I’m not going to mention the name).
We all know what New Orleans went through in 2005. Katrina was a terrible tragedy and the one thing that kept that city going was The Saints. I never really followed The Saints, but since they did so great this year, I watched a couple of games. I always saw people in the stands with signs on it that read “WHO DAT” and I would hear the likes of Drew Brees rally his team by chanting WHO DAT! I had no idea what it meant. I did some digging and asked some folks about it. I used to work with someone that I consider to be the biggest Saints fan ever. Apparently, there is a little war chant that they have in New Orleans – “Who Dat Say They Gonna Beat Dem Saints.” That’s a great chant and very original. In my opinion, it belongs to the people of New Orleans… not the NFL. I’m glad that The Saints have made it to the Super Bowl. New Orleans and its great citizens need this.
January 25, 2010
Southern Cal beats up on South Carolina… in a trademark dispute
Those of you who know me know that I am a sports junkie. GO JETS – sorry, I had to find a way to subtly get that one in there. If you are reading this and thinking that you are about to hear me rant and rave about coaching changes or NCAA violations at Southern Cal, you are in for a surprise. This is a true intellectual property dispute between two schools with teams that I don’t particularly appreciate and with football coaches that are not on my top ten list (especially you Kiffin).
Anyway, the Trojans of Southern California have dealt a trademark blow to the South Carolina Gamecocks. This dispute revolves around the logos for each school and, more specifically, the logos that each school prints on their apparel. South Carolina appealed a decision from the Trademark Trial and Appeal Board refusing to register the school’s logo and also refusing to cancel a Southern California trademark. The Federal Circuit upheld both decisions.
January 21, 2010
Don’t confuse media whine pieces for *real* IP bully stories
If you’ve been reading this blog for any period of time, you know that we like to point out when intellectual property owners try to use their IP to stomp on the little guy. One should not confuse our material with that of whiny media types who try to paint IP owners in a negative light for using their rights correctly. Professor Randazza has posted about an excellent example of this kind of misinformed, crybaby reporting. In pointing out the inadequacy of one publication’s legal research, Marco manages to give us all a lesson in trademark registration basics.
January 19, 2010
Removing “Confusion” with Trademarks
Trademarks are a huge part of everyone’s daily lives; yet the laws that dictate their use and abuse are not nearly as well known. A single trip to the grocery store may expose you to literally thousands of trademarks. There are the ones you expect to see (e.g., the word “Kellogg’s” on that box of cereal, or that jovial peanut wearing a top hat) and the ones you are hardly even aware of (e.g., the emblem on the front of the car that you parked next to in the lot, or that familiar swoosh on the sneakers of the woman behind you in the checkout line). Each of those words or symbols represents an important mechanism for lubricating the wheels of commerce, providing a shortcut for you (or your intended customer) to make informed purchase decisions. The economic advantage of trademarks lies in their ability to quickly convey, by association, a wealth of information about the quality, value, and reputation of a product, or its producer.
As an example, when someone goes shopping for clothing, they are able to quickly pick out which garments are desirable, and which ones are not, simply by looking at the tag or emblem stitched on the left breast. If you see a silhouette of a man riding on a horse and swinging a polo mallet, you immediately know something about the characteristics of that shirt, whether it’s from your own experience or from what you may have heard from other satisfied purchasers. You know a little something about the quality and whether it falls into your intended price range – all without having to spend the time, effort, and expense of buying one of each brand of shirt and conducting your own comparative analysis. You know, before even opening it, that when you take a sip from that can that has “Coca-Cola” printed on it, it will taste a certain way, and you likely made your purchase (or selected the one with “Pepsi” printed on it instead) based on that knowledge.
December 31, 2009
Michael Jordan Sues Grocery Stores for Trademark Infringement… After They Congratulate Him!
You may have already heard about the latest trademark infringement case, where Michael Jordan (yes, that Michael Jordan) has sued two grocery store chains, Jewel-Osco and Dominick’s for trademark infringement, after the stores ran full page ads in a Sports Illustrated issue dedicated to the accomplishments of Jordan. This comes on the heels of Jordan’s ridiculous Hall of Fame induction speech, in which he just ranted about how great he is. Michael – can you get more arrogant? Who is advising you? Please fire them and get someone else – I think you can afford it!
“Hmmm… I wonder if my attorney has read New Kids on the Block v. News America or ETW v. Jireh“
For those of you who like your information straight from the source and unfiltered, you can find Mr. Jordan’s complaints here and here.
At the end of the day, Jordan probably has a case. He owns a trademark on his name, and has probably gone to great lengths to protect his trademarks. Clearly, the Jordan brand is quite valuable. In my humble opinion, however, I do not think that every possible trademark infringement case needs to be prosecuted. There is such a thing as bad publicity.
December 17, 2009
Some Irony That Will Make Any Trademark Attorney Laugh
One of the partners from our firm, Philip Zies, told me about a story that really made me laugh today. (No, I’m not going to write LOL, and you’re a putz if you use that too often.) Apparently, the ship design used in The Pirate Bay logo has been hijacked by a Swedish Company for its own commercial exploitation. (Source.)
For the uninitiated, The Pirate Bay is a site where users “share” BitTorrents. Who knows what the real intent of the site is, but the fact of the matter is that The Pirate Bay has become a site where users obtain copyrighted materials illegally. A user can simply download music, movies, software, television shows, etc. without the mess of having to pay for it. I am not saying that every use of The Pirate Bay is an infringing use, so please do not take it that way. It is just that most users of such sites are generally trying to obtain copyrighted materials for free.
December 15, 2009
Does Disney Own the Concept of a Castle?
It is a well known axiom of U.S. intellectual property law that there is no protection afforded to mere ideas. In order to employ the force and power of our legal system to enforce your intellectual property rights, you must have something more concrete than an idea. In patent law, for example, you must have reduced your invention to practice (although constructive reduction to practice can be used to satisfy the requirement). In trademark law, you must have actually used your mark in association with goods or services. In the realm of copyrights, an author must fix her expression in a tangible form before the government will recognize any exclusive rights.
The bottom line is that you can’t sue anyone for “stealing your idea” or “taking that movie plot you thought of.” This concept is hard for some to grasp, and every so often, a big player in the IP world may take advantage of this common misunderstanding. While perusing sites that sell graphic tees (one of my favorite forms of communication – e.g., here, here, or here), I came across an example of this that I think is worth sharing.
December 4, 2009
New IP Bully Award Nominees
by Philip Zies
Major League Baseball – for opposing two applications filed with the PTO by Mattingly Hitting Products, Inc., Don Mattingly’s sporting equipment and apparel company, to register a logo (pictured below). MLB alleges a likelihood of confusion with its “Silhouetted Batter Logo” (source)
Are you likely to be confused?
Global Findability – for suing Summit Entertainment, the producers of the sci-fi flick, Knowing
Nic Cage, fretting over impending patent litigation
As always, feel free to sound off in the comments about your favorite IP Bully, or email us at tacticalip@gmail.com.
December 3, 2009
The Perils of Filing Your Own Federal Trademark Application
Those trademark owners who attempt to file and prosecute their own trademark applications are really being pennywise and pound foolish. At least that is the indication we are getting from some serious issues that we have been dealing with in prosecuting federal trademark applications. I appreciate the reasons for filing your own trademark applications, particularly in this economy. Many times, trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non-attorneys.
I have received an influx of clients lately that have filed their own trademark applications and some that have used non-attorney services. These clients are now up against some very tough rejections from the Trademark Office, or are having other difficulties with the trademark prosecution process. Inevitably, these clients wind up spending more money to pay an attorney to fix the application or to re-file the application, than it would have cost to hire an experienced trademark attorney to file the application for them. Trademark owners may believe that filing and prosecuting a trademark application is a simple process and, I must admit that it is not the most complicated document in the world to file, especially for attorneys that have experience in filing trademark applications.
