April 5, 2010
I don’t want to share my Legos!
We here at TacticalIP like to monitor intellectual property news and try to report it to you. You may have noticed that we pride ourselves on pointing out improper enforcement actions taken by trademark owners. For example, we have previously posted a feature called IP Bully Of The Month. (see here and here).
As I was reading through some intellectual property news that I normally watch, I came across a story that I thought I would share. While this doesn’t top my list of overzealous trademark owners trying to enforce rights that they don’t really have, I felt it deserved a mention. Turns out that The Lego Group (yes – the same company that makes the toys we all played with as kids and the toys that I step on in the middle of the night in my house now) has decided to sue Project LEGOS, a community outreach program started by two University of Minnesota alums. The “LEGOS” in Project LEGOS stands for “Leadership, Empowerment, Growth, Opportunity, Sustainability.”
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 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.
October 28, 2009
SNCF vs. Danish Food Stall Lady
by Philip Zies
Our latest IP Bully Award nomination comes from across the pond.
SNCF, the French train company that runs the famous train line known as the Orient-Express, forced a Danish woman who sold spicy food from a stall at music festivals under the trademark ORIENTEXPRESSEN to change the name of her business. The Danish Supreme Court affirmed the lower tribunal’s decision that the “catering services” offered from the food stall were too similar in kind to the “hotel services” offered by the train company. She sure got railroaded. (source)
If you have any IP Bully Award nominations for us to review, you can write them in the comments to this or any other post. Alternatively, you can email us at tacticalip@gmail.com.
October 23, 2009
Update on “IP Bully of the Month” Award Nominee
by Philip Zies
Last week, TacticalIP.com nominated Hansen Beverage Co., the maker of "Monster" energy drinks, for the "IP Bully of the Month" award for demanding that Vermont beer maker Rock Art Brewery, brewer of "Vermonster" beer, rename its fermented non-energy beverage. Well, as it turns out, maybe Hansen isn’t such a bully after all. It seems that Hansen CEO, Rodney Stacks, and Rock Art founder, Matt Nadeu, were able to work out their differences by talking to each other directly. Rock Art has agreed to avoid adding high energy drinks to its line and Hansen has agreed to back down on its renaming demands (source). Nice compromise, boys!
October 19, 2009
Latest “IP Bully” Award Nominations
October 14, 2009
Announcing the “IP Bully of the Month” Award
by Philip Zies
Due to the overwhelming popularity of our "IP Bully of the Week" award, or perhaps because of the prevalence of perceived IP Bullies, TacticalIP.com is rebranding its award as our "IP Bully of the Month" award and offers the following candidates for consideration, in addition to the award winner announced October 7, 2009:
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Big Boy Restaurants International, LLC — for demanding that a 14 foot big-boy-on-a-pole be removed from a memorial in Charlston, South Carolina. The memorial was created in honor of the original 1947 Shoney’s Restaurant, belonging to that chain’s founder, Alex Schoenbaum. At one point, Big Boy and Shoney’s were merged, but Shoney’s later split off again. (source)
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World Wrestling Entertainment, Inc. — for demanding that the The Wine School of Philadelphia stop using the name "Sommelier Smackdown" for the food and wine pairing competitions that it has held since 2007. (source)
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Hansen Beverage Co. (maker of Monster energy drinks) — for demanding that Rock Art Brewery, in Morrisville, Vermont, rename its beer, which is now known as "The Vermonster". (source)
Stay tuned for more nominees, and we may actually pick a winner at some point. Sound off in the comments with your favorite, or if you’ve got a nominee of your own.
October 7, 2009
And our “IP Bully of the Week” Award goes to…
Ralph Lauren — for sending DMCA take-down letters in an attempt to suppress some negative blog commentary about the photo below, e.g., comments like “Dude, her head’s bigger than her pelvis” (source).
You can read about what happened here and here.
UPDATE (2009/10/12): Ralph Lauren has issued a statement, apologizing for the poor photoshop job. We’re still waiting for an apology about their DMCA abuses.
October 3, 2009
The North Face claims that consumers don’t know their heads from their asses
Clothing producer, The North Face (TNF), recently got a lesson in how bad trademark enforcement decisions can make a company look silly. It seems a St. Louis teen thought that it would be amusing to create a clothing line parody, calling it “The South Butt,” — south being the logical opposite of north and butt being… well… you get the idea. TNF was not amused, however, and they set their attorneys to attack mode, sending a cease and desist letter to the college freshman (source).
TNF’s letter asserted that use of the “South Butt” logo (pictured below) constitutes an infringement of their own federally registered trademark (pictured above). On its face, TNF’s claim is not so unreasonable. As any trademark owner (who has a decent attorney) can tell you, trademark rights can be lost if you don’t enforce them. TNF must, in order to maintain its ability to sue legitimate infringers, actively look for unauthorized uses of its logo. However, owning federal trademark rights does not mean you can stop every use of your mark that you don’t like. Federal trademark law was created to prevent consumers from becoming confused about the source of goods, not give complete exclusionary rights in logos, words, and phrases. It certainly wasn’t meant to give companies the power to stifle criticism — a point that corporate attorneys seem to frequently fail to explain to their clients.
