Author: Andy Johnson

John Deere Trademark

John Deere Wins Trademark Lawsuit over Green and Yellow Color Scheme

Farm equipment and the John Deere Trademark go hand-in-hand. Even among the general, non-farming public, Deere is one of the most recognizable brand names. Not only is the name top of mind for most people, but so is the brand’s color scheme – green and yellow. According to its trademark registrations, this familiar look has been used by Deere as early as 1918. With nearly a century of built up brand equity, Deere is actively enforcing its trademark rights against would-be imitators and recently won a permanent injunction against a South Dakota based agricultural sprayer equipment company. Continue reading “John Deere Wins Trademark Lawsuit over Green and Yellow Color Scheme”

Harry Potter Trademark Issues

Harry Potter Festival Halted Due to Trademark Issues

J.K. Rowling created a magical world for readers of her Harry Potter books. This magic quickly spread to become one of the most valuable intellectual property assets in the world. It has spawned movies and a theme park. From small beginnings writing on napkins to a major entertainment company owning all the IP rights, the value of the Harry Potter Trademark took off at an exponential pace. With an empire now to protect, trademark infringement issues with Warner Bros. Entertainment, have forced a growing Halloween festival in Scottsville, Virginia dedicated to the world of Harry Potter to be scrapped.

Learn More About the World of Magic and Trademarks

For the past three Halloweens, Scottsville has hosted a Harry Potter Festival. It all began after a local shop transformed itself into Honeydukes, the fictional candy shop in the Harry Potter books. Momentum grew from there and the rest of the town joined in. It grew from 800 visitors in year one, to 10,000 visitors visiting last year with over 25 local shops participating. As the event expanded, local shop owners formed the “Ministry of Magic”, a group set up to plan the annual event. Local businesses transformed into several of the shops and locations described in the Harry Potter books, calling themselves after the places in the books. The event began to take on a life of its own.
Continue reading “Harry Potter Festival Halted Due to Trademark Issues”

Kroger Trademark Dispute

Trademark War: US Supermarket Giant Challenges Formidable European Newcomer

Kroger is a grocery store super giant. Operating around 2,800 stores nationally, it is America’s largest grocery store chain. Its stores generated $115.3 billion in total sales in 2016 with approximately $20 billion in sales coming from its in-house brand “Private Selection”. That’s a lot of dough. So when European grocery giant Lidl began opening stores in the US and using its in-house brand “Preferred Selection”, Kroger quickly took action to protect its hard-won turf by filing a trademark infringement and dilution lawsuit, claiming that Preferred Selection is likely to cause confusion among consumers and dilutes the value of Kroger’s registered trademarks.
Continue reading “Trademark War: US Supermarket Giant Challenges Formidable European Newcomer”

Nike Opposes Spikeman

Nike Opposes Gronk’s Trademark Bid on Spikeman Silhouette Logo

Rob Gronkowski is hard to stop. Whether it’s on the field, where he is an All-Pro tight end, or off, where he has developed a name for himself as a highly paid endorser (including for Nike) and as a businessman through his own ventures, he is not going down easy. But Nike is hoping that it will be able to tackle Gronk at the US Patent & Trademark Office before he is able to register his new “Spikeman” logo, which Nike says is too similar to its Jordan brand “Jumpman” logo.
Continue reading “Nike Opposes Gronk’s Trademark Bid on Spikeman Silhouette Logo”

Devils Hand Sign

Rocker Gene Simmons Attempts to Trademark Devil’s Horn Hand Sign

Even among casual music fans, Gene Simmons and the band KISS are well known and easily recognizable. With their elaborate make-up and costuming, the rock band has iconic status, and although they have been performing for multiple decades, only just recently Simmons decided to file for trademark protection on one of his signature symbols, the devil’s horn hand sign. But even with decades of use and a strong association with the band, the hand gesture may have too many hurdles to overcome for trademark protection.
Continue reading “Rocker Gene Simmons Attempts to Trademark Devil’s Horn Hand Sign”

SCOTUS Rules in Favor of THE SLANTS Trademark

In a landmark trademark law ruling, the Supreme Court of the United States held in Matal v. Tam that the Lanham Act’s disparagement clause is facially unconstitutional under the First Amendment’s Free Speech Clause. This case will have significant implications for other case, such as the series of cases addressing the registrability of the mark REDSKINS for an NFL football team. At issue in Matal v. Tam was application of 15 U. S. C. §1052(a) to Simon Tam’s application for registration of the mark THE SLANTS for “entertainment in the nature of live performances by a musical band.” Section 1052(a), also known as the disparagement clause, provides in relevant part that a trademark may not be registered if it: Continue reading “SCOTUS Rules in Favor of THE SLANTS Trademark”

Dell EMC’s Confidential Use of Brand Name Not Enough to Secure Trademark Rights

The intricacies of trademark law at the intersection of where trademark rights arise under common law and where trademark rights are secured through federal registration can lead to some interesting water cooler conversations – at least for trademark attorneys. Trademark rights under common law arise primarily through the use of a mark in commerce in connection with goods or services. Trademark rights and legal presumptions secured through trademark registration are generally given a priority date, once secured, as of the date the trademark registration application was filed. However, common law trademark rights arising prior to registration of a mark can prevail over the registration so long as they are also prior to common law rights of the mark secured by the registration. Starting to sound a little complicated? Continue reading “Dell EMC’s Confidential Use of Brand Name Not Enough to Secure Trademark Rights”

Havana Club Trademark

Florida Lawmakers Hoping Trump Will Help with Havana Club Trademark Dispute

As President Obama attempted to normalize relations with Cuba toward the end of his presidency, a byproduct was the renewal of a contested trademark registration on Havana Club by Cubaexport, an agency of the Cuban government. Florida lawmakers are now hoping that a more US-centric Trump administration can help them roll this back.
Continue reading “Florida Lawmakers Hoping Trump Will Help with Havana Club Trademark Dispute”

Wheel of Time Coming to TV

How “rights” lead to a 17 year delay in the Wheel of Time?

It’s been almost two decades since “The Wheel of Time” adaptation was put into development.  It’s been almost three decades since the first novel in the 14-book series was written.  During the development time, the rights have switched hands multiple times, from NBC, Universal to Red Eagle Entertainment. The past two years have seen the most improvement now that Sony Entertainment has partnered with Red Eagle to bring “The Wheel of Time” to television sets.

Continue reading “How “rights” lead to a 17 year delay in the Wheel of Time?”

ganjagonia trademark dispute

Patagonia Challenges Trademark Application for Ganjagonia

It’s an interesting time for marijuana related businesses. At the state level, several states have given them a green light. On the federal level, however, the light is still very much red. In states where marijuana laws have been eased, entrepreneurs have been actively developing businesses around pot culture. But these entrepreneurs run into problems with federal trademark registration because the US Patent & Trademark Office is federally regulated. Trademark examiners have typically rejected marijuana related marks. However, one Colorado based web producer has passed the federal hurdle for his trademark application on Ganjagonia – a marijuana themed web cartoon, but now faces a more traditional trademark challenge from an actual company, as the outdoor retailer Patagonia is challenging his trademark application. Continue reading “Patagonia Challenges Trademark Application for Ganjagonia”