Like many other companies, electric car manufacturer Tesla Motors is looking to expand into China. It may have to put its plans on hold though due to trademark registration problems. In 2009, an opportunistic Chinese businessman, Zhan Baosheng, filed a trademark application with the Chinese trademark office covering the mark TESLA in 12 different classes, including cars and auto parts. The trademark application was ultimately granted giving Baosheng a trademark registration for the mark TESLA. So when Tesla filed its Chinese trademark application, the application was rejected, with the Chinese trademark office citing Baosheng’s earlier trademark registration. So, for the time being, Tesla has no legal right to commercially use its TESLA mark in China, which is a big problem for the car company looking to take advantage of the exploding Chinese demand for automobiles.
The latest installment of the Batman movie franchise was a big hit with fans. It told the story of Batman attempting to thwart Bane’s plot to send Gotham City into chaos. One of the subplots of the movie was Catwoman’s effort to obtain the “Clean Slate” software to help her erase her criminal history. It turns out that this fictional software written into the movie is not so fictional and the company behind the actual Clean Slate software believed that Warner Bros. infringed on their registered trademark by using the name in the movie. This prompted the company to file a trademark infringement lawsuit against Warner Bros. But as most who go up against Batman discover, he usually comes out on top.
Chicago native, Derrick Rose, has an endorsement deal with Adidas worth $250 million over 14 years. That’s why the recent rejection of Adidas’ trademark application for their brand name Adizero is so interesting. It turns out that Adidas’ trademark application was rejected based on a likelihood of confusion with a registered trademark of a small Chicago area church. The trademark attorney for the church is asking Rose to side with the church in the dispute despite his affiliation with Adidas. This conflict of interest puts Rose in a tough situation.
You may have read our earlier blog post about Apple’s trademark troubles in Brazil. In Brazil, a company called Gradiente beat Apple to the Brazilian trademark office and registered the name iPhone long before Apple released their mega-hit mobile phone. Because Gradiente was the first to obtain a trademark registration, they are entitled to exclude Apple from using the “iphone” mark in Brazil. Since we last wrote about this story, Apple has been able to bring its considerable resources to bear and the two companies are currently in negotiations over a deal that would allow Apple to use the brand in Brazil. But just when Apple appears to be resolving that problem, a new issue has emerged for Apple’s trademark attorneys in Latin America.
That’s ogooglebar! If you’ve had recent conversations with your Swedish friends, you may have heard this term. In fact, it’s become so commonly used in Sweden that the Swedish Language Council planned to officially add it to the Swedish language. The English translation basically means ungoogleable, something that you can’t find through the use of a search engine. With our ever increasing reliance on internet searches it’s a useful term, but it is also a term that Google wants to make sure is handled with appropriate care. That’s why Google’s trademark attorneys recently contacted the Language Council asking them to reference Google’s status as a registered trademark and to change the definition from all search engines to Google specifically. This was not a vanity move by Google, but rather a move to protect their trademark registration.
Before Google came around, the only place you were likely to hear the word “android” was at a sci-fi convention. But the term has become popularized since Google branded its smartphone operating system ANDROID. Commercials and advertisements for the newest smartphones promote devices offering the latest version of Android along with a host of other features. Due to the popularity of the operating system, Android has become somewhat of a buzzword. But as it turns out, geeks and nerds weren’t the only ones using the term Android before Google and now Google will need to consult its trademark attorneys because it is facing a lawsuit for trademark infringement.
Apple Inc.’s trademark attorneys must be working overtime. In the last few months we’ve seen Apple involved in trademark issues in China, Brazil, Mexico and now at home in the United States. The most recent issue stems from Apple’s trademark application for the iPad Mini, the baby brother to the ubiquitous iPad. Apple was previously able to secure a trademark registration on iPad, but recently an examining attorney at the United States Patent and Trademark Office rejected Apple’s attempt to register IPAD MINI.
Not long ago, with plenty of fanfare and speculation, Facebook Inc. went public. Since then, Facebook has been implementing new changes to its website operation and layout. Some people like the changes more than others. One company, Timelines.com, an online scrapbooking company based in Chicago, took issue with one of the changes — the profile “timeline” element. Apparently, Timeline.com’s trademark attorney believes Facebook’s timeline infringes Timeline.com’s “timeline” brand.
We recently posted an article discussing the University of Alabama’s efforts to enforce their trademark registrations. The story involved a small bakery that makes cookies using the University’s “A” logo. The University of Alabama contracts with Collegiate Licensing Co. to police their trademark portfolio. Collegiate recently sent a cease-and-desist letter to this small bakery in Northport, Alabama. The letter ordered the bakery to stop selling products that contained the University’s trademarks. The University of Alabama has a trademark registration covering its “A” logo.
The first step to protect your brand is to obtain trademark protection by registering a trademark, but this is just the first step of an ongoing process. After acquiring a trademark registration, you must enforce it or risk infringers diluting your brand equity or unjustly profiting from it. The United States Patent and Trademark Office will not enforce your trademark registration for you. You must actively enforce your rights against infringers. A recent story posted by the San Francisco Chronicle highlights the efforts of the University of Alabama to enforce their own trademark rights.)