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.
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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.
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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.
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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:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. . .”

Simon Tam formed an Asian-American dance-rock band The Slants. The band’s name was allegedly chosen as a way to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. However, when Tam filed an application with the United States Patent and Trademark Office to register THE SLANTS as a trademark, registration was refused on the alleged basis that the mark is disparaging. According to the examining trademark attorney, THE SLANTS is disparaging because the “likely meaning of “THE SLANTS” [is] a negative term regarding the shape of the eyes of certain persons of Asian descent.”

Tam argued in response that “[f]undamentally, Applicant’s response is that in contrast to all disparagement-based refusals to register cited by the Examining Attorney, the applied-for mark “THE SLANTS” has meanings other than the disparaging meaning that is the Examining Attorney deemed “likely,” the word “slant” being a common English word.”

In the end, the examining trademark attorney, obviously, did not agree. This case has a lengthy history, but there were several back-and-forth exchanges between the examining attorney and Tam’s counsel. After a final refusal was issued by the examining attorney, Tam appealed to the U.S. Trademark Trial and Appeal Board (TTAB). But the TTAB affirmed the examining attorney, and the TTAB decision was also appealed to the U.S. Court of Appeals for the Federal Circuit. However, in a surprising turn of events, an en banc Federal Circuit found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.

On further appeal, the U.S. Supreme Court ruled 8-0 in favor of Tam’s right to register his mark THE SLANTS. Arguments in support of the disparagement clause suggested that it “encourage[es] racial tolerance and protect[s] the privacy and welfare of individuals.” Judge Alito responded that:

“But no matter how the point is phrased, its unmistakable thrust is this: The Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

The holding in Matal v. Tam will have a significant impact on trademark prosecution practice before the USPTO. As noted above, it will also have a significant impact on the series of cases seeking to invalidate trademark registrations for the REDSKINS mark held by the well-known NFL professional football team. In view of the Supreme Court decision, one would expect that the REDSKINS NFL football team should prevail in preserving its registrations for the REDSKINS 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?

This gets even more complicated when one considers issues relating to the geographic scope of common law rights and concurrent use. For example, if a trademark owner has senior rights in a trademark but has only established use in a certain geographic area, the trademark rights may be limited to that geographic area under common law. If the trademark owner secures a federal registration for the mark, then by virtue of the registration it will also receive a legal presumption that those rights extend throughout the entire geographic region of the United States. If no registration is secured, however, then a subsequent junior user of the mark who registers the same mark in the same class may be able to secure rights in all other geographic regions of the United States and restrict the senior user to the limited geographic region established by its common law rights. The extent of the prior user’s trademark rights can depend on the amount of actual use in commerce.

Dell EMC was recently reminded that they type of use matters when it comes to trademark rights. Not only does the geographic scope matter, but how public and notorious your use of the mark is matters. In 2015, EMC, a data storage company later acquired by Dell, started describing its new product as “Unity” in over 80 presentations to up to 100 customers, partners, and potential customers. EMC began shipping beta versions of its Unity product as well. The kicker, though, is that all of this activity was done under confidentiality agreements.

However, despite the confidentiality agreements, a Nexsan employee inadvertently overheard discussions at a bar about EMC’s plans for a new “Unity” product. A few days later, Nexsan filed two trademark applications with the USPTO for the UNITY mark. These were “intent-to-use” applications – meaning Nexsan had not yet used the UNITY mark. Once Nexsan did start using the UNITY mark, EMC’s attorneys sent threatening letters claiming Nexsan needed to cease and desist its use of UNITY. So, Nexsan sued EMC.

Probably to the surprise of EMC, the court held that “EMC has not carried its burden to establish prior use, and thus Nexsan has priority to the “Unity” mark based on its intent-to-use applications.” So, even though EMC’s first use of the UNITY mark pre-dated Nexsan’s first use of the UNITY mark, and even though EMC’s first use of the UNITY mark predated Nexsan’s filing of its “intent-to-use” trademark applications, Nexsan prevailed.

Interestingly enough, had EMC simply filed a single intent-to-use trademark application for UNITY before doing all of its presentation on the new product, it could have quickly and easily secured its senior rights and would have avoided the legal action or at least would have more likely prevailed in the case. This is a good example of why early trademark filings can be advantageous and worth the relatively small investment. Trademark law can be tricky. If you have trademarks you haven’t registered, strongly consider retaining a good trademark attorney to secure registrations.

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.

The Havana Club trademark has a long and complicated history. At its heart, Havana Club is a valuable rum brand. The trademark has been registered since the mid-1970s in the US by Cubaexport, which is run by the Cuban government. Control of the brand in the US has been disputed however, by the popular rum manufacturer, Bacardi. Bacardi claims that it acquired the Havana Club brand from the Archebala family in Cuba in 1997 and that any rights to the brand obtained by the Cuban government were obtained illegitimately through confiscation. Bacardi claims that the Cuban government illegally confiscated the Archebala rum business, and the Havana Club brand, after Fidel Castro took power in 1959. Bacardi wants the US government to strip Cubaexport of its trademark registration and grant the rights to Bacardi.

After the Obama administration pushed for Cuban normalization, Cubaexport was able to renew its trademark registration on Havana Club in January of 2016, much to the dismay of Bacardi. Now, Florida lawmakers are pushing to get the trademark rights for Bacardi. 25 Florida Congressional representatives issued a letter to the departments of State and Treasury regarding their 2016 decision asking them to revise it and reexamine the Omnibus Appropriation Acts of 1998, which stipulates that the Office for Foreign Assets Control should investigate whether the intellectual property was fraudulently obtained by confiscation. The State Department argues that its decision to grant Cubaexport a license to renew its trademark registration fell in line with the new Cuban foreign policy under President Obama.

It will be interesting to see how the Trump Administration will deal with this political trademark issue. The Trump message has been America and American businesses first. This Havana Club trademark issue will be a definitive measure to see where the Trump White House stands.

The Havana Club trademark dispute is another example of the intricacies of securing trademark rights in a global economy. If you need assistance securing your trademark rights or have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let our experience protect you.

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.

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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”

Hasbro Play Doh Trademark

Hasbro Seeking Trademark Protection on Distinctive Play-Doh Scent

Few smells can transport someone back to childhood like the distinctive scent of opening a can of Play-Doh. The unique fragrance, in use since 1955, is a clear signal that you are about to play with the official Hasbro modeling clay. After more than 60 years of production, Hasbro is now taking steps to make sure that the scent remains a clear indication that you have official Play-Doh and not some other imitator. That’s why Hasbro recently filed for federal trademark protection on the Play-Doh smell.
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Adidas Puma Trademark Dispute

Adidas and Puma Tangle over Use of Stripes on Soccer Cleats

Adidas and Puma share a long and entangled history. In the late 1940s, the two companies were started by German brothers Adolf (Adi) Dassler and Rudolph Dassler after a family feud led the brothers to part ways. Adidas was registered on August 18, 1949 by Adi, following a family feud at the Gebrüder Dassler Schuhfabrik company between him and his older brother Rudolf. Rudolf established Puma before Adi established Adidas. The companies quickly became business rivals. To this day, the companies are still headquartered in the same German city of Herzogenaurach and continue as rivals. This familiar history is behind Adidas assertion in a recently filed a trademark infringement suit against Puma that the alleged trademark infringement shouldn’t be seen as innocent. Continue reading “Adidas and Puma Tangle over Use of Stripes on Soccer Cleats”