Category: International Trademarks

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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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.

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”

Trump Trademarks in China

Trump Trademark Rights Get Trump Bump in China

In the past, China has had somewhat of a reputation for weak protection of intellectual property rights and a large market for counterfeit products. Prominent companies, including Donald Trump’s, have long dealt with Chinese imitators creating knock-offs and using deceptive trade practices. But now it seems that Trump’s election win may be helping his trademark case in China.

While President-Elect Donald Trump’s brand is already well established with many ventures, including real estate holdings, beauty competitions, and reality TV shows, his name and brand are now becoming known to nearly everyone on the planet as he ascends to the most powerful position in American government. This wide-spread recognition may be supporting Trump’s fight over parties who have looked to capitalize on his name in China. Continue reading “Trump Trademark Rights Get Trump Bump in China”

M&M's outlawed in Sweden

Mars May be too Late to Secure M&M’s Branding Rights in Sweden

M&M’s may be loved the world over, but if Swedish people want them, they may need a new name. This news comes after the Swedish Court of Appeals ruled that the M&M’s mark causes confusion among Swedish consumers due to a traditional Swedish chocolate candy that also comes marked with the letter “M”. Mars, the manufacturer of M&M’s, will now need to change the name of the candies in Sweden, appeal the decision, or face penalties laid out by the Court of Appeals if it continues selling there.

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“Je Suis Charlie” Trademark Aftermath

Je Suis CharlieFollowing a growing trend of attempts to trademark social rallying cries, two trademark applications have been submitted on “Je Suis Charlie”. Je Suis Charlie was a common slogan of support at the rallies and in social media in reference to the Charlie Hebdo attacks in Paris. It quickly became an international statement of solidarity against violence and terrorism. Like other social movement slogans before it, trademark applications quickly followed its viral spread. But like those other slogans, the U.S. Patent and Trademark Office is unlikely to grant a trademark registration for Je Suis Charlie.

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