Category: Popular

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.

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”

black mamba trademark fight

Kobe Bryant Asserts Rights Against Black Mamba Trademark Application

Kobe Bryant was an outstanding defender on the basketball court. Now, in his post-basketball business career, he’s looking to do some defending of his “Black Mamba” brand after someone else recently filed a trademark application on the name. With only a pending trademark application of his own at the US Patent & Trademark Office, Kobe is relying on common law trademark rights to oppose the new filing. Continue reading “Kobe Bryant Asserts Rights Against Black Mamba Trademark Application”

ganjagonia trademark dispute

State Marijuana Laws Create New Trademark Issues for Pot Entrepreneurs

 

As additional states choose to ease laws on marijuana use for medicinal and recreational purposes, more and more Marijuana related business owners are cropping up. Marijuana dispensaries, along with brands peddling various marijuana strains, some backed by celebrities including Snoop Dogg and Willie Nelson, are going into business in states like California, Colorado, Oregon, and Washington. But going into the Marijuana business comes with all the challenges faced by traditional businesses, as well as some unique trademark related challenges.

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X-men

Marvel V Fox A Super Dispute

Every so often a right’s dispute will leave the realm of the courtroom and spill out into our pop-culture. This is the current case with Marvel Movies and Fox Studios. Marvel, who originally created the X-men Story Line, sold the rights to Fox and now they want them back.

In 1996 Marvel was facing financial troubles. They sold the rights to several of their comic characters to different studios. Most notably was the sale of X-Men’s rights to Fox. The sale of the rights made Marvel financially stable, and launched Marvel into the movie- making business. Over the past years, Marvel has capitalized on their movies by creating some of the highest grossing comic book movies. Only DC’s reboot of the Batman franchise is comparable.

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Amazon Wins in Federal Court

Federal Appeals Court Sides With Amazon in Trademark Case

A panel of three federal appeals judges had second thoughts recently, changing its mind on whether Amazon would have to face trial over a trademark dispute with a watchmaker. The change in course was most likely spurred by a desire to avoid re-opening the debate over the internet “initial interest confusion” doctrine. While this decision provides relief to Amazon, watchmaker Multi Time Machine (Multi Time) probably feels a little gypped.

This flip-flopping by the panel relates to the issue of “initial interest confusion” which arises from the trademark claim brought against Amazon. Multi Time claims go something like this: Amazon returns suggestions for competitors’ watches when a customer searches for a particular model of watch made by Multi Time that Amazon does not carry. By suggesting competitors’ watches, it may lead to consumers falsely assuming these other products are from or associated with Multi Time. In doing so, Amazon allegedly uses Multi Time’s own brand equity to steer customers away from Multi Time and toward competitors, thus capitalizing on the good will of Multi Time.

Initial Interest Confusion type of trademark infringement does not require a likelihood of confusion at the time goods are purchase, only that consumers are initially confused in order to get their attention leading to a sale. There is a well-known analogy to explain Initial Interest Confusion that was proffered in Brookfield v West Coast Entertainment. In that case, the court proposed a hypothetical regarding competing video stores. Blockbuster Video puts a billboard on the highway advertising a West Coast Video (its competitor) at an exit. However, there is no West Coast Video at this exit, but there is a Blockbuster Video. A consumer exits the freeway in hopes of finding a West Coast Video store, but instead finds the Blockbuster Video store. The consumer obviously sees that there is no West Coast Video store and that there is only a Blockbuster Video. The consumer decides to purchase from Blockbuster Video as a suitable replacement. Even though the there is no confusion at the time of purchase, Blockbuster is still capitalizing on West Coast Video’s trademark and misappropriating West Coast Video’s goodwill.

Multi Time challenges Amazon’s redirect of customers to competitors based off of a search for genuine Multi Time watches. Multi Time believes that Amazon should return a search indicating there are no matches instead of suggesting competitors’ products. In response, Amazon contends that there is no likelihood of consumer confusion, the keystone of trademark law, because its search results are labeled with the name and manufacturer of each item and include a picture. Allegedly, reasonable consumers who are familiar with online shopping would realize that there is no connection between the other suggested products and Multi Time’s MTM watches.

It’s interesting that the panel was so quick to reverse itself. With this flip-flopping of decisions, it’s easy to see that there is still some confusion about the correct trademark outcome here. The internet has created some new and unique trademark issues and sometimes it is a struggle to identify exactly how they should be handled. Ultimately, utilizing the likelihood of confusion standard gives good guidance to whether there really is a trademark issue or not. Would a reasonably prudent consumer be confused as to the source of the goods offered? If not, there is no likelihood of consumer confusion. That is what the panel of judges decided in this case the second time around.

Amazon isn’t the only company who has faced this type of challenge. Google and Yahoo were victorious in similar suits. With the explosion of internet keyword searches, initial interest confusion has become a hotly contested issue.

Article written by DA Johnson. Connect with DA on

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Dirty Fight Over Trademarks in Utah

Soda shops where you can order a “dirty” Diet Coke have become quite the rage in Utah as of late. Drinking a “dirty” soda may sound unappealing to the uninformed, but all “dirty” means in the soda context is the addition of flavored syrup shots (typically coconut and sometime also lime). As custom soda shops grow in popularity, one shop claims it coined the term “dirty” and with a federal trademark registration in hand, wants the other shops to stop using it.

The Utah soda flavor craze allegedly traces its roots back to St. George, Utah, where a soda shop called Swig began selling flavor shot enhanced sodas. When Swig opened for business in 2010, it quickly became a hit. Its “dirty” flavors, brightly colored straws and pebbled ice resonated with customers. In 2013, Swig looked to protect its signature brand by filing a trademark application on “dirty” in the class of “concentrates and syrups for making soft drinks.” The trademark registered in 2014.

As the business took off, others took notice. Similar soda shops began springing up in northern Utah. One in particular, Sodalicious, had (allegedly) a very familiar feel and used “dirty” to describe flavor enhancements for its drinks. It also allegedly used brightly colored straws and menu boards very reminiscent of Swig’s. This (alleged) imitation was quickly detected by Swig.

Swig’s CEO said that he tried for several months to get Sodalicious to stop using the term “dirty” to describe its drinks, stating that if Sodalicious stopped using the term, Swig would not take any further action. Apparently, Sodalicious wasn’t interested in making any changes and continued to use the term. This forced Swig to further escalate the matter.

Swig filed a lawsuit against Sodalicious alleging that Sodalicious infringed its trademark registration on “dirty” and also infringed on its trade dress, claiming that the look of Sodalcious’ shop is nearly identical to Swig’s shops, even down to the brightly colored straws and cups with bubbles on them. The look and feel of a product can be protected through trade dress, so long as the look is not a functional element of a product. If there is a likelihood of consumer confusion between the aesthetic elements of two products or services, trade dress infringement can be found. Swig believes that Sodalicous is in violation of both its trade dress and trademark protection.

This case of success breeding imitation is all too common. Copycat companies abound in most industries, particularly those with a low cost for entering the market. While it is not illegal to copy a successful business model, elements of a brand, like logos, signature names, and product design can be protected via trademark and trade dress. The lawsuit is in its early stages and could potentially settle before ever going to trial. But if you are a fan of the “dirty” soda, you will want to keep abreast of this fight.

Article written by DA Johnson. Connect with DA on

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