Pattishall IP Blog

May 20, 2014

Can California Chrome THREE-PEAT? Its Owners Sure Hope So

Filed under: Advertising, TM Registration — Tags: , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:28 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

California Chrome, the horse that won both the Kentucky Derby and the Preakness Stakes over the last three weeks, has the opportunity to be the first Triple Crown winner in 36 years if it wins the Belmont Stakes on June 7. While California Chrome flirts with history next month, its owners are securing its rights in the horse’s name to capitalize on its (potential) legacy.[1]

As ESPN.com reported this morning,[2] Steven and Carolyn Coburn and Perry and Denise Martin, who make up the horse’s ownership entity of Dumb Ass Partners, filed for the trademark CALIFORNIA CHROME, Ser. No. 86/281,678, for “[a]thletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.” According to the article, California Chrome’s owners hope to cash in on licensing deals that are likely dependent on California Chrome winning at the Belmont Stakes.

California Chrome’s owners will not be the only ones this spring hoping to cash in on an outcome dependent trademark. Pat Riley, the owner of the trademark THREEPEAT, Reg. No. 4,051,757, hopes to capitalize on the mark once again if the Miami Heat manage to repeat as NBA champions for a third straight year. [3] Riley first applied for the THREE-PEAT mark in 1988, Reg. No. 1,552,980, when his Los Angeles Lakers were on the cusp of winning three consecutive NBA championships only to be swept by the Detroit Pistons in the championship series.

While he was unable to exploit the mark in the 1980s, Riley has monetized it several times since then. For example, Riley reported earned over $300,000 in licensing revenue when the Chicago Bulls won three consecutive championships (twice) in the 1990s.[4]   Meanwhile, the New York Yankees and Los Angeles Lakers have also won three consecutive championships each, adding even more licensing revenue to Riley’s coffers.

Interestingly, Riley’s first registration for THREE-PEAT, the ’980 Registration discussed above, was cancelled in 2008 because he failed to file an acceptable declaration under Section 8 of the Trademark Act. Additionally, an individual filed a petition to cancel the ’980 Registration in 2001, arguing that the mark did not serve as a trademark and had become generic.[5] Holding that the petitioner failed to show that the mark did not function as a trademark or that the mark was generic, the Trademark Trial and Appeal Board (“TTAB”) noted that a type of athletic accomplishment in itself (i.e., winning three consecutive championships) did not necessarily indicate that the term “conveys any meaning, let alone a generic meaning, about [Riley’s] goods.” Pet. Cancel, p. 9. Additionally, the TTAB stated that the placement of Riley’s THREE-PEAT mark on t-shirts was consistent with how trademarks are generally used as a source identifier. Id. Last, the TTAB said that as long as Riley controls the nature and quality of his licensees’ goods, “the mark does not have to indicate a single physical source of the goods, but may also indicate a single, i.e., consistent, source of quality, regardless of the actual physical source or producer of the goods.” Id at 10.

While Riley’s most recent THREEPEAT mark, Reg. No. 4,051.757, was filed in 2010 under Section 2(f), there remains the question whether the mark has now become generic for the feat of winning three consecutive championships. While the petition to cancel the mark was unsuccessful in 2001, a mark can become generic over time. With more teams winning consecutive championships, and with more individuals invariably using the mark in a descriptive or generic manner for winning three consecutive championships, time will tell whether someone will contest the marks validity in the future and what will be the ultimate result.

With that said, Riley’s ability to monetize a mark that only has value when a series of exceptional events occurs in the future proves that patience really can pay off. While it may look like California Chrome’s owners’ gaze is affixed on the finish line on June 7, their foresight to file a trademark application last week demonstrates that their vision for both California Chrome and CALIFORNIA CHROME really starts when the race is over.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

 

[1] ESPN.com reports that the horse was bred for $10,500 and has now won $3.45 million on the track. See http://espn.go.com/horse-racing/triplecrown2014/story/_/id/10957336/california-chrome-owners-file-trademark-horse-name

[2] Id.

[3] As reported on this blog only July 25, 2012, there is some debate as to whether Riley or ex-Los Angeles Lake Byron Scott coined the term THREE-PEAT. Nevertheless, Riley owns the rights to the mark. See http://blog.pattishall.com/2012/07/25/who-owns-a-trademark-jeremy-lin-wins-linsanity-as-anthony-davis-fights-for-his-unibrow/

[4] http://espn.go.com/nba/story/_/id/9360787/miami-heat-owner-pat-riley-had-foresight-patent-three-peat-not-three-heat-espn-magazine

[5] Christopher Wade, Pet. Cancel No. 21,869, 2001 WL 1028372 (Trademark Tr. & App. Bd. Sept. 6, 2001).

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May 6, 2014

Doing Your Due Diligence Before Picking A Name

Filed under: Due Diligence, TM Registration — Tags: , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:04 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

Entrepreneur Magazine recently published an article about things to consider before naming your business.[1] It is a good (and short) read for anyone considering starting a company, or even for those individuals who have a company and are thinking about rebranding it under a new name or concept.

To start, consider what makes a company name so important: it must be unique, easy to spell, and nowadays, ideally, play nice with Google’s, Yahoo’s, and Bing’s be-all and end-all algorithms, among other necessaries. As the Entrepreneur article points out, several names, like Apple, Snapple, Oreo and Virgin, are fun to say and easy to spell – and they stick in consumers’ minds.

But the article fails to mention one important aspect about the “picking a name process:” entrepreneurs must do their due diligence before investing time and money in a name.[2] There is nothing worse than getting excited about the perfect name only to be sued for infringing someone else’s trademark after launch.

There are several ways to avoid this scenario. A good start is to check the United States Patent and Trademark Office (USPTO) website to see whether someone else is already using your name. The USPTO provides for both word and design mark searches. Next, conduct your own internet search. If you get several results with a name that is similar to your proposed name but covers different goods or services, you might be okay. Trademark attorneys focus on these types of risk analyses.

One of the most popular services trademark attorneys offer are clearance opinions. First, the attorney will conduct a clearance search for your proposed mark. A clearance search may be obtained from a professional search vendor and reviewed by the attorney. The professional search vendors offer the broadest coverage, including reviewing federal and state trademark registrations, business names across the country (or world if you would consider selling your goods or services abroad), similar internet and domain name references, and variations and colorable imitations of your proposed name revealed through their own proprietary databases.[3] These searches are far more comprehensive than anything you or I could do on our own. They are not cheap, but they really show just how unique and protectable your name might be. Following the search, a trademark attorney will provide you an opinion assessing whether the mark is available for use, as well as your likelihood of getting a state or federal registration.

If you plan to operate your business internationally, securing the advice of a trademark attorney is definitely the way to go, as different countries have very different trademark systems. If you don’t secure trademark rights in the countries where you want to do business, someone else might easily register your name there, and there might not be anything you could do about it.

Once you do secure your perfect company name, you should consider retaining a watch service. As the name suggests, a watch service watches federal and state trademark registrars for similar trademark applications. Getting an early start to protecting the brand you have spent so much time and money developing is imperative and will help keep the scope of your rights in your name as broad as possible.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

 

[1] As a complete disclosure, neither I nor this law firm has any connection to Entrepreneur Magazine – though I do own a subscription.

[2] An Entrepreneur Magazine article published on April 8, 2011, titled How Can I Find Out Whether a Business Name Is Already Taken? did discuss the importance of trademark searches.

[3] For example, would you think to search for the term “Fit You” if you were conducting your own trademark clearance search for your proposed new company name “U Fit”? Maybe, but maybe not. See You Fit, Inc. v. Pleasanton Fitness, LLC, 8:12-CV-1917-T-27EAJ, 2013 WL 521784 (M.D. Fla. Feb. 11, 2013).

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January 17, 2014

CrossFit Cybersquatter Gets Dealt Multiple Blows

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:52 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In CrossFit, Inc. v. Results Plus Personal Training Inc, the panel held that an unsubstantiated “consent to transfer” will not avoid an adverse ruling.  National Arbitration Claim Number: FA1305001498576 (June 28, 2013).  The domain names at issue were <crossfitagawam.com>, <crossfitansonia.com>, <crossfitbeaconfalls.com>, and many other “crossfit”-derivative .com domain names referring to different cities across the United States.

CrossFit, Inc. provided workout and gym products and services.  Its revenue mainly came from licensing its registered CROSSFIT marks and programs to affiliate gyms around the country.  Typically the affiliate would register a “crossfit” domain name that included a geographic designator, e.g., crossfitboston.com.  The Respondent, Results Plus Personal Training Inc., was a competitor of Crossfit.  It registered 113 domain names, most of which “do nothing but add the name of a famous or popular city [to] the CrossFit mark.”  Most were used for parked web pages, often with advertising hyperlinks for Respondent and other competitors.  The panel found that Respondent registered that large amount of domain names “to resell them exclusively to Complainant and its affiliates.”  It was a “bad faith endeavor to confuse Internet users into believing Complainant or its CrossFit mark is at the source of the content, all so Respondent can advance its goals to generate revenue.”

Results Plus argued that GoDaddy.com led it to believe that it could legally register and use these domain names in the manner that it did.  Although CrossFit had filed a federal court action seeking $9 million in damages, the Panel determined that it retained authority to proceed to decision.  To avoid an adverse ruling, Results Plus offered to transfer the domain names to Crossfit on the condition that Crossfit pay Results Plus $1,300, which Results Plus argued was “far less” than it had spent maintaining the 113 domain names.

The Panel observed that an effective consent to transfer does not ordinarily arise when the transfer is subject to the condition precedent of a markholder’s payment of fees. The Panel found that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel.  The Panel observed that this “consent-to-transfer” approach was one way cybersquatters tried to avoid adverse holdings, but it normally was ineffective, especially when the alleged “consent” required the transfer of money to the respondent.  The Panel ultimately found that Results Plus did not have any legitimate interest in the disputed domain names and had acted in bad faith, and ordered the domain names transferred to Cross Fit.

This case highlights that trademark owners can bring an action to transfer  multiple infringing domain names from a single cybersquatter under the Uniform Domain-Name Dispute Resolution Policy (commonly referred to as “UDRP”).  The UDRP sets forth the grounds on which arbitrators base their decisions, but there are several different dispute resolution forums from which to choose, all with their own local rules, procedures and leanings.  While I do not practice CrossFit myself, I know a good 1-2 punch when I see one – and, for now, Results Plus is down for the count.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

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January 15, 2014

Ninth Circuit Declares GoDaddy Not Contributorily Liable For Cybersquatting

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:08 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In December, the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), does not support a cause of action for contributory cybersquatting.  Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 548 (9th Cir. 2013).[1]

Petrolium Nasional Berhad (Petronas), a major oil and gas company with its headquarters in Kuala Lumpur, Malaysia, owns the trademark PETRONAS.  In 2009, Petronas discovered that a third party had registered the domain names “petronastower.net” and “petronastowers.net.”  The third party then used GoDaddy’s domain name forwarding services to forward visitors of the two domain names to a pornographic web site. GoDaddy took no action against the alleged cybersquatting, claiming that (1) it did not host the site; and (2) it was prevented by the Uniform Domain Name Dispute Resolution Policy (“UDRP”) from participating in trademark disputes regarding domain name ownership.  Id. at 548.

Petronas sued GoDaddy in the United States District Court for the Northern District of California on a number of theories, including cybersquatting under 15 U.S.C. § 1125(d), and contributory cybersquatting. Following limited discovery, the district court granted summary judgment in favor of GoDaddy. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 897 F. Supp. 2d 856 (N.D. Cal. 2012) aff’d, 737 F.3d 546 (9th Cir. 2013).  Petronas appealed only with respect to its claim of contributory cybersquatting.

The Ninth Circuit defined cybersquatting as “registering a domain name associated with a protected trademark either to ransom the domain name to the mark holder or to divert business from the mark holder.” Petroliam, 737 F.3d at 550 n. 3 (citing Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir.2005)).  Under the ACPA, a person may be civilly liable “if … that person has a bad faith intent to profit from that mark … and registers, traffics in, or uses a [protected] domain name.” 15 U.S.C. § 1125(d)(1)(A). Petronas argued that the ACPA provided for a cause of action for contributory cybersquatting, claiming that “Congress intended to incorporate common law principles of secondary liability into the Act by legislating against the backdrop of the common law of trademark infringement and by placing the ACPA within the Lanham Act.”  Petroliam, 737 F.3d at 550.  The Ninth Circuit disagreed.

Beginning its analysis with the text of the ACPA, the Ninth Circuit noted that the ACPA imposes civil liability for cybersquatting on persons that “register[ ], traffic[ ] in, or use[ ] a domain name” with the “bad faith intent to profit” from that protected mark. 15 U.S.C. § 1125(d)(1)(A). The plain language of the statute thus prohibits the act of cybersquatting, but limits when a person can be considered to be a cybersquatter. Id.  Taking notice that the statute makes no express provision for secondary liability, the Ninth Circuit held that “[e]xtending liability to registrars or other third parties who are not cybersquatters, but whose actions may have the effect of aiding such cybersquatting, would expand the range of conduct prohibited by the statute from a bad faith intent to cybersquat on a trademark to the mere maintenance of a domain name by a registrar, with or without a bad faith intent to profit.” Petroliam, 737 F.3d at 550-51.

Petronas then argued that Congress incorporated the common law of trademark, including contributory infringement, into the ACPA, citing a number of district courts decisions that relied on that reasoning in finding a cause of action for contributory cybersquatting. See Verizon Cal., Inc. v. Above.com Pty Ltd., 881 F.Supp.2d 1173, 1176–79 (C.D.Cal.2011); Microsoft Corp. v. Shah, No. 10–0653, 2011 WL 108954, at *1–3 (W.D.Wash. Jan. 12, 2011); Solid Host, NL v. Namecheap, Inc., 652 F.Supp.2d 1092, 1111–12 (C.D.Cal.2009); Ford Motor Co. v. Greatdomains.com, Inc., 177 F.Supp.2d 635, 646–47 (E.D.Mich.2001).[2]  Again, the Ninth Circuit was not persuaded, holding that the “circumstances surrounding the enactment of the ACPA [. . . ] do not support the inference that Congress intended to incorporate theories of secondary liability into that Act.”  Distinguishing between the Lanham Act’s codification of unfair competition and common law trademark infringement and the ACPA, the Ninth Circuit stated that claims under traditional trademark law and the ACPA have distinct elements. Petroliam, 737 F.3d at 552  (for example, under the ACPA a mark holder must prove “bad faith,” which is not a requirement under traditional trademark infringement claims, and cybersquatting liability, unlike traditional trademark infringement, does not require commercial use of a domain name).[3]  As a consequence, the Ninth Circuit held that the ACPA simply created a new statutory cause of action to address the new cybersquatting problem and that imposing secondary liability on domain name registrars would unnecessarily expand the scope of the ACPA.

The Ninth Circuit’s decision was not surprising.  The purpose of the ACPA and the UDRP is to provide trademark owners with a remedy against those actively using their trademarks in “bad faith.”  As a domain name forwarding provider, GoDaddy simply did not meet the explicit definition of a “cybersquatter.”  Consequently, trademark owners must use the tools the ACPA and the UDRP provide to go after those the ACPA defines as liable, that is, the cybersquatters themselves.[4]

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.


[2] The Ninth Circuit commented that some of these district courts that recognized a cause of action for contributory liability required that a plaintiff show “exceptional circumstances” in order to hold a registrar liable under that theory. See Above.com Pty Ltd., 881 F.Supp.2d at 1178; Shah, 2011 WL 108954, at *2; Greatdomains.com, Inc., 177 F.Supp.2d at 647. The Ninth Circuit noted that the “exceptional circumstances” test has no basis in either the Act, or in the common law of trademark. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 553 (9th Cir. 2013).  Rather than attempt to cabin a judicially discovered cause of action for contributory cybersquatting with a limitation created out of whole cloth, the Ninth Circuit explicitly declined to recognize such a cause of action in the first place.  Id.

[3] As a practical point, the Ninth Circuit noted that GoDaddy, a registrar holding over 50 million domain names, would have to presumably analyze its customer’s subjective intent with respect to each domain name, using the nine factor statutory test outlined in 15 U.S.C. § 1125(d)(1)(B).  Moreover, domain name service providers would then be forced to inject themselves into trademark and domain name disputes. which is contrary to the purpose of the ACPA and the UDRP. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 549-54 (9th Cir. 2013).

[4] UDRP proceedings are a cost-effective means to protect your trademark online and to keep third parties from diverting people from your legitimate websites and siphoning off ad revenue.

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January 10, 2014

Kanye West Sends Cease and Desist Letter to Stop New COINYE WEST Virtual Currency

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:01 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

Whether you are in the Yeezus camp or the My Beautiful Dark Twisted Fantasy camp, or even if either of those references mean nothing to you, you might still be interested to know that a new currency is in development – in a few days we will all be able to own some COINYE WEST.  Or will we?

As the Wall Street Journal first reported, Kanye West has tried to stop seven anonymous coders behind a new virtual currency called COINYE WEST, similar to bitcoin.  Not surprisingly, Kanye West, by and through his attorneys, has claimed trademark infringement, unfair competition, cyberpiracy and dilution.  You can read the cease and desist letter here.  While the company has changed its domain name from coinyewest.com to coinyeco.in, the coders launched their site on January 7.

West has built a music empire on his KANYE WEST brand, a brand that, according to West’s interview with BBC Radio 1, is the most influential in the world.  As if being the “number one rock star on the planet” was not enough, West’s “I am a God” statement truly makes him a being to reckon with.

While West might be a bit high and mighty (pun intended), he does understand the importance of protecting his brand.  This situation highlights the cross section between trademark rights and the new and evolving internet frontier.  First it was domain names, then came AdWords, and now crypto currency.  While COINYE WEST might face an uphill battle if the case proceeds to court, similar disputes are certain to arise as new technologies develop.  At Pattishall, we strive to stay on the forefront of emerging technologies.  And, while I may not be in the market for any COINYE in the near future, I will be ready to purchase some KARDASH-CASH if Kim Kardashian ever makes any available.[1]

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.


[1] KARDASH-CASH is not a real trademark, nor is it a real currency.  I just made it up for fun.

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January 8, 2014

Who is Johnny Football?

Filed under: Licensing, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:28 am

Paul Borovay F LRBy Paul A. Borovay, Associate

Unless you have turned a blind eye to all sports over the last two years, there is a good chance that you have heard of Johnny Manzeil, the talented (and polarizing) quarterback from Texas A&M.   Manzeil was the first freshman football player to win the Heisman trophy, and he won it in style.  During his rise to the college football elite, he, like many athletes before him, received a nickname from the media: Johnny Football.  While NCAA amateurism rules kept Manzeil from profiting from his name and likeness during his collegiate sports career, those same rules did not keep the media and other private companies from making money on selling merchandise bearing the mark JOHNNY FOOTBALL.

In November 2012,  Kenneth R. Reynolds Family Investments (“Reynolds Investments”) filed an intent to use trademark application for JOHNNY FOOTBALL, which covered electronic games, athletic apparel and footballs.  Ser. No. 85/769,563.  Not surprisingly, Manzeil, submitted a Letter of Protest against Reynolds Investments’ application, claiming that JOHNNY FOOTBALL identifies a particular living individual and Reynolds Investments’ application failed to include Manzeil’s consent.

After receiving the Letter of Protest, the Examiner for this trademark application rescinded his approval of the trademark application and, on August 16, 2013, requested that Reynolds Investments submit a  the written consent of Mr. Manzeil to use his “name.”  The consent requirement includes any pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a). Reynolds Investments has until February 16, 2014 to respond.

This situation is similar to that of Anthony Davis, the Kentucky basketball star and the NBA’s number one draft pick in 2012.  There, BlueZone, LLC, a local clothing store in Lexington, Kentucky, began selling T-Shirts and jerseys with the mark FEAR THE BROW.  The “brow” for which people should fear was actually Davis’ unibrow – a distinguishing feature that Davis wholeheartedly embraced.  To secure its rights in the mark, BlueZone applied for the trademark FEAR THE BROW.  Ser. No. 85/643,417.  Similarly, Davis contested the mark and filed his application for FEAR THE BROW.  Ser. No. 85/643,417.  BlueZone ultimately abandoned its application.

Like Davis’ situation, Manzeil technically remains second in priority for the mark JOHNNY FOOTBALL because he filed his trademark application in February 2013.    However, without Manzeil’s consent, Reynolds Investments will likely have no choice but to abandon its application, giving Johnny Football himself the right to finally make money off of JOHNNY FOOTBALL the trademark.

Davis and Manzeil, while stars in their own right, highlight a revenue stream that many athletes have yet to fully exploit.  As media licensing agreements and mobile advertising dollars increase exponentially, so to can athletes’ endorsements contracts.  If athletes protect their brands and build them properly, these endorsements will continue long after his or her professional career is over.  Athletes, now more than ever, need to actively manage their brands, which will ultimately ensure that Johnny Football profits from being “the” JOHNNY FOOTBALL and that Anthony Davis reaps the rewards of keeping the best kempt unibrow in the NBA.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

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November 22, 2013

“THANKSGIVUKKAH” Convergence of Thanksgiving and Hanukkah—The Latest Pop Culture Trademark Sensation

Filed under: TM Registration, Trademark (General), Uncategorized — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:54 am

By Belinda Scrimenti, Partner

Many media outlets are asking:  Where is Adam Sandler when you need him?[1]  His well-known Hanukkah Song is due for a new verse that celebrates a hot new holiday “trademark.”

Popular culture events frequently are reflected in trademark filings.  The latest:  “THANKSGIVUKKAH” – This year’s rare convergence of Thanksgiving with the first full day of Hanukkah.   According to reports, the last time the overlap occurred was in 1888, and physicist Jonathan Mizrahi has calculated that the event will not occur for another 79,000 years.[2]

Indeed, this “once-in-eternity” event has brought a “cornucopia of money-making” opportunities as described by USA Today.[3]  And where there’s a money-making opportunity, there must be a trademark.

Reportedly, the “Thanksgivukkah” term was coined by a Boston resident, Dana Gitell,[4] who had the foresight to protect the mark by obtaining trademark registrations for the term, in Class 16 for greeting cards and other party goods, and in Class 25 for t-shirts and baby garments.  The applications, based on a stated first use date of December 3, 2012, were filed one day later, but nearly a year before the 2013 holiday.[5]

In another oft-reported story, a 9-year-old New York boy, Asher Weintraub, “invented” the “Menurkey” – a turkey-shaped menorah – and with his parents’ help, raised more than $48,000 on Kickstarter for the product.[6]   They have already filed for a federal trademark registration.[7]

Anxious to get in on the “Thanksgivukkah” trademark action?  Despite many media references to “Gobble tov,” as of this writing nobody has sought to register a trademark for it.  Also available:  “Hanu-Giving” and “Challahday Greetings,” the latter of which was first registered back in 1985 and has long since expired.

The trademark office is often a reflection of popular culture, but not surprisingly, many of these marks either never make it to registration, or are quickly forgotten and abandoned.  Government and historical events often spawn these filings.   For example, seven applications have been filed that incorporate the term “Obamacare” – mostly related to insurance services.  Three have already been abandoned, and four have pending office actions.  Nevertheless, this volume of filings pales in comparison to the adoption of other government catchphrases.

Remember the Iraq War’s “Shock & Awe”?  Within hours and days following the initial attack on Baghdad, applications for “SHOCK & AWE” in various formulations started flooding in to the USPTO.  Not counting applications for other marks incorporating the terms, 36 “SHOCK & AWE” applications were filed for everything from golf clubs to pesticides, lingerie to fireworks, and even “infant action crib toys.”  Of that, only four were eventually registered and remain on the register today.

During the same period, the ire over France’s lackluster support of the United States in the Iraq War led to another pop culture trademark spat.  French fries became “Freedom Fries.”   Within 60 days of the controversy, six companies sought to obtain a trademark registration for the term, and one tried two years later.  The first user of the mark ultimately prevailed in the registration battle, but years later, allowed the registration to go abandoned for failure to file the Section 8 maintenance declaration.[8]

The king of pop culture filings, however, occurred at the 2000 year millennium.  USPTO records reflect over 320 filings for trademarks incorporating the term “Y2K.”  Of that number, only 27 ultimately registered.  Today, only one registration remains on the register – for business consulting and information services.[9]

In contrast, the USPTO records may well be a good barometer of what is highly unpopular in the United States – as no one sought to register “FISCAL CLIFF,” “DEBT CEILING” or “GOVERNMENT SHUTDOWN”!

With no threats of the fiscal cliff, debt ceiling negotiations or a government shutdown hanging over the month of November, that brings us back to Thanksgiving.  A far more enjoyable government event remains free of trademark interlopers – no one has applied to register “TURKEY PARDON.”

*          *          *

Belinda Scrimenti is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Belinda’s practice focuses on litigation in trademark, copyright, trade dress, and Internet law, as well as trademark prosecution and counseling.  She has worked on numerous matters relating to the registration, protection, and enforcement of trademarks, and litigated in over 40 U.S. federal district courts.

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[1] See, e.g., http://www.miamiherald.com/2013/11/12/3748399/this-year-thanksgiving-hanukkah.html; http://mainstreetmusingsblog.com/2013/11/04/thanksgiving-and-hanukkah-makes-thanksgivukkah/; http://www.kansascity.com/2013/11/11/4614193/this-year-thanksgiving-hanukkah.html
[2]
http://jonathanmizrahi.blogspot.com/2013/01/hanukkah-and-thanksgiving-once-in.html; see http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah
[3] http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/
[4] http://en.wikipedia.org/wiki/Thanksgivukkah#cite_note-22
[5] See U.S. Registration Nos. 4,371,793 and 4,379,381.
[6] http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah; http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/; http://online.wsj.com/news/articles/SB10001424052702304176904579112022682954300
[7] See U.S. Application Serial No. 85/956314.
[8] See U.S. Registration No. 3,220,999
[9] See U.S. Registration No. 3,677,414

April 11, 2013

Trademark Board Confirms That New York Yankees Are Evil

Filed under: TM Registration — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:38 pm

By Janet Marvel, Partner

As a life-long Chicago Cubs fan, I am pleased to report that the Trademark Trial and Appeal Board (TTAB) has held that the New York Yankees are known as the “Evil Empire” and therefore, a third party using that term would create confusion as to source or sponsorship.

In New York Yankees Partnership v. Evil Enterprises, Inc., 2013 WL 1305332 (TTAB February 8, 2013) (non-precedential), Evil Enterprises, Inc., the owner of a web site selling Yankees-related products, filed an application for BASEBALLS EVIL EMPIRE.  The Yankees opposed, claiming that the team owned the name, and Evil Enterprises’ mark would confuse the public.  The Yankees also alleged that BASEBALLS EVIL EMPIRE created a false suggestion of connection between the applicant and the Yankees, and that the mark disparaged the Yankees.

The Yankees first had to prove that they owned the mark EVIL EMPIRE, even though they had never used it themselves.  Typically, the first party to use a mark is held to be the owner, but the Board held that the Yankees were entitled to a little-used exception, namely, that “‘even if a company itself has not made use of a term, it may have a ‘protectable property right in the term’ if the public has come to associate the term with the company or its goods or services.’” Other companies have employed this exception.  IBM was held to own BIG BLUE, Coca-Cola owned COKE, and Harley-Davidson owned HOG under this theory.  Note that some companies have now adopted their nicknames and own registrations for them.

The Yankees evidence that it owned EVIL EMPIRE was Legion (pun intended).  The Board had no trouble agreeing that the Yankees owned the mark and that the applicant’s mark both was likely to confuse the public, and likely to create a false association between the Yankees and the applicant.

The Board rejected the Yankees’ argument that EVIL EMPIRE disparaged the team, noting at one point in the opinion that the Yankees used Star Wars music (presumably the Darth Vader theme) during games.  In a particularly cogent comment, the Board stated “[H]aving succumbed to the lure of the dark side, opposer will not now be heard to complain about the judgment of those who prefer the comfort of the light.”

The takeaways from this case are (1) the Yankees are evil and the Cubs, by implication, are loveable, and (2) that if a company is known by a famous nickname, it may be able to claim ownership in it, even if it has not itself used the nickname in commerce.  If a company finds itself yoked with a nickname, it should consider adopting and using the name, thereby making misuses of the name easier to curtail.

*     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Sixth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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August 8, 2012

What Do Kim Kardashian And Your Random Facebook Friend Have in Common? A Right of Publicity That May Be Worth Money

Filed under: Internet, Litigation, Right of Publicity, Social Media — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:44 pm

By Meg C. Lenahan, Summer Associate

Use Facebook? If so, did you know that your right of publicity has been at the center of litigation for over a year?

In March 2011, a class action suit, Fraley v. Facebook, Inc., was filed on behalf of users featured in Facebook’s Sponsored Stories.[1] Sponsored Stories create customized paid advertisements, starring Facebook’s own users based their activity on the site. For example, if your friend Bucky “likes” Rosetta Stone, you might see his profile picture underneath the Rosetta Stone logo on the right side of the page—the portion of the site where advertisements appear.  See below.[2]

Mark Zuckerberg, Facebook founder and CEO, described the feature—which originally gave users a choice to opt out (rather than opt in)—as a “trusted referral” and “the Holy Grail of advertising.”[3] In their complaint, the named plaintiffs in Fraley instead described it as a violation of their publicity rights.[4]

Governed by state law, the right of publicity is an intellectual property right that protects against the unauthorized use of an individual’s identity for commercial purposes and grants that individual the exclusive right to control and profit from commercial use of his or her identity.[5] This means, for example, that Olympic gold medalist Ryan Lochte has the exclusive right to control and profit from any sales of custom-made American flag grills[6] using his image or that Kim Kardashian has the exclusive right to control and profit from use of her name to sell perfume. Even your friend Bucky would have an exclusive right to control and profit from use of his identity in connection with Rosetta Stone advertisements. That is, of course, unless Bucky licensed or transferred his right of publicity to someone else—someone like Facebook. (more…)

July 25, 2012

Who owns a trademark? Jeremy Lin wins Linsanity, as Anthony Davis fights for his unibrow.

Filed under: Licensing, Right of Publicity, TM Registration — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:38 am

By Paul A. Borovay, Summer Associate

THREE-PEAT is a well-known term that refers to a sports team’s third consecutive championship.[1] Byron Scott, an ex-Los Angeles Laker, coined the term after his team won its second consecutive NBA championship in 1988.[2] Unfortunately, Scott could not profit from licensing the term to apparel companies, advertising agencies, or sports teams. Why? Scott did not try to establish rights in the term THREE-PEAT, either through registration or use. Scott likely did not see the value in trademark licensing at the time, but his coach, Pat Riley, saw an opportunity and obtained a trademark registration for the term in November 1988. Even though Scott coined the term “Three-peat,” Riley is the one that has been earning royalties from use of the trademark.

The arena of sports provides a ripe field for coining catchphrases such as “three-peat,” as well as terms that incorporate the names and likenesses of the superstar athletes themselves. Understanding who owns a trademark that incorporates the name or likeness of one of these individuals requires understanding the basics of two distinct bodies of law: trademark and the right of publicity.

Celebrities can obtain trademark rights for catchphrases associated with them by using the marks in commerce in connection with a specific good or service. Celebrities can also obtain state registrations for their marks, or simply own common law rights without a registration after using the marks in commerce. Filing for a registration with the United States Patent and Trademark Office (USPTO) is important and will often trump later applications, except for a few exceptions that are discussed later in this article.

Under the protections afforded through state right of publicity statutes, a celebrity is protected against commercial loss caused when someone appropriates their name or likeness. The celebrity does not have to have used the catchphrase in commerce, nor would the celebrity have to use the catchphrase in the future, as the right of publicity protects celebrities’ entire persona from commercial exploitation. For example, Michael Jordan would have a right of publicity claim against a car wash company that used his photograph to promote its business. While the photograph may not be protected under trademark law, the right of publicity prohibits any unauthorized commercial exploitation of a person’s name or likeness.

Two recent trademarks surrounding basketball players Jeremy Lin and Anthony Davis illustrate the delicate balance between trademark law, the right of publicity, and the person who coins the catchphrase’s rights to his or her creation. (more…)

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