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 https://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 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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April 25, 2013

The FTC Issues Revised Guidance for Mobile Device and Social Media Advertising Claims

Filed under: Advertising, Social Media — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:33 pm

PB LRby Phillip Barengolts, Partner

On March 12, 2013, the Federal Trade Commission issued revisions to its digital advertising guidelines, “.com Disclosures: How to Make Effective Disclosures in Digital Advertising” (the “Guides”).[1]  The Guides do not break new ground, but they provide advertisers with valuable examples of compliant disclosures that qualify advertising claims appearing on mobile devices, on social media such as Twitter and Facebook, and through any other non-traditional platform.

The Guides highlight the FTC’s fundamental belief about advertising claims: the medium does not matter; the advertising claim must be true and not misleading from the viewpoint of a reasonable consumer or else it violates Section 5 of the FTC Act.[2]

Disclosures that qualify an advertising claim must be clear and conspicuous – which can be difficult when dealing with social media or mobile devices due to space constraints.  The FTC’s revised Guides helpfully explain that an advertiser must place a disclosure as close as possible to the qualified claim and must communicate the disclosure in a manner that a consumer is likely to notice and understand.

What if a platform does not provide an opportunity for an adequate disclosure (e.g., Twitter)?  The FTC is clear: don’t use the platform or modify the claim for that platform so that a disclosure is unnecessary.  The Guides do have some detailed suggestions, including:

  • If a consumer has to scroll to view a disclosure, then the disclosure should be unavoidable;
  • Linking to the text of a disclose is permissible, but not if the disclosure is integral to the claim or inseparable from it;
  • Don’t use pop-ups because many browsers block them and most users ignore them;
  • Disclosures should be made before a user clicks “add to cart” or “order now”;
  • If the advertised product is available through outlets other than the advertiser, for example, at an online or brick-and-mortar retailer, the disclosure must be in the ad itself; and
  • for Tweets, the advertiser should use clear terms such as “Ad” or “Sponsored” at the beginning of the Tweet.

The most useful part of the Guides for advertisers are the many examples of compliant and non-compliant disclosures.  Just to highlight a few:

  • the advertiser should optimize its website for mobile devices to ensure that users zooming on a phone will not miss a disclosure;
  • hyperlink disclosures should be right next to the claim they modify (if they can be used at all); and
  • Tweets should include the necessary disclosure not link to it.

Advertisers must be aware of the impact of their claims, intentional or unintentional, and use proper disclosures – suitable to every platform on which the claim will be seen by a consumer –  to qualify any potentially misleading claims.  The Guides provide the FTC’s position on the adequacy of a disclosure to avoid enforcement action.  Of course, advertisers should consult their advertising review counsel to ensure compliance with the Guides and other advertising rules and regulations.

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Phillip Barengolts 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, false advertising and unfair competition litigation, 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.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, advertising and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation: Forms and Analysis, published by Oxford University Press.


[1] The entire 53-page Guidelines can be found here: http://www.ftc.gov/os/2013/03/130312dotcomdisclosures.pdf.

[2] It should be noted that the Guides, like all other FTC guide, are not laws, but if a company fails to comply, the FTC “might bring an enforcement action alleging an unfair or deceptive practice.”

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February 16, 2010

Defamatory "Tweet" Complaint Dismissed

Filed under: First Amendment, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:43 pm

By Alexis Payne, Esq.

On January 27, 2010, the Circuit Court of Cook County dismissed a property manager’s defamation claim against a disgruntled tenant over a Twitter post.  The tenant, Amanda Bonnen, posted the following “tweet”[1] on Twitter to vent her frustration with Horizon Realty, her property manager: “Who said sleeping in a moldy apartment was bad for you?  Horizon realty thinks it’s okay.”  Horizon Realty alleged it sustained $50,000 in damages as a result of the disparaging post, despite the fact that Ms. Bonnen’s Twitter account only had twenty followers.[2]

Ms. Bonnen filed a motion to dismiss the case, contending that her tweet statement was not a verifiable fact and instead was merely her opinion.  In an unpublished opinion, Judge Diane Larson agreed, finding that “the tweet was non-actionable as a matter of law,” and dismissed the complaint with prejudice. (more…)

November 6, 2009

Online Service Provider’s Ownership of User Content Held Not to Eviscerate CDA Immunity

Filed under: First Amendment, Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:37 pm

by Ian J. Block, Trademark Attorney

Online service providers that claim ownership of user-generated content can breathe easier because a court recently confirmed the broad scope of immunity available under the Communications Decency Act of 1996 (“CDA”).  In Finkel v. Facebook, Inc., 2009 N.Y. Slip Op. 32248 (N.Y. Sup. Ct. Sept. 15, 2009), a New York state court held social-networking giant Facebook immune from defamation liability by virtue of the CDA.  The court rejected plaintiff’s argument that CDA immunity should not apply because Facebook’s terms of service claim ownership of the content created by its users.

The CDA Immunizes Online Service Providers from Liability for Content Created by Third Parties

The “Good Samaritan Immunity” provision of the CDA, 47 U.S.C. § 230(c), grants online service providers immunity from liability for content found on, or taken down from, their networks.  Immunity here is sweeping, insulating service providers—such as Facebook, Craigslist, Twitter, and others—from liability created by third-party (i.e., user) content.  The statute explains that: “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”  Id.  The statute’s grant of immunity explicitly preempts contrary state laws, such as state defamation and invasion of privacy claims.  See 42 U.S.C. § 230(d)(3). (more…)

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