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Annus Mirabilis? Year in Review: Trademarks Edition

Posted by: Jerome McDonnell and Nicole Briggs on Wednesday, January 9 2013 09:13 AM

Nothing makes us happier than when trademarks make the headlines, and 2012 did not disappoint. While intellectual property is a serious subject, here we present some of the more sensational trademark news items from the past year.

Beyonce and Jay-Z

Blue Ivy Carter: My kid is a celebrity!

Just a few days after baby Blue Ivy Carter was born in January, celebrity parents Jay-Z and Beyoncé were tossed a curve ball when Joseph Mbeh filed a trademark application for “Blue Ivy Carter NYC.” The USPTO denied the application due to likelihood of confusion and false connection. On November 27, 2012, the famous couple’s own trademark application for Blue Ivy Carter was published in the official Trademark Gazette. If all goes well, the couple will own rights to their daughter’s name. Kim Kardashian and Kanye West should take note.

Linsanity: Whose name is it anyway?

Early in 2012 Jeremy Lin had the world in a frenzy over his savvy basketball moves. At the USPTO there was also a frenzy over the rights to "Linsanity." With a pending application, Jeremy Lin will most likely gain exclusive rights to the trademark — but, on Feb 9, one Andrew Slayton filed for the name 4 days before Lin. Since then the USPTO has sent a suspension letter sent to Andrew citing false connection with Jeremy Lin. We’ll stayed tuned for the outcome. Meanwhile, more than 200 different trademark applications were filed for “Linsanity” in North America, China, Taiwan, and the UK…

Eat Mor Kale: Little dog takes on the big dog!

Chick-fil-A, owner of the tagline “Eat Mor Chikin,” sent a cease and desist letter to t-shirt artist Bo Muller-Moore over his use of “Eat More Kale.” The company is known for going after pretty much anyone using the words “Eat More” in a trademark. Muller-Moore stated he was willing to fight it out — but in May, the USPTO sided with Chick-fil-A and refused to grant him a trademark registration, due to likelihood of confusion with Chick-fil-A’s mark. Do you think it is fair for Chick-fil-A to claim exclusive rights to “Eat Mor(e)”?

Hershey Bar Configuration: The Non-Traditional trademark

In June, Hershey Chocolate and Confectionary Corporation won an appeal at the Trademark Trial and Appeal Board to register its configuration of a candy bar (“…that consists of twelve (12) equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle”). Used in commerce since 1968, the appeal was won after the board decided that the configuration had acquired distinctiveness through continuous use. Some wonder if Hershey will have a hard time enforcing these rights against competitors. Nevertheless, Hershey has reminded us of the power of trade dress. Shape is everything, in this case.

The Biggest Brand Protection Operation Ever Staged

Some might say that brands overshadowed athletes at the London Olympic Games, and protecting the rights of sponsor brands was priority. While spectators were essentially told what not to wear (large groups of spectators wearing "visibly branded" clothing risked being banned, athletes were not allowed to sell merchandise with their names on it, or be featured in any advertising unless for a brand that was a sponsor. More than 280 “enforcement officers” from the Olympic Delivery Authority were on the lookout for ambush marketing activity. New legislation granted these officers even greater powers than the police, with the authority to enter premises without a warrant. Olympic strength enforcement, indeed.

Nicest Cease-And-Desist Letter Ever!

In July, the trademark folks at Jack Daniels got some nice PR when the recipient of this letter posted it online — and the story went viral. While it was later pointed out that, technically, it was not a Cease-and-Desist letter, the world is a better place for learning that lawyers can behave reasonably. As the saying goes, sometimes you catch more flies with honey…

Any Color, As Long As It’s Red

Christian Louboutin's red soleIn September, the decision confirming the validity of the Red Sole trademark held by Christian Louboutin ensured the designer could continue to protect the mark when it comes to red-soled shoes with contrasting uppers — while also allowing YSL the right to continue selling a monochrome red shoe. Everyone was a winner, and fashionistas and IP professionals came together to rejoice!

What is it with Apple and Trademarks?

Forget about Apple’s tussle with Proview over rights to the iPAD trademark in China — what we want to know is why the iPhone trademark hasn’t long been squared away? Five years after the product launched, Apple was still having to deal with a company in Brazil that filed for Gradiente iPhone in 2000, while in Mexico it will face off against a telecommunications company by the name of iFone that registered its mark in 2003.

Village Voice: “Best Of” is ours!

Village Voice Media Holdings, LLC claims exclusive rights to the phrase “Best Of.” With more than 20 active trademark applications containing the phrase “Best Of…” they may have a strong argument. In October, VVMH slapped YELP with a lawsuit over the unauthorized use of the term, claiming trademark infringement and unfair competition. This is not a first time battle for Village Voice, they have challenged many others over use of the phrase that they have dominated. Such behavior has earned them the label of “trademark troll,” but some might call it proper enforcement of trademark rights.

NC-17 Trademark?

Applicant filed for the mark C*** Sucker for rooster-shaped lollipops, and the Examining Attorney deemed it scandalous and immoral. Applicant went on to argue that, because applicant’s mark comprised two separate words, the dictionary definition should not apply (…); further, that attitudes have become “more and more” liberal. But in December (11 years after the application was filed), the CAFC affirmed the mark as scandalous and denied registration. Though it is worth noting that, while trademark rights were denied, use was not banned…

Jerome McDonnell is Group Trademark Director and Nicole Briggs is an Associate Trademark Consultant for Interbrand.




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