Archives: Trademark Infringement

Written by: Susan Neuberger Weller

It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.” Brackets are being completed, college jerseys are being pulled out of mothballs, bars and restaurants are hiring extra help, and work schedules are being rearranged around televised game times so everyone can join in the fun and relive the glory days. And, just as with the frenzy surrounding the Super Bowl, there will be events of all types organized around the country to take part in the “madness.” However, as we warned you in January right before the Super Bowl, if you are planning such events, do not use “March Madness” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales unless you want the NCAA to pay you an unwanted visit.

As is SUPER BOWL, the phrase MARCH MADNESS is a federally registered trademark owned by the NCAA for use in connection with products and services related to the college basketball tournament. This gives the NCAA exclusive nationwide rights to use the term on and in connection with these goods and services and prohibits anyone else from using the term in any way that would suggest any type of association, affiliation, sponsorship, endorsement, licensed status or any other connection between it and the NCAA, when in fact no such status exists. The NCAA takes this very seriously, as do its official licensed partners, who pay millions of dollars to use MARCH MADNESS in connection with their commercial promotions.

Although the NCAA was not the originator of the “March Madness” slogan, and negotiated for a number of years to acquire the federal rights to this mark, its rights are now firmly entrenched. Moreover, it is very aggressive in pursuing unauthorized uses of MARCH MADNESS or infringing versions of this mark not only to protect its own trademark rights, but to protect the rights of its licensed sponsors.

So, feel free to show your team spirit, cheer on your alma mater at the top of your lungs, wear that old jersey, and join in all the revelry, but do not engage in any advertising or promotional activity for any products or services using MARCH MADNESS or any altered version of the mark unless you have a paid sponsorship to do so.

 

 

Written by: Susan Neuberger Weller

Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly.  Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and also to convey information.  From an intellectual property standpoint, how a fabric design is used may dictate what type of protection it can claim. In addition, the time it takes to obtain each type of IP protection, its duration, and the procedures for enforcement may also dictate the type of protection to seek. Continue Reading It’s a Material IP World: Trademarks, Copyrights, Design Patents and Fabric Designs

Further to our recent Tesla Motors post, Bloomberg and BNA report  that Tesla has resolved its trademark dispute with Zhan Baosheng, the individual who registered the TESLA marks in China. Chinese authorities will cancel the existing TESLA Chinese trademark registrations and all web site names registered by Mr. Zahn in China will be transferred to Tesla.  Needless to say, Tesla appears very pleased with this outcome and has stated that it will continue to move forward with growing its business in China.

Written by Susan Neuberger Weller

Further to our recent post about the worldwide trademark trials and tribulations of Anheuser-Busch and its BUDWEISER trademark, we now  report that the up-and-coming electric car manufacturer Tesla Motors Inc. has been sued in China for trademark infringement by a Chinese businessman who registered the rights to the TESLA mark in China before the US carmaker entered the Chinese market. As reported by Bloomberg , the owner of the Chinese registration, Zhan Baosheng, claims that his rights are being violated by all vehicle sales by Tesla in China and that he is seeking the shutdown of all Tesla showrooms, service centers, and supercharging facilities, the termination of all sales and marketing activities by Tesla in China, and the payment of $3.9 million in compensation for the allegedly infringing activity.  Although Tesla successfully challenged the validity of the existing Chinese TESLA registration, that 2013 ruling by SAIC’s Trademark Review and Adjudication Board is currently being appealed by Zhan Baosheng.

As  advised in our BUDWEISER post, it is important to develop and implement an international trademark filing strategy well in advance of actually entering foreign markets.  This is because trademark rights in most countries are granted to the first to register  a mark without the need to prove use.  Although there may be grounds to challenge foreign registrations obtained by “enterprising entrepreneurs,” this process can be lengthy and expensive and there is no certainty as to its outcome.  Certainly, the cost to file trademark applications  during the early stages of a company’s international expansion plans  will be far less than the cost for an attempted recoupment of rights.

So, start early, plan strategically, and move expeditiously to avoid the usurping of your trademark rights in other countries.

 

Written by: Susan Neuberger Weller

The overwhelming public reaction to the US Trademark Trial and Appeal Board’s June 18 decision canceling six REDSKINS trademark registrations on grounds that the mark disparaged Native Americans has been impressive. However, news articles, op-ed pieces, informal commentary, and anecdotal stories all evidence wide range confusion about and a misunderstanding of the meaning and impact of the decision.  This is an effort to set the record straight on the legal effect of this decision.

  1. The Washington Redskins still own valid and enforceable federal trademark rights in the REDSKINS marks. The federal registrations will not be formally canceled until all appeals have been exhausted, which will take years given the fact that the Redskins have indicated an intent to appeal the decision.
  2. Unlike most other countries in the world, US trademark law recognizes fully valid and enforceable trademark rights at common-law in trademarks that are being used but which are not registered. Thus, even if the registrations are eventually canceled, the Redskins will continue to own common-law rights in the trademarks which can be fully enforced in state and federal courts against third-party infringers.
  3. While the trademarks are still registered, the federal trademark registration notice ® may be used in connection with the REDSKINS marks. If these registrations are eventually canceled at the end of the legal process, the team can continue to use the REDSKINS marks and can use the unregistered trademark notice ™ with the marks.
  4. Anyone who thinks the Washington REDSKINS trademark is now up for grabs and can be used without incident is sorely mistaken, and anyone who has already begun to make unauthorized use of any of the REDSKINS marks is just asking for trouble. Should it choose to do so, the Redskins can still bring suit for infringement throughout the country.
  5. This decision is not based on a new law or any new Federal Government action, power, position, or initiative. The Section of the Trademark Act upon which the Trademark Trial and Appeal Board based its decision has been in existence and has been applied since 1946. The  US Trademark Office, the Board, and courts around the country have regularly and for years refused to register trademarks and have canceled existing trademark registrations which were determined to be immoral, deceptive, scandalous, disparaging, or which brought persons, living or dead, into contempt or disrepute. The list of such marks is quite lengthy.
  6. Moreover, this is not a new case. These disparagement claims have been around for decades. This the second time that the Board has canceled these REDSKINS registrations on grounds of being disparaging to Native Americans. The first case, which was initially brought in 1992 and which was not litigated to a conclusion until 2010, was finally dismissed on grounds that had nothing to do with the disparagement issue. Rather, the case was dismissed on grounds of laches, which means that the specific Native Americans who filed the first case waited too long to do so and that delay prevented the case from moving forward.
  7. Until the registrations are formally canceled, which will be years from now if appeals are pursued, the REDSKINS trademark registrations will continue to be recorded with US Customs. This means that any unauthorized merchandise bearing a REDSKINS trademark which attempts to enter the country is still subject to seizure at the border by US Customs.

So, the Washington Redskins’ trademark rights are not dead and the REDSKINS trademark saga is far from over. Stay tuned.

Written by: Susan Neuberger Weller

When you think of The Hershey Company, you think of delicious chocolate candy bars, chocolate kisses, and a fabulous amusement park in Hershey, Pennsylvania. The company’s brown candy bar wrappers with the HERSHEY’S trademark prominently displayed on the front have been in use since, at least, 1905, and the company owns numerous US trademark registrations for this version of this mark for candy and other products. However, Hershey is not so sweet on a Maryland State Senator Steve Hershey’s chocolate-colored campaign signs which, it claims, bear a striking resemblance to its famous trademark and trade dress, and has filed suit against the Senator for trademark infringement and related claims. A side-by-side comparison of the Hershey trademark and Senator Hershey’s chocolate-colored campaign signs are displayed in the Complaint and in connection with an article in The Baltimore Sun newspaper. Continue Reading Hershey Is Not So Sweet on Maryland Senator’s HERSHEY Campaign Logo

Written by: Susan Neuberger Weller

Recently, there was an interesting article in the The New York Times discussing the current state of military trademarks. Many people might think that federal and state government entities and agencies cannot, do not, or should not own exclusive rights in trademarks used in connection with commercialized products and services. However, unless there is a statutory prohibition against ownership of trademark rights in government insignia  (as there are for certain government seals ), government entities have just as much right to own trademarks as does any private citizen. Continue Reading OOHRAH! A Few Good Trademarks: The U.S. Military’s Trademark Campaign

Written by: Susan Neuberger Weller

We have all seen or heard about them without, perhaps, knowing what they were or for what they stand: the GOOD HOUSEKEEPING seal of approval, UL certified, ENERGY STAR rated, GROWN IN IDAHO potatoes,  HARRIS TWEED, and many, many more. They are called certification marks and they fall within the province of trademark law. Certification marks are words, slogans and/or logos licensed by their owners to be used on products or in connection with the advertising of services offered by third parties which meet standards set by the certification mark owner. Their purpose is to inform the public that the products or services certified meet certain minimum quality standards established by the owner/certifier, to ensure a higher level of consumer protection and safety.

Continue Reading Counterfeit Certification Marks: How to Certify that the “Certified” is Certified

Written by: Susan Neuberger Weller

Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon <3 can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),  contends that VeryMeri cannot claim intellectual property rights in its stylized heart logo, which consists of or incorporates the <3 emoticon, since that logo/emoticon is “widely used in connection with apparel and related products,” since the stylized heart logo “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design,” and because “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.” Continue Reading Can an Emoticon be Protected as a Trademark?