Trader Joe’s Fights the Trademark Trader Schmo
By Joseph Mandour on May 17, 2018
Orange County – Recently a Kosher foods company has applied to trademark the name “Trader Schmo,” which is being opposed by the supermarket chain Trader Joe’s. Part of the reasoning behind the opposition is that Trader Joe’s believes that the phrase “Joe Schmo” is so recognized that Trader Schmo will confuse consumers, especially with both companies selling food.
Trader Joe’s began in 1958 and is based in Monrovia, California. There are 475 Trader Joe’s retail grocery stores in forty one states across the country. Trader Joe’s also uses trademarks similar to its core trademark including TRADER MING’S (Chinese food), TRADER JOSE (Mexican food), TRADER JOE-SAN, (Japanese food), TRADER JACQUE’S (French food), and TRADER GIOTTO’S (Italian food).
Jeffrey Glassover of Naples Florida filed the Trader Schmo trademark on November 29, 2016 on an intent to use basis. The application includes Kosher foods in Classes 029 and 030 including: “Baba Ganoush, compote, frozen, prepared ready-to-eat meals consisting primarily of vegetables; Hummus, jellies, jams, Latkes, frankfurters, cold cuts, prepared food kits composed of meat, Matzo ball soup, chicken soup, Borscht, nut based snack bars, fruit based snack bars, stewed fruits, stuffed cabbage with meat, zimmes, vegetable salads, macaroons, Rugelach, candies, ice cream, diary based spreads, Kasha, Knishes, Kreplach, Kugel, Pierogies, grain based snack bars, and Blintzes.”
The Trader Schmo trademark application received two office actions which requested edits to the description of goods, but then the application was approved by the United States Patent and Trademark Office. The application then published for opposition and on April 27, 2018 Trader Joe’s filed its opposition. The opposition alleges priority of use and a likelihood of consumer confusion.
Apart from whether a likelihood of confusion exists, Trader Schmo may also be liable for dilution. Generally dilution concerns whether the accused mark could harm Trader Joe’s reputation without regard to confusion.
It was only a few years ago when Trader Joe’s had to take legal action to protect itself against a company called Pirate Joe’s, which was a Canada based company that would sneak Trader Joe’s product... Read the rest
LeBron James’ Company Sued for Trademark Infringement
By Joseph Mandour on April 24, 2018
Los Angeles – LeBron James’ company, Uninterrupted, is being sued by Sebastian Jackson’s company, Adventure Enterprise, for trademark infringement. Jackson claims that Uninterrupted infringed his barbershop theme and “Shop Talk” trademark when creating the show “The Shop.” The Show made its debut during the 2017 NBA season and features LeBron James, Draymond Green, Charles Oakley, 2 Chainz, and others.
The barbershop themed shows both include guest speakers who talk about past experiences and success stories as they get their hair cut. Jackson trademarked the “Shop Talk” concept in 2016, listing it as an “organization of events for cultural purposes.” Jackson claims that for two years he and Cree Nix, an employee of Uninterrupted, engaged in many conversations via text message and e-mail about the concept behind the show.
After the first episode of LeBron James’ show aired, Jackson immediately tried to get in contact with associates of Uninterrupted. Jackson alleges that upon speaking with Rodney James from the company, Jackson was told the episode was a “one-time thing” and claims Rodney even showed regret. Since then, another two episodes of the “The Shop” have aired, the second in March. This is what urged Jackson to continue to defend the trademark.
In August of 2017, Jackson sent a cease-and-desist letter to the Uninterrupted with no answer. Ironically, very recently Uninterrupted sent a cease and desist letter about copyright and trademark infringement to the University of Alabama over another web series titled “Shop Talk” that is barbershop themed. The University of Alabama show features Nick Saban, Alabama’s football coach, and Julio Jones. In response the school has changed the name of the show to “Bama Cuts” but continues to release episodes. Nick Saban himself announced that the show will go on and that he doesn’t consider it to be a copyright infringement.
Jackson’s company is suing Uninterrupted for an injunction to stop production, damages for the trademark infringement, and the show’s profits. Although Jackson owns a registered trademark, he may have to at least partly rely on his common law rights to “Shop Talk” because the services listed in the application do no... Read the rest
Believeland Files Trademark Complaint Against Believeland Beer Festival
By Joseph Mandour on April 4, 2018
Orange County – On March 27th, 2018, the Believeland website filed a trademark complaint against Cleveland’s Believeland Beer Festival for unauthorized use of the “Believeland” name. Believeland is a sports website that reports on sports news and sells apparel since 2008. The website owns three trademarks for the term “Believeland,” including for entertainment services and merchandise such as apparel and cups. Believeland originates from the Cleveland Browns football team.
Believeland Beer Festival was founded by Nathan Barnhart and Elaine Lau who have also planned events like the Rocky Run. By day, the married couple runs a business called Run Mfg, which organizing races such as the Cleveland Browns 5K race and more. Both are avid sports fans and Ohio natives. The sports themed event was planned for April 28th at a convention center in Cleveland.
The Believeland Beer Festival is based on Kansas City’s Boulevardia festival and would include a costume contest, a best pretzel necklace contest, two tasting sessions with more than 150 beers and 60 breweries, and former Cleveland Brown running back Earnest Byner as grand marshal. Barnhart says, “We want to bring something like this to Cleveland.” The Believeland Beer Festival has a polka fight song and describes the event as a magical place where anything is possible if you just believe.
The tickets for the Believeland Beer Festival ranged from $40 to $75 and included bonuses such as drink tickets, t-shirts, foam fingers, custom beer koozie, bottle opening keychains, superfan stickers, beer glasses, and other merchandise all sporting the “Believeland” name. The beer festival is also selling designated driver tickets for $20 and includes the foam finger.
Barnhart applied for trademarks with the U.S. Patent and Trademark Office for “Believeland Beer Festival,” “Believeland Beer,” and “Believeland Music Festival.” Although “Believeland Beer” is the only application that has not been denied and is still active.
In 2016, Believeland the website sent Barnhart a cease and desist letter saying that using “Believeland” would constitute trademark infringement and requested that he stop using the term “Believeland.” Supposedly, Barnhart has ... Read the rest
Stone Brewing Sues MillerCoors Over “Stone” Trademark
By Joseph Mandour on February 16, 2018
San Diego – On Monday, February 12th, 2018, San Diego based Stone Brewing filed a lawsuit against MillerCoors for allegedly infringing the “Stone” trademark. According to Stone Brewing, during the rebranding of Keystone, MillerCoors has used the “Stone” trademark to potentially steal the customers and reputation of Stone Brewing.
Last April, the new Keystone cans were introduced with the word “Stone” standing out in capital letters. Later, Stone Brewing’s Greg Koch stated that MillerCoors was “deliberately creating confusion in the marketplace.” Koch continued to say MillerCoors was not only jeopardizing Stone Brewing’s reputation in the marketplace and confusing consumers.
MillerCoors has denied all allegations and called them a “clever publicity stunt,” and claims Keystone consumers have used the word “Stone” as a reference to the beer since its debut in 1989. Stone Brewing was not founded until 1996. Although according to Stone Brewing, MillerCoors tried to register “Stone” with the U.S. Patent and Trademark office in 2007 but was unsuccessful because Stone Brewing had registered in 1998.
Greg Koch released a video stating that large beer companies have been scheming against craft breweries in an attempt to counteract a decline in sales by buying out smaller companies, but knowing Stone Brewing would not sell, instead tried to steal the brand. Koch has also been responding to the mass amounts of Tweets on the matter by reiterating that Stone Brewing will not be backing down from the fight.
Lizzie Younkin, Stone Brewing’s spokeswoman, has declined any interviews about the lawsuit and stated that their lawyers will be doing to talking, while they focus on “brewing great beer.” According to IRI Worldwide, retail data showed both companies were up in sales during a 52-week period that ended January 28, 2018. Stone Brewing increased 20 percent while Keystone Light increased 12.1 percent.
Stone Brewing is calling out MillerCoors’ social media campaign, saying Facebook, Instagram and ESPN ads showed proof that Keystone is being referred to as “Stone” and has purposely placed the can so only the word “Stone” is visible in the graphic images. Stone Brewing is requesting th... Read the rest
Barstool Sports threatens NFL with Trademark Lawsuit
By Joseph Mandour on January 3, 2018
Los Angeles – Founder Dave Portnoy of Barstool Sports is ready to sue the NFL over an alleged trademark infringement. Barstool Sports has sold shirts, flags and other apparel with the phrase “Saturdays Are For The Boys.” The NFL recently began selling shirts that include the phrase “Sundays are for the Boys” which is in reference to the Dallas Cowboys.
Apart from the Cowboys, the NFL is also selling shirts that include the phrase “Sundays Are For The [Team Name]” with each team name. Barstool Sports believes that the shirts are a play on the verbiage used by Barstool Sports.
Barstool Sports and the NFL have a rocky relationship from past incidents. Back in May 2015, Portnoy and three other Barstool Sports employees were arrested for a sit-in protest at the NFL headquarters. The protestors were arrested when they refused to leave the NFL grounds. The protest was over NFL Commissioner Roger Goodell’s management of Deflategate – a controversy involving the allegation that the New England Patriots deliberately under-inflated footballs. It’s no surprise that Portnoy is capitalizing on the opportunity to get back at the NFL.
“It’s the first time I kind of feel like we have them by the […], so it will be a nice win when they take them down. They’re definitely going to take those shirts down. I just think it makes them look like idiots. I wasn’t mad. I was like, ‘Oh you guys just stepped into a bear trap. That was stupid.’ We’re always looking for an upper hand vs. the NFL, and this was an easy one.”
The morning of December 20th, 2017, it was noted that the Dallas Cowboys’ shirt had been taken off the website and replaced with a shirt that just says, “The Boys” above a Cowboys star logo. However, it’s not just the Cowboys’ shirt that Barstool Sports is suing over, but all of the “Sundays Are For The [Team Name]” shirts. Portnoy told TMZ, “They wouldn’t be doing that shirt without ‘Saturdays Are For The Boys.’ It’s a play on that.”
Apart from stunts and dust ups directed at the NFL, it was a busy year for Barstool Sports. They also debuted talk shows on Sirius XM, the Comedy Channel, and ESPN 2.... Read the rest
San Diego Comic-Con Wins Trademark Lawsuit Against Salt Lake Comic Con
By Joseph Mandour on December 15, 2017
San Diego – After a long-running battle, a jury in San Diego decided in favor of Comic-Con International, the nonprofit behind San Diego Comic-Con, which has been an iconic pop culture fan event for a whopping 50 years. The ruling holds that San Diego Comic-Con does hold trademark rights to “Comic-con”.
The lawsuit began when San Diego Comic-Con claimed that the two defendants Daniel Farr and Bryan Brandenburg chose to capitalize on the goodwill and success of San Diego Comic-Con’s brand in using the term “comic con” as a descriptor for their event. Farr advertised his comic convention, Salt Lake Comic Con, by announcing “Comic-Con is coming to Utah,” which San Diego Comic-con claimed implied affiliation to San Diego Comic-Con.
The jury decided that the Comic-Con trademark is valid, and that Salt Lake City used it in a way likely to cause confusion to customers. However, the jury found the infringement of the Comic-Con trademark unintentional, therefore San Diego Comic-Con was only awarded $20,000 for corrective advertising. San Diego Comic-Con had originally asked for $12 million.
For San Diego Comic Con to uphold its branding, the Court ruling allows it to seek licensing agreements with more than 140 events in the United States. These events include some variation of “Comic Con,” in the name. This includes several large independent shows such as New York Comic Con and Emerald City ComiCon. All of them will now need to obtain a license from Comic-Con International to use the term, or else rename the events.
Farr and Brandenburg of Salt Lake Comic Con protested that the term “comic con” was generic, and that Comic-Con International’s trademark applied only to “Comic-Con” (with a hyphen). They pointed to numerous examples of fan events calling themselves comic conventions as evidence that Comic-Con International either did not own the trademark as they claimed or was so inattentive to enforcement and licensing that they could not legally single out Salt Lake... Read the rest
Woof-Tang Clan Dog Walking Company Trademark Opposed by Wu-Tang Clan
By Joseph Mandour on November 30, 2017
Orange County – The Wu-Tang Clan is a hip hop group from New York. Wu-Tang Clan’s producer, RZA, recently filed a trademark opposition against a Brooklyn dog-walking company after it filed a trademark application for “Woof-Tang Clan” on June 8, 2017. The opposition states that the Woof-Tang Clan trademark is likely to be confused with multiple registrations already owned by the Wu-Tang Clan.
Marty Cuatchon is the owner of Woof-Tang Clan, LLC. The company provides dog sitting and walking services throughout New York. Along with walking “the illest group of dogs in New York City,” Cuatchon was also selling T-shirts that depicted dogs and Wu-Tang artwork including images of classic hip-hop album covers. After the filing of the opposition, the images have been removed from the Woof-Tang Clan website.
The Wu-Tang Clan claims that its name and logo have unmistakable association with the hip-hop group since its formation in 1993. RZA argues that Woof-Tang Clan’s identity is likely to cause confusion and falsely suggest a connection between the two companies and that the dog walking company should not be allowed to profit from the goodwill that the band has created in the trademark. The band also wants to be sure that it is not falsely associated with the other business and make sure that their fans know that the band is not endorsing the dog walking company.
Cuatchon declined to comment on the legalities of the situation. He is still seeking legal counsel for the case. But Cuatchon did inform the New York Daily News that he was aware of the trademark challenge and mentioned, “I am a fan. We walk dogs. I thought it was a good idea.” Had Cuatchon hired a trademark attorney, the attorney likely would have advised against Cuatchon mentioning that he is a fan of the band.
Oddly, this is not the first time that RZA has had his brand intermixed with dogs, and Cuatchon is not the first to use the name “Woof-Tang Clan”. A dog walking and pet sitting service using the Woof Tang Wear and Woof Tang Huskies trademarks located in Flori... Read the rest
Moosehead Sues Hop’n Moose for Trademark Infringement
By Joseph Mandour on November 10, 2017
Orange County – Moosehead Breweries is the oldest independently owned Brewery in Canada. The moose is an established icon for Moosehead which is a family-owned company founded in 1867. Moosehead owns multiple U.S. trademark registrations for “moose” and “moosehead” as well as moose-based images all for use related to beer.
Hop’n Moose Brewing Company LLC opened a brewpub named Hop’n Moose in downtown Rutland, Vermont in 2014. Its distribution is small, only selling canned beer in 15 stores in the area. Because the company uses “moose” in its name, as well as an image of a moose for the brand name, Moosehead Breweries has accused Hop’n Moose of trademark infringement. Moosehead claims the similarity has the potential to create confusion for its consumers.
Moosehead has stated that legal action is always the last resort when dealing with infringements and that the company tries to amicably resolve infringement issues behind closed doors first. However, Hop’n Moose has disputed that consumers are likely to be confused and thus far has refused to cease use of the moose words and design.
This is not the first time Moosehead Breweries has had a standoff with another company over an alleged trademark infringement. On record, there have been about 10 other allegations in which it appears that Moosehead Breweries typically comes out on top. Moosehead has previously tangled with Regina’s District Brewing Company and its Müs Knuckle lager (despite moose being spelled entirely different) and also the non-alcoholic root beer logo of Adirondack Pub & Brewery Inc. called “Moose Wizz.”
Regina’s District Brewing Company has since removed Müs Knuckle lager from its website and “Moose Wizz” is now “Bear Wizz.”
Perhaps the most noteworthy Moosehead trademark infringement issue was with Stack Brewing in Sudbury, Ontario, Canada. Stack Brewing rebranded its Angry Moose and Friendly Moose beers after they also heard from Moosehead. Making light of the situation, Stack Brewing humorously made an anniversary beer called “Trademark Infringement.” We’re guessing it leaves a bitter taste.... Read the rest
Jaguar Land Rover Files Trademark Applications to Protect Appearance of Vehicles
By Joseph Mandour on September 27, 2017
Los Angeles – Jaguar Land Rover filed five trademark applications between April and September 2016 in hopes to protect the shape of its vehicles. The design most recently called in to question is the Land Rover Defender after Jim Ratcliffe, billionaire owner of Ineos, is looking to release a similar vehicle.
Ineos is a company chiefly focused on chemicals, so it seems questionable that they are attempting to wedge their way into the extremely competitive automotive industry. This is especially true considering that product design and development costs can exceed a billion dollars for a single vehicle.
Jaguar and Land Rover became a single company in 2002 during an acquisition by Ford. The entity has since been acquired by Tata Motors which is based in India. Jaguar Land Rover stopped production of the Defender in January 2016 because it did not meet safety or environmental standards. This may be partly due to its distinctively vertical stature compared to other SUV’s which may contribute to roll-overs. However, Jaguar Land Rover had plans to release the replacement Defender in the year 2020.
A year after Jaguar Land Rover’s Defender replacement announcement, Ratcliffe vowed to create a “spiritual successor” of the iconic Defender. As a matter of fact, Ratcliffe approached Jaguar Land Rover cordially asking to buy intellectual property from Jaguar Land Rover, if possible, to help with the project. It is unclear whether Jaguar Land Rover filed its trademark applications before or after Ratcliffe’s approach.
European trademark law has a history of being reluctant to protect the shape and design of entire vehicles or parts of the vehicle unless the shape is genuinely distinctive. Generally consumers must truly identify the shape of the vehicle with a brand, and must be likely to be confused as to source when seeing a similar vehicle shape or design.
Jaguar Land Rover claims that the Defender will always be instantly recognizable as a Land Rover all over the world and that the Defender remains relevant in its... Read the rest
Federal Judge Refuses to Dismiss San Diego Comic-Con Trademark Case
By Joseph Mandour on September 19, 2017
San Diego – The Trademark case between San Diego Comic-Con and Salt Lake Comic Con is now moving toward trial. After Salt Lake Comic Con filed a Motion for Summary Judgment claiming that Comic Con was a generic term, U.S. District Judge Anthony Battaglia refused to dismiss the trademark case citing lackluster evidence to support such a claim.
San Diego Comic-Con is claiming that the two defendants and operators of Salt Lake Comic Con, Daniel Farr and Bryan Brandenburg, chose to capitalize on the goodwill and success of San Diego Comic-Con’s brand. Beginning in 2013, Farr advertised the Salt Lake Comic Con announcing “Comic-Con is coming to Utah” which San Diego Comic-Con claims is implying affiliation to San Diego Comic-Con.
Farr’s argument is that “Comic-Con” has been a generic word to refer to all conventions for comic fans. The claim is that it was also used regularly and generically prior to the first Comic-Con in San Diego held in 1970. However, San Diego Comic-Con conducted a survey that showed 80% of consumers thought that “Comic-Con” is a brand, and not a generic name.
Through Farr’s evidence it became apparent to Judge Battaglia that San Diego Comic-Con’s trademark is a potential victim to “genericide.” Indeed, it appears that San Diego Comic-Con may have been lax about policing its trademark and also always using it as a trademark rather than a descriptive term. Genericide occurs when a brand becomes so successful that its formerly trademarked name becomes interchangeable with the product or service itself rather than being seen by consumers as a brand. Escalator and Aspirin are notable examples of formerly trademarked words that became generic.
As part of the reason for using Salt Lake Comic Con, Farr claimed that he relied on the many other Comic Con’s in use and a settlement between San Diego Comic-Con and another comic convention which appeared to allow the similar use. In other words, Farr believed that San Diego Com... Read the rest