A Former Jaguars NFL Player Claims He Owns the Trademark “Sacksonville”

By Joseph Mandour on October 2, 2018

Los Angeles – A trademark quarrel has arisen over who owns the term “Sacksonville.” In 2015, Dan Skuta of the NFL’s Jacksonville Jaguars applied to trademark the term “Sacksonville”. The application was later abandoned in 2016. Skuta originally signed a five-year contract for $20.5 million with the Jaguars in 2015 but was later cut from the team early in 2017.

On October 18, 2017, the Jaguars filed a trademark application for #SACKSONVILLE for goods and services including shirts and entertainment services. On May 3, 2018 Skuta re-filed a trademark application for SACKSONVILLE for shirts and decals, and then on May 4, 2018 Skuta filed a Notice of Opposition against the Jaguars’ application with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.

According to Skuta’s trademark attorney, he has been using the name “@Sacksonville” on Instagram since 2015 and has sold more than $3,000 in products featuring the Sacksonville logo. A Jaguars’ spokeswoman states that she is unable to comment “as we’ve been in active discussions with Dan Skuta and his representatives for some time to develop a resolution to this matter.”

In the Notice of Opposition, Skuta states that the Jaguars have actively supported Mr. Skuta’s effort to pursue his commercial use of the trademark ‘Sacksonville’ including on the Jaguar’s social media accounts. Skuta states that the team never objected to his use of the trademark Sacksonville. However, the United States Patent and Trademark Office has initially refused Skuta’s application, stating that his products “strongly suggest a connection between applicant’s goods and the Jacksonville Jaguars.”

Skuta is not the first person to try to trademark the term “Sacksonville.” Engine 15 Brewing Company filed an application to trademark the term earlier this year in relation to beer, and current Jacksonville Jaguar defensive end Calais Campbell’s wife filed a trademark application for “Mayor of Sacksonville” for goods and services including apparel, sports memorabilia, and charitable services. The mayor of Jacksonville Lenny Curry had given Campbell this name in a public announcement.

The United States Patent and Tradema... Read the rest

Ohio State Files an Opposition to Block Oklahoma’s “O” Trademark

By Joseph Mandour on September 18, 2018

San Diego – Ohio State University recently filed a Notice of Opposition opposing the University of Oklahoma’s trademark application of an image of a drum major with a block “O” on the front of the uniform. The University of Oklahoma filed the application on December 7, 2017.

In the opposition filed with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, Ohio State claims that the block letter “O” has been used on its uniforms and merchandise since 1898. The opposition states that the block letter “O” is the “heart of the branding and image of Ohio State and is used in connection with all products and services offered and provided by Ohio State.”

In the Opposition, Ohio States cites its existing trademark registrations for the block letter “O” which registered in 1997, 2003, and 2013 for various goods and services including sporting events and apparel. The University of Oklahoma claims that its block “O” has been in use since 2001. Oklahoma often uses its block letter “O” in combination with a block letter “U” to form “OU”. Ohio State claims that consumer confusion is increased because of the shared area of use between the universities including musical band competitions and sports events.

This is not the first trademark dispute Ohio State has had with another University. Ohio State has had similar disputes with Oregon State University, and in 2017, Ohio State settled a trademark dispute with Oklahoma State over the acronym “OSU.” Ohio State and Oklahoma State came to an agreement that each can use the abbreviation as long as it’s not combined with the other school’s mascot. The Ohio State and Oklahoma State agreement came after Ohio State filed a trademark application in February of 2017 stating they planned to use “OSU” on apparel. Shortly after the application was filed, Oklahoma State filed a Request for Extension to oppose Ohio State’s trademark application.

In the present case, Ohio State likely has an uphill battle because it is questionable whether consumers are likely to be confused between the block letter “O” and an image of a drum major with a relatively small block letter “O” on the front of the uniform.

... Read the rest

In-N-Out Burger Sends a Clever Trademark Cease and Desist Letter to a Brewery

By Joseph Mandour on August 28, 2018

Orange County – Last week, Irvine, California based In-N-Out Burger sent a pun-filled cease and desist letter to Seven Stills Brewery & Distillery located in San Francisco suggesting that the brewerey “hop to action” to clear up a “brewing” trademark issue “in good spirits.”

In-N-Out Burger reached out after hearing of the upcoming release of Seven Stills Brewery & Distillery’s new beer called “In-N-Stout.” The brewery recently used Instagram to promote the new beer, describing it as a barrel-ages milkshake stout and tagged In-N-Out Burger’s account. Within the promotion was an image of the beer featuring a logo similar to In-N-Out Burger’s logo.

The cease-and-desist letter was also posted to Instagram with the caption “Can you find the puns?!?” In the letter, In-N-Out burger states that it has had multiple reports about the beer and continued to say: “In case you are not already aware, In-N-Out owns multiple trademark registrations in these trademarks. As you may expect, we tap into a lot of effort in protecting our marks, which includes limiting their use by others.”

“Please understand that use of our trademarks by third parties’ ales us to the extent that this could cause confusion in the marketplace or prevent us from protecting our trademarks in the future. We hope you appreciate, however, that we are attempting to clearly distill our rights by crafting an amicable approach with you, rather than barrel through this.”

In-N-Out continues the letter by requested that the brewery refrain from further use of the logo on products and to remove all images of the beer from social media and the brewery’s website and ends the letter by saying “we look forward to resolving this in good spirits.” The letter has gained a lot of attention on social media, and others began to comment on the topic.

The co-owner of the brewery states that they are not surprised by the cease-and-desist letter and that they had already planned on selling the beer in different packaging. Later, the brewery released a video featuring the blurred out In-N-Out logo and the brewery says it will not be releasing a cheap knockoff. The ad continues to state that the first 100 people to buy a beer will get a free ... Read the rest

Billy Goat Chip Loses a round in Billy Goat Tavern Trademark Case

By Joseph Mandour on August 16, 2018

Los Angeles – In December 2017, Chicago’s Billy Goat Tavern filed a trademark infringement lawsuit against the St. Louis’ Billy Goat Chip Company related to use of the “Billy Goat” name on products. Billy Goat Tavern, founded in 1934, is a popular hang-out spot that gained some fame after it’s appearance on “Saturday Night Live.” Billy Goat Chip Company recently filed a motion to dismiss the lawsuit but it was denied by U.S. District Judge Robert Dow Jr.

The tavern currently sells branded beer and frozen burgers in local grocery stores. According to the lawsuit, Billy Goat Tavern has plans to begin selling potato chips in the near future and claims that the use of the well-established trademark by Billy Goat Chip Company in relation to potato chips will cause consumer confusion.

Billy Goat Chip Company, founded in 2009, began by making and serving chips in its St. Louis based restaurant Billy Goat Restaurant & Bar. After selling the restaurant, co-owner Brian Roth started Billy Goat Chip Co. According to the legal documents, the name is in reference to the Billy Goat Hill area in St. Louis.

The chip company argues that the lawsuit should be dismissed because Billy Goat Tavern has allowed an unreasonable amount of time to pass between when Billy Goat Chip Company began selling chips and when the Tavern finally filed the trademark infringement lawsuit. As stated in the lawsuit: “Billy Goat Chips have been sold since 2014. If Billy Goat potato chips are such a threat, why did the Plaintiff wait so long?” The Billy Goat Tavern combats this by stating they have recently encountered confused customers who come into the Tavern stating they thought Billy Goat Tavern made the chips.

According to the Billy Goat Chip Company’s court filings, its chips are sold in 12 grocery stores in the Chicago area. The chip company also continues to say they were the first to use the “Billy Goat” name with packaged food and beverage products, and the tavern’s trademark is limited to “tavern and restaurant services.” In March 2018, Billy Goat Chip Company filed a counter claim against the Billy Goat Tavern for false advertising and violations of other state laws.

... Read the rest

Gatorade Wins The SportFuel vs. Sports Fuel Case

By Joseph Mandour on June 26, 2018

Los Angeles – In August 2016, SportFuel filed a lawsuit against PepsiCo, Inc. subsidiary Gatorade for trademark infringement over Gatorade’s use of the SportFuel trademark in a marketing campaign. Now, two years later Gatorade has prevailed and will be allowed to continue its campaign.

SportFuel provides nutritional products and services to its clients including the Chicago Blackhawks, the Rockford IceHogs, and more from the small town of Western Springs, Illinois. SportFuel was founded in 1993 by Julie Burns who registered the SportFuel trademark with the U.S. Patent and Trademark Office in 2008.

Gatorade created the sports drink industry in 1965 when the University of Florida founded the electrolyte-replacement formula. In 2001, Gatorade made its first launch of sports drinks and in 2004 it trademarked the Gatorade brand.

In 2015, Gatorade launched its new ad campaign “Gatorade The Sports Fuel Company” which gained a lot of attention, including the attention of SportFuel who in turn alleged that Gatorade was fully aware of SportFuel as a company and its SportFuel trademark.

The lawsuit goes on to say that Gatorade intentionally used the SportFuel trademark and requested that Gatorade stop using “Sports Fuel” in its ad campaign. The lawsuit also sought damages and any profits that resulted from the ad campaign in question. This was an important case for Gatorade since so many products had been printed with the “Gatorade The Sports Fuel Company” slogan.

Ultimately, U.S. District Judge Matthew Kennelly ruled in favor of Gatorade and stated that “sports fuel” is a descriptive term and that the evidence that Gatorade had knowledge of and intentionally used SportFuel’s trademark was inadequate to prove that Gatorade had acted in bad faith.

U.S. District Judge Kennelly continued to reason that “a picture is worth a thousand words.” When looking at Gatorade’s slogan, you see the large, bold Gatoade text commonly used by Gatorade along with the G-bolt design which makes the slogan distinguishable from SportFuel’s trademark. This led the court to the determination that consumer confusion is unlikely.

While SportFuel did not comment on the ruling, Katie Montiel Vidaillet, spokeswoman for Gatorade, ... Read the rest

Sesame Street Sues Over “No Sesame. All Street” Trademark in Movie Trailer

By Joseph Mandour on June 12, 2018

San Diego – Sesame Workshop, founder of the children’s show “Sesame Street,” has filed a lawsuit in federal court in New York against STX Productions over use of its trademark in a movie trailer. The offending movie is titled “The Happytime Murders” which is a romp centered around puppets being killed. It stars Melissa McCarthy, Maya Rudolph and Joel McHale.

Sesame Workshop claims that the movie trailer has left the Sesame brand tarnished. The lawsuit continues to say that the movie trailer does not uphold Sesame Workshop’s message and uses the Sesame Street brand without authorization at the end of the trailer when you see the line “No Sesame. All street.”

Sesame Street is a registered trademark of Sesame Workshop, and the organization’s message is “helping kids grow smarter, stronger and kinder.” The lawsuit claims that the recently released movie trailer goes against the core Sesame Street message with violence, drug use, profane language, and puppets engaging in sexual activity. Sesame claims that the trailer leads consumers to believe that Sesame Workshop has endorsed the movie.

Sesame Workshop has now been the victim of social media anger from “appalled viewers” because the viewers mistakenly believe that Sesame Workshop supports the film and has broken their trust. Sesame has put in almost 50 years striving to build and maintain its reputation and trust with the parents of young children everywhere. Now with the adult movie trailer centered around puppets going viral, Sesame’s reputation is in jeopardy of being damaged.

“The Happytime Murders” is scheduled to come to theaters August 17, 2018, and is directed by Brian Henson. The description of the film is “When the puppet cast of an ’80s children’s TV show begins to get murdered one by one, a disgraced LAPD detective-turned-private eye puppet takes on the case.”

STX Productions claim they are “confident” in their legal position. STX collaborated with Jim Henson Company and Henson’s son Brian Henson, American Puppeteer, in the creation of “The Happytime Murders.” The film is the untold stories of the puppeteers lives when the children aren’t around. STX continues to say they were “incredibly pleased” with the... Read the rest

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