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.
Portnoy stated:

“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

Starbucks Unicorn Drink Trademark Lawsuit Is Amicably Resolved

By Joseph Mandour on September 11, 2017

Los Angeles – Starbucks, the largest coffee chain in the world, released a unicorn themed Frappuccino for a limited time between April 19th and 23rd of this year. Unicorn themed foods and products have been trending across social media the last couple of years so it is no wonder Starbucks took the opportunity to jump into the fray. However, Starbucks was not the first to create a commercially sold unicorn themed beverage. v

Unicorn themed foods are colored with cotton candy type colors including pink, blue, purple and edible glitter. They are bright and playful. The End is a small café located in New York City that created and kicked off the unicorn latte social media sensation. The End began selling its Unicorn Latte in December 2016, and the company applied for a trademark in January 2017.

The End’s unicorn latte was formulated in conjunction with Montauk Juice Factory. The two invested more than six months into development of the beverage. The End’s Unicorn Latte is made with healthy and natural ingredients to appeal to its hipster clientele. The End’s unicorn beverage includes ingredients such as cold-pressed ginger, lemon juice, dates and cashews, and some blue-green algae harvested from an Oregon lake.

As for Starbuck’s Unicorn Frappuccino, it lacked any healthy ingredients and was made with a sweet dusting of pink powder, mango syrup, and layered with sour blue syrup.

The End café claims that Starbucks released its unicorn themed drink to overshadow its own unicorn latte. Because Starbucks is such a larger chain, The End feels that Starbucks misled consumers to believe The End was copying Starbucks, damaging its claim to fame for the unique drink and creating consumer confusion. As a result, Montauk Juice Factory which is the cocreator and the parent company of The End café, sued Starbucks for trademark infringement. The End was asking for $10 million in damages from Starbucks.

The lawsuit was recently settled, but court documents do not specify a settlement amount. However, per the terms of the agreement The E... Read the rest

In-N-Out Sues Smashburger for Trademark Infringement

By Joseph Mandour on August 30, 2017

Orange County, California – Infamous burger joint In-n-Out Burger, which originated in Baldwin Park, California in 1948, is suing its new lead competitor Smashburger for a trademark infringement. In-N-Out is currently headquartered in Irvine, California and has 326 locations. Smashburger is a gourmet burger restaurant that started in Denver, Colorado in 2007 and has quickly grown to over 300 locations as well.

While Smashburger is still a new chain, it has gained popularity quite rapidly due to its gourmet and regionally diverse burgers. To date, Smashburger already has more than 370 locations in 37 states and 9 countries.

In-N-Out has used its registered trademarks for DOUBLE-DOUBLE and TRIPLE TRIPLE since 1963 and 1966, respectively. Smashburger debuted its Triple Double burger in July of 2017. The Smashburger Triple Double features two burger patties and three slices of cheese. In-N-Out claims that Smashburger’s use of “triple-double” is too much like its own DOUBLE-DOUBLE and TRIPLE TRIPLE trademarks and that is it intended to mislead the public into thinking Smashburger products are related to or authorized by In-N-Out burger.

Despite this alleged trademark infringement, In-N-Out will no doubt continue to be successful partly due to its iconic secret menu. In-N-Out has gained notoriety for secret menu items such as Animal Style fries which are French fries topped with cheese, grilled onions, and In-N-Out’s special sauce.

Smashbuger’s claim to fame is its unique cooking method of “smashing” burgers. Smashburger puts a steady press on the fresh and never frozen angus beef patties and uses butter in its oil to both evenly cook the meat as well as lock in moisture. In additional to these methods, Smashburger dresses burgers with gourmet toppings such as goat cheese, truffle mayonnaise, and mini portabella mushrooms. These toppings also vary by region to offer a new Smashburger experience at various locations across the U.S. while still remaining under eight dollars per meal in a ten-minute prep-time.

In-N-Out has a history of protecting its brand from copycats and in the past has sued restaurants for similar décor, uniforms and logos. It may not be a coincidence in that other restaurants are likely tempte... Read the rest

New Balance Wins $1.5 Million Trademark Case in China

By Joseph Mandour on August 25, 2017

San Diego – New Balance won a trademark infringement case in China against three Chinese shoemakers that were held to be infringing on New Balance’s signature slanting N logo. The case is notable because this is the largest trademark infringement award ever granted to a foreign business in China.

This is not only a win for New Balance, but the decision paves the way for other foreign companies in China who continue to face the same struggles with intellectual property infringement. Many are frustrated that courts in Beijing have not done enough to protect foreign brands from trademark infringement. The $1.5 million compensation may be small via international standards, but is significant since it occurred in China.

New Boom, New Barlun and New Bunren are the Chinese shoe wear companies that were held to be infringing. The New Balance look alikes were copying everything about the brand aside from the name, but were still protected under China’s trademark laws. China’s trademark laws allow companies to file for a trademark on a “first come first serve” basis. New Boom and the other defendants were held to be relying on “free-riding” and creating consumer confusion.

The Chinese government is said to be determined to confront and take action on the nationwide counterfeit and piracy problem. New Balance has been selling shoes in China since 1995 and has continually faced struggles with infringements. In 2015, New Balance was not as successful when it lost a lawsuit to someone who registered the trademark for the Chinese name of ‘New Balance’. New Balance was fined $16 million, which was later reduced to $700,000.

China passed a new trademark law in 2014 that increased the penalty for trademark infringement. Prior to the new law, infringement cases were insignificant and statutory damages seldom reached $75,000. Under the new law the amount increased to $450,000 which led to the New Balance award being so substantial. With the New Balance case leading the way it appears that China is not all talk and that w... Read the rest

Pierogi Fest Trademark Battle Heats Up

By Joseph Mandour on August 3, 2017

San Diego – A pierogi is a delicious savory dumpling part of Polish heritage. It’s also the center of a trademark dispute between a Chamber of Commerce and Hometown committee separated by 700 miles in Pennsylvania.

The pierogi takes center stage in the names of two Polish cultural festivals complete with parades, vendors, games, and other activities. There’s the Pierogi Fest in Whiting, Pennsylvania and the Edwardsville Pierogi Festival in Edwardsville, Pennsylvania. The Pierogi Fest in Whiting alleges that it began use of the trademark in 1994. Each year, the festival brings in almost 300,000 people. They argue the Edwardsville Pierogi Festival is engaging in trademark infringement.

The Edwardsville Pierogi Festival, which began in 2014, brings in less than 5,000 people to its small town. With a population of only 4,7000 it’s the only county in the United States where the most common ancestry is Polish.

The Whiting Chamber of Commerce sent two cease and desist letters stating its intention to take legal action if necessary. The first, sent on May 13, 2015, claims the services offered at the Edwardsville festival are in direct competition with their own festival. The Whiting Chamber of Commerce believes there is likelihood for customer confusion. The letter requested that Edwardsville cease use of all trademark similar to Pierogi Fest.

The second letter, sent in June 2017, repeated those trademark infringement claims and stated that Edwardsville’s sponsors could also be liable for trademark infringement. The Chamber indicated that it is open to discussion about trademark licensing, as it currently does with other festivals. The letter said the Chamber would postpone filing a federal complaint in order to give enough time to resolve the issue out of court. This letter was also sent to sponsors of the Edwardsville festival, which Edwardsville claims made the sponsors apprehensive about continued participation.

In response, the Edwardsville Hometown Committee filed a federal complaint. The Committe argued that the Whiting Ch... Read the rest