Meowington Trademark Fight Escalates
By Joseph Mandour on March 17, 2017
Los Angeles – A Florida based entrepreneur is now suing professional entertainer Joel Zimmerman, better known by his stage name Deadmou5, in federal court over a cat name. The dispute began when Zimmerman filed a Petition to Cancel against Emma Bassiri’s Meowington trademark in the Trademark Trial and Appeal Board.
Ms. Bassiri owns the “Meowington” trademark registration, and Zimmerman owns a famous cat that goes by the name “Prof. Meowingtons.” Bassiri applied to register trademark “Meowingtons” with the United States Patent and Trademark Office (USPTO) in July of 2014. Her application was approved without opposition from Zimmerman, or anyone else. Therefore, in March of 2015, Bassiri was granted the trademark for Meowingtons.
In 2014, Bassiri created Meowington.com which is an online retail store that caters to what she claims is an, “underserved demographic of cat owners and cat enthusiasts.” Prior to launching her business, she conducted extensive market research. During her process, she discovered that her first choice in brand name, “Meowington,” was available. Over the past three years, Meowington has been a leading producer of cat themed products, selling cat clothing, jewelry, bags, and various other associated products.
Zimmerman adopted his cat, Professor Meowingtons, in 2010. Professor Meowingtons is considered a minor celebrity. The pet cat has an online following, including thousands of social media followers across varied outlets. Zimmerman filed a petition with the USPTO to cancel Bassiri’s trademark after his application for Professor Meowingtons was rejected.
Zimmerman claims that Bassiri is a longtime fan of his music, was aware of his cat’s fame when she registered her trademark, and is seeking to draw a false connection between the two with a brand name that is “confusingly similar.”
Zimmerman filed his “Prof. Meowingtons” trademark application on an“intent-to-use” basis. To this day, he has not provided any evidence of when he has ever used the trademark to sell a product or service.
Regardless, Zimmerman is asserting his common law right to the trademark due to the prior fame of his cat which began in 2011. With the new federal lawsuit, it appears that neither p Read the rest
Kobe Bryant Files Opposition Over “Black Mamba” Trademark
By Joseph Mandour on March 2, 2017
Los Angeles – Former Los Angeles Lakers star Kobe Bryant’s nickname, the “Black Mamba”, has landed him in a legal battle to defend the right to use the nickname. Bryant and a California based online retail company named 47 / 72 Inc. have filed trademark applications for variations of “Black Mamba.”
Bryant was drafted directly from high school in 1996 and played in the NBA for 20 years before retiring after last season. Nike declared April 13, 2016, which was the date of Kobe Bryant’s last game, “Mamba Day” because over the course of his career he had been given the nickname the “Black Mamba.”
On May 2, 2016, less than a month after his last game, Bryant filed a trademark application for “Black Mamba” for apparel with the U.S. Patent and Trademark Office. The application was filed on an intent-to-use basis meaning that at the time of the filing Bryant did not allege use in commerce.
The problem for Bryant is that on April 19, 2016, just two week before he filed his Black Mamba trademark application, 47 / 72 Inc. filed a trademark application for “The Black Mamba” also in relation to apparel. Surprisingly, despite basically identical trademarks and the same goods, the trademark office approved both applications. To prevent the 47 / 72 Inc. application from registering, Bryant was forced to file a Notice of Opposition against the “The Black Mamba” application. In the filing, Bryant claims that the 47 / 72 Inc. brand is too similar to his own and that it will confuse consumers into believing that the online retail store is the same as or connected to Bryant.
Since Bryant’s application was filed subsequent to the 47 / 72 Inc. application, he is relying on common law rights and the prior fame of his nickname to assert his claim. Bryant alleges that beginning in 2007 he and his company Kobe Inc. authorized his business partners and sponsors to start using the nickname on a wide variety of products. Thus, he claims he has been using the nickname as a brand for nearly 10 years.
This is not the only trademark application filed by 47 / 72 Inc. The company has recently filed 69 trademark applications many of which appear likely to run into infringement issues such as PETS.COM, POP (T)ART, and MAKE AMERIK Read the rest
Tesla and Adidas Tangle Over 3 Stripe Design
By Joseph Mandour on February 16, 2017
Los Angeles – Tesla’s design for its Model 3 vehicle logo received a rebrand around the same time Adidas filed a notice of opposition of one of its pending trademark applications, causing some to speculate Tesla’s changes were made in hopes of avoiding a trademark battle between the two companies.
Tesla filed a trademark application on August 9, 2016, for a horizontal stripes design. The three horizontal lines trademark is similar to the “e” part of Tesla’s branded image. The application was to cover the design on a variety of goods, including apparel and automobiles.
Adidas recently filed a notice of opposition over Tesla’s proposed logo, claiming the logo infringes the Adidas 3-Stripes trademark. The stripes in the Adidas trademark, usually found to be diagonal or vertical, were first registered as a trademark in 1969 and Adidas is known to be very aggressive in policing similar uses.
Adidas has argued that its 3-stripe trademark is well-known, given the company is a leading producer of athletic goods, sponsors word-wide athletic events such as the FIFA World Cup Soccer, and has partnered with famous brands and individuals. Given the scope of the trademark’s popularity, Adidas claimed that Tesla had full knowledge of the registration and the fame of the 3-Stripes trademark.
The notice of opposition filed by Adidas asserted two claims. First, a likelihood of confusion of affiliation, which will damage Adidas in its advertising and sales efforts. Second, dilution of the distinctive quality of Adidas’ 3-Stripes trademark, which Adidas argues will also damage the company.
The two companies work in different business spheres, with Tesla being a manufacturer of automobiles and Adidas being an apparel company. However, Adidas expressed concern that the goods referenced in the Tesla registration are the same goods Adidas sells, such as baseball hats and jackets; therefore, the goods are sold to the same types of consumers looking for the same types of p Read the rest
Former NFL Player Sues Under Armour For Trademark Infringement
By Joseph Mandour on February 8, 2017
San Diego – Former National Football League and University of Maryland star Shawne Merriman, along with his company Lights Out Holdings, filed a lawsuit against sportswear company Under Armour over the trademarked phrase “Lights Out.”
“Lights Out” is a phrase Lights Out Holdings trademarked back in 2007. It was Merriman’s nickname throughout his football career, beginning in high school when he knocked four players unconscious during a game. “Lights Out” eventually became the name of his successful San Diego-based company offering multiple product lines.
Recently Under Armour launched a basketball shoe line with Stephen Curry titled “Curry 3 Lights Out,” along with a “Lights Out” mobile game.
Merriman is claiming that Under Armour’s use of the phrase “Lights Out” is a trademark infringement, and that Under Armour is using the recognition of Merrirman’s Lights Out branding to appeal to customers. Merriman argues that the popularity of his brand along with Under Armour’s similar use is likely to lead to confusion among consumers as to brand affiliation.
The lawsuit also claims federal unfair competition, common law unfair competition, false endorsement, violation of the California business and professions code, and breach of contract.
Merriman’s company is seeking a permanent injunction and damages to be decided upon by a jury trial. It also seeks $2 million for every counterfeit item sold, offered for sale, or distributed. Merriman and Lights Out Holding attempted to negotiate with Under Armour in hopes of avoiding the lawsuit, but the parties were unable to reach an agreement.
In response to the lawsuit, Under Armour released a statement saying “We are aware of Mr. Merriman’s claims and find them without merit. Under Armour plans to defend the case.”
This isn’t the first time the two parties disputed over the “Lights Out” trademark. In March 2015, they reached a settlement over a similar trademark infringement claim.
The newest lawsuit was filed in the U.S. District C Read the rest
LA Chargers Trademark Application Opposed by LA Gear
By Joseph Mandour on January 27, 2017
Los Angeles – The former San Diego Chargers recently announced that they are moving and will become the Los Angeles Chargers. However, the company owning the team, the Chargers Football Company LLC, has run into some trouble getting a trademark for “LA Chargers”.
Chargers Football Company filed a trademark in January 2016 on an intent to use basis for “LA Chargers”. The trademark was intended to be broad, covering a variety of sports merchandise from posters to toys to athletic gear. The trademark was published for opposition on December 20, 2016. That same day, L.A. Gear, Inc., filed a Notice of Opposition against the Application. LA Gear is a sports footwear company founded in 1979.
LA Gear expressed concerns in its opposition that consumers would be confused between the Chargers trademark application and the 22 trademarks that LA Gear had already filed dating back to 1985. LA Gear argues that because the sports and LA-themed merchandise will be marketed to the same consumers, people may believe the Chargers’ products are connected to LA Gear. Consumers, for example, may assume the products originated from or were sponsored by LA Gear. If a consumer is dissatisfied with the Chargers product, it could damage LA Gear’s reputation.
LA Gear’s concerns apparently only apply to the proposed LA Chargers trademark, not the Los Angeles Chargers trademark. The Chargers have a few options even if the Trademark Trial and Appeal Board rules in favor of LA Gear. The Chargers can fight the issue in federal court. One argument would be that the trademark is weak because other LA sports entities have existed alongside LA Gear for many years. The LA Dodgers existed before LA Gear, and the two brands coexisted for more than 30 years. The LA Galaxy registered its trademark in 2008, with no opposition by LA Gear. It would appear that LA Galaxy is more similar to LA Gear than the LA Chargers. The Chargers can argue that since these organizations exist alongside L Read the rest
DJ Threatens to Sue to Get Trademark for Cat’s Meowingtons Name
By Joseph Mandour on January 4, 2017
Los Angeles – A cat named Meowingtons is at the center of a recent trademark controversy. Meowingtons is a black and white cat adopted from the Humane Society by famous EDM DJ Deadmau5 (pronounced dead mouse). The Meowingtons trademark is currently registered to Emma Bassiri, but Deadmau5 is threatening to sue to cancel her trademark registration.
The DJ, whose real name is Joel Zimmerman, began using the Meowingtons name publicly in 2010. The Meowingtons name is an extensive brand. Several social media accounts are run under the name. There is a Meowingtons headphone line. The name is featured on Deadma5 merchandise, and even was the name of a tour. While the branding is distinct from Deadmau5 branding, it’s closely tied to the Deadmau5 brand.
In 2015, Zimmerman went to trademark the name Meowingtons and found it was already registered to Bassiri. Bassiri lives in Florida and uses the name for her website selling cat-themed merchandise, which opened in 2014.
Zimmerman claims Bassiri knows the name Meowingtons is connected to his business and is trying to profit off an implied connection, since she follows him on social media and even posted a picture of a nearly-identical cat from her social media. He said he made repeated requests for her to cease using the name, but thus far she has refused to comply.
Zimmerman makes multiple claims in a response to office action related to his trademark application. He has also argued that confusion among consumers is likely and to support this he claims to have evidence of actual confusion in the form of several examples of people asking if he’s involved with the store along with examples of people tagging his cat’s social media profile when posting about their purchase from Bassiri’s website.
Consumers aren’t just being confused about Zimmerman’s connection to the other site, Zimmerman argues his brand perception is being damaged by association. Bassiri’s company received an “F” rating by the Better Business Bureau, with complaints about product quality, customer service, and false and misleading advertising. These customer frustrations could damage their perception of Zimmerman’s Meowingtons brand.
Since Bassiri currently owns the trademark registration, Zimmerm Read the rest
Kardashian Sisters File Opposition to Blac Chyna’s Kardashian Trademark
By Joseph Mandour on December 13, 2016
Los Angeles – The sisters Kardashian are in another trademark battle, and this time its family. This year Blac Chyna, who is the mother of Rob Kardashian’s (the sister’s brother) first child and the star of Rob and Chyna, filed a trademark application for ANGELA RENEE KARDASHIAN with the United States Patent and Trademark Office. Last week, the corporations owned by the Kardashian sisters filed an opposition to the trademark claiming that its use would confuse the public.
Chyna and Rob have been talking about getting married, so it would be her future married name that she is trying to trademark. But the attorneys for the Kardashian sisters, Kim, Khloe, and Kourtney, say that this trademark would cause damage and irreparable injury to their reputations and goodwill if it were to be granted. The corporations owned by the Kardashian sisters state that Blac Chyna is deliberately seeking to profit off of the goodwill they have created in the Kardashian name. The sisters concern is that Blac Chyna’s use of the Kardashian name will cause the public to believe it is one of their products.
Although the attorneys of both sides have not commented because the case is active, a source said that the Kardashian’s trademark attorneys automatically oppose anyone trying to trademark the family name. It has been suggested that the sisters might not even know of the opposition but that is very unlikely since an attorney cannot act without the consent of a client. At first it may appear that this would cause a rift in the family, but then one must consider that the family is all about publicity and staying in the public eye. So, it is very possible that not only do the sisters know, but that they also planned the entire scenario just to concoct another story line for their various TV shows.
The trio’s corporations and named plaintiffs are Khloemoney Inc., 2Die4Kourt and Kimsaprincess Inc., and the lone defendant is Lashed, LLC. Thus far an Answer has not been filed to the Opposition. The Answer is due by January 10, 2017, and if one is not filed the sisters will automatically prevail.Read the rest
Snuggie Maker Sues Amazon for Trademark Infringement
By Joseph Mandour on December 9, 2016
Los Angeles – The creator of the Snuggie blanket, Allstar Marketing Group, along with two other companies that sell products on Amazon are in a lawsuit with the mega online retailer alleging that it committed trademark infringement. The lawsuit claims that Seattle-based Amazon is allowing many other competitors to flood Amazon’s marketplace with counterfeit items which is causing a loss in consumer good will and profit. ”
The alleged counterfeit items are being sold by companies in China, Japan, and Thailand. The counterfeits price their comparable items below market and otherwise try to confuse consumers into buying the counterfeit while believing it is the legitimate version. Online retailers have long been known as a counterfeiting haven because it is easy for counterfeiters to pop up and then disappear just as quickly when the infringement has been discovered. Amazon has actively taken a stance against counterfeit items but it is a never-ending task. To prevent the problem from occurring at all, companies like the NFL and Birkenstock refuse to sell their products on Amazon.
The three companies involved in this recent lawsuit include Allstar Marketing Group LLC, Ideavillage Products Corporation, and Intel Products Corporation. Ideavillage sells Copper Fit compression sleeves and Intel sells Magic Tracks toy racetracks. All three of the companies also sell As Seen on TV products. The counterfeiters on Amazon often use fake images of the products to entice buyers. At times it can be virtually impossible to determine which is the counterfeit and which is the legitimate product.
A few weeks ago, for the first time ever Amazon filed two of its own lawsuits against counterfeiters. The lawsuits are on behalf of TRX which is a maker of athletic training equipment, and Los Angeles-based Forearm Forklift which sells a patented device which facilitates picking up and moving large items. Both lawsuits are still pending and thus far representatives at Amazon aren’t commenting. However, sellers on Amazon can now be encouraged that Amazon is Read the rest
Ohio State Accuses CafePress of Trademark Infringement
By Joseph Mandour on November 9, 2016
San Diego – Ohio State University has filed a trademark infringement lawsuit in federal court in Columbus, Ohio against CafePress, an online retailer based out of Louisville, Kentucky. The lawsuit claims that the online retailer is selling apparel and other merchandise that infringes on Ohio State’s trademarks.
The lawsuit states that merchandise with “Buckeyes” or “O-H-I-O” and pictures of its football coach Urban Meyer are infringing since the uses are without permission from the university.
The lawsuit claims that CafePress “unlawfully appropriated Ohio State’s trademarks and violated the publicity rights assigned to Ohio State by head football coach Urban Meyer.” In May of 2012, Coach Meyer gave Ohio State permission to trademark and use his image for merchandising and other marketing purposes.
The lawsuit also claims that CafePress sold products such as shirts, bags, mugs, calendars and more that appeared to be endorsed, licensed or approved by Ohio State University when in fact this is not the case. CafePress allows users to place custom logos on various types of merchandise and perhaps as a result has gained a reputation as a haven for infringing merchandise. CafePress has declined to make any comment regarding the allegations.
Deborah Mitchell, a professor of marketing at Ohio State’s Fisher College of Business, commented on the need for universities, particularly Ohio State, to become more protective of their brand and show the value in what it can do for the university. This lawsuit continues a recent trend of universities being more proactive in protecting trademarks.
Apart from preserving valuable trademarks, universities are also increasingly searching for avenues to generate more revenue, so product sales are becoming more of a focal point. With coaches’ salaries nearing the $10 million per se Read the rest
Trump TV Trademark Might Be Taken
By Joseph Mandour on October 31, 2016
Orange County – In a little more than a week, our country will elect a new president. Early voting aside, it is estimated that not all Democrats are voting for Hillary Clinton and not all Republicans are supporting Donald Trump. If for some reason Trump doesn’t win on November 8th, he may already have his contingency plan in place for what he will do next.
For weeks, there have been rumors that Trump may start his own television network if the election doesn’t go his way. It has also been suggested that he would consider taking over an existing network. For what it’s worth, Trump has stated that he has no desire to start a network. “I have no interest in Trump TV,” Trump told an Ohio radio host. “I hear it all over the place, and you know, I have a tremendous fan base. … But I just don’t have any interest in that. I have one interest, and that’s on Nov. 8.”
Although Trump is very focused on the campaign, if there is a remote chance that he does want to get his own television network, he’s going to have to fight for the right. A New York physician and lifelong Democrat, Mark Grabowsky, has filed for the “Trump TV” trademark. If Trump does indeed want the trademark to create his show, his team will have to go to the U.S. Patent and Trademark Office to fight for it.
Even if Trump TV is not a current interest, Trump does have a history of making a profit from trademarking his personal brand and may be upset that someone else has the trademark to a possible profit avenue that he would want to pursue someday in the future.
Earlier this month, Trump’s campaign debuted the first episode of “Trump Tower Live,” a talk show that you can stream on Facebook. In true Trump fashion, he launched his own “news program.” It has been suggested that this online broadcast is a warm up of what’s to come.
Grabowsky has already admitted to a newspaper that he has no intentions of actually using the trademark, which means that it will Read the rest