Tesla Files Teslaquila Trademark for Liquor

By Joseph Mandour on October 17, 2018

Orange County – In April, Elon Musk made some noise on social media with his April Fools joke hinting at a Tesla-branded Tequila. Apparently it wasn’t a joke. On April 10th Tesla filed a trademark application for Teslaquila in Jamaica for “distilled agave liquor” and last week Tesla followed it up with the same filing in the United States.

In the original Teslaquila April Fool’s joke, in a twitter post Musk said that the the electric car company was going bankrupt and alluded to him being found passed out against a Tesla Model 3 surrounded by Teslaquila bottles. A few days later on Instagram, Musk posted a photo of a tequila bottle with a Teslaquila label plastered on it. Now we know a few days after that Tesla actually filed the trademark application in Jamaica.

At this point it is unclear whether this will simply be a novelty item or if Tesla intends to make a real push into the distilled spirits business. After all, in a perfect Tesla world where a Tesla drives you rather than vice versa, one day drinking and driving a Tesla on autopilot may be legal.

It has been a strange 2018 for Tesla so far. At the start of 2018, the company reportedly had approximately 40,000 employees. However, in June Tesla initiated massive restructuring within the company and laid off close to 9% of its entire workforce. Tesla reduced its total number of employees from 40,000 employees to somewhere in the low to mid-30,000 range.

The restructuring of Tesla was in an effort to manage the enormous growth rate the company had through 2017 and to date in 2018. Following the restructure, Tesla then immediately commenced with hiring again and has since grown to 45,000 employees.

Tesla does have an army of contract and temporary workers. However, alongside the restructure, Tesla carried out a purge of those on temporary contracts. Tesla can attribute the majority of its growth to the Tesla Gigafactory 1 in Sparks, Nevada. When 2018 began, Tesla’s Gigafactory 1 employed more than 3,000 workers. However, according to Elon Musk, Gigafactory 1 now has more than 7,000 employees, and Musk is expecting eventual growth up to 20,000 workers at the Gigafactory 1 alone.

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Growth in Chinese-based Trademark Filings is Becoming a Concern

By Joseph Mandour on July 30, 2018

San Diego – For more than 20 years China has been the largest trademark register in the world, and the pace of filings are only continuing. The increase is party tied to overall economic growth in China. In the first quarter of 2018, China’s GDP rose 6.8 percent and is predicted to increase another 6.7 percent in the next quarter. Along with GDP, the trademark filing activity has had rapid growth. Within the past two years, China’s trademark applications have doubled.

To put the numbers into perspective, in 2017 China had ten times more trademark applications than the United States. Compared to Europe the numbers are even more surprising. More than 116,000 trademark applications were filed in China in the first week of September in 2017, which is more trademark applications than were submitted for the entire year of 2016 in the European Union Intellectual Property Office.

China’s trademark dominance is not limited to just China. Chinese applicants filed close to 120,000 foreign applications in 2017. Although China makes up only 19% of the world’s population, it holds more than 50% of the worlds trademark applications. In a span of 10 years, Chinese brands have moved from number ten to number two in worldwide trademark filing volume. The United States currently holds the number one spot, but at China’s rate in growth, it will soon overtake the United States for the number one spot. If China continues at its current rate of growth, it will take first place by 2020.

In the United States, one out of ten trademark applications filed by a Chinese applicant. The recent increase in Chinese filed applications in the U.S. has caused some concern because the United States Patent and Trademark Office is currently feeling a backlog from the increased Chinese activity. Others are concerned by the flood of foreign filings in the U.S. because it is making it more difficult for U.S. businesses to get trademarks registered here.

Over the last four years, we have seen a significant change with China’s 1.4 billion consumers in trademark filing activity. At the current pace of growth, there is no letdown in sight.

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UMBC Retrievers Seek Trademarks After March Madness Win

By Joseph Mandour on March 21, 2018

San Diego – The University of Maryland Baltimore County (UMBC) Retrievers, a No. 16 seed, had a win no one saw coming during March Madness in Charlotte, NC. The Retrievers played the Virginia Cavaliers, a Number 1 seed, and took the nation by surprise when they won the game in convincing fashion, 74-54. This marked the first time in the history of the NCAA men’s basketball tournament that a Number 16 seed defeated a No. 1 seed.

Throughout the game, Jairus Lyles led the team to the win, as the whole team was energized from his confidence, which only seemed to shake Virginia more. The game really took a turn when Lyles made a three-pointer with 14:57 left on the clock which put the Retrievers up by 14 points. Although Virginia had plenty of time to make their come back, they did not appear confident that they could win the game.

UMBC was not ready for such a big triumph in many ways. With all of the attention that the win created for the program, the leadership of the school quickly made a decision to file several trademark applications with the United States Patent and Trademark Office including for “UMBC Retrievers” which had never been done. UMBC Athletic director Tim Hall also quickly approved trademark applications for “Retriever Nation” and “16 over 1.”

“UMBC wanted to make sure that it took the necessary steps to be proactive as its athletics brand became the most talked about topic in the world,” according to Heitner. It was widely reported that the school submitted Class 25 filings for each trademark, meaning the trademarks will cover clothing and footwear. As of this writing however, none of the trademark applications could be confirmed. Typically trademark applications show up with the U.S. Patent and Trademark Office within 3 business days of filing.

Merchandise is quickly being sold from the UMBC bookstore, which had to open over the winning weekend to keep up with demand. On Sunday, the Cinderella story quickly ended as UMBC was defeated by Kansas State which eliminated the Retrievers from the tournament. Regardless of the loss, the players were still enjoying the upset win. Daniel Akin said, “No one can take away the feeling of beating the No. 1 team in the country” and Arkel Lamar added, ... Read the rest

The Philadelphia Eagles Must Wait in Line for “Philly Special” Trademark

By Joseph Mandour on February 27, 2018

Orange County – Fresh off its first-ever Super Bowl win, on February 15th the Philadelphia Eagles filed a U.S. Trademark Application for “Philly Special” for apparel. The phrase “Philly Special” was made famous by the Philadelphia Eagles in the Super Bowl in relation to a trick play. The phrase was called out by the team in the second quarter, on a fourth-and-goal when QB Nick Foles caught the ball in the end zone. Days after the Super Bowl win the Eagles were already using the phrase on shirts with the team’s logo.

One problem for the Eagles is that on February 9th, six days earlier than the Eagles, D.G. Yuengling & Son Inc. also filed a U.S. Trademark Application for Philly Special. Yuengling is America’s oldest brewery and is also located in Pennsylvania. Since Yuengling filed its Philly Special trademark application first, Yuengling could possibly have maintained prior rights. However, to avoid the conflict, Yuengling decided to expressly abandon its application so that the phrase could instead be owned by the Eagles. Yuengling was going to use the phrase for one of its beers but after learning that the Eagles had plans to use the trademark, instead decided to simply abandon it.

Unfortunately for the Eagles, Yuengling was not alone in filing for Philly Special before the team did. During the three days from February 5th to February 8th, a total of six such trademark applications were filed.

The trademark office will examine the Philly Special trademark applications in the order that they were filed, so the original application filed by Joseph Tallarico for sandwiches could possibly be approved even though it is the Eagles that made the phrase famous. The second application for Philly Special filed by Nathaniel Shoshan for apparel could also be approved due to the differing goods. All of the other applications would then be rejected due to the prior filings. It would then be up to the Eagles to oppose one or both of the prior filed applications by claiming that it is the team that made the phrase famous and therefore the team is the true owner of the trademark. It is also possible that the trademark will be aware of the prior fame of the trademark and then reject all applications other than the one filed by the Ea... Read the rest

Hard Candy Cosmetics Abandons its Trademark for #MeToo

By Joseph Mandour on January 22, 2018

Los Angeles – Popular makeup brand Hard Candy Cosmetics filed a trademark application for #MeToo in October 2017 which created great controversy. Hard Candy was looking to brand a line of fragrances and cosmetics with the hashtag #MeToo. #MeToo has been at the core of a social movement to help demonstrate the widespread prevalence of sexual assault and harassment.

Social activist Tarana Burke is said to have created the phrase in 2007, and it was then popularized by actress Alyssa Milano in 2017 when she encouraged women to tweet #MeToo to demonstrate the scale of the social issue.

Hard Candy Cosmetics has a history of supporting non-profit organizations, and along those lines Hard Candy claims that it filed for the trademark to give back to women and bring greater awareness to the social movement. Hard Candy had planned to donate 100 percent of profits received from the line of goods. However, many survivors of sexual harassment and abuse have taken offense to this trademark attempt because, “It [is] a catchphrase to be used from survivor to survivor to let folks know that they were not alone and that a movement for radical healing was happening and possible,” explained Tarana Burke.

Back in October 2017, when the hashtag went viral, many were afraid that businesses would attempt to capitalize on the phenomenon. Without a doubt, a jewelry company by the name of Adornia released a “Me Too” necklace and stated that they would donate ten percent of proceeds to Rape Abuse Incest National Network (RAINN). Adornia received such strong backlash that they quickly changed the donation percentage to 100 percent.

There are two other applicants for the #MeToo trademark. One company is looking to use it for legal consultation services, and the other for rubber bracelets like the LiveStrong Lance Armstrong bracelets.

As of January 18, 2018, Hard Candy withdrew its application for the controversial trademark after receiving a ton of push back on social media that this was an inappropriate use of the hashtag. Despite the decision to not use the hashtag in their branding, Hard Candy Cosmetics says that it is still planning to strongly support the cause to empower and respect the dignity of women.

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Google Wins Genericide Trademark Case

By Joseph Mandour on October 19, 2017

San Diego – Google recently won a lawsuit which challenged the validity of the Google trademark. Under U.S. trademark law, trademark rights are lost when a trademark becomes the generic name for the goods or services for which it is used. Several brand names have succumbed to this tragic occurrence known as genericide.

Formerly protectible trademarks that lost trademark rights are aspirin, escalator, thermos, and kleenex.

In Elliott v. Google, the Plaintiffs filed the case in the 9th Circuit in California and after losing, petitioned to the Supreme Court to hear the case. The case alleged that Google has become a generic verb for searching something on the Internet via a search engine. According to the petition to the Supreme Court, “There is no single word other than Google that conveys the action of searching the Internet using any search engine.”

The three word term “search the Internet” would be the closet alternative. However, it is understood that despite the public’s use of “Google” as a verb, it does not tell us anything about how the public primarily understands the word itself.

The underlying ruling in the 9th Circuit found that “Google” may frequently be used as a verb, however it is still a brand. As such, the court held that Google remains a protectible trademark. The decision acknowledged that while “Google” can be synonymous with “search the Internet”, the company’s name is still distinct and seen by consumers to designate the source of services.

The Plaintiff’s, David Elliott and Chris Gillespie, claimed that the 9th Circuit’s decision was incorrect because creating verbs out of trademarks, such as “photoshopping” and “rollerblading”, should be encouraged because the “verbing” of trademarks fills holes in the language created by human progress and allows for more efficient and effective communication.

The U.S. Supreme Court ultimately rejected the petition for certiorari to hear the case without offering further commentary. The Ninth Circuit decision therefore holds and... Read the rest

Mississippi Business Man Files Trademark for “N” word

By Joseph Mandour on August 9, 2017

Los Angeles – In June 2017, a Mississippi business owner, Curtis Bordenave, filed a trademark application to the U.S. Patent and Trademark Office for use of a racial slur—the “N” word. The goal behind the trademark filing is not to be offensive, but to change people’s perception and the meaning of the word.

Having trademark applications such as this approved only recently became possible due to a Supreme Court ruling regarding the SLANTS. The SLANTS are an Asian American band that filed a trademark application to protect their band name but were refused because the trademark office deemed the trademark to be offensive. However, in June 2017, the Supreme Court ruled that the federal government does not have the authority to prevent people from trademarking offensive names. Curtis Bordenave and other likeminded individuals want to take these controversial words and turn them into symbols of hope, positivity and unity. Under a similar approach, Steven Maynard, has filed a trademark application for a version of the swastika. Maynard, owner of Snowflake Enterprises LLC in Delaware, wants to be sure that trademark rights to the swastika do not fall into the wrong hands.

Bordenave, who is African American, applied for a similar trademark in 2008 but was not successful. Bordenave is not the only applicant for the “N” word trademark and he also fears the trademark may end up in the wrong hands. Though offensive to some, the “N” word is thought to have marketing potential due to its increased use in popular culture.

Bordenave and Maynard seem to agree that when words and symbols such as these are concealed, the negatively around the words and symbols tend to persist. Bordenave strongly believes that he was meant to trademark the “N” word so that it can be redefined. By giving the word a clear new definition and a stronger, more positive meaning— it becomes more difficult for people to use it destructively. Bordenave insists that by trademarking the “N” wo... Read the rest

Amazon’s Meal Kit Trademark filing Negatively Impacts Blue Apron

By Joseph Mandour on July 20, 2017

Orange County – In the latest Amazon empire expansion, on July 6, 2017 the company filed a trademark application for meal kits. The trademark application is for “We do the prep. You be the chef.” and is for a convenient service whereby frozen and prepared kits including meat, vegetables, pasta, etc. are delivered to your door. The trademark also covers a loyalty rewards program offering points and coupons for loyal customers. This potential service is great news, unless you are Blue Apron.

Blue Apron’s current claim to fame is that it is the largest meal kit provider in the country. Upon news of Amazon’s trademark filing, Blue Apron stock dropped 10%. The company’s shares are currently at an all-time low, below $7. One Wall Street analyst evaluated the company as only being worth $2 a share, citing it as unlikely that the company will become profitable.

Other companies in the meal kit business may have difficultly competing with Amazon due to Amazon’s large customer base and traditional effort to undercut on prices. Amazon’s meal kits are currently set to start at $8 per serving, whereas Blue Apron’s start at $10. But Amazon may find ways to make the servings even cheaper. In the food meal kit industry, customers prioritize cost. Amazon’s history is full of low pricing and outbidding competitors, making it poised to set competitive pricing in this industry as well.

This is not the first time Amazon has embarked into the food delivery world. In 2007, it released AmazonFresh – a food delivery service. The company also currently sells meal kits by established other companies, such as Tyson Foods’ Tyson Tastemakers. It also recently acquired Whole Foods.

The Amazon food kits have been sold in limited quantities since the end of June as part of consumer testing. Currently, they are only available to Amazon Prime Members. The kit subscription cost is $14.99 per month (in addition to the monthly Amazon Prime subscription fee). There are 17 available meal options for consumers. Compared to other meal kit options... Read the rest

The Supreme Court Strikes Down Law Banning Offensive Trademarks

By Joseph Mandour on June 27, 2017

Orange County – The United States Supreme court has ruled in favor of an Asian American rock band who were refused by the trademark office when they applied to trademark their band name the Slants. In their decision, SCOTUS unanimously struck down part of a 71-year-old law that banned “disparaging” terms from being trademarked. According to the court ruling, the law that had banned offensive trademarks infringed on free speech rights, which are guaranteed by the First Amendment of the Constitution.

Simon Tam, the founder of The Slants, said he was “beyond humbled and thrilled” with the decision. According to Tam, the band did not choose its name to be offensive. They were trying to change a derisive term into a statement of pride. Tam had tried to trademark the name in 2011, but the trademark was denied by the U.S. Patent and Trademark Office because it was viewed as offensive to Asian Americans.

The SCOTUS decision has wide-ranging implications. Most notably, the federal case concerning the trademark of The Washington Redskins of the NFL was placed on hold until after the SCOTUS ruled on The Slants. In 2014, the US Patent Office ruled that the Redskin’s brand was offensive to Native Americans and cancelled the team’s trademark. The Washington Redskins have been in legal challenges with the United States government ever since. According to the Redskin’s trademark attorney, Lisa Blatt, the SCOTUS ruling “effectively resolves” the dispute between the NFL team and the government since it now appears that the Redskins name will regain federal trademark protection.

While the decision among the SCOTUS justices was unanimous, the rationale behind the decision was not. In his opinion, Justice Samuel Alito stated that the 71-year-old law that was struck down offends a “bedrock First Amendment principal.” He goes on to explain that the court has no place in preventing speech that is offensive to certain people or populations. In his opinion, the law is obligated to protect freedom to express thought, even thoughts of hate.

In a separate opinion, Justice Anthony Kennedy stated that the ban on disparaging trademarks expressed a form of “viewpoint discrimination” that is forbiden under the First Amendment. He goes on ... Read the rest

Over 30 Trademark Applications Have Been Filed for Trump “Covfefe” Typo

By Joseph Mandour on June 23, 2017

San Diego – On May 31st, 2017, at 12:06am, President Donald Trump tweeted, “Despite the constant negative press covfefe.” Very quickly thereafter, Covfefe went viral on social media. In the subsequent weeks, the word Covfefe has become a cultural phenomenon. It has been at the center of much debate and speculation, as people try to decide what happened during the President’s tweet.

Predictably, a large number of new trademark applications containing the word Covfefe were quickly filed with the United States Patent and Trademark Office (USPTO). According to the USPTO Trademark Electronic Search System, more than 30 trademark applications have already been filed containing the now famous word. The types of goods covered by the applications span a variety of products and services. The trademark is being used to sell coffee, clothing, alcohol, bumper stickers, children’s cribs, and even investment advice.

Unfortunately for the applicants, most if not all of the applications will be rejected. First, all but the first application is likely to be issued an office action due to a likelihood of confusion with the prior pending applications. Next, to file a trademark on an intent to use basis, there must be a bona fide intent to use. Lastly, a trademark must designate the source of goods and thus cannot be merely “ornamental.” In other words, a person cannot simply put a name, logo, or slogan on the front of a shirt and then use that as a specimen of use in a trademark application. For apparel, the USPTO requires the applicant to show use of the trademark on a hangtag or label. In the absence of such a specimen, the USPTO will typically reject the application.

With regard to the intent to use, in the event of a dispute the applicant must prove that they truly have intention to use the trademark in commerce and must be able to produce evidence of such an intent in the form of some documentary evidence. Also, when applying, the applicant must sign a statement confirming that they actually intend to use the trademark for commercial purposes. The hope is to discourage people from filing applications looking for an easy payday with no intention of ever actually using the trademark.

As for the infamous tweet, perhaps one day we’ll know what happened to th... Read the rest

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