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

Ivanka Trump’s Company Has Filed 14 Additional Trademark Applications in China

By Joseph Mandour on June 8, 2017

Los Angeles – On March 28th, 2017, Ivanka Trump’s company filed for at least 14 trademarks in China. It is the latest wave of trademark applications filed by the Trump family companies. Last year, Ms. Trump’s company filed 36 applications. These trademark applications raise ethical concerns over the Trump family’s business ties while holding public office.

Specifically, there is concern that the Trumps are susceptible to influence from foreign nations. According the Larry Noble, general counsel for the US watchdog group, Campaign Legal Center, China knows that denying these trademarks would draw a negative reaction from the President of the United States, and approval would draw a favorable one. This type of situation with a foreign nation can lead to an Emolument, of profiting from elected office, which is prohibited under the Constitution. Noble is concerned that China can pressure the president or white house staff by granting or denying the trademark applications related to their private businesses.

Ms. Trump stepped down from her management role in her company when she became a White House advisor. Her attorneys have stated that her assets have been transferred to a trust and she would recuse herself of policy matters, like trade agreements, that could affect her business. Even still, she retains possession of an ownership stake in her company. She stands to benefit from these trademark applications and the general success of the business.

Ms. Trump’s company, which primarily specializes in clothing fashion and accessories, is particularly popular in China, where Ms. Trump is admired for her success and femininity. The company claims it filed the trademark applications to protect itself from a “surge” of unrelated third parties who were trying to claim the Trump name for themselves. Ms. Trump’s attorneys insist that the applications were “normal course for business.”

Noble, while admitting that the motivation behind the trademark applications may be sincere, asserts that it does not matter. He claims that Ms. Trump should have either sold her entire stake in the company or removed the company from foreign markets entirely. In a statement made in response to the latest Trump trademark applications, he said that becomi Read the rest

Trump Trademark Victory in China Sparks Ethics Questions

By Joseph Mandour on February 23, 2017

Orange County – Last week, China’s trademark review board awarded President Trump and his organization a trademark that Trump had been seeking for nearly a decade. Namely, the Trump organization has been awarded trademark protection for the use of the Trump name in the construction industry. China’s action, coupled with Trump’s decision to place his assets in a trust run by his adult sons, has sparked an ethical predicament that is drawing sharp debate.

The crux of the argument is whether President Trump is in violation of the foreign emoluments clause of the Constitution. Article I, Section 9, Clause 8 of the Constitutional Clause reads as follows: “… no Person holding any Office of Profit or Trust under them, shall, without the Consent of the Congress, accept of any present, Emolument, Office, or Title, of any kind whatever, from any King, Prince, or foreign State.”

An emolument is, per Webster’s Dictionary, an advantage. The Trump Organization stands to gain a business advantage from the trademark committee’s decision. As President Trump still has ties to his organization through his sons, President Trump stands to gain financially from China’s action.

The timing of China’s decision is the cause for concern. The Trump Organization fought for this trademark, unsuccessfully, for nearly ten years. Then, in September of 2016, during Trump’s rise in political status in America, China reversed its longstanding position on the trademark. The question is, why? “China is going to want concessions from Mr. Trump, and this is now the first in what will be a series of efforts to influence him” stated Norman Eisen, a White House ethics counsel under President Obama.
The Trump Organization lawyers are objecting to the claim that President Trump will be influenced through China’s decision. They argue instead, that the Trump organization is merely protecting its trademark from someone who had been “squatting” on it improperly.

Furthermore, they argue that China’s decision had less to do with influencing the Presidency, and more to do with the rise in Trump’s fame. As Trump is now more famous in China, his fame gives him a stronger claim to the brand oversees.

Also, it is possible that the decision is Read the rest

Trump Files Trademark for “Keep America Great” Re-election Slogan

By Joseph Mandour on February 2, 2017

Orange County – Days before taking the oath of office, Donald Trump filed a trademark application for the “Keep America Great” slogan for his re-election campaign. The slogan is intended to build off the 2016 slogan: “Make America Great Again.” This phrase, and particularly the baseball caps printed with the phrase, were central to Trump’s election.

Trump revealed his 2020 campaign slogan during an interview with the Washington Post. Immediately after revealing the slogan, he called in his lawyer and directed him to file trademark applications for “Keep America Great” and “Keep America Great!” Then he returned to the interview. The attorney obliged but there is little legal value in filing both since they are so similar.

“I am so confident that we are going to be [great], it is going to be so amazing,” Trump said. “It’s the only reason I give it to you. If I was, like, ambiguous about it, if I wasn’t sure about what is going to happen — the country is going to be great.” Trump’s trademark for the slogan was filed on January 18, 2017, and applies to goods and services such as advertising signs and apparel.

There are potential issues with the slogan, however. Trademark applications for “Keep America Great” and “Keep our America Great” were filed for apparel prior to Trump’s application. Also, the horror film “The Purge: Election Year” uses the phrase as its tagline. The film’s writer revealed that he chose the slogan in direct response to Trump’s 2016 election slogan which is something he should not have admitted since it is against his interest. For each application and use, Trump is likely to be able to show that his rights are superior due to his prior use and the fame of his trademark.

Trump began making moves to trademark the “Make America Great Again” slogan quickly after the 2012 election. The slogan was criticized by Democrats and the media, yet it seemed to perfectly encapsulate his campaign and became a Read the rest

USPTO Denies Trademark Application for NHL’s Newest Team

By Joseph Mandour on December 22, 2016

Orange County – The NHL’s newest team – the Las Vegas Golden Knights – ran into legal trouble over its name less than a month after a big Vegas-style ceremony revealing the team name to the public. The trademark application that the team filed for its name was denied by the United States Patent and Trademark Office.

The refusal was due to an alleged likelihood of consumer confusion with a prior registered trademark. The name Golden Knights is already registered to the College of Saint Rose, a small private college in Albany, New York.

The USPTO Office Action claims that the NHL’s team shares the same name, a similar logo, and similarities in how the brands are marketed. While Saint Rose is a collegiate-level sports entity and lacks a hockey team, the school and the NHL team are both sports teams marketed to the same audiences in the same venues. The decision was made solely by the USPTO, with no input from the College of Saint Rose. The College of Saint Rose registered its trademark in 2004. The school has declined to comment on the legal issue.

Another potential player in the trademark conflict is the U.S. Army Parachute Teams, which have used the name Golden Knights since the 1960s. Their legal team is deciding whether to challenge the name.

The Las Vegas NHL team has until June 7, 2017 to file a response in its attempt to overcome the initial refusal. The team released a statement arguing that there are many examples of college sports teams and professional sports teams sharing the same name, such as the UCLA Bruins and Boston Bruins.

The NHL Deputy Commissioner said there are no plans to change the team’s name or logo, and that the NHL will give a response about why it strongly believes that the trademark should be registered. The team will continue to sell merchandise with the Vegas Golden Knights name and logo.

The team’s first game won’t occur until October 2017, but these legal issues could cause problems for the team now. The team is in the process of pursuing sponsorship deals, television rights, and building a fan base, all things the dispute can threaten. Without the trademark, the team may be limited in its ability to fight against unauthorized use of its trademark. Likewise its own use could sti Read the rest

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