Trump Wins Major Trademark Battle in China

By Joseph Mandour on November 17, 2016

Orange County – Roughly ten years ago, in 2006, Donald Trump and the Trump Organization attempted to register his Trump trademark across numerous categories of goods and services in China. After numerous bumps in the application process, Mr. Trump has finally won his fight for the Trump name in China for real-estate-agent services in both the commercial and residential sectors.

Although Trump won the battle for real estate services, the Trump Organization may find more resistance for other goods and services. Of the more than 50 registered trademarks with the Trump name in China, only 21 are currently owned by Mr. Trump. The trademarks have been applied for in several different categories, clothing, beauty salons, pet care products, and golf courses, to name a few.

The beginning of this saga started in 2006 when he applied to register the Trump name in numerous different categories. One of the hiccups came in 2009 when China’s trademark office rejected part of Mr. Trump’s application because someone had already applied for it just weeks earlier. The services that already had the Trump trademark were “construction-information” services, or rather, services provided by real-estate agents. Mr. Trump was still able to obtain trademarks in the commercial and residential areas, for services such as repair and installation of air conditioners, heating systems, escalators, and installation of indoor furnishings and repairs.

Some of the categories that the Trump name is registered but is not owned by Mr. Trump include aquarium products, ammunition, explosives, and tennis rackets. During years of battling out the trademarks in court, Mr. Trump’s appeal was dismissed in 2015, a month before he announced his intentions to run for president of the United States. The Trump team reapplied for the trademark and won provisional approval this week.

In China, it isn’t uncommon for people to grab the trademark of overseas brands. The hope is that the United States companies will settle instead of battle in court to acquire the trademark. This happened to Apple Inc., who had to buy the trademark for the iPod in China. Whether or not the Trump Organization or Mr. Trump himself will use the trademarks they have secured is not known.

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Supreme Court to Decide Whether Offensive Names Can be a Trademark

By Joseph Mandour on October 14, 2016

supreme_courtSan Diego – The Slants, an Asian American rock band from Portland, Oregon, are taking their case to the Supreme Court which will decide whether the band can trademark its name. The band’s trademark application to the U.S. Patent and Trademark Office was refused because the trademark office found that it is an offensive term.

The clash between free speech and trademark protection has drawn wide attention in part because the Washington Redskins football team is locked in the same dispute. According to Dan Snyder the owner of the Washington Redskins, “Ninety percent of Native Americans feel that the name isn’t offensive and shouldn’t be changed.” Snyder claims that the team was named after William Dietz who coached the inaugural Boston Redskins team 80 years ago, before it moved to Washington. Dietz was a Sioux Indian, and the team was named in his honor, “out of respect for Native American heritage and tradition.”

The band name the “Slants” stems from an offensive term referring to Asian Americans related to their eyes. The trademark dispute arose when Simon Tam, the founder of the band, chose the name the Slants to co-opt and make fun of a slur directed at Asians.

When Tam and the Slants appealed the Trademark Office refusal, a federal appeals court reviewed a 1946 law that tells the government to reject trademarks that “disparage… persons, living or dead.” The judges then declared that the law violated Tam’s right to free speech. Lawyers for Tam said the trademark office has been inconsistent in how it has applied the law. A well-known musical group of the 1980s and 1990 was N.W.A., which fans knew stood for Niggaz Wit Attitudes. The Slants make the argument that while such terms may be used in a disparaging way, the group’s fans did not interpret the name as disparaging.

Simon Tam and his band members are claiming they are not disparaging Asian Americans. The band claims they are doing the opposite. Instead, they think they are appropriating a slur and using it as a badge of pride.

The results of the case will likely be relevant to the Washington Redskins case, and may set the new precedent for similar trademarks.

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#Chargers File for Los Angeles Chargers #Trademark

By Joseph Mandour on January 26, 2016

football1San Diego – The San Diego Chargers recently applied for the “Los Angeles Chargers” trademark, a sign that the Chargers have a bona fide intent to leave San Diego and move to Los Angeles. The Chargers filed trademark application for both “Los Angeles Chargers” and “LA Chargers” because they are currently in negotiations for a potential move to Los Angeles.

The St. Louis Rams already received approval from the NFL to move to Inglewood (about 10 miles from downtown Los Angeles), but the San Diego Chargers were granted one year to reach an agreement with the Rams to share the Inglewood stadium. If they reach an agreement, the Chargers would relocate and become the Los Angeles Chargers.

Two days after the Rams’ relocation was approved, the Chargers filed the trademark applications. If the applications are approved, in addition to entertainment services the Chargers would own the trademarks for a variety of merchandising including video games, jewelry, helmets, and toys. At this time, the rights to website URLs and have already been claimed by another company.

These products, and other forms of merchandising, are a large generator of profit NFL teams. In 2010, the total revenue from the merchandise sales of the 32 teams reached $2.1 billion. Because the NFL utilizes revenue sharing, each team does not simply get the revenue generated from its individual merchandise sales. Instead, the merchandise revenue is totaled (with the exception of the Dallas Cowboys, who are not involved in the revenue sharing agreement) and redistributed equally among the 31 teams.

While the teams agreed to remain tight-lipped about their negotiations and not to disclose details about the discussions publicly, the status of the talks have already begun to leak out. First it was reported that a deal was close and could be finalized in as quickly as one week. However, the most recent report from the negotiations is that the teams may have reached an impasse. It has been speculated that, in the end, the Rams owner has little incentive to reach an agreement to have the Chargers join the Rams in Los Angeles. After all, why would the Rams want to share the Los Angeles market with another team? Indeed, the mayor of Los Angeles re Read the rest

Jeb Bush Abandons Trademark Application for “Jeb!”

By Joseph Mandour on January 8, 2016

voteSan Diego – While many presidential candidates (most notably Donald Trump) fight battles to maintain and protect trademarked slogans, Jeb Bush took a different approach. He recently abandoned the Jeb! trademark he has used thus far during his campaign.

Bush first began using the “Jeb!” logo in his 1994 campaign for governor. Jeb stands for John Ellis Bush which is Jeb’s real name. Most people criticized the logo for its lack of originality and mediocre graphic design, but Bush stuck with the logo. Throughout his political career, Bush used his enthusiastic “Jeb!” logo, and eventually applied for trademark rights in 2002.

Although criticized for his decision, Bush not only continually used his logo throughout this career, but actively worked to protect it. In 2010, his trademark lawyer accused Democratic State Senate candidate Deborah Gianoulis of trademark infringement by campaigning with a “Deb!” logo.

This year, when the trademark lapsed, Bush reapplied for trademark rights. Some believe now more than ever the logo is important to Bush’s campaign given his efforts to distance himself from the Bush political dynasty.

The trademark application was for exclusive use of the logo on a variety of products the Bush campaign thought their supporters would want to buy, such as money clips and golf towels. A corporation titled BHAG LLC (standing for “Big Hairy Audacious Goal,” a phrase from one of Bush’s beloved business books) filed the trademark. While BHAG LLC, is owned by Bush, the United States Patent and Trademark Office requested written consent from Bush to use his name. The request, made in April, set a deadline of six months.

Bush never replied, letting the “Jeb!” logo trademark application go abandoned. Technically, Bush can restart the application process any time.

Given the steady decline in Bush’s polling average, th Read the rest

The Slants win, Ban on Disparaging Trademarks and Washington Redskins Ruling Now in Doubt

By Joseph Mandour on December 31, 2015

supreme_courtLos Angeles – An Asian rock band from Portland wanted to trademark the name of their group “The Slants,” hoping to turn the racial slur into a phrase of empowerment. Instead, they got a lengthy legal battle eventually resulting in a significant change to trademark law, which may impact the Washington Redskins’ trademark case.

The Slants and Redskins cases involve an aspect of the Lanham Act, a 1946 trademark law. Section 2(a) prohibits the registration of trademarks that contain “matter which may disparage …persons…institutions, beliefs, or national symbols.” The section provides the U.S. Patent and Trademark Office the power to refuse trademark registration if the word/phrase is deemed offensive, which occurred when the rock band attempted to trademark “The Slants.”

The Slants case went to the United States Court of Appeals for the Federal Circuit. The appeals court recently ruled that Section 2(a) is unconstitutional and held that the government banning offensive trademarks is a First Amendment violation.

The judges’ majority wrote that “words-even a single word-can be powerful. Mr. Simon Tam named his band The Slants to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech.”

With the section of the Lanham Act struck down, “The Slants” can now register their band name. But the impact of the court case goes beyond the rock group. The National Football League team the Washington Redskins is in its own trademark battle, which may be impacted by the court’s ruling in “The Slants” case.

In the Redskins case, a federal judge ordered the cancellation of the team’s trademark in July. The judge followed the Lanham Act’s section 2(a) that prohibits trademark protection for offensive names. Given that section has now been held unconstitutional, the Redskins may be able to keep its federal trademark registrations after all.

The team is also suing a group of Native Americans who are fighting its trademark registrations. The case will come before the U.S. Court of Appeals f Read the rest

Redskins Lose Trademark Battle

By Joseph Mandour on July 14, 2015

football1San Diego – Six Trademarks owned by the Washington Redskins are in the process of being cancelled due to a Federal court ruling. Last year, Navajo activist Amanda Blackhorse along with four other Native Americans sought to cancel the team’s Trademark Registrations due to an offensive connotation of the name “Redskins”. This was successful as the TTAB (Trademark Trial and Appeal Board) ruled in favor of Blackhorse that the registrations were disparaging and should be cancelled.

District Judge Gerald Bruce Lee recently affirmed the previous ruling. However, Judge Lee made a point to state that the Redskins are still free to use the name as they wish. The ruling would simply prevent any federal legal protection relating to the Redskins trademark.

This was another big win for a large group of Native American people that have long protested the Trademark registrations owned by the Redskins. A key aspect boosting their battle was the Lanham Act, specifically quoting the section that “bars trademarks that may disparage or bring people into ‘contempt or disrepute.’”

Attorneys for the Washington Redskins tried to argue that it was within the team’s first amendment right of free speech to use the name as they please. Judge Lee disagreed. Many people directly involved with the team stated their disapproval of the court ruling. The team intends to continue to fight the adverse rulings. Redskins’ President Bruce Allen commented on the ruling by stating that he was surprised with the results, and plans to appeal the district court’s decision. He also stated that the team has used the name for more than 80 years.

In addition, Robert Raskopf, the Redskins’ trademark attorney, argued that the NFL team has spent a lot of time and millions of dollars over the years to invest and protect its intellectual property rights, and a loss in the higher court would be a big upset to the team.

Daniel Snyder, owner of the Redskins, commented that he would never change his team’s name. Instead, he considers the name to be an “honor” to the Native American people.

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GM and Yamaha Agree to Co-exist with use of “Bolt” Trademark

By Joseph Mandour on June 10, 2015

automobile-pluginLos Angeles – Despite less than stellar sales and perceived high prices, auto makers continue to release new electric vehicles. This is partly due to the fact that manufacturers are under a government mandate to increase the average miles per gallon of their fleets.

Chevy of GM Motors recently unveiled its new electric car at the Detroit Auto Show. Building on the Volt name, the new car is called the “Bolt” and boasts a 200-mile range once fully charged. Tagged with an estimated asking price of around $35,000, GM has promised that this new model would be available to consumers within two years.

To protect the name, GM submitted a U.S. Trademark Application in August of last year for “Chevrolet Bolt.” The application was filed in regard to “motor land vehicles, namely, automobiles.” However, GM ran into an unexpected road bump with the with the model’s name.

In 2012, Yamaha submitted a Trademark Application for “Bolt” to be the name of its newest motorcycle model. Yamaha’s Bolt trademark application registered in 2013 and thus was cited against GM’s Chevrolet Bolt application. In an Office Action, the U.S. Patent and Trademark Office stated that the uses were too similar and thus likely to create consumer confusion. To make matters worse, GM’s application was also suspended due to prior pending applications for BOLT CUSTOM TRUCKS AND MANUFACTURING and a related design trademark. Again the reason cited was the potential for consumer confusion.

It now appears that GM was able to overcome all refusals by the U.S. Patent and Trademark Office since the Chevrolet Bolt application was recently approved for publication. Barring a third party objection, it appears that it will register.

To overcome the Yamaha refusal, GM entered into a consent agreement with Yamaha in which both parties agreed that consumer confusion was not likely. GM was able to overcome the refusal as to the BOLT CUSTOM TRUCKS AND MANUFACTURING trademark application by arguing that the trademarks were sufficiently different such that confusion was not likely.

Despite the legal wrangling, some car enthusiasts still Read the rest

Kendall and Kylie Jenner to Trademark Their Names

By Joseph Mandour on May 8, 2015

perfume_bottleLos Angeles – Kendall and Kylie Jenner are well-known children from the famous Kardashian-Jenner family. With an Olympic gold-medalist for a father and fashionista Kim Kardashian with a TV show as their sister, it is not surprising that the two teenagers have also entered the spotlight.

“Keeping Up With The Kardashians” stars Kendall and Kylie are more than just reality TV icons. They are also public figures who model and design clothes. With their names being an important part for their career and brands, the two have decided to seek Trademark protection.

Throughout April, the duo filed a number of Trademark applications including KENDALL JENNER, KYLIE JENNER, and KENDALL AND KYLIE. The applications cover a wide scope including perfumes, clothes, fashion and pop culture, etc.

Learning from their business-savvy family, Kendall and Kylie have been making deals of their own. Along with a shoe deal for Steve Madden, the sisters’ names already appear in the business world as they have a line of clothing at Pac-Sun titled “Kendall & Kylie.”

While the two filed their applications together, they are looking for different sorts of protection. Kylie filed an application for “personal appearances by a celebrity, actress, or model.”

Kendall appears to be more concerned with building her modeling future. Her applications are mainly in regard to beauty, clothing, and fashion products.

Kendall and Kylie are not the first celebrities to consider a Trademark for their names, and are not even the first amongst the Kardashian-Jenner clan. Kim and her husband Kanye West expressed their desire to seek trademark protection for their daughter’s name- North West.

Kim and Kanye stated that if they chose to file a Trademark Application, it would be for the purpose of protection and privacy for their daughter so that people would not attempt to capitalize off her name.

In 2012, Beyoncé and Jay-Z also attempted to do the same for their daughter, Blue-Ivy. However, they were not successful and the application was rejected.

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Twitter Shows Expansion Plans with Trademark Applications

By Joseph Mandour on April 29, 2015

twitterOrange County – Since July of last year, Twitter has ramped up its efforts in protecting its trademarks by filing a number of Trademark Applications. The applications appear to cover a wide scope of trademarks, from protecting its fundamental business to hinting toward its broadening efforts related to social media.

One notable application is for Tweetstorm. As Twitter limits the number of characters per post to 140, some users post a “tweetstorm” in order to complete their idea. A tweetstorm is a procession of tweets posted right after each other that relate to one thought or idea.

Tweetstorms have already been used by a number of twitter enthusiasts, including Kanye West and Twitter co-founder Jack Dorsey. Dorsey mentioned in a statement that it was “a clever way around the 140 character constraint”

Other trademark applications include “The Future of Identity” and an icon which will be used for streaming news in real time. Both applications appear to be in relation to Twitter broadening its role in social media to include more involvement with news and security software.

According to the USPTO website, “The Future of Identity” was filed in regard to software “enabling user identification, authentication and verification.” Many apps and mobile games already require a user to login using their Facebook credentials in order for the developer to enhance security. Twitter is perhaps attempting to have users use their Twitter login information as a security tool, just as Facebook does.

Twitter also filed a Design Trademark Application for a live news app that would allow users to share and communicate about a real-time news story. Live streaming and audio recordings would also enable the new app or website to create a forum based setting for users. As a result of its interest in moving more into the live streaming area Twitter recently acquired Periscope, which is an app that allows users to broadcast live videos by streaming them on Twitter. Last month Twitter filed a trademark application for “Periscope” for “providing online entertainment and real time news information.” Some have suggested that the new design t Read the rest

Fracking Company Attempts To Trademark A Smell

By Joseph Mandour on April 20, 2015

fracking2San Diego – Trademark officials in Virginia recently received an unusual specimen for a Trademark Application. Instead of visual examples that they are accustomed to, they were hand-delivered vials containing a liquid with an orange scent.

“Eau de fracking” was created by Flotek Industries, Inc. a Texas company that extracts oil and gases from deep within the earth via “hydraulic-fracturing” fluids.

Flotek would like to Trademark its product’s scent to protect the orange smell that many customers associate with the brand. Though uncommon and somewhat difficult to obtain, it is possible to achieve trademark protection in a smell.

Verizon Wireless is one owner of a registered trademark for a scent. Verizon was recently able to Trademark a “flowery musk” scent that is sprayed in several stores across the country.

Eddy Finn Ukulele Co. was also successful in registering a scent based trademark. The company doused its instrument strings in a pina colada aroma, which became more apparent when the strings were plucked. The company’s largest issue in registering the trademark was that the string smell had a short shelf-life and was mostly gone once the ukuleles were internationally shipped.

Just as many logos and symbols play a large branding role for consumers, the idea that smells could do the same may be gaining some steam. In order for a scent to become a registered trademark, the scent must serve primarily to help distinguish a brand. Perfumes and colognes serve as more than that, and therefore are unlikely to be eligible for a trademark.

The possibility of a scent based trademark application would pose more issues internationally. For protection in the European Union, geography plays a significant role in brand protection. It is debatable whether or not a scent could be associated with a geographic location and with this, whether or not it would be able to become a trademark.

Science has also proved that smells can be a very powerful sense and are very influential in memory and decision making. Associating a smell with a brand could become a growing tool for companies to use to promote or sell a produc Read the rest

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