Jim Nantz phrase “A Tradition Unlike Any Other” Becomes a Trademark

By Joseph Mandour on April 15, 2015

golfOrange County – The golf course at Augusta National in Augusta Georgia is among the most famous in the world. Every year, the prestigious Augusta National Golf Club hosts the Masters Tournament which airs nationally on CBS and ESPN.

Professional golfers such as Tiger Woods and Jordan Spieth are among the players competing this year in the tournament, making the Masters one of the most important golfing events of the year.

Within the last few years, the club has become more protective of its intellectual property rights. It has sought to Trademark the names of restaurants and popular hospitality sights around the course. It also owns trademark registrations for THE MASTERS and GREEN JACKET. In addition, Augusta National, Inc. recently filed two trademark applications for “A Tradition Unlike Any Other”, which is a phrase that has become a slogan associated with the Masters Tournament.

According to the United States Patent and Trademark Office “USPTO” website, the first application was filed in regard to golf tournaments in 2014. A second application was filed in regard to clothing, stating that Augusta’s first use of the phrase was in 1989.

CBS’s Jim Nantz actually coined the phrase in 1986 when he became a broadcaster for the Masters Tournament. Augusta National first used the phrase commercially three years later.

While Nantz was unaware that Augusta had submitted an application for the trademark, his representative Sandy Montag claimed that there was no issue. Montag stated that “Whatever work you do for the network is owned by the network, not you.”

Given that Augusta National is the owner of the Masters Broadcast, it follows that they have rights to the trademark. A spokesperson for the club stated that they will not prevent Nantz from using the phrase so long as it is used in relation to the Masters Tournament. Augusta National has made no comment on what would happen if Nantz chose to use the phrase in other ways that were not associated with the tournament, but it is certain they would not allow such use.

Other broadcasters have aggressively sought to own the phrases that they coin. One example is Mic Read the rest

Winston Files Trademark for “Famous Jameis”

By Joseph Mandour on March 5, 2015

Closeup of American Football on FieldLos Angeles – Jameis Winston earned the nickname “Famous Jameis” in little league baseball. Now as the likely number one NFL draft pick, Winston is seeking trademark protection for Famous Jameis.

The NFL hopeful has an impressive resume, including a Heisman Trophy award and a National Title. His token name became even more well-known during his 2013 undefeated season as a quarterback for Florida State.

According to the United States Patent and Trademark Office website (“USPTO”), a Trademark Application was filed on Winston’s behalf on February 5th. The “Famous Jameis” trademark was filed in relation to a number of apparel items including “clothing, uniforms, sports equipment, and sports camps”

There is no doubt that Winston’s name could be valuable when used in relation to merchandise, among other products, if he becomes a successful NFL player. In response to comments about capitalizing on his career, Winston’s representatives mentioned that his primary focus is football. However, he is looking to protect his intellectual property as his career is launching.

One Alabama man already attempted to reap the benefits of “Famous Jameis.” The name was printed on t-shirts and other clothing, and following this the man applied for the Trademark in 2013 apparently without Winston’s consent. The filing was later challenged and then abandoned.

As an Alabama native himself, Winston was reportedly not paying attention to the growing use of “Famous Jameis” is 2013. Jameis was also known as “Jaboo” in his hometown. Jaboo is a registered trademark for athletic apparel owned by a man in Florida, but it is not owned by Winston.

Winston’s actions regarding his rise to fame are not uncommon. Several others in the sporting industry have filed Trademark Applications in order to protect their intellectual property.

Another recipient of the Heisman Trophy, Johnny Manziel, is among the list of athletes who have also filed Trademark Applications. Unfortunately for Manziel, who is now in rehab, his rookie season was uninspiring and so far none of his trademark applications have b Read the rest

Katy Perry Files Trademark for “Left Shark”

By Joseph Mandour on February 24, 2015

sharkLos Angeles – We recently reported that Katy Perry and her lawyers were using copyright law to try to prevent others from capitalizing on her shark inspired halftime show at the Super bowl. It now appears as though Perry and her team are focusing on trademark law.

After Perry received a response to a cease and desist letter which pointed out that she likely has no copyright ownership in a shark costume, Perry is not giving up. Instead, her company “Killer Queen” has filed multiple trademark applications. Among the applications listed on the United States Patent and Trademark Office (“USPTO”) website are “Left Shark,” “Right Shark” and “Drunk Shark.” Clearly the battle of sharks has not ended.

The singer is also keeping a close watch over “Left Shark” merchandise. The Left Shark became famous during the show because it was a step behind during the entire performance. Perry’s lawyers have been sending and responding to a number of cease and desist letters regarding use of the sharks. One recipient, Fernando Sosa, is continuing to fight for his rights to sell his 3D shark figurines.

As the fight for “Left Shark” has now entered the trademark sphere, Katy and her team may be gaining some steam. The trademark applications cover merchandise including “cell phone covers, t-shirts, costumes, figurines” in addition to “live musical and dance performances.” Interestingly, most of the applications were filed on an Intent to Use basis.

Killer Queen also filed a shark design only Trademark Application on February 6th only to expressly abandon the application just 4 days later. Very oddly, it appears that the application was abandoned because the image that was used to represent the design wasn’t owned by Perry. Instead, it appears that the owner of the image was none other than Fernando Sosa. Sosa was previously asked by Perry’s lawyers to remove the same picture from his website.

It is uncertain as to whether Perry will prevail in her desire to own all things shark. Though her performance may have inspired the Internet joking and the shark merchandise, since trademark rights come down to prior use it is possible that persons ot Read the rest

Taylor Swift Seeks to Trademark her Song Lyrics

By Joseph Mandour on February 6, 2015

sound-speakerOrange County – If you have listened to popular radio recently, it is likely that you have heard one of Taylor Swift’s new songs. The twenty-five year old released a new album last year and has been making headlines ever since.

In addition to her 1989 album topping the charts, Taylor Swift has now turned heads with her efforts trademark her song lyrics. She has submitted a number of trademark applications, most notably for “Party Like It’s 1989” and “This Sick Beat.”

According to the USPTO website, applications for “This Sick Beat” have been filed in several classes including those covering entertainment services, retail services, printed products, music accessories and many others. .

This is not the first time that Taylor Swift has gone to great lengths to protect her intellectual property rights. Last year, she made headlines by removing all of her songs from Spotify. Swift defended this action by claiming that the streaming website was unfair to the artists who were not being fairly reimbursed for their music.

While album sales are decreasing industry wide, financial gains are not the driving force behind her decision to trademark her lyrics. Rather, she claims it is to protect herself from others who are trying to make money off of her work without her knowledge or approval. Swift stated that she values her art, and she is willing to do what is necessary to protect it.

While this is one of the few times that an artist has sought protection over music lyrics, trademark protection is not uncommon in the music industry. Even for Swift, her name, initials, and album names are all registered Trademarks. Others in the Hollywood spotlight have also trademarked catch phrases and names, including “That’s Hot” trademark owner Paris Hilton.

So far, it appears as Swift has only sought protection for her lyrics in the United States. It is unknown whether she will seek a more worldwide protection plan covering markets such as Europe.

Read the rest

Illinois Woman Seeks Trademark Protection for “I Can’t Breathe”

By Joseph Mandour on December 30, 2014

cautionOrange County – “I can’t breathe” has echoed throughout the country in the months following Eric Garner’s death and the controversial case that followed. The infamous three words have been chanted by protestors, represented on banners and signs, and printed on clothing worn by professional athletes across the country.

In July, Eric Garner was killed during an altercation with a police officer. Garner’s death was apparently caused by being placed in a chokehold. This sparked a wave of protests and demonstrations with the words “I can’t breathe” as the movement’s slogan.

Eric Garner’s last words are now facing a new spotlight. Catherine Crump of Illinois filed a Trademark Application for “I can’t breathe” with the United States Patent and Trademark Office (‘USPTO’) for use in relation to apparel. Crump hopes to register the trademark and commercially control the phrase.

According to the USPTO, Crump applied for the trademark on December 13th 2014 and it includes “clothing, namely hoodies, T-shirts for men, women, boys, girls and infants.” On the application, Crump claims her first use of the phrase was August 18th of this year which was just a month after Garner’s death.

Crump has no relation to the Garner family, and they are not working with Crump to register the trademark. Crump assured reporters that she is not looking for financial gain by attempting to register the trademark, however an alternate motive was not mentioned.

The “I can’t breathe” trademark application is not the first time that events from a controversial case have merged with the trademark sphere. The similarity debated case involving the August death of Michael Brown saw a new wave of trademark applications for “hands up don’t shoot.” The USPTO website shows at least three different such trademark applications.

Since “I can’t breathe” and “hands up don’t shoot” have both been in widespread use on apparel by many including Lebron James, the rights to the exclusive commercial use via trademark protection is debatable.

Read the rest

Trademark Dispute may keep Target from singing “Oh Canada”

By Joseph Mandour on September 9, 2014

target San Diego, CA – Seeking expansion into the Canadian retail market, U.S. discount-retailer Target is facing major pushback from Fairweather Ltd. Fairweather filed a $250 million trademark infringement suit against the U.S. giant on grounds that it exclusively owns the right to use the Target name in Canada. Fairweather Ltd has owned the “Target Apparel” name in Canada for 10 years.

Target, which is known for name-brand merchandise priced for the masses announced last month its plans to open more than 200 stores in Canada over the next 10 years. Many of these new Target stores will be the result of spending over $1.83 billion to take over existing leases from Zellers retail chain, a subsidiary of Hudson’s Bay Company.

Jessica Carlson, a Target spokeswoman, was unable to comment on the court proceedings but did mention that Target plans to use the same name, branding, and famous bull’s eye logo that it uses in the U.S.. “There really is nothing that prevents Target from using the Target name and branding elements in Canada the same way we do in the United States,” she said.

Target has challenged whether Fairweather has made continuous use of its trademark. Since the response from Target, Fairweather Ltd has opened “Target Apparel” stores in Ontario and British Colombia. It has until the end of this month to prove to the Canadian trademark office that it has used the Target name in the past three years or has plans to use it.

Since the trademarks and goods at issue are similar, it appears that Target has its work cut out in proving that canadian consumers are not likely to be confused between the two trademarks.

Read the rest

ALS Association Backs Away from Ice Bucket Challenge Trademark

By Joseph Mandour on September 5, 2014

bucketSan Diego – The ALS Association (ALSA) has expressly abandoned a trademark application for the term “ice bucket challenge,” the name that was used for the viral video sensation, which has raised more than $94 million for the group in less than a month. ALSA backed away from seeking to trademark the term after it got a negative feedback on reports of its efforts to claim ownership to the phrase.  

The group recently filed applications with the U.S. Patent and Trademark Office to secure rights for “ice bucket challenge” and “ALS ice bucket challenge.” At the time the organization said it was moving to get the trademarks with the blessings of the families that initiated the challenge. However, after some negative reactions to the news, ALSA backtracked and issued a statement that it is dropping the effort to stake a claim to the trademarks.  ALSA officials said that they filed for these trademarks in good faith to protect them from misuse.

The Ice Bucket Challenge caught on like wild fire this summer across various social media platforms with millions, including celebrities, athletes and politicians dumping icy water on their heads and donating money to fight amyotrophic lateral sclerosis, a disease that affects the brain and the spinal cord. But some are of the opinion that ALSA, which did not really play a part in creating this challenge, went too far in trying to trademark the terms.

The campaign has brought in a massive influx of donations for ALSA.  The organization is still looking into how the money will be spent.  The group has handed out 21 new grants to ALS researchers and has said it is likely to spend more on research projects as well as for care and advocacy of those fighting the disease.

The main issue with some on ALSA’s attempt to trademark these terms is that it tried to trademark a phrase that it did not create. The Ice Bucket Challenge was started by a few families and caught on thanks to social media.  Some have compared ALSA’s trademark attempt to the Boston Beer Company’s efforts to claim rights to the phrase “Boston Strong” after the 2 Read the rest

Tesla Trademark Dispute in China Resolved

By Joseph Mandour on August 28, 2014

teslaLos Angeles – U.S. electric automaker Tesla Motors Inc. says it has reached an amicable resolution to a trademark disagreement in China clearing the way for CEO Elon Musk’s plans to expand as the world’s largest auto market. This is the second time that Tesla has declared that the disagreement with Chinese businessman Zhan Baosheng has concluded. Baosheng had already registered the Tesla trademark prior to the California-based automaker coming to China. In January, Tesla had announced that the matter had been resolved. But then last month, Zhan filed to bring Tesla to court.  In its latest announcement, Tesla states that the issue has now been “completely resolved.”

Tesla has an ambitious plan for growth in China, which has recently unveiled a number of incentives, such as tax cuts and purchase subsidies to help boost the sale of electric cars.  As part of the deal, Zhan has agreed to have Chinese officials finalize the process of canceling the Tesla trademarks that he had registered or applied for, at no cost to Tesla.  In addition, Tesla and Zhan also reached commercial terms to transfer certain Internet domain names, including tesla.cn and teslamotors.cn, to Tesla.

This dispute between Zhan and Tesla is not the first time that an American company was forced to purchase its own trademark in China. Other corporations, such as Apple and Unilever, have had similar issues in the past.  China’s trademark laws follow a first-to-file principle that rewards “squatters” or “trademark trolls” who have targeted valuable foreign brands and registered them as their own.  This puts corporations entering China in a position where they have to rebrand their products, get involved in a legal battle in China, or pay big money to buy back the trademark.

Zhan, who is based in Guangdong, registered the trademarks to the Tesla name both in English and Chinese in 2006.  He has also tried to sell the label to the U.S. company in the past, but negotiations were not successful. Now, with the resolution, Tesla will have undisputed rights to its trademarks in China.

Tesla began deliveries of its Model S luxury electric cars in China Read the rest

University of Arkansas Gets Sound Trademark on Its Famous Hog Call

By Joseph Mandour on August 7, 2014

pigOrange County – The U.S. Patent and Trademark Office recently granted the trademark for the sounds contained in the University of Arkansas’s “Hog Call.” The chant — “Woooooooo, Pig! Sooie! Woooooooo, Pig! Sooie! Woooooooo, Pig! Sooie! Razorbacks!” – now constitute a registered trademark. The school filed for this trademark about a year ago and as part of its application, the university also turned in a video of Razorbacks legend Frank Broyles leading fans in what has become known as the Hog Call. The Hog Call falls under the sensory trademark category, which means that it is a sound rather than a word, image, or symbol. The Application was filed in Class 041 for “Providing collegiate athletic and sporting events”.

The University of Arkansas already owns a federal trademark registration for “Woo Pig Sooie!”. This new sound trademark registration cannot be used for commercial purposes without the University of Arkansas’s permission or license. However, it does not pertain to non-commercial usage such as fans yelling the chant at games or anywhere else. Such use would be considered to be fair use so long as the use was not made to designate the source of goods and the use was not commercial in nature. The sound trademark can be heard here: http://tsdr.uspto.gov/documentviewer?caseId=sn86021236&docId=MRK20130726170010#docIndex=15&page=1

This is the first collegiate cheer to be registered as a trademark. The university said in a statement that it sought to trademark this cheer in order to stop those seeking to exploit it commercially. University officials say their only concern is to stop those seeking to exploit the trademark commercially. The Hog Call has been synonymous with the University of Arkansas since the 1920s.

Other examples of registered sound trademarks include NBC’s chimes, the Tivo popping noises when using the remote control, the Intel chimes, the ESPN nah nah nah, nah nah nah, the Yahoo! yodel, and the duck quaking “Aflac”, all of which can be heard here: http://www.uspto.gov/trademarks/soundmarks/

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San Diego State Seeks “I Believe That We Will Win” Trademark

By Joseph Mandour on July 21, 2014

basketballSan Diego – The chant adopted by the U.S. soccer team at the World Cup could soon start paying dividends for San Diego State University, which actually began using the trademark several years ago. The phrase, “I believe that we will win!” has been chanted during the school’s basketball games and has been sold on apparel. Recently, the school made the move to acquire the trademark to help prevent other similar uses.

San Diego State University’s attempt to trademark the phrase could become a reality soon as the trademark publishes for opposition on July 22nd. The final chapter of this saga is unfolding as the chant caught fire during the FIFA World Cup that just concluded in Brazil. Although the U.S. soccer team did not get far, the chant became extremely popular. The recent popularity of the phrase could make it a moneymaker for the school if can register the federal trademark.

The U.S. Patent and Trademark Office’s online database shows that in October 2011, Aztec Shops Ltd., a clothing store in San Diego State University’s Student Union, filed a trademark for the phrase for use on apparel such as caps, hats, jackets, T-shirts, and sweatshirts.

If SDSU gets its trademark, others who wish to use it may reach out to San Diego State for licensing. That said, it is not certain that San Diego State University will get the trademark. It appears that the chant may have started at Navy in the late 1990s and since then has also been used by Utah State since 2009. It is believed to have originated at the Naval Academy’s Prep School.

If any other institution has already used it commercially before San Diego State, they could still oppose the trademark based on prior use. Starting July 22, anyone who is opposed to the trademark will have 30 days to challenge it. SDSU officials say their goal with seeking to trademark the phrase is not to stop high school or little league teams from using the chant. They say it is about protecting the school’s ability to continue using the phrase on its merchandise.

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