Washington Redskins Trademark Cancelled, Held to be Disparaging

By Joseph Mandour on July 1, 2014

Closeup of American Football on FieldLos Angeles – A recent ruling by the U.S. Trademark Trial and Appeal Board that the NFL’s Washington Redskins nickname is “disparaging” will provide a shot in the arm for those who have been vocal advocates of changing the team’s name.  The ruling no doubt increases the financial and political pressure for a movement that has been gaining momentum over the last two years.  The Trademark Trial and Appeal Board voted 2-1 in support of the name change and even President Barack Obama has weighed in on the topic encouraging the team to consider changing the name.

As for the Redskins, they wasted no time in announcing that they will appeal the ruling and that the team’s name will continue to have common law trademark protection, even as the legal wrangling continues.  Redskins’ trademark attorneys say the ruling will have no effect on the team’s ownership of and the right to use the Redskins name and logo. The team’s owner also maintains that the name is not used to ridicule Native Americans, but has been used with respect and honor, and is a source of pride among many American Indians.

The ruling essentially involves use of the Redskins name, which has been trademarked by the team between the years 1967 and 1990. However, it does not include the team’s Native American head logo.  If the ruling stands, the team can continue to use the name but it will become more of a challenge for the Redskins to go after those who print the team’s trademark on clothing or gear without proper permission.  The ruling could prove costly for the franchise and could lead to the loss of millions of dollars each year including lost sponsorships.

Those who are in support of changing the name are trying to appeal to the team owner’s sense of morality to make him stop using what many consider a racial slur.  This ruling gives credence to that position and many are hoping that the trademark ruling will nudge the team or the NFL in the direction of changing the name.  Perhaps a change to the Washington Indians is in order.

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Trademark Issued for Pi Symbol for Clothing Line Causes Uproar

By Joseph Mandour on June 23, 2014

pi symbolLos Angeles – A Brooklyn artist and entrepreneur has trademarked the pi symbol to brand his line of t-shirts, tank tops and hats, angering many math geeks and clothing designers who use the symbol on a variety of objects and apparel. The artist, Paul Igrisano, claims that he sought a trademark for the symbol pi, with the period added, because he was trying to protect his trademark rights and business.

Ingrisano has also begun sending cease-and-desist letters to sites trafficking in pi-themed clothing. The website Zazzle.com, temporarily pulled down listings for hundreds of products at Ingrisano’s request, but restored them less than two days after the move roused small designers who use the site. Among them was a math teacher who marketed t-shirts with the pi symbol for a Pi Day celebration in his school.

Ingrisano, whose initials are P.I., says Pi was a childhood nickname for him and thereby has special personal significance to him. But to others, trademarking pi seems as absurd as claiming ownership of the alphabet. Ingrisano is now getting a steady stream of hate mail on a daily basis. Some websites have even started their own clothing lines that berate Ingrisano as a “pi-hole” and “pi-rate.” But Ingrisano says he has the support of local artists and isn’t going to back down. He is determined to continue marketing his line of clothing and making sure that his business is protected.

The key inquiry of course is whether Ingrisano was actually the first to use the Pi symbol on apparel. For any use that pre-dated Ingrisano, he would be hard pressed to have them stop use. Beyond that question, it is also import to consider whether consumers consider the use of the Pi symbol on clothing as merely ornamental and thus not even a trademark use. In the end, it may be that Ingrisano has a long uphill legal battle against each so-called infrin Read the rest

California Chrome’s Owners File to Trademark Horse’s Name

By Joseph Mandour on June 3, 2014

HorseracingSan Diego – The owners of California Chrome, the horse that could potentially win the first Triple Crown in 36 years, have filed a trademark application for the horse’s name. California Chrome’s owners Steve Coburn and Perry Martin along with their wives, who make up the horse’s ownership entity filed the trademark just two days before California Chrome won the Preakness, the second leg of the Triple Crown. The owners are hoping to trademark the phrase on athletic apparel including shirts, pants, jackets, shoes, and hats. The filing states that gear with California Chrome’s name was first sold in April 2013.

In addition to filing for the trademark, California Chrome’s owners have also signed their first major sponsorship deal with Skechers, which will be featured on everything from the apparel of the horse’s handlers to the horse’s blanket to the barn leading up to the Belmont Stakes on June 7th. Under the sponsorship agreement, team members will wear Skechers apparel in the winner’s circle should the horse win. The deal also allows Skechers to use California Chrome in marketing materials for a month after the race. The terms of the deal were not disclosed, but according to reports, it is the largest deal in horseracing since UPS paid IAEH Stables to advertise on Triple Crown Hopeful Big Brown in 2008.

On June 7th, California Chrome will take to the track at the Belmont Stakes. The horse will be the 13th to go for the Triple Crown. The last time a racehorse won all three legs was in 1978 when Affirmed accomplished the feat. In 2008, Big Brown won the Kentucky Derby and Preakness, but didn’t even finish the race at Belmont. Most recently, another horse, After I’ll Have Another, was pulled the day before the Belmont after winning Kentucky and Preakness.

The owners of those horses had produced merchandise in anticipation of their racehorses winning the Triple Crown. It now remains to be seen if California Chrome will break the jinx and win Belmont. If he doesn’t, merchandise with his name and most likely the California Chrome trademark may not mean a whole lot after June 7th.

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Swatch May Fight Apple’s ‘iWatch’ to Prevent Trademark Confusion

By Joseph Mandour on May 22, 2014

swatchSan Diego – Swiss watch manufacturer Swatch is considering taking steps to stop Apple from registering the name “iWatch” for trademark protection, saying the name is too similar to Swatch’s already trademarked “iSwatch.” In recent years, despite Apple’s reluctance to even confirm the existence of an “iWatch” product, the technology giant has busily conducted a global trademark registration campaign, filing for protection of the name “iWatch” in numerous countries, including Taiwan, Mexico, Japan, and Russia.

This is not the first time that Swatch has openly opposed the registration of the name “iWatch” and it has no plans of relenting against a major competitor, such as Apple. As a trademark owner, Swatch is actively taking part in its duty to enforce its trademark rights. A Swatch representative stated, “We consider the likelihood of confusion as given, the trademarks are confusingly similar.” However, Iceland has been the only country so far to deny Apple’s “iWatch” trademark application based on its confusing similarity to Swatch’s existing trademark also used for watches.

When determining whether to deny or accept Apple’s “iWatch” trademark applications, foreign trademark offices will weigh several factors, such as the similarity of trademarks and the products, the channels of trade, the degree of care that consumers will have in deciding to purchase the products, and other similar factors. The process of filing foreign trademarks can be time consuming as many offices can take 18 months to several years to respond to an Application. If granted, Swatch would then have an opportunity to oppose the application or any resulting registration.

Apple’s recent trademark filings in other countries have expanded to include jewelry, precious stones, and chronometric instruments, and use the name “iWatch” has fueled rumors of the company’s intended launch of wearable tech products. The Silicon Valley based company remains silent on the matter. Whether the rumored Apple “iWatch” is deemed too similar to Swatch’s existing “iSwatch” remains to be seen.

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Tesla Ends Fight for “Model E” Trademark

By Joseph Mandour on May 15, 2014

teslaLos Angeles – After a lengthy legal bout with Ford Motors, Tesla has finally decided to pull the plug on its plan to obtain trademark protection for “Model E” in connection to its next generation sedan. The U.S. based electric auto maker filed its trademark application for the “Model E” name in August of last year, ruffling Ford’s feathers over the use of the name. Ford then filed its own trademark application in December 2013 asserting its own rights in the trademark.

Ford predicated its claims against Tesla on the notion that Tesla was improperly using the “Model [insert letter of the alphabet]” formula, from which its iconic Model T started the automobile revolution. Indeed, over the years, Ford rolled out several cars according to this naming scheme, including the Model A, Model B, Model F, Model K and Model R. Interestingly, though Ford doesn’t offer a Model E, its threats against Tesla seem to have paid off.

Just last month, Tesla filed express abandonments with the United States Patent and Trademark Office (“USPTO’), effectively terminating its efforts to trademark the name. A Tesla spokesperson said of the decision, “The matter has been resolved amicably,” though he declined to elaborate as to whether or not Ford had demanded that Tesla abandon its application.

Since its inception in 2003, Tesla has introduced the Model S, Roadster and Model X. Given its filing of trademark applications covering three classes in 2013 for “Model E”, it was widely assumed that this would be the name of its next model, which is rumored to go into production later this year. Tesla founder Elon Musk has fueled anticipation for the next car, claiming that it will be accessible to a much wider consumer-base than other Tesla models, with a sticker price of under $35,000.

With no clues for a replacement name offered by the Palo Alto based manufacturer, there is much left in the air for Tesla at this time. Apart from the trademark dispute with Ford, the company is busy gearing up for the building of what is being termed its “gigantafactory”, where it will mass produce its lithium Read the rest

New Trademark Filing Gives Glimpse into Apple’s Plans for Watches

By Joseph Mandour on May 13, 2014

Isolated male hands with smartwatch with phone call on the screeLos Angeles – A string of recent trademark filings by Silicon Valley’s biggest name in technology may shed light on the future direction of the company. Records on file with various Intellectual Property Offices around the globe show that Apple has been steadily adding to its trademark filings by broadening its registrations and applications to include jewelry, clocks and watches.

Several sources have reported that Apple has filed such amendments in countries like the United Kingdom, Ecuador, Mexico and Norway. In each instance, the company has expanded the protection of its “Apple” trademark to reach items contained in International Class 014, which generally is reserved for “Precious metals and their alloys and goods in precious metals or coated therewith” including jewelry, precious stones and chronometric instruments according to the International Classification of Goods and Services for the Purposes of the Registration of Marks, which is set forth by the World Intellectual Property Organization (“WIPO”).

The move to expand trademark protection to cover such items is being classified by many as an affirmation of the company’s plan to introduce the much speculated upon iWatch, Apple’s plans are further corroborated by its filing of several trademark applications for the name iWatch in foreign countries such as Russia and Jamaica, which records show were filed as early as last June.

As for the specs of the rumored iWatch itself, multiple Apple bloggers predict that the device will be launched sometime in late 2014. The new product is said to feature a range of technologies that are aimed to more fully integrate more traditional mobile device usage with physiological indications such as a person’s sleep, exercise and activity data. The iWatch is also expected to be fully compatible with other Apple products such as the iPhone and iPad.

Despite Apple’s blatant attempts to keep any definitive answer about the existence of the iWatch under wraps, competition has already ensued. Just this week, rival tech maker LG posted a promotional video o Read the rest

Mmmm…Beer: German Brewer Tries to Trademark Homer’s Beer of Choice

By Joseph Mandour on May 1, 2014

beer-bottle-pouring-thumb-200x132-40682 Orange County – Germany-based Duff Beer UG has applied to the European Union’s general court in Luxembourg for permission to register a European Union trademark for “Duff”, Homer Simpson’s favorite beer.

The German brewer sells “the legendary Duff Beer” without any mention or logos of the legendary Simpson cartoon character on its website or packaging. Twentieth Century Fox, which produces the longest-running scripted show in television history, The Simpsons, already has two European Union trademarks to the fictional beer. In 1996, News Corp., the owner of Twentieth Century Fox, won a court case in Australia, banning another brewer from selling Duff beer.

Homer Simpson’s creator Matt Groening maintains that he will not condone Duff to be used as a real beer brand, citing that he does not want to encourage children to drink beer. However, this has not stopped a number of brewers from trying to use the brand in their attempts to capitalize on the popular cartoon. The 1996 trademark infringement case against Australian beer-maker Lion Nathan resulted in the brewer’s infringing products being pulled from store shelves and destroyed.

Brewed in Germany by the Eschweger Klosterbrauerei, Duff Beer UG filed a lawsuit with the European Union’s general court in Luxembourg, asking it to overturn a previous decision by the EU trademark agency. That decision had prevented the brewer from registering the “Duff” trademark in black, white, and red, the colors used in the cartoon to depict the label of Homer’s choice of the canned beverage.

Duff Beer is also requesting that the European Union court wait for final rulings from a Belgian court case last year that invalidated Twentieth Century Fox’s two European trademarks on the grounds that they were misleading since they weren’t registered for an actual beverage.

Earlier this year, beer consumers in the United Kingdom were able to pop a cold one in honor of Homer, when Duff Beer made the fictional beer brand into a reality by selling it in England, Wales, Scotland, and Northern Ireland.

Debuting on Fox in 1989, The Simpsons is an animated satirica Read the rest

Google Runs into Trouble in Attempt to Secure Trademark Protection for “Glass”

By Joseph Mandour on April 16, 2014

Glass-google Orange County – There has been no smooth sailing so far for Google in its push to get the word “Glass” registered by the United States Patent and Trademark Office (USPTO) as a federally protected trademark. While the company obtained registration relatively easily for “Google Glass” in connection with its much anticipated wearable technology device, the road to registration for its newest application has been much more obstructive.

For “Google Glass”, the USPTO asked only that Google amend its description of goods and change the Class that it originally filed in before the application could proceed toward registration. For “Glass,” the Examining Attorney dealt a much more serious blow, citing a likelihood of confusion with six prior registered trademarks and a potential likelihood of confusion with seven prior filed applications. Beyond that, the Examiner set forth an argument that the word “Glass” is merely descriptive of the goods for which Google is seeking protection namely, “Computer hardware; computer peripherals; wearable computer peripherals; peripherals for mobile devices; wearable peripherals for mobile devices; computer hardware for remotely accessing and transmitting data; computer peripherals for remotely accessing and transmitting data; peripherals for mobile devices for remotely accessing and transmitting data; computer hardware for displaying data and video; computer peripherals for displaying data and video; peripherals for mobile devices for displaying data and video; computer software.” The Examiner found that the word “Glass” would be taken by consumers to describe some feature of the goods, specifically that they contain glass lenses or glass parts, and thereby denied registration.

In its response, filed in March, trademark lawyers for Google countered with a lengthy argument that Google Glass is so well known that consumers will not be confused between it and the other cited applications and registrations. The response also argues that since buyers of Google Glass are sophisticated purchasers, they know exactly what they want and will not be confused between the Google product and other products. Though the USPTO has yet to issue any acti Read the rest

Proctor and Gamble Looks to Protect Old Spice Whistle as Sound Trademark

By Joseph Mandour on March 25, 2014

whistle-150x150
Los Angeles – According to documents filed with the United States Patent and Trademark Office (USPTO), Proctor & Gamble has applied for trademark protection for the Old Spice whistle.  The application was filed on January 17, 2014 and describes the trademark as “a whistled tune comprising of the following notes: A3 sixteenth note, A3 sixteenth note, B3 eighth note, D4 eighth note, C#4 dotted eighth note, E4 sixteenth note, F#4 eighth note, D4 eighth note.” The USPTO has cleared the application for publication, making the famous jingle one of the relatively select few sound marks allowed federal trademark protection.

In comparison to the millions of word and design trademarks on file with the USPTO, sound marks comprise a very small portion of the total trademarks protected in the United States.  In 1971, the iconic “NBC chimes”, comprised of three notes became the first sound mark to be accepted and registered by the USPTO.   Other famous sound marks include Southwest Airline’s “You are now free to move about the county”, MGM’s roaring lion and the Sportscenter jingle.

Part of the reason so few sound marks exist has to do with the difficulty of the test for whether a sound qualifies as a protectable sound mark.  In the landmark Trademark Trial and Appeal Board (TTAB) case of In re General Electric Broadcasting Co., Inc., 199 USPQ 560 (TTAB 1978), the Board found that the test “depends on the aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck.”

For Proctor & Gamble, which seeks to register the trademark as part of its Old Spice brand in connection with “Antiperspirants and deodorants for personal use; Bar soap; Body sprays; Body wash; Cologne; Hair conditioners; Hair shampoo; Shaving preparations,” the whistle will be the company’s first federally protected sound mark, assuming it clears the month-long publication peri Read the rest

Pharrell Williams and Will.i.am Call it Quits in Trademark Fight

By Joseph Mandour on March 17, 2014

www-internetCalifornia – Two of hip hop’s biggest names have called a truce in their headline-making legal dispute. Pharrell Williams and Will.i.am recently came to a formal agreement in a trademark infringement conflict. While the exact terms are undisclosed, the settlement ensures that no further legal action will be taken by either party.

The dispute centered over use of the phrase “I Am” and was officially initiated when Will.i.am brought an opposition against Williams for his application to trademark the phrase “I Am Other.” The N.E.R.D member fought back, pointing out that his term does not incorporate a period as in Will.i.am and by claiming that the Black Eyed Pea bandmate had no right to exclusively use such a common phrase as “I am.”

Williams originally filed his trademark application with the United States Patent and Trademark Office (USPTO) in the summer of 2012. Though he has noted that his “I am Other” brand is meant to encapsulate his “creative venture and way of life”, he filed in classes pertaining to music production, apparel and jewelry. Once the application published, Will.i.am. filed a Notice of Opposition with the Trademark Trial and Appeal Board, claiming that consumers were likely to confuse the name with his own moniker as well as his company name, I.Am.Symbolic.

In an interview with Rolling Stone, Williams recently expressed his distaste over the whole issue, terming it “ridiculous” and saying that he was disappointed that Will.i.am had never attempted to resolve the issue with him out of court. After being bombarded with bad press for starting the fight, Will.i.am’s lawyers issued a formal statement making it clear that the artist had not sued Pharrell Williams, but that he had simply ” done … what any trademark owner must do to protect and maintain a trademark,” in filing an opposition against the registration of William’s trademark Application.

The lawyer went on to defend his client’s actions by stating, “due to deadlines imposed by the Trademark Office, will.i.am had no choice but to lodge his objection at the time he did.” For his part, Will.i.am seemed to agree with his legal team and then turn Read the rest

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