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Tackling Tacking in Trademark Law by David Lilenfeld

The Supreme Court of the United States tackled trademark tacking in a recent case titled Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015).

When a company changes its trademark (for a example a rebrand), a new trademark is introduced. But what if the company only makes modest changes to its existing brand or logo — is the updated version a new trademark or just a refreshed version of the old one?

The answer is provided by the principle of “trademark tacking,” which allows the company to “tack on” the time it used the former trademark to the new trademark. “Tacking on” is good for the trademark owner because its gives the company the benefit of the Date of First Use of the older trademark, instead of starting over with the new trademark.

The Supreme Court ruled that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.” The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”

“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”

David Lilenfeld

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IPR Patent Proceedings May Get a Judicial Makeover

In early January 2016, the Supreme Court of the United States a writ of certiorari in a patent case, titled Cuozzo Speed v. Lee. In Cuozzo, is likely to have a major effect on Patent and Trademark Office’s post-grant patent proceedings. Two questions are presented to the Supreme Court:

No. 1. Does the Board have inviolate, unreviewable authority to initiate an IPR.

No. 2. Whether the Board, during those proceedings, may construe claims in an issued patent according to broadest reasonable interpretation or according to their plain and ordinary meaning.

“This one will be good to watch and can have significant impact on post-grant strategy,” said David Lilenfeld, founder of Atlanta-based Lilenfeld PC.

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Does Copyright Law Let a Monkey Sue Over His Selfie?

Monkey Selfie Blog pic

Naruto, the macaque, is a pioneer to the animal world because he is the first animal to take a selfie. Dating back to 2011, on the Indonesian island of Sulawesi, Naruto snatched photographer’s, David Slater’s, camera and took a selfie. This selfie has stirred widespread debate over who owns the rights to this photograph. People for the Ethical Treatment of Animals (PETA) sued on Naruto’s behalf claiming ownership rights to the selfie. Slater, on the other hand, claimed ownership of the selfie because it was taken with his camera. U.S. District Judge William Orrick III ruled that copyright law does not extend its protection to animals. Nevertheless, this is a landmark case because for the first time in history an animal’s right to sue for property rights, as opposed to being labeled as property, has arisen.

PETA, on behalf of Naruto since monkeys do not have standing to bring a lawsuit let alone the ability to talk, sued Slater. The organization asserted Slater could not hold copyright in the selfie because he was not involved in its creation. PETA sought monetary damages, claiming all money will go to Naruto, and a ban on the sale of the selfie.

Slater alleged he has a copyright interest in the selfie. This nature photographer owned the camera that the monkey grabbed in order to take the selfie. Furthermore, Slater argued the photograph was a result of his artistic creativity as he deliberately left the remote trigger for the camera accessible to Naruto with the hope that the monkey would take a picture.

Copyright laws provide that if there is an author, there is a copyright. This poses a problem for Naruto because works created by a non-human are not subject to copyright. According to Clause 313.2 from the United States Copyright Office, “This office will not register works produced by nature, animals or plants.” This clause specifically lists “a photograph taken by a monkey” as an example of a work that is not registerable because it lacks human authorship. Naruto, being an animal, foreseeably had difficulty acquiring a copyright in his selfie even though he arguably is the author of the work. Despite our sympathy for Naruto, United States copyright laws would need to be revised in order for courts to lawfully rule in favor of Naruto.

David Lilenfeld

 

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Patent Infringement Panel Discussion in Atlanta

Presumption of Irreparable Harm in Requests for Injunctions After eBay

The Supreme Court, in its 2006 decision in eBay Inc. v. MercExchange, L.L.C. (547 U.S. 388), rejected the general rule favoring the granting of permanent injunctions against patent infringement, instead holding that the traditional four-factor analysis for permanent injunctive relief applied in patent infringement cases.

Below you can view a panel discussion examining the after-effects of the eBay decision. It is moderated by patent infringement attorney and Lilenfeld PC founder David M. Lilenfeld. The panel also features Ronald T. Coleman Jr., of Parker Hudson Rainer & Dobbs; Ann G. Fort, of Sutherland; and Frank G. Smith III, of Alston & Bird.

 

 

David M. Lilenfeld

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Opposition to Minor League Team’s Trademark of MINERS Upheld

In a recent decision, the Trademark Trial and Appeal Board (“the Board”) sustained two Oppositions to registration of the mark Miners baseball finding the mark likely to cause confusion with an identical, previously registered trademark. The Applicant, a minor league baseball team in Marion, Illinois, plays in the Frontier League which consists of teams from six Midwestern states, including Illinois and Missouri. The Applicant applied to register the mark MINERS for use in connection with printed materials and “professional baseball imprinted clothing.” However, the mark was already registered and used by the University of Texas at El Paso for printed programs and college imprinted clothing. After evaluating the oppositions, and despite the University of Texas’s lack of a baseball team, the Board concluded that the minor league team’s use of the mark MINERS would likely be confused with the registered mark MINERS owned by the University of Texas. .

While the University of Texas at El Paso no longer fields a baseball team, it still makes good use of the mark MINERS though a licensing agreement with Missouri S&T. The Missouri S&T baseball team operates under the mark, and the University of Texas allows Missouri S&T to use the mark for college imprinted goods and entertainment services in seven Midwestern states, including Missouri and Illinois.

In analyzing the marks, the Board found that the minor league team’s mark MINERS was similar in sound, appearance, meaning and commercial impression to the University of Texas’s mark MINERS.

No shock there: it’s the same word.

The real issue before the Board was whether the goods and trade channels were similar enough to support a finding of likelihood of confusion as to the source of the goods.

When examining the goods themselves, the Board found that the University of Texas’s “media guides” bearing the mark MINERS were legally equivalent to the minor league team’s use of the mark in “printed guides in the field of professional baseball for media use.” The Board also found no distinction between the minor league team’s use of the mark for professional baseball imprinted clothing and Missouri S&T’s licensed use of the mark for college imprinted goods. The minor league team argued that “college imprinted” clothing was distinguishable from its “professional baseball imprinted” clothing because college clothing should bear the school name, be printed in school colors, or be accompanied by a sticker stating “Officially Licensed Collegiate Product.” But the Board rejected this argument, finding that the terms “college imprinted” and “professional baseball imprinted” did not distinguish the goods in any way. The Board noted that different types of imprinting, college or professional, could result in identical goods imprinted with identical marks.

Finally, the Board examined the trade channels through which the goods traveled to consumers. In so doing, the Board presumed that both the minor league and the University of Texas’s printed guides travel through similar trade channels to a similar class of consumers because the goods are so similar. The Board further reasoned that even if the word “collegiate” modified “media guides” in the University of Texas’s registration, the media guides would still be distributed in the same trade channels as the minor league team’s “printed guides in the field of professional baseball for media use.” As for the clothing, the minor league team argued that clothing items bearing the mark traveled through distinct trade channels to professional baseball fans sincethe minor league team’s clothing is sold primarily to Frontier League fans while the University of Texas’s clothing is often sold to fans in the Conference USA region. However, the Board found that no such restrictions on trade channels existed in the trademark applications and registrations.

Ultimately, the Board held that consumers familiar with the University of Texas’s mark MINERS would be likely to believe that printed goods or clothing bearing the minor league team’s mark MINERS originated from or are somehow associated with the same entity, even though the University’s goods are associated with college baseball while the minor league team’s goods are associated with professional baseball. The University of Texas’s opposition to the mark was sustained, and the minor league team’s registration was refused.

David Lilenfeld

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College Football Stars Playing Defense with Trademark Rights

Although the NCAA prevents college athletes from profiting from their athletic success, an increasing number of college football stars are preparing for future deals by filing trademarks now. Gaining legal ownership of their names, nicknames, and catch phrases paves the way for licensing deals down the road. Trademark ownership also prevents others from exploiting and capitalizing on a young player’s fame.

For example, Ohio State running back Ezekiel Elliott recently filed an application with the U.S. Patent and Trademark Office to register his nicknames “Zeke” and “Eze” as trademarks for merchandise. Mississippi State quarterback Dak Prescott is also attempting to obtain trademark rights in his name as well as the phrases “Dak Attack” and “Who Dak.”

Professional players routinely trademark their names and fan phrases, and now, some universities and lawyers are encouraging college athletes to capitalize in the same way. By filing for a trademark registration, college players not only prepare for merchandising when they go pro, but also protect themselves against potential trademark poachers. Additionally, anyone can apply for a trademark, and if an athlete fails to secure legal ownership over his trademark(s), someone else might. Last year, Dak Prescott faced this issue when he discovered someone selling t-shirts with his name on them. In response, he secured a trademark and sued the t-shirt maker, who agreed to stop.

Critics argue that allowing college athletes to secure trademarks blurs the line between professional and amateur sports, and they may have a point. The line is increasingly becoming less clear, especially after a recent court ruling entitling college athletes to compensation when someone uses their likeness commercially. In the judgment, which was entered last fall, a U.S. District Judge ruled in favor of UCLA basketball star Ed O’Bannon and 19 others who sued the NCAA, allowing college players to put money received from television contracts into a trust to be paid to them after they leave school. The NCAA has appealed the decision.

The NCAA still prevents players from receiving commercial payment from their athletic performance, but by trademarking now, college players are certainly becoming savvier about their future interests and their earning potential.

David Lilenfeld

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Have You Considered A Trademark Audit

For those interested in a full review of their trademarks, a trademark audit is the best start. Our trademark audits offer many benefits, including:

Comprehensive inventory of your marks. Our team will take stock of your company’s house marks, word marks, slogans/taglines, logos, and non-traditional marks.

Protection analysis. We’ll check for marks that need to be registered (or need their registrations renewed). In addition, if we find you are maintaining registration for marks that aren’t being used, we’ll let you know. This can save you from paying unnecessary renewal fees and might create an opportunity for you to license a mark.

Examination of usage. Even if your marks are adequately protected, it’s still important to use the proper trademark symbols on your company’s materials (TM, SM, ®). Trademark symbols can potentially deter third parties from using your marks. In some situations, they can also prevent marks from becoming legally generic. Lilenfeld PC’s attorneys will fully review your company’s symbol usage as part of your audit.

Search for new revenue streams. There may even be opportunities to increase revenue by licensing your company’s trademarks to third parties. Our team can search for these opportunities, and we can also guide you through the licensing process if necessary.

Want to learn more about any of our trademark protection services? Just contact our team at (404) 201-2520. We would be happy to speak with you.

David Lilenfeld

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Michael Jordan Awarded $8.9 Million in Right of Publicity Case

Chicago jurors awarded the basketball legend $8.9 million on August 21, 2015 in a lawsuit over the Illinois Right of Publicity Act.  The case involved the now defunct grocery store, Dominick’s Finer Foods (“Dominick’s”), which used Jordan’s name without his permission in a steak ad in 2009. Surprisingly, the case only reached trial this August, after prolonged litigation and reassignment to several judges.  After examining the facts and allegations of the case, Northern District of Illinois Judge Milton I. Shadur ruled that Dominick’s violated Jordan’s right of publicity, and a jury trial on damages followed.

The right of publicity prohibits use of an individual’s identity, including his name and likeness, for commercial purposes without the individual’s consent.  The right of publicity is usually protected by state statute; however, only about fifty percent of states have statutes protecting the right.  Right of publicity statutes generally protect an individual’s identity during his lifetime and often extend that protection for a number of years after his death.

In an oral ruling, Judge Shadur held that Dominick’s misappropriated Jordan’s identity by featuring his name and jersey number in an ad published in a Sports Illustrated Commemorative Issue.  Sports Illustrated provided the ad space for free in exchange for a premium display of the issue in the grocery stores.  Below Jordan’s jersey, the ad read “you are a cut above” and featured a $2-off coupon for steak.  Only two coupons were ever redeemed.

Since Judge Shadur found Dominick’s liable for misappropriation of Jordan’s likeness, the jury trial focused solely on damages.  The court instructed the jury that damages should be measured by the fair market value of the plaintiff’s identity. Fair market value can be calculated based on how much the celebrity would have received for a comparable use of his identity.

Evidence of Jordan’s fair market value included the $480 million he earned from Nike between 2000-2012.  Jordan argued that his identity was worth $10 million, which Judge Shadur openly characterized as greedy.  Because of these comments, Jordan argued that Judge Shadur was biased, and the judge recused himself from the case before trial.  Dominick’s attorneys contended that Jordan should receive no more than $126,900.

After six hours of deliberation, the jury awarded Jordan $8.9 million in damages.  The jury based their award on testimony from both Jordan and his sports economist, who testified that Jordan’s fair market value for the ad was $10 million.  Jordan has stated that the award will be given to charities in Chicago.

David Lilenfeld

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Under Armour Tees Off Spieth Trademark and Logo

Jordan Speith logoi (1)

Under Armour took the right step toward protecting the new Jordan Spieth logo by filing several trademark registration applications with the United States Patent and Trademark Office.

The logo consists of two “J”s with an “S” residing in the negative space between the two “J”s.  Under Armour says in its applications that it intends to use the Spieth logo on footwear, golf gloves, headwear, eyewear, jackets and pants.

Under Armour signed Spieth in January 2013, when he was only 19 years old.  Spieth reportedly had two years remaining on his Under Armour deal, but the parties negotiated an extension, tying Spieth to the fast-growing brand until 2025.  If his current success continues, he’ll surely be one of the highest-paid golfers in the world, especially since he likely receives royalties from sales of his own gear.  Filing a trademark registration application could be the glue that holds things together.

David Lilenfeld

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“GOLF SPORT” Trademark and Design for Clothing Confusingly Similar to “GOLFINO” for Clothing

In a recent decision, the Trademark Trial and Appeal Board (the “TTAB”) found that the clothing mark GOLF SPORT and its “golfer” design is confusingly similar to the GOLFINO trademark and design for clothing.  You can access the full opinion for this decision here (http://ttabvue.uspto.gov/ttabvue/ttabvue-91183317-OPP-19.pdf) and commentary here (TTAB Blog: http://thettablog.blogspot.com/2010/07/ttab-finds-golf-sport-and-golfino-both.html).

Gady Desler (the “Applicant”) applied for a trademark registration for GOLF SPORT identifying the goods as “dress shirts; golf shirts; polo shirts; shirts; short- sleeved or long-sleeved t-shirts; short-sleeved shirts; sport shirts.”

golf

Thereafter, Golfino AG (the “Opposer”) filed an opposition to the Applicant’s registration on the ground that the trademark resembled the GOLFINO trade name, and previously registered GOLFINO trademarks.  Opposer stated that allowing Applicant’s mark to obtain registration would likely cause confusion with its currently registered marks.

The Board’s main considerations in determining the likelihood of confusion were similarities between the marks and similarities between the goods.

For goods, the TTAB looked at the channels of trade and class of purchasers. The Board noted that the goods did not have to be identical for there to be a likelihood of confusion:

“The goods need not be identical or directly competitive in order for there to be a likelihood of confusion.  Rather, the respective goods need only be related in some manner or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.”

Because the Applicant’s listed goods of “golf shirts” and “shirts” were identical to the Opposer’s registered goods, the Board found that the goods of both the Applicant and the Opposer would be “sold in the same channel of trade and will be bought by the same class of purchasers.”

Additionally, due to Applicant’s admission in the record, the Opposer did not have to prove where the goods would be sold or that the goods would be sold in the same channel of trade (golf stores, golf pro shops, general merchandise stores, and department stores).

After concluding that the DuPont factors related to similarity of goods, similarity of the channels of trade, and similarity of the class of purchasers favored a finding of likelihood of confusion, the Board went on to consider the conditions of sale.

When analyzing the conditions of sale, the Board found that the risk of confusion increased.  Because the Applicant’s goods did not include any prices the Board had to consider that the clothing would include inexpensive as well as expensive items.  Inexpensive items require less purchaser sophistication and the exercise of a smaller degree of care when purchasing, which increases the likelihood of consumer confusion.  Therefore, this factor also weighed in favor of the Opposer.

Lastly, the TTAB considered the similarity or dissimilarity of the marks in their entirety. The Board noted that when the goods and services are identical “the degree of similarity necessary to support a conclusion of likely confusion declines.”

The Board found through the Applicant’s admissions that the marks were “virtually identical” in appearance, sound, and meaning.  The Applicant’s “Golfer” design was found to be descriptive and “predominated over the descriptive wording GOLF SPORT.” The Board also found that GOLF SPORT and GOLFINO were similar in sound and connotation because they both begin with the word GOLF.

Thus, after analyzing the DuPont factors, the Board ultimately found in favor of the Opposer. The Board agreed that the Opposer had priority and that the Applicant’s GOLF SPORT mark and design would likely be confused with the Opposer’s prior GOLFINO trademark for the same goods.

David Lilenfeld

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