IPLJ » Trademark

Maker’s Mark: Wax On, Wax Off

Emily Wolf — Tue, 22 May 2012 18:29:28 +0000

The Sixth Circuit decided that the red wax seal on the top of bottles of Maker’s Mark whiskey is a trademark. Maker’s Mark brought this case against Jose Cuervo, who had used a similar mark on its “Reserva de la Familia” bottles. Maker’s Mark has been using the wax seal since 1958, and the seal has been trademarked since 1985. Judge Boyce Martin, Jr. (who recently judged the Kaufman Moot Court Competition at Fordham Law) wrote a fun opinion that spends several informative pages on the history of whiskey and bourbon, and determined that the wax seal was not functional and that there would be a likelihood of confusion in the market to have other liquor bottles bearing the red dripping wax seal.

No word on the amount of fun “research” Judge Martin’s law clerks conducted for him.

Ambush Advertising: We Must Protect this House!

Matthew Mann — Sun, 20 May 2012 19:01:20 +0000

Most of us have been to professional sporting events. The exclamations of food vendors, the crack of the bat, and the beautiful green grass are all familiar to sports fans during spring. Spring is a major sports season when baseball is in full swing and golf, basketball, and hockey all feature major tournaments or playoffs. While sitting at a game, how many of us think about the business and legal agreements that make the product we watch on the field possible?

Sports started out as a purely amateur form of recreation but have over the years become a lucrative business. With any successful business comes the opportunity to market the event. Many names and logos for various events are created and, if original, are also protected by trademark against unauthorized use. Organizers of such large sporting events like the World Cup and premier golf tournaments, usually have five revenue streams generated by these events. The first stream is sponsorship fees, the second is gate revenue, the third is exclusive supply of products, fourth is recording and broadcast rights and fifth is merchandising rights. Sponsorship fees have became very profitable and includes the right to display the sponsor’s trademark inside the venue/stadium, the naming of the stadium, the right to use the event identifiers on articles manufactured by the sponsors or the right to use the event identifier in association with a service.

The most lucrative deal in sports history involved soccer giant Manchester City partnering with Etihad Airways for sponsorship of the stadium, shirt/jersey sponsorship, and redevelopment of the ground around the stadium to be known as Etihad Campus. The deal was worth £400 million which equates to roughly $652 million U.S. dollars. Sponsorship deals are becoming more prevalent as companies see sponsorship as a way to improve their brand image by associating themselves with successful sports franchises.

One of the most successful examples of this trend is the American Airlines Arena in Dallas. While American is struggling to fill seats on its planes, it certainly is not having the same problem in its Arena. Approximately 1.6 million fans entered the American Airlines Center over the past year, with the average ticket going for more than $50. American pays $6.5 million annually in corporate naming rights. The Arena earns some $40 million from 144 luxury suites and various signage and sponsorships around the arena, and American Airlines Center rakes in about $8,800 a year from each of its 18,186 seats and luxury boxes.

Sports is such a successful business today that according to a Forbes study of top 10 lucrative arenas “no arena on our top 10 list derived more than 4% of its revenue over the past year from corporate naming rights.” However, the most lucrative stadiums tend to be multipurpose facilities that usually feature hockey, basketball, and music performances. The year-round use of these arenas and the high prices for limited seats make them the most financially successful. Baseball and football naming rights deals are much higher as these stadiums have a greater capacity and the sports have greater nationwide appeal. For example, the New York Mets signed a deal with Citi Group in 2006 worth $400 million for 20 years. This trend is likely not going away as companies believe there is benefit to brand recognition among key demographics as a result of arena sponsorships.

Given the cost prohibitive nature of sponsorships, some companies have resorted to ambush advertising. Ambush advertising occurs when companies try to associate their products with an event without the consent of the organizers. In order to combat instances of this form of advertising, countries that host big-time sporting events sometimes have to pass legislation. For example, in preparation for the upcoming London Olympics, Britain passed the London Olympic Games and Paralympic Games Act in 2006. Section 32 of the Act states in part that it is illegal to add a symbol, model, or word “so similar to a protected word as to be likely to create in the public mind an association with the Olympic Games or the Olympic movement.” The Act goes on to define the concept of association as “an association between a person, product or service and the Olympic Games or the Olympic movement includes, in particular, (i) any kind of contractual relationship, (ii) any kind of commercial relationship, (iii) any kind of corporate or structural connection, and (iv) the provision by a person of financial or other support for or in connection with the Olympic Games or the Olympic movement.” More countries will continue to pass similar legislation in order to protect their brands and trademarks.

The desire to profit from sales due to visibility in front of millions of viewers worldwide is not limited to companies however. Athletes long famous for product endorsement have taken sponsorships to the next level in recent years. Athletes over the years have endorsed everything from shavers to soda. More recently, athletes can be seen in commercials for sports performance beverages, video games, and automobiles. One of the most creative potential sponsorships occurred when Marshawn Lynch, a Pro Bowl running back for the Seattle Seahawks NFL football team attempted to profit from his love of a popular candy.

Television and newspapers have reported that Lynch enjoys eating the Skittles brand candy and has often enjoyed them as a celebratory snack after games throughout high school and college. This tradition continued in his professional career as his mother is known to give him a bag before every game. After scoring a touchdown, Lynch can be seen chomping on all the flavors of the rainbow. His most famous Skittles craving occurred during a game on December 1, 2011 against the Philadelphia Eagles. After his 15-yard touchdown run with 9:19 remaining in the first quarter, Lynch was shown on national television eating Skittles on the sidelines. Executives at Mars Inc., the company that owns the Skittles brand, were so happy with the free national publicity that they offered Lynch a two-year supply of the candy and a custom dispenser for his locker as a gesture of gratitude for the product placement. Lynch later sported a Skittles candy pattern on his cleats during a game on December 24th. The National Football League, however, was not amused.

The League Office fined Lynch $10,000 for wearing the cleats. They were deemed to be in violation of the League’s uniform policy. The Official NFL Handbook Policy states that “logos, names, or other commercial identification on shoes are not permitted to be visible unless advance approval is granted by the League office. Size and location of logos and names on shoes must be approved by the League office.” This policy leaves open the possibility that with League approval athletes could endorse products on shoes and possibly other equipment. Given the notoriously strict uniform guidelines in professional football and other sports, this seems unlikely however. Marshawn Lynch, however, has shown that athletes will continue to find innovative ways to endorse brands and attempt to gain a bigger piece of merchandise and sponsor revenue.

If The Ring Fits…Sue

Andrew Eisenberg — Wed, 25 Apr 2012 04:01:34 +0000

Recently, pictures of the wedding ring that Brad Pitt has designed for wife-to-be Angelina Jolie have been released. Undoubtedly, replicas of such rings are soon to follow. Kate Middleton’s sapphire ring has yielded many imitations and there is no reason to believe that Angelina’s ring will be any different. Some have speculated that Brad may seek legal protection to maintain the exclusivity of the ring. One of the requirements for attaining copyright protection for such is that the design contains originality. Arguably that requirement is easily satisfied and Brad should have no problem as it took the jeweler over a year to obtain certain emerald-cut diamonds to use in the ring. Yet it seems unlikely that lawsuits will be brought since for an infringement suit to be successful the knockoff must be exact. Practically all of these future duplicates are likely to just be “inspired” by Angelina’s ring or close imitations.

It is important to note that Mr. Pitt has previously tried covering his basis by filing a similar lawsuit. In 2000, Brad Pitt presented his own custom design to an Italian jeweler named Silvia Damiani. Damiani who created the famous Jennifer Aniston/Brad Pitt wedding rings, both engraved with the names Jen 2000 and Brad 2000. Jennifer’s 18k white gold band featured twenty inset diamonds encircling each side of the ring. Brad’s ring was simpler and featured a simple broader space of ten inset white diamonds. The couple reportedly paid the jeweler £36 million for the wedding and engagement rings. According to reports, soon thereafter, Brad Pitt and Jennifer Anniston filed a multi-million dollar lawsuit against Damiani for replicating Pitt’s custom design, alleging that Damiani “embarked upon an outrageous, fraudulent scheme to manufacture copies of Aniston’s engagement ring and the couple’s wedding rings.” The new Damiani rings were being sold online and featured the same 10/20 diamond design as Pitt’s prototype with diamonds costing $1000.00 a piece. Eventually, the lawsuit was later settled in favor of Pitt and Aniston and Damiani was barred from using the design.

With this is mind, potential replicators should beware that Brad may come after them. If exact copies of the rings do hit the market we won’t be surprised if, resurfacing like his role in Sleepers, Pitt brings the wrongdoer to court.

The phrase “a tavola” means “come to the table”

Steven Daroci — Tue, 24 Apr 2012 16:44:15 +0000

Perhaps someone should have let Francis Ford Coppola know about this common phrase before he went ahead and sued the owner of Tavola Italian Kitchen restaurant in Novato, California, claiming the name infringes his “a tavola” trademark used to market his eateries. Francis Ford Coppola Winery and restaurants in San Francisco and Napa Valley have used the “a tavola” trademark since 2008. The U.S. Patent and Trademark Office issued the trademark last year, according to the complaint (“a tavola” means that diners at Coppola’s restaurants are not given menus and served family-style dishes). Coppola’s company claims Tavola Italian Kitchen’s infringement is “likely to cause confusion” with Coppola’s trademark, especially because it is located 50 miles (80 kilometers) from Coppola’s winery. Tavola Italian Kitchen’s owners, however, claim that “a tavola,” which means “table” in Italian, is a completely generic word and that Coppola is attempting to trademark the Italian language.

Chef Boulud Serving Up Infringement Lawsuit

Steven Daroci — Mon, 23 Apr 2012 16:43:26 +0000

Daniel Boulud, the world-renowned chef, is suing a Buffalo music club and restaurant for trademark infringement. Boulud wants the owners of Duke’s Bohemian Grove Bar to stop using the name DBGB, according to a lawsuit filed in Federal Court in Manhattan.

Boulud’s complaint claims he claimed the name after he opened DBGB Kitchen & Bar on the Bowery in 2009. His company, The Dinex Group, which also owns three Michelin star restaurant Daniel, contacted the Buffalo bar’s owners in 2010 asking them to discontinue the DBGB designation. The Buffalo restaurant agreed, but upon becoming aware that the Buffalo restaurant was continuing to use the name, Boulud’s company filed the lawsuit.

Another Take on the Jordan Trademarking Issue

Richard Hochhauser — Wed, 18 Apr 2012 19:04:13 +0000

The Sports Blawg with the Fordham Sports Law Forum

MICHAEL JORDAN CRIES FOUL AS CHINESE COMPANY USES HIS CHINESE NAME TO MARKET PRODUCTS

For the past three decades, Michael Jordan has been arguably the most popular and marketable athlete in the world. This is especially true in the basketball-crazed China where Jordan is known as “Qiaodan” (??). But, neither Jordan nor Nike, which owns the Chinese trademark for Jordan’s English name, own the trademark for Qiaodan. Instead, the Qiaodan trademark is owned by Qiaodan Sports, a Chinese company located in the southern Fujian province. Qiaodan Sports also uses Jordan’s iconic number 23 on many of its goods. Amazingly, Jordan silently allowed Qiaodan Sports to operate, never challenging their use of his name and number. All that changed on February 21 when Jordan filed a lawsuit in Chinese courts against Qiaodan Sports.

In the lawsuit, Jordan argues that Qiaodan is utilizing his Chinese name, iconic number 23, and a logo similar to Jordan’s “Jumpman” logo, to market much of their sportswear and equipment. Jordan further alleges that Qiaodan has even used his son’s Chinese names as advertising tools as well. A 2009 survey conducted by a Shanghai marketing company says that 90 percent of 400 young people polled in China’s small cities believed Qiaodan Sports was Michael Jordan’s own brand.

Jordan’s argument will largely be based on Article 31 of Chinese Trademark Law which states: “An application for the registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to pre-emptively register the trademark of some reputation another person has used.” It can certainly be argued that “Qiaodan” is a “reputation” as described in Article 31.

Futhermore, According to the People’s Republic of China, an individual shall enjoy the right of personal name (Article 99 of the General Principle of Civil Law) and infringement on an individual person’s naming rights is prohibited (Article 2 of Torts Liability Law). The question in relation to this Article will turn on whether Qiaodan is considered a “personal name.”

Qiaodan argues, however, that they have the right to use the name and there is no connection to Jordan. “‘Qiaodan’ is a brand we registered according to Chinese law, and its lawful use should be protected,” Qiaodan asserted. A spokesman for the company further stated that there is no connection between the number 23 and Jordan, and that it is “just a number.” The spokesman further attested that “Not everyone will think this is misleading. There are so many Jordans besides the basketball player – there are many other celebrities both in the U.S. and worldwide called Jordan.”

You might ask why Jordan has decided to sue now after eleven years of Qiaodan using his name. NBC News’ Ed Flanagan believes it may result from two recent similar cases in China involving basketball players. In both cases, the lawyers used similar arguments to the ones that Jordan is relying on. The favorable results for the players could signify an evolution in Chinese trademark law, further protecting international celebrities and athletes. Jordan, seeing his fellow basketball player’s success in Chinese courts, decided to follow suit.

According to Laurie Burkitt, China consumer reporter at The Wall Street Journal Asia, the fact that Jordan doesn’t hold a registered trademark for his Chinese name in China may not be a deterrent for victory. Although Chinese law protects parties who hold registrations and who file early for them, a provision says businesses can’t freely use the names of famous people, even if the people don’t have a registered trademark. Thus, the case will likely turn on whether Jordan can show that Qiaodan is in fact synonymous enough with Jordan to make it like his own name.

China’s naming rights has become a heated issue as of late. In 2005, GM settled with Chery Automobile Co. for having a name too similar to “Chevy.” Apple Inc is in court currently in China over whether a Chinese company holds the iPad trademark. The rising New York Knicks Star, Jeremy Lin, can expect to have a legal battle as a Wuxi Risheng Sports Utility Co. says it reserved the rights last year to use his Chinese name, Lin Shuhao. These trademark disputes will only increase as American athletes continue to become international stars, and American companies continue to tap the Chinese consumer markets. And, for now, this one is just too close to call.

The Fordham Sports Law Forum is dedicated to bringing interesting issues in sports law to the Fordham legal community. Each week, in conjunction with the Intellectual Property, Media & Entertainment Law Journal, members of the Fordham Sports Law Forum write posts about current sports law issues and events.

“Eat Mor Chikin” v. “Eat More Kale”

Hannah Steinblatt — Wed, 18 Apr 2012 04:51:46 +0000

Vermont businessman Bo Muller-Moore’s 6-year ongoing battle against Chick-fil-A took an unexpected turn this week when the U.S. Patent and Trademark Office sided with the chicken chain. The office issued a preliminary decision supporting Chick-fil-A’s assertion that Muller-Moore’s popular “Eat More Kale” t-shirt and related merchandise infringes on its trademarked “Eat Mor Chikin” advertising slogan.

The company filed a letter of protest with the PTO on Tuesday of last week, and the office issue the decision the next day. The examining attorney stated that there is a likelihood that consumers would confuse the sources of the two phrases.Muller-Moore’s attorney has six months to respond to the preliminary decision or else it becomes permanent, which would lead to a rejection of Muller-Moore’s application for a trademark on his Eat More Kale slogan. His attorney remains confident that the application will succeed.

*For a more in depth discussion of this issue, and trademark bullying generally, stay tuned for forthcoming article by Irina Manta in Book IV!

Trademarks Stemming from Trayvon Martin Shooting

Kaitlin Keenan — Tue, 17 Apr 2012 13:52:11 +0000

The Trayvon Martin killing has spurred significant, world-wide controversy and rage. As expected to be the case with anything that receives such astounding publicity, people are trying to profit off it. Similar to the absurd T-shirts created in response to the “Twilight” hysteria, “Team Edward” and “Team Jacob,” many merchandisers are creating various objects bearing phrases containing Trayvon Martin and George Zimmerman’s names.

Martin’s mother has applied for trademarks on the phrases, “I am Trayvon” and “Justice for Trayvon.” Shortly thereafter, a San Francisco business man, Lawrence Sekara, applied for a trademark on the phrase, “I believe you Zimmerman.” Sekara’s trademark application states his intent to use the trademark on t-shirts, coffee mugs, and other merchandise. Martin’s mother claims she has no intention to profit off the trademark, saying she has filed the trademark so that others will not be able to capitalize on her son’s death by creating merchandise.

Although it is unfortunate that many are able to capitalize off of this controversial killing, Martin’s mother’s trademark application contradicts trademark policy- namely consumer protection and quality investment. Trademark is defined in terms of its source-identifying use. If Mrs. Martin has openly stated that she does not intend to use the trademark, and is seeking protection to prevent others from using the “mark” (if the use of his name can even be a mark), should the PTO refuse giving her trademark protection?

Introducing “Soundmarks” (in Canada)

Amy Dunayevich — Wed, 11 Apr 2012 17:39:11 +0000

After a 20-year court battle, the Canadian Intellectual Property Office has decided to allow sounds to be trademarked. That means that the sounds of a car horn, an animal grunt, a school bell, or a crowd cheering may now be associated with a trademark, or rather, a soundmark.

Read all about it here and here.

LMFAO’s Clarifying Trademark

Amy Dunayevich — Wed, 11 Apr 2012 17:30:52 +0000

The electronic pop duo LMFAO is trying to trademark their name. In their application they explain what LMFAO stands for. Hollywood Reporter has the scoop.