By now just about everyone is aware that the UMBC Retrievers became the first Number 16 seed to beat a Number 1 seed in the NCAA men’s basketball tournament. Prior to this past Friday night, many may not have been aware of the existence of UMBC, and now everyone is talking about this historical win.
With the massive amounts of attention that the school is getting, the school’s officials were made aware that UMBC did not have a trademark registration for “Retrievers.” Continue reading
Sellers of goods often will add a design element to their product and claim no competitor can copy its design, asserting it will violate trademark rights because the design element has become associated with the seller in the minds of consumers. In other words, the design element functions as a trademark. Take, for example, the solid red sole of the Christian Louboutin shoe.
Recently, LVL XIII, a seller of popular sneakers featuring a rectangular metal plate design on the toe, sued Louis Vuitton for using a similar metal toe plate design on its shoes. Continue reading
You might remember Dove’s social media post that went viral in October 2017, showing a looping image of an African-American woman removing a dark brown t-shirt to reveal a white woman. Backlash ensued on social media and Dove quickly issued an apology admitting that the advertisement “missed the mark.”
Recently, Swedish worldwide apparel retailer H&M advertised a hoodie for sale featuring a black child, who lives in Stockholm, modeling a sweatshirt with the phrase “Coolest Monkey in the Jungle.”
Once again, many people took to social media to question how such an offensive advertisement was approved by the retailer’s marketing team. Among them was New York Times columnist Charles M. Blow who posted on Twitter, “Have you lost your damned minds?!?!?!” British-based diversity advocate, Models for Diversity, criticized H&M’s judgment in choosing this model to advertise the hoodie, tweeting, “How on earth can this be? SHAME ON YOU!”
Trademark infringement is not unheard of to Under Armour – although Under Armour is usually the one claiming infringement. The popular athletic company has brought several trademark infringement suits, including recent lawsuits against Puppy Armour, Inner Armour, Salt Armour and Ass Armour.
However, the tables recently turned when Under Armour filed a declaratory judgment action that it was not infringing. A declaratory judgment action is filed to clarify the legal rights of parties.
“Bluetiful” is the newest addition to the 24-count Crayola crayon box. The color was inspired by YInMn Blue, the blue pigment discovered accidentally in 2009 by chemist Mas Subramanian and his team at Oregon State University. Bluetiful replaces the yellowish color, Dandelion. (What was wrong with Dandelion?)
Was “bluetiful” an error in branding? Critics say the name will teach children a non-word, and incorrect spelling. No doubt it will. But according to Crayola’s CEO, “[b]luetiful was the clear winner,” out of the other possible names, Blue Moon Bliss, Dreams Come Blue, Reach for the Stars, and Star Spangled Blue.
Disconnects in language, culture, and customer attitudes have resulted in some pretty memorable and clear branding misses.
In an ongoing trademark dispute between Forever 21 and Gucci, Forever 21, Inc. v. Gucci America, Inc., et al., 2:17-cv-04706 (C.D. Cal.), Gucci recently got the upper hand, slightly: the court granted Gucci’s partial motion to dismiss–but permitted Forever 21 to amend its complaint.
This dispute began nearly a year ago, in December 2016, when Gucci sent Forever 21 a cease and desist letter demanding that Forever 21 cease all sales of garments and accessories bearing the stripe combination blue-red-blue. Gucci owns a federal trademark registration for that stripe combination.
Before a business begins to use or files to register a trademark, it should research if other businesses are using the same mark for the same services, or if any have in the past. It should also do the same for any related, or similar marks for similar goods or services. This sort of search is designed to find federal trademark registrations, pending applications for federal registration, and common law (unregistered) trademarks that are in current use.
Such search should be conducted and reviewed by an experienced trademark attorney who can determine whether your proposed mark is, or may be considered, confusingly similar to a preexisting mark and can assess the risks associated with such finding. For example, if your proposed mark is confusingly similar to a preexisting mark, you face the risk of receiving a cease-and-desist letter or trademark infringement claim from the prior mark owner. You could also lose the investment and goodwill in your mark and spend considerable sums to re-brand your business if forced to cease usage.
Additionally, you will not be able to federally register your mark if it is confusingly similar to a mark covered by a prior federal registration or a prior-filed pending application. A trademark attorney can also advise whether your mark is distinctive (and thus capable of federal registration) or whether it is too descriptive to qualify for registration because the mark describes some feature, characteristic, function or purpose of the products or services to be provided under the mark.
Registration is not necessary to acquire trademark rights, but it provides important benefits. United States federal law recognizes both common law trademarks and marks that are registered with the United States Patent and Trademark Office. This post provides an overview of some of the benefits of registering a mark.
