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  • Posted by: Jerome McDonnell and Nicole Briggs on Wednesday, January 9 2013 09:13 AM | Comments (0)

    Nothing makes us happier than when trademarks make the headlines, and 2012 did not disappoint. While intellectual property is a serious subject, here we present some of the more sensational trademark news items from the past year.

    Beyonce and Jay-Z

    Blue Ivy Carter: My kid is a celebrity!

    Just a few days after baby Blue Ivy Carter was born in January, celebrity parents Jay-Z and Beyoncé were tossed a curve ball when Joseph Mbeh filed a trademark application for “Blue Ivy Carter NYC.” The USPTO denied the application due to likelihood of confusion and false connection. On November 27, 2012, the famous couple’s own trademark application for Blue Ivy Carter was published in the official Trademark Gazette. If all goes well, the couple will own rights to their daughter’s name. Kim Kardashian and Kanye West should take note.

    Linsanity: Whose name is it anyway?

    Early in 2012 Jeremy Lin had the world in a frenzy over his savvy basketball moves. At the USPTO there was also a frenzy over the rights to "Linsanity." With a pending application, Jeremy Lin will most likely gain exclusive rights to the trademark — but, on Feb 9, one Andrew Slayton filed for the name 4 days before Lin. Since then the USPTO has sent a suspension letter sent to Andrew citing false connection with Jeremy Lin. We’ll stayed tuned for the outcome. Meanwhile, more than 200 different trademark applications were filed for “Linsanity” in North America, China, Taiwan, and the UK…

    Eat Mor Kale: Little dog takes on the big dog!

    Chick-fil-A, owner of the tagline “Eat Mor Chikin,” sent a cease and desist letter to t-shirt artist Bo Muller-Moore over his use of “Eat More Kale.” The company is known for going after pretty much anyone using the words “Eat More” in a trademark. Muller-Moore stated he was willing to fight it out — but in May, the USPTO sided with Chick-fil-A and refused to grant him a trademark registration, due to likelihood of confusion with Chick-fil-A’s mark. Do you think it is fair for Chick-fil-A to claim exclusive rights to “Eat Mor(e)”?

    Hershey Bar Configuration: The Non-Traditional trademark

    In June, Hershey Chocolate and Confectionary Corporation won an appeal at the Trademark Trial and Appeal Board to register its configuration of a candy bar (“…that consists of twelve (12) equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle”). Used in commerce since 1968, the appeal was won after the board decided that the configuration had acquired distinctiveness through continuous use. Some wonder if Hershey will have a hard time enforcing these rights against competitors. Nevertheless, Hershey has reminded us of the power of trade dress. Shape is everything, in this case.

    The Biggest Brand Protection Operation Ever Staged

    Some might say that brands overshadowed athletes at the London Olympic Games, and protecting the rights of sponsor brands was priority. While spectators were essentially told what not to wear (large groups of spectators wearing "visibly branded" clothing risked being banned, athletes were not allowed to sell merchandise with their names on it, or be featured in any advertising unless for a brand that was a sponsor. More than 280 “enforcement officers” from the Olympic Delivery Authority were on the lookout for ambush marketing activity. New legislation granted these officers even greater powers than the police, with the authority to enter premises without a warrant. Olympic strength enforcement, indeed.

    Nicest Cease-And-Desist Letter Ever!

    In July, the trademark folks at Jack Daniels got some nice PR when the recipient of this letter posted it online — and the story went viral. While it was later pointed out that, technically, it was not a Cease-and-Desist letter, the world is a better place for learning that lawyers can behave reasonably. As the saying goes, sometimes you catch more flies with honey…

    Any Color, As Long As It’s Red

    Christian Louboutin's red soleIn September, the decision confirming the validity of the Red Sole trademark held by Christian Louboutin ensured the designer could continue to protect the mark when it comes to red-soled shoes with contrasting uppers — while also allowing YSL the right to continue selling a monochrome red shoe. Everyone was a winner, and fashionistas and IP professionals came together to rejoice!

    What is it with Apple and Trademarks?

    Forget about Apple’s tussle with Proview over rights to the iPAD trademark in China — what we want to know is why the iPhone trademark hasn’t long been squared away? Five years after the product launched, Apple was still having to deal with a company in Brazil that filed for Gradiente iPhone in 2000, while in Mexico it will face off against a telecommunications company by the name of iFone that registered its mark in 2003.

    Village Voice: “Best Of” is ours!

    Village Voice Media Holdings, LLC claims exclusive rights to the phrase “Best Of.” With more than 20 active trademark applications containing the phrase “Best Of…” they may have a strong argument. In October, VVMH slapped YELP with a lawsuit over the unauthorized use of the term, claiming trademark infringement and unfair competition. This is not a first time battle for Village Voice, they have challenged many others over use of the phrase that they have dominated. Such behavior has earned them the label of “trademark troll,” but some might call it proper enforcement of trademark rights.

    NC-17 Trademark?

    Applicant filed for the mark C*** Sucker for rooster-shaped lollipops, and the Examining Attorney deemed it scandalous and immoral. Applicant went on to argue that, because applicant’s mark comprised two separate words, the dictionary definition should not apply (…); further, that attitudes have become “more and more” liberal. But in December (11 years after the application was filed), the CAFC affirmed the mark as scandalous and denied registration. Though it is worth noting that, while trademark rights were denied, use was not banned…

    Jerome McDonnell is Group Trademark Director and Nicole Briggs is an Associate Trademark Consultant for Interbrand.

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  • Posted by: Fred Burt on Thursday, January 3 2013 02:30 PM | Comments (0)

    Haribo Goldbears December may have been the season of goodwill to all men, but the IP lawyers at Haribo were busy securing a ruling in Cologne in their favour against Lindt, which could prevent Lindt from distributing its seasonal gold-foil-wrapped chocolate teddy bears in the future. This is not mere humbuggery. Haribo feels strongly – and the courts agree – that Lindt’s cuddly confectionary would dilute Haribo's iconic trademark rights.

    The issue? The similarity between Lindt's gold foil bear and Haribo's gold bear with the red bow around its neck.

    It seems the trademark battles are heating up. Yesterday the Financial Times reported on a trademark infringement case Nestlé brought against Cadbury to defend the shape of its KitKat bars. Nestlé succeeded in fending off this latest challenge from Cadbury, which recently won an earlier bid against Nestlé to register the colour purple.

    While these cases may dismay romantics – who wants to think of childhood favourite KitKat as “four trapezoidal bars aligned on a rectangular base” after all? - there are serious business issues underpinning these IP-related hostilities.

    Haribo Fan Club

    With the economic headwinds still buffeting the world’s economies, and investment in innovation tight, expect to see a heightened focus on on aggressive defense of IP rights as businesses look to make the most of the assets they have, especially assets such as trademarks that have legally protected status.

    At Interbrand, we have always included Protection as one of the key factors of brand strength. But too often we see that IP protection is an after-thought dismissed as a legal inconvenience, rather than a strategic asset. Indeed, when we ask brand owners whether they are familiar with what they own, what they can protect and what the ramifications of infringing a third party’s pre-existing rights might be, the answers are not as immediately forthcoming as they should be.

    So if 2013 is going to be an annus horribilis for trade mark cases, ask your legal team for some pre-emptive guidance. Forewarned could well be forearmed.

    Fred Burt is the Director of European Clients at Interbrand London.

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  • Posted by: Nicole Briggs on Monday, December 24 2012 01:46 PM | Comments (0)
    Radio City Music Hall

    It's the most wonderful time of year. Whether a kid or adult, this holiday season is a favorite. It’s the time of year for colorful lights, caroling, amazing shows, delicious treats, Santa Claus and his elves and, most importantly, the joy and fun of gift giving and receiving.

    The December holidays are a big deal here in New York City. One of New York City's greatest holiday attractions is the Radio City Christmas Spectacular. Since the early 1930s the show has been a major hit with holiday goers and tourists from around the world. More than one million visitors a year see the show.

    The Radio City Christmas Spectacular secured its first trademark registration in 1997. The trademark was registered as a whole containing “Radio City Christmas Spectacular.” It wasn’t until 2006 when Radio received a trademark registration on the principle register for “Christmas Spectacular.”

    This gave them exclusive ownership of the words “Christmas Spectacular” after continuous use in the media and commerce. Radio City proved that its mark was distinctive enough to function as a trademark.

    What’s a Christmas season without The Rockettes? "The Rockettes" is one of my all time favorite holiday trademarks. The Radio City Christmas Spectacular celebrates the 85th anniversary of the Rockettes this holiday season. Radio City Trademarks, LLC celebrated its Rockettes’ 20th trademark anniversary this year as well.

    Cheers to Radio City for keeping their holiday spirit alive along with their trademarks. Great trademark management can be a key factor in a brand’s success.

    For 40 years more than 20 million people have tuned in to Dick Clark’s New Year’s Rockin’ Eve. The show is broadcast from Times Square in New York City and straight into our hearts. Attached to a powerful name like Dick Clark, the show one of the city’s biggest attractions.

    The trademark for “New Year’s Rockin’ Eve” was first registered in 1994, more than 20 years since its first use. Through proper trademark monitoring and policing the show has established goodwill with consumers. The trademark “New Year’s Rockin’ Eve” is recognized all over the world for its long lasting reputation of a great event.

    What are some of your favorite holiday trademarks? Comment here or come chat with us in our Facebook community.

    Nicole Briggs is an Associate Trademark Consultant for Interbrand.


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  • Posted by: Interbrand on Wednesday, November 28 2012 11:18 AM | Comments (0)

    Nicole BriggsAssociate Trademark Consultant, Interbrand New York, Nicole Briggs' insights on the impact of changing collective thinking and behaviors on brand logos are featured in this month's Retail Focus:

    Evolving styles, technology, business models and product offerings eventually push most brands to refresh - or even reinvent - their logos to stay relevant. When done right, a logo change can successfully differentiate a brand, give it an updated look and feel, signal a new direction or shift consumer perception in a positive way. It sounds easy enough, but knowing when, how and to what extent a logo should be altered is trickier than you'd think.

    Most of us know what a logo is, but not everyone knows why logos are so important. Advertisers, psychologists, neurological researchers and savvy business people, however, know that the human mind processes, stores and recalls symbols or visual cues more easily than sounds or words. By developing a logo that elicits a positive response and making the right connections between that symbol and certain products, companies can capture the attention of consumers build loyalty and market to people all over the world.

    On the most basic level, a logo identifies a company or product through the use of a symbol, mark or signature, but it is also the face of the brand, embodies its attributes and functions as a vital communicative tool. A logo that "works" is usually simple, easy to interpret and subtly conveys multiple layers of information. It allows us to instantly grasp what a brand stands for, what it offers us and whether or not it is relevant to us.

    Logos

    The symbolism of a logo can be powerful and universally appealing, which is why skillfully designed logos often resonate with people of all ages, nationalities, languages and cultures. In fact, for many companies, it's an indication of success when a brand is simply recognized by its logo. As a result of extensive marketing, Nike, for example, has become a dominant fixture in its category and can stand on its own with just a symbol, which nearly everyone recognizes. McDonald's is another classic example of a brand that is instantly recognized around the world by its famous golden arches. Sometimes a logo - which distills the essence of a company into its simplest form - identifies a company so well, the company name doesn't even have to be mentioned.

    Though an iconic logo may lend personality to a brand, function perfectly well as an identifier, promote public recognition and offer differentiation, even the best logos sometimes need to be adjusted. When times are changing, companies feel the pressure to keep up with new trends, boost sales and set themselves apart from (and ahead of) the competition. When a company's marker no longer seems to fit the business market, an aspect of the design seems out-of-date or no longer represents the company, or when a company is beginning a new era, it may be time for a logo transformation.

    For the Full Story.

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  • Posted by: Karla Aspiras on Wednesday, November 14 2012 05:48 PM | Comments (0)
    Stark Raving

    As brandchannel reports, Stark Wines won its preliminary injunction suit against a subsidiary of global wines and spirits group Diageo. Diageo Chateau and Wines was marketing “Stark Raving” wine. Stark Wine is an artisanal company based in California. With Stark Wine's win, Diageo is prevented from marketing, selling and manufacturing Stark Raving wine.

    Some might wonder how a strong, famous, global wine and liquor company such as Diageo would lose to a relatively small company such as Stark Wine. Commonly, the standard in preliminary injunction suits is confusion, such as when customers are confused that the junior user's (the second comer) goods are from the senior user or connected with the senior user (the first user or registrant of the mark).

    The Diageo and Stark dispute is different. It is actually a reverse confusion case. Reverse confusion cases usually occur when a bigger, widespread manufacturer wishes to introduce a new product in the market and discovers a local, smaller, established manufacturer of similar or related goods. The bigger company decides to proceed anyway.

    When consumers encounter the senior user's goods in the market, they get the impression that they are getting the goods of the junior user. In other words, and in this case, reverse confusion happens if Diageo's advertising and promotion swamps or overwhelms Stark Wine's market recognition. Customers are confused into thinking that Stark Wine's goods are those of Diageo.

    In reverse confusion cases, the junior user is not free riding on the recognition value of a strong, senior mark; so the Courts focus on the strength of the junior user’s mark, not the senior user’s mark. What the Courts look for is the ability of the junior user to trump the senior user’s mark -- in this case Diageo's ability to trump Stark Wine.

    The decision in favor of Stark Wine is limited to Sonoma County, California. Outside of that geographic area, Diageo is free to market Stark Raving as they please. And according to Diageo, “Stark Raving wines will continue to be sold nationally except in Sonoma County. We will comply with the Court's order, and we are confident that we will prevail in the end.”

    It is best to be mindful that trademark owners, regardless of size, are equally protected in their investment in a name or brand. Never underestimate the little guy. While trademark law primarily protects consumers from confusion as to source of goods, it also (secondarily) protects the goodwill that companies have built up in their trademarks.

    Karla Aspiras is a Trademark Analyst at Interbrand NY.

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