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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: Karla Aspiras on Monday, September 10 2012 03:03 PM | Comments (0)

     Louboutin

    The US Court of Appeals for Second Circuit has rendered their decision which reversed the lower court’s decision. They held that Louboutin’s red sole is a valid trademark and that it had acquired secondary meaning.

    This couldn’t have come at a more opportune time. Just last month, the US Customs seized fake Louboutins about $18 m in estimated retail value. This highlights the massive counterfeiting of Louboutins and emphasizes the need for protection of the red sole mark.

    LouboutinHowever, the Court modified the red sole registration and held that its secondary meaning extends only to a situation where “the lacquered red sole contrasts in color with the adjoining ‘upper’ of the shoe.” It follows that YSL’s monochromatic red shoe, albeit with a red sole, does not infringe upon Louboutin’s red sole trademark, as modified by the Court of Appeals.

    The Court reiterated that a single color can serve as a trademark, regardless of the industry involved. Hermes and Tiffany’s can now rest easy that their single color marks are valid, and cannot be attacked on the basis of the Louboutin lower court decision. The same goes for United Parcel Service's brown and 3M’s yellow post-it notes.

    This does not mean that brand owners should make haste and file for registration of single color marks before all the available colors in the world become valid trademarks. The decision did not bestow inherent distinctiveness unto single colors. The eligibility of single colors for use as a trademark only exists if it has acquired secondary meaning- if it acts as a strong identifier of source of the goods.

    In evaluating whether a single color has acquired secondary meaning, factors to consider include: “(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark’s use.” For Louboutin, the Court of Appeals cited “high-stakes commercial markets and social circles” where the red sole became closely associated with Louboutin, “unsolicited media attention to the red sole,” as well as François-Henri Pinault’s (Chief Executive Officer of YSL’s parent corporation) recognition of “the notoriety of the distinctive signature constituted by the red sole.”

    Indeed, fashion designers require unfettered use of the entire pantone catalog of colors. Even if the nature of the fashion industry calls for functional uses of color, a single color can nevertheless function as a trademark, provided it acquires secondary meaning.

    Karla Aspiras is a Trademark Analyst at Interbrand NY.

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  • Posted by: Karla Aspiras on Friday, August 10 2012 06:00 PM | Comments (0)

    Hotly anticipated this summer is the outcome of a court battle between two high-end fashion houses, Yves Saint Laurent and Christian Louboutin. Today is the one-year anniversary of the decision in the case and now a decision on its appeal is awaited.

    The southern district court of New York that issued the original decision on August 10, 2011, which dealt with the issue of use of a single color for shoe outsoles. It started when YSL released a line of monochromatic shoes, including the soles, as part of its Cruise 2011 collection.

    Christian Louboutin first approached YSL regarding four models of monochromatic red shoes from the Cruise 2011 line. YSL refused to withdraw the questioned models from the market, so Louboutin decided to sue. He filed suit for trademark infringement, dilution, false designation of origin and unfair competition against YSL. Louboutin also asked for an injunction. An injunction would have the court order YSL to stop from manufacturing and selling any of the four red monochromatic shoes while all the above-mentioned claims are in the middle of litigation.

    Judge Marrero of the southern district court of NY ruled against Louboutin on the matter of this injunction. Therefore, YSL can continue manufacturing and selling shoes with red soles.

    One reason the court gave for denying Louboutin’s request for an injunction is color depletion. Color depletion theory addresses the concern that colors are limited, and to grant exclusive rights to colors is anti-competitive and would deplete the available stock of colors. They said that allowing Louboutin protection for the red sole would “cast a red cloud over the industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette.” But this is inaccurate, because Louboutin’s trademark registration clearly limits the mark to “women's high fashion designer footwear.”

     Christian Louboutin Shoes

    It would have been a valid cause of concern if, indeed, Louboutin was claiming ownership of the color red, instead of use of the color red for the outsole for high fashion designer footwear. If it were the former, then it would be anti-competitive for all kinds of companies and industries across the board, not only for the fashion industry where use of color is ubiquitous.

    The court recognized that Louboutin’s red sole had acquired secondary meaning — that it served as an indicator of source of a product. But it was also decided that it did not matter.

    Christian Louboutin testified in the injunction hearing and explained how the red sole came about. He chose red for the outer sole because of its energy. The court took that to mean that the choice of red for Louboutin soles is solely for an aesthetic, ornamental, non-trademark purpose and therefore non protectable as a trademark.

    But what can be a stronger identifier of source than the red sole? You know it’s a Louboutin immediately, even from a distance, just by seeing the red outsole, than seeing the stylized “Louboutin” stamped underneath.

    Last May, French Cour de Cassation, the highest court in France invalidated Louboutin’s red sole mark in France. It was hinged on a technicality where the registration lacked a specific Pantone color reference. Louboutin is re-filing for a trademark in France.

    Louboutin is not the only luxury fashion house having trademark problems. Earlier this year, Hermes lost its suit against a Chinese clothing company that obtained a registration for a Chinese name very similar to how Hermes is pronounced in Chinese.

    Tiffany's Iconic BoxThese setbacks cause damage not only to the companies that own the marks, but also highlight very thin intellectual property protection for goods in the fashion industry. Fashion designers usually look to trademark for protection, but decisions like the denial of Louboutin’s injunction further erode the little trademark rights fashion designers have.

    We’ll have to wait and see until the New York appeals court decision on Louboutin’s appeal comes out and for the meantime, Tiffany's better watch its blue jewelry boxes and Hermes its signature orange.

    Karla Aspiras is a Trademark Analyst at Interbrand NY.

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