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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: Nicole Briggs on Tuesday, February 14 2012 10:44 AM | Comments (0)

    On January 26, Beyonce’s company BGK Trademark Holdings, LLC filed for “Blue Ivy” and “Blue Ivy Carter” covering a large variety of goods and services including cosmetics, clothing, key chains, DVDs, baby carriages, toys, entertainment services, and online retail etc. This trademark filing does not come as a surprise, coming from a couple who already has numerous trademark registrations for their own names — and who set up a Tumblr account to introduce their daughter to the world.

    As mentioned in a previous post, one Joseph Mbeh was aiming to beat the celebrity parents to the punch of securing a registration in their child’s name. Mbeh’s attempt was a complete fail. On January 24, Mbeh’s application for “Blue Ivy Carter NYC” was denied due to likelihood for confusion, false connection, and name identifying a particular individual. Baby Blue Ivy Carter may only be part of the reason Mbeh doesn’t have rights to the trademark. While Mbeh was blocked due to false connection with Beyonce’s child and using the child’s name without consent, there is another factor in this story. There is currently a registered trademark for “Blue Ivy” owned by Blue Ivy LLC. The company Blue Ivy LLC has secured a trademark registration for retail store services featuring clothing, jewelry, home and clothing accessories, and giftware. The company has held their registration since August 2011, before the Blue Ivy Carter was born on January 7, 2012. The USPTO has noted that Mbeh’s application conflicts with Blue Ivy LLC’s Blue Ivy due to likelihood of confusion. But will Blue Ivy LLC’s registration be the reason that you may never see Beyonce’s baby name on clothing or jewelry?

    While celebrities do not gain automatic rights to their names or child’s name, they may have priority at the USPTO. As seen in Mbeh’s case, the government’s trademark office does acknowledge names belonging to very famous infants as conflicts. The office is up-to-date with the media and recognizes potential trends in trademark filings and pop culture to hopefully prevent any infringement. This example is a good way to show potential baby name trademark predators that it isn’t easy beating the parents to the punch or in this case to the USPTO.

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  • Posted by: Nicole Briggs on Thursday, January 26 2012 10:31 AM | Comments (0)

    Blue Ivy Carter

    Whether you call her Hip Hop royalty or the next generation of stardom, on January 7th 2012 Jay –Z and Beyonce welcomed their first child, a daughter named Blue Ivy Carter. At just 4 days old, Blue Ivy Carter was the youngest person to appear on the Billboard Charts with the sweet melody of her cries on her father’s song titled Glory. But is she the youngest person to have a clothing line named after her?

    On January 11th 2012, fashion designer Joseph Mbeh filed for a trademark application with the USPTO for the mark BLUE IVY CARTER NYC for “Infant, toddler and junior clothing namely, t-shirts, pants, dresses, skirts, jeans, belts, hats, caps, sweaters, fleece pullovers, jogging suits, coats, scarves, bodysuits, socks, sleepwear, undergarments, boots, sandals and athletic footwear”. This application is the first application from Mbeh of any kind to the USPTO. Mbeh listed his clothing line as first use and in commerce on January 9th, just 2 days after this mega superstar baby was born.

    There are a few questions that arise with this application filing. The first, do celebrities and their offspring have automatic right to their name? And the second being, is this unfair capitalizing on a celebrity’s kid or is it a brilliant idea of beating the parents to the punch?

    Celebrities and their children do not have automatic trademark rights to their names. Names and surnames are viewed as descriptive and descriptive marks are not entitled to automatic legal protection. Most superstars have secured registrations for the protection of their names. Both Jay-Z and Beyonce have trademark registrations for their names covering a wide range of goods and services. The Kardashians and the Jenners all have trademark registrations for their names.

    Although Blue Ivy Carter does not gain automatic trademark rights for her famous name, it is known that a living person must give consent for the use of their name in a trademark. Mbeh did not seek any sort of permission from The Carter’s before filing an application to use Blue Ivy Carter. In addition, Mbeh has no proof of having the clothing line that bears the name of Blue Ivy Carter prior to the birth of Beyonce’s child. Having proof of use prior to the birth of Blue Ivy could play in Mbeh favor by showing he did not copy the celebrity’s name. Being that Blue Ivy Carter name is a more distinct name than most this may be a tough hurdle for Mbeh to jump.

    In a previous, Angelina Jolie clashed with a French perfume marker, Symine Salimpour who went on to register a perfume named Shiloh. Angelina Jolie was outraged with the fact that Symine Salimpour was naming her perfume Shiloh after her daughter Shiloh Nouvel Jolie-Pitt. The case was dropped by Jolie. Salimpour seem to have gain free fame and proved that in Hebrew, Shiloh means “his gift” and that the perfume will be used to give something back to the children of Israel and the Middle East. However, this is not quite the same argument that could be used in Mbeh defense.

    What are your thoughts? Should celebrities have automatic rights to trademark registrations for their names and kid’s names?

    Will The Carters oppose the use of their baby’s name? I believe that there will be a strong chance of The Carters going after Mbeh. Although the only way they can oppose the trademark application is by opposition with another trademark application, which the camps of Beyonce or Jay-Z have at this time. The couple can however use the “Right of Publicity”, which protects the commercial use of his or her name, image, likeness or other unequivocal aspects of one's identity. I think that Mbeh is definitely using the likeness of Blue Ivy Carter’s name to sell baby clothing.

    Smart and Swiftly? Or Sleazy and Sneaky?

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