Blog

Archive for December, 2012

Louboutin – YSL red shoe sole dispute is finally concluded

Posted by ipelton on: December 31st, 2012

The dispute between Louboutin and Yves Saint Laurent, on appeal at the Second Circuit Court of Appeals was one of the most watched trademark cases of 2012.  And as of last Friday, it is finally over.  As I noted in a post just a few weeks ago:

In September, the Second Circuit issued a widely anticipated opinion regarding in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc. The opinion has been summarized already by many trademark scholars. In short, the appeals court found that Louboutin has rights in a red sole when the remaining colors of the shoe are in contrast to the red sole. And as applied to the dispute with YSL, who’s shoe is monochromatic, the Second Circuit found that YSL was technically not using the Louboutin trademark and was not a mark confusingly similar to it, thus finding that a trademark infringement claim could not be sustained. (Though some have wondered why Louboutin wasn’t given the chance to show why the all red design may have caused actual confusion in the marketplace with their contrasting color design.). For a far better and more detailed summary, see Rebecca Tushent’s 43(B)log post.

And the parties at that time were disputing how the case should be closed and resolved regarding the claims and counterclaims and issues of dismissal with prejudice or without prejudice.

Finally, the parties and the District Court have come to a conclusion:

- Louboutin acknowledged that it has no claims against YSL’s red monochrome shoes; and

- several of YSL’s counterclaims were dismissed without prejudice.

For more details, see the full order from the District Court below.

2012-12-27 Louboutin Ysl Order of Dismissal

 

One of the most significant trademark cases of 2012 was the appeal between Christian Louboutin and Yves Saint Laurent. The Second Circuit Court of Appeals found mostly against Louboutin, finding that its registered trademark rights were limited to when the red sole of a women’s shoe contrasts with another color. As part of the opinion, the appeals court directed the USPTO to modify the registration of Louboutin’s red sole trademark.

Recenlty, the USPTO sent notice to the parties that it would amend the description of the mark in the registration to read [new wording in bold]:

  • The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the ‘upper’). The dotted lines are not part of the mark but are intended only to show placement of the mark.

The parties have until January 12, 2013 to file any comment with the USPTO if they object.

For the full December 20, 2012 letter from the Office of the Solicitor of the USPTO, see http://tsdr.uspto.gov/documentviewer?caseId=sn77141789&docId=OPC20121226124216

 

In 2012, the top musicians cover the musical spectrum – from hip-hop to country to pop to classic rock. But they all have one thing in common: trademark registrations protecting their brands. 

The rankings are taken from the Forbes magazine list of the 25 highest paid musicians in 2012

Here are the top ten and some of the trademark registrations they own [Click brand names or images for USPTO records]: 

1. Dr. Dre 

BEATS BY DR. DRE

 DR. DRE

2. Roger Waters

PINK FLOYD

Trademark image

3. Elton John

ROCKET

surprisingly, Sir Elton does not appear to own more trademark registrations

4. u2

U2

U2 3D

5. Take That

While the British band has no US trademark registrations, they do have a UK registration for TAKE THAT.

6. Bon Jovi

JON BON JOVI

BON JOVI

 Trademark image

7. Britney Spears

BRITNEY SPEARS

BRITNEY

(tie). Paul McCartney

PAUL MCCARTNEY

 Trademark image

(tie). Taylor Swift

TAYLOR SWIFT

TAYLOR SWIFT FEARLESS

SPEAK NOW

Trademark image

10 (tie). Justin Bieber

BIEBER FEVER

 JUSTIN BIEBER

JUSTIN BIEBER’S GIRLFRIEND

10(tie). Toby Keith

TOBY KEITH

TOBY KEITH’S BARBQUE SAUCE

Mark Image

 

Love it or Leave it: BLUETOOTH trademarks

Posted by ipelton on: December 26th, 2012

It seems like just about every new laptop, phone, portable music player, car and other hi tech item received this holiday season came equipped with “Bluetooth” technology. Did you know that BLUETOOTH® is a registered trademark? And so is the Bluetooth symbol or logo that you see on many computer devices. Are the name and logos good ones? 

Bluetooth is actually an industry standard.  As a result it really has no direct competition. But it is a coined arbitrary name – the words do not describe what the service is or any of its features. The industry standard is managed by a consortium of companies. Many other electronic standards are similarly managed. Those who want to use the technology and name must license the patents and trademarks from the Bluetooth Special Interest Group.

File:BluetoothLogo.svg

According to a Wikipedia entry, “The word “Bluetooth” is an anglicised version of the Scandinavian Blåtand/Blåtann, the epithet of the tenth-century king Harald I of Denmark and parts of Norway who united dissonant Danish tribes into a single kingdom. The idea of this name was proposed by Jim Kardach who developed a system that would allow mobile phones to communicate with computers (at the time he was reading Frans Gunnar Bengtsson‘s historical novel The Long Ships about Vikings and king Harald Bluetooth).[4] The implication is that Bluetooth does the same with communications protocols, uniting them into one universal standard.[5][6][7]

Having an arbitrary creative name makes for a strong and distinctive trademark. And having an interesting backstory, like this one for Bluetooth, make the name even more special.  The name has a meaning that relates in some way to the purpose of the products, but only to those who know the story.

The logo apparently comes from a “bind rune” combining letters from an old runic alphabet.

I think the name and logo are terrific. The logo is great because it looks both high tech and old fashioned at the same time, it is blue, which is suggestive of the name, and it features a “B” shape. The name is great because it is unique, it is creative, it is protected and registered (see below), and it is memorable. The logo can appear by itself on a small mobile display and immediately convey meaning to users.

Of course, it is a lot easier to use a made up arbitrary term when you have no real competition. Users will have to use your brand whether they like it not, whether the brand is catchy or not. But regardless, Bluetooth got it right.

Here are two of the Bluetooth USPTO trademark registrations:

BLUETOOTH - (certification mark) - TELECOMMUNICATION SERVICES; COMPUTER COMMUNICATION SERVICES; TELECOMMUNICATION EQUIPMENT, COMPUTER COMMUNICATION EQUIPMENT, INCLUDING RADIO MODEMS

Trademark image(click logo for USPTO record) - APPARATUS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND, IMAGES, AND LIGHT, NAMELY, PHONOGRAPHS, CASSETTE TAPE RECORDERS, COMPACT DISC RECORDERS, DVD RECORDERS, VIDEO RECORDERS, RADIO RECEIVERS, STILL CAMERAS, VIDEO CAMERAS, TRANSCEIVERS, RADIO AND TELEVISION TRANSMITTERS, SOUND ENCODERS AND DECODERS, VIDEO ENCODERS AND DECODERS, RADIO FREQUENCY BASEBAND PROCESSORS AND MODEMS; APPARATUS AND INSTRUMENTS FOR DATA COMMUNICATION, SATELLITE COMMUNICATION AND TELECOMMUNICATION, NAMELY, TELEPHONE, SATELLITE, AND RADIO RECEIVERS, TRANSMITTERS AND TELEPHONE HEADSETS; COMPUTER HARDWARE; COMPUTER PROGRAMS FOR WIRELESS COMMUNICATION; COMPUTER INTERFACES, MODEMS AND PERIPHERAL EQUIPMENT, COMPRISED OF PRINTERS, MICE, MONITORS, KEYBOARDS, AND DONGLE CABLES; TELEPHONE BASE STATIONS; TELEVISION APPARATUS, NAMELY, SCREENS, TUNERS, AND RECEIVERS; ELECTRONIC AMUSEMENT APPARATUS ADAPTED FOR USE WITH TELEVISION RECEIVERS; GAMES ADAPTED FOR USE WITH TELEVISION RECEIVERS, NAMELY, COMPUTER GAMES, COMPUTER VIDEO GAMES, GAME CONSOLES AND JOY STICKS; CASH REGISTERS; ELECTRONIC INSTALLATIONS FOR THE REMOTE CONTROL OF INDUSTRIAL OPERATIONS, NAMELY, COMPUTERS, CENTRAL PROCESSING UNITS, COMPUTER KEYBOARDS, PRINTERS FOR USE WITH COMPUTERS, CONTROL PANELS, MONITORS, PATCHBOARDS AND DISTRIBUTION BOARDS; ELECTRONIC PENS; PROTECTIVE HELMETS; ELECTRONIC RADIOS; TRANSMITTERS; TELEPHONE APPARATUS, NAMELY HANDSETS, BASE STATIONS AND RECEIVERS; TRANSMITTERS; TIME RECORDING APPARATUS, NAMELY, CLOCKS, WATCHES, ATOMIC CLOCKS; SURGICAL IMPLANTS; SURGICAL LAMPS; CATHETER TUBES; THERMOMETERS FOR MEDICAL PURPOSES; TRACTION APPARATUS FOR MEDICAL USE; ULTRASONIC MEDICAL DIAGNOSTIC APPARATUS; BASEBAND PROCESSORS AND INTEGRATED CIRCUITS USED IN MEDICAL IMAGING SYSTEMS; ACUPUNCTURE INSTRUMENTS; AIR PILLOWS FOR MEDICAL PURPOSES; AUTOCLAVES FOR MEDICAL USE; BED VIBRATORS; BREAST PUMPS; ENEMA APPARATUS; TESTING APPARATUS, NAMELY, BLOOD TESTING DEVICES, BLOOD PRESSURE MONITORS, BREATH GAS ANALYZERS; HEART MONITORS; HEMO-DIALYSIS APPARATUS; WIRELESS NETWORKS FOR MEDICAL AND ORTHOPEDIC SYSTEMS AND INSTRUMENTS; ARTIFICIAL LIMBS; HEARING AIDS FOR THE DEAF; MOTOR CARS; PRINTED MATTER, NAMELY, STATIONERY, BUSINESS CARDS, BOOKLETS, GREETING CARDS, HANDBOOKS, POSTCARDS, POSTERS, BOOKS, PERIODICALS, MANUALS, BROCHURES, MAGAZINES AND PUBLICATIONS IN THE NATURE OF INSTRUCTIONAL AND TEACHING MATERIALS, ALL IN THE FIELD OF TELECOMMUNICATIONS AND RADIO COMMUNICATIONS; PAPER, CARDBOARD AND GOODS MADE FROM THESE MATERIALS, NAMELY, FLYERS, MANUALS AND PENS; GAMES AND PLAYTHINGS, NAMELY, ACTION SKILL GAMES; TELECOMMUNICATION SERVICES, NAMELY, SHORT-RANGE RADIO COMMUNICATIONS, AND PERSONAL AREA NETWORK COMMUNICATIONS; CELLULAR TELEPHONE COMMUNICATION SERVICES; COMMUNICATIONS BY COMPUTER TERMINALS, NAMELY, ELECTRONIC TRANSMISSION OF DATA AND DOCUMENTS VIA COMPUTER TERMINALS, COMMUNICATION BY TELEPHONE, ELECTRONIC MAIL SERVICES AND PAGING SERVICES; COMPUTER AIDED TRANSMISSION OF MESSAGES AND IMAGES; RENTAL OF MESSAGE SENDING APPARATUS; PROVIDING INFORMATION ABOUT TELECOMMUNICATIONS GOODS AND SERVICES; CUSTOM CONSTRUCTION OF TELECOMMUNICATIONS EQUIPMENT AND SATELLITE COMMUNICATIONS EQUIPMENT TO THE ORDER AND SPECIFICATION OF OTHERS; EDUCATIONAL SERVICES, NAMELY, CONDUCTING CLASSES, SEMINARS, CONFERENCES, CORRESPONDENCE COURSES, WORKSHOPS AND TRAINING IN THE FIELDS OF DATA COMMUNICATIONS, PERSONAL AREA NETWORK COMMUNICATIONS, SATELLITE COMMUNICATIONS AND TELECOMMUNICATIONS; TECHNICAL CONSULTATION IN THE FIELD OF DATA COMMUNICATIONS, PERSONAL AREA NETWORK COMMUNICATIONS, SATELLITE COMMUNICATIONS AND TELECOMMUNICATIONS; BASIC RESEARCH IN THE FIELD OF PHYSICS, CHEMISTRY AND ENGINEERING; COMPUTER PROGRAMMING SERVICES FOR OTHERS; LEASING OF DATA PROCESSING EQUIPMENT; CUSTOMER SERVICES, NAMELY, PROVIDING TECHNICAL ASSISTANCE AND CONSULTATION, COMPUTER DIAGNOSTIC SERVICES, REMOTE AND ON-SITE MONITORING OF COMPUTER SYSTEMS

 

Celebrity trademark stories keep showing up in the general media. In 2012 alone, Tebow, “occupy,” Blue Ivy Carter, LINsantity, the Kardashians, and more were trademark stories that appeared in the general media.

The trademarks of star Washington Redskin rookie quarterback, Robert Griffin III were a topic of discussion on yesterday’s Pardon the Interruption (PTI) show on ESPN. Some good points were made: these are arguably not original phrases, how and for what is he protecting them? [The answer remains to be seen since they were filed based on an intent to use the trademarks in commerce and no evidence has been submitted yet.] Pat Reilly certainly cashed in on THREEPEAT and was wise to register it as a trademark, so you can’t fault someone for thinking about doing the name.

The phrases filed by RGIII at the USPTO include “LIGHT YOU UP,” “WORK HARD STAY HUMBLE,” and more.

For the discussion from PTI, see podcast here from 12/19/44 and jump to the 21:00 st minute.