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Posts Tagged ‘bullying’

Are the Chicago Cubs champion trademark bullies?

Posted by ipelton on: October 22nd, 2015

Regardless of what happens on the field this October, there is a strong argument that the Chicago Cubs are ahead of the pack when it comes to filing trademark oppositions at the TTAB. The team files myriad trademark oppositions at the USPTO. Of course, a “C” logo is not unique, neither is use of the term “Cub.” (Although admittedly there may not be any other sports teams using the “Cub” term.)

I don’t throw around the phrase “trademark bully” lightly. But to me there is no question that the Cubs are arguably in that category. Does the team (business) take protecting its trademarks too far? I look at two factors to asses whether a “bullying” label is appropriate: whether the claim is over-reaching and whether the tactics are heavy handed. Over-reaching occurs when the alleged infringer is really making no commercial impact on the enforcer. For example, when the alleged infringer’s use is trivial; their industry or market or products or services are quite different; or there are already tons of third party uses of similar marks and the claim has no merit. The “bully” label may fit even if just one factor is present, i.e. the claim is very over-reaching or the tactics are very heavy-handed, especially is there is a pattern of behavior.

In addition to protect “C” and “Cubs,” the team also makes a lot of claims regarding “W.” You will see in the list below, that many of the filings are against companies that make products or services that have little or nothing to do with baseball.

I am not the first to raise this issue:

Below are some of the Oppositions filed by the Cubs at the TTAB since the beginning of 2014. You can review the records by clicking on the links:

  • Trademark image– Breakfast cereals
  • Trademark image– Underwear for girls, boys and men, undershirts for girls, boys, and men, underwear for women, and rompers
  • Trademark image– Providing an on-line and mobile directory of information regarding merchants who accept contactless mobile payments
  • Trademark image and Trademark image– Providing and rental of advertising space on the internet; On-line social networking services
  • Trademark image– cellular telephone accessories, namely, antenna bases, antenna warning lights, replacement antennas, replacement batteries, flashing batteries, wireless cellular phone headsets, pouch bags for carrying cellular phones, battery chargers for car and travel, data cables, face plates, devices for hands free use of cellular phones, holders, clips, magnets for attachment of mobile phones to metal surfaces, LCD screens specially adapted for cellular phones; MP3 accessories, namely, protective carrying cases for portable music players, fitted silicone films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems, and personal digital assistants; protective covers specifically adapted for protecting screens of personal electronic devices, and decorative charms for cellular telephones; retail store and on-line retail store services featuring cellular telephones, equipment, and accessories
  • Trademark image– Distributorship services featuring frozen desserts
  • Trademark image– advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties, through text, audio, video, digital and on-line medium; entertainment and educational services, namely, providing information, news commentary and reporting in the fields of entertainment, education, current events, pop culture, and sports; providing requests, reviews, recommendations, rankings, trackings, votes, and information related to people, places and things, and products and services and events in the fields of current events, pop culture, entertainment, education, and sports; internet based computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings and interactive discussions and the transfer and exchange of information; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; computer services, namely, enabling online users to create personal profiles featuring social networking information, creating virtual communities, and transmitting audio, video, photographic images, text, graphics and data; providing temporary use of nondownloadable computer software for uploading, posting, sending, transmitting, displaying, filtering, tagging, blogging, sharing, viewing, searching, scanning, navigating, compiling, indexing, and organizing electronic media and information over the internet and other communications networks; providing temporary use of nondownloadable computer software for uploading, posting, sending, transmitting, displaying, filtering, tagging, blogging, sharing, viewing, searching, scanning, navigating, compiling, indexing, and organizing user-generated content; providing customized on-line web pages featuring user-defined information which includes search engines and on-line web links to other web sites; providing news and information in the field of fashion and lifestyles; on-line social networking services
  • Trademark imageand Trademark image– : Containers of plastic for storage of feminine products for household or domestic use; General purpose storage bins for household use; Plastic storage containers for domestic use; Plastic storage containers for household or domestic use
  • Trademark image– Clothing, namely t-shirts, shirts, sweatshirts, jackets, hats, caps
  • Trademark image and Trademark image– Footwear
  • Trademark image– Paper goods and printed matter, namely,address books; children’s activity books; comic books; coloring books; notebooks; composition books; picture books; children’s story books; books containing puzzles and games; instructional manuals and printed strategy guides for games; book covers; scrapbook albums; arts and crafts kits for painting and drawing; stamp albums; photograph albums; diaries; invitations; lunch bags; modeling materials and compounds for use by children; paper table cloths; trading cards; writing pads; posters; book marks; non-electronic personal planners and organizers; artist materials, namely, pencils, pens, sketchbooks; gift wrap paper; paper gift tags; paper gift bags; paper gift boxes; correspondence note paper; greeting cards; paper party decorations; paper napkins; paper ribbons; paper party bags; postcards; stickers; sticker books; calendars; temporary tattoos; school and office supplies, namely, drafting and drawing rulers, pencils, pens, markers, glue for stationery or household use, desk top organizers, desk stands and holders for pencils, pens, tape, paper clips, and notepads; binders; stationery; notepads; pencil cases; pencil sharpeners; desk pads and stationery sets comprised of paper, envelope, seals, notepads; stencils; read-along children’s books and cassette tapes sold as a unit; printed children’s books featuring electronic sound buttons; patterns for making costumes; arts and crafts paint kits containing sponges, brushes, paint and paint cups; activity kits containing stamper markers, rubber stampers, ink pad, colored pencils, stamperholder; modeling compounds and accessories for use therewith, namely, molds andextruders; crayon and color by number kits containing crayons and coloring books; series of fiction books in the field of entertainment and science fiction; : Toys, games and playthings, namely, dolls, doll clothing and doll accessories; doll playsets and accessories; toy action figures and accessories for use therewith; toy vehicles and accessories for use therewith; toy playsets for use with toy action figures and toy vehicles; children’s multiple activity toys; plush toys; stuffed toys; bean bag toys; toy modeling compounds; toy molds and toy extruders for use with toy modeling compounds;plastic and vinyl toy characters and toy animals; ride-on toys; pull toys; pushtoys; mechanical toys; toy constructionsets; building toys; wind-up toys; water squirting toys; inflatable toys; role-playing toys; toy ball and dart shootersand foam toy balls and darts for use therewith; board games; parlor games; skill and action games; card games; playing cards; trading card games; hand held units for playing electronic games other than those adapted for use with an external display screen or monitor; jigsaw puzzles; paper party hats; video game apparatus, namely, video game machines for usewith televisions

Is Duke University a champion trademark bully?

Posted by ipelton on: April 6th, 2015

Tonight, Duke University plays for the college men’s basketball championship. They are a great team this year, and have had tremendous success for many years on the court under Coach Mike Krzyzewski.

Duke files myriad trademark oppositions at the USPTO. And Duke of course is not a coined word. In fact, according to a USPTO search of TESS (“(duke)[BI] and (live)[LD] not (“Duke university”)[on] not (0)[rn]“) the term “Duke” appears in more than 150 current USPTO trademark registrations that are not owned by Duke University.

I don’t throw around the phrase “trademark bully” lightly. But to me there is no question that Duke is arguably in that category. Does the university take protecting its trademarks too far? I look at two factors to asses whether a “bullying” label is appropriate: whether the claim is over-reaching and whether the tactics are heavy handed. Over-reaching occurs when the alleged infringer is really making no commercial impact on the enforcer. For example, when the alleged infringer’s use is trivial; their industry or market or products or services are quite different; or there are already tons of third party uses of similar marks and the claim has no merit. The “bully” label may fit even if just one factor is present, i.e. the claim is very over-reaching or the tactics are very heavy-handed, especially is there is a pattern of behavior.

Below are some of the Oppositions filed by Duke at the TTAB in just the last 12 months. You can review the records by clicking on the links:

  • Trademark image (Housing services, namely, rental of student housing; Rental of apartments; Shopping center services, namely, rental of shopping center space; Rental of office space; Rental of retail space)
  • Trademark image (Custom made to measure suits for men and women; custom made to measure equestrian apparel in the nature of suits, shirts, pants, vests, and coats; equestrian apparel in the nature of suits, shirts, pants, vests, coats, ties, gloves, boots, and hats; custom made to measure professional wear in the nature of men’s and women’s business suits, shirts, jackets, coats, pants, vests, and skirts; men’s and women’s suits, shirts, jackets, coats, pants, vests, ties, and skirts; and clothing accessories, namely, pocket squares; Wholesale and retail stores services featuring equestrian apparel and professional apparel in the nature of men’s and women’s suits, shirts, vests, pants, skirts, ties; retail store services featuring clothing accessories, namely, collar bars, pins, pendants, gloves, hats, boots, ties, and pocket squares; and online and mobile retail stores services featuring equestrian apparel and professional apparel in the nature of men’s and women’s suits, shirts, vests, jackets, pants, coats, skirts, hats, boots, gloves, and ties; Custom fabrication, production, and fitting of clothing, namely, equestrian riding suits, custom men’s professional suits, shirts, jackets, vests, and pants, and women’s professional suits, jackets, skirts, vests, pants, and shirts; Consulting in the field of clothing design)
  • BLUE BALL CHILLER (Alcoholic beverages except beers)
  • DRANK UNIVERSITY (Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Caps; Hooded sweat shirts; Hooded sweatshirts; Knitted caps; Leather hats; Open-necked shirts; Polo shirts; Rugby shirts; Short-sleeved or long-sleeved t-shirts; Skull caps; Sports caps and hats; Sweat bands; Sweat jackets; Sweat pants; Sweat shirts; Sweat shorts; Sweat suits; T-shirts; Tee shirts; Wearable garments and clothing, namely, shirts)
  • TRUE BLUE (On-line retail store services featuring auto parts; On-line wholesale store services featuring auto parts)
  • MY LITTLE DEVIL (Clothing, namely, scarves)
  • DUKE KABOB (Restaurant services)
  • Trademark image(sunglasses and spectacles; contact lenses; protective eyewear; parts, fittings and accessories therefor in this class including lenses, frames, chains, cases and other protective covers)
  • THIS GIRL LIKES THE D (t-shirts)
  • THE DRINK OF THE DEVIL (Alcoholic beverages except beers; Distilled Spirits; Liqueurs)
  • BLEED BLUE (Water beverages)
  • THE DUKE SADDLE (Riding saddles; Saddles)
  • DUKE OF DENIM (Clothing made in whole or substantial part of denim, namely, caps, coats, denims, dresses, gloves, hats, jackets, jeans, pants, shirts, shorts, T-shirts, tops and footwear, shoes and underwear)
  • THE D (Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges)
  • Trademark image(Athletic apparel, namely, shirts, pants, jackets, footwear, hats, caps and athletic uniforms; Sporting equipment for baseball and softball, namely, bats, balls, bags, gloves, mitts, and bat and glove racks; catcher’s protective gear for baseball and softball, namely, leg guards, chest protector, and face mask; baseball and softball training aids, namely, one hand trainer, short bat trainer, under load trainer, power swing trainer, overload trainer, flat glove trainer, wood bat baseball trainer, wood bat softball trainer, infield glove trainer, outfield glove trainer, catcher’s glove trainer, training batting gloves, and batting tees)
  • Duke’s Butt (Adult sexual stimulation aids, namely, artificial penises, artificial vaginas)
  • Rare Devil (Beer, ale, lager, stout, porter, shandy)
  • Trademark image (Business consulting services, namely, providing assistance in development of business strategies and creative ideation)
  • OVERDUE BLUE (Alcoholic beverages except beers)
  • Trademark image (Protective clothing for life-preserving purposes for sports, namely, motoring, motorcycling, cycling, skiing and mountaineering, riding, in the nature of suits, jackets, trousers, helmets, gloves and boots containing air bags for the prevention of injury; protective helmets; protective helmets for sports, namely, motoring, motorcycling, cycling, skiing and mountaineering, riding; protective footwear for the prevention of accidents and injury; protection devices for personal use against accidents, namely, air bags; protective glasses; protective glasses for sports, namely, motoring, motorcycling, cycling, skiing and mountaineering, riding; protective gloves for protection from accidents; diving gloves; triggering software for inflatable protective devices; accelerometer sensors; impact sensors for measuring deceleration and accident impact severity; electronic control units for air bags; Apparatus for locomotion by land, air or water, namely, cars, trucks, motorcycles, bicycles, boats, motorboats, sail boats and airplanes; inflatable air bags for apparatus for locomotion by land, air or water for the prevention of injury in case of accidents; air bags; Clothing articles, namely, raincoats, T-shirts, trousers, shirts, jackets, gilets, sweaters, sports jackets, coats, overalls; headwear; belts; shoes; boots; gloves; ski gloves; motorcycle gloves; riding gloves; Protective paddings in the nature of parts of sport suits, namely, for driving motor vehicles, motorcycling, cycling, skiing and mountaineering, and riding)

Anatomy of backing down from a trademark infringement allegation

Posted by ipelton on: February 2nd, 2015

A few weeks ago, there was much hub-bub in the craft brewing world as Lagunitas filed a lawsuit against Sierra Neva alleging that the particular use of “IPA” on the label of Sierra’s Hop Hunter IPA constituted trademark infringement. See below for the comparison.

In essence, the lawsuit alleged that that Lagunitas had rights in the font and design used with the letters IPA, and that Sierra Nevada’s use of IPA was too similar.

The online backlash was rapid and large. How much protect could such a graphic, featuring the generic letters “IPA” really have? And Sierra Nevada’s lettering was not identical. And how many other beer labels use IPA in big bold lettering?

In a rare move, the complaining party quickly backed down and dropped the lawsuit. Not only was that fact and the speed with which it was done rather astonishing — you can imagine the discussions with the very same lawyers who advised them to file the lawsuit — but their public apology was tremendous It sounded sincere and not written exclusively by attorneys. Lagunitas posted the following message on their website on January 14, just one day after the lawsuit came to light and just two days after the lawsuit was filed:

Yesterday in the Lagunitas nexus of the Twitterverse was the worst day ever in 23 years of growing our brewery. Worst. Growing a business over time sometimes involves defending that business. Defending a business requires answers to Hard Questions. Questions like: Are our Foundations Strong? Are our Flavors right? Are our Labels, our very identity, something that we can defend? There are many courts in the world in which to find those answers. For us, over the last month, one court was a series of rebuffed phone calls to another brewer. Another was a court of law. Today was in the hands of the ultimate court; The Court of Public Opinion and in it we got an answer to our Question; Our flagship IPA’s registered federal trademark has limits. We don’t know the answer to every question beforehand so we feel around for the edges and we try to learn. Today we were seriously schooled and we heard you well…! The Customer is always right and here in the 21st Century that maxim is truer than ever. Today we will Drop the Infringement Suit & get back to work answering other questions instead. We needed to raise the question because it matters, and through the miracle of Twitter the answer came back much sooner than we thought and in a different Court than we expected. The best thing is to have friends. Can we say thank you?

Other’s accused of trademark mismanagement or trademark bullying should take notice — mistakes happen. Poor judgment exists. By owning the mistake and acknowledging it, some good can potentially balance the harm done to the brand that erred in its trademark judgement.

Note: While Chik-fil-A appears to have backed down from their complaints about EAT MORE KALE they have never issued any kind of a statement, explanation or apology. Their brand image may have suffered considerably less embarrassment and ridicule if they had done something similar to Lagunitas.

 

Thankfully, the application was also abandoned by the Association. There was quite a firestorm at the end of August as it became known that the ALS Association filed to register ICE BUCKET CHALLENGE and ALS ICE BUCKET CHALLENGE as trademarks with the USPTO. I was certainly quite critical of the association (See blog, Washington Post, LA Times.)

It has now come to my attention that the Association also applied, on the same day in August, to register #IceBucketChallenge (Serial No. 86375299) and #ALSIceBucketChallenge (Serial No. 86375307) trademarks for use in commerce with “charitable fundraising.” These applicatoins are even more shocking as they were an even more bold attempt to control what was a publicly created grass-roots movement, phrase and phenomenon. These application were also abandoned after the public backlash on September 1st.

I hope that the ALS Association will fully investigate whose decision it was to file the four trademark applications. Did the ALS Association believe that it could stop others from using the hashtag?

 

FireShot Screen Capture #172 - 'Homepage - ALS Association' - www_alsa_orgfor more about ALS and the ALS Association, see www.alsa.org

Last month, the Chairwoman of the Federal Trade Commission (FTC) announced that the agency would be investigating patent trolls and patent litigation tactics.

See NY Times article and transcript of June 20, 2013 speech by Chairwoman Edith Ramirez.

Will the FTC ever investigate trademark scam operators?  Will they investigate whether abuse trademark litigation practices stymie innocent trademark owners, small businesses, innovation, and the US economy?

US-FederalTradeCommission-Seal.svg