, ,

Why are Nike’s Air Jordan Sneakers “University Blue” instead of “Carolina Blue”?

While attending a friend’s 50th  birthday party recently, I noticed his sneakerhead son wearing these cool blue Nike Air Jordans.  The first thing that I noticed was their unique color, which I erroneously assumed was the famous “Carolina Blue” associated with the University of North Carolina where Michael Jordan played college basketball. When my friend’s son informed me that the shoes were “University Blue” and not “Carolina Blue”, it got me thinking about two of my favorite things – trademarks and college basketball. It also made me wonder how Nike could use a color that so closely resembles Carolina Blue, and why Nike called the color University Blue instead.  After hours of online research, I was unable to find an answer to my question.  However, based on my knowledge of trademark law, I have a possible explanation, which I will provide here.

The History of Carolina Blue

For more than two hundred years, the University of North Carolina has associated itself with a specific school color that has always been a shade of blue. The exact shade of blue, long known as Carolina Blue, however, has varied over the years, until relatively recently.  According to fashion designer Alexander Julian, who helped re-design the basketball team’s jerseys in 1990, Carolina Blue is not like any other blue – it’s not powder blue, not baby blue, and certainly not aqua blue.  In 2015, the University adopted a single shade of blue – Pantone 542 – as the official Carolina Blue, which is to be used in at least 10% of all designs. If you are interested in a deeper dive into the history of Carolina Blue, go check out 50 Shades of Blue: Tar Heels Seek the Truest Hue.

Color as a Trademark

Color marks are marks that consist solely of one or more colors used on particular objects. For marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. Some examples of well-known color trademarks include the color pink for Owens Corning fiberglass insulation, the color Brown for UPS trucks and uniforms, and the color “Tiffany Blue” for shopping bags and boxes for jewelry.  Carolina Blue also falls into this category as the mere use of that particular shade of blue, or the mention of the name “Carolina Blue” is almost always associated with the University of North Carolina.

Trademark Infringement

In simple terms, trademark infringement exists when a defendant’s mark is likely to confuse the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. In 1985, after a lengthy legal battle, Owens-Corning became the first company in U.S. history to trademark a color. In 1995, Qualitex defended its right to trademark its signature green-gold dry cleaning pads.  The U.S. Supreme Court ruled that color could, indeed, serve to identify a brand — and in doing so, opened up the floodgates for other companies to file their color trademarks.

Carolina Blue has long been associated with the University of North Carolina, particularly in connection with its basketball and athletic programs and athletic apparel.  As such, both the name “Carolina Blue” and the particular shade of blue – Pantone 542, are certainly protected by U.S. Trademark law. So how is it that Nike is able to use a very similar color on athletic shoes and call it University Blue without infringing on the valid trademarks of the University of North Carolina?

Trademark Licensing

First of all, there is no doubt in my mind that, absent the knowledge and consent of the University of North Carolina, Nike’s use of a particular shade of blue and probably the name “University Blue” constitutes trademark infringement.  I looked long and hard for evidence of some sort of agreement between Nike and UNC but did not find anything.  However, given their long history of working together – it is said that Nike had a hand in selecting the shade for Carolina Blue – the two almost certainly came to an agreement whereby UNC allowed Nike to use the color and agreed not to object to the use of the University Blue name, in exchange for some value (most likely a royalty on sneakers sold).  This tactic is commonly used across brands to cross-promote and sell products that are beneficial to both parties. In this case, I suspect that UNC had no problem with Nike’s use of the specific color to sell its Air Jordan shoes since Jordan has ties to both Nike and UNC.  However, I suspect the UNC did not want to go so far as to allow Nike to market the shoes as “Carolina Blue”, so the different, but similar University Blue was created.

We Can Help You

If you have questions about trademarking a name, logo, design, slogan, or even a color for a product or service, or if you are concerned that your use of a name, symbol or phrase may infringe on the trademark rights of someone else, contact us to discuss how our attorney, Rick Martin, can help you protect your valuable trademark rights!

, , ,

SMART PRODUCTIVITY TOOLS THAT ARE MAKING AN IMPACT

Being named an Edison Award winner is one of the highest honors a company can receive in the area of innovation. In April, 2021, Edison Universe announced the 2021 winners of the awards for game-changing innovations in several separate categories. This month we take a look at the winners in the Smart Productivity Tools Category.

Cat® Command by Caterpillar Inc.

productphoto“Imagine moving dirt with a machine while sitting in the comforts and safety of an airconditioned office. No more all-day full-body vibrations. Coffee in hand, you’ll soon be digging a hole 2,500 (or more) miles away with the new Cat® Command station. Cat.com Link: Cat Command for Construction Video: Cat Command Promotional Overview”

 

Aido Robot by InGen Dynamics Inc.

productphotoAido is the next generation modular Service Robot specifically designed for Households, Hospitality , Healthcare. Featured by Disney, Forbes, PopSci, IEEE, BCG, Discovery, Mashable, T3, and more. We use complex mechanical designs with state-of-the-art electronics, scalable architecture, and, artificial intelligence with advanced manufacturing.

 

Oplà IoT Kit by Arduino

productphotoThe Arduino Oplà IoT Kit is for anyone trying to make their home or office just a little bit smarter. The kit is an edge-to-cloud IoT system that’s backed by helpful tutorials and getting-started projects (e.g. smart thermostat, smart lighting, smart garden etc) that will have you automating your home in no time.

 

These winners of the Edison Award have looked at problems within the community and have come up with innovative solutions. Do you know of an innovation that is worthy of recognition? Nominations for the 2022 Edison Awards will open August 1, 2021 and close in late November. Winners are announced at the Edison Awards Gala in New York, NY in April 2022.

Before getting too far down the road, it’s important to identify and protect any intellectual property (patents, trademarks, copyrights and/or trade secrets) associated with your innovative product or service. Contact us today to see how we can help you identify and protect these valuable assets.

 

 

, ,

UNAUTHORIZED USE OF NCAA TRADEMARKS COULD HAVE YOU RIDING THE PINE

With the annual NCAA Basketball Tournaments just days away, many people are busy filling out their brackets and getting ready to watch their favorite teams compete for the big prize. You may have noticed in my opening that I didn’t use terms such as  BIG DANCE®️, MARCH MADNESS®️ or FINAL FOUR®️. That is because those names are federally registered trademarks owned by the NCAA. The improper and/or unauthorized use of those names could result in you being called for a foul in the form of a cease and desist letter or even a lawsuit from the NCAA. So what are the rules? When can you use MARCH MADNESS®️ or one of the 70+ names, phrases and images that are registered trademarks associated with the famous basketball tournament?

As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of BIG DANCE®️, MARCH MADNESS®️,or FINAL FOUR®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NCAA. So technically, any use of such registered marks would constitute infringement.

However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.

Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.

The 70+ Trademarks are valuable assets

The NCAA reported total revenue of $1.18 Billion associated with the NCAA tournament in 2019.  Due to cancellation of the tournament in 2020 as a result of the COVID 19 pandemic, that figure was down to $519 million, which included a $270 million insurance payout for cancellation of the tournament.  While the biggest portion of that revenue comes directly from broadcasting rights ($804 million in 2019), a significant portion of the revenue associated with the NCAA Tournament is derived from licensing fees for merchandise and authorized partners who pay fees to the NCAA to be the official this or that of the NCAA Tournament.  Hundreds, if not thousands of businesses line up each year and pay fees to the NCAA to be “authorized” partners and use one or more of the 70+ trademarks associated with the NCAA Tournament.

The NCAA aggressively pursues infringers of its trademarks

With so much money on the line, it is no wonder the NCAA aggressively pursues those who use its trademarks without permission.  For example, in 2017, the NCAA filed suit against a Las Vegas-based fantasy sports sweepstakes company that was using the phrases “Final 3” and “April Madness” in its events related to the NCAA Division I Men’s Basketball Championship. While the marks were not identical to the NCAA’s marks, the court concluded that they were “obviously similar” and that the defendants “planned to use the marks in connection with contests and events related to NCAA basketball games” indicating “willful infringement.” The defendants were permanently enjoined from using the Final 3 and April Madness phrases and any other variations thereof that would be confusingly similar to the NCAA marks and were ordered to recall all infringing products.  The court further invited the NCAA to file a motion for attorney fees, suggesting that it may order defendants to pay the NCAA’s attorney fees as well.  Since January, 2020, the NCAA has filed over 25 opposition/cancellation actions against other parties who have registered or have attempted to register trademarks with the U.S. Trademark Office that the NCAA believed were similar to it’s marks.  Included in that list is was a petition to cancel a registered trademark for VASECTOMY MADNESS and a petition opposing registration of MARCH MODNESS.

Tips to avoid being called for a foul

Unless you are specifically authorized by the NCAA, the following  are things that you should avoid if you don’t want to draw the attention of the attorneys for the NCAA:

  • Advertising for your products or services that refers to the NCAA, MARCH MADNESS or any of the other 70+ marks owned by the NCAA related to the NCAA Basketball Tournament. (Example: A car dealership adveristing “March Madness” pricing on new/used vehicles in the month of March).
  • Promoting an event, gathering, party or the like by making reference to the NCAA or its marks.  (Example: A sports bar advertising in a magazine to “Come watch the BIG DANCE on our Big Screen TVs”).
  • Hosting contests, sweepstakes or giveaways that make reference to the NCAA or its marks. (Example: The “March Madness Sweepstakes”).
  •  Placement of an advertisement for your product or services within an NCAA bracket. (See guidelines by clicking here).

If you are still in doubt, the NCAA provides additional direction and guidance on the proper use of its marks here.  Or better yet, contact us for expert advice on whether your use is permitted.

, , , , ,

SOCIAL MEDIA POST MAY FORFEIT COPYRIGHT PROTECTION

Posting your artwork or photographs to social media sites Instagram and Facebook (and possibly others) may forfeit your ability to prevent copying by other users. Best case scenario – you give control to the social media platform (Instagram or Facebook) as to how, where, when and under what circumstances the image can be reused.  Worst case scenario – you grant a license to any other user on that platform to use the image and the works depicted therein without paying you or getting your approval as to how, where and when the image will be used.

BEST CASE SCENARIO – INSTAGRAM OR FACEBOOK HAS CONTROL OVER HOW, WHEN AND WHERE OTHERS CAN USE YOUR WORK

Copyright protection for a work of authorship (photographs, videos, graphic designs, paintings, sculptures, songs, etc.) attaches upon creation of the work and the author owns the exclusive right to control the use and reproduction of that work. Copyright ownership gives the holder of the copyright in an original work of authorship the following exclusive rights:

  • The right to reproduce and make copies of an original work;
  • The right to prepare derivative works based on the original work;
  • The right to distribute copies to the public by sale or another form of transfer, such as rental or lending;
  • The right to publicly perform the work; and
  • The right to publicly display the work.

The author may, by agreement, transfer that right to another party or parties.  This is typically done by way of an assignment, where the author transfers ownership of a work to another party, or a license, where the author retains ownership but authorizes another party to use or reproduce the work.  In the case of social media platforms such as Instagram and Facebook, the Terms and Conditions of Use, which every user must agree to before being granted access, have provisions governing the ownership and license of intellectual property rights, including copyright. The relevant portions of the Terms & Conditions for Instagram and Facebook as of the date of this blog are as follows:

INSTAGRAM Permissions from Terms of Use:

When you share, post, or upload content that is covered by intellectual property rights (like photos or videos) on or in connection with our Service, you hereby grant to us a non-exclusive, royalty-free, transferable, sub-licensable, worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings). This license will end when your content is deleted from our systems.

FACEBOOK Permissions from Terms of Use:

Specifically, when you share, post, or upload content that is covered by intellectual property rights on or in connection with our Products, you grant us a non-exclusive, transferable, sub-licensable, royalty-free, and worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content (consistent with your privacy and application settings). This means, for example, that if you share a photo on Facebook, you give us permission to store, copy, and share it with others (again, consistent with your settings) such as service providers that support our service or other Facebook Products you use.This license will end when your content is deleted from our systems.

TRANSLATION OF LEGALESE:

Note that in both permissions, the license is described as being royalty-free. That means Instagram and Facebook don’t have to pay you a dime for authorized use.  The language in both also indicate that the licenses are transferable and sub-licenseable.  That means that Instagram and Facebook may, without the author’s further permission, authorize others to use the work at its discretion.  Moreover, the rights granted by the license – hosting, using, distributing, modifying, running, copying, publicly performing or displaying, translating, and creating derivative works – when compared to the rights listed above that are granted to the author upon creation, strongly suggests that the licenses applies to ALL rights of the author.  Bottom line – by posting on Instagram or Facebook, you are allowing them (for free) to do anything with your work that you otherwise could do yourself, AND you are allowing them to authorize anyone else they choose (also for free) to do the same.

COURT CASES DO NOT FAVOR THE CREATOR

This is not just my interpretation.  Last year, in two separate cases, the United States District Court for the Southern District of New York came to the exact same conclusion!  The first case, Sinclair v. Ziff Davis, LLC and Mashable, Inc., involved the use of professional photographer Sinclair’s copyrighted photograph entitled “Child, Bride, Mother/Child Marriage in Guatemala”.  Sinclair posted the image on her Instagram account.  Mashable contacted Sinclair to request a license, and Sinclair refused. Shortly thereafter, Mashable published an article on its website which included a copy of the copyrighted photograph by way of an embedded link to Sinclair’s Instagram post.  Mashable filed a motion to dismiss the complaint for copyright infringement, alleging that it used the photograph pursuant to a valid sub-license from Instagram.  The court agreed, finding that Sinclair, by creating an Instagram account, agreed to Instagram’s Terms of Use, and therefore “granted Instagram the right to sublicense the photograph, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph.” In the second case, McGucken v. Newsweek, Inc., McGucken, a photographer who focuses on landscapes and seascapes, operated a public account on Instagram where he posted some of his photographs.  One day after he posted a photograph depicting a large lake in Death Valley National Park, Newsweek published an article on its website incorporating the photograph from McGucken’s Instagram post through embedding.  In ruling against McGucken, the court made flattering reference to the judge’s decision in Sinclair, and went on further to say that “insofar as [McGucken] contends that Instagram lacks the right to sublicense his publicly posted photographs to other users, the Court flatly rejects that argument. The Terms of Use unequivocally grant Instagram a license to sublicense [McGucken’s] publicly posted content.”

WORST CASE SCENARIO – ANY USER OF INSTAGRAM OR FACEBOOK CAN USE YOUR WORK HOWEVER, WHENEVER, AND WHEREVER THEY CHOOSE

In its original opinion, without any evidence of an agreement between Instagram and Mashable beyond the Terms of Use, the Court in Sinclair further concluded that “Instagram granted Mashable a sublicense to embed the Photograph on its website, and Mashable exercised its right pursuant to that sublicense.” After Sinclair moved for reconsideration, the Court took a step back from this ruling, but did not foreclose the possibility that such a license may exist solely on the basis of the Terms of Use.  The Court on the request for reconsideration concluded that although Instagram’s Terms of Use clearly authorized Instagram to grant a sublicense to users like Mashable, the pleadings in that case did not contain sufficient evidence that Instagram exercised its right to grant a sublicense to Mashable.  Similarly, the Court in McGucken denied Newsweek’s motion to dismiss on the grounds that “there is no evidence before the Court of a sublicense between Instagram and Defendant.”  Both the Mashable and McGucken cases are still active and further rulings on this issue are expected in the forseeable future.  It is interesting to note that the Court in McGucken specifically stated “that it may be possible to read Instagram’s various terms and policies to grant a sublicense to embedders”, leaving open the possibility that an artist or photographer who posts his or her works on Instagram automatically grants a blanket license to the copyrighted work to all other users!

HOW DOES AN ARTIST OR PHOTOGRAPHER PROTECT HIS OR HER WORKS IN LIGHT OF THESE RULINGS?

With roughly one billion active monthly users, Instagram is almost certainly the most popular public photo sharing platform in the world.  This creates quite a dilemma for artists and photographers.  Posting to Instagram and Facebook is a very inexpensive way to get their works in front of billions of potential patrons and customers.  However, based on the Sinclair and McGucken decisions, the photographer or artist may be giving up his or her rights to receive royalties from other users who copy that work.  Moreover, the artist or photographer clearly abdicates control over the work to the social media platform and/or other users of the platform.  So what can an artist/photographer do to protect his/her rights?  Click here to get our FREE REPORT with details and suggestions on actions that you can take to protect your rights.

, , ,

BRANDING LESSON – Copying a famous mark could lead to an un-hoppy ending

Branding issues occur in almost every type of commercially available product or service. If you know me, you know that I am a HUGE fan of micro-brewed beers.  Recently, I came across this one courtesy of my neighbors at High Score Saloon.  Hop Tarts is a golden double IPA with a slight berry essence achieved by adding raspberries, blueberries & strawberries during fermentation.  Sounds delicious, right?  I hope to get a chance to try one soon!

Pop Tarts branding similar to Hop Tarts branding

U.S. Trademark No. 4,240,604

But I can’t help but wonder if DuClaw Brewing Co., which prides itself on “Taking Brewing Risks Since ’96” may have taken too big of a branding risk with this new brew. One look at the label on the hop tarts can brought back fond childhood memories of one of my favorite breakfast treats – Pop Tarts.  Kellogg Corporation is the owner of several U.S. Trademarks associated with the Pop Tarts brand, including Registration No. 4,240,604 which is shown here.  On it’s face, the Hop Tarts logo appears to be exactly the same as the registered Pop Tarts mark except that they substituted an “h” for the “p”.

Those of you that follow my blog may recall another post from a few months back – Damsel In Distress – How Choosing the Wrong Name Can Cost Your Company Big Time – about a similar situation where Maiden’s Brewery & Pub was accused of infringing on trademarks owned by the band Iron Maiden. (I know, another blog post about craft beer?)  While there are certain similarities to that case, this situation raises some very different issues regarding trademark law.

Branding, Trademark Infringement and Likelihood of Confusion

Whether or not there is trademark infringement under U.S. law hinges on whether or not there is a “likelihood of confusion” as to the source of the products or services offered under the mark.  The thirteen so-called DuPont factors determine whether there is a likelihood of confusion between marks and therefore infringement.  Those factors are:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
  2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
  5. The fame of the prior mark.
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion.
  8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
  9. The variety of goods on which a mark is or is not used.
  10. The market interface between the applicant and the owner of a prior mark.
  11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
  12. The extent of potential confusion.
  13. Any other established fact probative of the effect of use.

The first two factors – the similarity of the marks and the similarity of the goods or services – generally carry the most weight making a determination of infringement.  Looking at the Hop Tarts case, as referenced above, the marks appear to be very similar in appearance.  Looking at the second DuPont factor, however, presents a different picture.  The goods protected by the Pop Tarts mark (toaster pastries) are very different from the goods to which the Hop Tarts mark is applied (craft beer).  The trade channels of those goods also appear to differ significantly.  Given those factors, it may be difficult for Kellogg’s to make a strong case for trademark infringement here.

Dillution of Famous Marks

However, there is another concept in trademark law known as dillution.  Trademark dillution is the use of a mark or trade name in commerce sufficiently similar to a famous mark that by association reduces, or is likely to reduce, the public’s perception that the famous mark signifies something unique, singular or particular. Dilution is comprised of two principal harms: blurring and tarnishment. Blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name. Tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name.

A “famous mark” is one that evokes an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. Examples of famous trademarks include APPLE, COCA-COLA, GOOGLE, MCDONALD’S and WALMART. Famous trademarks enjoy a broad scope of legal protection because they are more likely to be associated and remembered in the public’s mind.

According to Wikipedia, the Pop Tarts brand was introduced by Kellogg’s in 1964 and is one of their most popular brands with millions of units sold each year. In my opinion, Kellogg’s has a strong argument that it’s Pop Tarts mark qualifies as a “famous mark” and is subject to a higher level of protection than an ordinary mark.  While some may consider use of their mark in connection with craft beer to be a tarnishment (not anyone that I would associate with, but there may be some out there), the stronger argument for Kellogg’s would be blurring – that their Pop Tarts mark is somehow impaired by association with the Hop Tarts brand.  If Kellogg’s were to prevail in a suit against DuClaw for trademark dillution, they would be entitled to an injunction preventing DuClaw from further use of the Hop Tarts brand.

Do you have a new product or service that you are branding and want to ensure that you don’t make the same mistake?  Before you hop to it, let us conduct a trademark clearance search to determine if there are any trademark issues with your brand.  Contact us about your branding and trademark concerns before you hop into launching your new brand.

 

, , ,

BRANDING MISTAKES – A JUICY TALE

A new seafood and sushi restaurant, The Juicy Crab in Owensboro, Kentucky made a big branding mistake in choosing its name when it opened for business recently.

BRANDING MISTAKES MAY LAND YOU IN BOILING WATER

According to an Owensboro Times article, almost immediately Facebook users were confused as to whether this Juicy Crab was affiliated with a chain of Juicy Crab restaurants based out of Duluth, Georgia.  The owner of the Owensboro Juicy Crab apparently relied upon the availability of the name for registration with the Kentucky Secretary of State and the advice of a lawyer (presumably not one that specializes in Intellectual Property and Trademark Law) in adopting the name.  Within days of opening, Juicy Crab Owensboro received a cease and desist letter from Juicy Crab Duluth alleging infringement of their U.S. Trademark Registration No. 5,139,205 for THE JUICY CRAB which is registered for use in connection with seafood restaurants.

TRADEMARK INFRINGEMENT AND BRANDING

The owner of a U.S. Trademark has the exclusive right to use the registered name in connection with the goods or services that it is registered for, and for goods or services that are the same or similar.  Trademark infringement occurs when there is a liklihood of confusion as to the source of goods or services.  Several factors affect whether there is a liklihood of confusion.  The two primary factors are the similarity of the marks themselves and the similarity of the goods or services.  In the case of Juicy Crab, the two names are identical and the services provide (seafood restaurants) are also identical.  In addition, there appears to be actual confusion already and the Owensboro restaurant has only been open a short time.  These factors point to an almost certain finding of infringement.

HOW TO AVOID BRANDING TRAPS

So what should a restaurant owner, or anyone opening a new business, do before choosing a name for their business?  You should perform a trademark clearance search before registering the name with the state.  The clearance search will help to ensure that the name is available for use as you intend to use it. You should engage a professional familiar with the resources needed to find all potentially blocking marks for the search.  An experienced trademark attorney should render an opinion based on the search results.  Had Juicy Crab Owensboro followed this path, the registration for Juicy Crab Duluth would almost certainly have been found.  Knowing this, Juicy Crab Owensboro could have chosen a different name and avoided the conflict.  No business owner wants to have to change their brand after the business is up and running.  Customers may be confused by the name change and re-branding, which involves new designs, logos, signage, etc. can be expensive.  It’s far better to properly vet a name BEFORE you hire someone to design your logo and branding.  While there is a cost to doing so, it may just save you money, and your business, in the long run!

MARTIN IP CAN HELP

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake?  Before you spend money on a logo or designs, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. To protect your juicy brand and to avoid getting a crabby cease and desist letter,  contact us to help with choosing, protecting and registering your brand.

, , ,

STREET ART – CAN I TAKE A PHOTOGRAPH?

Street Art is artwork that is displayed on buildings, streets, walls, doors, windows, buses, trains, and on other public surfaces.  When applied to walls or barriers, street art is commonly referred to as a mural.  Street art traces its origins to graffiti and vandalism which were historically denounced as illegal and lacking in artistic merit.  However, in the past decade or so there has been a significant shift of street art to the mainstream.  One court recently noted that “street art” has “blossomed into far more than spray-painted tags and quickly vanishing pieces . . . painted by rebellious urbanites. In some quarters, it has become high art.”

COPYRIGHT INFRINGEMENT

Copyright laws exist to protect the rights of artists in their works.  The issue of whether street art is protected under U.S. Copyright laws has recently been decided in favor of the artists. Copyright ownership gives the holder of the copyright the right to: 1) reproduce and make copies of an original work; 2) prepare derivative works based on the original work; 3) distribute copies to the public by sale or another form of transfer; 4) publicly perform the work; 5) publicly display the work, and 6) perform sound recordings publicly through digital audio transmission.

Because it is displayed in public areas, street art is easily copied by anyone with a camera or cell phone.  Indeed, some public art, like that of mural artist Colette Miller, is specifically designed for the public to immerse themselves in by taking photos of themselves or “selfies” with the artwork.  The act of photographing a copyrighted work does not itself constitute copyright infringement under the U.S. Copyright laws.  However, the way in which that photograph is subsequently USED determines whether the photograph infringes the copyright owner’s rights.

THE “FAIR USE” EXCEPTION

Photographs of copyrighted street art that fall within the “fair use” exception do not constitute infringement and are permitted.  Personal use of a photograph depicting copyrighted street art falls within this exception.  Incidental use, where the artwork is virtually unrecognizable, appears for only a moment, or is not the main purpose of the image also fall within the fair use exception.  In contrast, unauthorized commercial use resulting in income to someone other than the artist is generally prohibited.

The following illustrations provide some guidance on what is and is not appropriate.

Street Art - Good of the Hive mural

Good of the Hive mural in Peterborough, New Hampshire

CASE STUDY #1

Buzz is a budding entrepreneur.  He started a business offering pollination as a service, deploying boxes of bees on-premises to help farmers increase crop yields.  On a recent trip to Peterborough, New Hampshire, Buzz came across The Good of the Hive mural by Matthew Willey.  Buzz takes a photograph of the mural and decides to use it as the background photo for his business’ website.  Because Buzz intends to use the photograph for commercial purposes, that use is infringement of Willey’s copyright.

Street Art - Greetings from Alaska mural

Greetings from Alaska mural in Anchorage, Alaska

CASE STUDY #2

Disheartened after his divorce, Sal is convinced by his friend Dean to quit his job, sell his belongings and buy an RV to travel the 50 states.  On their travels, Sal and Dean encounter several “Greetings From” murals by Victor Ving and Lisa Beggs, including the Greetings from Alaska mural in Anchorage, Alaska.  The design and beauty of each mural encountered captivates Sal and Dean.  Sal takes a photograph of each mural and uploads it as his Facebook Cover Photo until encountering the next one.  Although Sal is technically re-publishing the work,  the use in question is personal rather than commercial.  As such, it likely falls within the fair use exception.  However, what if Sal were to later author a book based on those travels using the photographs?  That would change the nature of the use to commercial and, without the author’s written consent, constitute copyright infringement.

CASE STUDY #3

Kylie is a social media influencer with 10 million followers on Instagram.  Because she has access to a huge audience and can persuade others to act based on her recommendations, companies pay Kylie to post photographs of her using their product on Instagram.  One of the companies that pays Kylie for posting images of her using their product is GreenCow Energy Drinks.  GreenCow just released a new watermelon flavored energy drink.  Kylie decides that it would be a good way to promote the new watermelon flavored energy drink by taking a selfie holding the drink in front of the Watermelon House by Wade Wilson (not to be confused with Deadpool) and Robert Banaszak in Washington, DC.  Given the facts presented, Kylie’s use appears to be “commercial” rather than personal and would most likely constitute copyright infringement.

MARTIN IP IS HERE TO HELP

These are just a few examples of common situations that arise in the context of photography of street art.  Every situation is fact sensitive.  If you have concerns about copyright infringement relating to street art, contact us to see how we can help.

, , ,

DELTA SUES MARRIOTT FOR TRADEMARK INFRINGEMENT OVER DELTA HOTELS

Atlanta, GA – Earlier this month (March 2020), Delta Airlines filed suit against Marriott International for trademark infringement and dilution over Marriott’s use of DELTA trademarks as part of its U.S. expansion of it’s Canadian Delta Hotel chain.  In court documents, Delta claims that “Marriott has embarked upon a calculated strategy of not only gratuitously using the name DELTA for its DELTA HOTELS chain of hotels in the United States, but also has adopted a sans-serif font and dark blue color scheme for its DELTA HOTELS business that closely mimics the font and color scheme used by Delta” (see photo).  Delta further claims that Marriott has opened numerous “airport hotels” under the Delta Hotels name and is marketing that brand to airline travelers leading consumers to believe that the hotel chain is somehow associated with Delta Airlines.

Delta claims to be the leading airline in the world by total revenue, serving 200 million people every day.  Delta also claims to be a leader in related travel services such as hotel bookings, credit card rewards programs, and hospitality services.  Delta also partners with other companies in virtually every industry, including hotels, credit card providers, entertainment venues and stadiums, sports teams and charitable organizations.  According to Kantar, in its 2020 BrandZ report on the Top 100 Most Valuable US Brands, Delta’ Airlines’ DELTA brand is among the 100 most valuable brands in the United States.  In its complaint, Delta frames the dispute broadly as one involving the “travel industry” as opposed to airlines and hotels.

Marriott acquired the Delta Hotel chain, which had previously operated only in Canada, in 2015.  After the purchase, Marriott began expanding the Delta Hotel chain into the United States.  Marriott also made significant changes to the design of it’s logos – adopting a sans serf font, dispensing with a stylized, curling “D” design in favor of a straight “D” design, and changing to a darker blue color. Delta claims that all of these changes were intentionally designed to make the Delta Hotel marks much closer to the Delta Airlines marks, almost guaranteeing confusion when the Delta Hotels began operating in the United States.  Since the purchase in 2015, Marriott has also opposed registration of several DELTA marks filed by Delta Airlines with the United States Trademark Office.  Those oppositions continue to work their way through the system.  Marriott has also filed over 70 applications around the world to register “DELTA” as a trademark on its own.  All of this indicates that Marriott is taking a very aggressive approach to expansion of what to most in the United States is probably a previously unknown hotel chain brand.

Without the benefit of seeing Marriott’s answer to the complaint (it’s not due yet), it is difficult to understand what Marriott is thinking with its rapid and aggressive expansion of the Delta Hotel brand.  With a multitude of other hotel brands under its umbrella, from Ritz Carlton and St. Regis to Fairfield and Townplace Suites, surely there is an existing U.S. branded hotel that aligns with the level of service provided by Delta Hotels in Canada.  Marriott will almost certainly spend tens of thousands of dollars in attorney fees defending this suit, and if it loses, it could be rebrand, pay damages and possibly attorney fees to Delta.  It will be interesting to see how Delta responds to the complaint.

Has someone misappropriated your brand?  Are you starting out with a new business, venture, product or service and want to have some assurances that you won’t have to rebrand later due to an unseen infringement?  We are here to help.  Contact us to see how we can give you the peace of mind you deserve before you move forward.

 

 

, ,

UNAUTHORIZED USE OF SUPER BOWL®️ MAY RESULT IN A PENALTY

With the “Big Game” between those football teams from Kansas City and San Francisco just days away, many people are gearing up to host or attend watch parties to celebrate the NFL championship game. You may have noticed in my opening that I didn’t use terms such as SUPER BOWL®️, CHIEFS®️, or 49ERS®️. That is because those names are federally registered trademarks. The improper and/or unauthorized use of those names could result in you being flagged for a penalty in the form of a cease and desist letter from the NFL, the Kansas City CHIEFS®️, or the San Francisco 49ERS®️ organizations. So what are the rules? When can I use SUPER BOWL®️, CHIEFS®️, 49ERS®️ and the plethora of other related words, phrases and images that are registered trademarks of these organizations?

As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of SUPER BOWL®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NFL. So technically, any use of such registered marks would constitute infringement.

However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.

Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.

Over the years, the NFL has aggressively pursued infringers in this category by sending out cease and desist letters to those commercial establishments who are using the marks without authorization. This stands to reason since many other commercial enterprises pay big money for the right to use the marks in connection with their products and services. For example, Anheuser-Busch InBev reportedly pays in the neighborhood of $250 million a year to the NFL for Bud Light to be the official beer of the NFL. This deal includes rights to use NFL trademarks, including those related to the SUPER BOWL®️.

A gray area also exists between those two extremes – private and/or not for profit entities that wish to host their own SUPER BOWL®️ party. In 2007, John D. Newland of Fall Creek Baptist Church in Indianapolis received a cease and desist letter from the NFL after promoting a church sponsored event where they planned to show the game on big screen TVs and charge $3.00 for admission. Newland ended up cancelling the party to avoid further entanglement. Arguably, notwithstanding copyright issues involved with the rebroadcasting of the game on big screen TVs, had Fall Creek not charged admission for the party, the fair use exception would likely have applied.

Whether you are a CHIEFS®️fan, 49ERS®️ fan (or a PATRIOTS®️fan licking your wounds this year), we hope that you enjoy the game with family and friends safely wherever you are and without issues of trademark infringement. If you have questions about trademarking a name for a product or service, or if you are concerned that your use of a name, symbol or phrase may infringe on the trademark rights of someone else, contact us to discuss how we can help you avoid being penalized or sacked and score a touchdown for your team!

, , , ,

DAMSEL IN DISTRESS – HOW CHOOSING THE WRONG NAME CAN COST YOUR COMPANY BIG TIME

Toward the end of last month, Maiden’s Brewery & Pub in Evansville quietly changed its name to Damsel Brew Pub. It was reported by River City Weekend that the change was made in response to a demand from the legendary rock band, Iron Maiden, giving Maiden’s Brewery & Pub until the end of 2019 to change the name of its establishment and beer products.

My first reaction upon hearing this news was disbelief. How could someone confuse a simple brewery and pub in Evansville, Indiana with a legendary rock band, or somehow be lead to believe that the brew pub was somehow affiliated with or endorsed by the rock band? Impossible! But after doing just a little bit of research, it appears that Iron Maiden’s demand is most definitely legitimate.

Iron Maiden Holdings Limited is the owner of at least six (6) U.S. Trademark Registrations for the name “Iron Maiden” as both standard character marks and in stylized forms. The earliest registrations date back to September 1984 and include the words “Iron Maiden” in the stylized form as shown below. Compare that to the stylized wording used by Maiden’s Brewery & Pub, and we begin to see the basis of the rock band’s complaint

U.S. Trademark Registration owned by Iron Maiden Holdings

Maiden’s Brewery & Pub Logo

The font used by Maiden’s Brewery & Pub appears to be nearly identical to the distinctive font in the “Maiden” portion of Iron Maiden’s registered mark. The 1984 trademark registrations were for entertainment services, namely live musical entertainment performances (Registration No. 1,308,370), clothing, namely T-shirts, jerseys, sweat-shirts, hats, jackets and leather wrist bands (Registration No. 1,307,146), and posters, souvenir concert programs, stickers, calendars, photographs and decals (Registration No. 1,306,972).

When determining trademark infringement, the penultimate question is whether there would be a likelihood of confusion as to the source of the product. In other words, would the consumer of beer and related products (such as koozies) sold by Maiden’s Brewery & Pub likely think that those products were somehow produced by, or sold with the authority of the band Iron Maiden. Given the striking similarity of the very distinctive font used in both instances, in our opinion, Iron Maiden did in fact have a strong claim that confusion was likely.

You might be asking yourself at this point why Maiden’s didn’t just drop the stylized font and keep the name Maidens for its brewery, beer and related products. Surely just the mere use of the word “Maidens” without the distinctive Iron Maiden font would not lead to confusion given the products covered by the three trademark registrations. If those were the only registered trademarks for the name Iron Maiden owned by the band, Maiden’s may well have been able to do just that. However, in 2010, Iron Maiden Holdings was granted U.S. Trademark Registration No. 3,840,031 for Iron Maiden (standard characters) in connection with a number of products and services, including beverage ware, bottle openers, portable beverage coolers, barware and coasters. Then, in 2014, Iron Maiden Holdings was further granted U.S. Trademark Registration No 4,848,431 for Iron Maiden (standard characters) for use in connection with beers and alcoholic beverages.

The owner of a federally registered U.S. Trademark has the exclusive right to use the mark in association with the goods or services for which it is registered and with any other goods or services that may create confusion as to the source of the product or service. For trademarks which are considered to be famous (one could argue that IRON MAIDEN falls within this category), infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner’s mark is registered.

Maiden’s plight is an all too common occurrence. Many fledgling businesses either don’t know the risks associated with choosing a name or simply decide not to spend the money up front to properly vet the name before adopting and using it. This strategy is penny wise, but pound foolish. The business that chooses not to invest hundreds of dollars to ensure the name they want to use is available may end up spending thousand or more in damages for trademark infringement not to mention the costs of starting over with branding after Wasted Years building a brand that they may be forced to abandon.

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake?  Before you Run to the Hills, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name.  Contact us to iron out your trademark concerns before you become a damsel in distress.

Tell Us How We Can Help You

MARTIN IP LAW GROUP, PC

225 Court St
Evansville, IN 47708
CALL TODAY! 812-492-4478
info@ipsolutionslaw.com

Copyright © 2016-2024 Martin IP Law Group All rights reserved. No portion of this website maybe used in any manner without the express written consent of Martin IP Law Group.

Skip to content