DYAN FINGUERRA-DUCHARME & MALLORY CHANDLER, IP Watchdog; Top Trademark Cases in 2024 and What to Watch in 2025
"This year was an eventful one for trademark law—from reiterating the importance of “association” under the Lanham Act, to dispelling the notion that foreign conduct can create liability, to re-working the protection of expressive works after Jack Daniel’s. Below outlines a few of the important trademark decisions from 2024 and cases we are watching in 2025."
Holland & Knight IP/Decode Blog ; Trademark Tussle: When Elves Land on the Naughty List
"CCA and B LLC, the company behind the "Elf on the Shelf" book, merchandise and the joy (or angst) of children everywhere, has found itself in a legal kerfuffle with Elena Jenkins (aka Elena Popova). The complaint, filed in the U.S. District Court for the Northern District of Ohio, accuses Ms. Jenkins of willfully infringing CCA and B's ELF ON THE SHELF® trademarks and the copyrighted images of those mischievous elves without permission. On its wish list, CCA and B is asking for an injunction, monetary damages and destruction of all of Ms. Jenkins' rogue elves."
STEPHANA OCNEANU , Pittsburgh Post-Gazette; Eat’n Park sends another cease-and-desist over Smiley Cookie branding
"Eat’n Park is set on protecting its iconic Smiley Cookies brand this holiday season.
Alleging trademark infringement, the Homestead-based restaurant chain has sent a cease and desist letter to McArthur’s Bakery in St. Louis for producing a similar smiling cookie business...
EPR Holdings, Inc., tied to the Eat’n Park Restaurants, registered the “Smiley” word trademark in 2007. The accompanying smiley face design used on its cookies and pancakes was registered two years prior. Eat’n Park has sold (and given away) the cookie since the mid 1980s.
“We are not seeking to profit from an agreement with McArthur’s Bakery or to stop their good work; we simply want to do what’s required by the law to uphold our trademarks,” a spokesperson for Eat’n Park told the Post-Gazette in an email...
Should the bakery continue to ignore communication from Eat’n Park, the situation may be taken to court, as has occurred in the past."
MAGGIE HARRISON DUPRÉ , Futurism; Character.AI Confirms Mass Deletion of Fandom Characters, Says They're Not Coming Back
"The embattled AI companion company Character.AI confirmed to Futurism that it removed a large number of characters from its platform, citing its adherence to the Digital Millennium Copyright Act (DCMA) and copyright law, but failing to say whether the deletions were proactive or in response to requests from the holders of the characters' intellectual property rights...
That's not surprising: Character.AI is currently facing a lawsuit brought by the family of a 14-year-old teenager in Florida who died by suicide after forming an intense relationship with a Daenerys Targaryen chatbot on its platform...
It's been a bad few months for Character.AI. In October, shortly before the recent lawsuit was filed, it was revealed that someone had created a chatbot based on a murdered teenager without consent from the slain teen's family. (The character was removed and Character.AI apologized, as AdWeek first reported.) And in recent weeks, we've reported on disturbing hordes of suicide, pedophilia, and eating disorder-themed chatbots hosted by the platform, all of which were freely accessible to Character.AI users of all ages."
Tracy Hinson (KSDK), Hunter Bassler, Kelsi Anderson, KSDK; Smiley Face Cookie Company, served with cease and desist letter, fights to keep its name and design
"The bakery received a cease and desist letter from Pennsylvania in early 2016, but it was disregarded. A smiley face cookie they started baking in the 70s became the icon for the bakery's adults with disabilities job program in 2021.
"We pretty much kind of ignored that letter and just thought, 'Hey, we have precedence, so we can keep making these cookies,'" Rinaberger said. "We received a second one in 2022, never heard from the trademark owners until recently when we received an email following up from their attorneys asking what our action plans were to stop calling them smiley cookies."
In a statement to 5 On Your Side, Pennsylvania's Eat'nPark management said they own the federally registered trademarks for Smiley as it relates to cookies, and for the iconic Smiley Face design they've been using on cookies since the 1980s.
What the St. Louis company is worried about most is losing the recognition of seeing Smiley Face Cookie Company in local stores.
"One of the areas that we think we have precedence, besides us doing it before they had their trademark, is it's becoming quite generic and there are hundreds of bakeries around the United States making smile cookies and calling them either smiley face cookies or smile cookies," Rinaberger said.
And for those reasons, they aren't going to let Smiley Face Cookie Company crumble. There is a GoFundMe set up to help with the Smiley Face Cookie Company's legal expenses.
An Eat'nPark spokesperson sent the following statement to 5 On Your Side:
"McArthur’s Bakery is doing important and meaningful work, and we respect their mission. For some time, however, we had reached out to McArthur’s Bakery to engage in a conversation about our trademarks. Unfortunately, they ignored our outreach and our efforts to initiate good-faith conversations."
Max HauptmanMary Walrath-Holdridge, USA Today; Grinch-themed holiday photos may be copyright infringement. What to know.
"As the holidays approach, family photographers should keep in mind one fact − copyright laws do exist, and they can be enforced.
Last year, a photographer in Knoxville, Tennessee, took to social media to note that holiday-themed photo shoots using popular pop culture icons like The Grinch of Dr. Seuss fame could be subject to violations of copyright laws.
"Friendly reminder that shooting Grinch-themed photo sessions FOR A PROFIT (that’s the important part… if you’re not charging a fee you’re good) is federal trademark infringement," Tennessee photographer Anna Smith wrote in a since-deleted Facebook post."
, Forbes ; Intellectual Property In Horticulture: A Guide To Plant Patents And Trademarks
"The Role Of Patents In Horticulture
Patents play an important role in horticulture:
• Encouraging innovation: Creating new varieties of plants involves investing a lot in research. Plant patents encourage breeders to keep on creating different plant varieties.
• Market share protection: After breeders develop a particular variety of plant, they decide on its production and sale. No competitor has the right to propagate the variety for sale without special permission; hence, this privilege gives the breeder a competitive edge.
A way to gain income: Patents can enable breeders to license their varieties to other growers or nurseries. These licenses enable those breeders to make sales. Popular varieties' profits may come from the licensing agreement...
The Place Of Trademarks In The Horticulture Industry
Trademarks can give the following advantages to horticulture businesses:
• Brand differentiation: A good trademark will enable a firm to set itself apart from its competitors and build consumer loyalty. In horticulture, for instance, a nursery firm might have dozens of items similar to those of other nurseries; hence, recognition by trademark can make quite a difference in attracting and retaining customers.
• Legal protection: USPTO registration protects against infringement of any kind. If another company tries to sell using a similar brand name, logo or product name, a trademark holder can sue that company for creating confusion in the market."
Erica B. E. Rogers of Ward and Smith, P.A. , The National Law Review; What's in a Name Anyway? Trademark Basics for Community Associations
"This article explores the essentials of trademark rights, their relevance for community associations, and the balance between protecting these trademarks versus respecting the free speech of homeowners...
Trademark rights are crucial for protecting the identity and reputation of a community association. They help prevent confusion among property owners and prospective residents by ensuring that the association's name and symbols remain distinct. However, while trademarks are valuable tools for community associations to deter unauthorized use, they cannot be used to silence opinions or criticisms. Understanding this balance is essential for effectively managing and enforcing trademark rights in a manner that respects both legal protections and fundamental freedoms of the property owners."
Kaycee Sloan, Cincinnati Enquirer; Read the cease-and-desist letter UC sent to middle school about logo, Bearcats name
"With Cheatham on the hunt for a new name, another Cincinnati university offered up its mascot free of charge.
Anthony Breen, the CEO of Synergistic, a marketing agency in Cincinnati that works with Xavier, said the company, along with Xavier, had pledged to rebrand and redesign Cheatham's logo, mascot and wordmark. They will also provide other needed marketing support.
But it all comes with one caveat: The middle school must agree to become "Musketeers."...
Musketeer Gear, a nonprofit founded by Xavier alumni in 2022, also released a new white T-shirt that features the outline of Tennessee with "Cheatham Musketeers" written in navy blue letters. The shirts are priced at $35 and all proceeds will go directly to the middle school...
Jeff Hobbs, athletic director for Cheatham County School District, said Nov. 25 that Xavier University itself had not yet reached out to the school, and that "Musketeers" is among the names currently being considered."
Marta Mieze, Springfield News-Leader; Buc-ee's is suing this Missouri-based liquor store for trademark infringement
"In the lawsuit, Buc-ee's accuses Duckees of violating company's rights protected by the trademarks by adopting an allegedly similar logo and using it on clothing and retail store services featuring convenience store items. The Duckees logo includes a cartoon sunglasses-wearing duck in a green shirt and red bowtie inside of a yellow circle that appears to be printed on a bottle cap. Buc-ee's claims this logo uses "the most important aspects of the iconic Buc-ee's logo" by including a cartoon animal, a yellow circle as the background and prominent black edges for the mascot."
Nika Shakhnazarova, New York Post; Meghan Markle asks US Patent Office for more time to correct American Riviera Orchard trademark application
"Meghan Markle has asked the US Patent and Trademark Office for extra time to launch her lifestyle brand, American Riviera Orchard.
The Duchess of Sussex, 43, has faced a slew of ongoing trademark troubles since announcing the brand’s impending launch in March.
In documents obtained by The Post, the “Suits” alum’s legal team has requested a three-month extension in her attempt to secure a trademark for the yet-to-be released brand...
Rival lifestyle brand Harry & David filed a protest against Markle’s lifestyle brand, claiming the name is far too similar to its “Royal Riviera” product line."
MARYCLAIRE DALE, AP ; Penn State wins trademark case over retailer’s use of vintage logos, images
"Penn State has won a closely watched trademark fight over an online retailer’s use of its vintage sports logos and images."
Nick Schultz, On3.com; Cincinnati threatens to sue middle school over copyright, Xavier campaigns to replace mascot
"“A few months ago, we were alerted to the use of the University of Cincinnati’s trademarks by Cheatham Middle School,” the statement read. “When we or our licensing agency, the Collegiate Licensing Company (CLC), identify infringing activity, the other party is contacted to educate them about the University’s rights and request they stop using the marks. As part of this process, we requested CMS to identify the various ways in which they have adopted UC’s identity so we can understand the full scale of what is involved to address the matter.
“We appreciate Cheatham Middle School’s interest in using UC’s iconic trademarks, which are recognized both nationally and globally. But CMS never requested permission to do so. Just as many other universities and recognizable brands make significant investment to protect their own marks, we reserve the right for exclusive use of the UC marks. We understand this may cause some inconveniences, but we have a responsibility to preserve and protect the University’s rights to its marks.”"
Blake Brittain , Reuters; US Trademark Office cancels Marvel, DC's 'Super Hero' marks
"A U.S. Trademark Office tribunal has canceled a set of "Super Hero" trademarks jointly owned by comic giants Marvel and DC at the request of a London-based comic book artist, according to a Thursday order.
The USPTO's Trademark Trial and Appeal Board ruled for S.J. Richold's Superbabies Ltd after Disney's Marvel and Warner Bros' DC did not file an answer to Superbabies' request to invalidate the marks.
Spokespeople and attorneys for Marvel and DC did not immediately respond to requests for comment. Superbabies attorney Adam Adler of Reichman Jorgensen Lehman & Feldberg said in a statement that the ruling was "not just a win for our client but a victory for creativity and innovation."
"By establishing SUPER HEROES' place in the public domain, we safeguard it as a symbol of heroism available to all storytellers," Adler said."
, The New York Times; Paraguay Loves Mickey, Its Cartoon Mouse. Disney Doesn’t.
Factories churn out knockoff Nike, Lacoste, and Adidas clothing.Paraguay’s educational authorities warned last year that Harvard University Paraguay — in Ciudad del Este, the country’s second-largest city and a counterfeiting hot spot — was awarding bogus medical degrees. (The school has no connection to the more famous Harvard.)
Paraguay ranks 86th out of 125 countries in an index compiled by the Property Rights Alliance, a research institute based in Washington, scoring 1.7 out of 10 for copyright protection."
GRACE SNELLING, Fast Company; Starbucks just sued this weed business for copying its logo
"On the outside of its repurposed food truck, the NYC-based mobile marijuana retailer Starbuds Flowers features a logo that’s hard to miss. The familiar graphic shows a woman with a pointy crown and long wavy hair descending over her chest, surrounded by a green ring that contains the business name. In her right hand, the woman is puffing on what appears to be a lit blunt, while marijuana leaves frame the whole composition. The logo is clearly a parody of Starbucks’ Siren mascot—but the coffee giant isn’t laughing.
On June 28, Starbucks filed a copyright and trademark infringement lawsuit against Starbuds in the U.S. District Court for the Southern District of New York."
Laura Heymann , Bloomberg Law; ‘Trump Too Small’ Trademark Case Morphs Into Free Speech Debate
"The US Supreme Court’s June 13 decision in the “Trump Too Small” trademark case revealed a potential rift among the justices on First Amendment jurisprudence but did little to advance intellectual property law...
Trademark law, the Supreme Court has said in prior cases, is primarily about two goals: preventing confusion among consumers by ensuring accurate source identification and preserving trademark owners’ reputation and goodwill. For these justices, the names clause passed muster because prohibiting the registration of personal names without consent was self-evidently reasonable in light of these purposes; no further analysis was required."
EIDHNE GALLAGHER, Screen Rant; How A Mickey Mouse Horror Movie Is Releasing Only 2 Months After Disney Lost The Copyright
"Mickey Mouse is one of several popular characters who have entered the public domain in the 2020s. However, this upcoming horror movie is solely focusing on the Steamboat Willie version of Mickey Mouse. While the copyright claim on Steamboat Willie has expired, Disney has not lost all their rights to their mascot. Every Mickey Mouse movie and character evolution that took place after Steamboat Willie remains protected under copyright law, and Disney will continue to use the character as a trademarked mascot."
Laurence Cawley & Sally Beadle, BBC; When Louis Vuitton tries to make you change your brand name
"IPO Tribunal Judge Matthew Williams found in the couple's favour, deciding Louis Vuitton's opposition had failed "on all grounds"...
Melanie Harvey, a legal director at Birketts LLP and a chartered trade mark attorney, says the Osborne's case is far from unique.
She says in the past 18 months there has been a "huge" rise big firms seeking to protect their trademarks. She says clothing businesses, champagne makers and high end brands were particularly busy protecting their identities at the moment."
Steve Vondran, JDSupra ; Artificial Intelligence Law - Intellectual Property Protection for your voice?
"With the advent of AI technology capable of replicating a person's voice and utilizing it for commercial purposes, several key legal issues are likely to emerge under California's right of publicity law. The right of publicity refers to an individual's right to control and profit from their own name, image, likeness, or voice.
Determining the extent of a person's control over their own voice will likely become a contentious legal matter given the rise of AI technology. In 2024, with a mere prompt and a push of a button, a creator can generate highly accurate voice replicas, potentially allowing companies to utilize a person's voice without their explicit permission for example using a AI generated song in a video, or podcast, or using it as a voice-over for a commercial project. This sounds like fun new technology, until you realize that in states like California where a "right of publicity law" exists a persons VOICE can be a protectable asset that one can sue to protect others who wrongfully misuse their voice for commercial advertising purposes.
This blog will discuss a few new legal issues I see arising in our wonderful new digital age being fueled by the massive onset of Generative AI technology (which really just means you input prompts into an AI tool and it will generate art, text, images, music, etc."
