Taco John’s responds to Taco Bell’s Taco Tuesday lawsuit; CNN, June 26, 2023

 Jordan Valinsky, CNN; Taco John’s responds to Taco Bell’s Taco Tuesday lawsuit

"Last month, Taco Bell filed a petition with the US Patent and Trademark office to cancel the trademark owned by rival Taco John’s for 34 years because Taco Bell claims the commonly used phrase “should be freely available to all who make, sell, eat and celebrate tacos.” Since Taco John’s holds the trademark, other restaurants and companies must seek permission to use “Taco Tuesday” in branding and advertising.

The use of the phrase “potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say ‘Taco Tuesday’ without express permission from [Taco John’s] — simply for pursuing happiness on a Tuesday,” the original filing said.

In response, Taco John’s said it “has the right to enforce its trademark rights against infringers and those who want to infringe, including Taco Bell,” adding that it “denies that enforcing its trademark rights against infringers who seek to profit from the goodwill that Spicy Seasonings and its licensees … have created over the last forty-four years violates any American ideal.”"

Mattel once sued over the ‘Barbie Girl’ song — before learning to love it; The Washington Post, June 23, 2023

 Jennifer Hassan, The Washington Post; Mattel once sued over the ‘Barbie Girl’ song — before learning to love it

"“Mattel lost all those cases and got the message,” Tushnet said. “These were important precedents protecting commentary at a time when the internet was just allowing people to reach larger audiences without traditional gatekeepers. Then the ‘Barbie Girl’ case confirmed that traditional, commercial media also had the freedom to parody and comment on well-known trademarks.”"

Fresh blow for Meghan Markle and Prince Harry as Archetypes patent bid fails amid Kate Middleton rumours; Scottish Daily Express, June 22, 2023

Douglas Dickie,  Scottish Daily Express; Fresh blow for Meghan Markle and Prince Harry as Archetypes patent bid fails amid Kate Middleton rumours

"Prince Harry and Meghan Markle have been dealt a fresh blow after an attempt to trademark their Archetypes podcast failed. The Sussexes had hoped to bag exclusive rights to the name as they look to find a new platform for it after splitting with Spotify.

But their hopes were dashed by the US Patent and Trademark Office which refused to grant the request due to potential confusion with an existing company. Meghan had produced just 12 episodes and a Christmas special of Archetypes for Spotify before the £18 million deal was ended...

However, it emerged that a trademark for Archetypes LLC already existed. An Arizonian firm claimed it in 2015 for use in a series of books and articles about "nutrition, fitness, sexuality, psychological self-improvement"."

Apple is trying to trademark depictions of actual apples; Mashable, June 19, 2023

 Cecily Mauran, Mashable; Apple is trying to trademark depictions of actual apples

"The ripple effects of Apple winning its legal battle would extend far beyond the tech world. The Fruit Union Suisse, a 111-year-old organisation, has a logo featuring a red apple with a white Swiss cross superimposed on it. But now the association could find itself in the position of having to change its logo because the FUS says Apple wants IP rights to all depictions of apples in general — not just the apple with the bite in it like Apple's iconic logo.

"We have a hard time understanding this, because it’s not like they’re trying to protect their bitten apple," Jimmy Mariethoz, director of FUS, said to Wired. "Their objective here is really to own the rights to an actual apple, which, for us, is something that is really almost universal … that should be free for everyone to use.""

Trademark Infringement Is No Joking Matter: Supreme Court Reevaluates Parody Fair Use Exception and First Amendment’s Place in Trademark Infringement; Lexology, June 12, 2023

Atkinson Andelson Loya Ruud & Romo, Lexology ; Trademark Infringement Is No Joking Matter: Supreme Court Reevaluates Parody Fair Use Exception and First Amendment’s Place in Trademark Infringement

"In a unanimous 9-0 decision, the U.S. Supreme Court ruled that when a junior trademark user uses a parody of a famous trademark as an indicia of source for its own goods, the junior user cannot rely on the First Amendment to shield it from liability for trademark infringement for artistic or so-called “expressive works,” nor the parody exception to trademark dilution claims under the Lanham Act.

The Supreme Court’s June 8, 2023, decision in Jack Daniel’s Properties v. VIP Products vacated an earlier decision by the Ninth Circuit, which had ruled in favor of the junior trademark user that was selling a dog toy—“Bad Spaniels”— that parodied a Jack Daniel’s whiskey bottle. In ruling that the Rogers test, previously used to protect First Amendment interests and “fair use” in the trademark context, is not applicable when an infringer uses such mark as a source identifier—i.e., as a trademark—for its own goods, the Court clarified a significant point of contention in trademark law."

US Supreme Court rules for Jack Daniel's in fight over parody dog toy; Reuters, June 8, 2023

 John Kruzel and Andrew Chung, Reuters; US Supreme Court rules for Jack Daniel's in fight over parody dog toy

"The 9-0 decision authored by liberal Justice Elena Kagan threw out a lower court's ruling that the pun-laden "Bad Spaniels" vinyl chew toy sold by VIP Products LLC is an "expressive work" protected by the U.S. Constitution's First Amendment. Jack Daniel's Properties Inc is owned by Louisville, Kentucky-based Brown-Forman Corp (BFb.N)...

Lower courts had ruled in favor of VIP Products after applying what is called the Rogers test, which has allowed artists to lawfully use another's trademark when doing so has artistic relevance to their work and would not explicitly mislead consumers about its source.

The test was crafted in a 1989 decision by the New York-based 2nd U.S. Circuit Court of Appeals in a case brought by Hollywood legend Ginger Rogers. The actress unsuccessfully sued to block the 1986 film "Ginger and Fred" from director Federico Fellini that referred to her famed dance partnership with actor Fred Astaire."

Registered Trademark Search; Arkansas.gov

 Arkansas.gov; Registered Trademark Search

"The Arkansas Registered Trademark Search is an online tool provided by the Arkansas Secretary of State’s office that allows individuals to search for and view registered trademarks in Arkansas.

Users can search for trademarks by the name of the mark, the owner of the mark, the registration number, or the description of goods or services associated with the mark. The search results provide information on the status of the trademark, including its registration number, registration date, and expiration date."

Surge in Trademark Fraud Scams Overwhelms Regulators, Applicants; Bloomberg Law, April 19, 2023

Riddhi Setty, Bloomberg Law ; Surge in Trademark Fraud Scams Overwhelms Regulators, Applicants

"An unprecedented surge in applications for US trademarks has unleashed an equally extraordinary rise in fraud schemes targeting applicants, leaving investigators struggling to keep up."

Trademark scams: how to avoid them and what to do if you get fooled; USPTO Webinar, Thursday, April 27, 2023 2 PM - 3:30 PM EDT

 "Trademark scams: how to avoid them and what to do if you get fooled

Trademark scams are on the rise, and bad actors are using increasingly devious and creative means to fool USPTO customers. Whether you're a trademark owner, applicant, or practitioner, you'll want to register for this important webinar on April 27, from 2-3:30 p.m. ET.

During an engaging panel discussion, our experts will give you practical tips for protecting yourself, your brand, and your clients from bad actors who:

• Trick trademark owners into paying unnecessary fees
• Engage in unauthorized conduct
• Spoof legitimate attorneys and entities
• Commit other fraudulent activities

A 30-minute question-and-answer session will follow the panel discussion. You may submit your questions before the event to TMWebinar@uspto.gov

We'll post a recording of this event to this page within three weeks of the event. All registrants will receive an email with the video link when it is ready.

Register today

Speakers

• Sarah Franz, Staff Attorney, Electronic Filing and Public Web Services
• David Mayer, Staff Attorney, Trademark Legal Policy Office
• Dustin Bednarz, Staff Attorney, Trademark Legal Policy Office"

DC Dubliner sues Boston pub with same name for trademark infringement, report says; Mass Live, March 17, 2023

Ryan Mancini, Mass Live; DC Dubliner sues Boston pub with same name for trademark infringement, report says

"In the tale of two Dubliners, the almost-half-century-old Washington, D.C., Dubliner pub is suing a newly opened Boston pub of the same name over trademark infringement and claiming that another pub with the same name would cause confusion, according to Universal Hub’s reporting. 

The Washington Dubliner’s suit against the East Coast Tavern Group requests that it change the Boston pub’s name and transfer its profits made under the Dubliner name to the D.C. establishment."

Bad Spaniel's: barking the line between permitted parody and trademark infringement; Reuters, February 15, 2023

Deirdre M. Wells, William H. Milliken, and Kristina Caggiano Kelly, Reuters; Bad Spaniel's: barking the line between permitted parody and trademark infringement

"The 9th Circuit ultimately vacated the district court's judgment on trademark infringement, based on the two-part Rogers test. The Rogers test was established in the 1989 2nd U.S. Circuit Court of Appeals decision in Rogers v. Grimaldi, and balances trademark and free speech rights. Under this test, a trademark can be used without authorization as long as it meets a minimal level of artistic expression and does not explicitly mislead consumers.

To overcome VIP's First Amendment right to humorous expression, Jack Daniel's was required to show that VIP's use of its trademarks is either (1) not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work. The trial court did not apply the Rogers test as part of its analysis...

The 9th Circuit's application of the Rogers test — which has traditionally been used for expressive works like movies, music, and books — to the commercial setting has garnered the attention of attorneys and brand owners alike. The outcome of this case has far-reaching implications for gag gifts, novelty T-shirts, and even subtler fashion products."

Lizzo Granted Trademark for '100% THAT Bitch' in Reversal After Application Was Rejected; People, February 2, 2023

Glenn Garner

, People; Lizzo Granted Trademark for '100% THAT Bitch' in Reversal After Application Was Rejected

"The USPTO's Trademark Trial and Appeal Board (TTAB) reversed its decision after rejecting Lizzo's application last year.

An examining attorney previously argued that the phrase is "a message of self-confidence and female empowerment," which fans "may associate" with Lizzo, but "does not entitle the applicant as a singer-songwriter to appropriate for itself exclusive use of the phrase.""

What Does It Mean to Trademark a Color?; Atlas Obscura, January 27, 2023

ANNIE HARIHARAN, Atlas Obscura; What Does It Mean to Trademark a Color?

The signature shade of Marrakesh’s Jardin Majorelle is legally protected—but the deep blue hue is also common in Moroccan culture.

"The trademark on Majorelle blue might have limited people’s access to this particular shade of blue paint, but they have other means for creating color. For example, the plant Indigofera tinctoria is widely available in Morocco and is used to create affordable indigo dye or powder. There is no need to rely on the supply in Jardin Majorelle. As artist Najoua El Hitmi explains, “I paint and do industrial art and sculptures. If I want a particular shade of blue, I experiment and add different pigments.”

Yet, the question is more than who can access or mix blue paints. It’s about who gets to lay claim on colors. Samir Ghoudrani’s family home is walking distance from Jardin Majorelle, but he only recently found out about the trademark and Majorelle’s deep association with the ultramarine color. “I understand if as an artist, you want to own the painting that you drew. But this is like wanting to own the colors. Imagine a singer who wants to own not just a song, but the sound.”"

The Day Before developer forgets to trademark game, delays release for nine months; EUROGAMER, January 25, 2023

Victoria Kennedy , EUROGAMER ; The Day Before developer forgets to trademark game, delays release for nine months

"Developer Fntastic has announced The Day Before will not be releasing as expected on 1st March. Instead, its zombie MMO is now set for release on 10th November. 

The reason for this fairly sizable delay? The developer claims it did not trademark the game's name and now someone else has done so instead."

'Did we win?' While he was in hospital, Damar Hamlin's reps filed to trademark two phrases; Buffalo News, January 11, 2023

Michael Petro, Buffalo News; 'Did we win?' While he was in hospital, Damar Hamlin's reps filed to trademark two phrases

"Before Buffalo Bills safety Damar Hamlin even left the University of Cincinnati Medical Center, his representatives were taking steps to trademark two phrases that had become linked to his recovery.

Hamlin is looking to trademark “Did we win” and “Three is back,” according to filings from Jan. 6 with the United States Patent and Trademark Office.

The 24-year-old, second-year professional has received an overwhelming show of support from fans and the sports community after the injury he suffered during a Jan. 2 game, but some people and businesses have tried to cash in on that interest through the use of catch phrases like, “Did we win,” which is this first thing Hamlin asked doctors when he awoke from an induced coma."

Adidas loses stripes row trademark battle with luxury designer Thom Browne; BBC News, January 13, 2023

Alex Binley, BBC News; Adidas loses stripes row trademark battle with luxury designer Thom Browne

"While Adidas launched legal action in 2021, the battle between the two companies dates back more than 15 years. 

In 2007, Adidas complained that Thom Browne was using a three-stripe design on jackets. Browne agreed to stop using it and added a fourth stripe.

Since then Thom Browne Inc has expanded rapidly and is now sold in more than 300 locations worldwide, and in recent years has been creating more athletics wear...

A spokesperson for Adidas said the company was disappointed but will "continue to vigilantly enforce our intellectual property, including filing any appropriate appeals".

A spokesperson for Thom Browne Inc said the company was pleased with the outcome. Speaking to the Associated Press, the designer said he hoped the case would inspire others whose work is challenged by larger companies.

"It was important to fight and tell my story," he said.

Documents used in the case showed that Adidas has launched more than 90 court battles and signed more than 200 settlement agreements since 2008 related to its trademark." 

Mickey Mouse's Impending Copyright Expiration Explained; Screen Rant, January 8, 2023

CLOTILDE CHINNICI, Screen Rant; Mickey Mouse's Impending Copyright Expiration Explained

"It seems likely that Disney will maintain its copyright over Mickey Mouse for the foreseeable future. In particular, Mickey Mouse will remain under Disney's property because it is a registered trademark. In fact, this would let Disney keep ownership of Mickey Mouse as its trademark potentially forever, thus allowing Mickey Mouse to feature in future and upcoming Disney films. Unlike copyright, which expires after a certain amount of years, trademark protection can endure in perpetuity, as long as Disney can claim that the character of Mickey Mouse is associated with the Walt Disney company itself.

Ultimately, Mickey Mouse will still to be a legally protected Disney product. The strong association between Disney and Mickey Mouse, one that the company itself has invested in, represents a strong protection for Disney as the trademark will not expire any time soon, giving Disney control over Mickey Mouse. Despite the copyright law and Steamboat Willie's copyright expiration, Disney's approval is still required for others to use Mickey Mouse material, even the one that will eventually become public domain, in anything outside of fair use, thanks to the mouse's trademark protection."

Trademarks in the metaverse — artistic expression or commercial product?; Reuters, January 5, 2023

Dorothy R. Auth

, Howard Wizenfeld

 and A.J. Harris

, Reuters; Trademarks in the metaverse — artistic expression or commercial product?

"While the Rogers decision was initially limited to movie titles, courts have variously expanded its application to books, songs, video games, and even commercial items such as dog toys, with particular expansion occurring in the 9th U.S. Circuit Court of Appeals. The extent of its scope is now at issue at the U.S. Supreme Court. While virtual goods present issues different from physical goods, how courts determine the metes and bounds of the Rogers test will be determinative of how NFTs are analyzed."

Trying to Trademark ‘Rigged Election,’ and Other Revelations From the Jan. 6 Transcripts; The New York Times, January 2, 2023

Luke Broadwater, Maggie Haberman, Alan Feuer and Emily Cochrane, The New York Times; Trying to Trademark ‘Rigged Election,’ and Other Revelations From the Jan. 6 Transcripts

The Jan. 6 committee released a whirlwind of documents in its final days and wrapped up its work on Monday. 

"Mr. Trump himself saw the push to overturn the 2020 election as a financial opportunity, moving to trademark the phrase “Rigged Election.”

These were among the latest revelations from the House Jan. 6 committee, which released a whirlwind of documents in its final days and wrapped up its work on Monday."

Here’s How the Supreme Court Could Impact Creative Trademark Use; Bloomberg Law, December 29, 2022

Dorothy Auth, Cadwalader, Wickersham & Taft, Howard Wizenfeld, Cadwalader, Wickersham & Taft, Bloomberg Law; Here’s How the Supreme Court Could Impact Creative Trademark Use

"The upcoming term for the US Supreme Court includes an ambitious schedule of intellectual property cases, spanning patent, trademark, and copyright law...

Jack Daniel’s

Jack Daniel’s Properties, Inc. v. VIP Products LLC addresses creative works in the context of trademark law, asking whether humorous use of another’s trademark is protected by the First Amendment. 

Under normal circumstances, a trademark infringement is determined based on whether the use of another’s mark is “likely to cause confusion” with that of the trademark owner.

However, when a mark is used in an artistic manner, courts instead use the Rogers test, which is intended to protect the free speech. Unlike the likelihood-of-confusion test in the Lanham Act (Trademark Act of 1946), the Rogers test allows use of another’s mark as an expressive work unless the use contains no artistic relevance or explicitly misleads about the source or content of the work.

As a result, the Rogers test narrows the scope of protection for the mark. Here, VIP created a squeaky toy named “Bad Spaniels,” closely resembling Jack Daniel’s famous whiskey bottle and label.

While the original bottle has the words “Old No. 7 brand” and “Tennessee Sour Mash Whiskey,” the toy humorously proclaims, “The Old No. 2 on Your Tennessee Carpet” which is “43% Poo by Vol” and “100% Smelly.” 

Should the court affirm the squeaky toy is an expressive work, for being humorous, under the Rogers test, or should a traditional Lanham Act analysis be applied? The court’s answer may have significant implications for companies that sell items with a humorous message based on another’s trademark."