Since Halloween candy is already in stores (why…?), we‘re here to tell you some trademark tales that are sure to make you shiver – if you care about your pocketbook, that is. We’ve encountered these spooky situations – with worldwide implications — when we’ve been brought in to clean up. (Who you gonna call? Faegre Drinker!)
This time last year, we introduced a series of blog posts in which we provided an overview of the new ex parte examination and expungement proceedings introduced by the Trademark Modernization Act (“TMA”) and pondered a question sure to be on the minds of many a practitioner – will these proceedings truly be a faster and more efficient vehicle for removing improper trademark registrations from the registrar? While the answer to this question is yet to be seen, the first six months of proceedings have provided some insights to consider when assessing whether an expungement or reexamination proceeding is the right option for you.
Graduates of The Ohio State University (“Ohio State”) are familiar with fans and supporters (and sometimes, Michigan fans) placing an emphasis on the “THE” when saying the school’s name. But the United States Patent and Trademark Office’s (“USPTO”) recent decision1 to grant federal trademark registration No. 6,763,118 to Ohio State for the most popular word in the English language2 has garnered much mainstream media attention and confusion. This blog post provides a brief overview of the background and potential implications of this registration.
How did Ohio State register such a common word?
Ohio State first applied to register the word THE in 2019 in connection with Clothing, namely, t-shirts, baseball caps and hats3. The application was initially refused4 by the USPTO because: (1) a third-party clothing company had already filed an application for the word THE beforehand; and (2) because the mark was “merely ornamental” (in other words, the USPTO believed that THE did not function to indicate the source of Ohio State’s clothing goods). Ohio State eventually overcame those issues by submitting evidence and images to demonstrate that THE had source-indicating function, and by entering into a consent agreement with the third-party clothing company5. With these issues both resolved, and no additional refusals or challenges being raised, the USPTO granted a federal registration to Ohio State for THE on June 21, 2022, to many commentators’ surprise.
First released in 2000 and updated in 2013, the FTC’s .com Disclosures guidance has been relied on by advertisers hoping to “make effective disclosures in digital advertising” for the last two decades. The FTC’s Leslie Fair recently explained that the guidance has grown a bit stale, especially in light of how quickly technology changes. In a June 3, 2022 blog post, Ms. Fair shared that the .com Disclosures document would be getting a “start to finish reboot, given the major changes in advertising tactics and techniques that marketers use.” In connection with this effort, the FTC issued an extensive Request for Information from the public, with all comments due to the FTC on or before August 2, 2022. Being aware that new guidance is likely coming sometime in 2023 is useful as a “save-the-date” and makes the advertising law nerds among us excited, but an update to the .com Disclosures also has practical implications.
Due to the sheer volume of recent media coverage, readers of this blog are likely familiar with the “metaverse,” or the idea of a virtual world where users can interact with an immersive computer-generated environment, objects, and other users. But why does anyone care about trademarks in the metaverse? Put simply, trademarks are almost certain to insert themselves in several scenarios in these immersive environments that are designed to be an extension or replica of the real world, such as:
- Creation of virtual shops to buy branded “virtual” goods;
- Branded virtual services, such as fitness classes, concerts, performances, or sporting events;
- Product placement, such as virtual characters wearing branded virtual goods or display of virtual advertisements within the metaverse; and
- Real and virtual combination marketing, where buying a real-world product allows the user to obtain a copy of the product in the virtual world as well for use in the metaverse.
The last thing the parties to a class action settlement want to see is an objection from state Attorneys General (AGs). AG objections to class action settlements are relatively rare and courts tend to give AG objections more weight than objections from private parties. Not all AG objections are successful, however, and in the recent consumer fraud case of Hesse v. Godiva Chocolatier, Inc., No. 1:19-cv-972-LAP (S.D.N.Y.), a six-state objection filed by the AGs of Florida, Idaho, Maryland, New Jersey, Ohio, and Utah failed to persuade Judge Loretta Preska to reject the proposed settlement.
Hesse concerned Godiva’s use of the word “Belgium” in labeling and promoting its products. According to the complaint, this practice led consumers to believe, incorrectly, that Godiva’s chocolates are made exclusively in Belgium and to pay higher prices for these products than they otherwise would have. The parties’ proposed settlement of those claims is fairly standard stuff. Anyone who purchased Godiva chocolate products between 2015 and last year could file claims to recover $1.25 per purchase. Class members with proof of purchase could recover up to $25 (for 20 purchases); those without proof were capped at $15 (for 12 purchases). Plaintiffs claimed actual damages to be $0.46 per purchase, so they characterized this relief as more than full recovery.
So you’re launching a new product line worldwide. Or maybe you’re rebranding a division of your global business. Or perhaps you’ve recently conducted an audit of your trademark portfolio and noticed several gaps in coverage.
Regardless, you’re ready to file new trademark applications around the world ‒ and we’re sure you want to make these filings as efficient and cost-effective as possible.
One way to keep costs down is to take advantage of trademark application filing systems that cover multiple jurisdictions. These systems allow you to register a trademark in more than one country by filing only a single application.
Western companies with trademark rights in Russia are feeling the ripple effects of the Ukrainian conflict. In response to the economic sanctions and boycotts imposed by the U.S. and other Western countries, Russia has threatened to suspend the intellectual property rights of companies that have ceased operations in Russia. Additionally, there has recently been an increase in bad faith trademark filings for various brands across a wide range of industries from Chanel to Audi. Moreover, it appears that Russian courts may allow the infringement and misappropriation of trademarks owned by Western companies in light of a recent decision involving the character Peppa Pig, where the court cited sanctions as a basis for refusing to recognize the Western-based company’s intellectual property rights in the popular cartoon character.
Even those businesses with longstanding ties within Russia don’t appear to be safe. Certain companies closing locations in the country in response to the conflict in Ukraine are finding that third parties are filing trademark applications for blatant replicas of their brands. Even more disturbing is that should the Russian government decide to remove trademark protections for Western companies altogether, then a third party could step in and offer goods and services under identical marks. Depending upon how things play out in Russia, Western brand owners are in serious danger of losing their intellectual property investments in the country. Exacerbating the problem for these brands is that finding local counsel willing to assist them may be extremely difficult. Fear for personal safety and the threat of retribution may encourage many trademark attorneys in Russia to steer clear of matters involving companies from “unfriendly” countries.
Non-fungible tokens (“NFTs”) continue to dominate the crypto-zeitgeist. It is beyond dispute that they are currently a major economic and cultural force. In 2021, sales surged to approximately $25 billion. They have been featured in high profile television commercials during the Olympics and the Super Bowl. And Nike recently purchased the NFT developer RTFKT Studios, signaling its intention to be a dominant provider of digital fashion in the metaverse.
Despite all this, it remains unclear what legal rights are conveyed with the purchase of an NFT. The academic consensus is that, absent a “smart contract” that expressly includes intellectual property (“IP”) rights, purchasing an NFT does not convey any copyrights or trademark rights. Yet, the creation of an NFT (called “minting”) is almost certainly limited by recognized IP and other legal principles. These issues have begun to percolate up through the courts.
This article explores lingering, undefined NFT questions through the lens of several pending lawsuits. While many articles just describe the facts of each case, this article focuses on the most interesting legal arguments that each makes. It also identifies how decisions by these courts may form the basis of property rights within the metaverse. And ultimately, it questions whether the emergence of such lawsuits undermines blockchain as a decentralized institution.
Earlier this month sports apparel giant Nike sued StockX LLC, a Michigan-based sneaker and streetwear resale marketplace, for offering to its customers non-fungible tokens (NFTs) depicting Nike’s sneakers. The claims asserted in the February 3 complaint filed in federal court in the Southern District of New York include trademark infringement, trademark dilution and unfair competition, all stemming from inclusion of Nike’s trademarks (e.g. Nike, Air Jordan, Jumpman, the “Swoosh” Design) in the shoe images depicted in the NFTs provided by StockX.
This is not the first case of its kind. In January, Hermes sued a digital artist for unauthorized reproductions of its well-known Birkin bag in a line of NFTs released by the artist called “Metabirkins.” And before that, in November 2021, Miramax – the studio that produced the 1994 cult movie classic Pulp Fiction – filed suit to enjoin Quentin Tarantino from releasing NFTs based off of his original handwritten script of the movie, including scenes from an early script that were cut from the final version.