The global COVID-19 crisis has created dynamic shifts in how businesses source and sell goods and services. Whether those shifts are temporary or will solidify into more permanent structures ushering in a “new normal” era of consumerism, remains to be seen. As I write this, it is the weekend after Memorial Day 2020. Just yesterday, my home state of Virginia commenced phase I of a graduated reopening of the state economy, while last weekend’s headlines focused on widespread defiance of stay-at-home orders and social distancing guidelines as the U.S. death toll climbed towards 100,000 (a milestone it has now passed). It is clear that there are limits to our willingness to stay home, and that bodes well for the survival of some brick-and-mortar retailers. But brick-and-mortar retail and business in general may look significantly different in a post-pandemic world. The companies emerging stronger will likely be those that use this time to rethink who they are, what they do, and how they do it — and the ways in which they convey that message to consumers.
As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark Office are (potentially) being blocked by someone who applied to register the phrase first.
For those uninitiated, “Big Truss” is the pet name for Ravens quarterback Lamar Jackson, coined by Mark Ingram, Ravens running back. Mark and Lamar’s well-documented bromance is one for the ages. The phrase first captured public attention when Mark Ingram uttered it in a November 21, 2019 press conference, although the origins of “Truss” appear to date back much further, to a 1991 album by Public Enemy, as this fascinating Baltimore Sun article explains. The BIG TRUSS application blocking Mr. Ingram’s attempts to register the phrase was filed on December 13, 2019 – 3 weeks after the aforementioned press conference, and candidly, a lifetime in the trademark world.
On June 28, the U.S. Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc. et al., agreeing to weigh in on the question of whether plaintiffs in trademark infringement cases must demonstrate that defendants acted willfully in order for plaintiffs to receive a portion of defendants’ profits.
Whether willfulness is a prerequisite to an award of defendants’ profits in trademark infringement cases is a question that has deeply divided the U.S. circuit courts. Half of the circuits have answered the question in the affirmative. The other half have answered the question in the negative. These latter circuits that do not require a threshold showing of willfulness merely view willfulness as one of many factors considered in fashioning an equitable remedy.
The ability of any individual, without access to sophisticated technology, to decipher the “authenticity” of any experience is diminishing daily. Moreover, this threat to the integrity of the law goes beyond digital impersonation and “deep fake” software driven by artificial intelligence. The famous Marx Brothers line, “Who ya gonna believe, me or your own eyes?” was once funny because it was ridiculous. Soon, it will be a description of our jobs and our lives.
If trademark infringement and dilution are frequent headaches for brand owners, counterfeiting – which the U.S. Trademark Act defines as use of “a spurious mark identical with, or substantially indistinguishable from, a registered mark” – is a migraine. As a practical matter, counterfeiting in most cases renders perfunctory the task of analyzing the “likelihood of confusion factors” required in traditional infringement cases. In counterfeit cases, the marks and goods are identical, and the counterfeit mark was applied with the intent to deceive consumers into believing that fake goods are genuine, so it’s reasonable to assume it will do exactly that.
In a September 6, 2018 webinar hosted by CompuMark, I presented on the very important topic of trademark watching services. Thanks to CompuMark for inviting me to speak, and to everyone who attended the webinar and asked great questions! (If all goes according to plan, future blog posts may cover some of the questions we ran out of time to answer during the webinar). For those who weren’t able to make the webinar during the live presentation, you can access a copy on CompuMark’s website (you’ll need to register on the right side of the screen).
Ever wonder what dance parties and trademark searching have in common? Neither did we. But I can’t deny this title reminds me of a dance party. Maybe because today is Friday (today is Friday, right?).
We often receive requests to file new applications for clients who have already cleared a potential mark through searching the PTO records and the Internet. If done properly, a bit of self-help can cut down on legal expenses. However, a proper preliminary search can be tricky – it involves more than just plugging the exact mark into the “basic search” feature on the PTO website here (“Quick Links” -> “TESS” -> “Basic Word Mark Search”) and hitting “submit query.”
As we mentioned last month in our kickoff post on this topic, we are excited to dive deeper into the world of sweepstakes and promotions law. This post explores several key elements to keep in mind when formulating the official rules and abbreviated rules for a promotion.
The main goal of the official rules in any promotion is two-fold: (a) to inform participants and the public regarding the details of the promotion, and (b) to comply with a series of federal and state laws and regulations. Both of these goals are critical – no company wants to face either disgruntled participants or angry regulators.
The rules must be in place and finalized before the promotion begins. If you are running a U.S.-based sweepstakes with a total prize value of over $5,000, you may also be required to register and bond the promotion with various state agencies up to thirty days before the promotion begins. Registration will require you to submit a copy of the promotion rules, so keep in mind that in those cases, the rules must be finalized at least thirty days before the beginning of the promotion. That means the clock is ticking! Depending on the type of promotion, other state laws and regulations may also be implicated, so be sure to check well before the beginning of the promotion. Continue reading
As we proudly admit on this blog’s “About Us” page, we’re passionate about all things brand related – and what better way to promote your brand than by running a sweepstakes or contest? At a time when we are seeing the “gamification” of every part of our lives, it should come as no surprise to see that many brands now include prizes and rewards as a significant component of their consumer outreach. Where once upon a time this was a niche explored by only a handful of large companies or fly-by-night operators, today, prize promotions are seen by many of our clients as among their most effective forms of advertising.
The concept is wonderfully simple: in a prize promotion, someone enters the promotion, and someone wins a prize. Yet this basic formulation encompasses a nearly endless number of variations, including sweepstakes, contests, games, trade promotions, sales incentives and viral engagement. Some of these variants are legal; some are not. And because we have been so passionate about sweepstakes and contests for so long, we’ve decided to explain the basics in a helpful, multi-post series on the topic. There’s a lot of nuance, and it would be impossible to cover it all in one place, but we think that once we’re done you’ll be as excited about this area of the law as we are. Continue reading
This past weekend, the Brand Activation Association (BAA), a division of the Association of National Advertisers (ANA), held its 38th Annual Marketing Law Conference in Chicago, Illinois. The author, along with two other members of Drinker Biddle’s branding team, attended the conference, which is widely regarded as one of the top conferences on marketing and advertising law, with deep practical legal content. The conference was co-chaired by legal counsel from Coca-Cola, Wells Fargo, and Twitter, and speakers included representatives from Airbnb, American Express, Buzzfeed, Expedia, Facebook, Intel, Lyft, MasterCard, McDonalds, Procter & Gamble, VISA, AT&T, WPP, Mondelez, Sears and at least 30 other companies. Continue reading