Category - "Branding"

Not So Punny After All? Parody After the Supreme Court’s Jack Daniel’s Decision

Share

Earlier this year, one of my colleagues posted a guide to parody under U.S. trademark law for those brands hoping to navigate trademark parody without crossing into trademark infringement or dilution. But as we all know, the legal landscape can change in just a few months, especially when the Supreme Court gets involved. In this post, we explore the Court’s recent decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC and discuss what, if anything, it changes for brands navigating that parody tightrope. (Spoiler Alert: Not that Much.)

For those unfamiliar, VIP Products makes a “Bad Spaniels” poop-themed dog toy designed to look like a bottle of . . . you guessed it . . . Jack Daniel’s whiskey. Unamused, Jack Daniel’s demanded VIP Products stop selling the toys, and the parties became embroiled in years-long litigation with Jack Daniel’s claiming infringement and dilution of its trademarks and VIP Products crying parody. While Jack Daniel’s was victorious in the district court, the joke seemed to have landed on more humorous ears in the Ninth Circuit, and the Court held that the “Bad Spaniels” toy was an expressive work warranting heighted First Amendment protection from trademark infringement claims. On the dilution issue, the Court found that the humorous nature of the product rendered the toys “non-commercial” and thus exempt from the dilution claim.

Continue reading “Not So Punny After All? Parody After the Supreme Court’s Jack Daniel’s Decision”

Protecting Your Certification Marks with Certainty

Share

A certification mark is an important business tool.  Displaying a certification mark on a product or on marketing materials indicates that a company’s offerings meet certain standards.  Consumers often look for items that have been tested and found to meet their desired standards, so use of a certification mark can provide businesses with a competitive advantage.

A certification mark doesn’t serve the same function as a source-indicating brand.  Instead of helping companies distinguish their offerings from others, certification marks show consumers that products or services have been “certified” as to a particular quality or characteristic.  For example, a certification mark may appear on food that originated in a specific geographic region or on a household product that contains certain materials.  A certification mark may also be used in connection with services that are provided by members of a union or other organization.

Continue reading “Protecting Your Certification Marks with Certainty”

Singapore – Where Global IP Professionals Came Together

Share

I just recently left Singapore, where the lush gardens and iconic city skyline served as the backdrop for The International Trademark Association’s (INTA) 145th Annual Meeting. This was the second time that INTA’s Annual Meeting was hosted in Asia and the first time in Southeast Asia. While the location was originally planned for the 2020 Meeting, as with most things in life, the pandemic put that on hold. Despite the immense humidity, 8,000 influential brand and IP professionals from around the world came to the Lion City to share their thoughts regarding future considerations for brand owners and the business of innovation.

One consistent theme throughout the conference was that new challenges are facing brand owners today. Several factors appear to be changing the landscape for brands across various industries including, without limitation, the facts that: (1) counterfeiting is on the rise; (2) the value of intangible business assets is increasing; (3) new countries are becoming IP powerhouses due to global trade; and (4) emerging technologies, such as artificial intelligence (AI), NFTs and the metaverse, are changing the way in which consumers interact with the world around them.

Continue reading “Singapore – Where Global IP Professionals Came Together”

College T-shirts and Trademarks – Ornamental or Protectable?

Share

As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen; it also touches on an important concept in trademark law: ornamental use of trademarks on T-shirts.

What is ornamental use?

Under sections 1, 2, and 45 of the Trademark Act, the United States Patent and Trademark Office (“PTO”) can refuse registration of a trademark on the ground that the applied-for matter is decorative and therefore does not function as a mark because it is merely ornamentation. In re Peace Love World Live, LLC, 127 U.S.P.Q.2d 1400 (TTAB 2018). Ornamental matter can include words, designs, slogans, or trade dress.

Continue reading “College T-shirts and Trademarks – Ornamental or Protectable?”

Branding Success: How to Select a Strong Trademark

Share

We all know a picture is worth a thousand words, but did you know a trademark can be worth BILLIONS of dollars? In fact, some of the top trademarks in the world are worth hundreds of billions. What’s the secret to this branding success? A strong trademark!

A trademark serves many purposes. Two of the more important purposes are: (1) identifying the source of a company’s or individual’s goods or services; and (2) indicating to consumers the quality or type of goods or services identified by the mark. Consumers rely on trademarks to make informed decisions about the goods and services they purchase or use.

Continue reading “Branding Success: How to Select a Strong Trademark”

Four Costly Trademark Horror Stories and How to Avoid Them

Share

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!)

Continue reading “Four Costly Trademark Horror Stories and How to Avoid Them”

The Ohio State University’s Federal Trademark Registration for “THE” – Can They Do That?

Share

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.

Continue reading “The Ohio State University’s Federal Trademark Registration for “THE” – Can They Do That?”

Considerations for Applying to Register Trademarks in Connection with Virtual Goods and Services ‒ An Overview on Protecting Your Brand in the Metaverse

Share

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.

Continue reading “Considerations for Applying to Register Trademarks in Connection with Virtual Goods and Services ‒ An Overview on Protecting Your Brand in the Metaverse”

Tips for developing an efficient worldwide trademark application filing strategy

Share

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.

Continue reading “Tips for developing an efficient worldwide trademark application filing strategy”