Blog-inomia: federal trademark issues in the news.
Clash Of The Mammoths
The News: A lawsuit filed in U.S. District Court in Utah claims the Utah Mammoth (an NHL hockey team) and Mammoth Hockey LLC (a manufacturer of hockey equipment) have reached a stalemate in the trademark fight.
The Source: https://apnews.com/article/nhl-utah-mammoth-lawsuit-13054a0ec489d940bab443fa924e3b70
The Takeaway: This highlights the reason why paying for trademark registration now can avoid massive legal bills and a forced rebranding later. Just like in the Buc-ee’s example, costly trademark disputes can bubble up for local businesses years after they started using their trademark in commerce on a purely local level.
Federal trademark registration comes with a presumption that the trademark belongs to you and only you — nationwide.
Even if you have no plans to expand beyond your local market, federal trademark registration helps protect you from a larger out-of-state corporation appearing out of nowhere and deciding they want to take your local market from you.
Click here to book your federal trademark consultation.
Buc-ee’s Ltd. v. Beaver’s Mini Mart
The News: Convenience store giant Buc-ee's filed a federal infringement suit against an Ohio small business, Beaver's Mini Mart, claiming its logo infringes on Buc-ee's registered buck-toothed beaver mascot.
The Takeaway: This highlights the way that a national brand with a federal trademark can cause problems for local stores or chains.
It’s possible for smaller businesses to operate under a problematic or vulnerable name for years without attracting the attention of a larger corporation with a registered trademark.
But once that larger corporation takes notice of the smaller one, they are likely to start throwing their weight around.
This is one of the reasons it’s a good idea to get out in front of trademark disputes by consulting a trademark attorney.
Uncrustable And Untouchable
The News: Smuckers sued Trader Joe’s for making PB&Js that are allegedly too similar to its Uncrustable brand.
The Source:https://www.fox5ny.com/news/smuckers-uncrustable-lawsuit-against-trader-joes-allowed-proceed
The Takeaway: There are lots of ways someone can infringe on your brand, which is a problem because what they are doing is trading on the hard work you put into developing a reputation with your customers.
The good news is there are also ways to get out ahead of problems to avoid costly litigation or losing the right to use your name down the road. It starts with a consultation.
Sound Matters Too
The News: This dispute from back in April featured an interesting issue in determining similarities of brands. In IYO Inc. v. OpenAI, a federal judge questioned OpenAI during a preliminary injunction hearing regarding its acquisition and planned commercial use of the "IO" mark for AI-powered hardware devices. Audio startup IYO Inc. claimed the proposed mark infringes on its identical-sounding registered trademark.
The Source:https://news.bloomberglaw.com/ip-law/openais-io-move-is-red-flag-in-trademark-suit-judge-says
The Takeaway: Sound would not show up as a potential issue if you’re simply doing a search on USPTO for the spelling of a mark. When two marks sound the same and involve the selling of overlapping goods or services, the application mark is most likely doomed.
Trademark attorneys know to be on the lookout for that issue, which is only one of the reasons it’s a good idea to consult an attorney about your intellectual property needs.
You can book your federal trademark consultation with Equinomia Legal here.
Taylor Swift Finds Out About Likelihood Of Confusion
The News: In March of this year, Las Vegas columnist Maren Wade filed a federal trademark lawsuit against Taylor Swift in California, alleging that Swift's branding for The Life of a Showgirl creates reverse confusion with Wade's federally registered mark, "Confessions of a Showgirl."
The Source:https://apnews.com/article/taylor-swift-showgirl-lawsuit-1e65b44eb6cca03297a712f1d247e3bf
The Takeaway: There’s a lot of risk in choosing to continue to use a name for your brand or business after the USPTO rejected that name as confusingly similar to a federally registered name. And not everyone has Taylor Swift levels of wealth to fall back on.
If Taylor Swift had asked me, I would have advised against it.
You can ask me your intellectual property questions by booking your federal trademark consultation with Equinomia Legal here.
Likelihood Of Confusion Battles With First Amendment
The News: The U.S. Supreme Court ruled that commercial parodies are not automatically shielded by the First Amendment when a humorous design is used directly as a trademark/source identifier.
The Source: https://newslink.reuters.com/public/30917311
The Takeaway: Likelihood of confusion is a potent brand killer. It can rise up after years of operation and force you to abandon all of your hard work and financial investment in your brand. Parody was a common First Amendment workaround, but even that has limits. This is one of the reasons it is so important to consult an attorney about the risks associated with a particular name.
For the best chance to avoid similar problems in your trademark application, you can book your federal trademark consultation with Equinomia Legal here.
Why Businesses Need A Comprehensive Federal Trademark Clearance Search
The News: The Trademark Trial and Appeal Board (TTAB) affirmed a refusal of Serena Williams' application for "SERENA VENTURES" because someone else in Florida had already registered "SERENA" for overlapping financial services.
The Takeaway: The comprehensive federal trademark clearance search is vital to trademark registration.
It’s possible a comprehensive search could have missed the existing registration, but it’s very unlikely. And a refusal based on “likelihood of confusion” apparently cannot be overcome with fame and money alone.
For the best chance to avoid similar problems in your trademark application, you can book your federal trademark consultation with Equinomia Legal here.