The State of Illinois is home to a big new battle over the rights to use marks related to male grooming. You have definitely heard the words “manscaping” and “manscaped” used before, and now they are basically the subject of a federal court trademark dispute.
Is the domain name “OrderMyOil.com” entitled to common law trademark protection? An appellate court in Massachusetts has answered in the negative.
In 2019, if you want a quick, easy way to send or receive money without paying a fee, you are likely using the app Venmo. It has become so popular that people will often ask to be Venmo’d money. As can be the case, a noun becomes a verb based on heightened usage.
The rock band Guns N’ Roses has been around since 1984 and is a known name in the music industry to just about everyone in the United States. While the band members have spent most of their lives creating and performing music, they are now going to be occupied with litigating a trademark infringement lawsuit in federal court.
MomoMilk LLC, the owner of trademark registrations to the word mark “MILK BAR” and design marks for a stylized versions of “milk,” has filed a federal lawsuit against Milk Bar, LLC in Illinois. The plaintiff claims that the defendant has infringed on its trademarks based on the defendant’s use of a confusingly similar stylized design mark for “jojo’s milkBAR” in connection with a bar and confectionery it opened in Chicago.
In some trademark cases, the plaintiff sues the defendant for trademark infringement based on what is considered to be a reverse-confusion theory. This means that the plaintiff believes that consumers will mistakenly believe that the defendant is the source, affiliate or sponsor of the plaintiff’s product or service.
I thought that one of the better Super Bowl XLIII advertisements was delivered by Expensify, because it simply demonstrated the value of its service in an effective manner. It appears that a competitor is trying to benefit from Expensify’s Super Bowl exposure, which has led to the filing of a lawsuit by Expensify for trademark infringement, unfair competition and unjust enrichment.
Lululemon Athletica is suing Under Armour under claims of patent and trademark infringement, for allegedly copying a sports bra design. The “$52 Energy Bra – which has four straps that crisscross in the back – does it all,” according to Lululemon. Four of Under Armour’s sports bras, including “Under Armour’s Armour Eclipse Low Impact”, “Armour Shape Low Impact,” “Under Armour On the Move”, and “Under Armour Printed Scrappy Bra” sports bras, ranging from 20 to 40 dollars, are at issue.
Trademark suits can be quite complex for either side and Heitner Legal can help navigate you through that complexity. Heitner Legal has a great deal of experience when it comes to trademark lawsuits, having represented both Defendants who were being sued for trademark infringement, and having represented Plaintiffs who were suing someone else for the same, as well as transactional trademark work.
For Lululemon to succeed on trademark infringement, Lululemon will need to show that there is a likelihood of consumer confusion as a result of Under Armour’s use.
Lululemon claims the similarities “may cause irreparable damage” to its reputation. Lululemon also added that the infringement in dispute was conducted knowingly, willfully, and in bad faith, and with knowledge of Lululemon’s rights, and marketed to the identical group of consumers as Lululemon via the same channels of trade.”
Moving to the other side, Under Armour’s strongest defense may be the fact that there is not a strong likelihood of consumer confusion, as a result of their own use of the design because of the Under Armour Logo being printed on the back. With the well-known Under Armour logo right on the sports bra, how are customers likely to confuse the designs?
An online golf apparel company called I Made Bogey is being sued by Tltleist. As Deadspin stated in its report, I Made Bogey “sells products with slogans you’d expect to see on the Wildwood boardwalk.” The majority of products on the site are parodies of Titleist, with the name “Titties.” Titleist, through its parent company, Acushnet, has filed suit against I Made Bogey for unfair competition, trademark infringement, and dilution, according to Bloomberg.
I Made Bogey sold hats, golf towels, sunglasses, ball markers, tees, and other products with “Titties” printed thereon. An Instagram post sponsored by I Made Bogey, using the hashtag “golf porn,” and also including a picture of the “Tittie’s hat” next to a naked woman’s torso was another issue in dispute.
Trademark suits can be quite complex, and Heitner Legal can help guide you through those legal issues. Heitner Legal has a great deal of experience when it comes to trademark lawsuits. That experience includes having represented both Plaintiffs who are suing someone else for trademark infringement and/or dilution, and having represented Defendants who were being sued for the same, as well as transactional trademark work.
In the aforementioned Titleist lawsuit against I Made Bogey, Titleist claims both trademark infringement and dilution. To prevail on trademark infringement, Titleist will need to demonstrate that there is a likelihood of consumer confusion as a result of I Made Bogey’s use of the mark. To also succeed on dilution, Titleist needs to show that either its reputation its tarnished or its brand name identity is blurred as a result of the “Titties” products from I Made Bogey.
As Acushnet, the parent company of Titleist, has pointed out “I Made Bogey intentionally creates an unwholesome and undesirable association—one involving a patently offensive and obscene reference to sexual organs and sexual activity,” and that I Made Bogey “tarnishes plaintiff’s Titleist brand identity and reputation.” Acushnet also said that “I Made Bogey’s actions are offensive not only to women, but to consumers in general.” In addition to Acushnet’s statements, “Titties” is also written in a scripted font on I Made Bogey’s products just like “Titleist.”
On the other side, I Made Bogey’s defenses consist primarily of the parody and free speech defense. By definition, a parody is “a humorous or satirical imitation.” Under the First Amendment of the U.S. Constitution, individuals are afforded free speech, and such free speech might include expression in a manner that may poke fun at something else. I Made Bogey’s argument is that there is not a likelihood of confusion as a result of their own use of the mark, and basically that the joke is obvious to consumers.
This past week, Under Armour and Nike Inc. reached a settlement agreement regarding the trademark infringement lawsuit initiated by Under Armour for Nike’s alleged illegal use of the “I Will” slogan. As a result, Under Armour’s complaint was dismissed Monday, February 10, pursuant to an approved court order by a Baltimore U.S. District Judge—almost one year to the date Under Armour filed its original lawsuit, February 21.
In the lawsuit, Under Armour alleged that Nike infringed upon its trademark phrase “I will” by using the slogan in social media ads such as “I will finish what I started” and “I will sweat while they sleep.” With the lawsuit, Under Armour sought damages and injunctive relief, hoping to prevent Nike from continuing to use the phrase or a substantially similar slogan in relation to its products. While the terms of the settlement agreement were undisclosed, it can be assumed that Under Armour was able to achieve at least the latter part of the remedies it sought with its claim.
The crux of Under Armour’s lawsuit rests on its belief that the average consumer would be confused as to whose products they were purchasing if both companies were to utilize slogans incorporating “I will.” For such a determination on this issue, courts typically look at a distinct set of seven factors to help decide it the moving party has a claim for asserting likelihood of confusion. These seven factors are: (1) the strength of the mark allegedly being infringed; (2) the similarity between the infringed and infringing marks; (3) the similarity between the goods and services offered under the two marks; (4) the similarity of the sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) the similarity between the holders advertising methods; (6) the intent of the alleged infringer to benefit off the infringed party’s established good will; and (7) the existence of actual confusion in the consuming public.
However, another claim that Under Armour could have possibly utilized in its lawsuit against Nike is that the company’s use of the “I will” slogan was effectively diluting Under Armour’s use of the slogan in commerce. Within trademark law, there are two main theories of dilution: (1) tarnishment; and (2) blurring. By pleading dilution, Under Armour does not have to prove that a likelihood of confusion exists among its customers as it relates to the purchase of products utilizing “I will.” Under the first category, dilution by tarnishment occurs when a famous mark is improperly associated with an inferior or offensive product or service. Courts typically find tarnishment when a famous trademark—and the mark must be famous—is wrongfully associated with another mark that pertains to nudity, pornographic material, or drugs. Because Nike, as an athletic apparel merchandising factory, unquestionably does not fall within any of these categories, it is more likely that Under Armour would have pursued a dilution claim under the second category. In order to determine dilution by blurring, federal law specifies six non-exhaustive factors for the courts to consider: (1) the degree of similarity between the mark or trade name and the famous mark; (2) the degree of inherent of acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark. While these elements, viewed on its face, seem similar to the likelihood of confusion factors, it is important that a likelihood of confusion is not need in order to prove a dilution claim.
By claiming the “I will” slogan as one of the “cornerstone symbols” of the company, Under Armour essentially stakes its claim that the phrase is widely recognized as famous enough to warrant protection. Consequently, looking at the factors, Under Armour could make a claim that all except the fifth element would be found in its favor. Any use by Nike of the “I will” slogan will undoubtedly be similar to any use by Under Armour, simply because the respective slogans utilize similar language. For example, compare Nike’s “I will protect my home court” to Under Armour’s “Protect This House: I will.” Additionally, Under Armour has a legit claim to assert that its slogan has acquired distinctiveness with relation to the company and its products due to the amount of advertising dollars put into promoting the slogan, the litany of merchandise it appears on, and the many years the phrase has been in public eye and ear. Also by bringing this claim, the company, for all intents and purposes, states that only it alone can use the phrase throughout commerce, effectively using this litigation as a way to claim substantial exclusivity with the phrase. As for element six, it is within the realm of possibility that Under Armour could produce surveys or questionnaires that, if presented to consumers, would serve as evidence of actual association. One way this could be achieved is by placing both previously mentioned examples side by side, and having consumers attempt to place either example with its respective company. If a substantial amount of consumers were to link Nike’s use of the phrase with Under Armour, actual association would be proved in Under Armour’s favor.
However, proving Nike’s intent in using the “I will” phrase will be a tough task because it requires digging into the company’s mindset for why it decided to use the phrase. If Nike sought to benefit on the goodwill established through Under Armour’s use of “I will”, it will be enjoined under dilution through blurring. However, if this element proves difficult to establish, as long as Under Armour sufficiently shows the other five elements weigh in its favor, it would still likely succeed on its blurring claim due to the fact that none of the six factors are dispositive.
By filing its trademark infringement lawsuit against Nike, Under Armour followed the advice of its own slogan and proclaimed it will protect its trademarks at all costs. Assuming Under Armour also included a dilution claim, it effectively protected its house with double sided protection against Nike, and other potential infringers.