“Guns Up” is a slogan and hand signal used by Texas Tech University, originally as a way to counter the “Hook ’em Horns” symbol shown by the Texas Longhorns. It has grown in prominence to the point that the signal is often used as a victory sign at Texas Tech athletic events.
Myth: Filing one trademark application with the U.S. Patent and Trademark Office for a mark and receiving a registration will protect that mark for use with all goods and services.
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.
The Washington Redskins surprising success on the field this year may soon extend to the courtroom. In June of 2014, the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (PTO) canceled the registration of six trademarks belonging to the football team under the disparagement provision of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). This decision made national news due to the notoriety of the football team, who some thought might be forced to change its name in response.
However, in the recent case In re Tam, the United States Court of Appeals for the Federal Circuit held in an en banc split decision that the disparagement provision of the Lanham Act is unconstitutional. Appellant Simon Shiao Tam had been twice denied a trademark by the PTO for the name of his all-Asian-American bank, The Slants, under Section 2(a), which prevents the registration of immoral, deceptive, scandalous, or disparaging marks. The decision of the PTO was upheld by the TTAB and a panel of the Federal Circuit before the recent en banc decision that the disparagement provision of Section 2(a) is unconstitutional. The Federal Circuit subsequently vacated the TTAB’s holding that Mr. Tam’s mark is unregistrable and remanded the case to the TTAB for further proceedings.
This holding is a significant boon to the pending appeal by the Washington Redskins of the holding in Pro-Football, Inc., v. Blackhorse. In that case Judge Lee of the Easter District of Virginia upheld the TTAB’s decision to cancel the registration of the six trademarks belonging to the football team under the disparagement provision of the Lanham Act. The holding of In re Tam that the disparagement provision of the Lanham Act is unconstitutional provides support for the team’s appeal, but it is not binding on the Fourth Circuit where the Redskins have begun the process of appealing the decision by Judge Lee. As such, In re Tam does not guarantee victory for the Redskins in court. There is the possibility that the Fourth Circuit could view the issue differently and rule against the football team, creating a circuit split and likely garnering Supreme Court review.
There is also the possibility that the Redskins could be successful on their appeal in the Fourth Circuit, but on remand to the TTAB have their trademarks canceled under the one of the other provisions of the Lanham Act as either scandalous or immoral. The Federal Circuit ruled only that the disparagement provision was unconstitutional, leaving the constitutionality of the other provisions unclear. The TTAB would be free to cancel the trademarks under the scandalous or immoral provisions and then defend their decision in court.
While the holding of In re Tam does not guarantee that the Redskins are in the clear, it was certainly welcome news for the football team that enjoyed a year full of good surprises.
Last month, it was reported that prominent children’s store, Toys R Us, would be going after the trademark application filed by up-and-coming hair salon and boutique, Hair Are Us. On March 17, 2014, the popular hair extension business based out of Atlanta, Georgia –with additional locations in Miami, Florida and Los Angeles, California – filed for the trademark seen at the top of this article.
Due to the fact the contemplated trademark encompasses “Hair Are Us” and includes the phrase “Are Us” – words included as a substantial part of registered trademarks vigorously protected by Toys R Us’ parent company, Geoffrey LLC, such as “Babies R Us,” “Stickers R Us,” and even simply “R Us” – Toys R Us elected to oppose the application based on the grounds that the mark dilutes its family of marks and sounds confusingly similar thereto, thereby likely confusing consumers into believing that Hair Are Us is connected with other stores owned and operated by Geoffrey LLC.
Generally speaking, an opposition is a legal proceeding governed by the United States Patent and Trademark Office (USPTO) and allows a third party or an owner of a trademark to try and prevent registration of a pending application for a mark. This proceeding is triggered after the applied-for mark has been published in the Trademark Official Gazette (TMOG). Thereafter, the opposing party must file its opposition, or a request to extend its time to file an opposition, within thirty days of the date of publication. A trademark application may be opposed on absolute – i.e. the applied-for trademark is merely descriptive or generic – or relative grounds, such as the case here. The most common defenses to an opposition proceeding is that the mark was used prior to the opposing party’s trademark and/or that no likelihood of confusion exists between the marks, thus they should be permitted to co-habitat in the marketplace.
Roughly less than five percent of trademark applications are opposed each year. However, the fact that this is a low percentage should not deter start-up companies and other entities looking to establish their respective brands from conducting a thorough and extensive search of the USPTO before deciding on what their mark should be. Specifically, companies should seek guidance through the form of an advisory opinion detailing whether or not its proposed mark is available based on other applied-for and registered marks found within the USPTO, and the likelihood of registration of the mark in the event that it is.
A trademark not only serves as a company’s source identifier, but also as an outright statement to the purchasing public that what they are purchasing comes directly from or is endorsed by that company. As such, not only must trademarks be vigorously protected, but they also must be readily available at the outset so as to avoid the chances of a third party swooping in to enforce its rights and going after the company for unknowing infringement.
Trademark infringement lawsuits are costly and may extend for lengthy periods of time. Therefore, it is frugal to spend money now in order to save money later; as a result, advisory opinions should be one of, if not, the first expenses a start-up company makes.
The following article is a guest contribution by Benjamin Haynes, Esq. Haynes is a former Division 1 Basketball Player at Oral Roberts University and currently practices law in the State of Florida.
Background: Daniel Moore has been a famous sport artist for over 25 years. Most people are familiar with the work he has done for the University of Alabama. He has been producing historical football paintings of the Alabama football team since 1979. Moore had been painting for the school for 12 years before the University, in 1991, requested a licensing agreement to be signed between Moore and the University. There were a total of a dozen licensing agreements entered into between the parties from the years of 1991 to 1999. These licensing agreements granted Moore permission to portray the University’s uniforms, including the jersey and helmet designs and the crimson and white colors.
The first conflict between the parties arose in 2002, when the University informed Moore that he needed the University’s permission to depict the University’s uniforms because they are trademarked. Moore believed that he did not need permission to paint the historical events. Even though this disagreement arose, Alabama continued to sell Moore’s unlicensed work in campus stores, as well as display Moore’s work across campus.
However, in March of 2005, the University sued Moore in the Northern District of Alabama for breach of contract, trademark infringement, and unfair competition. Specifically, the University alleged that 1) Moore had breached several terms of his prior licensing agreements, and 2) Moore’s paintings, prints, calendars, mugs and other objects violated the Lanham Act by infringing the University’s trademark right in its football uniforms.
Procedural History: In 2009, the district court granted summary judgment in favor of Moore with regard to paintings and prints. However, the district court granted summary judgment to the University with respect to calendars, mugs, and other “mundane products.” Both parties appealed the decision, and on June 11, 2012, the appellate court ruled on the appeal.
The appellate court divided its opinion into the two categories, 1) the arguments of the respective parties with regard to a category of objects composed of paintings, prints, and calendars, and 2) arguments of the parties with respect to the objects composed of mugs and other “mundane products.” An in depth analysis of the courts reasoning is as follows:
I. Paintings, Prints, and Calendars.
1. Licensing Agreements: Ambiguity and Course of Conduct
First, the University believed that the prior licensing agreements from 1995- 2000 prohibited the use of unlicensed portrayals by Moore. The University’s main argument with regards to the licenses was that Moore was required to get permission in order to use the “licensed indicia” listed in the license. This section of the license was very broad and included a wide range of criteria. For example, the licensed indicia included the names, symbols, designs, and colors of the University. Further, the indicia included an Appendix B section which listed items and phrases such as “Roll Tide”, “Alabama”, etc. This section included the colors “Crimson PMS 201” and “Gray PMS 429” as well.
However, the court found that the design and colors of the uniforms were not specifically mentioned anywhere in the licensing agreement, or the appendix. Further, the court found that this language in the licensing agreement was very ambiguous on this issue.
While there was undoubtedly an ambiguity in the licensing contract, that alone was not enough for the court to rule against the University on this issue. Most courts will look at the course of conduct in order to determine the true intent of the parties with regard to ambiguity in a contract. This court used the following standard, “Where the contract is ambiguous to such a degree as to question the parties intent…. courts should examine the course of conduct and actions of the various parties….the construction placed upon a contract by the parties thereto, as shown by their acts and conduct, is entitled to much weight and may be conclusive upon them.” Am. Honda Motor Co. v. Williams & Assocs., Inc., 431 S.E.2d 437, 443 (Ga. Ct. App. 1993).
Thus, looking at the evidence established, the court found numerous instances where the University did not require Moore to seek permission to portray the University’s uniforms. For example, Moore sold over $12,000 worth of unlicensed calendars in Alabama’s campus store. Also, in 2001, the University asked Moore to complete a sketch on live television during a nationally televised football game. This sketch was unlicensed. Throughout all of these incidents, Alabama never sought to recover royalties on these unlicensed items, until they filed the law suit.
Therefore the court found, and rightfully so, that the parties’ course of conduct did not intend that Moore needed permission every time he sought to use the University’s uniforms in the content of his paintings, prints, and calendars.
2. Trademark Claims: Infringement, Likelihood of Confusion, First Amendment
The University’s next argument was that Moore infringed on Alabama’s trademark because the unlicensed use of the football uniforms created a “likelihood of confusion” for the buyers. Specifically, the University argued that the buyers would be confused that the University endorsed the product. The term likelihood of confusion is a term that the court uses in determining whether a trademark has been infringed upon. Alabama issued a survey which they stated established sufficient evidence to establish a likelihood of confusion.
The court found that Alabama’s trademark was a weaker mark and had only threatened to establish some likelihood of confusion. Alabama distributed a survey in order to prove that there was confusion between Moore’s unlicensed product, and the endorsed products of the University. The court stated that “the survey lacks strength because of its manner of taking, the form of the questions, the nature of the surveyed customers, and the number of responders. It involved only a single print, and the questions are loaded with suggestions that there is a “sponsor” other than the artist.” Id. Therefore, the survey was not sufficient to establish this burden of showing a likelihood of confusion.
While the court found that the likelihood of confusion argument had little merit, the court found that the First Amendment interests involved, specifically artistic expression, heavily outweighed any customer confusion.
When the court is determining whether one’s first amendment rights should or shouldn’t prevail over customer confusion, the court has implemented a balancing test. This balancing test was established in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The test states, “in general the (Lanham) act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Id. Further, the court found that a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or content of the work.” Id.
The court found that Moore’s use of the uniforms in his content was artistically relevant to the expressive underlying works, and also that there was no misleading as to the source of the content of the work.
Holding: Therefore, because there was no violation of the licensing agreement, nor was there trademark infringement found by the court, the appellate court affirmed the district court’s decision with respect to the paintings and printers, and reversed with respect to the calendars.
II. Mugs and Other “Mundane Products”
1. Licensing Agreements and Trademark Infringement: Lack of Evidence, Waiver, Acquiescence.
Once again, the University claimed licensing agreements controlled with regards to the mugs and other “mundane products”. However, the court established that the licensing agreements were ambiguous with respect to this issue as well. Therefore, the court looked at the course of conduct between the parties once again.
The court came to the conclusion that there was not enough evidence to resolve this matter. For instance, the court found that Moore had only produced three sets of mugs in his thirty year tenure. One of those Moore asked permission to create, but on the other two he did not.
Holding: Since there was not enough evidence on this issue the appellate court reversed the grant of summary judgment to the University on the licensing issue.
Moore’s last argument was the defense of acquiescence. The best way to describe what acquiescence means is to compare it to the doctrine of laches. Laches is a defense which highlights passive consent by a party, where acquiescence highlights active consent. Therefore, the court looked in this issue to see if there was active behavior by the University during the time Moore was portraying these uniforms.
Holding: However, like the licensing issue, the court couldn’t find enough evidence on the record to make a determination as to the acquiescence defense. Therefore, the court remanded this issue for the district court.
The court found through ambiguous contract language, course of conduct between the parties, and the importance of first amendment rights, that Moore was entitled to his royalties for the paintings, prints, and calendars and did not infringe upon Alabama’s trademark. The remaining issues as to the mugs and other “mundane products” are still lacking sufficient evidence to decide on a motion for summary judgment.
This should be a lesson to Universities who draft contracts in the future. The lesson being that you can never be too specific in your contractual language. Alabama should have taken the time to think of every scenario that could have arisen and drafted against such possibility. Courts will almost always find against the drafter of a contract on an issue of ambiguity, as they did in the case of Daniel Moore.
The following article was written by Cyle Kiger.
I first saw an article for Nike’s new product FuelBand during CES in Las Vegas. The band is used to monitor the user’s activity rate while exercising, known as Nike Fuel.
Recently, a South Carolina based clothing company called Fuel Clothing sent a cease-and-desist letter warning Nike of its infringement. Later, with no acknowledgement from Nike to the letter, Fuel Clothing filed a suit against Nike for the use of their trademark “fuel.”
Fuel Clothing claims that Nike is using the word to target consumers with the same market that the South Carolina company targets. The clothing company went as far to say that Nike is using “fuel” on the “goodwill and reputation” that Fuel Clothing helped build for the word. Fuel Clothing is asking the court for money damages, litigation costs and attorney fees in excess of $75,000.
The lawsuit alleges Nike knew “fuel” was owned, yet they still went on trademarking the term in a few different categories; Fuel Clothing said that Nike avoided the apparel category, yet tried to trademark the name in “electrical and scientific apparatus” and “jewelry.”
I, too, feel as though Nike tried to jump through a few hoops to obtain the term to market their new product. For 20 years, Fuel Clothing has had the term trademarked. Because of the ownership of the term for a long period of time, Nike may have some troubles obtaining “fuel” naming rights for their apparel.
Fuel Clothing wants to take the case to a jury trial and judgment against Nike. I doubt it will go that far, as it seems that a good majority cases similar to this end up settling.