Trademark Law

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By: Zachary Wadlé 

In this day and age, professional athletes increasingly understand the value of their persona and related trademark rights.  Earlier this year, Jeremy Lin of the New York Knicks exploded on the basketball scene and created a media frenzy in the process.  The interest was so intense that reporters started to refer to the scene surrounding Lin as “Linsanity.”  Jeremy Lin promptly filed a trademark application for the term “Linsanity” to secure sole use of the term in connection with various goods.  A few weeks ago, Washington National rookie phenom Bryce Harper was asked what he apparently considered to be an inane question from a reporter after a game.  Harper responded by saying “That’s a clown question, bro” and moved on to the next question.  Harper’s humorous response was replayed constantly on highlight shows and internet sites, and developed a life of its own.  This culminated when Senate Majority Leader Harry Reid replied to a political reporter’s question on immigration policy with “That’s a clown question, bro” and refused to answer the question.  It was unclear whether Reid thought this was a legitimate response to the question given the state of American politics, or was playing to his Nevada constituent base (Harper is a native of Las Vegas).  The day after uttering the phrase, Harper filed a trademark for the term “That’s a clown question, bro” which he intends to emblazon on a variety of apparel, such as jackets, pants, hats, gloves, etc.

The most recent athlete trademark application involves Anthony Davis, former University of Kentucky basketball star and recent number one pick in the 2012 NBA draft of the New Orleans Hornets.  Davis has a unique facial characteristic – a prominent “unibrow” that he refuses to shave.  Davis has always embraced the unibrow look, and recently filed trademark applications for the catchphrases “Fear the Brow" and "Raise the Brow” to further capitalize on his interconnected brows.  However, Davis’ trademark application for “Fear the Brow” is somewhat complicated.  NCAA rules bar college players from financially profiting from athletics while at school, and prevented Davis from protecting and profiting from his intellectual property rights himself during college.  Exploiting this restriction, Reid Coffman — owner of the University of Kentucky apparel store Blue Zone — trademarked "Fear the Brow" last November for his popular Davis-themed merchandise sold to Kentucky fans.Continue Reading Professional Athlete™ — Sports Figures Move to Protect Valuable Trademark Rights

Anthony Davis is a well-known college basketball player who completed his freshman season in 2012 playing for the University of Kentucky Wildcats and thereafter declared his eligibility for the 2012 NBA draft.  Most people agree that Davis will be the number one overall pick in the 2012 NBA draft.  He is known for being a highly skilled power forward, and for his distinctive unibrow.

As the 2012 NBA draft approached, the news wires began to buzz with headlines proclaiming that “Anthony Davis Has Trademarked His Unibrow.”  While these headlines likely horrified every esthetician in the country, the headlines actually misrepresent what Mr. Davis has done, and they overlook fundamental components of trademark law.Continue Reading Fear the (Trademarked) Unibrow

By: James Kachmar

The Ninth Circuit recently dealt with the issue of whether the Federal Drug and Cosmetic Act (“FDCA”) prevents a plaintiff from bringing a Lanham Act claim alleging that the name and labeling of a juice beverage is deceptive and misleading.  The plaintiff Pom Wonderful LLC (“Pom”) produces and sells pomegranate juice and pomegranate juice blends.  In 2007, Coca-Cola Company (“Coca-Cola”) announced that it would start selling a new product called “Pomegranate Blueberry” and “Pomegranate Blueberry Flavored Blend of 5 Juices.”  Despite its name, only 0.5% of the juice was actually pomegranate/blueberry juice, while the rest of it was apple, grape and raspberry.  Believing that it was losing sales to Coca-Cola’s product, Pom sued Coca-Cola alleging that it violated the false advertising provision of the Lanham Act for making a false or misleading description or representation about its goods.

Coca-Cola moved to dismiss the complaint arguing that plaintiff’s claims were barred because in construing the product’s name and labeling, Pom’s claim “could improperly require the court to interpret and to apply FDA regulations on juice beverage labeling.”  After allowing Pom to file an amended complaint and conduct discovery, the court granted summary judgment to Coca-Cola and held that Pom’s Lanham Act challenge to the product’s name and labeling was barred by the FDCA’s implementing regulations.  Pom appealed this ruling.Continue Reading What’s in a Name?

While champagne is rarely my drink of choice (the bubbles tickle my nose), those who prefer to imbibe champagne may have noticed that their favorite beverage might have quietly changed its name from “champagne” to “sparkling wine.”  In similar fashion, those who enjoy Basmati rice or Camembert cheese might also have noticed changes to the names of their favorite products.  Many may wonder what has happened, and why we are now drinking sparkling wine when we used to enjoy champagne, or why we must settle for brie when we previously enjoyed Roquefort and Camembert.

Although the names have changed, the products probably have not.  Rather, many countries have created a system which recognizes and protects the value of the intellectual property associated with the geographic origin of certain products.  Functioning like a trademark, a geographical indication can represent valuable intellectual property by identifying a particular region as the source of a certain product.  Although not traditionally protected by trademark laws, geographical indications and designations of geographic origin have traditionally been afforded protection by various countries.  Long known for its famous varieties of cheese, wine, and, of course, champagne, France introduced one of the first systems designed to protect geographical indications, known as appellation d’origine contrôlée, or the “AOC.”  The AOC makes it unlawful to manufacture and sell a product under a geographical indication identified by the AOC if the product does not comply with a set of strict criteria, which includes production of AOC-protected products in particular regions.Continue Reading Where Is My Champagne?

By: Scott Hervey

Brand licensing transactions can be structured in a wide variety of ways.  However the fundamental purpose remains the same; to give a third party the right to benefit from the goodwill and economic value associated with an established mark.  Regardless of the structure of the transaction, there are key deal terms that all brand owners need to consider in all licensing transactions. 

1.         Consider Equity.           Most licensing transactions take the form of a contractual relationship whereby the brand owner (licensor) grants the licensee the right to use a brand for a specific purpose in exchange for a royalty.  Although this arrangement is fine for most instances, in certain circumstances it may be more advantageous to the licensor to take a different approach.   For example, the licensor and licensee can form an entity and then have the entity enter into a license agreement with the licensor, which has certain advantages.  First, if the venture is one that lends itself to possibly being acquired by a third party, by virtue of having an equity position, the licensor can participate in the purchase or any other liquidity event.  Obviously a license agreement could also be structured to protect against a licensor not participating in the sale of the licensee. There are however other good reasons to consider running the transaction through an entity.Continue Reading Six Key Points in Negotiating Brand Licensing Agreements