Intellectual Property Group

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As I frequently transparentmention in my articles, trademark law is a much more prevalent part of the average person’s life than they realize. We are surrounded by the trademarks of numerous companies every time that we step outside, or even when we look around our own homes. However, we would not generally expect for trademark law to be inserted into a presidential campaign. At least, not until Donald Trump threw his hat in the ring.

Since Donald Trump has coined the campaign slogan “Make America Great Again,” he has been quite diligent about protecting his brand. Trump’s army of trademark attorneys have been aggressively threatening companies such as Café Press and an anti-Trump interest group with cease and desist letters ordering that they cease using the mark “Make America Great Again.” Although this is a shock to many of us who are not accustomed to seeing trademark law inserted into the political sphere, it should not come as too much of a surprise given Mr. Trump’s involvement. Donald Trump‘s acute understanding of the power of branding has significantly contributed to his net worth that allegedly exceeds $8.7 billion dollars. So his diligent brand protection is hardly out of character.Continue Reading Does Trump Own “Make America Great Again?”

On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name. The suit started back in 2012 when a patron of Costco in Huntington Beach, California decided to reach out to Tiffany to express her disappointment in Tiffany offering its rings for sale at Costco. She also stated that the rings were being promoted on signs within the store as Tiffany diamond engagement rings. After receiving the complaint and knowing that it did not sell its rings through Costco, Tiffany launched an investigation revealing that the Huntington Beach Costco was in fact displaying diamond engagement rings in a case labeled with the word Tiffany. The investigation also revealed that the Costco salespeople were referring to them as Tiffany engagement rings. Accordingly, Tiffany took action.

According to the Court’s ruling, prior to the lawsuit, Costco promised that it would remove references to Tiffany from its display case signs and even sent a letter to customers who bought the rings offering a full refund if they were not satisfied. Irrespective of these acts, Tiffany filed suit, ironically enough, on February 14, 2013. In response, Costco filed a counterclaim alleging that Tiffany’s trademarks were invalid because they sought to prevent others from using the word “Tiffany” as a generic description of a type of ring setting. Almost a year and a half later, the Court ruled in favor of Tiffany and against Costco. Specifically, Judge Laura Taylor Swain ruled that the evidence established that Costco had infringed Tiffany’s trademarks by selling engagement rings and had confused consumers by using the word Tiffany in display cases. Judge Swain ruled that “Despite Costco’s arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark.”Continue Reading Tiffany & Company v. Costco Wholesale: Tiffany is far from Generic

In the bustling craft brew transparenteconomy brewers are faced with new issues every day. One that recently came to my attention arises when the craft brewery’s brewmaster or head brewer decides to either start his own craft brewery, or go to work for another brewery. While this may not initially seem like a big deal, it gets much more complicated when that brewmaster or brewer is responsible for the creation of your flagship brew. The question arises: who owns the intellectual property rights to that brew? Of course, the brewery is going to say that they have been selling, distributing, and promoting the brew, so it must be theirs. On the other hand, the brewer is going to say that he created it, so it must be his. The truth is that determining who owns the intellectual property rights to the brew formula can get quite complicated, encompassing numerous factors. But it does not have to be.

With a booming industry such as craft brew, it is imperative that the appropriate precautions be taken to protect the craft brewery’s most lucrative asset: the beer itself. In order to protect a brew formula from being taken from your company and utilized by a competitor when one of your brewers, the creator of the formula or not, leaves the company, the formula must be treated as a trade secret. The California Uniform Trade Secrets Act (“UTSA”) defines a trade secret as:

information, including a formula, pattern, compilation, program, device, method, or technique, or process, that:
(1) derives independent economic value, actual or potential, from not being generally known to the public, or to other persons who can obtain economic value from its disclosure or use; and
(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Continue Reading Hey, that’s my beer! I think…

Michael Jordan is considered by many  to be the greatest basketball player of all time. Beyond his five MVP trophies and six NBA championship rings, however Jordan also was the one of the most widely marketed athletic personalities in history. His name and image ultimately became iconic when Nike developed a new type of basketball shoe named “Air Jordan,” marked with the “Jumpman” logo – a silhouetted image of Jordan in mid-flight on his way to delivering a one-handed slam dunk.

Jordan’s fame knows almost no boundaries. He and former Houston Rockets star Yao Ming are the most popular international basketball stars in China, where Jordan is known as “Qiaodan.” Not surprisingly, and in the marked absence of any “Air Ming” footwear, Air Qiaodan sneakers have become popular in China. “Air Qiaodan” products are not endorsed or backed by Michael Jordan, rather they are manufactured and distributed by Qiaodan Sports Co. Beyond merely using Jordan’s Chinese name, Qiaodan’s products carry a logo closely resembling the “Jumpman” used on Nike’s “Air Jordan” products.

Believing that Qiaodan’s actions were causing confusion among Chinese consumers by misleading them into believing that Qiaodan Sports Co. was affiliated with His Airness, Jordan sought to cancel Qiaodan’s trademark. The Chinese lower courts refused to cancel Qiaodan’s trademarks, and the case was appealed to the Beijing Higher People’s Court. The Beijing Higher People’s Court has now ruled against Jordan.Continue Reading Air Jordan Grounded in China

Unless you have been living undertransparent a rock for the last week, you know who Carli Lloyd is. If, however, you do not, she is the reigning World Cup MVP for Team USA. On Sunday, in perhaps the most astonishing World Cup performance of all time, Lloyd scored a hat trick in just the 16th minute of the game, and propelled Team USA to its third Women’s World Cup championship. You may be wondering, how is this related to intellectual property, and I promise you, I am getting there.

After Lloyd scored her second goal in the first five minutes of Sunday’s World Cup final, her official website’s server crashed because it was getting so much traffic. Just eleven minutes later, Lloyd scored her third goal and transitioned into a household name. During the game alone, Lloyd gained 50,000 Twitter followers. By now, the connection between this article and intellectual property may be evident: Lloyd’s spike in popularity also caused a spike in the value of her likeness.

Merriam-Webster’s Dictionary defines likeness as (1) a picture of a person; or (2) the quality or state of being alike or similar especially in appearance. California law provides that the appropriation of a person’s name, voice, signature, photograph, or likeness for a commercial use is actionable. Thus, a celebrity is entitled to control the use of their likeness in the commercial context to their financial gain if they so desire. Simply put, Lloyd’s hat trick may have not just cemented her spot in World Cup history, but also greatly increased her wealth.Continue Reading Lloyd’s Likeness: A Hat Trick to Superstardom and Mega Endorsements