Trademark Law

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By: David Muradyan

The Ninth Circuit, like many of its sister circuits, uses the “likelihood of confusion” analysis to determine whether one mark infringes upon another mark.

For background, the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127, defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”). 

Continue Reading Likelihood of Confusion analysis under the Lanham Act

By: Scott Hervey

Without fail, every two years I get a call from a client who wants to incorporate an element of either the Winter or Summer Olympics into a marketing scheme.  This year was no exception.  One of our clients – a fairly significant company in the wine industry – created a graphic featuring wine rings (think of wine stains made by an overly full wine glass) in the form of the Olympic rings, the London skyline in the backdrop, and the official London 2012 Olympics logo and wanted to use it in promoting wine for sale.  Although extremely creative, it certainly would have gotten our client into a jam with the United States Olympic Committee and possibly with the London Olympic Committee.

Under the Ted Stevens Olympic and Amateur Sports Act, Congress granted the USOC exclusive ownership of certain Olympic-related words and symbols, including the name “United States Olympic Committee” and the words “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Pan American,” “Paralympic,” “Paralympiad,” “America Espirito Sport Fraternite” and the International Olympic Committee’s symbol of five interlocking rings. The Act also permits the USOC to authorize its contributors and suppliers to use these Olympic-related words or symbols, and allows the USOC to initiate civil-action proceedings to address unauthorized use.  Third party marks that contain the designated Olympic-related words or symbols, or any combination thereof, cannot be registered on either the Principal or Supplemental Register (nor can the matter be disclaimed) and must be refused registration on the ground that the mark is not in lawful use in commerce.Continue Reading Olympics Go For the Gold In Trademark Enforcement

By: James Kachmar

Two fans of Ayn Rand are slugging it out in federal court over each party’s use of one of Ms. Rand’s famous characters, Hank Rearden from Atlas Shrugged, in connection with their respective businesses.  The Ninth Circuit was forced to deal with the issue of whether plaintiff had produced enough evidence to show that it had used the name “in commerce” in order to state a claim for trademark infringement as well as offer sufficient evidence of the “likelihood of confusion.”

Rearden Steel, Inc. was founded in May 1999 by Steve Perlman who chose the name, in part, because it referred to the “Hank Rearden” character from Atlas Shrugged.  Rearden Steel later changed its name to Rearden Studios, Inc. and finally Rearden LLC and has several affiliated “Rearden” companies.  Plaintiff has offices in the Bay Area, employs approximately 100 employees and operates a number of websites, including their main website “rearden.com.”  These Rearden companies are “technology incubators and artistic production companies.”  Plaintiff obtained protection from the Patent and Trademark Office for the name “Rearden Studios” and later filed “intent to use” applications for several related marks such as “Rearden,” “Rearden Companies,” and “Rearden Commerce Email”. Continue Reading Atlas Shrugged – Hank Rearden and Trademark Infringement

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