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If you’re a fan of intellectual propertytransparent or the National Football League, you may have heard about last July’s ruling in the United States District Court for the Eastern District of Virginia. There, Judge Gerald Bruce Lee affirmed the Trademark Trial and Appeal Board’s ruling that the team’s moniker is offensive to Native Americans, and therefore ineligible for trademark protection under the Lanham Act, which prohibits registration of disparaging marks. This battle was fought over more than 20 years. The effect is that the Redskins can continue to use the mark, but they do not have the trademark protections provided by the Lanham Act. The Redskins, clearly unhappy with this result, have appealed the matter to the Fourth Circuit of Appeal. That matter is currently pending and the opening briefs were recently filed.

In its opening brief, the Redskins immediately attacked the District Court’s ruling that the Redskins’ registration is not entitled to First Amendment scrutiny because registered trademarks are “government speech” and the registration is a government subsidy “program.” Counsel for the Redskins, Quinn Emanuel and Arnold & Porter, argue that this notion is disturbing. Specifically the opening brief states that:Continue Reading The Federal Circuit Breathes Life into the Redskins’ Appeal

Everyone on the West Coast knows In-N-Out Burger. transparent For some of us Californians, the burgers may even be considered a state treasure. Doordash, on the other hand, is much less recognizable. It is an on-demand delivery service that connects its customers with local businesses. According to Doordash, it enables its users to purchase food from merchants and have it delivered within 45 minutes. While providing this service, Doordash delivered In-N-Out food products to its customers all across the nation. Unfortunately for Doordash, this seemingly innocent, and mutually beneficial, conduct resulted in it being sued in the United States District Court for the Central District of California for trademark infringement, trademark dilution, and unfair competition.

In-N-Out filed its complaint against Doordash on November 6, 2015. In the complaint, In-N-Out contends that it has not authorized Doordash to deliver its food products and that Doordash is not its affiliate. Despite these facts, In-N-Out contends that Doordash delivers food from In-N-Out and utilizes a colorable imitation mark, as well as several of In-N-Out’s registered trademarks. According to In-N-Out, the intent of this conduct is to confuse consumers as to Doordash’s authority to deliver In-N-Out’s products.Continue Reading The Beef Between In-N-Out Burger and Doordash

Another intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”), arguing the latter’s name was confusingly similar to PWB’s various brew-related trademarks. For those who do not know, Cerveceria del Pacifico is the brewery responsible for Cerveza Pacifico Clara, better known as Pacifico. Although the claim concerns numerous PWB marks, the lawsuit seems to center on the alleged similarity between their Pacific Pilsner marks and CDP’s Pacifico marks. After analyzing the merits of this case, I cannot understand why PWB felt the need to pursue this lawsuit. Aside from both marks generally using the word “Pacific,” the marks are vastly different.

First, Cerveza Pacifico ClaraPacificPilsner355ml-220pimage is clearly distinct from Pacific Pilsner. Even if you compare the commonly used name Pacifico to Pacific Pilsner, the marks are distinguishable, albeit slightly more similar. Further, the respective design marks are distinct. Pacifico’s mark is generally presented against a bright yellow background with the words appearing in red and a different shade of yellow. The logo also features a lifesaver encompassing a hill with the port city of Mazatlan’s lighthouse hill, known locally as Cerro Del Creston. In contrast, Pacific Pilsner’s mark is generally presented against a white background with the words appearing in red and iridescent blue. Although the PWB designs vary slightly, they consistently include a sailboat. Based on these descriptions, it should be clear that the marks are patently distinguishable.Continue Reading Pacifico Defends its Trademark Rights on Canadian Soil

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?”

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