Category Archives: Trademark

New CLE on IP Protection & the Cannabis Industry

Yes, the cannabis industry is growing like a weed… a well-watered weed. Since states have begun legalizing marijuana for medicinal and recreational purposes, consumer demand has skyrocketed.

The Cannabis Industry & IP Protection

Marijuana sales are projected to exceed $20 billion annually within the next few years. As this new legal industry grows exponentially, so too do the intellectual property issues associated with these new cannabis businesses.

Intellectual property attorney Dave Branfman has been a pioneer in this field, recognizing very early that these new cannabusinesses face novel IP issues. In this course, Dave joins fellow IP attorney Eric Hanscom for an enlightening and entertaining look at how patent, copyright and trademark law can protect these new companies, their “flowers” and the derivative products they produce. To access the course please click here: Growing Like a Weed: Intellectual Property Issues in the Cannabis Industry.

Eric and Dave will also discuss:

  • Design, utility & plant patents
  • Provisional patents
  • The PVPA (Plant Variety Protection Act)
  • Federal law
  • Cannabis patents issued
  • Strong & weak trademarks
  • Increasing competition in the industry
  • Selecting names for strains
  • Developing content rich logos
  • Licensing
  • IP litigation in the cannabis industry

An intellectual property attorney, Eric Hancom is actively involved in overseeing litigation, contract negotiation and customs issues in the US, Asia, Europe, South American and Australia over matters ranging from patent and trademark infringement to breach of contract. David Branfman’s practice focuses on intellectual property and entertainment law, including trademarks, copyrights, trade secrets, licensing, motion pictures & TV and music.

This CLE course is offered in the following states:

  • Alaska (AK)
  • Arizona (AZ)
  • California (CA)
  • Connecticut (CT)
  • District of Columbia (DC)
  • Illinois (IL)
  • Maryland (MD)
  • Massachusetts (MA)
  • Michigan (MI)
  • Missouri (MO)
  • New Hampshire (NH)
  • New Jersey (NJ)
  • New York (NY)
  • North Dakota (ND)
  • Pennsylvania (PA)
  • South Dakota (SD)

Attorney Credits offers CLE for attorneys in New York and around the country. For more information about New York CLE in please click the following link: NY CLE.

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What’s in a Name – CLE on Selecting, Identifying & Protecting Trademarks

For many entrepreneurs and business owners, the intellectual property of the company is the last thing on their mind when starting and running their business. They are more concerned with getting their business off the ground, hitting sales marks and growing their business. However, intellectual property is often the most valuable asset of the business and it must be properly protected – especially trademarks because they are what consumers recognize in the marketplace.

Selecting a Trademark

 A strong trademark or service mark can make the difference between a wildly successful business – and its not-so-successful competition.

In this CLE course Christian Fenton teaches you how to counsel your business clients when selecting, identifying and protecting trademarks for their businesses, brands, products and services. Christian will mainly discuss the foundations of trademark law, identifying & searching for a conflicting trademark and the main benefits of federal trademark protection. To access this course please click here: What’s in a Name: The Fundamentals of Trademark Law.

These topics are also covered in this CLE course:

  • Types of trademarks
  • The main goals of trademark protection
  • The origins of trademark law
  • The federal trademark statute
  • Continuous use of the trademark
  • Identifying a strong mark
  • How to search for conflicting trademarks
  • Trademark infringement
  • Duration of the mark

Christian is licensed to practice law in Hawaii and California, is a registered patent attorney and has been litigating cases for nearly 10 years. Throughout that time, Christian obtained a broad base of legal experience, including that obtained from having been a managing attorney at a large San Diego law firm. Christian’s practice focuses on intellectual property prosecution and litigation, as well as other business litigation.

This CLE course is offered in the following states:

  • Alaska (AK)
  • Arizona (AZ)
  • California (CA)
  • Connecticut (CT)
  • District of Columbia (DC)
  • Illinois (IL)
  • Maryland (MD)
  • Massachusetts (MA)
  • Michigan (MI)
  • Missouri (MO)
  • New Hampshire (NH)
  • New Jersey (NJ)
  • New York (NY)
  • North Dakota (ND)
  • Pennsylvania (PA)
  • South Dakota (SD)

Attorney Credits offers CLE for attorneys in California and around the country. For more information about CLE in California please click the following link: CA CLE.

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New CLE on Trademark Prosecution: Responding to Office Actions and Likelihood of Confusion

Your client decides on the name FancyStar for her new line of designer jewelry. You finally hear back from the USPTO after filing the trademark application, but the examining attorney isn’t so excited about the trademark. In the Office action, the examining attorney states that the term ‘Fancy’ in the trademark could possibly lead to a likelihood of confusion with other established jewelry marks. How do you respond to this office action?

Office Actions

When a USPTO trademark examining attorney issues an Office action about your trademark, the Office action indicates that there are legal issues with respect your trademark application.

In this second installment on trademark prosecution, Michael Feigin provides a lively and practical discussion on how to respond to Office actions from the USPTO. Michael will discuss the likelihood of confusion standard and also covers a number of key refusals. This is a highly practical course and Michael uses a number of interesting case examples from his own practice. To access the course please click here: Trademark Prosecution Part II: Responding to Office Actions and Likelihood of Confusion.

Additional issues covered:

  • The refusal of surnames
  • Significance in the industry that the goods are made
  • The description of goods/services
  • Descriptive trademarks
  • The benefits of the primary & supplemental register
  • The trademark description
  • Identification of services
  • Missing deadlines
  • Translation issues
  • False connection
  • How to proceed if the specimen is deemed unacceptable

A graduate of Rutgers University Jersey and Seton Hall Law School, Mr. Feigin is a licensed Attorney in New Jersey, New York and at the United States Patent and Trademark Office. As an Intellectual Property attorney, he focuses his practice on drafting patents and prosecuting trademarks for clients.

This CLE course is offered in the following states:

  • Alaska (AK)
  • Arizona (AZ)
  • California (CA)
  • Connecticut (CT)
  • District of Columbia (DC)
  • Illinois (IL)
  • Maryland (MD)
  • Massachusetts (MA)
  • Michigan (MI)
  • Missouri (MO)
  • New Hampshire (NH)
  • New Jersey (NJ)
  • New York (NY)
  • North Dakota (ND)
  • Pennsylvania (PA)
  • South Dakota (SD)

Attorney Credits offers CLE for attorneys in New Jersey and around the country. For more information about CLE in New Jersey please click the following link: NJ CLE.

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CLE Course: Counseling Your Clients on Trademarks

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Ford, Coke, Nike, Starbucks… every business uses trademarks and service marks to identify their goods and services. A strong trademark or service mark can make the difference between a wildly successful business – and its not-so-successful competition.

A trademark is valuable because it helps distinguish a business from competing brands and products in the marketplace. The valuable good will of the business becomes intertwined with the company’s trademarks and reputation amongst consumers.

While business owners and entrepreneurs are great at what they do – starting and running businesses – they are not always great at choosing the best marks for their products, services and companies. To learn more about counseling your business clients on trademarks, join intellectual property attorney Mark Reichenthal as he discusses the primary considerations for selecting strong trademarks. Mark mainly discusses intellectual property protections for businesses, counseling clients on selecting a strong trademark and strong business trademarks from top established companies. To access the course please click here: Counseling Your Business Clients on Trademarks.

Additional subjects covered:

  • Intellectual Property protection
  • The rationale behind trademark law
  • Choosing a better trademark
  • The scale of trademark strength
  • The continuum of protection
  • Actual use of the mark
  • Trademarks & cannabis
  • Educating clients
  • Pushing your client’s to stronger marks

Mark Reichenthal practices in the areas of intellectual property, licensing, new media, entertainment law, book publishing and general business contracts. Prior to joining Branfman Law Group, Mark was a Senior Counsel at Wiley Publishing – the publisher of the wildly successful and famous “…For Dummies” series where Mark was responsible for managing the day-to-day legal affairs of the company.

This CLE course is offered in the following states:

  • Alaska (AK)
  • Arizona (AZ)
  • California (CA)
  • Connecticut (CT)
  • District of Columbia (DC)
  • Illinois (IL)
  • Maryland (MD)
  • Massachusetts (MA)
  • Michigan (MI)
  • Missouri (MO)
  • New Hampshire (NH)
  • New Jersey (NJ)
  • New York (NY)
  • North Dakota (ND)
  • Pennsylvania (PA)
  • South Dakota (SD)

Attorney Credits offers CLE for attorneys in California and around the country. For more information about CLE in California please click the following link: CA CLE.

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CLE Course: Stop Using Trademark As A Verb

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Entrepreneurs and business owners may excel when it comes to starting and running companies – but they are not always the most adept when it comes to legal issues and protecting the intellectual property of their business. In fact, there are many common misconceptions in trademark law that business owners need to be aware of to truly understand trademarks.

Business owners often say, “I want to trademark my business name.” Not only is this bad usage, but it also indicates that the speaker does not understand trademark law and how to think about trademarks.

This course focuses on how to talk to business owners and entrepreneurs about the proper use of trademarks. As attorney and counselor, it is important to counsel business owners not to use trademark as a verb and then educate them on the essential points of trademark law and how it can best protect the intellectual property of the business. Join intellectual property attorney Eric Morton as he discusses common trademark usage, common problems with trademarks and state & federal registration of trademarks. To access the course please click here: Stop Using Trademark As A Verb: What Is Important in Trademark Law.

Additional topics covered in this CLE course:

  • The legal & practical definition of trademark
  • What the typical business owner thinks of the legal definition
  • Who decides whether something is a trademark
  • Who owns the trademark
  • Control of the trademark
  • The benefits of federal registration
  • The scope of trademark protection
  • Maintaining registrations
  • Loss of registrations
  • Trademark rights under federal law

Eric Morton has practiced business and intellectual property law in North San Diego County since 1994. Eric is a member of the Strategic Trusted Advisors Roundtable (STAR) of San Diego and he gives workshops on “Business Law for Entrepreneurs” at the Small Business Development Center in Oceanside, California. Eric belongs to the North County Bar Association and is the Intellectual Property section Chair and he also belongs to the Intellectual Property and Business Law sections of the State Bar of California. A resident of Carlsbad for over 10 years – where he lives with his wife and two dogs – when Eric is not at work, he plays Advanced Squad Leader, listens to jazz, reads, and pursues his passion for history. Eric also volunteers as a Constitution Day presenter in local schools.

This CLE course is offered in the following states:

  • Alaska (AK)
  • Arizona (AZ)
  • California (CA)
  • Connecticut (CT)
  • District of Columbia (DC)
  • Illinois (IL)
  • Maryland (MD)
  • Massachusetts (MA)
  • Michigan (MI)
  • New Hampshire (NH)
  • New Jersey (NJ)
  • New York (NY)
  • North Dakota (ND)
  • Pennsylvania (PA)
  • South Dakota (SD)

Attorney Credits offers continuing legal education (CLE) for attorneys in New York and around the country. For more information about CLE in New York please click the following link: NY CLE.

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CLE Course on Publishing & Writing Law

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While the Internet and digital technologies have wreaked havoc on copyright & Intellectual Property law the last decade, many of the same fundamental legal principles continue to apply to publishing industry and writers. At the end of the day, attorneys still need to help writers to make money from the works that they create. This requires the attorney to see down the road with vision and realize that decisions made today have major implications for the writer’s future project and legal rights. The attorney should have one mantra when counseling writers – own everything, the entire “bundle of rights.”

In the over 4 decades that I have been practicing law, I have seen that rights owners or other contracting parties frequently fail to exhibit a wide vision of the market for their product or service. As a result, they often make deals that manifest that lack of vision and end up giving away or failing to ask for rights that can turn out to be very valuable down the line, if not in the immediately foreseeable future. Thus the need for vision.[1] – Ivan Hoffman

In this broad overview of writing and publishing law, Los Angeles attorney Ivan Hoffman covers many of the key issues faced by writers in the publishing industry. The main topics discussed include the relationship between contracts & copyright, the interplay of Internet & copyright law, the legal nuances of book publishing contracts, the relationship of trademark law and writing & publishing law, authors & contributors and the Internet & children (COPPA). To access the course please click here: Publishing and Writing Law.

Further topics addressed in this CLE course include:

  • Focusing on the contract
  • Registering copyrights
  • Works made for hire
  • Cover art & illustrations
  • Joint works & authors
  • The fair use defense to copyright infringement
  • Termination of transfers
  • The publisher/author relationship
  • Submission agreements
  • The Digital Millennium Copyright Act (DMCA)
  • The Communications Decency Act (CDA)
  • Website designers & developers
  • Permission forms & third party materials
  • Failure to publish provisions
  • Royalty provisions
  • The author’s warranties & indemnities
  • Owned & controlled provisions
  • Older contracts
  • What trademark law protects
  • Ghostwriters
  • The Children’s Online Privacy Protection Act of 1998 (COPPA)
  • Operating with vision

Ivan Hoffman has practiced law for over forty years. Based in Los Angeles, California, he concentrates his practice on Entertainment Law, Publishing & Writing Law, Copyrights, Trademarks, Internet Law, Web Design Law, Sports Law and IP Law. Mr. Hoffman believes in practicing preventative law and he tries to advise clients in this regard so that they may possibly be able to avoid the very significant costs and fees of remedial law. Preventative law is about doing proactive, effective and thorough legal work in a manner that seeks to avoid problems that can arise later on. Preventative law is when rights are well documented, agreements are well drafted and when a longer-term view is used.

This course on publishing & writing law is offered in these states:

  • Alaska (AK)
  • Arizona (AZ)
  • California (CA)
  • Connecticut (CT)
  • District of Columbia (DC)
  • Illinois (IL)
  • Maryland (MD)
  • Massachusetts (MA)
  • Michigan (MI)
  • New Hampshire (NH)
  • New Jersey (NJ)
  • New York (NY)
  • North Dakota (ND)
  • Pennsylvania (PA)
  • South Dakota (SD)

Attorney Credits offers continuing legal education (CLE) for attorneys in California and around the country. For more information about CLE in California please click the following link: CA CLE.

[1] The Need for Vision, Ivan Hoffman, B.A., J.D.

http://www.ivanhoffman.com/vision.html

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Pinterest Spawns Copyright Issues

First there was MySpace.  Then there was Facebook and Twitter.   And then came Google+.  Now Pinterest is “the next big thing” in social media – but it may go the way of Napster soon.

Here is an excerpt of a statement that Pinterest sent the Wall Street Journal:[1]

The protection of copyrighted content is by no means unique to Pinterest — virtually every site on the web that allows users to express themselves contends with copyright complexities. As a company we care about respecting the rights of copyright holders and have outlined on our site best practices that people should abide by when adding pins to make them useful to themselves, the community, and the content owners.

The Information Age has been harsh on Intellectual Property and the laws that protect it in this country and abroad – just ask the entertainment industry about Napster, LimeWire and MegaUpload.com.  Now, Pinterest – a website which calls itself an ‘online pinboard’ – also threatens to run afoul of U.S. copyright laws.

On the Pinterest website users basically create virtual bulletin boards by pinning content ‘found’ across the Internet.[2]  This content includes pictures, recipes and bedroom designs – but what if this content does not belong to the user?

Along with many business and marketers, photographer and attorney Kirsten Kowalski was among the masses that have flocked to Pinterest to create her own virtual scrapbook.[3]  However, one day as she was pinning photos on the website she had an epiphany.  Because she did not own the content that she was pinning, her virtual scrapbook may potentially violate U.S. copyright laws and could subject her to legal liability.[4]

That’s because while Pinterest enjoys DMCA (Digital Millennium Copyright Act) protections for user-generated content, website users themselves don’t have the same legal protections afforded under the DMCA.  Therefore, users may be exposing themselves to a significant legal risk and could face severe penalties such as monetary damages.[5]  Further, under the “Legal & Copyright” section of the website, Pinterest makes no mention to their users that they could be violating copyright laws by posting content that does not belong to them.[6]

The easy solution to this copyright issue?  Advise your clients not to post anything they don’t own and create on Pinterest.  Make sure your clients aren’t posting celebrities photos or pinning pictures that don’t belong to them.  Otherwise, they must go through the arduous process of clearing the rights with the copyright holder.

Pinterest did offer this to the Wall Street Journal Law Blog:[7]

Moreover, we strongly encourage people to pin from the original source or permalinks, give credit to the content owner, and include a thoughtful pin description. If a user notices that a pin is not sourced correctly they should leave a comment so that the original pinner can update the source. Many publishers have also added “Pin It” buttons to their site, making it easier to identify content that is okay to add to Pinterest.

Finally, content owners who do not want their material shared on Pinterest can add a small piece of Pinterest-provided code to their site that prevents Pinterest users from sharing that site’s content. We also strictly follow the Digital Millennium Copyright Act (DMCA) to ensure we are in compliance with all copyright laws and respond rapidly to infringement reports.


[1] How to Use Pinterest without Breaking the Law

http://blogs.wsj.com/law/2012/03/13/dont-get-stuck-by-pinterest-lawyers-warn/

[2] Is Pinterest the Next Napster?

The social media website lets their users collect ideas they run across on the Internet for such things as recipes, home décor and gardening. Each user then maintains a board of photos and other users can then click on the links to the original source and choose to re-pin the image on boards of their own.

http://online.wsj.com/article/SB10001424052702304450004577279632967289676.html

[3] Founded in 2009, Pinterest attracted 17.8 million unique users in the month of February, according to comScore Inc.

[4] Last month Ms. Kowalski wrote a blog post that went viral.  In the blog post she explained why she was taking down photos from others that she had pinned to her virtual bulletin board.

[5]  Illegally downloading one song can net you a $75,000 fine.  That would be a pretty hefty fine for illegally pinning pictures you don’t own on your virtual scrapbook.

[6] See: http://pinterest.com/about/trademark/.

[7] How to Use Pinterest without Breaking the Law

http://blogs.wsj.com/law/2012/03/13/dont-get-stuck-by-pinterest-lawyers-warn/

March Madness®

I have to admit that while I am writing this I am also watching the Indiana-Wisconsin Big 10 tournament game.  And in about 5 hours from now I will be watching my SDSU Aztecs take on the Colorado State rams in the Mountain West Conference tournament.

Yes, the Ides of March have officially given way to madness – March Madness to be exact.  Brackets will be filled out and busted.  Office productivity will be greatly diminished.  And one champion will eventually be crowned out of 334 Division I college basketball teams.

But don’t be fooled – these college ‘games’ being played by ‘student’ athletes are big business.  The National College Athletics Assocaition (NCAA) recently paid $17 million just to protect the phrase ‘March Madness.’[1]  What began in the 1940’s as a moniker for the annual Illinois high school basketball tournament has morphed a term to describe the greatest sports tournament in this country – and an incredibly valuable trademark.[2] 

Unfortunately, many unsavvy businesses and marketers fail to realize that just like ‘Olympics,’ ‘Super Bowl,’ and “NASCAR,” March Madness is also a registered trademark that is protected by intellectual property laws.  And the unauthorized use of March Madness in commercials and promotional materials could result in legal liability for your clients.  So while point guards are dishing out assists this time of year in the big tournament – the NCAA is also dishing out scores of cease and desist letters and sometimes even sues to defend the ‘big dance.’

Starting in 2009, the NCAA’s Trademark Protection Office began aggressively defending its multiple trademarks associated with the March college basketball tournament.[3]  Teams of attorneys were ordered to scour the Internet for businesses and individuals who might possibly be infringing on ‘March Madness,’ ‘Elite Eight,’ ‘Final Four’ and other NCAA trademarks associated with the basketball tournament – the NCAA has registered 15 marks total.  And for good reason.  According to lawyers for the NCAA, the economic downturn and increased Internet options have resulted in more people trying to make a buck off the NCAA’s trademarks and goodwill.[4]

If you have clients that would like to capitalize off the March Madness craze remind them that it’s okay to use the idea of “March Madness” — being creative with cheeky play-on-words and the general concept of brackets and madness. However, if your clients use the actual trademarked term’March Madness’ in advertising and promotional material, they might just find a cease and desist letter from the NCAA in their mailbox.

The gym lights gleam like a beacon beam
And a million motors hum
In a good will flight on a Friday night;
For basketball beckons, “Come!”
A sharp-shooting mite is king tonight.
The madness of March is running.
The winged feet fly, the balls sail high
And field goal hunters are gunning.

–Anonymous 1942

(From a poem about the Illinois High School Association’s annual high school basketball tournament)

Good play on words by UPS:

While this ad touting the ‘March Madness Sale’ may be questionable:


[1] The NCAA paid $17M to protect ‘March Madness’ term

NCAA paid $17M to protect ‘March Madness’ term

[2] The term “March Madness” first appeared with prominence in 1939 as the title to an essay written by Henry V. Porter for the Illinois Interscholastic, the official magazine of the Illinois High School Association (“IHSA”).

March Madness Isn’t for Everyone – Trademark Usage

[3] Television rights and marketing fees, almost all derived from the annual three-week Division I tournament, account for 86% of the NCAA’s annual revenues, and it scrupulously polices any unauthorized use of “March Madness.”

NCAA paid $17M to protect ‘March Madness’ term

[4] The LA Times reports that according to lawyers for the NCAA, the recent prolonged economic downturn and increased internet channels have resulted in more trademark violtions. These trademarks include March Madness, The Big Dance, Elite Eight, Final Four, and a host of others.

NCAA mounts full-court press on trademark violations

Who Dat Sey They Gonna Own That Mark?

Legendary NBA coach Pat Riley owns the trademark to the phrase “three-peat” even though the Lakers were never able to pull off the feat with all-star Magic Johnson in the late ‘8o’s. Those dreams were dashed by Michael Jordan evolving into the best basketball player of all time.

However, Riles & Co., the corporate entity of Coach Riley, successfully registered the trademark under U.S. Registration Number 1552980 despite the fact that Lakers guard Byron Scott coined the term and that fans had already used the chant at Laker games. Riles & Co. subsequently obtained additional registrations expanding the trademark to cover numerous other types of merchandise in addition to apparel.

Ironically, it was Michael Jordan – the man who dashed Riley’s chances of three-peating as coach of the Laker’s – who helped add serious profits to Riles & Co.’s bottom line. Riley went on to reap some serious coin by again licensing the phrase to merchandisers when the Bulls – led by Jordan – won three consecutive NBA championships from 1996 through 1998. Riley was also able to license the phrase when the New York Yankees won three straight World Series championships from 1998 through 2000 and when the Lakers won three straight NBA championships from 2000 through 2002. Although there have been a few challenges to the mark (many challenges claimed that the mark is generic), the trademark “Three-peat” is still active for shirts, jackets, caps, etc, and for commemorative mugs.

Well, fast-forward a few years, and it’s all just a case of history “Re-Peating.” Who dat sey they gonna own that mark? Who Dat? Who Dat?

For decades, the chant “Who Dat” has permeated the Lousiana Superdome at Saint’s home games. “Who Dat?” is short for “Who Dat Sey They Gonna Beat Them Saints? Who Dat? Who Dat?” an homage to the creole culture of the region. For years, the term (with its vaudeville and jazz roots) has been synonymous with the team and it’s ravenous fans as they cheer on their home team.

But who owns the rights to the “Whod Dat?” phrase? Roger Goodell would tell you that the New Orleans saints franchise and the NFL. Goodel, the current commissioner of the NFL, spent all last week sending cease and desist letters to Louisiana t-shirt shop owners ordering them to cease producing t-shirts bearing the phrase “Who dat?”

According to the NFL spokesman Brian McCarthy, “If ‘who dat’ is used in a manner to refer to Saints football, then the Saints own the rights.” And NFL spokesman Dan Masonson claims that, “Any unauthorized use of the Saints colors and other [marks] designed to create the illusion of an affiliation with the Saints is equally a violation of the Saints trademark rights because it allows a third party to ‘free ride’ by profiting from confusion of the team’s fans, who want to show support for the Saints.”

But is the NFL really the “free rider” here?

Whenever a trademark dispute arises, one of the primary questions to ask to ask is whether there is a likelihood of confusion amongst consumers. The NFL would have the burden of proving that the use of its “Who Dat?” mark has created a likelihood of confusion about the origin of it’s goods or services.

Trademarks serve to protect consumers by allowing them to identify a particular business as the true source of goods or services. The question would be whether people think of the NFL when they think of a gold and black “Who Dat? with a Fleur-de-Lis.

In addition, the NFL must also establish hat it has established a protectable trademark right in a the “Who Dat” mark. Two brothers from New Orleans also claim to hold a valid mark in the phrase through ‘first use.’ Sal and Steve Monistere, two musicians and avid Saints fans recorded a version of “When the Saints Go Marching In” in the early eighties and incorporated the “Who Dat” chant into their song. Aaron Neville later recorded their song in an early ’80’s video version. However, Steve and Sal Monistere’s record is currently listed as inactive, meaning that it was not renewed upon expiration. This may be proof that they abandoned the mark.

Without other valid mark holders, the question really becomes is the phrase really distinctive enough for the NFL to register it as a protectable trademark in the first place? In order to be have a valid right against infringers, a mark must be a distinctive sign or indicator used to distinguish it from other products or services. Courts often speak of marks falling along a “spectrum of distinctiveness,” with fanciful marks like Kodak being afforded the most protection and generic marks like “Murphy Bed” afforded no protection. Many are asking how the NFL can claim ownership of a phrase that has been used for over a century?

“Who Dat” has been used for over one-hundred years outside a football context and has its roots in the arts and culture of Louisana. Indeed, the phrase can be traced to vaudville acts in the 1890’s and jazz music of the 1930’s. And there are a multitude of high school and college football teams who have claimed to use the chant since the 1970’s. This may be proof that the mark is not valid because it is generic – or at least much more generic than Riley’s “three-peat.”

Interestingly, the NFL seems to be talking out both sides of its mouth. On one hand they claim to have enforced the mark for years. Brian McCarthy says the enforcement isn’t new and that for two decades, the NFL has been “using and enforcing its rights in the ‘who dat’ mark to refer to Saints football.”

However, the NFL just registered the mark with the Florida Department of State last week, right in time for the Super Bowl which is being held in Miami (no coincidence there!), and previous to that there were never any legal actions over ownership of the phrase. Many claim that NFL didn’t seem to care much about the mark a few years ago when the Saints were terrible and weren’t selling much apparel. But now that the profit motive is there – the NFL is too.

The NFL’s actions have not only angered fans, but they also have the Louisiana political community in an uproar as well. The cease and desist letters provoked responses from Louisiana’s Senator David Vitter, Lousiana’s Congressman Charlie Melancon, and state governor Bobby Jindal. Vitter sent a formal letter to NFL Commissioner Roger Goodell criticizing the NFL’s attempt to claim ownership of the chant. Vitter further informed Goodell that he would be printing t-shirts using the phrase and daring the NFL to sue him! Jindal merely asked the state attorney general to look into ownership rights of the phrase.

It will be interesting to see how it all plays out – and if anybody really cares next week after the Saints have beaten the Colts 27-24 in overtime. Personally, I just don’t see where the NFL is going to be able to establish rights to the mark. But it’s an interesting case because it shows just how valuable IP in sports has become – and just how far associations like the NFL will go to defend their alleged marks.

Trademark Suit Filed over the The South Butt

I have always found trademark, copyright, and right of publicity litigation interesting because of the types of cases involved. Who can resist a case involving involving a robotic Vanna White or a case involving Victoria’s Secret?

In yet another case to laugh at, The North Face has sued 19-year-old James Winkelmann for trademark infringement and dilution. The North Face makes, “Technologically advanced, innovative, apparel, footware, and gear that inspires you to Never Stop Exploring.” Winkelmann has enough spare time in between his studies as a Freshman biomedical engineering student at the University of Missouri to have created a line of clothing parodying the apparel company – or clothing industry and life in general. As laughable as these types of cases are, they still are taken seriously because they do have First Amendment free speech issues.

Winkelmann produces a parody clothes line – The South Butt. On the “About” page of his website:

I thought of The South Butt in response to a growing number of people
 who continued buying gear and clothes from a brand they really didn’t
 relate to, but were buying because “everyone else was”. After seeing the same people wearing the same brands, I decided to create
 a way to poke fun at the norm, while making an affordable and quality 
product.

The South Butt doesn’t expect you to climb mountains on your way to school
 or work. If anything, all I ask is that you make decisions and purchases
 based on what you like; not what you are expected to.

The South Butt – Never Stop Relaxing.

– Jimmy

Winkelmann states that he started his clothing line as a joke. He was inspired to do so after noticing that all his friends were buying North Face gear even though they weren’t mountaineers. He decided to poke fun at the idea by coming up with a “South Butt” logo, slapping it on jackets, T-shirts and sweatshirts, and selling the clothes via through a Columbia, Missouri pharmacy and the web.

While the whole project has been quite comical to Winkelman, North Face doesn’t find it so funny. In December, North Face busted out the big guns, retaining IP lawyers Michael Kahn of Bryan Cave and G. Roxanne Elings of Greenberg Traurig who promptly went about suing Winkelmann, his small company and the pharmacy that sells South Butt clothing. In the complaint, North Face’s contends that because Winkelmann intended to expand the manufacture and sale of The South Butt nationwide, it had no choice but to file suit for trademark infringement and dilution. And in North Face’s motion filed in December in Missouri, the apparel company claims that Winkelmann has caused it “irreparable harm” by producing his parody clothing line.

Along with a motion to dismiss the suit, Winkelmann and his attorneys countered by filing a pretty comical reply brief. Winkelmann’s answer, drafted by Albert Watkins of St. Louis firm Kodner, Watkins, Munchnick, Weigley, & Brison and filed on January 4, definitely plays up the David v. Goliath aspect of the lawsuit. Indeed, the suit pits the “world’s largest apparel maker against the 19 year-old college Freshman. You can download the motion here, but highlights include:

• The consuming public is well aware of the difference between a face and a butt

• But for the actions of North Face, the South Butt saga might have been relegated to local Friday fish-fry banter

• Described as a handsome cross between Mad Magazine’s Alfred E. Newman of ‘What me Worry’ fame, and Skippy the Punk from the Midwest, Jimmy refused to turn the other cheek

• Jimmy and The South Butt have no choice but to defend the present action to protect the integrity of the marketplace, freedom of choice for the consumer, freedom of speech for all, and the fundamental tenets of capitalism, competition and The American Way

It would seem that North Face’s infringement claim is unlikely to go far. In these types of cases the critical question is whether there is a likelihood that The South Butt trademark could be confused with The North Face mark. To me, it seems like someone would have to be pretty dumb to confuse a face with a butt. In regards to the dilution claim, Winkelmann may have a harder time defending that action, but should still prevail. Though The South Face may be intended as parody, a court would have to find that there was no likelihood of confusion between it and the North Face mark. After all, the true goal of trademark law is for consumers are able to find the goods and services they are looking for. Jimmy also has an excellent precedent in his corner with Louis Vuitton Malletier S.A. v. Haute Diggity Dog, a case with similar facts where the parodying company won. Indeed, in one commentator suggests that in order for the parody defense to work, your parody better be funny.

One thing is for sure, North Face’s decision to sue has brought much more attention to Winkelmann’s small clothing line than it previously enjoyed. Enough even to pay for all four years of Winkelmann’s schooling at Missouri. Winkelmann is moving enough merchandise that his website recently crashed three times due to the volume of traffic.

“Simply put, if it weren’t for the efforts of The North Face,” says Albert Watkins, “The South Butt probably wouldn’t still exist.”