Tag Archives: Trademark

The Shape Of My Heart: A Guide To Chocolate Shape Trademarks For Your Valentine

The past year has been an active one in the chocolate trademark wars, as confectionery giants attempt to use trademark law to protect the shapes of iconic candy products.  In the US, and in many other jurisdictions, companies can protect product shapes or configurations, but only if they are sufficiently distinctive that the design functions as an indicator of source.  Chocolatiers have had varying degrees of success in convincing trademark offices and courts that their confections have attained that status. … More

Don’t Mess With Grumpy Cat’s Intellectual Property!

In my never-ending quest to write articles that my children would read, I bring you the case of Grumpy Cat.

The guardians of Grumpy Cat (whose actual name is Tardar Sauce), through its company, Grumpy Cat Limited, developed a cottage business in commercially exploiting the likeness of Grumpy Cat for use on, among other things, T-shirts, coffee mugs, books and calendars. … More

Creative Trademark Enforcement Part III: The Southern Hospitality Of Old No. 7

Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’ll be exploring some of the more interesting takes on this approach,… More

Creative Trademark Enforcement Part II: Shutting Down The Upside Down

Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’ll be exploring some of the more interesting takes on this approach,… More

Creative Trademark Enforcement Part I: Velcro Companies Aim To Sing You Into Submission

Readers of this blog are likely aware that trademark owners are required to actively monitor, police, and enforce their trademarks against infringement and misuse.  Failure to do so can result in limitation of and, in the most extreme cases, a complete loss of trademark rights.  It is thus understandable that trademark owners and their lawyers tend to handle such matters via decidedly humorless cease-and-desist letters,… More

Trademark Case Too “Banal” To Justify Social Media Gag Order

Before the social media era really kicked into gear, I was representing a defendant in a defamation case who was being sued by a very wealthy plaintiff. Because of his charitable generosity, the plaintiff’s name was on everything in town (I’m not saying which town), including schools, buildings, bus stops and highway exit signs. There was even (I swear this is true) a statue of the plaintiff’s mother in the city park across from the courthouse.… More

. . . And Your Name Is? Court Orders Anonymous Parallel Importer To Reveal Itself In “Lever Rule” Trademark Challenge

We recently hosted an event at the firm where we discussed legal issues concerning parallel imports in the transportation industry, so a recent decision by the U.S. Court of International Trade discussing “Lever Rule” protection caught my attention.  To those who do not traffic in the world of parallel imports, the Lever Rule is a tool available to trademark owners to limit unauthorized imports of gray market goods bearing the owner’s mark. … More

A History Of GOLDEN GATE Trademarks For Alcoholic Beverages

In celebration of the Intellectual Property Owners Association’s Annual Meeting, currently underway in San Francisco, we offer a brief tour through some GOLDEN GATE-themed trademarks.  As a prominent feature of San Francisco’s geography, even before the iconic bridge was built, the Golden Gate is a popular theme in trademarks for local goods, both in word and image form.  For fun and focus, we have chosen to highlight GOLDEN GATE trademarks for alcoholic beverages.… More

Europe’s Answer To “I Love New York”: The Official Trademark Of Venice

This summer, I was lucky enough to vacation with family and friends in Venice, Italy.  Highlights included seeing the traditional city sights, riding around the canals in a gondola, seeing glass being blown on the Island of Murano, and eating wonderful food.  Lowlights included knocking down a stop sign with our rental car (my brother’s driving skills have sadly not improved over the years) and getting eaten alive by bugs (a theme that runs through all of my summer vacations).  … More

Trademark Investigations In The Age Of Social Media: When Can You “Friend” An Adversary?

I have often called my friend and colleague, Dave Kluft, the master of opposition research.  When we have a trademark case together, he can be counted upon to think deeply about our adversaries, see the world through their eyes, and uncover every small detail about them that could possibly be relevant to our case.  Most of us mere mortals, however, limit our investigations to working hours and use traditional methods. … More

Trademark Office Issues Tequila Certification Mark Just In Time For National Tequila Day

National Tequila Day is celebrated on Monday, July 24. Tequila is made with the distilled extract of the blue agave plant, which grows in and around the city of Tequila and other parts of the state of Jalisco, Mexico. Although agave has been used for the manufacture of fermented beverages since pre-Columbian times, the ancestor of what we now know as “tequila” was reportedly first made in the 16th century by Spanish conquistadors who had run out of imported brandy (which is why they originally called it “Mezcal Brandy”).… More