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Starbucks Stadium?: Iconic Coffee Chain Files ITU to Use “STARBUCKS” in Connection with Stadiums

Starbucks Stadium?: Iconic Coffee Chain Files ITU to Use “STARBUCKS” in Connection with Stadiums

Earlier this month, Starbucks filed an intent-to-use (ITU) service mark application with the USPTO for “STARBUCKS” in connection with promoting business, sports, and entertainment events of others in International Class 35 as well as providing stadium and training facilities for sports and entertainment activities in International Class 41. The application is generating buzz that Starbucks is planning to use its famous name on a stadium, like many other brands (e.g., American Airlines Center,[1] Little Caesars Arena,[2] FedExForum,[3] and Staples Center[4]). Beyond the ITU, Starbucks reportedly made no comment.[5]

 


 

http://www.americanairlinescenter.com/

 https://en.wikipedia.org/wiki/Little_Caesars_Arena

 https://fedexforum.com/

 https://www.staplescenter.com/

See, e.g., Amelia Lucas, Starbucks files trademark application for stadium naming rights, CNBC (Jun. 11, 2021 at 12:08 PM) ( https://www.cnbc.com/2021/06/11/starbucks-files-trademark-application-for-stadium-naming-rights.html) (“A Starbucks spokesperson said the company has no further details to share beyond the June 2 filing.”).

 

 

NFL News: “WASHINGTON FOOTBALL TEAM” Trademark Applications Initially Refused by the USPTO

NFL News: “WASHINGTON FOOTBALL TEAM” Trademark Applications Initially Refused by the USPTO

As part of the re-naming effort of the National Football League (“NFL”) team formerly known as the Washington Redskins, Pro Football, Inc. (“Applicant”) filed applications with the United States Patent and Trademark Office during July 2020 for the marks “WASHINGTON FOOTBALL TEAM” and “WASHINGTON FOOTBALL TEAM” & Design,  , for use in connection with: clothing in International Class 25; and entertainment in the nature of professional football exhibitions and games in International Class 41. The applications were subsequently reviewed by an Examining Attorney, and a pair of Office Actions were issued on June 18, 2021.[1]

The Examining Attorney issued a likelihood of confusion refusal for both applications as to International Class 25 only, citing U.S. Trademark Registration No. 4,733,519 for “WASHINGTON FOOTBALL CLUB” (also for clothing in the same International Class). The Examiner took the position that the marks are confusingly similar because they are “virtually identical in sound, appearance and meaning” and “create the same commercial impression in the minds of consumers.” He also noted that “CLUB is another name for an athletic team” before listing the similarities between the goods offered under each mark.

However, the Examiner did not stop there. He next took the position that the marks are primarily geographically descriptive because “WASHINGTON is a generally known geographic location,” Applicant “is located 32 miles outside of Washington, D.C.,” and Applicant is “the professional football team for the Washington, D.C. metropolitan area.”

Finally, as to the “WASHINGTON FOOTBALL TEAM” & Design application filed on July 29, 2020, the Examiner cited two prior filed applications to warn that, if one or both of those marks register, Applicant’s may be refused for a likelihood of confusion. Those two prior filed applications are U.S. Trademark Application Serial No. 90/072,158 for “WASHINGTON TEAM FOOTBALLERS” and Serial No. 90/072,194 for “WTF WASHINGTON TEAM FOOTBALLERS”, both for use in connection with clothing in International Class 25 and filed on July 24, 2020 by applicant Marketwell Nutrition Corporation. The application for “WASHINGTON FOOTBALL TEAM” did not receive this warning, as it was filed on July 23, 2020.

Pro Football has six months to respond to the Examiner’s Office Action.



[1] See U.S. Trademark Application Serial No. 90/069,568, USPTO TSDR ( https://tsdr.uspto.gov/#caseNumber=90069568&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=documentSearch) (last accessed June 21, 2021 at 4:32 PM) (for “WASHINGTON FOOTBALL TEAM”).; see also U.S. Trademark Application Serial No. 90/080,449, USPTO TSDR ( https://tsdr.uspto.gov/#caseNumber=90080449&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=documentSearch) (last accessed June 21, 2021 at 4:32 PM) (for “WASHINGTON FOOTBALL TEAM” & Design).

Kanye West and Yeezy Sue Walmart Over Foam Runner Shoe Design

Kanye West and Yeezy Sue Walmart Over Foam Runner Shoe Design

On June 24, 2021, Kanye West and his multi-billion dollar fashion brand, Yeezy LLC, filed suit against Walmart Inc. for allegedly imitating the design of Yeezy’s Foam Runner shoes. The aesthetically controversial footwear was first debuted on West’s daughter, North, in 2019 before hitting the runway at London Fashion Week in February 2020. When officially released by Yeezy during June 2020, the Foam Runners retailed for $75.00, but sold out almost instantly–they now sell for nearly quadruple the original price on reseller websites. Fans of the Yeezy brand anticipate that the Foam Runner will be released again later this year in new colors.

In their Complaint, West and Yeezy allege that “Walmart is flagrantly trading off of West’s and the Yeezy brand’s popularity by offering for sale an imitation version” of the Foam Runner. The Grammy-Award winning rapper and his fashion brand further claim they are “losing market share” for the authentic Foam Runner, and that their reputation and goodwill are being harmed given the “subpar quality” of the Walmart product. The causes of action include: (1) unfair competition under California Business & Professions §§17200; and (2) quantam meruit.

After news of the lawsuit broke, a spokesperson for Walmart stated that the alleged imitation shoes were being sold by third party marketplace sellers as opposed to the retail giant itself. Walmart has since removed the items from its website.

 

Yeezy Foam Runner shoes (left) and Walmart shoes (right). Image provided in the Complaint.

This case is Kanye West and Yeezy LLC v. Walmart Inc., Case No. 21STCV23514, filed on June 24, 2021 in the Superior Court of the State of California for the County of Los Angeles, Central District.

Florida Governor Ron DeSantis Signs Two Bills to Combat Intellectual Property Theft

On June 7, 2021, Florida Governor Ron DeSantis signed House Bills 7017 and 1523, which aim to safeguard intellectual property by protecting the state’s government, higher education institutions, and companies from foreign influence and corporate espionage.[1] A summary of each House Bill (“HB”) is included below, as provided by the Florida House of Representatives website:

  • HOUSE BILL 7017 (Foreign Influence, effective July 1, 2021):  “Requiring any state agency or political subdivision to disclose certain gifts or grants received from any foreign source to the Department of Financial Services within a specified timeframe; requiring any entity that applies for a certain grant or proposes a certain contract to disclose to a state agency or political subdivision any current or prior interest of, contract with, or grant or gift received from a foreign country of concern under certain circumstances; requiring institutions of higher education to semiannually report to certain entities regarding certain gifts they received directly or indirectly from a foreign source; authorizing a whistle-blower to report an undisclosed foreign gift to the Attorney General or the Chief Financial Officer; authorizing the Chief Financial Officer to incur expenditures to provide such reward from the penalty recovery; requiring certain state universities and other entities to screen certain foreign applicants seeking employment in specified research positions; requiring certain state universities and other entities to establish an international travel approval and monitoring program, etc.”[2]

A “foreign country of concern,” defined by HB 7017-created Fla. Stat. § 286.101, includes China, Russia, Iran, North Korea, Cuba, Venezuela, Syria, and any other agency of or entity under the significant control of such countries.[3] According to a news release on Governor DeSantis’ website, HB 7017 will demand “the highest accountability measures and disclosure from individual scientists, technicians, and administrators on foreign support for public entities and postsecondary institutions.”[4] In the words of Senator Manny Diaz, Jr., the legislation comes in the wake of the reported “infiltration of U.S. intellectual property and research in our higher education institutions.”[5]

  • HOUSE BILL 1523 (Corporate Espionage, effective October 1, 2021): Prohibits theft of trade secret; prohibits trafficking in trade secrets; reclassifies penalty & increases offense severity ranking for an offense committed with specified intent; requires court to order specified restitution for violation; provides for civil actions for violations; provides exception to criminal & civil liability for certain disclosures.”[6]

Additionally, HB 1523 creates new criminal offenses for the theft and trafficking of trade secrets. At the signing event in Miami, Governor DeSantis stated that HB 1523 implements a third-degree felony punishable by up to five years in prison for any person who willfully, without authorization, steals or attempts to steal a trade secret and use it for their own benefit, as well as a second-degree felony punishable by up to fifteen years in prison for an attempt to sell a stolen trade secret. Further, where the law is violated on behalf of a foreign government, the penalties are significantly enhanced. “We don’t want bad actors involved in our colleges and universities, and we’ll hold you accountable if you run afoul of these new laws,” DeSantis warned.[7]

In an effort to “protect free markets, government operations, and educational institutions” from “unfettered access” by “foreign adversaries,” the bipartisan legislation is set to guard “innovation and ingenuity” in Florida.[8] Specifically, DeSantis expressed that the pair of bills are a reaction to China, which the Governor referred to as a “nefarious”[9] and “hostile foreign power” in view of its alleged commission of “espionage and commercial theft.”[10] According to House Speaker Sprowls, this legislation will “expose and stop foreign adversaries and their agents from walking through the front doors of our corporations and universities and sneaking out the back with our taxpayer-funded research.”[11]



Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

HB 7017 – Foreign Influence, Florida House of Representatives ( https://www.myfloridahouse.gov/Sections/Bills/billsdetail.aspx?BillId=72872) (last accessed Jun. 8, 2021 at 10:04 AM) (emphasis added).

See HB 7017 ( https://www.flsenate.gov/Session/Bill/2021/7017/BillText/Filed/PDF) (last accessed Jun. 8, 2021 at 10:59 AM).

Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

Id.

HB 1523 – Corporate Espionage, Florida House of Representatives ( https://www.myfloridahouse.gov/Sections/Bills/billsdetail.aspx?BillId=72780) (last accessed Jun. 8, 2021 at 10:03 AM) (emphasis added).

Thomas Mates, Gov. DeSantis signs 2 bills aimed at cracking down on foreign influence, espionage in Florida, Sun Sentinel (Jun. 7, 2021 at 5:19 PM) ( https://www.clickorlando.com/news/local/2021/06/07/gov-desantis-holds-bill-signing-event-in-miami/).

Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

Bobby Caina Calvan, Florida moves against foreign theft of intellectual property, AP News (Jun. 7, 2021) ( https://apnews.com/article/fl-state-wire-florida-coronavirus-pandemic-business-intellectual-property-fd573a76d19511bdd67b6c0e56e7c34a).

Governor Ron DeSantis Signs Groundbreaking Legislation to Combat Theft of Florida’s Intellectual Property by Foreign Countries, ( https://www.flgov.com/2021/06/07/governor-ron-desantis-signs-groundbreaking-legislation-to-combat-theft-of-floridas-intellectual-property-by-foreign-countries/) (last accessed Jun. 8, 2021 at 9:41 AM).

Bobby Caina Calvan, Florida moves against foreign theft of intellectual property, AP News (Jun. 7, 2021) ( https://apnews.com/article/fl-state-wire-florida-coronavirus-pandemic-business-intellectual-property-fd573a76d19511bdd67b6c0e56e7c34a).