Trademark

General Motors’ “Super Cruise” features semi-automated driver assistance technology that allows a driver to employ hands-free driving while all on the highway. General Motors recently brought suit against Ford, alleging that Ford’s “BlueCruise” name – a hands free highway driving system – was too similar to that of GM’s Super Cruise trademark. The lawsuit was filed in the Northern District of California, and claims that Ford’s decision to use BlueCruise will inevitably cause confusion and a false association between the two companies. A Ford spokesperson has called the claim “meritless,” and asserts that the term “cruise” is a common and well known term in the industry. For its part, GM is seeking monetary damages and an injunction pertaining to the “BlueCruise” mark, and claims that because attempts to resolve the dispute amicably were unsuccessful, GM was left with no option but to protect its brand.

On July 19, 2021, Nike filed suit against Customs by Ilene, known for doing business as Drip Creationz, in the Central District of California for trademark infringement, counterfeiting, dilution, false designation of origin, and unfair competition. Drip Creationz went viral for their customized “Nike Air Force 1” sneakers after that particular shoe, which was originally released by Nike in 1982, enjoyed a major comeback in street fashion during 2019 and 2020. With over one million Instagram followers, Drip Creationz has enjoyed widespread popularity amongst Millennials and Gen Z, especially due to promotion from prominent so-called “influencers” on social media.

Despite Drip Creationz’s claim that it sells “100% authentic” Air Force 1 sneakers, Nike alleges that their shoes are counterfeits of “sub-par quality.” Nike’s claims are not only limited to the sale of allegedly counterfeit shoes, however, but also go to “the core of Drip Creationz’s business–its ‘customizations.’” Specifically, Nike contends that the “images, stitching, materials, and/or colorways used by Drip Creationz are not and have never been approved, authorized, or offered by Nike.” Even further, Nike alleges that some of Drip Creationz’s customizations involve “deconstructing Air Force 1 shoes and replacing and/or adding material on the shoe, including fake and unauthorized Nike Swoosh designs as well as third party trademarks and protected images.”

Drip Creationz’s allegedly infringing Air Force 1 shoes (image provided in the Complaint).

This case is Nike, Inc. v. Customs By Ilene, Inc., Case No. 5:21-cv-01201 in the Central District of California.

 The U.S. Patent & Trademark Office is drafting rules for two new proceedings that will be available to the public by December 27, 2021: Expungement proceedings and Reexamination proceedings.[1]

 In the future Expungement proceedings, third parties will be able to request cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services. 

 In the future Reexamination proceedings, third parties will be able to request cancellation of some or all goods or services in a registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date. 

 The USPTO believes that these new proceedings will give U.S. businesses “new tools to clear away unused registered trademarks from the federal trademark register.”

 

 

The German sportswear brand Adidas has long defended its famous stripes trademark, having filed over 40 lawsuits in the past against the likes of Abercrombie, Skechers, J. Crew, and Target, among others.  Adding to that list, Adidas recently brought suit against Thom Browne (“TB”) for trademark infringement and dilution in the Southern District of New York, alleging that TB is “selling athletic-style apparel and footwear featuring two, three, or four parallel stripes in a manner that is confusing similar to Adidas’s three-stripe mark.”  The federal complaint comes on the heels of an unsuccessful mediation between the parties dating back to November 2020.  TB countered the allegations in the complaint by contending that Adidas consented for over 10 years and is now changing its mind over TB’s striped apparel and footwear.

The National Collegiate Athletic Association (NCAA) is a non-profit organization that has long regulated the manners in which student-athletes may be compensated by their colleges and universities for playing on “amateur” collegiate-level sports teams. The term “student-athlete” was coined in the 1950’s by Walter Byers, the NCAA’s first executive director, and it has been used in the industry and by courts to describe these players ever since. While student-athletes have historically received scholarships, the NCAA has essentially prohibited student-athletes from receiving benefits beyond the cost of education. These restrictions have also included the inability of student-athletes to profit from their name, image, and likeness pursuant to their scholarship agreements. Name, image, and likeness (“NIL”) is an intellectual property right that protects against the misappropriation of an individual’s name, image, and likeness for commercial benefit. Such NIL limitations have been a major source of conflict between the NCAA and student-athletes, with the NCAA maintaining the upper hand over the years. However, the tides just turned.

In NCAA v. Alston, a 2021 antitrust class action lawsuit filed by current and former student-athletes against the NCAA, the U.S. Supreme Court reviewed a challenge to the NCAA’s student-athlete compensation rules. Specifically, the student-athlete class argued that the NCAA’s rules were in violation of § 1 of the Sherman Antitrust Act, 15 U.S.C. § 1, which prohibits “contracts, combinations, or conspiracies in restraint of trade or commerce.” A unanimous Court reviewed “only the subset of NCAA rules restricting education-related benefits” and found the NCAA in violation of the Sherman Act on June 21, 2021. Notably, the Court highlighted the “uncontested” fact that the NCAA “enjoys monopsony control in the relevant market–such that it is capable of depressing wages below competitive levels for student-athletes and thereby restricting the quantity of student-athlete labor.”

Even before NCAA v. Alston, however, several states had legislation in the works on the issue of student-athletes profiting in the NIL sphere. For example, California passed the Fair Pay to Play Act in September 2019 and Colorado adopted a similar law in March 2020, both of which were set to become effective in 2023. Florida was the third state to pass NIL legislation, but its bill had a much earlier effective date of July 1, 2021. However, in the wake of NCAA v. Alston, the NCAA announced an “interim” NIL policy on June 30, 2021, allowing student-athletes to “engage in NIL activities that are consistent with the law of the state where [their] school is located.” Now, student-athletes in some states can monetize their social media platforms, sell merchandise and autographs, and enter into endorsement deals subject to certain limitations set by their schools. This will make way for student-athletes to create their own brands by filing trademark applications.

The case referred to herein is NCAA v. Alston, No. 20-512, slip op. (U.S. Jun. 21, 2021)

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.yeezyfoamrunner

 

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.

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, Footballwashington , 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).

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.”).

 

 

Wednesday, 16 June 2021 12:12

Seattle Bar Takes Slap Shot at Seattle Kraken

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On April 22nd, Black Spot LLC—an entity doing business as The Kraken Bar & Lounge (“The Kraken Bar”) in Washington—filed a complaint in King County Superior Court against Seattle Hockey Partners LLC (“SHP”)—owners of the newest National Hockey League (“NHL”) franchise, the Seattle Kraken—for, inter alia, trademark infringement of its name and marks.

The Kraken Bar decided to file suit after it became aware of SHP’s announcement that it would be opening “The Kraken Bar & Grill,” a 4,600 square foot restaurant which will reside about three miles away from The Kraken Bar & Lounge and directly adjacent to SHP’s training facility.[1]

In its complaint, The Kraken Bar, owners and operators of the popular Seattle University District dive bar established in 2011, argued that the official reveal of the Seattle Kraken in July 2020 has led to and will continue to lead to actual confusion on behalf of customers, who have and will genuinely believe that The Kraken Bar is associated with SHP. Although its marks are not registered with the U.S. Patent and Trademark Office (“USPTO”), The Kraken Bar argued its marks “are entitled to protection because they are inherently distinctive of The Kraken Bar’s goods and services and because they were used by The Kraken Bar before SHP adopted [its] confusingly similar name in July 2020."

Logo for the Seattle Kraken

 

The present case is Black Spot LLC v. Seattle Hockey Partners LLC in the Superior Court of the State of Washington. The complaint can be found at the following link:  https://www.scribd.com/document/504283199/Complaint#from_embed


 

Tuesday, 15 June 2021 11:54

Air Jordan 1 Obtains Federal Registration

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In an event that will provide even greater protection against potential bootleggers of the Air Jordan 1 silhouette, Nike recently obtained a federal trademark protection for the Air Jordan 1 high, Jordan 1 low, and Jordan 1 low SE from the U.S. Patent & Trademark Office.  The protected silhouette is now recognized as a “unique product," which will empower Nike in pursuing infringers that misappropriate the Air Jordan 1 design.

nike

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