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Shape of Dior’s Saddle Bag Denied Trademark Protection in the E.U.

This month, French luxury fashion house Christian Dior was denied trademark protection for the shape of its well-known “Saddle Bag” purse in the European Union. The Saddle Bag, which Dior originally debuted in its Spring/Summer 2000 collection, exploded in popularity after its re-release in 2018. The luxury community quickly dubbed the iconic bag a Dior classic, and it topped the list of hottest women’s fashion products in the third quarter of 2018.[1]

Nevertheless, the European Union Intellectual Property Office (“EUIPO”) refused to register the shape of the Saddle Bag as a trademark. In denying the application, the EUIPO stated that the mark “lack[s] distinctive character” and “does not, as a whole, deviate significantly from the norm or customs of the leather goods sector.”

 In the U.S. Patent and Trademark Office (“USPTO”), Dior has pending Trademark Application Serial No. 90/635,020 which covers the shape of the flap or top portion of the Saddle Bag. The USPTO approved the application for publication in July.


[1] Q3 2018, The Lyst Index (https://www.lyst.com/the-lyst-index/2018/q3/) (last accessed Sept. 28, 2022 at 11:25 AM).

Geno Smith Applies for “I AINT WRITE BACK” Trademark

The Seattle Seahawks are coming off of a big win over the Denver Broncos, where NFL quarterback Geno Smith completed on 23/28 attempts, and connected on his first 13 passes.  In an interview with a reporter after the game – which has now gone viral – Geno commented on those who doubted his abilities, stating:  “They wrote me off, but I ain’t write back.”  Just two days after the win, Smith then filed a trademark application for that same catch-phrase in connection with retail store services, clothing, backpacks, sports equipment, and other related goods and services.  Smith’s quotation is already featured on t-shirts, sweatshirts, and other articles for sale.

Oprah Winfrey’s Company Sues “Oprahdemics” Podcast Creators

On August 9, 2022, Oprah Winfrey’s company, Harpo Inc., filed a lawsuit in New York federal court alleging trademark infringement, dilution, unfair competition, and cybersquatting against co-creators and co-hosts of the “Oprahdemics” podcast. The podcast aims to talk about all things Oprah, which Harpo Inc. alleges confuses listeners into believing it is actually endorsed by Oprah. Harpo Inc. further argues that this false association could cause exponential increases in sales, otherwise known as the “The Oprah Effect” or “The O Factor”. Accordingly, Harpo Inc. has demanded the podcast change its name to avoid further dilution of the Oprah brand.

The case is 1:22-cv-06787, Harpo, Inc. v. Jackson, et al.

TTAB Rules for Prince’s Estate in “PURPLE RAIN” Trademark Opposition Proceeding

In a recent trademark opposition over the mark “PURPLE RAIN”, the Trademark Trial and Appeal Board (“TTAB”) ruled for the estate of famous American musician Prince over energy drink company Bang Energy. Bang’s affiliate filed the trademark application for “PURPLE RAIN” in January 2020 for use in connection with a variety of energy drinks and snacks. An opposition was instituted shortly thereafter.

The TTAB determined that the evidence “shows that PURPLE RAIN is the title of Prince’s ‘most iconic’ album” as well as the title of a motion picture starring the singer. The Board also relied on the results of an expert survey, which found that 66.3% of respondents associated “PURPLE RAIN” with Prince.

(Image used in TTAB Order)

This is Trademark Trial and Appeal Board Opposition No. 91269739, NPG Records, LLC (substituted for NPG Records, Inc.); and Paisley Park Enterprises, LLC (substituted for Comerica Bank & Trust, N.A.) v. JHO Intellectual Property Holdings LLC (TTAB Aug. 23, 2022).

Nicki Minaj’s “BARBIE-QUE” Chips Sued by Barbie Doll Maker Mattel

Toy company Mattel, Inc. – owner of famous toy lines such as Hot Wheels, Fisher Price, and Barbie – recently brought suit against Rap Snacks based on its rollout of “BARBIE-QUE” chips, done in collaboration with rapper Nicki Minaj.  Based on the lawsuit filed in the Central District of California, Mattel alleges that consumers are likely to be confused and to create a false association between Mattel’s BARBIE line of products, and Rap Snacks’s BARBIE-QUE chips, particularly due to stylized BARBIE logo and pink product packaging (shown below).  Mattel asserts causes of action for federal trademark infringement, unfair competition, and dilution, as well as an unfair competition claim under California state law.  Rap Snacks has not yet responded or otherwise entered an appearance in the case.

Delhi High Court Views a Competitor’s Use of a Registered Trademark in a Google AdWord as Trademark Infringement

The case M/S DRS Logistics Pvt. Ltd and Anr. v. Google India Pvt Ltd and Ors is the latest addition to the more than 50 lawsuits that have been filed against Google AdWords internationally over the past ten years. India’s Delhi High Court made a preliminary ruling that use of a competitor’s registered trademark as a keyword in Ads creates confusion in the minds of consumers, and thus violates the rights of the trademark owner. Moreover, the Court found that invisible use of a trademark can result in trademark infringement. However , the Court ultimately set aside the interim injunction against Google and instead ordered an investigation into the matter. Nevertheless, this case showcases another nation’s interpretation of the trademark “use” requirement and lends support for trademark owners’ rights in Google AdWords disputes. 

The Battle Over The Birkin Continues: Hermes v. Rothchild Update

New York Southern District Judge Jed Rakoff has rejected artist Mason Rothchild’s motion to dismiss Hermes International S.A.’s lawsuit over his sale of non-fungible tokens called “MetaBirkins”. Judge Rakoff said he would lay out his reasoning in a later opinion. In the meantime, the case continues to be observed for its potential to explain trademark law’s applicability to NFTs. The case is Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384.

Vegadelphia Sues Dunkin Donuts and Beyond Meat Over Slogan for Plant-Based Breakfast Sandwich

A Philadelphia-based vegan food company recently sued Dunkin Donuts and Beyond Meat in the U.S. District Court for the Middle District of Florida.  At issue in the case is Dunkin Donuts’ and Beyond Meat’s alleged used of Vegadelphia’s trademarked slogan: “Where Great Taste is Plant-Based.”  In the lawsuit, Vegadelphia alleges that Dunkin and Beyond Meat promoted their breakfast sausage sandwich using the phrase:  “Great Taste, Plant-Based.”  Vegadelphia further claims that the defendants “knew about this federally registered trademark on information and belief when they adopted the indistinguishable ‘great taste, plant-based’ slogan for a celebrity-laden national advertising campaign supporting their Beyond Sausage meat substitute menu item.”  Vegadelphia is seeking an undisclosed amount of damages as well as injunctive relief preventing any further use of the trademark.

Google Files Application for PIXEL WATCH

For years, buzz has circled around whether Google would enter into the smart watch arena.  It appears the wait is now over, as Google recently filed a trademark application for PIXEL WATCH in connection with smartwatches and smartwatch accessories.  Although dates have not yet been confirmed, news leaks are reporting that the wearable device from Google may be announced as early as May, and be available for purchase in October.

Hanging On by a Thread: Vans Pleads for a Preliminary Injunction

In November 2021, Vans, Inc. and VF Outdoor, LLC (collectively, “Vans”) filed suit in the U.S. District Court for the Central District of California against Walmart, Inc. (“Walmart”) and two other entities associated with Walmart: The Doll Maker, LLC and Trendy Trading, LLC. In its complaint, Vans alleged, inter alia, that Walmart had infringed on Vans’ trademarks and trade dress rights when Walmart began selling and promoting “over twenty blatant knockoff versions of Vans shoes . . . through [its] own in-house labels, including ‘Time and Tru,’ ‘Wonder Nation,’ and ‘No Boundaries’” in 2018. In filing its complaint, Vans sought a preliminary injunction based on the alleged notion that Walmart “flooded the market with cheap, low-quality, and confusingly similar shoes that harm Vans’ goodwill and reputation.”

At a hearing on January 24, 2022, however, Walmart implored U.S. District Judge David O. Carter not to grant the preliminary impeachment on Vans’ behalf, claiming not only that issuing such an order would cost Walmart “tens of millions of dollars,” but also that “Vans is not losing sales, . . . its reputation is not being diminished . . . [and it] is not suffering any irreparable harm.” In response to Walmart’s plea to the judge for relief, at a hearing the following month, Vans claimed it was facing an “existential crisis” and that Walmart’s copycat designs were putting Vans’ bottom line in “mortal peril.”

This case is Vans, Inc. et al. v. Walmart, Inc. et al., Case No. 8:21-cv-01876. The images above are provided in Vans’ complaint filed in the U.S. District Court for the Central District of California. The Complaint can be found at the following link: https://fingfx.thomsonreuters.com/gfx/legaldocs/zdpxonkoyvx/IP%20VANS%20TRADEMARKS%20complaint-min%20(1).pdf