IP Blog

Latest firm news

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

Breaking Bad TV Series Opposes “Baking Bad”

Asserting claims for dilution and a likelihood of confusion, Sony Pictures Television recently filed a trademark opposition proceeding, seeking to protect the BREAKING BAD television series featuring chemist-teacher-turned-druglord Walter White.  The applicant, Thomas Mihill, filed an intent-to-use application in connection with his BAKING BAD brand for use in a cooking show.  While the parties share similarity in terms of televisions shows, a question remains as to whether consumers are likely to confuse a cooking show with one of the most popular Netflix series of all time.

Fashion Company Off-White Secures Trademark Registration for Red Zip Tie

After nearly four years of battle with the U.S. Patent and Trademark Office (USPTO), high-end fashion company Off-White secured a trademark registration for its signature red zip tie in connection with footwear, with color claimed as a feature of the mark. Off-White, which became a well-recognized streetwear brand under the direction of American fashion designer Virgil Abloh, began affixing the zip tie to its products in May 2016 and filed to obtain trademark rights in July 2018.

The USPTO Examining Attorney assigned to the application issued four Office Actions over the years, each time refusing Off-White’s attempt to trademark the zip tie for a slew of reasons. Off-White ultimately overcame these rejections, in large part by submitting arguments and evidence that the zip tie is non-functional and communicates to consumers that the shoe is an Off-White product. For example, the fashion company submitted that “[c]elebrities and other consumers do not wear shoes with Applicant’s Mark attached because of how Applicant’s Mark looks, but because of the message it conveys to others: this is a product produced by Applicant.”

USPTO Registration Certificate for U.S. Trademark No. 6,681,777

Kendall Jenner’s 818 Tequila Brand Sued for Trademark Infringement

“The Kardashian-Jenner family strikes again,” says ClipBandits, LLC, owner of the brand Tequila 512. On February 16, 2022, ClipBandits filed suit in the Central District of California against K & Soda, LLC, known for doing business as 818 Spirits, for trademark infringement, false designation of origin, and unfair competition. Reality television star and fashion supermodel Kendall Jenner debuted 818 Spirits in May 2021 as her own tequila brand, and it quickly skyrocketed in popularity.

ClipBandits has a federal trademark registration for its “512” mark, which it applied for in 2008 and registered in 2013. Following the launch of Jenner’s brand, however, ClipBandits filed another trademark application for “TEQUILA 512” and Design in an effort to protect the elements featured on the Tequila 512 label.

In its Complaint, ClipBandits accuses 818 Spirits of “simply and blatantly” copying the Tequila 512 logo and color scheme, in addition to similarly choosing a “prominent area code” with “a central 1” as its brand name. ClipBandits further argues that there has been actual consumer confusion in the marketplace, which has damaged the Tequila 512 brand. More specifically, ClipBandits submits that 818 Spirits is not entitled to “steal sales . . . through its deception” or transfer to Tequila 512 the “substantial ill-will” associated with 818 Spirits (due to accusations of “cultural insensitivity”). ClipBandits states that 818 Spirits can “shoot itself in the foot with its own positioning and marketing,” but “cannot be allowed to drag [Tequila 512] down with them.”

This case is ClipBandits, LLC v. K & Soda, LLC, Case No. 2:22-cv-01071, in the Central District of California.

Kobe Bryant’s Estate Files Trademark Applications Signaling Bryant’s Expansion Into the Metaverse

Hall of Famer and NBA legend Kobe Bryant obtained numerous trademarks during the course of his career.  Through is company Kobe, Inc., Bryant registered trademarks spanning from footwear, wine, and apparel.  Signaling the NBA legend’s expansion into the metaverse and digital experiences, Kobe Bryant’s estate (through Kobe, Inc.) recently filed trademark applications for KOBE BRYANT, MAMBACITA, and MAMBA FOREVER.  The applications seek to protect the Los Angeles Laker’s image and likeness as it relates to virtual and digital goods, including art, avatars, and collectible coins.

Recent Trademark Filings Suggest a Fashionable Metaverse

Over the past few months, there has been a slew of new U.S and foreign equivalent intent-to-use trademark applications filed for virtual goods and spaces, particular within the fashion industry. For example, this past November, third parties filed two trademark applications in connection with the Gucci and Prada logos in a range of metaverse-related arenas, including downloadable virtual goods, virtual worlds, and virtual clothing used in virtual spaces. Likewise, DKNY and Nike filed applications in connection with downloadable virtual goods, namely, computer programs featuring footwear, clothing, and accessories and for use in online virtual worlds. In December, Ralph Lauren similarly filed an application in connection with retail store services featuring virtual clothing and accessories for use in online virtual worlds, and online, non-downloadable virtual clothing and accessories for use in virtual environments. These applications and many more suggest fashion brands are ready to jump into the metaverse.

Although the “zone of natural expansion” may provide some protection for existing trademark filings that lack virtual goods and spaces, brands interested in conducting business in Web3 should consider expanding the scope of their trademark protections as it creates an important presumption of validity and ownership. Some relevant international classes include classes 9, 35, and 41. Additionally, brands should consider retaining virtual rights through licensing and distribution agreements. 

Gruyere Cheese Can Still Be Branded as “Gruyere,” Even if it Does Not Originate From Switzerland

An association of several Swiss and French business owners previously filed a trademark application seeking protection for the name “GRUYERE” in relation to cheese. According to the association, gruyere is “painstakingly made from local, natural ingredients using traditional methods that assure the connection between the geographic region and the quality and characteristics of the final product.” Against their arguments, the Trademark Trial and Appeal Board denied the application. On appeal at the federal district court level, the court similarly ruled that gruyere-branded cheese does not have to originate from the Gruyere region of Europe. The opposition in the district court case argued that gruyere had become generic, and that consumers believed that it applied to a certain type of cheese as opposed to the location where that cheese originated. U.S. District Judge T.S. Ellis agreed, finding that “the term GRUYERE may have in the past referred exclusively to cheese from Switzerland and France,” but that “decades of importation, production, and sale of cheese labeled GRUYERE produced outside the Gruyère region of Switzerland and France have eroded the meaning of that term and rendered it generic.”