Jonathan Woodard

Jonathan Woodard

This past offseason, Lebron James began sharing videos on social media of his family’s “Taco Tuesday” dinner gatherings.  The videos went viral, with James inviting other celebrity guests and NBA players for the “Taco Tuesday” dinners, and even making apparel with the quote “Its Taco Tuesday.”  Lebron James’ company, LBJ Trademarks, subsequently filed a trademark application seeking to register the term, with the underlying goods and services involving "advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels."

On Wednesday, September 11, 2019, the USPTO refused the trademark application filed by LBJ Trademarks, stating that TACO TUESDAY  "is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.”  However, the USPTO’s decision was not treated as a loss for the James’ camp.  In fact, a spokesperson claimed that the rejection was the intended result:  “Finding 'Taco Tuesday' as commonplace achieves precisely what the intended outcome was, which was getting the U.S. government to recognize that someone cannot be sued for its use.”  Under that approach

The Seventh Circuit Court of Appeals recently held that Gatorade’s use of the phrase, “Gatorade The Sports Fuel Company,” constitutes fair use under the Lanham Act, and therefore did not violate SportFuel, Inc.’s (“SFI”) rights.  Plaintiff SFI is the owner of two registered trademarks for “SPORTFUEL,” and brought an infringement suit in 2016 against Gatorade for its use of the aforementioned slogan.  While Gatorade had also obtained a registration for its trademark, it disclaimed “THE SPORTS FUEL COMPANY,” and defended the lawsuit based on fair use.  The district court entered summary judgment for Gatorade, finding that it did not use “SPORTS FUEL” as a trademark, that Gatorade’s use was descriptive of its sports drinks, and that Gatorade used the mark in good faith.  On appeal, the Seventh Circuit affirmed the lower court’s ruling.  Among other things, the appellate court noted that Gatorade had introduced substantial evidence indicating that “sports fuel” was a marketplace term in describing nutritional sports products, and that Gatorade did in fact hold itself as a manufacturer of sport fuels (which undermined SFI’s alleged “bad faith” argument).

Earlier this month, the United States Patent and Trademark Office (“PTO”) disclosed that a new rule would soon take effect, requiring that all foreign-domiciled parties, registrants, and trademark applicants to Trademark Trial and Appeal Board (“TTAB”) proceedings must be represented by a licensed attorney that is admitted to practice law in the United States.  The new rule takes effect on August 3, 2019, and applies not only to new filings, but current filings as well.  Thus, and in enforcing the rule, the TTAB will suspend any proceedings – and require appointment of a licensed U.S. practitioner – in any action where a foreign-domiciled party is represented by a non-U.S. attorney.  Andrei Iancu, the director of the USPTO, stated that the new rule is intended to combat “fraudulent submissions,” and to “maintain the accuracy and integrity of the register.”

In May 2019, Tom Brady’s company filed two intent-to-use trademark applications, seeking to register the nickname TOM TERRIFIC in connection with apparel, posters, and playing cards.  In those filings were declarations that Brady had a legitimate, good faith intent to use the TOM TERRFIFIC mark in commerce.  However, after receiving some criticism by loyal New York Mets fans – who claim that the nickname “Tom Terrific” has long belonged to famed pitcher Tom Seaver – Brady attempted to ease the pushback from critics, stating to reporters that he “didn’t like the nickname,” and was actually trying to “keep people from using it” in filing the underlying trademark applications.  Further, when asked whether the name would be used for merchandise, Brady answered, “I hope not.”  It will be interesting to see what unfolds relative to the underlying trademark applications in light of these events.

Orlando International Airport (“OIA”) officials recently filed suit against Orlando Melbourne International Airport (“OMIA”), which is located approximately 70 miles away from Orlando.  In the complaint filed in the Middle District of Florida, OIA claims that OMIA’s use of the word “Orlando” in its name and related advertisements “convey[s] the false impression that [OMNI] is the Orlando International Airport, or is located in or is closer to Orlando and Orlando area attractions than it actually is.”  In addition to seeking damages, attorneys’ fees, and a permanent injunction prohibiting OMNIA from using the word “Orlando” in its name, promotional materials, and related advertisements, OIA also requests that the Court order OMNIA to display a retraction statement on its website.  OMNIA has refuted OIA’s likelihood of confusion arguments, citing how Manchester-Boston Regional Airport uses the word “Boston,” while serving the same market as Boston Logan International Airport.

The case is Greater Orlando Aviation Authority v. Melbourne Airport Authority, Case No. 19-cv-00540 (M.D. Fla. March 19, 2019).

United States District Judge Carter recently held that a seizure of the Mongols Motorcycle Club (“MMC”) mark would violate the organization’s First Amendment rights, as well as the Eighth Amendment’s Excessive Fines Clause.  The logo at issue – shown below from the Court’s opinion – features a Genghis Khan caricature on a motorcycle with the words “MONGOLS” and “M.C.” prominently displayed in the logo.  Following a December 2018 trial, whereby the jurors found the Defendant Mongol Nation guilty of racketeering and conspiracy to commit racketeering (relative to murder, attempted murder and distribution of methamphetamine), the Government proceeded with the forfeiture phase of the trial requesting seizure of the organization’s ammunition, body armor, and firearms, as well as the trademark rights appurtenant to MMC membership.  Denying the Government’s request for seizure of the trademark, the Court first noted that “there is no doubt that the display of word marks or symbols on a body or leather vest is pure speech.”  United States of America v. Mongol Nation, Case No. CR-13-0106 (C.D. Cal. Feb. 28, 2019).  Further, “collective membership marks act as a symbol that communicates a person's association with the Mongol Nation, and his or her support for their views.”  Id.  Thus, the Court held that “the forced transfer of the legal rights associated with these symbols to the United States government presents immediate harms and chills the Mongol Nation's and its members' right to display the marks given the Government's threats and seizure attempts,” and therefore denied the seizure request on First Amendment grounds.  Id.

Next, the Court also analyzed the Government’s request for seizure of the MMC mark under the Eighth Amendment, which “limits the government's power to extract payments, whether in cash or in kind, as punishment for some offense."  Id.  Pointing out that the trademark was “legally acquired via first use in 1969 and [was] legally maintained via continuous use,” and that it has “immense intangible, subjective value to the Mongol Nation and its members,” the Court held that a forfeiture of the rights associated with the mark would otherwise be harsh and grossly disapproportionate, and denied the Government’s request as violative of the Eighth Amendment. 

The MMC trademark displayed in the Court’s opinion in United States of America v. Mongol Nation, Case No. CR-13-0106 (C.D. Cal. Feb. 28, 2019)

Mongols

In a case filed by the copyright owner (Solid Oak Sketches LLC) against the NBA2k video game maker (Take Two Interactive), the issue is whether NBA players, including Lebron James, can license the image of their own tattoos.  In this digital age, video games such as NBA2K depict lifelike avatars of fans’ favorite professional sports players, complete with mirror image recreations of those players’ physical characteristics, including tattoos.  For Lebron James’ NBA2K avatar, this means that tattoos depicting the phrase “Hold My Own” on James’ left bicep, as well as the “330 Area Code” on his right forearm, are clearly visible and used throughout the video game, triggering the infringement claim.

On one side of the coin, Solid Oak claims that because the actual tattoo artists sold it the copyright to the underlying images, only Solid Oaks owns the rights to reproduce and publicly display those tattooed images, which were infringed by the video game maker.  On the flip side, Take Two asserts that Lebron James (through the NBA), allowed it to use his image, name, and likeness in the NBA2k video game, which necessarily included the subject tattoos.  Take Two also claimed that its depiction of the tattooed images were otherwise protected under the fair use doctrine.  Solid Oaks recently survived Take Two’s motion to dismiss, and future rulings in the case could have significant implications on the NBA and its players, video game companies, and tattoo artists who create the underlying images.  The lawsuit is proceeding before United States District Judge Laura Swain in the Southern District of New York.

At issue in the case of Levi Strauss & Co. v. Yves Saint Laurent America, Inc., recently filed in the Northern District of California, is whether Levi’s trademark rights preclude jean manufacturers from stitching a label onto the vertical seam of the jean’s back pocket.  Levi’s claims that its “Tab Trademark” does in fact prohibit such copying (and seemingly regardless of where the tab is placed).  As shown in side-by-side comparison pictures displayed in the complaint, the Levi’s tab is sewn on the left side of the back-right jean pocket, whereas the Yves Saint Laurent (“YSL”) tab is stitched onto the right side of the back-right jean pocket.  See p. 5 at  https://www.scribd.com/document/393676941/Levi-Strauss-v-Yves-Saint-Laurent.  Nevertheless, and despite the generally large disparity in price points between Levi’s and YSL denim, Levi’s alleges that the YSL tab is likely to confuse consumers about the sources of YSL’s products and/or a relationship between YSL and Levi’s. 

In a constantly evolving market and with millions of dollars in play, Levi’s is no stranger to enforcing its intellectual property rights through litigation.  In fact, Levi’s has consistently bumped heads with jeans manufacturers in the past (approximately 100 lawsuits since 2001), alleging infringement either based on the display of a “tag” stitched to a back pocket, or copying Levi’s signature design (two intersecting arcs stitched into the back pockets).  As the denim giant attempts to prove that it owns a monopoly on tabs stitched onto jean back pockets, one of the ultimate questions will be whether the consuming public views the tag as a source identifier, such that it solely relates to Levi’s. 

Based upon certain criteria including win rate and the time involved to get to trial, a 2018 study by PricewaterhouseCoopers (“PWC”) suggests that patent owners seeking to enforce their rights should file suit either in the Middle District of Florida (encompassing Jacksonville, Ocala, Orlando, Tampa, and Fort Myers), or the Southern District of Florida (which includes the South Florida metropolitan areas of West Palm Beach, Fort Lauderdale, Miami, and the Florida Keys).  Breaking down those factors using case studies and empirical data, PWC found that a patent owner who tried their case in the Middle District of Florida had a remarkable 50% statistical likelihood of prevailing (ranked 2nd in the United States), with the Southern District of Florida not too far behind (ranked 8th in the country).  In terms of the amount of time it took to get to trial –a significant factor in terms of the overall costs and expenses involved for the patent holder – cases brought in the Middle District of Florida were tried in 1.9 years (3nd in the United States), whereas lawsuits filed in the Southern District were tried in 2.1 years (6th in the United States).  Averaging all of the other underlying criteria involved, the PWC survey found that the Middle District of Florida had an “overall rank” of 6th in the entire United States, with the Southern District of Florida closing the gap at 11th in the country. 

Having focused its practice exclusively on patent law and other intellectual property areas since 1959, Malloy & Malloy, P.L. can assist you in filing a patent application or otherwise enforcing your rights, if necessary, through the litigation process.  Malloy & Malloy has an office in Jacksonville, Florida overseen by firm partner, Jennie S. Malloy, as well as offices in South Florida.  Please click the following for full contact information:   https://malloylaw.com/contact

Link to PWC study:   http://www.ipwatchdog.com/wp-content/uploads/2017/05/2017-Patent-Litigation-Study_PwC.pdf

The term “swagger” is generally associated with style, confidence, sophistication, and togetherness.  In this regard, SWAGGER® Magazine (which owns a trademark in Canada for the mark “swagger”), brands itself as the premier modern men’s luxury and lifestyle publication, and is the “go to resource for the ambitious, successful and influential gentlemen of today.”  When editors at this magazine began noticing a new trend in social media searches for #swagger – apart from the typical results showing fast cars and expensive suits – they soon discovered that politics was a significant factor towards this shift.  And at the center of this movement was United States Secretary of State Mike Pompeo.

 In his first address to State department employees back in May 2018, Mr. Pompeo conveyed his desire of “getting back our swagger” in terms of the State’s affairs, policy-making decisions, and restoring diplomatic ties.  Mr. Pompeo also launched an Instagram account and throughout various posts, used “swagger” hashtags, phrases like the “department of swagger,” and photos of him “fist-bumping” State department employees.  In a recent post, Mr. Pompeo displayed four pictures – two of himself, as well as William Shakespeare and General George Patton – with the following message for his followers:  “Shakespeare was the first to use ‘swagger.’ Gen. Patton had his swagger stick. At @statedept, we’ve got some #swagger too.  It’s our confidence in America’s values.” 

 As a result of Mr. Pompeo’s attempt to penetrate pop culture by using “#swagger” when speaking in terms of diplomacy efforts advanced by the State, Swagger Magazine appears to be seizing the opportunity to expand its readership base.  In referencing some of Mr. Pompeo’s colleagues’ attire at the State department, Swagger editor-in-chief Steven Branco thought that “they all seem to have an oversize suit going on,” and that the magazine would be “working on a story that will provide more direction on what to wear in the office.”  In the meantime, Mr. Pompeo and his chief spokesperson, Heather Nauert, appear to be continuing their message of the United States Department of State being a “Department of Swagger [that] has hustle & heart,” as shown on a recent post on Twitter.

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