Orange County Trademark Attorney® Blog

Recently in Search Category

Cardinals' Rally Squirrel Stirs up Trademark Fight

October 30, 2013,

squirrel.jpgOrange County - The St. Louis Cardinals are in the midst of a dispute over the trademark of its popular "Rally Squirrel." The team is trying to knock out a federal trademark application filed with the United States Patent and Trademark Office (USPTO) by a St. Louis area business owner named Phil Rideout. Rideout claims that he filed the application with the intent of building a sports brand around the name, but the Cardinals have opposed the filing, claiming that the name has become a fundamental part of the ball club's identity.

Back in 2011, when the Rally Squirrel was at the peak of its popularity, Rideout was one of many local businesspeople who cashed in on the frenzy, manufacturing and selling squirrel themed merchandised to Cardinals fans. At the same time, the St. Louis Cardinals themselves created and sold Rally Squirrel T-shirts and provided fans with squirrel rally towels at games.

Though its opposition is still lingering with the USPTO, the Cardinals have shown no sign of giving up, with one its representatives recently commenting that the "Cardinals Rally Squirrel is alive and well." The parties are currently trying to work out a settlement, but the fight seems stalemated for the time being, with Rideout claiming that he was the first user of the term and the Cardinals countering that he is attempting to unjustly profit from the goodwill of the team and its association with the furry creature.

The now famous rally squirrel first appeared back in 2011, during that year's National League Division Series between the Phillies and the Cardinals. During game three of the series, the squirrel popped out in the outfield and interrupted play as it darted across the field. In game four, the squirrel appeared again and caused a distraction among players, before leaping into the stands.

From that point on, the tiny rodent was dubbed the "Rally Squirrel" and became the unofficial mascot of the St. Louis Cardinals, receiving much media attention by players, commentators and fans alike. The Cards ended up winning the world series that year and the Rally Squirrel has remained a fan favorite ever since, with his own Twitter account, T-shirts and merchandise. He is even featured as a life-sized mascot on the field at Busch Stadium alongside Fredbird, the cardinal bird mascot.

Johnny Manziel Fights to Trademark his Popular Nickname

November 20, 2012,

football.jpgOrange County - Texas A&M and the Manziel family are working to trademark quarterback Johnny Manziel's nickname "Johnny Football," but someone else has already claimed it.

The freshman quarterback has the 9th ranked Aggies at 9-2, thanks to the 21 touchdowns he has thrown and the 17 he has rushed for this season. His popularity hit an all-time high recently when he led the Aggies to a 29-24 victory over the then No. 1 ranked Alabama two weeks ago.

Texas A&M is not interested in obtaining the trademark to make money, but rather to prevent anyone else from using it. In order to protect Manziel's eligibility as an armature player, the NCAA forbids Texas A&M and the family from profiting from any merchandise that can be linked to Manziel. The NCAA also expects the university to prevent other vendors from profiting from merchandise associated with amateur players.

Preventing vendors from profiting from the trademark could prove difficult. Texas A&M discovered that Kenneth R. Reynolds Family Investments, located in College Station, Texas, applied for the "Johnny Football" trademark to use on athletic wear, footballs, and video games on the first of this month. The attorney of record did not return calls seeking comment on the application, but it appears he is not working with the university or the Manziel family.

Even if Texas A&M and the Manziel family are able to get the trademark from Kenneth R. Reynolds Family Investments, they will not be able to use the trademark in commerce for more than three years while Manziel is still playing college football, meaning it will be expensive to protect the trademark without being able to profit from it.

Though they are forbidden from selling merchandise with "Johnny Football," Texas A&M has found another way to capitalize on Manziel's popularity. They have begun selling "No. 2" jerseys in addition to the "No.1" and "No.12" jerseys they normally sell that are not associated with any specific players. And as the season progresses, the school is having a hard time keeping the "No.2" jerseys on the shelves.

John Geils Jr. Sues His Own Band For Trademark Infringement

August 15, 2012,

concert.jpgOrange County - Historically, the music business is a prime industry for trademark infringement lawsuits. For bands that sell tickets and make money based on the recognition and popularity of a band name, the ownership of that name can prove to be invaluable. And when bands or individual band members use a name without authorization, lawsuits usually follow. Such is the case with John Geils Jr. who has sued the other members of his band which is named after him. Geils Jr. announced through representatives that he has filed a complaint against The J. Geils Band for trademark infringement and deceptive business practices after the band decided to tour without him.

The lawsuit was filed in U.S. District Court in Boston and claims that Geils owns the J. Geils Band trademark. The defendants, Peter Wolf, Seth Justman, Magic Dick and Danny Klein are accused of "seeking to misappropriate and steal" the band name that has been in use since the 1960's. Apparently ownership of the band's copyrights are not in issue. The J. Geils Band is famous for its 1980's hits "Centerfold" and "Freeze Frame". Following a resurgence of 1980's music, many bands from the eighties have found a renewed popularity in recent years and have started touring again. With plans to start touring this year, the band began to argue about who actually owned the trademark rights to the band's name.

The Boston Globe reported that Geils was granted the trademark rights to the band name in 2009. According to the United States Patent and Trademark Office, a registrant company named Francesca owns the rights to the band name for use with records, musical sound recordings, downloadable musical sound recordings, audiovisual recordings featuring music and musical entertainment, downloadable audiovisual recordings featuring music and musical entertainment, clothing, shirts, t-shirts, entertainment services, and periodic live musical performances. However, the band claims that Geils registered the trademark without consulting the other band members. A separate trademark application was filed for The J. Geils Band this year by T&A Research & Development Corp but it recently received an Office Action due to the prior registration and very likely will not register.

Kevin Durant Sued For Trademark Infringement Over Durantula Nickname

June 26, 2012,

basketball.jpgOrange County - Kevin Durant fans are known to refer to him as Durantula. The name became so popular that it soon began popping up on posters, pictures and even shoes. However, according to Mark Durante, the name Durantula belongs to him, and the use, regardless of how temporary, is a trademark infringement. To protect his trademarked name, Mark Durante is suing Panini, Nike and Kevin Durant over the use of the trademark. Durante is seeking an injunction to prevent the involved parties from using his trademarked term, as well as monetary damages.

Part of the goal of trademark protection is to protect specific terms, names or other words and to prevent a likelihood of consumer confusion. Mark Durante, a musician who plays guitar for groups such as Public Enemy, The Next Big Thing, KMFDM and others, claims that he has been using Durantula as his stage persona for over 20 years. His website has been in continuous use for ten years. Durante asserts that he took the time and paid the proper fees to have the name trademarked in order to assure its use would be protected. Consequently, he considers the name Durantula a very important part of his stage presence and vows to protect it to the fullest extent of the law.

Kevin Durant, a popular forward for the Oklahoma City Thunder in the NBA, claims that he never authorized, agreed to, or called himself by the nickname Durantula. However, despite his insistence, he has refused requests to stop using the name. In the wake of a showering of fans using the term Durantula as synonymous with his aggressive basketball persona, Durant has obviously accepted its use by fans and promoters. Autographed basketballs, posters and pictures are currently being sold by Panini America and are available on Durant's website. Mark Durante claims that his trademarked term Durantula is also being used by Durant on memorabilia and to promote a line of Nike shoes.

Jeremy Lin To Be Sole Owner of 'Linsanity' Trademark

June 4, 2012,

basketball.jpgOrange County - The various individuals who filed 'Linsanity' trademark applications with the U.S. Patent and Trademark Office back in February 2012 will be narrowed down to one remaining applicant. Jeremy Lin's trademark application for 'Linsanity' will be the only one granted by the U.S. Patent and Trademark Office.

Although many applications still show a 'live' status, the U.S. Patent and Trademark Office has issued office actions which state the reason for the refusals to anyone other than Jeremy Lin. An office action in one of the 'Linsanity' applications states, "Registration is refused because the applied-for trademark consists of or includes matter which may falsely suggest a connection with Jeremy Lin. Although Jeremy Lin is not connected with the goods provided by applicant under the applied-for trademark, the term LINSANITY has been so widely used in connection with Jeremy Lin that consumers would presume a connection to Mr. Lin if they see the term LINSANITY on the identified goods."

The popularity associated with New York Knicks point guard Jeremy Lin in February 2012 caused the frenzy that became known as 'Linsanity'. The Knicks guard went from being a bench player to ultimately saving the game on February 4, 2012 against the New Jersey Nets and contributed 25 points that resulted in a win for the Knicks. After this game several applicants filed applications to trademark the term 'Linsanity'. Jeremy Lin soon followed and is listed as the owner in the live trademark applications for 'Jeremy Lin', 'Linsanity', and 'JLin'.

Pamela Deese, Lin's trademark attorney stated of the U.S. Patent and Trademark's decision, "We're delighted" and "This is the right result." "It's not only Linsanity, but all Lin-related trademarks. Having a clean slate with rights in place makes it a lot easier to negotiate licenses and endorsements deals."

Lin, the first Taiwanese American to play in the National Basketball Association, has recently taken a medical leave hiatus from the NBA due to a tear in his left meniscus. Despite the recovery time from his knee injury, Lin is said to still be a part of the New York Knicks team even though his future with the Knicks has recently been questioned since Lin is a restricted free agent. Glen Grunwald, the General Manager for the New York Knicks, stated of the 23 year old, "We can keep him if we want him, and we do want to keep him, and I believe that Jeremy had a great experience here. I believe he wants to come back."

Either way, we can be sure that there will be more "Linsanity" in the future.

Adidas Sues Orange County Based World Industries for Trademark Infringement

May 24, 2012,

shoes.jpgOrange County - Adidas filed a lawsuit against World Industries for infringing on multiple of its three parallel diagonal-striped design trademarks. Germany's Adidas as well as Adidas America, which is based out of Portland, Oregon, filed a complaint with the U.S. District Court, District of Oregon for alleged trademark infringement. Adidas accuses World Industries, a skateboard company based in Costa Mesa, California, of producing the infringing sneakers. Adidas is also suing Big 5, the sporting goods store, for selling the product.

While Adidas is the world's second largest sporting goods company it is no stranger to similar lawsuits. In previous years Adidas filed similar lawsuits against Wal-Mart Stores and Payless ShoeSource for selling "knock-off" shoes that have two, three, and four parallel diagonal stripes. In fact, Adidas was awarded a $65.3 million by a federal judge in its trademark lawsuit against Wal-Mart. The two companies later settled on a confidential amount.

Adidas trademarked the three parallel diagonal-striped designs in the United States in 1994 but claims use as early as 1952. A spokesperson representing Adidas stated: "World Industries' merchandise is likely to cause consumer confusion, deceive the public regarding its source, and dilute and tarnish the distinctive quality of Adidas' Three-Stripe Mark."

Many of World Industries' products display a "W" on the product. However, the alleged knock-off shoes' "W" is positioned in a way that Adidas states is a certain way to confuse the consumer. The "W" on the shoes in question has three pointed tips that are shaped similar to arrows.

Big 5, based in El Segundo, California is not only being accused of selling the infringing shoes but they are also being accused of promoting the shoes in large advertisements as well as "strategically" placing the World Industries shoes near Adidas shoes in its stores. In the complaint, Adidas included advertisements as exhibits to support its claims.

Adidas is seeking that the sale and production of the alleged infringing shoes stop immediately and that all of these shoes be destroyed. Adidas is also seeking monetary damages. A representative for World Industries could not be reached and a representative of Big 5 had no comment.

Mmmm...Beer: German Brewer Tries to Trademark Homer's Beer of Choice

May 1, 2012,

beer-bottle-pouring.jpgOrange County - Germany-based Duff Beer UG has applied to the European Union's general court in Luxembourg for permission to register a European Union trademark for "Duff", Homer Simpson's favorite beer.

The German brewer sells "the legendary Duff Beer" without any mention or logos of the legendary Simpson cartoon character on its website or packaging. Twentieth Century Fox, which produces the longest-running scripted show in television history, The Simpsons, already has two European Union trademarks to the fictional beer. In 1996, News Corp., the owner of Twentieth Century Fox, won a court case in Australia, banning another brewer from selling Duff beer.

Homer Simpson's creator Matt Groening maintains that he will not condone Duff to be used as a real beer brand, citing that he does not want to encourage children to drink beer. However, this has not stopped a number of brewers from trying to use the brand in their attempts to capitalize on the popular cartoon. The 1996 trademark infringement case against Australian beer-maker Lion Nathan resulted in the brewer's infringing products being pulled from store shelves and destroyed.

Brewed in Germany by the Eschweger Klosterbrauerei, Duff Beer UG filed a lawsuit with the European Union's general court in Luxembourg, asking it to overturn a previous decision by the EU trademark agency. That decision had prevented the brewer from registering the "Duff" trademark in black, white, and red, the colors used in the cartoon to depict the label of Homer's choice of the canned beverage.

Duff Beer is also requesting that the European Union court wait for final rulings from a Belgian court case last year that invalidated Twentieth Century Fox's two European trademarks on the grounds that they were misleading since they weren't registered for an actual beverage.

Earlier this year, beer consumers in the United Kingdom were able to pop a cold one in honor of Homer, when Duff Beer made the fictional beer brand into a reality by selling it in England, Wales, Scotland, and Northern Ireland.

Debuting on Fox in 1989, The Simpsons is an animated satirical parody of working-class America, depicted by the Simpson family, which consists of Homer, Marge, Bart, Lisa, and Maggie. As the longest-running American sitcom, The Simpsons has won dozens of awards, including 27 Primetime Emmy Awards, 30 Annie Awards, and a Peabody Award. In the animated series, the fictional Duff Beer is Homer's favorite beverage, and is a parody of stereotypical commercial beer: cheaply priced, poor quality, and advertised everywhere.

Biker Changes Domain Name Fearing Trademark Dispute with Harley-Davidson

April 19, 2012,

motorcycle-harley-body.jpgOrange County - A thirty-six-year-old Delaware man has agreed to change the name of his social networking site for motorcycle enthusiasts after the world-renowned Harley-Davidson accused him of trademark infringement earlier this year.

According to Jimmy Coulbourne, the owner of the biker website, will now become to avoid any further conflict with Harley-Davidson. The famous Milwaukee-based motorcycle manufacturer argued that Coulbourne's use of the world "Harley" in his domain name, along with orange and black logos, constituted cybersquatting and trademark infringement. Harley insisted that by using the word Harley in the domain, Coulbourne was attempting to profit from its trademark.

Coulbourne, a one-time owner of a Harley-Davidson SuperGlide, acquired the domain two years ago, with the goal of uniting fellow bikers for rides and other social meet-ups.

"They said I was trying to profit off their name," stated Coulbourne. "HarleySpace isn't their name. It's Harley-Davidson. If they think they own HarleySpace, why didn't they own HarleySpace?" Coulbourne went on to say, "Harley is one of my favorite motorcycle brands. The passion that follows that brand is one that I embrace. I just wanted to target that lifestyle."

However, as one of the world's most identifiable brands, among motorcycle riders and non-riders alike, Harley-Davidson isn't taking any chances with its name, which has been around for more than one hundred years. The iconic company has been serious about protecting its intellectual property, especially after taking the brand overseas. The company has numerous registered trademarks associated with the brand, including the word "Harley."

Coulbourne's similar domain name came onto Harley-Davidson's "global brand protection" unit's radar earlier this year after seeing that in just two months, had registered over eight hundred user accounts. The site included user forums and a members' map for riders to plot their locations. Despite including a disclaimer that the site was operated independently from the iconic brand, Harley-Davidson was quick to send a cease and desist letter to Coulbourne.

After realizing he didn't have the money to fight a large motorcycle company, Coulbourne gave in and changed the website name.

"I just felt like Harley was shoving their nose up at me," he said. "They wouldn't even talk to me," he added. "I'm a human being, and they wouldn't even pick up the phone to discuss my ideas, my thoughts. Anything."

Viaguara Energy Drink Trademark Denied For Being Too Similar to Viagra

February 1, 2012,

blue_pills.jpgOrange County - A European Union high court has ruled that a polish energy drink company cannot register for the Viaguara trademark because it is too similar to that of Viagra, an erectile dysfunction pill manufactured by Pfizer.

The decision from the European Union's General Court was that the similarity would allow Viaguara "to take unfair advantage of the distinctive character or repute of the trademark Viagra." An energy and alcoholic beverage company from Poland initially applied for the Viaguara trademark in 2005, but was rejected. After appealing to the high court, the trademark was rejected once again.

In addition to its ruling regarding the "unfair advantage" implications, the high court also based its ruling on the potential for medical implications if consumers were to be confused between the two trademarks. Pfizer's Viagra has been trademarked and distributed throughout Europe for years and is well-known to consumers worldwide.

"Even if the non-alcoholic drinks concerned do not actually have the same benefits as a drug to treat erectile dysfunction, the consumer will be inclined to buy them thinking that he will find similar qualities, such as an increase in libido," the court said in its ruling.

Headquartered in Warsaw, Viaguara manufacturers both the alcoholic and non-alcoholic energy drinks using the company's name. The alcoholic beverages are made with a plant, native to Brazil, called guarana. The fruit of the guarana plant reportedly contains twice the amount of caffeine as do coffee beans, which the Polish company claims to have stimulating and fortifying effects on the mind, body, and health. Over the past several years, many health experts have posted warnings about the overuse of guarana because of its high levels of caffeine.

The high court's ruling was welcomed news for Pfizer, which insisted that any similarity between the Viagra trademark and Viaguara energy drinks would be an attempt by the Polish company to benefit from a more established product's "power of attraction, its reputation and prestige, and to exploit, without paying any financial compensation, the marketing effort expended by Pfizer."

According to European Union rules, Viaguara has two months to appeal the decision to the Court of Justice on points of law only, which are the applications or interpretations of legal principles or statutes. Regardless of whether the Polish company appeals the high court's decision, it is not likely that it will ever be granted a trademark for Viaguara.

Since its introduction in 1998, Viagra has been prescribed to more than thirty-seven million men all over the world. Viagra's main competitors in the market for impotence drugs are Cialis, manufactured by Lilly Pharmaceuticals, and Levitra, made by Bayer Corporation in Germany and distributed by Glaxo Smith Kline.

NASDAQ Files Opposition to METDAQ Trademark

December 27, 2011,

stock-market-bull.jpgOrange County - METDAQ, an online portal for the business to business marketplace, launched a new website in September and is now facing opposition to its trademark application by NASDAQ OMX. The opposition, filed with the United States Patent and Trademark Office (USPTO), is in reference to a trademark application consisting of a stylized image of a bodybuilder in a partial kneeling position to the left of the word METDAQ.

Launched September 1, 2011, is a business to business online portal intended to link metal companies, buyers, vendors, or any company interested in metallurgy and metal working. METDAQ has an online database of metal services providers in order to simplify the efforts of businesses in their search for the right vendor for their daily metal trade activities. Its website is also a place for these companies and individuals to buy and sell products.

NASDAQ contends that Metdaq's use of the same suffix will likely cause confusion, mistake, and/or deception in the general public and is also claiming first use and first use in commerce for the DAQ suffix. The New York-based NASDAQ is also insisting that when purchasers, potential purchasers, and users see the METDAQ trademark used in connection with its online metal services, they would be mislead to believe that such services are provided or are in affiliation with, or sponsored by NASDAQ. This confusion, NASDAQ claims, is likely to result in damage and injury to its business and reputation.

A spokesperson for Metdaq, which is not in the business of trading stocks, quoting commodity prices, or any other stock market trade information, states that, "We are puzzled by the objection to our application as we operate in a different arena and are in no way trying to pass ourselves off as related to NASDAQ. It seems an investigation will be necessary to decide if NASDAQ owns the rights to the suffix "DAQ". However "DAQ" is also used by several other companies, for example, there is BETDAQ, JASDAQ, and FORDAQ."

In its short time online, Metdaq's website has been visited by over 100,000 businesses and consumers.

Apple May Lose iPad Trademark in China

December 9, 2011,

iPad.jpgOrange County - On December 6, 2011, the Intermediate People's Court ruled that the Chinese company Proview Technology was the rightful owner of the trademarks "IPAD" and "iPAD" in China.

Proview originally attempted to manufacture a tablet computer in 2000 and obtained trademarks for the word "IPAD" and "iPAD"in the EU, China, Mexico, South Korea, Singapore, Indonesia, Thailand and Vietnam between 2000 and 2004. Apple, now famous worldwide for its tablet computer iPad, agreed to purchase from Proview Technology's parent company in 2006 the global trademark of the word IPAD for approximately $54,000.

However, after the purchase, Apple failed to file the necessary paperwork to transfer the rights in China and the Chinese Trademark Office rejected the application to transfer ownership of the trademark. Proview has since denied that the agreement included China. Apple then filed suit in the Intermediate People's Court that it owned the trademark but the Court ruled against Apple stating that they bore "a higher duty of care" to make sure that the "necessary procedures for the transfer of a trademark" were completed.

Since the ruling earlier this week, Proview has commenced the process of suing retailers of Apple iPad tablet computers in the Chinese cities of Shenzhen and Huizhou to take advantage of Apple's public embarrassment over the lawsuit and leverage its position for a large settlement. Any disruption to iPad sales in China could be devastating for Apple where they own 74% of the tablet computer market. Apple has the right to appeal the case but Proview has already filed suit against Apple for trademark infringement.

Proview, a company on the brink of bankruptcy before the case now finds itself as the beneficiary of a potential windfall. Attorneys for Proview have argued the reason for moving so quickly against Apple by suing retailers of iPad computer is "because Apple is a very influential company, no one wants to think they are being unreasonable. But in this case, they really are being unreasonable."