The Logo Trademark Battle:

The trademark battle unfolded when Luxury fashion house Louis Vuitton sent French fashion brand Zadig & Voltaire a cease-and-desist letter regarding use of their logo design. Zadig & Voltaire refused to comply with Louis Vuitton’s demands and Louis Vuitton filed suit. In the complaint filed January 2021, Louis Vuitton argued that by using a logo that features the interlocking letters ZV,  Zadig & Voltaire is likely to confuse consumers and to “unduly take advantage of the reputation of the Louis Vuitton brand. Louis Vuitton claimed that  Zadig & Voltaire logo is “visually, phonetically and conceptually similar to its own as they “both consist of two letters written in capital letters and one of which is the same, which have almost the same character size and which overlap with a slight height shift.” The court sided with  Zadig & Voltaire in finding that there was no infringement. The key similarity between them is the use of the two capital letters of similar size, which is common since it is “the very principle of a monogram”. The ruling was a significant blow to Louis Vuitton, sending a clear message that distinctiveness is crucial in trademark design. In light of its loss, the court ordered Louis Vuitton to compensate Zadig & Voltaire for its costs, which the court estimated to be 30,000 euros.

Implications for Design Marks:

1. Distinctiveness Matters: Similarities between logos can lead to very expensive legal disputes. The trademark battle between Louis Vuitton and Zadig & Voltaire highlights the significance of creating a unique and distinctive logo. It serves as a reminder to businesses that distinctiveness is key when designing a trademark to avoid potential conflicts and confusion in the market.

2. The Global Nature of Trademark Protection: While this trademark battle occurred in France, it serves as a reminder that trademark protection is a global concern for businesses. Companies operating internationally must be aware of and comply with the trademark laws and regulations of each jurisdiction to safeguard their brand assets effectively.

\u00a9 2023 The Law Office of Clarissa Harvey

The Battle for Taco Tuesday:
Taco John's, a US-based fast-food chain, managed to secure a trademark for the phrase in 1989, granting them exclusive rights to use it in the restaurant industry. Recently, Taco Bell filed a petition with the United States Patent and Trademark Office (USPTO) to cancel Taco John's trademark and a small business called Gregory’s who owns a "Taco Tuesday" registration in the state of New Jersey. Taco Bell is  arguing that the phrase "Taco Tuesday" is a generic term that has become a common part of the lexicon and should not be exclusively owned by a single entity (any one person or company, large or small). In fact, Taco Bell even commissioned a survey and found 86% of consumers nationwide believe “Taco Tuesday” is a common name or phrase not associated with any particular company. In other words, the phrase has now become just an informational message that unfortunately now fails to function as a trademark. 

Taco Bell Partners with Lebron James:
LeBron James is not only a global icon, but he’s also a big taco fan. Ironically, Lebron previously applied to register TACO TUESDAY (the same mark) himself for advertising and entertainment services, videos, podcasting, etc. and it was rejected. However, Lebron says that’s exactly what he wanted to happen—he believes the USPTO deeming the phrase incapable of functioning as a trademark helps ensure he won’t get sued for using it. Starting May 22 , LeBron James will star in an ad titled "Taco Bleep," highlighting the absurdity of "Taco Tuesday" being "trademarked" and encouraging the taco community to join together in support of the liberation movement.

Intellectual Property Lessons for Businesses:

Avoiding Generic Terms: Businesses should exercise caution when selecting trademarks to avoid choosing words that are commonly used in the industry. Generic terms are not eligible for trademark protection and can be easily challenged or canceled by competitors. Many terms that once functioned as trademarks include but are not limited to: escalator, zipper, aspirin, frisbee, saran wrap. These brands have all lost their trademark status because consumers have come to view them as the name associated with a whole category of goods. Other brands that live dangerously close to genericide include: kleenex, xerox, popsicle, band-aid etc.

Monitoring and Enforcement: It is crucial for businesses to actively monitor the marketplace to identify potential infringements or misuse of their intellectual property. Timely enforcement of intellectual property rights can help prevent unauthorized use and preserve the exclusivity and value of a brand. Taco Bell should have been sending out cease-and-desist letters or taking prompt legal action against infringers when necessary. But, it is clear they have not been consistently doing this over the years. They also haven’t created any form of a “anti-genericide campaign” to educate consumers on how to properly use their mark. For example, BAND-AID has its jingle, “I am stuck on Band-Aid brand cause Band-Aids stuck on me,” to remind consumers that BAND-AID is actually the name of the brand and not the name of any adhesive bandage with gauze in the center. Chrysler LLC launched its “[t]hey invented ‘SUV’ because they can’t call them Jeeps\u00ae” campaign to remind consumers that not all SUVs are JEEPS. Even, Velcro brand has come out with a recent campaign. 

The Taco Bell trademark dispute over "Taco Tuesday" highlights the intricate landscape of intellectual property rights in the business world. Businesses can learn valuable lessons from this, including the importance of avoiding descripitive and generic terms and monitoring and enforcement their trademarks. By understanding and implementing these intellectual property lessons, businesses can protect their unique assets and maintain a competitive edge in the marketplace. Consult with an intellectual property attorney to ensure you are taking the necessary steps to protect and preserve the exclusivity of your brand. 

\u00a9 2023 The Law Office of Clarissa Harvey

Global pop sensation Katy Perry lost a trademark battle against a small, local Australian fashion designer Katie Perry. The legal dispute, which has captured widespread attention, highlights the complexities and challenges faced by individuals seeking to establish a global brand. Let's delve into the details of this case.

Background:

Katy Perry, known for her chart-topping hits, has made a name for herself as an international pop icon. Katy Perry, (her real name being Katherine Hudson), adopted the stage name in 2004 as a combination of her first name and her mother’s maiden name. Her brand now extends beyond music, with an array of  banded merchandise and collaborations showcasing her distinct style. 

Katie Taylor, a small Australian fashion designer, who sells clothing under her birth name “Katie Perry” sued the U.S. singer for infringing her trademark rights in Australia. Katie Taylor, has been operating under this name for over a decade before Katy Perry's rise to fame and has built a successful brand, specializing in women's clothing and accessories. The designer started selling clothes using the brand name Katie Perry in 2007, and registered it as a trademark for use in the fashion industry in Australia the following year. The trademark registration gave the Australian designer the exclusive right to use her name in connection with her clothing line. 

U.S. singer, Katy Perry, began promoting and selling KATY PERRY branded merchandise and clothing in Australia regardless of Ms Taylor’s registration, during her Australian tour and periodically from that date onwards at concerts, in retail stores and online. ”Imagine my surprise when... I received a letter from lawyers representing the U.S. singer, Katy Perry. They stated that I should immediately stop trading under this name, withdraw all my clothes and sign a document drafted by them to say that from then on I will never trade under this name ever again. A true case of David vs Goliath! I felt bullied, insulted and surprised."- Katie Taylor (Fashion Designer)

Outcome and Implications:

Katy Perry argued that her use of the name was not related to the fashion industry but rather as a stage name. However, the court found in favor of Katie Perry, the Australian fashion designer. The use of Katy Perry’s name in connection with clothing merchandise sales violated the trademark rights of the Australian designer. More specifically, the Judge held that the following actions constituted trademark infringement: (1) Singer, Katy Perry,  in her personal capacity posting on Twitter and Facebook promoting costumes and merchandise available for sale in Australia online, at Australian pop-up stores or during Australian tours; and (2) Kitty Purry (her company) advertising, offering for sale and selling clothes (or goods of the same description) bearing the words KATY PERRY during the Australian leg of the Prismatic Tour, at pop-up stores in Sydney and Melbourne, during the Prismatic Tour; and on Bravado’s website.

The Federal Court ordered an injunction restraining Katy Perry and her company from continuing to engage in infringing conduct and further paying damages (the amount will be determined at a later date) to the Australian fashion designer. This decision was a significant victory for Katie Perry and her brand, affirming her exclusive rights to the trademark registration in Australia. "Not only have I fought [for] myself, but I fought for small businesses in this country, many of them started by women, who can find themselves up against overseas entities who have much more financial power than we do," - Katie Taylor (Fashion Designer) wrote on her website. This judgment again emphasizes the importance of protecting your brand and registering a trademark. 

The case raises important questions about the global nature of the creative industry and the potential for overlaps in branding and trademarks. It serves as a reminder that thorough trademark searches and clearance procedures are essential for artists and creatives (no matter how famous you are)  before establishing their brands, particularly when operating on an international scale. Katy Perry’s legal team should have done a comprehensive search to determine whether there were any existing trademark registrations that could conflict with their use of the name in Australia. 

From a broader perspective, this case underscores the need for artists and entrepreneurs to be vigilant in protecting their intellectual property rights. It also highlights the importance of understanding trademark laws and seeking legal guidance to navigate potential conflicts to avoid infringing on existing rights. Even with a substantial amount of money and worldwide fame, it is still challenging to secure trademark rights globally. It is essential to work with a trademark attorney when planning for global expansion, as there may be existing trademark registrations that could conflict with your brand.

\u00a9 2023 The Law Office of Clarissa Harvey 

However, the lawsuit doesn’t end there. Tequila 512 also took issue with her big sister’s mobile game- Kim Kardashian Hollywood, allowed users to purchase and accessorize a bottle of 818 Tequila. According to Tequila 512, “the image that 818 used in the app was of a bottle of 512 Tequila.”  But, fans stated the original bottle in the game did not appear to use the numbers 512 but did include a combination of a yellow rectangle, black square and black writing on a bottle.

On November 8th, 2022, the parties announced that they settled the case on their own.  The parties have reached a settlement, and “through their respective counsel of record, stipulate[d] to the dismissal with prejudice of the action,” alerting the court that “each party shall bear its own attorney’s fees, costs, and expenses.” According to 512 CEO, “they will each have the right to use their existing names and make changes to their labels.” 512 will add “Est. 2012” to it’s label but there is no word on what changes Kendall Jenner’s brand will make. 

The case is ClipBandits, LLC v. K& Soda, LLC d/b/a 818 Spirits, 2:22-cv-01071 (C.D. Cal.)

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our blog posts, content, and comments online and on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey

At trial, the jury found in favor of Unicolors finding that H&M willfully infringed the EH101 copyright and consequently awarded damages to Unicolors for lost profits and profit disgorgement in the amount of $117,000. 

Unicolors, Inc. almost lost the case because of issues with their Copyright Application

H&M sought judgment as a matter of law, arguing that Unicolors could not maintain an infringement suit because Unicolors knowingly included inaccurate information on its registration application, rendering its copyright registration invalid.  Based on testimony presented during trial, H&M discovered that the 31 works listed in the ‘400 Registration were not all published on January 15, 2011.  At least 9 of the fabric designs (although not EH101) were never published. 

The alleged inaccuracy stemmed from Unicolors having filed a single application seeking registration for 31 separate works despite a Copyright Office regulation that provides that a single application may cover multiple works only if they were “included in the same unit of publication.” H&M argued that Unicolors did not meet this requirement because Unicolors had initially made some of the 31 designs available for sale exclusively to certain customers, while offering the rest to the general public

Takeaway:

(1) Register your copyrights. A valid copyright registration provides a copyright holder with important legal advantages, including the right to bring a “civil action for infringement” of the copyrighted work. 17 U. S. C. §411(a).

(2) Avoid submitting inaccurate, combined filings (as opposed to separate applications for non-bundled works) in an effort to cut costs. 

The case is Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. et al., 2:2016-cv-02322 (C.D.Cal.)

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our blog posts, content, and comments online and on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey

Steph Curry is no stranger to the NFT community. He has been the Global Brand Ambassador and a shareholder for the cryptocurrency trading platform FTX since September 2021 and has purchased Bored Ape Yacht Club NFTs. His collection also includes other digital collectibles, such as a membership pass to LinksDao, a Web3 collective of golf enthusiasts and crypto collectors. Not to mention, he released his first official NFT in partnership with Under Armour in December 2021, grossing more than 2200 ETH (around $3.5 million) in sales volume, according to OpenSea.

With Steph Curry’s Under Armour deal up for renewal in 2024, will he leverage the launch of Curryverse and his trademark registration (assuming his application matures to registration) to negotiate better terms for the deal or to bring Under Armour on board for a partnered metaverse launch? Either way, we are excited to see how he will continue to monetize his trademarks on and off the court. 

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our blog posts, content, and comments online and on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey 

Trademark Dilution & Counterfeiting

There are a variety of ways your trademark can be infringed upon. Under the Dilution Act, famous trademarks are protected from "dilution", the weaken of a trademark's distinctive quality. Dilution derives from the premise that some marks are so well recognized that they deserve an additional level of protection beyond limiting them to establishing a likelihood of consumer confusion with another mark. 

On the other hand, counterfeiting of a trademark occurs when a party creates goods that look exactly like the trademarked goods (including the stolen logo or other identifying mark) and selling them as the goods of the trademark owner.

Copyright and Infringement of Anna Wintor's Publicity Rights 

Copyright Infringement and Publicity Rights are not at issues in this lawsuit but it's important to note that, Anna Wintour did not authorize the use of her image to promote the album and some pages of the magazine have no modifications, constituting an exact reproduction of Condé Nast’s copyrightable content. Despite Drake tagging Vogue magazine and its Editor-in-Chief Anna Wintour on IG, Condé Nast made it very clear in their lawsuit that they have had NO involvement in "Her Loss" or its promotion, and have not endorsed it in any way. 

Temporary Restraining Order (TRO)

Vogue has already landed a win in the first round. On Monday, Judge Jed Rakoff of the U.S. District Court for the Southern District of New York ordered Drake and 21 Savage immediately refrain from using Vogue’s trademark-protected name to promote their album, Her Loss, and continue to hold off from doing so until at least November 22nd when counsel for the parties are slated to appear in court to show cause for a longer-term preliminary injunction. “A temporary restraining order is necessary … to protect the public from confusion, deception, and mistake, and to protect Condé Nast from immediate irreparable injury,” according to the court, which ordered that Drake and 21 Savage be barred from disseminating more of the counterfeit materials. 

Additionally, the court is requiring them to “take down and remove all existing internet and social media posts on all websites and social media accounts … that contain or reflect: (i) any depictions of or references to the Counterfeit Magazine and/or the Counterfeit Cover, (ii) any use of the [Vogue] trademarks for commercial purposes, including … to advertise, market, or promote the album Her Loss, (iii) any use of [Anna] Wintour’s name, image or likeness for commercial purposes, and/or  (iv) any false or misleading statements or misrepresentations concerning the Counterfeit Magazine, the Counterfeit Cover and/or Drake and 21 Savage’s participation or appearance in Vogue magazine.” 

Publicity Stunt or Oversight? 

Fans are wondering if this was a calaculated risk? Knowing that a Vogue marketing campaign would generate a ton of buzz and that 90% of cases settle. This is not the first time a musician has recently faced a trademark infringement lawsuit while promoting a new release. Nike sued brand MSCHF after it collaborated with rapper Lil Nas X on modifying Nike Air Max 97s into "Satan Shoes" that were sold at the same time that the rapper released his single "Montero (Call Me By Your Name)" in 2021. 

If this case does go to trial, Vogue is asking for Statutory Damages of up to $4,000,000 in addition to court costs/reasonable. attorneys’ fees. The case is Advance Magazine Publishers v. Aubrey Drake Graham, et al., 1:22-cv-09517 (SDNY).

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our blog posts, content, and comments online and on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey 

What Is Right of Publicity and False Light Invasion of Privacy?

The right of publicity is an intellectual property right that protects against the misappropriation of a person's name, likeness, or other indicia of personal identity—such as a nickname, pseudonym, voice, signature, likeness, or in this case, a tattoo—for commercial benefit. Certain state legislatures have also extended publicity protections to a period of years after death, with a dozen jurisdictions now recognizing a postmortem right of publicity by statute. False light invasion of privacy is a cause of action for portraying an individual unflatteringly in words or pictures as someone or something that person is not. Some states recognize the concept by either common law or statute. 

Oh The Drama: Let's Talk about the Trial

The trial kicked off last Tuesday and started off with drama: Cardi B and the Plaintiff's attorney had some heated exchanges. The judge dismissed the jurors from the courtroom and told counsel he had “totally crossed the line,” threatening to declare a mistrial.

Right of Publicity

The designer of Cardi B's album cover, testified that he was given $50 to create a cover for Cardi's mixtape. The designer ended up googling "back tattoos" and photoshopping a random one onto the cover.  The Plaintiff said, “[t]his was a long journey to get this tattoo. It took a lot of commitment...to see it in this light was a complete slap in the face and a complete disrespect to me and my family.” He also said, “[this] was [his] Michelangelo” citing the time (50-60 hours over the course of a year and a half), money, and effort put into the tattoo. He said he tried to settle. But, Cardi claims she hadn’t seen the letter. Her response was that checking the mail is for “old people”.

Cardi said the Plaintiff isn't even identifiable. Pointing out that the model in the image doesn’t look like the Plaintiff at all. Cardi B's lawyer argued the First Amendment protects transformative use, pointing out that they only took a portion of the tattoo (the image of the tiger). And put it on a "toned, muscular, black model who has a full head of hair.” He added that the Plaintiff “is a white man with a shaved head”. 

Why did they bring up transformative use? Well, freedom of expression is based in the First Amendment of the Constitution. The Amendment directs Congress to "make no law ... abridging the freedom of speech," and is applicable to states through the Due Process Clause of the Fourteenth Amendment. The Third and Ninth Circuit Courts, as well as the State of California, have adopted the “transformative use test.” Under this test, unauthorized use of an identity is permissible if the use adds significant creative elements and sufficiently transforms the likeness or identity into original expression. Courts have thus far only applied this test to football videogames using the likenesses of athletes, and none has found the use of these athletes’ likenesses adequately transformative. 

False Light- Invasion of Privacy:
The Plaintiff claims he was devastated as a result of the trauma to his wife and children; he worried that his wife believed he had betrayed her. The Plaintiff told the jury that he worries his young son and daughter will eventually see the cover or that their friends will show it to them. Cardi B questions how the Plaintiff was harmed. “He hasn’t gotten fired, he hasn’t gotten divorced." Cardi B says, "It’s insulting to her, as a woman, that a man is claiming responsibility for her fame, from a very small portion of his tattoo." Cardi B’s attorney made the argument that the Plaintiff was trying to “cash in the equivalent of a lotto ticket”.

Outcome:

The jury found that Cardi B's company, Washpoppin Inc., did not invade the Plaintiff’s right of privacy or misappropriate his likeness by using his tattoo on the cover of her mixtape.

Takeaway:
1. Don't use photos from Google or any online platform without prior written consent from the Copyright holder. 
2. When you want to use someone's name, image, or likeness (NIL) for commercial use CYA and have them sign a Release in advance. A release is a legally binding contract that ensures everyone is aware of how their name, image, or likeness will be used, addresses compensation, and ensures you've legally obtained their written consent. 
3. Check your mail and don’t ignore cease-and-desist letters. These issues can usually be resolved amicably and quickly outside of court without the media and for far less than the cost of trial. 

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our blog posts, content, and comments online and on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey 

Kanye's outbursts don't age well. In an October 16th episode of the ‘Drink Champs’ podcast, Ye declared: “I can say antisemitic things, and Adidas can't drop me. Now what?” So, just like Kanye, you're probably wondering how Adidas was able to cut ties with Ye when they've signed a legally binding contract. The answer: a “morality clause”.

How Can Adidas Terminate the Relationship When There is a Contract? 

As we are seeing with Mr. West, influencers, celebrities, and athletes can engage in offensive behavior, scandal or controversy that can pose significant risk to your brand. To protect against this risk, companies will typically include “morality clauses” in contracts. The breach of a "morality clause" gives brands cause to terminate the relationship. In contract negotiations, it’s important to clarify how violations of a morals clause will be handled. For example, does the company have the right to publicly announce their dissociation? Do they have to include mutually agreed upon language in the announcement? Does the creator have time to cure the violation? i.e., publicly apologize. Influencers and creators should know exactly what behavior violates their morals clause. Language in contracts can be ambiguous ranging from violating any law, to a broader scope that may encompass any activity detrimental to the brand’s reputation. Whether or not the clause is actually enforceable, or not, is a topic for another post.  

Who owns the Yeezy Sneaker?

This is a question of intellectual property ownership. Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP is protected in law by patents, copyright and trademarks. 

The "Yeezy" brand name is owned by Mascotte Holdings Inc., Ye’s company. But, the Yeezy design patents are owned by Adidas AG. There is one exception for Yeezy Slides, in which Kanye is named as the Inventor with rights being assigned to Mascotte Holdings.

Adidas also owns the Copyright to two of the more popular Yeezy\u00ae Boost 350 designs/ colorways: the “Turtle Dove” and the V2 “Beluga” under the Star Athletica separability standard.

As you can see, IP plays a huge role in fashion. It’s important to understand Intellectual Property is not just one category of law. 

What does this mean for Adidas? 

As the owner of Yeezy Design Patents, Adidas AG allegedly intends to continue manufacturing and selling existing Yeezy product designs using its own branding after ending its partnership with Ye.  Adidas management has indicated that it will start selling the products under the company’s brand at the beginning of next year, according to analysts at Morgan Stanley and RBC Capital Markets. 

“Adidas has the rights to existing Yeezy product designs and can sell these using Adidas branding (not Yeezy branding) following the termination of the Yeezy partnership, which Adidas intends to do” in the first quarter of next year, RBC analyst Piral Dadhania said in a note. “Speaking to the company, it believes it can limit the loss of revenues through this strategy, and will also save on expenses related to royalty and marketing fees no longer payable in 2023.”

What does this mean for Ye?

Kanye unfortunately, must create NEW designs but, he can continue to use the Yeezy brand name to sell them in Class 025.  This was confirmed by Ye's attorney in a text message that Kanye posted on IG.  But, don't try this at home- you don't want to breach your attorney-client privilege like Kanye just did.  

Attorney Client Privileges 
What, exactly, is attorney client privilege. It’s a legal rule that protects the confidentiality of communications between lawyers and clients. But, there are a few exceptions. One of these is that there is no attorney-client privilege protection when communications are intentionally provided to a third-party. Here, the text messages between Kanye and his attorney were protected by attorney client privilege, meaning his attorney was required to keep this information confidential and private. But, when Kanye took a screenshot of these text messages and intentionally shared them on social media this rule no longer applies and the messages, if admissible, could be used as evidence against him in a court of law. 

Non Compete Clauses: 

Kanye's attorney refers to a non-compete clause in the text message above. This is important because it can put limitations on the scope of your trademark rights. Essentially, a non-compete clause restricts how Kanye can use the Yeezy Trademark and prohibits him from competing with a brand directly or indirectly while under contract and for a specific duration of time after the deal has ended. Usually a non-compete agreement means that you can’t (1) develop, design or offer to sell the same products or services and (2) work for a competitor or competing individual. Although, it appears there isn't an Adidas non-compete clause to worry about here. 

If you're wondering what a non-compete would look like, Kanye uploaded a ‘summary of restrictions’ letter onto his Instagram page which he received after he sent a formal notice of his contract termination with Gap.  The restrictions with Gap included: "Neither Yeezy nor Ye may use, wear, sponsor, promote, market, advertise, endorse, design, manufacture, license, sell or provide consulting services with respect to any of the following products under the Yeezy Trademarks or Ye’s likeness or any other identifiable attribute, feature or indica of Ye. Specifically, the following categories were mentioned:

• Restricted footwear: athletic, casual, streetwear, sportswear, including football cleats, running shoes, basketball shoes, etc.
• Restricted apparel: athletic, athleisure, streetwear & sportswear, including polo shirts, shorts, pants, socks, undergarments.
• Restricted accessories: athletic, athleisure, casual, streetwear, sportswear, & lifestyle accessories such as inflatables/balls, headbands, wristbands, bags, gym bags, belts, scarves, etc.

See the full list of restrictions below.

𝘴𝘰𝘶𝘳𝘤𝘦: 𝘥𝘢𝘪𝘭𝘺𝘮𝘢𝘪𝘭.𝘤𝘰.𝘶𝘬

Takeaway:

There are obviously some major legal issues to consider when entering into a co-branding partnership. Even if co-branding is successful, it can result in the dilution of both brands. Also, if something negative happens to one brand, there is a risk that it could impact the other. Do your due diligence and evaluate whether co-branding is the right strategy for your company.  Even if you do find the perfect co-branding partner don't under estimate the amount of legal preparation needed to govern the business relationship. 

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our blog posts, content, and comments online and on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey 

However, they've created this brand without clearing and obtaining a license from Harpo, Inc. They are also using the brand name OPRAHDEMICS in connection with their Twitter & IG accounts (@oprahdemics), and a brand website (oprahdemics.com).  In addition to the  "O logo" displayed below. Both the logo and brand name have also been prominently featured at a live recorded show at the Tribeca Film Festival. 

Why Would Oprah Sue, She's a Billionaire? 

Oprah is NOT seeking monetary damages or profits from defendants for capitalizing on her goodwill. Nor does she want to stop them from airing a podcast about her. Oprah is only asking the Court for an injunction to stop them from using this brand name and logo. As a Trademark Owner she has a duty to prevent dilution of her billion dollar brand and stop consumers from being mislead.

"Her Money Don't Jingle Jingle, It folds"! 

Oprah has an impressive family of trademarks. She currently has over  79 active registrations and pending applications filed with the United States Patent and Trademark Office, USPTO. 

But, Isn't This Fair Use? 

The biggest misunderstanding is thinking that fair use is a right. Instead, fair use is a defense that you use in court after you have been sued and named in an infringement lawsuit. This means a podcast host must be hauled into court in order for a judge to provide a definitive answer on whether a particular use is fair use or not.

Unfortunately, it doesn't look like they'll be able to use that defense here. Oprahdemics" and the "O logo" are prominently being used here as source identifiers (trademarks) not merely to describe the subject, field, or topic of the podcast. It also doesn't appear they are using Oprah's trademarks merely to report the news, give commentary, for parody or for comparative advertising purposes only.

How Can I Avoid This?

In the world of Podcasting, there are many legal considerations to take into account before hitting record: 

The first is investing & paying for a Preliminary Trademark Clearance Search to make sure you are NOT  infringing on someone else's rights. (DIY-google searches do not count) The second is working with a Trademark Attorney to Register Your Trademarks, like Oprah, to prevent others from doing the same. 

The case is Harpo Inc. v. Jackson et al., case number 1:22-cv-06787, in the U.S. District Court for the Southern District of New York.

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our content and comments on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey 

Barbie is the most popular fashion doll ever produced with more than 100 dolls sold every minute, with a total of 58 million sold annually. Barbie is sold in 150 countries worldwide and has products in 45 categories, including food, fitness, and clothing. Barbie has a powerful social media presence with over 2.1 million followers on Instagram (@barbie).

The Consequences of My Inaction? 

Upon learning of this infringement, Mattel immediately engaged with Rap Snacks to attempt to resolve this matter.( ie. Cease & Desist Letter) They however, refused to stop using the BARBIE trademark and issued no corrective advertising, thereby forcing Mattel to bring this lawsuit as a last resort to protect its rights and prevent further consumer confusion.

Don't Ignore Cease and Desist Letters 

Mattel is now seeking damages, injunctive relief, and attorneys’ fee/court costs as well as an accounting of Rap Snacks’ profits resulting from its decision to infringe Mattel’s trademark. The video below is their announced partnership with Rapper, Nicki Minaj to release her signature flavor of chips. 

Gearing Up to Hit The Big Screen 

In anticipation of the new Barbie Movie hitting theaters in 2023. Mattel has also filed several new 1(b) intent-to-use Trademark Applications in classes: 043- Restaurant Services and 029- Fruit Based Snack Foods.

The case is 2:22-cv-05702, Mattel, Inc. v. Rap Snacks, Inc.

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our content and comments on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey 

A Week After Launching"Rhode", Hailey Bieber, is facing a Trademark Infringement Lawsuit

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rhode skin (@rhode) • Instagram photos and videos

Hailey Bieber filed a section 1(b), intent-to-use, trademark application with the United States Patent and Trademark Office (USPTO)  for the name "RHODE" in Class 003 for beauty and wellness products on December 30th, 2020. Fun fact: Rhode is actually Hailey's middle name. The application is still pending with the USPTO (Serial No. 90432582).

A year and half later, Hailey announced the debut of RHODE and officially launched her skincare company on June 15th, 2022. A fashion brand, with the same name, RHODE, filed a lawsuit for infringement one week later. The fashion brand registered their Trademark in Class 025 for clothing back in 2017 (U.S. Registration No: 5286239),  selling their goods at major luxury retailers like Saks Fifth Avenue and Neiman Marcus. 

Here are a few takeaway:

1. "Notice of Allowance" is not Registration 

Receiving a “Notice of Allowance" from the USPTO  for your 1(b) trademark application does NOT mean your trademark has registered or even guarantee that it will be. It just means your application appears to be entitled to trademark registration under the law and no opposition has been filed. 

2. Don't forget about the "Natural Zone of Expansion" 
Trademark protection generally extends only to the class and goods/ services the trademark owner listed in their application. However, the "natural zone of expansion" doctrine is a special exception to this rule. This is what the fashion brand is using to try to extend their trademark's rights into skincare and wellness products. The gray area — and the one usually litigated — is the extent of what additional items fall within this "natural zone of expansion". The fashion brand alleges the expansion is common amongst celebrities. Noting Gwyneth Paltrow’s brand, GOOP, “markets and sells lifestyle products including, among other things, both fashion and skincare.”

3. Be proactive and don't cut corners on the trademark search 

If you are a clothing brand and know you're planning on expanding outside of Class 025, it’s often a good idea to file a new application as soon as possible to avoid the huge expense of litigating this issue in court. And if you're a new skincare or cosmetic brand don't cut corners on the Trademark Search. It's always best to work with an experienced Trademark Attorney who can properly advise you on legal trends and coordinated classes, BEFORE filing, to see what prior rights might already exist. 

If you'd like to discuss the best approach to protect your brand, here is a link to schedule a Strategy Call with our Firm. https://www.clarissaharveylaw.com/contact-us

\ud83d\udd14 Disclaimer: This post does NOT constitute legal advice. All of our content and comments on social media are for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

\u00a9 2022 The Law Office of Clarissa Harvey 

Kim Kardashian Launches Skincare Brand, SKKN by Kim, despite Trademark Battle. 

The Kardashians can't avoid the drama. Kim K launches her new skincare company, SKKN by Kim, despite ongoing trademark battles. Let's talk about the legal issues with this billionaire, makeup mogul, choosing "SKKN by Kim" as her brand name.

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SKKN BY KIM (@skkn) • Instagram photos and videos

Dilemma with Descriptive Words.

 "SKKN” is the phonetic equivalent of the word, skin. Any brand name that describes a characteristic, function, feature or purpose of the goods (skincare) will automatically be declared by the United States Patent and Trademark Office (USPTO) as descriptive and will need to be disclaimed by the applicant. A “disclaimer” is just a fancy word for a statement in the trademark application record that an applicant does not claim exclusive rights to it because the word is unregistrable. The reasoning behind this is that, other skincare companies will need to be able to use the word "Skin", and any phonetic equalivant of this,  to describe what they sell to their customers.

For this reason, descriptive Trademarks are realatively weak on the distinctiveness spectrum. Knowing this, Kim added the phrase "By Kim" to her trademark. But, is this minor addition enough to distinguish her goods and services from others in the market? Maybe? Maybe not!  Although not dispositive, third party registrations are relevant to prove that consumers in this market are capable of distinguishing between different  marks based on small differences. In this context, the USPTO may find that it is sufficient to add one additional unique term to the "crowded" field term when trying to secure a registration. 

Cultural Appropriation & the Court of Public Opinion.

Whether a trademark is protectable, and the amount of protection it receives, is analyzed in part based on the trademark’s “distinctiveness.” The less distinctive a mark is, the less likely it is protectable (if at all). There are several other brands that are already using the brand name, SKKN, or a close variation, and have also filed Trademark Applications with the USPTO. 

Fans on Twitter and IG have even claimed that Kim allegedly stole the name from Beauty Concepts, LLC a Black-Owned Skincare Company. 

Lori Harvey & Kim K both launched brands with the names SKN & SKKN, when SKKN+ is already owned by someone else. Why can’t ppl be original? I hope the girl doesn’t get bought out.

— Laine B. \ud83c\udded\ud83c\uddf9\ud83d\udcb0 (@mrslainebradley) June 2, 2022

But, this is not the first time Kim Kardashian had to change her brand name. Kim filed trademarks for "Kimono Body", "Kimono Intimates" and "Kimono World" and ended up rebranding her shapewear line (SKIMS) after backlash over the cultural significance of the word Kimono in Japanese culture. 

Cydnie, the owner of Beauty Concepts, LLC established her business in 2018 and filed an application in March 2021, (Serial No. 90608147) with the USPTO to protect the SKKN + brand name. Kardashian contends that she is not infringing on Cydnie's trademark, because her rights are only “confined to the mark [she is] attempting to register with the USPTO, which includes stylization, a plus sign, and a logo". None of these registerable components appear in any of Kardashian's trademark filings.

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A post shared by SKKN+ (@skknplus)

But, from a legal standpoint, we can't just ignore the word SKKN.  It is well settled that the disclaimed material ("SKKN") still forms a part of the mark and cannot be ignored in determining likelihood of confusion. Because the public is unaware of what words have been disclaimed during prosecution of the trademark application at the USPTO. 

Beauty Concept's Trademark Attorney, filed a Notice of Opposition stating that all 18 of the SKKN BY KIM filings are likely to cause confusion with SKKN + and damage the brand which Cydnie worked so hard to establish.  A copy of the document they filed with the USPTO’s Trademark Trial and Appeal Board (TTAB) to begin the opposition process can be found at: https://ttabvue.uspto.gov/ttabvue/v?pno=91273677&pty=OPP&eno=1.

“The SKKN+ team is disheartened that we are being forced to shift valuable resources from our small business – which is currently expanding into a bigger space - in order to fight to preserve and protect our SKKN+ brand and the years of creative and intellectual labor that it has taken to build it." - Cydnie E. (via www.skknplus.com) 

Foreign Fast Track.

Many Trademark cases turn on which party has priority. If a trademark applicant makes a filing in a foreign country and then within 6 months of the filing date applies to the USPTO, the applicant can acquire a priority right dating back to the filing date in the foreign country.  Kim Kardashian says that she, in fact, has a January 25, 2021 priority date for filing the “SKKN” trademark, which is “three months earlier than Cyndie’s [March 28, 2021]  based on a foreign application that her company,  Kimsaprincess, Inc., filed in Jamaica.

Basic Brand Names.

But, wait...there's more! We can't forget about comedian Steve Harvey's daughter, Lori Harvey. She also filed a Trademark Application in  January of 2021 for SKN by LH  ( US. Serial No. 90479152). During an October 2021 interview with Vogue, the 25-year-old model said: “... I got into modeling, and between shoots and backstage at runway shows you have so much makeup being put on your face. My skin was constantly going through it. "So after using, like, 20 different products on my face at one time, I felt like there had to be a simpler way for me to get my skin looking the way I wanted it to.” 

Lori will unfortunately face the same uphill battle with her USPTO trademark application. 

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SKN by LH (@sknbylh) • Instagram photos and videos

Can They All Co-Exist? 

Probably, but I think its a huge risk. Considering the PR backlash and the cost of enforcement, i'm not sure owning the trademark registration for any one of them will provide the trademark protection their skincare brand needs.  In my opinion, they would have all been much better off rebranding and selecting a more distinctive brand name. 

How to Avoid This?

Invest in your brand. Hire The Law Office of Clarissa Harvey to conduct a Trademark Search before investing a substantial amount of time, energy and money in developing and building value and goodwill in your new brand. You should work with a Trademark Attorney to search and select a Brand Name that is registrable and does not infringe on someone else's rights. Failing to do so, can be costly!

Disclaimer: This post does NOT constitute legal advice. This blog is for general informational and educational purposes only. Viewing this post does not create an attorney-client relationship with The Law Office of Clarissa Harvey. We are not responsible for any action taken by a reader based upon any information on social media. You should always seek appropriate legal advice offline from an attorney licensed in your jurisdiction to discuss the specifics of your case.

The complaint, filed Monday in the US District Court for the District of Kansas, alleges that Dior Restaurant LLC is also advertising “Dior Bag Giveaways” for counterfeit bags.

As a result, on or about March 29, 2022, counsel for Christian Dior Couture sent a cease-and-desist letter demanding them to promptly change the business name, signage, menus, and destory all items with the DIOR mark.  Dior Restaurants, LLC failed to comply.Christina Dior Couture is now requesting the court to:

1. Order Dior Restaurants, LLC to transfer ownership to Christian Dior Couture of any domain name that consists of or includes the mark DIOR.
2. Award Christian Dior Couture statutory damages of $2,000,000 per counterfeit mark.
3. Award Christian Dior Couture three times Defendant’s profits or three times Christian Dior Couture’s damages.
4. Award Christian Dior Couture statutory damages of $100,000 for each domain name that is identical or confusingly similar to or dilutive of the famous mark DIOR
5. Pay Christian Dior's Reasonable Attorney's Fees.

Takeaway: 

1. Conduct a Trademark Clearance Search as early as possible, perferably before launching your business and certainly before substantial investments have been made. An experienced Trademark Attorney can advise you on the level of risk associated with the use and registration of your brand name. This lawsuit could have easily been avoided for minimal cost. 

2.  Luxury Brands spend over $100 Million dollars a year on marketing and advertsing and pay a large sum of money to hire the best attorneys to monitor their brand. As a Trademark Owner they must ensure they control use of their mark and specifically control the quality of their goods and services. Long-term failure to police and protect their Tradmark could significantly devalue their brand and even cost them their federal trademark protection all together. 

The case is: Christian Dior Couture SA v. Dior Restaurant, LLC (2:22-cv-02182-JWL-ADM) District Judge Lungstrum

Starz Entertainment, Lions Gate, and 50 Cent (Defandants) are all being sued for Trademark Infringement by Byron Belin (Platinff) in California Central District Court for allegedly stealing his registered trademark, “BMF" (U.S. No. 87534094 ) and using it to promote a TV series created and produced by Curtis "50 Cent” Jackson, which tells the story of the Detroit-based drug-trafficking organization known as the Black Mafia Family. According to the complaint Starz allegedly refused to engage in any discussions regarding the licensing of the BMF trademark and willfully continued to use it. The series premiered September 9, 2021 and is reportedly one of Starz's most successful TV series, renewing for a second season.

In 2017, Belin filed a 1(b) intent-to-use Trademark application with the USPTO in Class 41 for Entertainment Services (motion pictures, television and Internet) with a first use date of 10-24-2017. The BMF trademark was officially registered in 2020. 

50 cent's company, G-Unit Brands, filed several intent-to-use applications for various BMF logos in August 2021 for merch (bags, jewelry, phone cases etc.) in classes 09,14,18,16,and 21 before the series aired. These applications do not cover entertainment servces and are still pending with the USPTO. 

The Defendants moved to dismiss Belin’s complaint, arguing that their use of the BMF mark was protected by the First Amendment under the test set forth by the Second Circuit in Rogers v. Grimaldi and adopted by the Ninth Circuit. While claims of trademark infringement under the Lanham Act are generally governed by a likelihood of-confusion test, courts in the Ninth Circuit apply the Rogers test when the alleged infringement concerns an expressive work to accommodate First Amendment interests. The district court granted the defendants’ motion to dismiss and the court dismissed Belin’s complaint with leave to amend on June 17, 2022.

The burden has now shifted to Belin to show (1) that he has a valid, protectable trademark, and (2) that the trademark is either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work. In a smiliar case, the Ninth Circuit has already held that Twentieth Century Fox's use of the word "Empire"  in their television show’s title where its “subject matter” was a “conglomerate, ‘Empire Enterprises’” was “artistically relevant”. So, Belin must prove that Defendants’ use of the BMF Mark  “explicitly misleads consumers as to the source or the content” of the Series for Plaintiff’s claims to remain viable at this stage.“ The relevant question, therefore, is whether Defendant's BMF Series would confuse consumers into thinking that Belin is somehow behind the series or that Belin sponsors the series. 

Belin amended his complaint and refiled on 07/18/22, providing more evidence of how Defendants deliberately chose to abbreviate the term Black Mafia Family and title the show "BMF," identical to Belin's BMF Mark for which he advertises his YouTube "BMF 'The Series'" program and his "BMF Promotions" business. Will this additional information be enough to sway the court and overcome the highbar needed to prevail? 

The case is: Byron Belin v. Starz Entertainment, LLC et al (2:21-cv-09586), California Central District Court

Filed: 12/10/202. Stay tuned for more udpates as the case unfolds. 

After waiting 12-18 months, trademark registration can often feel like the finish line. But, a certificate of registration is not the end of the trademark race, but merely the beginning.

Here are four things, we think trademark holders should know about their new registrations. 

1. ANYONE WITH STANDING CAN PETITION TO CANCEL YOUR REGISTRATIONS

Petitions can be filed at anytime. The Lanham Act has a relatively low standard for standing.

To establish standing a party must plead that it has a “real interest” in the outcome of the proceeding. To plead a ‘real interest’ in the case, opposers must only allege a ‘direct and personal stake’ in the outcome. This is why we strongly encourage you to conduct a Pre-Filing Trademark Clearance Search prior to filing your application, so we can assess your level of risk (low, moderate, high). 

At the end of the day, Trademark Examining Attorneys at the USPTO are human beings and can sometimes make mistakes. This is precisely what the trademark opposition period is for. Some examples of available grounds for opposition or cancellation are listed below: 

(1) Likleihood to cause confusion, or to cause mistake, or to deceive. 

(2) No use of the Trademark in commerce prior to the filing a 1(a) application.

(3)N bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under 1(b). 

(4) The owner is not ( and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark. 

(5) The Trademark has been abandoned due to nonuse with no intent to resume. 

(6) The Trademark would dilute the distinctive quality of a famous mark.

(7) The federal registration symbol was missued with the intent to deceive the purchasing public or others in the trade into believing that the mark is registered.

(8) Fraud was committed during registration or prosecution the application.

(9) The mark is generic. 

However, once a Tradedmark registration is more than 5 years old it does become more difficult to invalidate.

2. YOU SHOULD KEEP & MAINTAIN RECORDS OF FIRST USE

The USTPO does not require that you submit proof showing the date of first use in commerce, however, you should always keep a copy of such an invoice for your records. If another challenges the validity of your trademark application/registration by questioning your first use dates, having records showing the first use will better position you to win that fight.

3. YOU ARE REQURIED TO MAINTAIN YOUR TRADEMARK REGISTRATIONS

Once you own a trademark registration, you must file certain documents at regular intervals to show that you're continuing to use your trademark in commerce. The USPTO is not obligated to send reminders of these deadlines, and failure to receive a reminder does not excuse you from meeting your statutory filing obligations. Failure to timely file these document, pay associated maintenance fees, and delete goods or services promptly if no longer in use can result in abandoment or cancellation of your registration(s).

4. YOU HAVE A DUTY TO MONITOR AND PROTECT YOUR TRADEMARKS

The USPTO registers trademarks, but it does not monitor or enforce them—that’s up to YOU, the trademark owner.  This means you should actively monitor your Trademarks for unauthorized use or attemps to register confusingly similar marks on the Principal or Supplemental database.

Many business owners choose to hire our Firm to monitor for infringing action and deliver them a weekly, monthly or quarterly report detailing any potential infringement and notifing them of any action needed and/or upcoming filing deadlines. Contact us to request a flat fee quote for this service. 

What is a Filing Class?

The United States Patent and Trademark Office (USPTO) issues trademark registrations based on a filing class system. In order to protect everything your brand offers, you will want to file in every class you’re eligible for. There are a total of 45 different classes to choose from. Classes 1-34 cover goods, and classes 35-45 cover services. Keep in mind, you will be required to provide a specimen (a sample of how you are actually using your mark with your goods or services in the commercial marketplace) for each class of goods and services in your application. 

How to Choose the Right Classification?

To choose the correct trademark class, you must first decide whether your trademark applies to a good or a service. A good is a physical item that people purchase from you. A service is an activity that you perform for other people. Sometimes, it’s easy to tell the difference. Furniture, for example, is a good. Accounting is a service. But other times, the line isn’t so clear. The Trademark Office uses the example of T-shirts. If you sell t-shirts, you are providing a good. If people bring shirts to you and you custom print them, you are providing a printing service. If you sell t-shirts and also print designs on them, you may need to register trademarks for both a good and a service. ​​

Next, you must search the Trademark Identification Manual to determine which classes are appropriate for each identified good and/or service. This is another great example of when the answer may not be obvious. Take the cosmetic industry for example. Many business owners would make the mistake of selecting only Class 3 (Cosmetics) on their application. However, goods in this industry are covered by a number of different classes. Eyeshadow, lipsticks, and blush would be covered by Class 3 but makeup brushes, cosmetic refrigerators, pencil sharpeners and cosmetic bags would not.

What Happens If I Get It Wrong? 

The mark itself, and the list of goods and services cannot be materially changed or expanded after filing your application (See Rule 2.71(a)). This mean you must include ALL relevant classes when you submit your application. If you need to add more classes , you'll have to file another trademark application and If, for any reason, you choose the wrong trademark class, the USPTO may deny your application, and you will not be reimbursed for your filing fees, which means that choosing the wrong trademark class may not only cost you several hundred dollars but also several months of your time. 

Not only will it delay the process, the USPTO is seeing on average 3,500 applications a day. Time is of the essence here. This puts you at risk if another business within that timeframe swoops in and applies to register a mark that is either identical or confusingly similar which could ultimately prevent or block you from obtaining registration or make it very expensive to fight for the right to use your brand name. 

Do I Really Need to File In Multiple Classes?

Your rights and your scope of protection are determined by the classes that you designate and pay for in your trademark application. The frugality of trying to save a few bucks by including fewer classifications can leave you unprotected and prevent you from enforcing your rights if an infringement occurs. It may also limit the goods or services you can sell in the future if someone happens to registers your mark in another class, before you do.

Don't Stress- We've Got Your Back!

As you may have already noticed Trademark Classifications can be confusing. Which is why we are here to help make sure that you get it right, so you can have peace of mind that your brand is protected without future issues down the line. 

Schedule Your Trademark Consultation Today!

Sound marks belong to a special group of trademarks referred to as “sensory” trademarks.  The Lanham Act defines the term “trademark” to include “any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods from those sold by others ” In expanding this universe of symbols and devices the USPTO recognizes, as long as they are not functional,  (1) Shape of a Product  aka “Trade Dress” (2)  Scent and (3) Color as other, non-traditional, marks eligible for registration.

But, just to make sure we are clear, you can’t trademark a sound just because you like it and don't want anyone else to use it.  Sounds are only eligible for registration on the Principal Register when they are able to successfully make an association with a particular product or service used in commerce. So, rest assured, you won't be getting a cease-and-desist letter from Pitbulls legal team for yelling out "EEEEEYOOOOO". Pitbull's scope of protection is limited to the use of this sound only in connection with the sale of “entertainment services in the nature of live musical performances” and “musical sound recordings; musical video recordings”. 

As with word marks, sound marks fall on a spectrum of distinctiveness too ( if you are not familiar with the term "distinctiveness", check out our previous blog post– and I'll will catch you up to speed ).  This spectrum ranges from arbitrary marks to those that are consdiered “imitate ‘commonplace’ sounds that humans are accustomed to hearing. Commonplace sounds are incapable of identifying one single source and are not be eligible for registration unless they have acquired distinctiveness. 

After reading that, I know you’re probably think… well how in the heck did Pitbull obtain a registration? People yell on songs all the time?  And you’re absolutely right, his sound is commonplace and NOT inherently distinctive. But, nonetheless, he was able to successfully prove to the USPTO that he has acquire distinctiveness ( ie. used the mark in national prime time advertising for Pepsi\u00ae and Budlight\u00ae, made over $10M in performance income, $12M in publishing, $100M in tours, featured in a Warner Brother's\u00ae Film). Very few artists, other than “Mr. Worldwide”himself, have attain the level of success to pull it off . 

Pitbull is The First Music Artist to Successfully Register a Sound Call 2

Sound mark registration are extremely rare. As of Q1 2022, there are more than 2,908,053 active trademark registrations in the United States, yet only 369 of those are sensory trademarks. Are you shocked? I am! I don't know what's more shocking, the limited number of sensory registrations or the fact that Pitbull is the first to ever do it in 2019? 

Sound calls are nothing new. In Hip-hop, they are referred to as “producer tags”, and have been used in music industry since the early ‘90s. Some examples of producer tags you’ve recently heard might include: “Run that back, Turbo!” ( Turbo); “Another one.” (Dj Khaled); “If Young Metro don’t trust you…”(Metro Boomin); “Murda on the beat so it’s not nice” ( Murda Beatz) ; and “Yo Pi’erre, you wanna come out here?” ( Pi’erre Bourne) to name just a few. 

What Sparked The Registration? 

There was evidence of actual confusion- when fans heard a similar "EYO" sound in the song, “ Mi Gente”,  released in June 2017, by Colombian singer J Balvin and French producer Willy William, which had absolutely ZERO connection to Pitbull. This prompted him to quickly seek Trademark protection– so that others can’t use his brand without his consent and without getting paid. The confusion resulted from a 2-3 second stretch.' First appearing at the 0:52 mark and repeated twice more on the track. 

The Next Wave:

Run, don't walk! This is the future of trademark law. Artists are starting to wake up and understand how much power and influence they really have. Artists are realizing the amount of wealth they are losing out on just by lacking brand ownership and control of their intellectual property. As a result, I think we will likely see an influx of  Trademark Applications and Registrations for sound marks from producers and music artists alike in the hiphop industry. Which is a movement, I am really excited about. 

Resources: 

1. Here are some additional USPTO sound marks that you probably didn't know were registered. 

https://www.uspto.gov/trademarks/soundmarks/trademark-sound-mark-examples

2. NYU School of Law Journal of Intellectual Property and Entertainment Law, published an essay about the evolution of Pitbull’s “grito” (a traditional Mexican shout); the history and cultural significance of the “grito” in Latin music; the law involving sound trademarks. Justin F. McNaughton, Esq., Ryan Kairalla, Esq., Leslie José Zigel, Esq., and Armando Christian Perez.

https://jipel.law.nyu.edu/eeeeeeeyoooooo/

Besides being billionaires, both Kylie Jenner and Donald Trump have had their Trademark Applications rejected by the USPTO. \u274c  Why? Because applying for trademark registration is not as simple as checking boxes and filling out an application. When you file an application with the United States Patent and Trademark Office (USPTO), you are initiating a complex legal proceeding that expects you to understand the nuances of trademark law. Let's see how we can learn from these billionaires and their trademark mistakes.

Kylie Jenner, Reality TV Star and the World's Youngest Billionaire has filed over 200 trademark applications in her lifetime.Let's use her most recent attempt to register the phrase, “RIIISE AND SHIIINNEE” after posting a video while singing “Rise and Shine” to her daughter, Stormi, as an example of how likelihood of confusion works.

The applied-for mark was: RIIISE AND SHIIINNEE (in standard characters) for Class 025 to sell “Belts; Bottoms as clothing; Coats; Dresses; Footwear; Gloves; Headbands; Headwear; Jackets; Loungewear; Scarves; Sleepwear; Socks; Swimwear; Tops as clothing; Undergarments.”

The USPTO's examining attorney conducted a search of the federal database to determine if there were any registered marks or pending application that were confusingly similar in appearance, sound, meaning or overall commercial impression selling or intending to sell related goods or services. The examiner cited the following registration for- 2(d) likelihood of confusion: U.S. Registration No. 2549750  RISE ‘N SHINE (in standard characters) for Class 003 selling “Perfumes, body oils, room fragrances, essential oils, shampoos, hair conditioners, body soaps and body powders.”

The BIG TAKEAWAY here is that goods and/or services need not be identical to find a likelihood of confusion. Even though the identified goods and services listed are in different categories, they “are presumed to travel in the same channels of trade to the same class of purchasers” (TMEP 1207.01(a)(i)). The USPTO found that clothing and clothing accessory goods are commonly sold alongside registrant’s perfumes, fragrances, hair products, and body products. These goods are commonly provided by the same entity under the same mark to the same consumers through the same trade channels.

Donald Trump, the only billionaire president in American history, tried to trademark his famous catchphrase from The Apprentice. The applied-for mark was: "You're Fired" (in standard characters) for Class 028 to sell toys and casino games. The USPTO examiner cited the following registration for 2(d)- likelihood of confusion: U.S. Registration No. 2549750  "You're Hired," (in standard characters) for Class 028 selling educational board games.

The BIG TAKEAWAY here is that that likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall commercial impression. The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  

Ready to Get Started?

What is the Trademark “Distinctiveness Spectrum?

Trademark law in the United States is designed primarily to protect consumers by allowing them to identify and distinguish the source of a product or service from other sources. With this in mind, the  law recognizes varying levels of trademark strength based on level of distinctiveness—i.e., a trademark's ability to set itself apart from other marks. 

The stronger your brand name is on the spectrum, the easier it is to obtain registration and the easier it is to  prevent others from using your mark. Weak or descriptive brands are difficult to register and costly for you to defend because they are not afforded the same legal protections.  In ascending order from weakest (least distinctive) to strongest (most distinctive), marks are classified as generic, descriptive, suggestive, arbitrary, or fanciful.

Generic 

Generic Trademarks by definition are not distinctive. These are marks that are simply the common name for the goods and services being sold. Generic marks are NOT eligible for trademark protection because they are incapable of denoting a unique source- which is a requirement for trademark protection. Examples: THE BABYSITTING COMPANY for caregiving services, LAWYERS(dot)COM for websites containing legal information or HOMELESS SHELTER for a nonprofit homeless shelter. 

Descriptive

Similarly, a Trademark application will be rejected if the mark simply describes an ingredient, quality, characteristic, function, feature, purpose, or use of your product or service. Descriptive Trademarks are NOT eligible for registration on the Principal Register (the Supplemental Register is still a possibility)  unless a secondary meaning or association has been developed in the public’s mind through usage. 

After a trademark has been used continuously for (5) five years, a merely descriptive mark can become eligible to be filed on the Principal Register. As an example, the word mark “RAISIN BRAN”  is merely descriptive of the foods used in the cereal and would not be eligible for trademark registration had Kellogg Company not demonstrated through evidence of use (including sales, advertising expenditures, and consumer surveys) that the buying public had come to distinctively associate Raisin Bran with this particular Kellogg’s cereal.  Some other good examples of “descriptive” marks include: “AMERICAN AIRLINES”, “CHICK-FIL-A”, “HOME DEPOT”, and “PIZZA HUT”  

Suggestive 

Suggestive Trademarks are marks that suggest or imply a quality or characteristic of the goods and services being sold but do not directly communicate what the product is. They require a little bit of mental gymnastics or imagination on the part of the consumer.  Examples include “NETFLIX” (streaming services) and “COPPERTONE” ( sunscreen lotion). 

Arbitrary 

Arbitrary Trademarks are words found in the dictionary but have no relationship to the product or service being sold. A great example of an arbitrary mark is “APPLE” for smartphones and computers.  The word “apple” is defined as a type of fruit, but it bears no relationship to smartphones or computers.  Some other good examples of “arbitrary” marks include “AMAZON”(online marketplace), “DOVE” (personal care products), “COACH” (designer accessories), and “DOMINOES” (pizza). 

Fanciful 

Fanciful marks are the strongest of all marks and the easiest to register. Fanciful marks are made up words that have no relation to the good or service being sold and have no meaning other than to distinctly identify the product or service and distinguish it in the minds of consumers from those of any other vendor. “Starbucks” is a great example as well as “GOOGLE” “PEPSI”, “CLOROX”, “VERIZON”, “SPOTIFY” and “KODAK.” These are all very strong trademarks. 

Takeaway: 

In trademark law, “arbitrary” and “fanciful” trademarks are known as inherently distinctive and entitled to the strongest trademark protection.  Arbitrary trademarks and fanciful trademarks are considered most desirable from a legal perspective.

Reference:

Abercrombie & Fitch Co. vs. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976). 

1. Choosing the Wrong Business Structure: 

There are Sole Proprietorships, LLCs, LLPs, Limited Partnerships, General Partnerships, Non-Profits and Corporations. Choosing the right legal structure means understanding the tax implications, ownership options, management, control, personal liability exposure, formalities, access to capital etc.

2. Signing a Contract in your Personal Capacity:

Signing your name as an individual may subject you to personal liability in the event of a breach of contract. Signing as a representative means that you are signing only on behalf of the entity. Example: 

XYZ, Inc.

By: ____________________________

[Your Name], President

3. Commingling Personal and Business Finances:

The commingling of assets or funds can allow the Court to disregard your business structure and "pierce the corporate veil" exposing any owners or members to personal liability.

4. Not Having a Privacy Policy or Copying One:

A Privacy Policy is required by Law if you are collecting any personal data from your website users (i.e. Email Subscription, Shipping Address, etc. ) Your policy must legally comply with COPPA, HIPPA, the GDPR and California CCPA and should never be blindly copied from other sites. It should be tailored to your specific business procedures and operations and continue to evolve with your business as it grows. 

5. Choosing a Name That You Can't Own or Trademark.

CYA & hire a Trademark Attorney to conduct a Clearance Search as early as possible! Is your brand already registered with the USPTO? Is it being used by someone with Common Law rights? Is your brand confusingly similar in sound, spelling, foreign translation or commercial impression to another registered mark? Is it merely descriptive? Don't risk rebranding or a costly Trademark Infringement Lawsuit.

6. Exposing Your Business to Copyright Infringement by:

• "Screenshot-ing" a photo and posting it on social media.

• Using a photo from Google for your Blog/ Ad/ Website.

• Using Music that is copyright protected for your Podcast Intro/Outro

• Not understanding that Fair Use is not a right. It is a defense used in Court when you are being named as a party to a Copyright Infringment Lawsuit.

7. Never Obtaining the Licenses and Permits for Your Business (Federal, State, City & County).

If you operate your business without a valid license, at a minimum, you should expect to pay a fine or penalty. Not having the proper business licensure is also considered fraudulent activity and can open your company up to lawsuits and the loss of Common Law Trademark Rights.

8. Not Having Business Insurance:

Money is usually tight for Start Up businesses, and protecting yourself against the possibility of some hypothetical, farfetched event just doesn’t seem like a priority right now. Disasters happen more frequently than you think. Insurance can help you pay the costs of property damage, legal fees, attorneys fees, lawsuit judgements, lost business income, and other covered losses.

9. Using Template/ Generic Contracts:

Using Legal Zoom or a Contract that you've found on Google is extremely risky. These are generic contract templates usually not drafted by an attorney. They may not be valid in your state and will not address unique issues of your business, niche, industry or the transaction itself.

Why are Classes Important? 

Classes are important because they allow trademarks to co-exist. For example, it is possible for Dove\u00ae soap and Dove\u00ae chocolate to both be registered trademarks. And Delta\u00ae airlines and Delta\u00ae faucets. In both situations, these trademarks can co-exist because they belong to different unrelated classes of goods and services. Classes are also important because it provides adequate notice to the public and easy searching capability to uncover potentially-conflicting registered and pending marks. 

Classes Determine your Scope of Protection 

What you need to know as a Business Owner is that the scope of protection of a federal trademark registration is only applicable to the specific international class(es) and the goods and services that you designate and pay for in your trademark application. Beyond the general identification of these classes, are also a description of each individual good or service that the owners want their trademark to apply to. The frugality of saving a few bucks by including fewer international classifications can end up costing you a good chunk of the potential value of your trademark down the road. 

Do Not Select The Wrong Class

It is also important to identify the correct classes on your application.  Do not make the mistake of accidentally filing your mark in the wrong class. The mark itself, and the list of goods and services cannot be materially changed or expanded after filing a trademark application (See Trademark Rule 2.71(a), “The applicant may amend the application to clarify or limit, but NOT to broaden, the identification of goods and/or services . . . .”.  It is critical that you fully understand the scope of the trademark rights you are seeking to protect and that you consult with a Trademark Attorney that can provide you with legal advice and the appropriate judgment in crafting a trademark application. 

10 New Trademark Applications!

No one ever knows for sure what rapper Kanye West is planning, but we do know that he filed 10 New Trademark Applications under Mascotte Holdings, Inc. this month for the standard character mark, YE\u2122\ufe0f, see below. In addition to his lenghty contributions to HipHop and the music industry he is very well-known as the owner of the creative content company DONDA, the fashion company Yeezy, and is a co-owner of the music streaming platform Tidal.

SOURCE: United States Patent and Trademark Office (USPTO) Trademark Status & Document Retrieval (TSDR)

YE\u2122\ufe0f- The NEW Dating App You'll Want to Look Out for in 2022! 

After recently separating from his six-year marriage with Social Media Influencer and Beauty Mogul, Kim Kardashian, matchmaking and the dating scene seem to be on his radar. One of the applications he submitted is for the International Class 45, an internent based social dating app. His timing is impeccable, as studies have shown that activity on dating sites has surged during the pandemic. Government shutdowns have had people craving real human connections and now they are anxious and ready to get back out there. Match Group, the parent company for 45 dating brands, including Tinder, Hinge, OkCupid and Match, reported an increase in downloads and subscribers. More specifically in March 2020, Tinder recorded its highest number of swipes on a single day: 3 billion. From March to May 2020, OkCupid saw a 700% increase in dates. And over on Bumble, video calls increased by 70%.

How Can Kanye File A Trademark Application Before Launching the App? 

Kanye West filed an "Intent to Use" (1)(b) Trademark Application, which allowed him to reserve rights in his trademark while he prepares to launch his match making dating service.  A trademark application filed with the USPTO must designate at least one filing basis. Section 1(b) of the Lanham Act, 15.U.S.C. § 1051(b) states that “…person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark.”

Filing under Section 1(b)- is appropriate for an applicant, like Kanye, who has yet to start using his mark in U.S. commerce but, has a good faith intent to do so.  It is not enough to simply come up with a catchy or clever name. Kanye, must still submit a Statement of Use (SOU) along with evidence of actual usage, referred to as a "Specimen", within six months in order to secure his Trademark registration.  While the United States is a “first to use” country, filing an Intent-to-Use trademark application will still provide the applicant with a prirority advatange and "constructive use" of the mark. Meaning the law will treat him as if you had begun using the Trademark in commerce as of the filing date. 

Thinking of starting a new business or releasing a new service/product line? Contact us today to secure exclusivity and ownership of your brand.

Screenwriter, Victor Miller successfully reclaims domestic rights he assigned back in 1980 for his screenplay, Friday the 13th, by invoking the Copyright Act’s termination provision §203. Ultimately, the case turned on whether Miller was an employee (work made for hire) or independent contractor of the Film Company.

Determining Miller's employment status was important because, a transfer of a copyrighted work created as a work-for-hire cannot be terminated. In Community for Creative Non-Violence v. Reid, 490 U.S. 730, the Supreme Court created a framework for distinguishing between an employee and a non-employee author to be used in matters of copyright. Applying the Reid factors, the 2nd Circuit found Miller was, in fact, an independent contractor allowing him to prevail and successfully reclaim his domestic rights to Friday the 13th. 

More importantly, however, Horror Inc. v. Miller, held that if the creator of a copyrighted work is a union member i.e. (Writers Guild of America, "WGA") that fact has no independent weight in determining whether there is an employment relationship. The Film Company asserted that the district court erred in interpreting “employee” under the Copyright Act in a manner that is in conflict with the National Labor Relations Act. The Film Company proposed that Miller’s WGA membership “inherently” created an employer-employee relationship , independent from the Reid framework. The 2nd Circuit strongly rejected this arguement. 

The holding in this case may negatively impact the outcome of Disney owned Marvel Entertainment's lawsuit. Earlier this year, the estates of several iconic creators hired the same attorney, Marc Toberoff , to file a similar lawsuit to reclaim their rights under §203. Disney is counter-suing to prove that the termination provision does not apply because the creators were all work-for-hires. "Since these were works made for hire and thus owned by Marvel, we filed these lawsuits to confirm that the termination notices are invalid and of no legal effect, Disney's Attorney Petrocelli said to Times News in a telephone interview. It will be interesting to see how this plays out in light of the new Miller decision. 

Link to Court Document: https://www.bloomberglaw.com/public/desktop/document/HorrorIncvMillerDocketNo18031232dCirOct192018CourtDocket?1633648663&fbclid=IwAR2_q5oUJ6RArEevIbLnFNHzJDxMM5lhsiZbDTOtvxPxdBd9njTRrB_HfWc

To prevail on a copyright infringement claim, a plaintiff must show that (1) They own the copyright in the infringed work, and (2) the defendant copied protected elements. A copyright plaintiff may prove copying with circumstantial or direct evidence. Absent direct evidence of copying, proof of infringement involves fact based showings that the defendant had ‘access’ to the plaintiff’s work and that the two works are ‘substantially similar.

Access and substantial similarity operate like a sliding scale: the greater the showing of access, the lesser the showing of substantial similarity is required. An A&R representative associated with Cash Money Records was sent an email reference to Mr. Coopers track. During the time when No Guidance was being created and recorded, Cash Money Records founder Birdman and Chris Brown were allegedly in regular and close contact as co-producers and co-stars, filming the movie entitled “She Ball “which is being used to establish access to the infringed work. Seems like a bit of a stretch but, lack of access will not defeat his case. 

Circuits differ on how they approach “substantial similarity”. Many use a two part test: (1)  An analytical dissection of the work with expert testimony to break down, filter and compare similar copyrighted elements. This prong helps determine if the infringers has taken the heart or a significant part of the original song. Contrary to popular belief, there is in fact, no five second or bright line rule.  Even a very short sample may rise to the level of “substantially similar”. Specifically, Cooper claims his track has the lyrics ... "She got it; she got it" repeated 16 times while Chris Brown and Drake's No Guidance has "You got it, girl; you got it" at least 11 times.  For the second prong (2), whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.  Has the infringer transformed the copyrighted music and made it his/her own? Check back to find out how this case unfolds.

No Guidance- Chris Brown ft. Drake https://youtu.be/6L_k74BOLag

I Love Your Dress- Mr. Cooper https://youtu.be/LldZBzkDgk4

Court Document: https://www.courthousenews.com/.../chris-brown-drake-fla.pdfhttps://www.tmz.com/.../chris-brown-drake-sued-copyright.../

Lateef Mtima, the founder and director of the Institute for Intellectual Property and Social Justice and a professor of law at Howard University comments on the importance and gravity of Jaquel Knight's registration, “It’s potentially as important as the revelation that Ray Charles negotiated back ownership of his masters. At the time he did it, no one knew it. But when it became public knowledge, it awakened modern-day artists to start thinking about their intellectual property from that perspective. The prescience JaQuel has is so important: It’s a way to awaken his artistic community, [to tell them] that they are ignoring one of the most important tools in the toolkit.”

Now, with the growing popularity of virtual dances and challenges on TikTok, a popular video-sharing social media app, many are wondering if it is possible for an "Average Joe" to copyright a dance move before it goes viral?  The answer to this question depends because dance moves fall into a gray area in copyright law.  Copyright law does protect “choreographic works,” and now it is clear that copyright law also extends to protect choreographic work commercially in Pop Music, thanks to Jaquel Knight, but it is important to note that the Copyright Office says that “social dance steps and simple routines” are not protected because they consist of only a few movements or steps. Thus, they are considered "building blocks" of free expression, which are in the public domain for choreographers, dancers, and the general public to use, perform, and enjoy. Examples of commonplace movements or gestures that do not qualify for registration as choreographic works include: a celebratory end zone dance, or an athletic victory gesture, waltz step, the hustle step, the grapevine, or the second position in classical ballet. 

What is the difference between a “choreographic work” and a “social dance step”? The Copyright Office says that registerable choreographic works are typically more complex and intended to be executed by skilled performers before an audience. By contrast, uncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves. For example, the USPTO recently denied the Fresh Prince of Bel Air's  Alfonso Ribeiro a copyright registration for  “The Carlton”, a widely recognized dance popularized by Ribeiro during his days as Carlton Banks. The USPTO stated that the Carlton was “a simple routine made up of three dance steps” and “is not registerable as a choreographic work.

Creators in the music industry are way behind the curve when it comes to protecting their work, of more than 500,000 applications the Copyright Office receives for millions of works registered each year, says Robert Kasunic, a U.S. Copyright Office’s associate, the number for choreographic works is typically less than 20. Congratulations are in order because Knight has successfully paved the way and opened the floodgates for creators to register and obtain copyright protection for their work. 

\u00a9 Copyright 2020. The Law Office of Clarissa. All Rights Reserved.

JLM Couture states that in the Employee Agreement signed by Gutman, she agreed to let the company obtain trademark ownership rights to "Hayley Paige" and all derivatives (“ 'Hayley', 'Paige', 'Hayley Paige Gutman', 'Hayley Gutman', 'Hayley Paige', or any derivative thereof [...] in connection with the design, manufacture, marketing and/or sale of bridal clothing, bridal accessories, and related bridal and wedding items.").  The company later successfully registered nine trademarks containing the designer's name (see below). The contract also extended to the social media account @misshayleypaige and other accounts on platforms including Facebook, Pinterest, Twitter, and YouTube. Because Gutman, signed away trademark rights to her name. That means she can not—legally use her own name to design, manufacture, market or sell bridal apparel, bridal accessories, evening wear and related goods and services. 

In June 2020, "While negotiating a new employment contract, the two sides disagreed over how much freedom Hayley would have to promote her non-related side businesses on the company site. After Hayley stopped posting JLM content and deprived the company of access to the account, JML brought the matter before the court." Where Judge Laura Taylor Swain of the U.S. District Court for the Southern District of New York issued a temporary restraining order in JLM’s favor.

Gutman told her nearly 100,000 followers of her @allthatglittersonthegram account in a video published on Monday, that she did not have a lawyer when she signed the original employment agreement and says that if there is “only one thing” that viewers take away from her video it is that “if anyone tells you that you don’t need a lawyer to take a look at an agreement or contract, please get a lawyer.”

In the words of Makeup Mogul, Bobbi Brown, who similarly sold her name/brand to Estee Lauder in 1995, “In this day and age, with so much media, people are brands, not just the products that people put on their body.” This is especially important to consider when selecting the name of your business. As for what the court will ultimately decide, in regards to Gutman’s use of her name, it seems very unlikely they will find in her favor. The right to contract is one of those fundamental rights in our society that the court upholds at all costs and will not take away unless there is evidence of a valid defense, which does not appear is the case since Guzman acknowledges she willingly signed the agreement.

UPDATE: Court Reviews “Novel” Issue of Social Media Account Ownership in Hayley Paige Lawsuit

After the Preliminary Injunction was issued, the parties’ relationship deteriorated further and JLM requested that the Court hold Hayley  in civil contempt of the Preliminary Injunction Order.  JLM’s request was based on Hayley's activities on her Instagram @allthatglittersonthegram account, including her announcements that she planned to reveal her “new brand name very soon” and reenter the bridal industry this month ( August of 2022). In addition, Haley changing the access credentials for the Instagram Account and the Pinterest Account, and refused to share the new log-in information with JLM.  The Court found that JLM provided clear and convincing evidence that Ms. Gutman failed to comply with the Preliminary Injunction Order, which incorporates her contractual obligation not to compete with JLM. 

Hayley argued that JLM cannot establish ownership of her Accounts because “there is no provision in the Employment Agreement . . . that provide for JLM to receive ownership over social media accounts created by her. This however, was contradicted by the language of the Contract.  As the Court previously found, JLM had demonstrated that the content on the Instagram Account "constitutes a "work for hire" pursuant to Section 10(b) and  11 of the Contract, because Hayley developed the Account “in connection with her employment” under a “handle that incorporated the name to which she had already granted them the exclusive right and license to use”.

The issue of ownership of a social media account is novel, and few courts have examined the question. However, this Court found that JLM is clearly likely to succeed in demonstrating that it owns the Instagram and Pinterest Accounts themselves – and not just their featured content – pursuant to Section 11 of the Contract. We will be watching to see how this trial unfolds and what additional information will be uncovered during discovery. 

The case is JLM Couture Inc. v. Gutman, case number 1:20-cv-10575, in the U.S. District Court for the Southern District of New York.

\u00a9 Copyright 2020. The Law Office of Clarissa. All Rights Reserved.

However, the issue of cultural appropriation and its intersection with trademark law is not a thing of the past. Recently, we have seen Influencer, Kim Kardashian West, attempt to trademark the name “KIMONO”, upsetting Japanese Culture. We have also witnessed Actor, Michael B. Jordan, attempt to trademark “J’OUVERT” for  Rum leaving Trinidad and Tobago in an uproar. As well as Nike, attempting to trademark traditional Samoan male tattoo art on women’s workout leggings. 

What it really boils down to is that consumers misunderstand the rights granted to Trademark holders and understandably don’t realize that owning a trademark registration does NOT mean that the company owns the exclusive right to the phrase, or that it can ban anyone from using it. You see, trademarks do not exist in a vacuum, the Trademark must be tied to one or more specific goods or services. Further, the scope of protection of a federal trademark registration is only applicable to the specific international class(es) that one designates in their application. 

Although the USPTO may allow a company to Trademark a cultural phrase, name or symbol you have to ask yourself is the protection that you obtain from owning that Trademark Registration actually worth it? Bottom line, it is our obligation to be more culturally competent than the generations before us. I believe that Trademark Attorneys have a duty to encourage their clients to go beyond the traditional trademark clearance search and dig deeper to understand and uncover culture sensitivities and really consider how a Trademark will be received.