Can anyone register an EU trademark for Powerball?

Filing a trademark application in bad faith can jeopardise seriously trademark’s future protection because legislation allows such marks to be canceled.

One interesting example of such consequences is from the EU, where the Gibraltar-based company for online bets Lottoland successfully registered a trademark for “Powerball” in classes 35, 41, and 42.

As it is well-known “Powerball” is a US lottery, probably one of the most famous in the entire world, with a record jackpot of $1.5 billion USD.

The lottery is organized by the US Multi-State Lottery Association, whose EU trademark for Powerball was revoked based on non-use for 5 consecutive years.

When the US Accossiation found out about the later trademark Powerball it filed a cancelation request with the EUIPO claiming bad faith. According to the Association, the purpose of the Gibraltar company was to mislead the EU consumers about the real organizer of the lottery. Evidence for such dishonest behavior was the fact that Lottoland registered trademarks for other lotteries such as  EuroMillions and EuroJackpot whose organizers are different.

In contrast, Lottoland counterclaimed that its trademark was legally registered because Powerball has no reputation amongst the consumers in the EU.

The EUIPO agreed with the US Association and canceled the EU mark based on bad faith attempt in regard to its registration. According to the Office, there is no need for one trademark to be known in the EU in order bad faith claim to be possible. The Office considered Lottoland’s behavior dishonest, trying to restrict the real owner of the mark to use it in the EU as well as all other market participants, from one side, and to mislead consumers, from another.

The conclusion of this case is that you need to bear in mind the fact that although one trademark protection has lapsed, this does not mean automatically the sign can be used by someone else. Such use should be analyzed carefully considering all facts and risks.

Source: FRKelly – Adam Flynn for Lexology.

Is there copyright infringement of a work used for educational purposes?

Copyright law protects original creative works, a result of intellectual efforts, giving authors control over who and how can use the works.

Although this monopoly right provides authors with a tool to permit or prohibit the use of their works it is not unlimited. There are some exceptions or the so-called fair use which allows free use of works in case of teaching, criticism, commentary, news report, etc.

The lawsuit between Bell v. Eagle Mountain Saginaw Independent School District reminds us of the practical side of these exceptions.

A US school published on its Twitter account apart from one author’s work as a motivational act for its students. The author being not happy with the lack of request for such use filed a lawsuit for copyright infringement.

The court dismissed the claim stating that the use in the case at hand is fair. There is no evidence for any commercial purposes out of this use as well as no harm to the author’s business or reputation.

Source: Deirdre Kennedy for Kluwer Copyright Blog.

Lego was accused of copyright infringement over a jacket design

As it is well-known copyright is one of the main intellectual property rights that every creator can rely on in order to benefit from his or her created works. The problem with copyright is that it can invoke really complex disputes out of nowhere.

One example of this possibility is a recent lawsuit against LEGO, a toymaker company whose practice is to use characters and stories from famous movies or series for kids constructors.

In the case at hand, the company uses a design of a jacket, known as the “Concannon Jacket”, worn by Antoni Porowski part of Netflix’s Queer Eye reality show.

James Concannon is the artist who created this design, giving Netflix permission to use it for the show.

According to him, however, LEGO has no authorization to use the jacket design for their toys “Queer Eye – The Fab 5 Loft”, which are based on the reality show’s characters.

LEGO dismissed this accusation claiming that they use legally the jacket at least because they had a license from Netflix which in turn had permission from the artist for the same jacket.

Obviously one of the center moments here is what was the scope of the initial license and whether it includes such merchandising use.

According to the US Copyright law, apparel is not copyrightable as a whole. Only separable creative elements of it can be protected.

So the issue here is to what extent the original jacket’s elements are subject to copyright protection alone and to what extent those used by LEGO are similar enough in order for infringement to be found.

Source: SS Rana & Co – Ananyaa Banerjee and Nitika Sinha for Lexology.

Spotify won a trademark dispute against a cannabis app provider

Spotify won a trademark dispute in the US that has a slight tinge of marijuana.

The case concerns a trademark application for POTIFY by a small US company offering an app that connects users with firms that dispense and deliver cannabis.

Spotify, one of the largest music streaming companies in the world, filed an opposition based on earlier trademark SPOTIFY. According to the company, both signs were confusingly similar and what’s more, the mark applied for led to a trademark dilution by way of tarnishment and blurring.

The USPTO agreed with Spotify finding both marks confusingly similar due to clear visual and phonetic similarities. One letter difference was not enough to overcome this issue. According to the Office, dilution is possible too because of the clear association between the signs in the consumer’s mind.

The applicant’s arguments that their mark was created without relation to the famous brand, and that it focuses only on the term POT that is associated with the use of marijuana were dismissed.

The Office stated that taking into account the reputation of the earlier mark, it is highly unlikely that the owners of the cannabis app weren’t aware of the Spotify app service at all.

This dispute shows how risky such brand building can be. Although business areas can be different, a problem can arise again due to the established reputation of famous trademarks in the market.

Will there be a shortage of available trademark names in the future?

James Nurton has published an interesting article for IPWatchdog that focuses our attention on one potential problem – a future trademark names depletion in the US and the EU.

According to professor Barton Beebe of NYU School of Law, 75% of English words in daily use are already registered as trademarks in the US as well as 55% of common surnames.

When it comes to the European Union, the situation is even more concerning. The professor’s data shows that 77% of the 20,000 most common English words are registered as trademarks.

In some classes of goods and services, the situation is even worse. For example, in class 25 – clothes, shoes, etc. 80% of common words are registered.

This trend is similar for other languages as French, Italian, Spanish.

According to Beebe, this can be a serious challenge for the trademark registration process in this century. The problem is that in the presence of “trademark crowding” the cost for registration of new trademarks will arise because the registration process will be accompanied by more oppositions from owners of earlier rights. And at some moment new registration can be really difficult.

There are different solutions to this problem. For instance, Patent Offices can do an examination of whether the applied-for trademarks are identical or similar to already registered signs for the same Nice classes. The EUIPO doesn’t do that whereas there are such checks in other jurisdictions. The Offices can start requiring for narrow specification of goods and services limiting the trademark protection scope. Another option is the requirement for trademark use to be examined by the Patent Offices ex officio. For example, you need to prove trademark use every 5 years in the US otherwise the Patent Office will cancel the trademark registration.

Apart from this procedure and legislation options, new technologies can be of help. One immediate example is blockchain. What is typical for this technology is the fact that it offers uniqueness. A blockchain record is immutable. This corresponds with one of the trademark characteristics, it is a source of trade origin. Trademarks are valid to the extent the mark is used in the market in the way how it is registered.

So blockchain can be helpful in the future but what I mean is not this technology to be used for proving trademark use of fight against counterfeit goods. Probably in the future, the blockchain coding signs can be trademarks themselves identified by consumers through different technical tools, for example.

This topic is quite interesting. What is for sure is the fact that trademark registration becomes more and more complex. There are millions of registered marks all around the world and every new application can face oppositions or cancelations by owners of already registered signs.

That’s why the application process must be preceded by a good trademark clearance search and analyses that to show all possible risks.

UGG boots – a descriptive term or a trademark in the US?

Dennis Crouch, the author of the IP blog Patentlyo reports about an interesting trademark dispute in the US.

The case concerns the term UGG which is used in Australia for describing sheepskin boots. The terms derives from a quote by the surfer Shane Stedman who said that these boots were ugly = ugg.

Different Australian companies use this term for such boots, which are well-known, and from that perspective the term is generic in the country.

The problem arose several years ago when one of those Australian companies imported UGG boots in the US.

A lawsuit for trademark infringement was initiated by Deckers Outdoor Corp based on already registered US trademark for UGG for the same class of goods.

The case was successful for the US company and the Australian importer appealed before the US Supreme Court referring the following questions:

1. Whether a term that is generic in the English-speaking foreign country from which it originated is ineligible for trademark protection in the United States.

2. Whether and, if so, how the “primary significance to the relevant public” standard in 15 U.S.C. § 1064(3) for determining whether a registered trademark has “become” generic applies where a term originated as generic before registration.

It is interesting what will be the Court conclusion on this matter. Nevertheless the case is indicative for the fact that one and the same term can be a trademark and a descriptive term in different countries. This can create risks for both the trademark owners and the users of the term depending where it is used.

A Lego toy or a real gun – that’s the question

We are all aware about toys in the form of guns used by kids for playing. However, it is rare a real gun in the form of toy to be found, a dangerous product which can cause a harm if used by children.

This is the case with the gun cover produced by the US company Culper Precision. They offer a gun cover (Block 19) in the form of a Lego toy, using the well-know design pattern typical for this type of toys. The gun under the cover is real.

Of course the Danish company sent a cease and desist letter insisting sales of such covers to be stopped immediately due to the potential misleading effect on children and possible dangerous incidents that can happen as a result.

Although Culper Precision didn’t infringe a registered trademark belonging to Lego, they used a style typical for Legos’ toys, which could mislead consumers about the product characteristics.

The US company agreed to stop producing this cover after selling 20 items of it. It will be interesting whether Lego will initiate a lawsuit for passing off for example.

Source: EAGLEGATE – Nicole Murdoch