Adidas lost a lawsuit against Thom Browne in the US

The German sportswear producer Adidas lost a trademark lawsuit against the famous designer Thom Browne in the US.

The dispute concerns an accusation by Adidas that Thom Browne uses a four strips design pattern that is confusingly similar to the famous three stripes pattern used by the German company that was initially introduced in 1952. For this pattern, Adidas owns a bunch of trademarks around the world including in the US.

Thom Browne uses four stripes pattern for his clothes now but in 2007 he settled a dispute with Adidas because he had used three stripes the years before.

The main issue with the current lawsuit was whether the four stripes pattern is confusingly similar to the three stripes one and what’s more whether this four-stripe design is not actually three-stripe if only the black stripes were counted.

The court dismissed the infringement claim stating that Adidas failed to prove that consumers would be confused between both patterns. One of the reasons was that both companies are not direct competitors. Thom Browne’s products are only high-priced while those of Adidas are affordable by most people. In addition, other companies used different patterns with stripes too, that is to say, this was not uncommon practice as a whole.

Source: The Guardian.

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The lottery is organized by the US Multi-State Lottery Association, whose EU trademark for Powerball was revoked based on non-use for 5 consecutive years.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

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.

Nike is preparing for the Metaverse with trademarks for virtual clothes and shoes

Facebook, one of the biggest social media networks in the world, has announced the launch of its new project called Metaverse. The idea behind it is very similar to the novel Ready Player One by the American author Ernest Cline.

Metaverse is supposed to be a virtual place that replicates entirely the real world. Everyone will have an avatar and will be able to communicate, work and buy products or services within it.

For the time being, we are far away from the finalized product, which could be potentially controversial, but nevertheless, some companies start to prepare their business model for this new development.

Recently, Nike has filed several US trademarks such as Air Jordan, Nike, Just do It, and more, which target virtual clothes, shoes, etc.

One of the assumptions is that every user of the Metaverse will be able to buy virtual products for its avatar, including clothes, cars, houses, and so on, in order to show social status, for instance. Such products can be unique, especially in the light of blockchain technology. What’s more, it is logical that these virtual products can be branded as their real equivalents.

So from that perspective, some innovative companies as Nike have started to prepare their business strategy for the new virtual future, including their IP portfolios.

It is interesting how Nike specified the goods in class 9 – Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds.

There are no virtual clothes or shoes etc in the Nice Classification that is responsible for the list of goods and services necessary for the trademark application process. Probably this is the reason why Nike identified these products as computer programs, a term that is part of the Nice classification.

It is a fascinating idea whether the Nice Classification will undergo changes in the future in order to cover all sorts of new types of products and services that will emerge if Metaverse becomes a reality.

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.

One crucial thing before filing a trademark in order not to waste your money and time

When you have your own business sooner or later you will start thinking about your branding and how to protect it from unfair use by competitors.

All of this is normal because when one business takes off, gaining some traction and achieving some success, other market participants will try to take advantage of its reputation and recognizability amongst the consumers. 

From that perspective, every business owner should be prepared with a proper trademark protection strategy.

Building a good brand name is not an easy task. From one side, such a name should follow so many marketing requirements, from the other the name should be unique, that is to say, it must not be registered as a trademark by someone else.

This, in particular, is essential. If your brand is already registered with the Patent Office of the country where you are operating as a business, this means that you can become a trademark infringer even without suspecting this.

It can be a trap because in such cases a lawsuit can be really expensive and in the end, you probably will need to change your beloved brand.

What is the solution in such situations? Well, it is a simple one, just check the official trademark database of your state Patent Office. This will show you whether there are earlier marks or not.

What do you need to know when you conduct such searches?

In brief, the things that can be bear in mind are:

1. Every trademark is valid only for the goods and services for which it is registered. This means that when you compare two marks they have to share common G&S. If this is the case it could create a problem. All goods and services are grouped in classes called Nice Classes. You can classify your G&S using this free tool TMCLASS.
2. Trademark protection scope covers not only other identical signs but similar too. For example, a trademark INEX for bicycles can stop a later mark INIX for bicycles.
3. Assessment of identical marks is relatively easy. Both marks should be absolutely identical in every aspect. They have to be for identical G&S too.
4. Assessment of similar marks, however, could be tricky. This requires in-depth legal knowledge and understanding of the case law in the relevant country.

It is advisable, such searches to be done through the brand-building process because this will allow you to make modifications to the brand before launching and filing a trademark application. It can save you a lot of money and time. 

In case you want to learn how to do trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand you can check this Udemy Complete course on trademark search.