Public Association Trademarks: The Case of the New York Yankees and the Evil Empire

Every once in a while, a court issues a decision reminding us that we may have rights we’ve never known about or sought to assert. This time the Trademark Trial and Appeal Board (TTAB) has given the New York Yankees more than they initially sought to claim for themselves. 

Last month, a panel of TTAB judges held that the New York Yankees could prevent Evil Enterprises, Inc. from using the phrase BASEBALLS EVIL EMPIRE on clothing because the public had, in fact, come to regard the New York Yankees as, the “evil empire” of Major League Baseball.

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Trademark Applications Web Specimens: the USPTO Releases New Guidelines

Because so many companies market their goods and services online, owners and management naturally expect that their branded websites will be good specimens to support their applications for trademark registration and extensions. Websites are usually excellent and appropriate demonstrations of the use of a trademark.

But, companies are well-advised to use extra care when submitting a website sample as a supporting specimen for trademark registration; the USPTO’s examination of them is especially exacting. If it finds the specimen insufficient, the consequence may be long delays in the application process and possible rejection of the mark.

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As background, trademarks are intended to protect consumers from confusion about the source of goods and services. US trademark registration is based on use in interstate commerce, and requires a declaration that a mark is in actual use in order to entitle a would-be trademark holder to final registration. To demonstrate use in commerce, applicants submit samples showing the brand being employed to actually sell, or offer for sale, the goods or services in question. An appropriate specimen for goods might be a product’s packaging or a point of sale display showing the mark affixed to or next to a product and the price at which it is offered to consumers. For services, a brochure or advertisement might describe a company’s service, its pricing structure and how the service is contracted for.

Applicants must take heed that the USPTO applies not only a “commerce,” but also an “interstate commerce” requirement. Worldwide websites often seem the obvious solution to the requirement that a specimen show use in multiple states. But according to recent guidelines released by the USPTO, websites will only suffice under certain fairly defined circumstances.

First, the sample must contain either a picture or textual description of the goods or services offered. Also, if the website is intended to demonstrate use of the mark for goods or services in several classes of use, i.e. kitchen equipment (Class 21), aprons (Class 25), and cooking classes (Class 41), each class must be represented in the specimen provided.

A shot from American Apparel's homepage showing their mark,
goods associated with it, and a link to order them.

Second, the mark must be prominently displayed in the website specimen on or next to the associated goods or services. What does prominently mean?  Applicants should ensure that the website distinguishes the mark from surrounding text by using a different font, stylization, color, or position. The mark should look like a brand for the goods or services.

Finally, the web specimen should provide the information necessary to purchase the goods or services. This typically includes their price as well as a method for ordering them, such as a 1-800 number, an order form, or “checkout” button. 

Having a web specimen that incorporates the requisite elements will significantly streamline the registration process. Months can pass before the USPTO issues its office action to inform an applicant that a specimen is deficient. Then the applicant is challenged to find an appropriate specimen that was in existence at the time of the use date stated in the application. If an owner expects a website to support a trademark application or a demonstration of continued use, a company and its web developer should consider these trademark application standards at the time the website is being constructed. These best practices go a long way toward efficiently establishing the trademark protection companies value.  

Color Trademarks and Fashion: Branding That “Pops"

Color trademarks are those which use a color alone as the brand for a product, what trademark experts call a “source indicator.” Color marks are considered non-traditional trademarks, and they are generally disfavored by the U.S. Patent and Trademark Office.  Nonetheless, some color marks have achieved “distinctiveness,” that is, the degree of public recognition as a source indicator compels the USPTO to allow owners to register the color as a mark in their field of commerce.

For example, United Parcel Service holds a registration [Reg. No. 2901090] for “the color chocolate brown” [Pantone 462C] as applied to the entire surface of vehicles and uniforms” for the service of delivering personal property. Yellow is registered by the USPTO [Reg. No. 78706568] to the Lance Armstrong Foundation as a single color for wristbands for use in charitable fundraising.

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Expanding the Internet: What do ICANN’s New gTLD Applications Mean for Trademark Owners?

One year ago, as part of a plan to expand the capacity of the Internet’s domain name system, the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for more generic top-level domain names (gTLDs). Currently, the well-known gTLDs include .com, .org, and .net, as well as some of the country indicators that have been repurposed, such as .tv and .es. Adding gTLDs will allow for exponentially more domain names. During the new gTLD application period, ICANN opened the door to any combination of three or more letters in most major alphabets: .blue, .school, .mcdonalds, .law or .商城. The possibilities might seem almost endless, but, on “Reveal Day,” ICANN disclosed a list of 1,930 applications for new gTLDs.  

What does this mean for trademark owners and businesses? Some procedures have been set up; some are still vague and in development. At this stage trademark owners can review the list of proposed gTLDs to determine whether their brands, products or industry names are impacted, and then decide the next step to take with ICANN or otherwise. 

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Louboutin Loses: The Red-Soled Plot Continues

Footwear designer Christian Louboutin, has just suffered another set-back in the company’s ongoing effort to own the red sole, this time in Louboutin’s native France. In 2008, Louboutin filed a lawsuit in Paris against Spanish clothing manufacturer and retailer Zara, after Zara sold a red-soled shoe.  This May, the French Cour de Cassation (the French appeals court) irrevocably invalidated Louboutin’s trademark to the red sole in France. 

The decision appeared to rest on what some might consider a technicality, with the Cour de Cassation noting that Louboutin’s France trademark registration lacked a specific Pantone color reference, a standardized color reproduction code used universally in a variety of industries and in trademark registration[1]. Accordingly, the Cour de Cassation faulted the registration for its lack of precision and distinctiveness.

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Linsanity: From the Basketball Courts to the Trademark Office

“Linsanity” began in February when Knicks benchwarmer Jeremy Lin unexpectedly took the basketball world by storm. Lin had received no athletic scholarship offers out of high school, wasn’t drafted out of college, and was assigned to the Warrior’s D-league three times in his first season with the NBA. 

A soaring basketball career was not generally expected from this 2010 Harvard University graduate, but, after suddenly leading the Knicks to five victories in a row, Lin was promoted to the Knicks’ starting lineup. Lin even impressed veteran Lakers player, Metta World Peace (born Ron Artest), who ran by reporters shouting “Linsanity! Linsanity!” after, with less than a second remaining, Lin scored a game-winning three-pointer against the Toronto Raptors. 

So, on the Monday after the last game of his five-game winning streak, Lin did what any good manager would advise a rising star with a catchy moniker to do: he had his lawyers file a trademark application to register LINSANITY with the United States Patent and Trademark Office (USPTO).

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“Here’s Looking at You, Kid”: That’s Not London Fog in the Moroccan Mist

Burberry has made extensive social media efforts this year to tell the public how its iconic look and status developed over time. Companies, like Burberry, with a visual history to promote, are especially attracted to Facebook’s Timeline. 

Timeline lets users post stories and pictures in chronological order. Visitors scroll down on a Facebook page and go back in time to the initial creation of a product. 

The company can create a nostalgic connection between the visitor and the brand. The Facebook Timeline for this “156 year-old global brand with a distinctly British attitude” includes photos of Burberry’s first store opening in 1856, images of pilots wearing Burberry aviator suits, and pictures of its classic trench coat through the years. 

Then Burberry posted a photo of Humphrey Bogart (Rick) wearing an actual Burberry trench coat in that sublime final scene of the film Casablanca, where Rick stands on the foggy runway, one of “three little people” whose problems “don't amount to a hill of beans in this crazy world…” The Burberry caption underneath the photo reads: “Humphrey Bogart wearing a trench coat in the final scene of Casablanca (1942).”

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Obama’s Campaign Committee Sues Online Vendor for Trademark Infringement

Rising Sun Trademark

Last week President Obama’s campaign committee, Obama for America, filed a trademark infringement lawsuit against an online vendor, DemStore.com, for allegedly using the campaign’s trademarked logo without permission. 

The campaign sent DemStore.com two “cease and desist” letters last year, but the company did not stop using the logos. DemStore has sold merchandise supporting Democratic candidates since 1985, and currently sells Obama election merchandise bearing two logos that belong to Obama for America. 

The two logos at issue are the “Rising Sun” logo, which Obama for America has owned under a federally registered trademark since 2008; and the “2102 Rising Sun” logo, for which it has a pending federal trademark application.

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Federal Circuit tells COACH, You’re Not Famous Enough!

Earlier this year, the Federal Circuit found the COACH mark for famous American handbags to be not famous enough to oppose a similar mark that an educational testing preparation company sought to register. In trademark law, a trademark owner generally has to prove the likelihood of consumer confusion in order to successfully oppose another’s use or registration of a similar mark. 


I wrote a bit about it on our website...

Facebook Asserts Trademark Rights Over the Word "Book"

If the day comes that Facebook applies to register “book” as a trademark, is the USPTO likely to reject its application? 

Perhaps Facebook is better off leaving that question open rather than documenting any USPTO denial. 

Does Facebook actually even use “book” as a mark as its new user agreement implies? If it does, is “book” sufficiently arbitrary, and not just descriptive, such that it can be recognized as a protectable mark? What is truly a “book” anyway in the technology of today’s publishing? We could quickly get philosophical. 

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