Orange County – Recently a Kosher foods company has applied to trademark the name “Trader Schmo,” which is being opposed by the supermarket chain Trader Joe’s. Part of the reasoning behind the opposition is that Trader Joe’s believes that the phrase “Joe Schmo” is so recognized that Trader Schmo will confuse consumers, especially with both companies selling food.
Trader Joe’s began in 1958 and is based in Monrovia, California. There are 475 Trader Joe’s retail grocery stores in forty one states across the country. Trader Joe’s also uses trademarks similar to its core trademark including TRADER MING’S (Chinese food), TRADER JOSE (Mexican food), TRADER JOE-SAN, (Japanese food), TRADER JACQUE’S (French food), and TRADER GIOTTO’S (Italian food).
Jeffrey Glassover of Naples Florida filed the Trader Schmo trademark on November 29, 2016 on an intent to use basis. The application includes Kosher foods in Classes 029 and 030 including: “Baba Ganoush, compote, frozen, prepared ready-to-eat meals consisting primarily of vegetables; Hummus, jellies, jams, Latkes, frankfurters, cold cuts, prepared food kits composed of meat, Matzo ball soup, chicken soup, Borscht, nut based snack bars, fruit based snack bars, stewed fruits, stuffed cabbage with meat, zimmes, vegetable salads, macaroons, Rugelach, candies, ice cream, diary based spreads, Kasha, Knishes, Kreplach, Kugel, Pierogies, grain based snack bars, and Blintzes.”
The Trader Schmo trademark application received two office actions which requested edits to the description of goods, but then the application was approved by the United States Patent and Trademark Office. The application then published for opposition and on April 27, 2018 Trader Joe’s filed its opposition. The opposition alleges priority of use and a likelihood of consumer confusion.
Apart from whether a likelihood of confusion exists, Trader Schmo may also be liable for dilution. Generally dilution concerns whether the accused mark could harm Trader Joe’s reputation without regard to confusion.
It was only a few years ago when Trader Joe’s had to take legal action to protect itself against a company called Pirate Joe’s, which was a Canada based company that would sneak Trader Joe’s products over the border to Vancouver to sell as their own. Eventually, Pirate Joe’s closed due to legal fees.
Orange County – Last week the US Supreme Court approved the inter partes review (IPR) process for patents, which many believe helps high-tech companies fight patent infringement lawsuits and “patent trolls” more easily and at a lower cost. The justices ruled 7-2 that the U.S Patent and Trademark Office’s in-house patent review does not violate a defendant’s right under the U.S. Constitution to have a case judged by a jury and federal court.
Justices John Roberts and Neil Gorsuch disagreed with the ruling. The case arose when Oil States International Inc., a Houston based company, disputed the legality of the inter partes review process by which a trial is conducted to review the patentability of one or more claims.
While Silicon Valley is celebrating the ruling, name-brand drug-makers are not as happy with the decision. Companies labeled as “patent trolls” are known for suing other companies over patent infringement instead of making any products. The drug-maker companies are calling the IPR “a threat to innovation.”
Other companies who are celebrating the ruling are popular tech companies, such as Samsung Electronics Co Ltd. and Apple Inc., who are often involved in patent lawsuits. Among the companies who are unhappy with the ruling are AbbVie Inc., Celgene Corp., and Allergan Plc.
The inter partes review procedure was enacted on September 16, 2012 as part of the America Invents Act to manage the rising number of poor patents issued by the U.S Patent and Trademark Office in previous years. The agency’s Patent Trial and Appeal Board has canceled part, if not all, of 80 percent of the patents it has reviewed, including a patent protecting wellhead equipment owned by Oil State.
Although Clarence Thomas has called the IPR process “an extension of the Patent and Trademark Office’s decision to grant a patent,” Oil States challenged the cancelation of its patent by saying the patents are protecting private property and can only be canceled by a federal court.
Thomas continued, “Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration.” Paul Fucito, a patent office spokesman, said the office is cautiously contemplating April’s review to determine the impact on rulings before its administrative board runs the reviews.
The Oil State case began in 2012 when its subsidiary sued Greene’s Energy Group, another Houston-based company, for infringing Oil State’s patent related to hydraulic fracturing, or fracking, of oil wells. Greene’s Energy Group had the support of the Trump administration, Intel Corps, and Google in its victory in 2016 by the federal court. Oil State then appealed the decision which made its way to the Supreme Court.
Los Angeles – LeBron James’ company, Uninterrupted, is being sued by Sebastian Jackson’s company, Adventure Enterprise, for trademark infringement. Jackson claims that Uninterrupted infringed his barbershop theme and “Shop Talk” trademark when creating the show “The Shop.” The Show made its debut during the 2017 NBA season and features LeBron James, Draymond Green, Charles Oakley, 2 Chainz, and others.
The barbershop themed shows both include guest speakers who talk about past experiences and success stories as they get their hair cut. Jackson trademarked the “Shop Talk” concept in 2016, listing it as an “organization of events for cultural purposes.” Jackson claims that for two years he and Cree Nix, an employee of Uninterrupted, engaged in many conversations via text message and e-mail about the concept behind the show.
After the first episode of LeBron James’ show aired, Jackson immediately tried to get in contact with associates of Uninterrupted. Jackson alleges that upon speaking with Rodney James from the company, Jackson was told the episode was a “one-time thing” and claims Rodney even showed regret. Since then, another two episodes of the “The Shop” have aired, the second in March. This is what urged Jackson to continue to defend the trademark.
In August of 2017, Jackson sent a cease-and-desist letter to the Uninterrupted with no answer. Ironically, very recently Uninterrupted sent a cease and desist letter about copyright and trademark infringement to the University of Alabama over another web series titled “Shop Talk” that is barbershop themed. The University of Alabama show features Nick Saban, Alabama’s football coach, and Julio Jones. In response the school has changed the name of the show to “Bama Cuts” but continues to release episodes. Nick Saban himself announced that the show will go on and that he doesn’t consider it to be a copyright infringement.
Jackson’s company is suing Uninterrupted for an injunction to stop production, damages for the trademark infringement, and the show’s profits. Although Jackson owns a registered trademark, he may have to at least partly rely on his common law rights to “Shop Talk” because the services listed in the application do not exactly cover the services of the alleged infringement.
Orange County – On March 27th, 2018, the Believeland website filed a trademark complaint against Cleveland’s Believeland Beer Festival for unauthorized use of the “Believeland” name. Believeland is a sports website that reports on sports news and sells apparel since 2008. The website owns three trademarks for the term “Believeland,” including for entertainment services and merchandise such as apparel and cups. Believeland originates from the Cleveland Browns football team.
Believeland Beer Festival was founded by Nathan Barnhart and Elaine Lau who have also planned events like the Rocky Run. By day, the married couple runs a business called Run Mfg, which organizing races such as the Cleveland Browns 5K race and more. Both are avid sports fans and Ohio natives. The sports themed event was planned for April 28th at a convention center in Cleveland.
The Believeland Beer Festival is based on Kansas City’s Boulevardia festival and would include a costume contest, a best pretzel necklace contest, two tasting sessions with more than 150 beers and 60 breweries, and former Cleveland Brown running back Earnest Byner as grand marshal. Barnhart says, “We want to bring something like this to Cleveland.” The Believeland Beer Festival has a polka fight song and describes the event as a magical place where anything is possible if you just believe.
The tickets for the Believeland Beer Festival ranged from $40 to $75 and included bonuses such as drink tickets, t-shirts, foam fingers, custom beer koozie, bottle opening keychains, superfan stickers, beer glasses, and other merchandise all sporting the “Believeland” name. The beer festival is also selling designated driver tickets for $20 and includes the foam finger.
Barnhart applied for trademarks with the U.S. Patent and Trademark Office for “Believeland Beer Festival,” “Believeland Beer,” and “Believeland Music Festival.” Although “Believeland Beer” is the only application that has not been denied and is still active.
In 2016, Believeland the website sent Barnhart a cease and desist letter saying that using “Believeland” would constitute trademark infringement and requested that he stop using the term “Believeland.” Supposedly, Barnhart has refused. Believeland is requesting that the term be removed from the festival and is suing for damages.
San Diego – The University of Maryland Baltimore County (UMBC) Retrievers, a No. 16 seed, had a win no one saw coming during March Madness in Charlotte, NC. The Retrievers played the Virginia Cavaliers, a Number 1 seed, and took the nation by surprise when they won the game in convincing fashion, 74-54. This marked the first time in the history of the NCAA men’s basketball tournament that a Number 16 seed defeated a No. 1 seed.
Throughout the game, Jairus Lyles led the team to the win, as the whole team was energized from his confidence, which only seemed to shake Virginia more. The game really took a turn when Lyles made a three-pointer with 14:57 left on the clock which put the Retrievers up by 14 points. Although Virginia had plenty of time to make their come back, they did not appear confident that they could win the game.
UMBC was not ready for such a big triumph in many ways. With all of the attention that the win created for the program, the leadership of the school quickly made a decision to file several trademark applications with the United States Patent and Trademark Office including for “UMBC Retrievers” which had never been done. UMBC Athletic director Tim Hall also quickly approved trademark applications for “Retriever Nation” and “16 over 1.”
“UMBC wanted to make sure that it took the necessary steps to be proactive as its athletics brand became the most talked about topic in the world,” according to Heitner. It was widely reported that the school submitted Class 25 filings for each trademark, meaning the trademarks will cover clothing and footwear. As of this writing however, none of the trademark applications could be confirmed. Typically trademark applications show up with the U.S. Patent and Trademark Office within 3 business days of filing.
Merchandise is quickly being sold from the UMBC bookstore, which had to open over the winning weekend to keep up with demand. On Sunday, the Cinderella story quickly ended as UMBC was defeated by Kansas State which eliminated the Retrievers from the tournament. Regardless of the loss, the players were still enjoying the upset win. Daniel Akin said, “No one can take away the feeling of beating the No. 1 team in the country” and Arkel Lamar added, “I’m still in disbelief.”
Los Angeles – On Thursday, March 8th 2018, Nike filed a patent application for golfing glasses that show all types of data while playing. The glasses would allow golfers to track their ball and read putting greens with a heads-up display. Needless to say, if the glasses work as claimed, for golfers they could become as ubiquitous as golfing shoes and a visor.
Along with the patent, Nike filed a diagram illustrating a hi-tech golf ball which would communicate with the glasses. When paired together, the golf ball will send information back to the person wearing the glasses. The glasses have a display on a small screen so the golfer will be able to check the data seamlessly while playing. Some of the information the user will be able to quickly access will be the following:
• Your current score
• Golf ball’s speed and location
• Spin rate
• Carry distance
• Distance to the pin
• Velocity of your last swing
• Fairways hit
• Average putts and holes
• The slope of Greens
The patent suggests the glasses will also have a camera to help track where you are in the course, plan the trajectory of your next shot, display an enhanced image of the golf ball, and, of course, capture and record images of the golfer’s swing and then send the images to a processor for suggestions on improvement. The glasses can also warn the golfer of any hazards such as water and sand traps.
It would seem that the glasses would also be able to collect data about each golf course to allow data about how often a putt was missed and in which direction, which the golfer could factor in on the next putt. The ability to track the terrain of the course would obviously be superior to the golfers view and would help with club selection and suggested angles for the next swing. The technology that makes this possible is called augmented reality technology, which overlays the topography of the land around the golfer’s location.
Though some patents never turn into real products, it seems that there is a high likelihood that the ideas covered in this patent will come to fruition. It is easily to see the potential this technology has to improve a player’s golf game, and how it could quickly turn into an arms race if golfers begin to use the technology on the course.
Orange County – Fresh off its first-ever Super Bowl win, on February 15th the Philadelphia Eagles filed a U.S. Trademark Application for “Philly Special” for apparel. The phrase “Philly Special” was made famous by the Philadelphia Eagles in the Super Bowl in relation to a trick play. The phrase was called out by the team in the second quarter, on a fourth-and-goal when QB Nick Foles caught the ball in the end zone. Days after the Super Bowl win the Eagles were already using the phrase on shirts with the team’s logo.
One problem for the Eagles is that on February 9th, six days earlier than the Eagles, D.G. Yuengling & Son Inc. also filed a U.S. Trademark Application for Philly Special. Yuengling is America’s oldest brewery and is also located in Pennsylvania. Since Yuengling filed its Philly Special trademark application first, Yuengling could possibly have maintained prior rights. However, to avoid the conflict, Yuengling decided to expressly abandon its application so that the phrase could instead be owned by the Eagles. Yuengling was going to use the phrase for one of its beers but after learning that the Eagles had plans to use the trademark, instead decided to simply abandon it.
Unfortunately for the Eagles, Yuengling was not alone in filing for Philly Special before the team did. During the three days from February 5th to February 8th, a total of six such trademark applications were filed.
The trademark office will examine the Philly Special trademark applications in the order that they were filed, so the original application filed by Joseph Tallarico for sandwiches could possibly be approved even though it is the Eagles that made the phrase famous. The second application for Philly Special filed by Nathaniel Shoshan for apparel could also be approved due to the differing goods. All of the other applications would then be rejected due to the prior filings. It would then be up to the Eagles to oppose one or both of the prior filed applications by claiming that it is the team that made the phrase famous and therefore the team is the true owner of the trademark. It is also possible that the trademark will be aware of the prior fame of the trademark and then reject all applications other than the one filed by the Eagles.
The Minnesota Vikings were also in the news recently for filing a trademark application related to a play in the NFL playoffs. The Vikings filed a trademark application for “Minnesota Miracle” which became famous for a memorable pass that got them to the NFC Championship game, which they lost to the Eagles.
San Diego – On Monday, February 12th, 2018, San Diego based Stone Brewing filed a lawsuit against MillerCoors for allegedly infringing the “Stone” trademark. According to Stone Brewing, during the rebranding of Keystone, MillerCoors has used the “Stone” trademark to potentially steal the customers and reputation of Stone Brewing.
Last April, the new Keystone cans were introduced with the word “Stone” standing out in capital letters. Later, Stone Brewing’s Greg Koch stated that MillerCoors was “deliberately creating confusion in the marketplace.” Koch continued to say MillerCoors was not only jeopardizing Stone Brewing’s reputation in the marketplace and confusing consumers.
MillerCoors has denied all allegations and called them a “clever publicity stunt,” and claims Keystone consumers have used the word “Stone” as a reference to the beer since its debut in 1989. Stone Brewing was not founded until 1996. Although according to Stone Brewing, MillerCoors tried to register “Stone” with the U.S. Patent and Trademark office in 2007 but was unsuccessful because Stone Brewing had registered in 1998.
Greg Koch released a video stating that large beer companies have been scheming against craft breweries in an attempt to counteract a decline in sales by buying out smaller companies, but knowing Stone Brewing would not sell, instead tried to steal the brand. Koch has also been responding to the mass amounts of Tweets on the matter by reiterating that Stone Brewing will not be backing down from the fight.
Lizzie Younkin, Stone Brewing’s spokeswoman, has declined any interviews about the lawsuit and stated that their lawyers will be doing to talking, while they focus on “brewing great beer.” According to IRI Worldwide, retail data showed both companies were up in sales during a 52-week period that ended January 28, 2018. Stone Brewing increased 20 percent while Keystone Light increased 12.1 percent.
Stone Brewing is calling out MillerCoors’ social media campaign, saying Facebook, Instagram and ESPN ads showed proof that Keystone is being referred to as “Stone” and has purposely placed the can so only the word “Stone” is visible in the graphic images. Stone Brewing is requesting the court to stop MillerCoors use of the “Stone” trademark in sales and distributing Keystone beer, as well as damages and the profits.
San Diego – Amazon has won two patents for wristbands that inform employers what their employees are doing. The patents were originally filed in 2016 and were published on January 30, 2018. The wristband can track employee movement including how active the employee is which would be a measurement of productivity. The wristband could also track how often the employee took breaks, visited a restroom, and can even vibrate when a task is performed incorrectly or if an employee becomes too inactive.
Amazon has been known for testing products internally before putting them on the market. The patent descriptions vigilantly outline that the tracking wristbands are not to collect data about specific employees, but about inventory. An Amazon representative made mention that “this idea if implemented in the future, would improve the process for our fulfillment associates. By moving equipment to associates’ wrists, we could free up their hands from scanners and their eyes from computer screens.”
These high-tech wristbands use ultrasonic pulses to communicate with the modules on inventory bins and tracks the employee’s hands. The wristband will vibrate when an item is placed in the wrong bin. Also, since Amazon encourages employees to work faster and more efficiently, this wristband would assist Amazon in improving employee performance.
Not everyone sees the wristbands as a means of convenience. Even though the wristband’s stated purpose is not to collect data about the wearer, the data is still being collected. Which leads to the question, would the wristbands be used to track and grade employee performance? By using these wristbands in the warehouse, Amazon would obviously be able to identify their most productive workers. Workplace Fairness, an employee rights organization, says too many questions have been left unanswered.
It is still unclear if Amazon plans to manufacture and put the wristband to use. Amazon’s former employees have commented that they would not be surprised if Amazon began using the wristbands. Amazon warehouse employees have stated that a typical day at the Amazon warehouse involves receiving hundreds of items every hour and being expected to process each item in a matter of seconds and if you fall behind you would be fired.
Amazon is not the first company to capitalize on technological advances to increase productivity. Another company in London is developing a system to identify unusual behavior in the workplace. A company in Wisconsin offered to implant microchips under the skin to give employees access to anything from secured doors to vending machines. Nearly two-thirds of the employees agreed to have the chip implanted.
Orange County – Back in 2012, a Snowshoe Siamese cat named Tardar Sauce became an Internet sensation through photos of the cat’s signature grumpy expression. Tardar Sauce is now infamously known as Grumpy Cat. The cat’s owner, Tabatha Bundesen, created Grumpy Cat Limited to create business opportunities for the cat. The following year in 2013, Grenade Beverage paid $150,000 and signed an agreement to use the cat’s image on its ‘Grumpuccino’ iced coffee.
Shortly after, Grenade started using the cat’s image on other products including t-shirts and other beverages. Grumpy Cat Limited claimed that these uses were not authorized, and so in 2015 Grumpy Cat Limited sued Grenade Beverage for exceeding the agreement and committing copyright infringement. Grenade Beverage responded with a countersuit, stating that Grumpy Cat Limited had not held up its side of the agreement. Grenade Beverage explained that part of the agreement was that Grumpy Cat Limited would promote the coffee by making the Grenade Beverage brand present on Grumpy Cat’s social media.
Grenade Beverage’s attorney pointed out that the product was only promoted 17 times and that Grumpy Cat’s appearance on a Fox News show to promote the coffee was a “disaster” because Grumpy Cat’s people did not refer to the agreed talking points they were given. Allegedly, Grumpy Cat Limited had also told Grenade Beverage that Grumpy Cat would co-star with Jack Black and Will Ferrell in an upcoming movie, which never happened. Grumpy Cat did, however, star in her own Christmas movie that earned a 5 out of 10 star rating. Apart from negotiating movie deals, Grumpy Cat Limited also donates to shelters that help save animals.
Grumpy Cat was present during the January trial, but was not there for the final verdict. The California Jury ended up siding with Grumpy Cat Limited. Grumpy Cat Limited had initially asked for $600,000 in damages but were awarded $710,001 for copyright and trademark infringement, along with a $1 nominal damage fee for breach of contract.
Though not painful, Grumpy Cat’s face is said to be caused by an underbite and feline dwarfism. Regardless, the six-year-old Tardar is an incredible feline. She has her own business, a massive fan base, has travelled the world, and now can boast of a $710,001 court victory.