Can Bugs Bunny and the “What’s Up Doc?” Trademark cause confusion with a real MD?

Here's another good likelihood of confusion test/example in a recent trademark application for a mark that you all might have heard of before.

On January 13th, 2021, Warner Bros. filed a trademark opposition against Lawrence Merle Nelson DBA William Brown MD, for his application to register “What’s Up Doc?” for “personal coaching services in the fields of self-empowerment (Class 41).” As you all know, Bugs Bunny aka Warner Bros is pretty famous for using that phrase since its appearance in cartoons in the 1940’s. Warner Bros owns the federal trademark to “What’s up Doc?” since 1988 in class 25 for T-shirts. 

It looks like the trademark office did not believe that a likelihood of confusion exists between the applied for mark and Warner Bros, however Warner Bros is claiming the fame associated with their use of the mark established prior rights and that this trademark registration should be refused.  

What do you think? Should Warner Bros trademark application for “What’s up Doc?” will T-shirts be able to stretch into class 41 and prevent Mr. Nelson’s application to use the mark for personal coaching services?

I don’t know about this one Warner Bros…. I agree that “What’s up Doc?” is almost always going to be associated with Bugs, however I am pretty sure Bugs is not a real MD and I would not expect Bugs or Warner Bros to be providing personal coaching services. This might be too much of a stretch. This reminds me of my previous post where I analyzed the trademark battle between Dr. Dre (the recording artist) and Dr. Drai, the OBGYN. In that case, the OBGYN won and was allowed to register his name “Dr. Drai” in class 41. We will see what happens here.

Can an Instagram post cost a Yeezy Summer Intern $500,000 or more?

Brands take secrecy and the disclosure of confidential information seriously. One way they do that is to include a liquidated damages clause in their contracts and non-disclosure agreements (NDA). A liquidated damages clause lists a specific monetary amount owed for disclosure. Some companies list an extraordinary large number here in an effort to deter the signee from breaching the agreement, however, courts have consistently stated that a liquidated damages clause cannot be punitive in nature. Meaning, it cannot be very high for no actual reason. Liquidated damages clauses, specifically the monetary amount contained therein, ARE enforceable if the amounts stated are based on actual anticipated damages. Actual anticipated damages incurred due to disclosing protected information are very hard to prove.

Generally speaking, most courts do not enforce arbitrary predetermined fees for breach of contract (including NDA’s). Courts like to analyze the actual amount of damages incurred from the specific breach of contract for themselves and award an amount based on their own analysis. 

In Court documents filed last week in Los Angeles County Superior Court, Yeezy Summer intern Ryan Inwards, was charged with breach of contract and conversion for violating a NDA he signed to participate in an internship with the brand. The NDA contained a liquidated damages clause in the amount of $500,000.The NDA prohibits disclosing or disseminating confidential information on social media. Yeezy brand alleges in the complaint that Inwards shared nonpublic images on Instagram, and did not remove them even after Yeezy sent him multiple cease and desist letters. His Instagram account has all of his photos deleted as of today. 

Yeezy is seeking $500,000 in liquidated damages plus punitive damages because the company believes he’s acting maliciously. It’s also seeking an injunction ordering that he turn over all pictures so he cannot do this again in the future. 

The $500,000 liquidated damages amount seems high to me. However, Yeezy is a billion dollar brand and actual damages from the early disclosure of a new sneaker (such as a Yeezy v4 or maybe even a new colorway of a Yeezy 350 v2), could potentially cause damages in that range. It all depends on the picture that was shared and what information was disclosed. Here, the simple fact that the disclosure relates to a Yeezy brand product, means that the actual damages suffered could possibly be $500,000. This number might be too large for a liquidated damages clause for other brands, but could possibly work here for Yeezy brand. I have not seen any damage from the confidential information that was leaked by Inwards Instagram posts yet so it might be hard to prove an amount that high with no impact or news in the sneaker industry. 

Regardless of the outcome here, Yeezy is showing interns and everyone that they don’t mess around with confidentiality and likely have something big in the works. 

New USPTO Trademark Fees in 2021 + New Madrid Protocol Deadlines

The United States Patent and Trademark Office (USPTO) raised the majority of its trademark filings fees for the first time in three years as of January 1, 2021. These higher costs will impact almost every aspect of the trademark process, including registrations, appeals, cancellation and opposition proceedings before the Trademark Trial and Appeal Board, renewals and other maintenance areas. A summary of the trademark fees in the areas that the Sneaker Law Firm handles are below.

USPTO- Trademark Fee Increases in 2021

  • New Standard Trademark Application – $350 Per Class – up from $275
    • New Plus Trademark Application – $250 Per Class – up from $225
    • Petition to Director – $250 – up from $100
    • Petition to Revive – $150 – up from $100
  • Section 8 or 71 Declarations and Renewals – $225 Per Class – up from $125
  • 90-Day Extensions of Time to Oppose – $200 Per Application – up from $100
  • Second 60-Day Extensions to Oppose – $200 Per Application – up from $100
  • Final 60-Day Extension to Oppose – $400 Per Application – up from $200
  • Notice of Appeal – $225 Per Class – up from $200
  • Second and Subsequent Extensions to File Appeal Brief – $100(NEW)
  • Filing an Appeal Brief – $200 (NEW)
  • Petition to Cancel – $600 Per Class – up from $400
  • Notice of Opposition – $600 Per Class – up from $400

As you may notice some NEW fees exist, most regarding filing oppositions or letters of protest, along with new regulations that codify letter-of-protest procedures. These new proposed fees and associated procedures are intended to deter individuals from filing letters of protest with no merit or support while slowing down the process and costing more money in the long run.

Another interested area for those with International Trademarks under the Madrid Protocol is that the fee is set to increase from $400 to $500 per class. The effective date for this fee change is February 18, 2021.

The USPTO is making some moves to bring in more revenue and possibly speed up the process for trademark proceedings. This only means that entrepreneurs and businesses need to monitor and manage their trademark and intellectual property portfolios closer so they are not missing deadlines and only filing when necessary to avoid any additional fees. A trademark lawyer should be on every brand or companies speed dial (or Zoom for the current times).

Without a registered trademark your company name and brand that you work so hard to build can be meaningless and in jeopardy of legal proceedings. It is important to understand your trademark rights and properly plan ways for you to monetize and protect those rights. The increased filing fees in 2021 should not deter you from making the investment in your brand and business. Having a trademark gives you the peace of mind and security to start off on the right foot with confidence. Give us a call today at 540-230-2965 to see how we can help your business today.

2020 NBA Rookies Lack Sneaker Deals

When taking a look at the 2020 NBA rookie draft class you notice an unusual occurrence. Except for LaMelo Ball, the rest of this year’s draft class has not signed a sneaker endorsement or sponsorship contract with a brand within the past year before entering the league. This has never happened before in today’s NBA, where tunnel pics and multi-million dollar sponsorship deals for a panacea of different products happen daily. 

Sponsors usually jump at opportunities to sponsor top young NBA talent, and usually do so before the draft. The top ten is typically always under contract with Nike or Adidas or other top names in the industry, as companies like to find the next big stars at a young age and ‘play a bunch of lottery tickets’ usually from the first round. Maybe the delayed pandemic draft played an impact but this is still unheard of in the sneaker industry. 

picture via GETTY IMAGES

The No.1 overall pick, Anthony Edwards, of the Timberwolves is even unsigned. Lamelo signed a monster deal with Puma after pushing away Big Baller brand. LaMelo seemed to be the prize of this draft for sneaker and apparel companies and made the most noise with his signing but there hasn’t been anything else to talk about. The only other rookie with a sneaker deal worth noting is Nuggets, RJ Hampton, who signed a multi-year deal with Li-Ning in 2019 when he was playing overseas in Australia, so that doesn’t count.

No doubt that the global pandemic is playing a huge role here but maybe companies are not taking as much of a risk now on untrusted rookies with huge deals. According to Nick DePaula of THE UNDEFEATED, most brands have stated that they will begin discussing new contracts after the new fiscal year starts on January 1. Some brands have stated that they are waiting until as long as July 1 before they can offer players new contracts.

UK Proposes Banning Bots for online shopping

On Monday, December 14th, Members of Parliament asked the UK government to make the resale of goods purchased using automated bots (computer software that circumvents retail queues) an illegal activity. The suggested legislation would be similar to those introduced several years ago for the secondary selling of tickets, which require resellers to be transparent in regards to their identity and details of seating.,

The motion is in its early stages still but has gained notoriety thanks to billions in profits from the resale of game consoles, like the PS5, and PC components this holiday season. This time it sounds like the UKs new law could impact the sneaker and retail industries instead of just banning bots for tickets in the entertainment industry, like the current law does. It is still very early in the process and the exact text of the law has not been discussed so we can only speculate but the UK seems to be acting fast to stop the resell madness created by the release of the Playstation 5 and several popular PC products this holiday season.

The Return of the Button: California Proposes 4th Set of Changes to the CCPA

On December 10, 2020, the CA Attorney General released the Fourth Set of Proposed Modifications to the California Consumer Protection Act (CCPA) Regulations, styled as “Modifications to Proposed Modifications.”  In the Third Set, the proposed changes mainly focused on the consumer right to opt-out of the sale of one’s personal information and the ability to understand and exercise those rights. In this Fourth Set, the revisions clarify ambiguities and provide additional guidance promoting a uniform rollout of “Do Not Sell” opt-out button.

Some of the other notable changes are listed below:

  • Clarifying the Authorized Agent Provisions. The Third Set clarifies an ambiguity that existed in section 999.326(a) of the Final Regulations, which describe how a consumer can use an authorized agent to submit requests to know or delete on their behalf. The Final Regulations state at subsection (a) that “When a consumer uses an authorized agent to submit a request to know or a request to delete, a business may require that the consumer do the following[…][,]” (emphasis added). The business is then allowed to require the consumer to: (1) provide proof they had provided the agent signed permission to act on their behalf, (2) provide verification of their own identity with the business, or (3) provide direct confirmation that the agent is authorized to act on their behalf. The Third Set proposes striking the first requirement and instead allow the authorized agent to provide “proof that the consumer gave the agent signed permission to submit the request.” While this is likely to make it somewhat easier for authorized agents to act on behalf of the consumers they serve, the Third Set still provides that businesses may require that the consumer directly confirm both the identity and authorization for the agent to act on their behalf vis-a-vis the business.
  • Promoting a Uniform “Opt-Out Button.” The only completely new provision in the Fourth Set is a new subsection for section 999.306, which describes the “Notice of a Right to Opt-Out of Sale of Personal Information.” The new subsection (f) describes the “Opt-Out Button” and clarifies that an actual button “may be used in addition to . . . but not in lieu of any requirement to post the notice to opt-out” or a “Do Not Sell” link. The provision provides examples of an opt-out button which may be used and provides other specifications, like the button “shall be added to the left side” of the “Do Not Sell” link and that it should be “approximately the same size as any other buttons” used by the site.

Lee Greenwood Denied Trademark for “GOD BLESS THE USA”

I’m sure everyone has heard Lee Greenwood’s song “GOD BLESS THE USA” by now. The hit country song was released in 1984 and was #7 on the charts back then. The song climbs to the top of the charts every year around July as the #1 selling song on Billboards digital charts. Well, despite all the fame and notoriety the song and its association with Greenwood has garnered, the USPTO has denied the registration of the mark by Greenwood.

On December 1, 2020, the USPTO Trademark Trial and Appeals Board (“TTAB”) refused the final appeal attempt by Greenwood and affirmed the boards original ruling, denying Lee Greenwood a trademark for the mark “GOD BLESS THE USA” for home decor items that Greenwoods company is selling. Greenwood submitted evidence showing that the mark was placed on hangtag labels on the goods however the trademark examining attorney was not persuaded and denied the application on the ground that the mark lacked the “source identifying significance and therefore failed to function as a trademark.” The attorney and the TTAB analyzed third party usage of the same mark online as well as other TTAB cases where commonly available phrases (such as the phrase “I ♥ DC” from the seminal case D.C. One Wholesaler v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)) are used and how they are perceived by the general public. 

The applicant, Mr. Greenwood, even tried to amend this trademark application by adding “THE LEE GREENWOOD COLLECTION,” a mark that he had already registered with the USPTO, to the front of this mark in order to help his registration but was denied and not allowed to do so. The TTAB stated that the change to the mark in the amendment was a material alteration of the original application and is impermissible under Rule 2.72(a)(2) of the Trademark Manual of Examining Procedure. 

This decision by the TTAB is important and reiterates the USPTO’s standard on how a mark is perceived by society. Here, the Examining Attorney and the TTAB ultimately decided that despite Greenwoods associated fame with this mark through a hit country song, it still conveyed an informational social, political, religious, or similar kind of message. As such, it does not function as a trademark to properly indicate the source of Greenwood’s products and does not distinguish them from others.

This article is made available for educational purposes only as well as to give you general information and a general understanding of the law, not to provide specific legal advice. Your receipt of this communication alone creates no attorney client relationship between you and Kurtz Law Firm. Any content of this article should not be used as a substitute for competent legal advice from a licensed professional attorney in your jurisdiction.

Nike vs.Warren Lotas Docket Update

Yesterday Warren Lotas and his legal team filed a motion with the Court to reconsider or modify the Courts Nov. 18 injunction ruling. The motion asks the Court to allow Lotas to sell his replacement sneaker, the Reaper, and provide that as a replacement to the orders that the Court has demanded they halt and not fulfill. In making this request Lotas released some initial numbers on the sales from the sneakers at issue in this lawsuit- the total was over $10 Million.

Nike has 7 days from the filing on December 1 to respond. I expect them to mimic the arguments they already made in opposition of the replacement shoe when they originally requested the preliminary injunction.

I don’t agree with the claims Lotas’ team made that “The Reaper is a radically different sneaker.” He did take off the swoosh but the rest of the shoe looks the same as the dunk, in my opinion. That being said, this kind of copying goes on 24/7/365 in the sneaker industry. So it will be interesting to see what the Court says and the reasoning they provide in response to Lotas arguments here on this order.

Please, Just Stop It

“JUST STOP IT” is right. Stop trying to register trademark applications with different variations of the phrase “JUST DO IT” because this little company from Oregon will ruin your hopes and dreams.

On November 24th Nike’s legal team requested an extension with the USTTAB (US Trademark Trial and Appeal Board) to file a motion to oppose the trademark application for the mark “JUST STOP IT” by Sean Sheppard. The motion was granted and Nike’s legal team now has 90 days to “protect the swoosh” and do what it has done many times before and enforce its trademark rights. The filing here is in US Class 25 for clothing, t-shirts, pants, footwear, jackets…etc (Registration #90000211). As you can imagine, Nike has many trademarks. They have two in Class 25 (Registration numbers 1875307 and 4764071) and should have an easy time demonstrating that this registration causes a likelihood of confusion because the marks are similar and the goods or services are the same.

Around two months ago the TTAB agreed with Nike in an opposition they filed against the registration of “JUST BELIEVE IT” by Jon K. Muntean. The ruling in September was for Mr. Muntean’s filing in US Class 35 for business consultation services. He previously filed for registration of the same mark in US Class 16 for pens, stickers, advertisements signs and in US Class 25 for hats, pants, shirts, sweaters and was refused registration in 2018. Mr. Muntean filed again in 2020 in a different class. He had no intention of competing with Nike and wanted to use his mark for his consulting service that works with businesses and organizations to conduct fundraising through the sale of pens and other products. Despite all that the TTAB sided with Nike and sustained the opposition and refused registration for the “JUST BELIEVE IT” mark. The TTAB agreed with the similarities pointed out by Nike and went on to highlight how the global fame and notoriety of the “JUST DO IT” mark make it a strong independent factor to overcome.

This ruling by the TTAB and the many other similar ones show that Nike and its legal team are vigilantly enforcing trademark and intellectual property rights. The strength of the Nike brand and marks is palpable around the world and by the United States Patent and Trademark Office’s TTAB. Nike is not afraid to intervene and flex its muscle. There is no doubt in my mind that the same result will occur for “JUST STOP IT.” Hopefully, other registrants with similar marks listen to this ruling when it is handed down in 2021 and take this phrase literally and just stop trying to register a mark that is remotely similar to “JUST DO IT.”

Does Zlatan have a case against EA Sports?

Zlatan Ibrahimovic Isn't Happy With EA Sports Using His Likeness

On November 23rd Zlatan Ibrahimovic sent out a tweet heard round the soccer and gaming world. In it he stated that EA Sports through FIFA video games were profiting of his name, image and likeness without his permission. The tweet questioned how this was happening and implored further investigation. Tottenham striker, Gareth Bale , replied to Zlatan “Interesting… what is @FIFPro ? #TimeToInvestigate.”

Zlatan stated that he never negotiated a deal with EA Sports or gave permission directly to them to use his name, image, likeness, or statistics for the FIFA 21 or any of the previous editions of the video game. Bale made similar claims and was even on the cover in 2014. So how does the licensing for the FIFA video game work and who does it?

Similar to the way the National Football League Players Association (“NFLPA”) negotiates group licensing deals for professional football players in the NFL for the Madden video game series, the International Federation of Professional Footballers (or Fifpro for short), is a global players union that negotiates licensing and image deals on behalf of its members, professional soccer players. Fifpro consists of 65 member associations. If a member association is not part of Fifpro, Fifpro or the video game manufacturer must get permission from the team and/or individual players in order to include them in the game. English Premier League teams tend to sell their licensing rights for video games collectively as a league. While teams in other leagues, like Serie A in Italy, do not.

This licensing structure is what EA Sports described when rebutting Zlatan’s claims on Twitter. EA points to the agreement they made earlier this year with AC Milan, the club Zlatan plays for. In this agreement EA acquired a license to use the Italian clubs logo, jerseys, and the name, image, and likeness of its teams for FIFA21. Zlatan claimed to not know about this.

Did Zlatan really not know about Fifpro or why was he being so vocal now? Maybe Zlatan heard about the ruling from Brazilian court in June. The class action lawsuit filed by the Union of Athletes of Santa Catarina against EA Sports resulted in a R $6.5 Million ruling against EA for violating the image rights for the published games from 2005-2014. EA made the same Fifpro licensing argument but lost the case because this Brazilian team was not covered under the Fifpro license and EA needed to get each Brazilian players consent individually. This worked in Brazil but is not a winning argument for Zlatan while at AC Milan. According to the Athletic, there are thousands of other soccer players who are unhappy with EA for the same reasons as Zlatan and the heat on the video game giant has only begun.