Stites & Harbison, PLLC

The iconic Chuck Taylor sneaker was involved in a recent case that has the attention of trademark watchers. The bone of contention was the familiar look of the Chuck Taylor sneaker worn by generations of American kids (and adults), and whether shoes imported by Skechers and others were infringing. The case originated before the International Trade Commission, where a trademark owner can potentially shut down imports of infringing goods before they hit the U.S. market.…
Recently the Trademark Trial and Appeal Board (the “TTAB”) decided TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, Can. No. 92068042 (TTAB Dec. 7, 2018) using the expedited cancellation procedure that is the subject of a current pilot program at the TTAB. The rationale for exploring the expedited procedure is to protect the integrity of the US PTO register. In that sense, the expedited cancellation procedure is akin to the “streamlined cancellation proceeding” the…
Over a year ago, we wrote about the intersection between trademarks and bankruptcy. Specifically, we described a scenario in which a licensor files bankruptcy and chooses to ‘reject’ the license agreement. Under the Bankruptcy Code, the licensee may continue to exercise its rights (and carry out its corresponding duties) with respect to all intellectual property licensed to it under the agreement. But the Bankruptcy Code does not include trademarks within its definition of intellectual property.…
Only three months ago we wrote about rebranding. Just two months ago we wrote about beloved brand nicknames. Then, last month, two companies announced plans to rebrand to abbreviations of their current marks. Coincidence? Probably, but we are going to take the opportunity to revisit those topics anyway. On September 25, 2018, Dunkin’ Donuts announced that it would be rebranding as DUNKIN’ beginning January 2019: “Dunkin’” sounds like “Duncan” and is the first…
We recently looked at the idea of state universities claiming a (limited) monopoly on the right to use the name of their state on clothing and other items. At first blush it seems surprising that anyone can have the exclusive right to a state name, but trademark law allows it in the right circumstances, and with limitations. This time we’ll look at another university case, but perhaps an even stranger attempt to claim exclusive use…
One of the facts of modern life is that you will be the target of scams. Sometimes it’s the son of the former defense minister of Nigeria. Sometimes it’s someone trying to trick you into paying them money to do something with your trademark. U.S. trademark registrations have to be renewed every 10 years or they expire. Most trademark owners are somewhat aware of that fact, but many are somewhat vague on the subject and…
A familiar adage teaches that one catches more flies with honey than with vinegar. Without in any way implying that infringers are flies, we can apply this lesson to the trademark context. It seems that trademark attorneys enforcing their clients’ rights have really taken this wisdom to heart in recent years. With increasing frequency, trademark cease and desist letters filled with humor and whimsy fill the news. Most recently, In-N-Out Burger sent a cease and…
Trademarks are everywhere! From the Delta® faucet you use every day, to your favorite Starbucks® treat, and even your favorite G2® ink pen at work (I mean – is there any other acceptable pen?!). Everyone encounters hundreds, if not thousands, of trademarks each and every day! In a boiled down sense, trademarks are just another way of referring to brands. We all have brands that we know and love, but have you ever stopped to…
Collegiate licensing is a big deal these days. Lots of alumni and fans of college teams want to wear clothing bearing the marks of their alma mater or their favorite team. Colleges commonly register their critical trademarks and license others to produce goods bearing their marks. Sometimes they have to pursue infringers who sell those goods without permission. Clothing makers pay good money for the right to put college marks on their goods. The whole…
One sign of a prominent, strong, and/or beloved brand is a nickname. Consumers sometimes show their affection for their favorite brands by abbreviating them, elongating them, or creating variations of them. On the flip side, sometimes brand owners create their own brand nicknames, perhaps in an effort to manufacture the desired consumer affection. And then there are occasions where it is hard to tell whether a nickname originated with the consumers or the brand owner…