Game, Set, Match – Federer v. Nike and the RF Logo

Roger Federer is one of the most famous athletes of all time. He currently has won more majors than any male tennis player in the “Open Era,” and he is admired all over the world, not only for his excellence on the court but also for his humble attitude and family man persona off the court. Also, his initials are RF. Ordinarily this would be a banal detail if it weren’t for the fact that sportswear giant Nike currently owns the rights to a stylized version of Federer’s initials: the RF logo. In March 2018, Roger Federer and Nike’s 21-year relationship ended, and in June 2018, Federer entered into a $300 million deal with Uniqlo, a Japanese clothing company. Although Nike no longer has a clothing contract with Federer, Nike still owns the trademark registration in the iconic stylized RF logo in various registries across the world in classes of use covering clothing and footwear. (more…)

#Hashtag #Valuable Asset

As the explosion in popularity of various social media outlets continues, new norms are increasingly clear: once-descriptive social media hashtags and Twitter handles are now valuable assets that we associate with specific parties. Businesses, in particular, should have social media account usernames and hashtags cleared before using them in marketing and advertising their goods or services. (more…)

The Value of ZERO – Expanding the Doctrine of Generic Trademarks

A “generic” term for a general class of products or services cannot be used as a trademark or service mark for the goods or services in those class(es), because the function of a trademark (or service mark) is to identify and distinguish the goods or services of one seller from those sold by all others. Terms such as “apple” cannot serve as trademarks for goods comprising the edible fruits of the apple tree, but other terms that were once valid trademarks, capable of identifying a single purveyor of certain goods or services, have also fallen victim to “genericide” and lost their trademark significance. Some are now so commonly used that the consuming public may not even recognize that these terms were once considered exclusive trademarks of individual companies, such as escalator, linoleum, thermos, and trampoline. (more…)

Close your eyes and transport yourself to the cereal aisle of your grocery store: can you picture the design of a box of original Cheerios™, color and all? General Mills recently tried, and failed, to obtain a federal trademark registration for the yellow color of their Cheerios™ boxes that they hope you’re picturing right now, and their struggle illustrates the high burden faced by applicants for federal registration of color marks in the United States. (more…)

In the latter portion of 2017, announcements from both business and government have drawn renewed attention to the gradually increasing focus being paid by the Chinese government to protection of foreign intellectual property rights. In early August, U.S. sportswear giant Under Armour generated press from a favorable ruling out of a Chinese court in a trademark infringement lawsuit with Uncle Martian, a Chinese company. A few days later, it was reported that the Trump Administration was eyeing another aspect of China’s policies towards intellectual property protection – those requiring joint ventures and other mechanisms to increase the flow of intellectual property from U.S. and other foreign companies into business entities and computer servers on the Chinese mainland. For a non-Chinese company looking to enter the Chinese market, expand an existing presence there, launch R&D facilities in China or otherwise, how should these developments affect those strategy decisions? (more…)

When filing a patent application with the United States Patent and Trademark Office (USPTO), certain applicants have the option to designate “small entity status” or “micro entity status.” Claiming either small or micro entity status has some benefits, but can also have drawbacks. When faced with that decision, what should the company do? (more…)

The United States Supreme Court’s May decision in TC Heartland LLC v. Kraft Foods Group Brands LLC was widely seen as a limitation on the jurisdictions in which a patent owner can file infringement claims. That decision set off a minor scramble among patent owners to find suitable and accessible alternative forums. More recently, a district court decision has swung the pendulum in the other direction and could potentially preserve the ability of patent owners to choose their own venue, including one so-called “rocket docket” in the Eastern District of Texas. (more…)

On July 1, 2017, an important grace period terminated for Canada’s Anti-Spam Law (CASL), which initially took effect on July 1, 2014. The beginning of this month marked the end of the two-year grace period for entities to rely on “implied consent” as a basis for sending commercial electronic messages to potential customers, donors, clients or the like. Going forward, entities will need to obtain express consent from all email recipients, or expunge “stale” contacts to avoid potential violations of CASL. A private right of action against offenders that was also set to become available on July 1, 2017 has been put on hold indefinitely subject to Canadian government review. (more…)