Trademark Attorney USA

Tag: litigation

  • Washington Redskins’ Federal Trademark Cancelled by USPTO

    Washington Redskins’ Federal Trademark Cancelled by USPTO

    The United States Patent and Trademark Office has cancelled the trademark registration for the Washington Redskins, stating that the name of the team is “disparaging to Native Americans.” This was the second time that the case was filed against the Washington Redskins on behalf of 5 Native Americans. This decision affects 6 trademarks, which contain the word “Redskin.” The decisions comes based on the law which does not allow trademarks to be registered if the trademark “may disparage” groups or individuals and “bring them into contempt or disrepute.”

    The decision by the USPTO does not necessarily mean that the Redskins will need to re-brand themselves with a new team name or logo, but it will certainly affect how it can control and produce merchandise. Since the NFL will no longer be protected by the same laws as if they had a registered trademark, it will certainly affect how they can bring suits against people who use their logos and names without proper authorization from the NFL.

    Attorneys for both sides have spoken, and the attorney representing the team stated that “this ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.” The attorney for the team is confident that they will prevail on appeal and have a federal district court reverse the Board decision, as they have done in the past. The lead attorney for the Native Americans stated “this victory was a long time coming and reflects the hard work of many attorneys at our firm.”

    Over the years, there has been much controversy over whether or not the Redskins should change their name. Recently, many senators and NFL players have requested that the name be changed, however, it has not been changed. Native American groups have been fighting for years for the team to change their name, but, the team owner, Dan Snyder believes that the name and logo honor Native Americans and has stated that they would never change the name of the team. It will be interesting to see where this legal battle ends up and how the word “Redskin” will be maintained by the team.

  • Dumb Starbucks: A Parody or Not?

    Dumb Starbucks: A Parody or Not?

    Earlier this month a new coffee shop opened in Los Angeles called Dumb Starbucks.  The outer appearance of the shop is an exact replica of a Starbucks coffee shop except the word “Dumb” appears in front of Starbucks.  Inside, everything is also an exact replica of a Starbucks with the word “dumb” inserted in front.  The cups have the Dumb Starbucks logo and the menu items are dumb as well.  Canadian comic Nathan Felder is the owner of the shop and announced plans to open a second location in New York.  Naturally, Starbucks is not amused and has pledged to protect its trademark. They have stated that they are “evaluating next steps” and have made it clear that “they cannot use our name, which is a protected trademark.”

    Dumb Starbucks has potentially infringed multiple forms of trademark protection.  Starbucks is a protected word mark and using Dumb Starbucks in commerce can confuse consumers or dilute the Starbucks brand.  Similarly, the logo for Starbucks is also protected but Dumb Starbucks copied it and inserted the word “dumb.”  Since Dumb Starbucks also copied the colors of a Starbucks shop it may have infringed upon trade dress protection, the outside appearance of the coffee shops which help consumers identify they are Starbucks.

    In the Dumb Starbucks store, a notice was posted claiming the store was protected by parody law and fair use.  Chances are Starbucks and Dumb Starbucks will not head to court (litigation is expensive!) but if they do, it is hard to determine who will emerge as a winner.  To be a parody, a court must find that an offending mark both invokes the original mark but also differentiates itself by communicating satire, ridicule, joking, or amusement.  The more famous the original mark is, the more likely a judge may find parody.  However, there is no guarantee Dumb Starbucks will be considered a parody in the court of law.  Starbucks knows that litigation is lengthy, costly and not always predictable, thus they will likely negotiate with Mr. Felder before instituting a legal action, but only time will tell.