By: Ariana Rainbow
"The Shop" is a web series, developed by Lebron James' company Uninterrupted Inc, that takes place in a barber shop where various athletes and celebrities (including Lebron himself) come together to discuss various topics on their business ventures, successes, ambitions, life journeys and lessons, social justice, and culture. The web series was just recently picked up by HBO and aired its first episode last month.
The first trademark issue involves Sabastian Jackson, who owns Adventure Enterprises Inc. and claims that he came up with the "Shop Talk" concept. Jackson's alleged concept consists of a program where local and national celebrities come together to share their business stories and other insights while getting their hair done. Jackson claims that he communicated via email and text message with Cree for two years, an Uninterrupted employee that works for Lebron James, and discussed his shop talk concept starting in 2014. Jackson finally trademarked the mark "Shop Talk" in 2016, and listed its service as an organization of events for cultural purposes under international class 41, which includes education, entertainment, sporting and cultural activities. After James came out with his first episode of "The Shop" in 2017, Jackson sent a cease and desist letter in August 2017 with a trademark infringement warning. James then came out with two more episodes which lead to Jackson filing a trademark infringement claim in April 2018.
The second trademark issue involves the University of Alabama's football team creating a barbershop themed web series initially entitled "Shop Talk". The web series featured Alabama's football coach, players and a former wide receiver who now plays with the Atlanta Falcons. Alabama uploaded a preview of the series on their twitter page in March 2018. James sent the University of Alabama a letter warning them of trademark infringement. After receiving this letter, the University of Alabama changed the name of the web series to "Bama Cuts", which is trademarked under international class 44 as a barber shop service.
It was interesting to see that Lebron James never trademarked the name "The Shop" since this is the name of his web series. One might have concluded that "The Shop" is incapable of being trademark as it could be merely descriptive, but it looks as if QVC Inc. has already trademarked "The Shop" under the same international class 41 that includes entertainment, sporting and cultural activities. James would most likely have used this trademark under the same international class since he trademarked "Uninterrupted" under international class 41.
The trademark infringement case between James and Jackson was finally resolved outside of court and officially dismissed on July 19, 2018. It is assumed that both parties came to some sort of settlement agreement. It is clear that Lebron James was forced to jump through many hoops to get to his HBO premiere on August 28, 2018.
Check out this link below, which includes videos of "The Shop" and "Bama Cuts", to see the similarities for yourself!
By: Bolu Odubayo
On May 2, 2018, Burberry filed an $8 million-plus law suit against Target. Among its allegations against the retail giant, Burberry claims that despite being aware of Burberry’s exclusive trademark rights, Target has repeatedly infringed these rights by selling a variety of products that closely resemble and imitate the BURBERRY CHECK trademark. These products include eyewear, luggage, stainless steel bottles and scarves.
Burberry is a luxury brand that is recognized globally. It has a distinctive British heritage and a reputation of “design, innovation, and craftsmanship.” Thomas Burberry first opened a shop in 1856 in Basingstoke, England. He introduced the BURBERRY CHECK trademark in the 1920’s and used it on various products since that time. The BURBERRY CHECK trademark is not only registered in a “distinctive red, camel, black, and white check pattern,” but is also registered without any color designation, giving Burberry the exclusive right to use the BURBERRY CHECK in any color.
In December 2017, Burberry discovered that Target was marketing, selling, and scarves that featured copies of the BURBERRY CHECK trademark in different colors. Of course, these scarves were not manufactured or approved for sale by Burberry. Accordingly, Burberry sent Target a cease and desist regarding these sales and about other products such as luggage and eyeglass cases. However, Target continued to sell the products.
Burberry is alleges that Target’s conduct in selling these products is likely to cause confusion among consumers and lead them to mistakenly believe that the infringing products are either “affiliated with, endorsed or authorized by, or somehow connected to Burberry, or that the infringing products sold and promoted by Target are genuine Burberry products.”
Target is known to often collaborate with high-end designers which allows consumers to purchase such designs at a lower price. Because of Target’s well-publicized history of collaborating with popular and high-end designers and sell limited-edition collections, this heightens the risk of customer confusion when Target sells its Burberry-esque products.
By: QuenDesmond Kellum
Sesame Street, a longtime favorite of children and adults and staple of PBS since 1969, is seeking a remedy based on their dispute with STX Productions, the producers of “The Happytime Murders.” The Happytime Murders is a film centers around being killed and depicts a more adult puppet life. The film premiered on August 17, 2018 and consumers and fans of the long-running Sesame Street feel their trust has been broken and they are appalled at the actions of this film.
Sesame Workshop filed a lawsuit in federal court in New York against STX Productions over the use of its trademark. STX through the advertising for the film used the saying, “ No Sesame. All Street.” The claim is that STXs use of the trademark has left the Sesame brand tarnished, and that the movie does not uphold Sesame Workshop’s message of “helping kids grow smarter, stronger, and kinder.”
Another example comes to mind: Do you all remember when comedian Al Franken wrote the book, Lies, and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right and Fox News sued him over the use of the phrase “fair and balanced”? Not only did Fox News lose its trademark case against Franken, but the book shot up the bestseller list, occupying the number 1 slot (up from number 489 prior to the lawsuit) thanks to all the extra attention. In fact, the publisher moved up the release date and ordered extra printings. In the Fox News case, Judge Chin took the network to task in a court proceeding that was filled with laughter after several outlandish claims, such as when Fox’s attorney said the message of Franken’s book was ambiguous, in response to Chin’s incredulity that a reasonable consumer would actually think that conservative commentator Bill O’Reilly was endorsing a book with the word “lies” written over his face. Chin, siding with Franken, called Fox News’s motion “wholly without merit.”
We must as intellectual HUSLers must always be sure we know the laws and regulations that can be brought up in cases we handle.
What do you think?
By Brittany Hamner
On the day of Beyonce’s Ivy Park clothing line release, a company named 47/72 Inc. – run by Mike Lin — filed documents to register a trademark for the word mark "Poison Ivy Park" to use for selling clothes online.
Mike Lin, through his company have filed documents to register marks associated with celebrity's brands, and other words associated with their brand on several occasions. 47/72 has Intent to Use applications for "The Black Mamba," which is a nickname associated with Kobe Bryant; "Swiftie," which is a name used to refer to Taylor Swift fans; and "99 Problems," which is a Grammy Award winning song by Jay-Z.
Beyonce’s lawyers were successful on their opposition to the application claiming the name was too similar to her brand, would damage her brand and confuse customers. She explained that due to her celebrity, the Ivy Park brand has become internationally famous and a substantial commercial asset.
It it important that lawyers who have taken on the charge of protecting the intellectual property of clients are aware of these tactics that individuals are using to capitalize on the goodwill of others. Being aware will allow lawyers to be proactive and protect words associated with their client by using the same method as these squatters with the Intent to Use application.