By Kandyce Hall
 
This article focuses on the power of having a registered trademark and proves that a small company can prevail over a large corporation. A small company that operates comedy clubs in the UK under the trademark “The Glee Club” commenced a trademark infringement proceeding against 20th Century Fox who airs the television show “Glee”. The UK company has had a registered trademark since 2001 and 20th Century Fox didn’t begin airing the television show Glee until 2009. The Glee Club comedy company alleged that the television show would cause their customers to believe the company was affiliated with the show and the confusion would hurt the comedy club’s business.
 
The high court of the UK found in favor of the UK company and the court of appeals upheld the high court’s decision. The decision was based on the similarities of the television show and live comedy and music shows in which the court believed that “comedy shows could be televised and that a television series could give rise to live tours;” therefore, the similarities of the two marks could cause an “average consumer” to consider that the two shows were connected.
 
The article also expressed the importance of protecting your trademark and conducting searches within the marketplace continuously to protect your mark. Overall this article shows what small businesses can do to product their goods and services through trademark protection.
 
Link: https://www.theguardian.com/small-business-network/2016/feb/16/glee-club-power-trademarks-small-businesse

By Angela L. Tidwell
 
What is a motorcycle club?  Is a motorcycle club a gang? Or is a motorcycle club a group of friends who enjoy socializing and riding together?  Given that not all motorcycle clubs are the same, legislation intended to target one type of club may have broad-sweeping consequences for all.
 
The link below is for an article in which federal trademarks are being revoked for motorcycle clubs in an effort to curb violence and crime.  While this may appear reasonable at first glance, the future implications for non-criminal motorcycle clubs are highly probable.  In addition, when such clubs are located in communities of color, it may exacerbate the rate of stops and searches in those areas. 
 
Link: http://www.mcclatchydc.com/news/crime/article90607302.html
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​By Maya Day
 
Lilac Company has been the topic of discussion in recent trademark news as it stopped selling its new drink “Headphanie” because it may have infringed on Hennessy’s trademark. Hennessey is a well-known brand of cognac.  Hennessy discovered Lilac Company’s similar trade dress from social media; Lilac made a statement informing the public that the drink was not affiliated with its brand.
 
However, what started the hysteria was the recognition of the popular phrase the drink was named after, “Headphonie”. In a popular rap song from Young M.A. she makes reference to the phrase “Headphanie.” After the phrase gained popularity, Lilac Company thought it was a great idea to begin to actually sell the drink. It has not been confirmed if Young M.A. submitted a cease and desist letter to Lilac Company, but shortly after rumors began circulating about the possible trademark infringement the company stated they would stop selling the product.
 
The lesson here is that artists and smaller companies are being taken advantage of by individuals who are making money off of their artistry.  In this case, both Hennessy and Young M.A. were able to discover this infringement from social media. While social media is making it harder to infringe on someone’s mark, it does not put an end to the cycle of companies marketing off of artists’ works. Young artists deserve a team that will look out for their best interests which includes promotion, bookings, and music, but also considers protecting their craft via intellectual property.
 
Link: http://uproxx.com/realtalk/headphanie-hennessy-exposed/2/
 

By Selena Motley

​An Asian-American band is heading to the Supreme Court on a trademark case that alleges the use of racial slurs. The trademark embodies the bands own ethnic characteristic of slanted eyes. The group, which calls themselves The Slants, challenges the ban based on the First Amendment’s freedom of speech doctrine. The U.S. Patent and Trademark Office found other people of Asian descent would find the trademark offensive.
 
Previously, the Trademark Trial and Appeal Board rejected the trademark as disparaging under the Lanham Act. However, the US Court of Appeals for the Federal Circuit overruled the Board’s decision that “The Slants” was a disparaging trademark and nullified a provision of the Lanham Act.
 
The decision from the Federal Appeals could possibly change the outcome for the trademark of the Washington Redskins.
 
There should be a distinction between “disparaging” trademarks taken on by individuals of a cultural and those that “disparage” on the terms based on cultural appropriation. 

By Chelsea Daniels

​Hot Diggity Dog! The District Court of the Central District of California has ruled against a small business, Hitman Glass, in a trademark infringement case. The plaintiff, Starbucks Coffee Corporation, argued that the marijuana paraphernalia producer’s “Dabuccino” and logo was “virtually identical” to Starbucks’ own siren logo and trademarked names.[1] This ruling comes almost a decade after the Fourth Circuit ruled that Haute Diggity Dog, LLC did not infringe on Louise Vuitton’s trademark by a parodied version of the luxury good’s name on its products. Looking at the images of the Hitman Glass’ “Dabuccino” product, it is easy to see the similarities between it and Starbucks’ own products. However, the same similarities can arguably be seen between Haute Diggity Dog’s products and Louis Vuitton’s mark.

​What accounts for the significantly different ruling in the two cases? Is it perhaps the difference in geographical locations and associated opinions in the regions? Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC came from Virginia to the Fourth Circuit while Starbucks Corporation v. Hitman Glass was adjudicated in perhaps the leading court in intellectual property cases.[2] The difference in expertise is possibly accountable. Or perhaps the difference in goods makes a difference; while Haute Diggity Dog produced dog products, Hitman Glass produced marijuana paraphernalia. Although marijuana is slowly gaining legal acceptance in states across the country, it is still illicit on the federal level. Using a well-known mark in relation to an “illicit” good could be tarnishing to a corporation’s reputation. While some do not find this ruling surprising, this HUSL-er is looking forward to seeing if this is the end of Hitman Glass’ “Dabuccino” or if an appeal is in the works.


[1] Jack Wheat, “Starbucks triumphs in ‘Dabuccino’ trademark battle,” Oct. 25, 2016 http://www.worldipreview.com/news/starbucks-triumphs-in-dabuccino-trademark-battle-12452.

[2] Daniel Cislo, Esq. and Michael H. Anderson, Ph.D., “The California Central District Court: the New Hot Spot for International Intellectual Property Disputes,” January 20, 2015, http://htlj.org/2015/01/644/.  

By Kandyce Hall

A British native prevailed over two comic book giants when faced with opposition to trademark a self-help book. Graham Jules was in the process of publishing a self-help book in 2014 titled “Business Zero to Super Hero,” as well as a registering a trademark for the book title when he received a letter from Marvel and DC Comics alleging infringement of the two companies’ jointly owned trademark. Marvel and DC Comics jointly trademarked the word “superhero” in 1979 and has since attempted to stop any person who tried to use the term ever since then.
 
The two companies offered to pay Mr. Jules to change the title of his book. Mr. Jules refused claiming “superhero” had become a term used in everyday language and should be allowed to be used by everyone. Mr. Jules also claimed the two companies’ monopoly over the word created an unfair competitive market to those who wish to use the term. Four days prior to the final hearing before the Intellectual Property Office of London the two companies dropped the case against Mr. Jules for “commercial reasons.” Mr. Jules’ trademark application was later approved.
 
This is an example of a small person successfully defending their right to have their good trademarked. Trademarks are not solely for established companies; they are for everyone who has a good or service that they wish to protect.
 
Link: http://www.telegraph.co.uk/news/2016/05/25/businessman-wins-battle-against-marvel-and-dc-comics-to-use-supe/

Early this year, Li Chih, owner of the trademark Monsterfishkeepers.com, won a years-long litigation battle against a $28 billion energy-drink powerhouse, Monster Beverage (“Monster”). Just a few months after the Silver Spring, MD based small-business owner filed his mark in 2012, he received a cease and desist for infringing on the energy-drink conglomerate’s trademark. Although it is fairly typical for large companies to file trademark actions against smaller businesses in order to protect their brand, Monster was infamously aggressive for filing the highest number of cases with the Trademark Trial and Appeal Board last year among U.S. companies. But Chih beat the odds when he took a stand against the trademark bully by teaming up with a group of students at the Suffolk University Intellectual Property & Entrepreneurship Law Clinic. After four years of work on the clinic’s part, the courts finally granted Chih a victory with the compromise that he could keep the word mark (monsterfishkeeper.com) as long as he removed the devil horns and tail which stylized the “M” in monster making it arguably confusingly similar to Monster Beverage’s logo.

Link:
https://www.washingtonpost.com/news/business/wp/2016/02/29/these-college-students-took-on-one-of-americas-top-trademark-bullies-and-won/