San Diego Trademark Attorney® Blog

December 2011 Archives

New Years Eve Drop Will Change in Nashville Due to Hard Rock Trademark Issue

December 28, 2011,

hard_rock_cafe.jpgSan Diego - The City of Nashville, Tennessee, home of the Grand Ole Opry and center of the music industry, has had to make some last minute changes to its annual new year's eve festival in order to avoid a trademark dispute. In the past, the city's Music City New Years Eve Bash has wowed its festive citizens with a large, glowing Gibson guitar dropping as the new year rings in. This year, Nashville will be ringing in the new year with a fifteen-foot music note making the one minute descent.

Apparently, the Hard Rock Café, which has been the sponsor of the bash for the last two years, will not be hosting this year's event in Nashville. Since the Hard Rock owns the trademark rights to Gibson Guitar Drop, the Nashville Convention and Visitors Bureau decided to make the change so it would not be faced with any backlash over using the Hard Rock's trademark. The reason for the Hard Rock pulling out of Nashville's new year's bash was reportedly due to "cost concerns."

Deana Ivey, who works for the Nashville Convention and Visitors Bureau, said that the dropping musical note is more original. So original in fact, that the Convention and Visitors Bureau decided to trademark the name "Music Drop." The chain of musically-themed restaurants known for its rock and roll memorabilia will still be hosting the guitar drops in Memphis, Niagara Falls, and for the first time, St. Louis.

"We don't want to do what other cities are doing. So that was another good reason for us [Nashville] to say we're doing our own thing. We're Music City. We're going to represent ourselves well, and we're making a change," stated Ivey. Back in June 2010, the Hard Rock Café was also host to the Gibson Foundation's Night Out for Nashville, an event to raise money for the city's flood relief fund.

This year's Music City bash, which normally attracts crowds of 30,000, is expecting an even larger turnout. This is mainly due to the announcement of its headliner entertainment, country-rocker Lynyrd Skynyrd, who will play a fifteen-minute version of "Free Bird" while the crowd watches the Music Note drop.

Atlanta Braves Cry "Foul Ball" Over Disney Trademark

December 27, 2011,

baseball.jpgSan Diego - The Atlanta National League Baseball Club, owner of the Atlanta Braves, filed an objection with the United States Patent and Trademark Office to many of the trademark applications filed by The Walt Disney Company ("Disney") over the word "Brave." Disney, in association with Paramount Resources' Pixar Petrolium ("Pixar"), is set to release a 3-D computer animated fantasy movie entitled Brave in 2012. Originally, the movie was titled The Bear and the Bow, but Disney and Pixar changed the name to Brave in March, 2010. After private negotiations broke down this summer between Disney and the Atlanta Braves, the Atlanta Braves filed an objection to Disney's' trademark applications.

The Atlanta Braves do not own a trademark for the singular version of the word, "Brave," only the plural version, "Braves." However, the Atlanta Braves believe that Disney's use of the singular version of "Brave" would damage their plural trademark of "Braves" and cause confusion to their fans. Also, the Atlanta Braves contend that they use the singular version occasionally on merchandise or on television or otherwise, when they refer to a single player on the team as a "Brave."

While the Atlanta Braves argue that Disney's use of the word "Brave" causes confusion, it is difficult to believe anyone could argue that the plot or setting of Disney's movie, Brave, would cause any confusion with anything relating to baseball. The computer animated fantasy movie follows the adventures of Princess Merida in the Scottish Highlands during the 10th Century as she confronts mystical legends, epic battles, and wild beasts. However, a trademark owner has a duty to police and protect any use of its trademark or risk it being considered abandoned. Moreover, it would seem that use of the word "Brave" by both entities on apparel could lead to consumer confusion.

Trademark Application Denied For ".MUSIC" Domain Name

December 20, 2011,

domain-name-http- www.jpgSan Diego - The Trademark Trial and Appeal board affirmed the Patent and Trademark Office's denial of a trademark application for a trademark that included the word ".MUSIC," a top-level domain name. The company, theDot Communications Network, filed five intent-to-use trademark applications in connection with the ".MUSIC" domain. The Appeal board denied the applications due to the fact that the domain ".MUSIC" was merely descriptive of goods and services and not distinct.

A top-level domain name is the last part of a domain name used for a web address. Generic top-level domain names were created to describe a general purpose and were traditionally reserved for top-level domain names such as ".COM" and ".NET." However, there has been an increase in demand for a greater array of top-level domain names that are more descriptive of the website's purpose.

In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN), approved a measure to expand the use of generic top-level domain names and allow top-level domain names such as ".MUSIC" to be used. The music industry has expressed interest in using the ".MUSIC" domain names for their websites. The application process for the new top-level domain names will begin in January, 2012 and accepted domain names will go online in 2013.

The Patent and Trademark Office's decision has set an early precedent that those intending to obtain trademarks in newly created top-level domain names will find it very difficult to win approval. Given that most new top-level domain names will be descriptive of the goods and services of the website and the fact that thedomain names will not be restricted to any one company, it's unlikely that new top-level domain names will be distinct enough for trademark approval. Unless ICANN begins approving more distinctive top-level domain names, there likely will not be a boom in trademark applications for top-level domain names.

FC Tampa Bay Files Trademark For Rowdies Name

December 15, 2011,

soccer-ball.jpgSan Diego - FC Tampa Bay, a professional men's soccer club, will be unveiling a new trademark and logo today.

Just finishing its season this fall, the team will announce its plans to use the Rowdies name and a new logo that will change from the existing shield to a retro style that will include the Rowdies name. The announcement comes after a three-year legal battle with Classic Ink, a Dallas-based retro sports apparel company, which owned the rights to the name of the former Tampa Bay NASL team.

Originally, the team was called the "FC Tampa Bay Rowdies" in honor of the Tampa Bay Rowdies of the Old North American Soccer League, Tampa's first professional sports franchise that started playing in 1975, one year before the city got its first NFL team. Due to legal issues over the Rowdies nickname, the team dropped it and officially changed its name to "FC Tampa Bay," even though fans still referred to them as the Rowdies.

Now that the soccer franchise has reached a deal with Classic Ink, it will officially be awarded exclusive rights to the Rowdies trademark and will rename itself the "Tampa Bay Rowdies" for its upcoming 2012 season. In addition to the name and logo change, the team will also be rebranding its website, Facebook page, and Twitter account. The Rowdies will also begin selling new merchandise bearing the Rowdies trademark to its fans.

Upon entering the league in 2008, the team and its parent company Citrus Ventures, was hit with a trademark infringement lawsuit by Classic Ink in a U.S. district court in Texas. To avoid further legal trouble, the team had removed all Rowdies references to its identity by October 2010, until reaching the recent agreement with the Texas-based apparel company.

Back in 2010 when the team had ceased using the Rowdies name, FC Tampa Bay owner and president Andrew Nestor said, in regards to his plans to re-obtain the Rowdies name, "It's something that takes awhile. We're still working toward a resolution, and its not completely up to us. Those things aren't completely 100 percent in our control, so you do what you can over time."

MGM Files Trademark Lawsuit Over Online Poker Domains

December 5, 2011,

playing_cards.jpgSan Diego - MGM Resorts, the Nevada-based gaming corporation has filed a federal trademark infringement lawsuit against four individuals and two companies for sitting on domains that are too closely related to the MGM brand. In addition to trademark infringement, allegations from the lawsuit also include cyber squatting.

The complaint, which was filed earlier this week with the U.S. District Court in Las Vegas, claims that the defendants intentionally took several MGM gaming brand names with the intention of profiting from registering them as domain names. This allegation, according to MGM, is in direct violation with the Anticybersquatting Consumer Protection Act (ACPA).

The defendants named in the lawsuit are the owners of the following domains: bellagioonlinepoker.com, circuscircuspoker.com, excaliberpoker.com, Luxorpoker.com, mandalaybayonlinepoker.com, mgmpoker.com, and aria poker.com. All of the defendants reside in the United States with the exception of one living in London, and another living in Zimbabwe.

"The defendants have done nothing more than tack on the descriptive terms 'poker' or 'online poker' to each of the MGM trademarks to form the domain names. Accordingly, there is no question that the domain names are confusingly similar to the MGM trademarks," commented attorneys for MGM, who were trying to obtain a restraining order to immediately block the infringing sites.

MGM's lawsuit indicated that the defendants infringed on its brands and registered the domains in order to capitalize once online poker is licensed and regulated in the United States. Recently, the commercial casino industry has been pushing for new federal laws to regulate the estimated $6 billion online poker industry. The casino industry wants each individual state to be able to vote whether it will allow online poker and it is also asking that online gaming companies be licensed the same way land-based casinos are in Nevada, New Jersey, and elsewhere.

Some of the infringing sites were created as early as 2002, and MGM's recent lawsuit could indicate that it feels it will be offering licensed online poker in the near future.