San Diego Trademark Attorney® Blog

March 2012 Archives

Miami University in Ohio Trademarks 'Cradle of Coaches' Phrase

March 20, 2012,

whistle.jpgSan Diego - A phrase long known to the students and fans of Miami University in Ohio to describe its athletic program has now been registered as a trademark. The "Cradle of Coaches" phrase is now being recognized by the United States Patent and Trademark Office as an official trademark, with the University having exclusive rights to it.

Bob Kurz, former Miami Sports Information Director, recalled in his 2002 book titled "Miami of Ohio, The Cradle of Coaches," how he first developed the phrase fifty-three years ago.

"Driving back to Oxford (Ohio) one Saturday night in late October (1959), the car radio was tuned to a station picking up a game from Tiger Stadium in Baton Rouge, Louisiana. LSU, coached by Paul Dietzel who was a 1948 Miami graduate, was pitted against Mississippi State as I recall. The ear-splitting noise cascading down from the stands made it hard to hear the play by play. It was college football in the South, and I think I was hearing it and feeling it for the first time. It gave me an idea."

"The next morning after church, I went to the office. That was my usual Sunday morning ritual. Perusing the Sunday papers, I jotted down the record of the Miami alumni in the college and professional ranks. Red Blaik, Miami '18, the legendary Army Coach; Weeb Ewbank, Miami '28, Baltimore Colts; Paul Brown, Miami '30, Cleveland Browns; the aforementioned Dietzel; Ara Parsehgian, Dietzel's teammate and classmate, and finally John Pont, Miami '52, and current Miami coach. I threw in Sid Gillman, the Miami coach of Dietzel, Parseghian and Pont, from the NFL."

"Here it was, more than halfway through the season, and these Miami coaches had yet to lose ten games combined. There's a story there, I said to myself, as I put a blank sheet of paper in the typewriter. And on the blank sheet of paper, citing this amazing phenomenon, I called Miami the Cradle of Coaches."

In 2004, Kurz and his wife presented the University with a generous monetary gift to build The Cradle of Coaches Plaza. This fall, a statue honoring former coach Paul Brown will be added to the already-erected statues of coaches Blaik, Ewbank, Dietzel, Parsehgian, Pont, and others.

Now that the school owns the nationwide rights to control the trademark, it may pursue licensing opportunities and will of course police the trademark in the event it is infringed.

Navajo Tribe Sues Urban Outfitters for Trademark Infringement

March 12, 2012,

indian_pow_wow.jpgSan Diego - Months after issuing Urban Outfitters a cease and desist letter asking it to stop using the "Navajo" name on its products, American Indian tribe Navajo Nation has filed a trademark infringement lawsuit against the retailer.

In its lawsuit, filed in United States District Court in New Mexico, the Navajo Nation is accusing Urban Outfitters of infringing on its tribal name and violating the federal Indian Arts and Crafts Act. Enacted in 1990, the Indian Arts and Crafts Act makes it illegal to sell arts and crafts in a manner that would suggest they are authentically made by American Indians when they are not.

The Navajo Nation owns approximately ten registered trademarks on the "Navajo" name that cover clothing, footwear, online retail sales, household products, and textiles.

Proud of its heritage and intent on protecting what it believes as its most valuable asset, Navajo Nation issued a cease and desist letter in 2011 after Urban Outfitters launched a line of Navajo-branded clothing and accessories. Specific items in the retailer's line included underwear and a liquor flask, which the tribe insisted was "derogatory and scandalous," since the sale and consumption of alcohol is forbidden on the reservation which spans parts of northeast Arizona, southeast Utah, and northwest New Mexico.

Urban Outfitters responded by removing the product names from its website, however the tribe maintains that products consisting of the Navajo name are still being sold through other company brands like Free People, in catalogs, and retail stores.

As of late last month, there were no signs of the word "Navajo" on any products at an Urban Outfitters store in Arizona, however the company's website features several pieces of jewelry labeled vintage Navajo with turquoise beads and silver. In particular, a description for a handmade cuff indicates that it was originally sold at an Indian trading post and has an etched arrow detailing with a "sterling" stamp on the back.

In an email sent last year after receiving the cease and desist letter, a spokesman for Urban Outfitters said the retailer had no plans of altering its products and defended its actions by claiming the Native American-inspired trend had been used on and off in fashion, fine art, and design for years.

The Navajo tribe has been licensing its name to other businesses in exchange for a share of their profits but insists that there are about two dozen companies that are using the Navajo name without its authorization or any reimbursement.

The Navajo Nation is seeking unspecified monetary damages and a permanent injunction barring Urban Outfitters from using the "Navajo" name or any variations on its products.

Frito-Lay Twisted over Competitor's Pretzel Trademark

March 2, 2012,

pretzel_sticks.jpgSan Diego - In a David vs. Goliath trademark dispute, Princeton Vanguard, the manufacturer and marketer of the Pretzel Crisps brand flattened pretzel snacks, is having its trademark challenged by snack-food giant Frito-Lay. The Plano, Texas-based Frito-Lay is arguing to the United States Patent and Trademark Office that the "Pretzel Crisps" trademark is too generic to hold a trademark registration.

What began as a small family-owned business making funnel cakes for state fairs, Princeton Vanguard had its first national hit with its New York Style Bagel Chips, which are bagged, sliced, toasted bagel pieces. In 2004, armed with a United States patent for a flat pretzel cracker, Princeton Vanguard launched its Pretzel Crisps brand. The brand is available in a variety of flavors and can be found at grocery retailers nationwide.

According to a market research company in Chicago, Pretzel Crisps are the sixth-most popular snack food in the snack market. Unable to successfully market its own version of flattened, crispy pretzels through its Rold Gold Pretzel brand, Frito-Lay has now moved on to challenge the "Pretzel Crisps" trademark registration.

Princeton Vanguard will likely have some difficulties defending its descriptive trademark. With trademarks rated according to how distinctive they are, "Pretzel Crisps" may be considered to literal and descriptive for the crisp, flattened pretzels it represents. Fanciful or inherently distinctive and arbitrary trademarks have the greatest chances of sustaining a trademark registration because they carry no particular connection with their products.

Descriptive trademarks are valuable to companies because they are useful at demonstrating to consumers what they are actually buying. Descriptive trademarks also tend to rank higher in Internet searches for products in their categories. The problem with these types of trademarks however, is that in order to sustain a registration, the owner often must show that it has created "secondary meaning" in the marketplace. Consumers must be able to associate it with the source of goods, and not only the product class.

Even if its "Pretzel Crisps" trademark is refused by the USPTO, Princeton Vanguard may still continue to use the trademark. If the trademark eventully garners enough recognition as a brand, Princeton Vanguard could then re-apply for the trademark.