San Diego Trademark Attorney® Blog

Beyonce and Jay-Z Trademark Their Baby's Name

May 29, 2012,

concert.jpgSan Diego - While it is not surprising to see the wide variety of unique baby monikers popping up everywhere, some may see it as surprising to see that Beyonce and Jay-Z have recently trademarked their new baby's name "Blue Ivy".

On its face, one might think it seems downright crazy that someone would go to the trouble and expense of actually trying to prevent other parents from using a particular name. However, there is more to their seeming madness than meets the eye.

Though the birth of a child or a child itself would not necessarily be considered unique and original enough to necessitate trademark protection, the use of a baby's name for product branding the incentive for Trademark protection. In this case, the branding of future products is the ultimate goal Beyonce and Jay-Z had in mind. As the creators of a number of popular clothing lines and other products, both Beyonce and Jay-Z, are no strangers to the world of product branding. It is also not surprising that they would consider the birth of their first child ample inspiration for the creation of a line of clothing or other items. Born January 7th, in New York City, it is speculated that little Blue Ivy will most likely be the miniature muse for a future line of baby clothing and children's items.

So what does that mean for the average parent looking to name their child Blue Ivy or parents seeking to protect their own unique moniker? Trademarking a name obviously does not prevent other parents from using your child's name. As such, parents would only be protected from other parents trying to financially profit from the use of a registered name. For example, if you named your child Greyhound, the bus company would only have a claim if you created a rival bus company named after and based around your offspring. So those of you looking to name your baby Blue Ivy, feel free to use the name, as long as you don't plan on using the name later to start a clothing line or any other similar project for profit.

Maker's Mark Wax Seal Trademark Decision Upheld

May 11, 2012,

whiskey-in-glasses.jpgSan Diego - The trademarked red wax top of Maker's Mark Distillery's bourbon is here to stay. The U.S. Court of Appeals for the Sixth Circuit released its judgment which upheld an original ruling in a trademark infringement case between Maker's Mark and Jose Cuervo International that dates back to 2003.

The 19 page opinion made by Judge Boyce Martin states, "Distillers compete intensely on flavor, but also through branding and marketing; the history of bourbon, in particular, illustrates why strong branding and differentiation is important in the distilled spirits market." This statement goes without saying that any distinct trademark that goes into the making of a product should be considered in a products marketing. This idea paid off for Maker's Mark which spends about $22 million a year in marketing its bourbon.

Maker's Mark, created in 1953, began using the red wax dripping on its bottles in 1958 when Margie Samuels experimented with the idea using her deep fryer in Loretto, Kentucky. The signature seal was trademarked in 1985. Maker's Mark filed a lawsuit to protect its trade dress in 2003 against Jose Cuervo International who was using a similar wax seal dripping on its bottles of Reserva. Cuervo's Reserva collection began selling in the United States in 2001. However, after a judge ruled that Maker's Mark had rights to the trade dress, Cuervo changed its bottles to a "straight-edged wax seal".

When the court ruled that Cuervo was infringing on Maker's Mark trademark, the famous tequila brand not only had to change the appearance of its bottles but Cuervo's affiliates were also affected. Diageo North America and Casa Cuervo of Mexico were ordered to stop using the red wax dripping as well after Maker's Mark requested an injunction against the companies. Its injunction was granted in 2010 and therefore the liquor companies were prohibited from using the red wax seal. Diageo appealed the ruling, which the Court of Appeals has recently upheld.

In a statement made by Maker's Mark Chief Operating Officer Robert Samuels, he stated that the "outcome confirming that our unique trade dress cannot be infringed is great news for fans of Maker's Mark, those who handcraft our bourbon, and those who individually dip each bottle every day." A representative of Diageo North America simply stated that the company was "disappointed with the ruling".

Burberry Claims No Trademark Infringement Over Humphrey Bogart Image

May 7, 2012,

movie-symbol.jpgSan Diego - High fashion apparel and accessories giant, Burberry Group, is seeking a federal court ruling that says it is not committing trademark infringement by using an image of the late actor Humphrey Bogart wearing a Burberry trench coat from the classic film "Casablanca."

The luxury fashion house, founded in England, is asking the court to declare that its use of Bogart's name and image for advertising in social media does not infringe the late actor's estate's trademark rights or rights of publicity, according to the complaint. The defendant in the complaint, Bogart, LLC, owns and manages the rights to the name, voice, signature, photograph, and likeness and all other publicity rights of the iconic actor.

Burberry contends that it licensed an image of Bogart wearing the trench coat from Corbis Images, an agency that provides commercial and editorial photography and illustrations. The image, which was from the final scene of the 1942 cult classic "Casablanca," was used in a Burberry historical timeline to demonstrate the influence of the popular brand. The company also claims that the image was not used to sell its merchandise.

"Defendant is attempting to exert and assert against Burberry rights which it does not possess," according to a statement from the complaint. Burberry also cited its reference to Humphrey Bogart in the timeline is protected under the First Amendment of the United States Constitution, prohibiting the abridging of free speech.

According to the complaint, Bogart, LLC sent Burberry a cease and desist letter last month, ordering it to stop using the image. Burberry claims that Bogart, LLC followed up to the letter by contacting the British company at least two times making "a significant monetary demand."

Bogart, who died in 1957, is regarded by the American Film Institute as the greatest male star in the history of American cinema. His trademark film persona was cemented by his performance in the still-celebrated "Casablanca," making him a cultural icon among film lovers. Bogart's portrayal in the role of Rick Blaine helped "Casablanca" win the Academy Award for best picture.

The attorney for the southern California-based Bogart, LLC did not offer any comment on the dispute.

Big 4 Tobacco Companies Take Aim at Australian Government to Protect Trademarks

April 30, 2012,

cigarette.jpgSan Diego - Our friends down under are moving toward enforcing tougher anti-smoking laws. In response, the world's big four tobacco firms head to Australian high court to protect their trademarks and logos from Australia's warnings about lung cancer and the associated disturbing images.

Beginning in December, all cigarettes sold in Australia will have to be packaged in olive-green packs with stark health warnings, graphic images, and no brand logos. The manufacturer name will only appear in small, standard font.

This move has large tobacco companies such as Phillip Morris, Imperial Tobacco, Japan Tobacco International, and British American Tobacco fuming, claiming that the new laws which force them to sell their products in unbranded packaging is unconstitutional because it allows the Australian government in essence to acquire their intellectual property, trademarks and logos, without any compensation.

The move by the Australian government to only permit the sale of tobacco products in the unbranded packaging is expected to influence other countries to adopt the same laws. Last week, lawmakers in New Zealand agreed to introduce all tobacco products in unbranded packages with the same warnings, based on Australia's legislation.

Acting on behalf of Japan Tobacco International, the owner of Camel and Silk cut, Gavan Griffith stated that Australia's new laws would use one hundred percent of the back of each cigarette packet and seventy percent of the front for the warnings and lung cancer images. The company's trademark Camel would be reduced to a "bare husk," according to Griffith.

"We say our trademarks are extinguished," said Griffith in court.

The tobacco giants are basing their argument on a part of the Australian constitution which states that the "acquisition of property" by the state must be on "just terms", which means that compensation must be paid.

In response to the constitutional example presented by the tobacco companies, the Australian government said that it would be inappropriate for it to compensate companies for their trademarks for requiring them to market their products in a way that would prevent damage to public health. Adding insult to injury, Australia's high court chief justice, Robert French, said that this particular case was in a "different category" because of the risk of fatal health issues caused by smoking.

Regardless of tougher anti-smoking laws and campaigns in the U.S. and Australian markets, in 2010 British American Tobacco reported an increase in profits of 5%, while Phillip Morris International, the manufacturer of the Marlboro brand, reported a 15% increase in profits last year. The increase was largely due attributed to growth in the Asian market.

Famous Filmmaker Sues San Francisco Eatery for Trademark Infringement

April 19, 2012,

pizza.jpgSan Diego - Francis Ford Coppola, the famous film director, producer, and screenwriter responsible for creating The Godfather epics, is suing the owner of a California restaurant for trademark infringement. Coppola is claiming that the owner of Tavola Italian Kitchen restaurant in Novato is infringing the Oscar-winning filmmaker's "a tavola" trademark he uses to market his own restaurants.

According to the complaint, filed by Coppola and his family trust in a San Francisco federal court, "A tavola" is a registered trademark, which in Italian means restaurant patrons aren't provided with dinner menus and instead are served family-style Italian dishes. Coppola registered "A tavola" as a trademark because it is his favorite way to enjoy a meal and he also uses it to market his eateries located at his winery in Napa Valley and in San Francisco.

Coppola's complaint states that his restaurants have used the trademark since 2008, with the United States Patent and Trademark Office issuing a registration for last year. Reportedly, the filmmaker's company had sent a cease and desist letter to Tavola Italian Kitchen asking it to stop using the name, to no avail.

The trademark infringement complaint contends that due to the close proximity between Tavola Italian Kitchen and Coppola's restaurant (within fifty miles), the defendant's use of the name will likely cause a confusion with patrons. Coppola's winery's website refers to "a tavola" to promote its casual dining venue each Tuesday night.

"We're struggling to stay alive, and now we have this, one of the biggest names in American history steps on us?" stated Anthony Pirraglia, owner of Tavola Italian Kitchen. "They don't have anything else to do? It's incredible."

Pirraglia also said he was surprised that Coppola was able to trademark the Italian term since it is so generic and widely used by restaurants all over. He added that his family chose the name for the restaurant nine months ago in an attempt to revitalize the small, flailing eatery located in a shopping mall.

"We're a small, seventy-seat restaurant in a shopping center," Pirraglia said, adding that "it's absurd" to claim that consumers would be confused that it's Francis Ford Coppola's estate.

In 2010, Coppola successfully sued a Spanish winery in Texas for trademark infringement. Casas Naveran winery in Austin was ordered to scrap its label used on its rose and white wines that Coppola alleged was a copy of the "Sofia" label he uses on wines in honor of his daughter, actress and director Sofia Coppola. Coppola was reportedly awarded undisclosed monetary damages, profits, attorneys' fees and litigation costs.

Neil Young Secures "SQS" Trademark for High-Res Audio Technology

April 11, 2012,

dvd-blue.jpgSan Diego - The United States Patent and Trademark Office has recently registered the trademark "SQS" to American rocker Neil Young. The "SQS" reportedly stands for "studio quality sound."

Last year, Young issued a press release stating that he was actively pursuing a music format that provides a much richer sound experience than the common MP3 format. A statement from the press release reads:

"Young is also personally spearheading the development of Pono, a revolutionary new audio music system presenting the highest digital resolution possible, the studio quality sound that artists and producers heard when they created their original recordings. Young wants consumers to be able to take full advantage of Pono's cloud-based libraries of recordings by their favorite artists and, with Pono, enjoy a convenient music listening experience that is superior in sound quality to anything ever presented."

Neil Young's new music format will apparently use a technology similar to Direct Stream Digital (DSD). DSD uses 1-bit sampling at 2.8224 Mhz, which is sixty-four times greater than the 44.1 Khz used in CD's. With the new format, a consumer's average music file could possibly be as large as 300 MB to hold the entire set of studio sound data.

Rolling Stone Magazine recently reported that Young's Pono platform has had six trademark filings thus far, which are Ivanhoe, 21st Century Record Player, Earth Storage, Storage Shed, Thanks for Listening, and SQS. Young's SQS trademark is described as "audio and video recordings featuring music and artistic performances; high resolution music downloadable from the Internet; high resolution discs featuring music and video of music and artistic performances; pre-recorded digital media containing audio and video recordings featuring music and artistic performances for storage and "playback" as well as "online and retail store services featuring music and artistic performances."

Young's reasoning behind the new format was that he claimed the sound of modern music made him "angry" and stated that today's audio quality is the "worst sound we've ever had." He also stated that Apple co-founder, the late Steve Jobs, would have been able to help him preserve the sound quality of vinyl and also said that digital downloads were "degrading" the standard of audio.

Trademark Dispute Becoming a Dogfight in New Zealand High Court

April 2, 2012,

dog.jpgSan Diego - Pet food manufacturers Mars and Heinz Wattie's are taking their trademark infringement battle to a High Court in Wellington, New Zealand.

The United States-based Mars Incorporated, widely known for its candy brands, is appealing a decision by New Zealand's assistant commissioner of trademarks to reject its application to trademark the term "Advance Advanced Pet Nutrition." Mars produces well-known pet food brands such as Pedigree and Whiskas.

Mars' trademark application had been opposed by Heinz Wattie's, which owns the Chef and Champ brand, because it claimed that it had already used the unregistered trademarks "Champ Advanced Dog Nutrition" and " Advanced Dog Nutrition" in New Zealand.

The assistant trademark commissioner's decision, dated September 14, insisted that if Mars were to use the phrase from its trademark application, "it is likely that a substantial number of persons in the relevant market would be confused." Section seventeen of New Zealand's 2002 Trademark Acts states the commissioner must not register any matter as a trademark if its use is likely to deceive or cause confusion.

In addition to rejecting the Mars application, the trademark commissioner awarded Heinz Wattie's costs of $3,340.

The trademark attorney representing Mars in New Zealand contends that the Chef and Champ taglines were never registered as trademarks in the country, nor had Heinz Wattie's ever applied for their registration. He went on to say that the phrases were simply descriptive of the products and were a relatively insignificant part of the product's packaging. Instead, he claimed, pet food consumers would recognize the product by its trademarked logo, which was displayed liberally on the product's packaging.

He added that Mars was seeking a distinctive trademark because of its unique combination of "advance" and "advanced."

However, the Heinz Wattie's attorney argued that although the New Zealand company's phrase was not registered as a trademark, it has been used on the Chef and Champ packaging for over twenty years and is indeed an identifiable component to the Champ trademark.

"It is inevitable that members of the public who have seen this product on sale for ten years or longer will make a connection with that is part of the branding," stated the Heinz Wattie's attorney.

In 2010, Mars in New Zealand earned profits of $14.8 million on sales of $193.9 million, according to the most recent financials filed with the company. Hastings, New Zealand-based Heinz Wattie's reported profits of $92.7 million on sales of $735.6 million for the year ending April 27, 2011.

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.

San Diego Based Cricket Wireless Prevails in Trademark Infringement Lawsuit

February 21, 2012,

cellphone-flip-isolated-in-white.jpgSan Diego - Communications provider Cricket Wireless has recently won a trademark infringement and false advertising lawsuit against ABC Wireless Choice, a wireless communications provider in Chicago. The San Diego trademark attorney representing Cricket announced that his client has been awarded a permanent injunction and all attorneys' fees in the case.

According to federal trademark law, the courts may award injunctive relief if there is evidence that the defendant has mislead consumers by falsely implying a connection to the plaintiff, confusing buyers as to the source of its goods and services. In "exceptional" cases, in which the defendant is found to have acted maliciously, fraudulently, willfully, or deliberately, the courts may award attorneys' fees to the plaintiff.

In its trademark infringement complaint against ABC Wireless Choice, Cricket was victorious on all counts and was also able to prove the variables for an "exceptional case," thus receiving the award for attorneys' fees.

According to the complaint, ABC Wireless Choice infringed on the Cricket Wireless trademark and blatantly implied it was somehow connected to the San Diego provider by displaying the Cricket trademark and logo on its signs and banners. ABC was not offering any Cricket Wireless products or services for sale, however its attempts to lure potential Cricket customers to its stores to purchase its competing telecommunications goods and services were intentional. Upon investigation by Cricket Wireless representatives, ABC was found to have engaged in activities that were unlawful and described as a "bait and switch" scam at the expense of Cricket and its customers.

In addition to these findings, ABC Wireless choice reportedly threatened Cricket Wireless employees and repeatedly attempted to evade service of process, the procedure that would give it legal notice of Cricket's complaint.

Founded in 1999, Cricket Wireless provides wireless communications service to seven million customers in the United States. Cricket is a subsidiary company of Leap Wireless, which owns and operates the seventh largest wireless communications network in the country, utilizing its CDMA 1X and 1xEV-DO networks.

No comment was available from either party on the court's verdict.

University of Alabama Trademark Infringement Claim Headed to Court

February 10, 2012,

football.jpgSan Diego - A federal appeals court will hear arguments in a trademark infringement battle between sports artist Daniel Moore and the University of Alabama, whose football program is portrayed in a number of his works. The two parties will present their cases to the United States Eleventh Circuit Court of Appeals in Atlanta later this week.

The trademark infringement dispute began back in 2005 when the university sued Moore for allegedly violating trademark law after he had painted scenes from football games depicting Crimson Tide players in their crimson and white football uniforms without the authorization of the University. The University of Alabama's complaint also contends that Moore reissued previously licensed prints of the football players without paying any royalties to the University, located in Tuscaloosa.

Both parties appealed their cases after a judge's ruling in 2009 found that Moore's paintings and prints were protected under trademark law but that other items, such as coffee mugs, weren't. United States District Court Judge Robert Propst ruled that Moore's artwork depicted on mugs, T-shirts, and other merchandise did indeed infringe on the University's trademark.

The Birmingham-based artist stated that the items covered in Judge Propst's ruling are "incidental items" that are a very small part of his business in terms of revenue. He added that he was pleased with the judge's ruling that his paintings and large prints have not, do not, and will not infringe on the University's trademark, because those are the "meat and potatoes" of his business.

In his defense, Moore denied violating trademark laws and maintained that his artwork constitutes free speech under the United States Constitution. "The University of Alabama believes the court ruled correctly when it found that Daniel Moore and his company engaged in activities that infringe on the University's trademarks," commented University spokeswoman Deborah Lane. "While we regret the necessity of having to involve the courts in this matter, the lawsuit was necessary since the University of Alabama must protect the value and reputation of our trademarks, name, colors, indicia, and logos, by determining who uses them, as well as when and how they are used."

Moore's paintings and prints illustrate some of the more pivotal moments in Alabama sports history, including "The Goal Line Stand" from the 1979 Sugar Bowl game against Penn State. His latest work of art is reportedly going to depict "The Shoutout" from last season's national championship win over LSU.

State Supreme Court Refuses to Dismiss Lottery Trademark Infringement Lawsuit

February 1, 2012,

cash-suitcase.jpgSan Diego - A state Supreme Court in Arkansas is refusing to toss out a Little Rock marketing firm's trademark infringement lawsuit in which it is seeking exclusive rights to certain Arkansas state-related lottery phrases it claims it used before Arkansas ever had a lottery.

In a 4-3 decision, the divided Supreme Court dismissed the Arkansas Lottery Commission's appeal of a circuit judge's ruling which denied its motion for summary judgment in the trademark infringement complaint filed by Alpha Marketing. Throughout the case, the Commission has argued that it is exempt from civil suits, however Circuit Judge Wendell Griffen never addressed that issue in his ruling.

Alpha Marketing reportedly filed its complaint against the Lottery Commission after its owner Ed Dozier was informed by the state attorney general's office that he would be sued if his company continued to use the lottery-related phrases, which have appeared on merchandise such as T-shirts. United States Patent and Trademark Office (USPTO) records indicate that Alpha Marketing registered the lottery-related trademarks as early as 1994, however the state of Arkansas did not have an official lottery until 2009.

In its lawsuit, Alpha Marketing is seeking a decision from the state Supreme Court that it has exclusive trademark rights to the phrases, "Arkansas lottery," "Arkansas Lotto," and "Lottery Arkansas."

During its arguments heard before the Arkansas Supreme Court last month, a trademark lawyer representing the attorney general's office argued that the Lottery Commission has sovereign immunity since it is run as a state agency and therefore exempt from lawsuits. This argument was countered by Alpha Marketing attorneys who insisted that the sovereign immunity defense does not apply because the state lottery is operated as a for-profit business.

The majority ruling from the Supreme Court wrote that it could not consider the sovereign immunity defense without a ruling from the lower-court that specifically addresses it. Although it dismissed the appeal, the Supreme Court did say that the Lottery Commission could return after obtaining a ruling from the circuit judge on the issue of sovereign immunity.

State Supreme Court Justice Robert Brown wrote in his opinion, "In my judgment, it is the obligation of this court to facilitate trials through our procedures, not impede them. By requiring additional magic words from the circuit judge, which would amount to surplusage in light of the judge's clear decision, and by discounting his actions, this court has endorsed a trap for the unwary in the practice of law."

New York Clothing Designer Files For 'Blue Ivy Carter NYC' Trademark

January 24, 2012,

stork.jpgSan Diego - After intense media buzz surrounding the birth of Blue Ivy, the daughter of rap/hip hop stars Jay-Z and Beyonce, a New York City clothing designer is seeking to capitalize on baby Blue Ivy Carter's name by filing a trademark application with the United States Patent and Trademark Office (USPTO).

According to USPTO records, Joseph Mbeh is seeking to trademark "Blue Ivy Carter NYC" so he can stamp it on a variety of children's clothing. Mbeh's application covers "infant, toddler, and junior clothing" including dresses, skirts, sleepwear, undergarments, boots, shoes, and athletic footwear. In his filing with the USPTO, Mbeh claims that he began using the "Blue Ivy Carter" name as early as January 9, just two days after the child was born at Lenox Hill Hospital in Manhattan.

The application appears domed to fail however, because a trademark application which includes a person's name must include the written consent of that person. In this case, Mbeh apparently has no such consent from the baby's A-list parents. Without written consent, the application will be refused registration. Even with consent the application would fail because a prior registration exists for BLUE IVY used in relation to retail apparel.

Mbeh, a Cameroon native and former Phat Farm intern, is co-owner of Fourfront, which is described as a "street contemporary-couture brand" based out of Manhattan's Garment District. According to Mbeh, his firm's apparel has been worn by celebrities such as rapper T-Pain and Ray J, who is the brother of television actress and R&B singer Brandy.

The application to trademark the child's name comes in the midst of reports that a new type of marijuana has been named after Blue Ivy. The attention surrounding the unique moniker is also on the heels of reports that the couple had diva-like demands during their hospital stay and paid $1.3 million to have an entire floor of the hospital to themselves.

Beyonce, whose formal name is Beyonce Giselle Knowles, rose to fame in the late 1990's as lead singer of R&B girl group Destiny's Child, one of the top-selling female groups of all time. In 2008, Beyonce married rapper Jay-Z after years of speculation of whether or not the couple was actually involved with each other. Jay-Z, born Shawn Corey Carter, grew up in a housing project in Brooklyn and in his music has rapped about being involved with selling crack cocaine during his youth. The rapper has gone on to become one of the most successful rap artists and entrepreneurs in America, having a net worth close to $500 million.

No comment was available from the child's parents. With the popularity of both music stars and the creativeness of their child's name, it is not surprising that someone would jump on the opportunity to capitalize on a trademark.

Anheuser-Busch InBev Buys Budweiser Trademarks from Czech Brewer

January 16, 2012,

beer-bottle-pouring.jpgSan Diego - Anheuser-Busch InBev (A-B InBev), the world's largest brewer, has purchased the trademark rights to the Budweiser Beer brand in Europe from a small Czech brewer. This is a small step forward for A-B InBev in a long-running litigation over the hotly contested Budweiser brand.

In its quest for global control of the Budweiser brand, American A-B InBev purchased one of two brewers in the Czech town of Ceske Budejovice, which translates to "Budweis" in the German language. Its purchase of the Bedejovicky Mestansky Pivovar brewer and its 'Budweiser' brand, means that A-B InBev can tighten its grip on the 'Budweiser' trademark, thus ending a century-old battle for the well-known beer.

The other brewery in Ceske Budejovice, known as the Budvar brewer, whose beers are distributed in Ireland, is still claiming use of the Bud name and trademark but will likely look for a buyer in the coming years. Budvar is proudly owned by the Czechoslovakian government, which increased its exports of Budweiser in the 1970's, thus fueling the ongoing trademark dispute even more.

The Czech government has been rumored to be considering selling off its prized assets like the Budvar brewery through a public stock flotation, where A-B InBev would likely purchase a large stake.

No information was available as to A-B InBev's purchase price of the Bedejovicky Mestansky Pivovar's rights to the Budweiser trademarks, however its parent company reportedly transferred the actual brewery and its employees to a different firm prior to the sale.

A big reason for InBev purchasing Anheuser-Busch three years ago was to put itself in the position to acquire global dominance of the Budweiser brand. The American brewer stepped up its exports to Russia and Brazil and is investing heavily in World Cup soccer sponsorships in order to increase its name recognition with beer drinkers all over the world.

The Budweiser trademark dispute dates back more than one hundred years, with all three breweries claiming historical rights to the famous brand and trademark. Since the 1970's the beer companies have fought legal battles in several different countries as both Anheuser-Busch and Budvar increased their exports of Budweiser to other countries. Today, Budvar seems to have beer dominance in Eastern and Central Europe, Germany, and France, while Anheuser-Busch has been more successful in the United States, Latin America, Asia, and southern Europe.

No word on how residents of the small town in the largest beer drinking per capita country feel about the purchase.