San Diego Trademark Attorney® Blog

Texas A&M Challenges Denver Broncos Over "12th Man" Trademark

January 9, 2012,

football.jpgSan Diego - The Denver Broncos' elation over beating the Pittsburgh Steelers in Sunday night's wildcard playoff game may be short lived. Soon after the event aired on national television, trademark attorneys for Texas A&M University threw up a flag alleging trademark infringement.

During Sunday night's broadcast, a man parachuted into the stadium with a banner that read "12th Man," which flew throughout the rest of the game. Football rules allow for a maximum of 11 players per team on the field at any given time. The "12th Man" phrase is used to indicate the important role played by the fans and was used to rally the crowd.

However, it appears that the "12th Man" phrase is known to be synonymous with the Texas A&M football team and in fact, has been trademarked by the university. Texas A&M Vice President for marketing and communications, Jason Cook, explained, "We take the protection of our trademarks very seriously. They are part of our intellectual property at the institution." Cook went on to say that the university, based in College Station, will defend the trademark against any infringements.

The "12th Man" phrase garnered attention with football fans after a 1922 incident, when E. King Gill, a former player, was called from the stands and suited up in the event he was needed to take the field for the injury-ridden Aggies. Thus, the famous phrase was born, and a statue honoring Gill stands outside the Aggies' Kyle Field.

This is not the first time Texas A&M has gone after an NFL team for using its trademarked phrase. In 2006, a "12th Man" trademark infringement dispute between the university and the Seattle Seahawks was settled through an agreement that would allow the Seahawks to license the trademark from the Aggies. Any time the Seahawks use the "12th Man" phrase at its televised games, the agreement requires the team to include a statement in its broadcasts that the trademark is owned by Texas A&M.

University officials stated that the licensing agreement with the Seattle Seahawks not only clearly established that it owns the trademark, but also made it even more necessary to monitor the unlicensed usage of the phrase by other NFL teams.

In reference to the university's aggressive defense of the trademark, Cook replied, "The 12th Man is extremely loyal. The 12th Man is standing ready to serve, and it's part of our DNA at Texas A&M."

Cook said that the university is hopeful that the infringement was an oversight by the Broncos and can be remedied by educating the team on trademark laws, however, he added, a cease and desist letter could be following close behind.

Tilaknagar Industries Victorious in India Trademark Battle

January 5, 2012,

whiskey-in-glasses.jpgSan Diego - Tilaknagar Industries, Ltd, a leader in the Indian Made Foreign Liquor (IMFL) market, emerged victorious from Bombay, India High Court over a trademark dispute with UTO Nederland B.V..

UTO Nederland B.V., a Dutch exporter of liquor spirits and other alcoholic beverages, had filed a trademark infringement lawsuit against Tilaknagar over its use of the trademarks 'Mansion House' and 'Savoy Club.' On December 22, Nedarland B.V.'s motion to restrain Tilaknagar from using the trademarks was dismissed by the High Court. In the days after announcing the judgment, Tilaknagar's stock rose 2% on the BSE Sensex, Asia's premier stock exchange.

In a statement from Dr. Keshab Nandy, Chief Legal Officer for Tilaknagar Industries, he said, "We are pleased by the judgment passed by the Honorable Bombay High Court, which we believe provides fair justice and validates our stance. However, we are awaiting a copy of the judgment. We have in the past focused immense energies and investments towards the brands 'Mansion House' and 'Savoy Club' and developed them as sustainably successful products in the Indian alcoholic beverage sector. Thus going ahead we remain committed to drive growth and fortify our long standing presence in the industry on the back of a solid business model with strong brands and geographic reach."

Fiscal year sales for 2010-2011 of Tilaknagar's trademarked 'Mansion House' Brandy nearly exceeded six million cases and is expected to grow steadily in the upcoming years. As the second largest selling brandy in the world, Mansion House reportedly remains one of the fastest growing brands in the world. Founded in 1933 by Babasaheb Dahanukar, Tilaknagar was originally a leader in the Indian sugar industry. Due to governmental regulations in the commodities market, Tilaknagar made the transition to the liquor industry in 1973, and quickly became one of India's leading distilleries.

Due mainly to its core competency in the alcoholic beverages sector and its impressive efforts to establish dominance in the market, Tilaknagar Industries has successfully established its distinct identity in the liquor industry. With an uncompromised commitment to providing quality products with a high value for the money, Tilaknagar's brand portfolio consists of unique and diverse brands that are widely enjoyed by consumers worldwide.

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.

Hard Rock Café Chain Sued for Trademark Infringement

November 28, 2011,

hard_rock_cafe.jpgSan Diego - The internationally-known Hard Rock Café chain is being sued for trademark infringement in Las Vegas by England's Cavern Club, known as the birthplace of the Beatles.

The complaint, filed in U.S. District Court, is accusing Florida-based Hard Rock Café International of trademark infringement because it has recently opened a small events room called "The Cavern Club" in one of its Las Vegas locations. In its lawsuit, the Cavern Club of Liverpool, England claims that it is a legendary nightclub, which opened in 1957, and was made famous after the Beatles gave hundreds of performances there. The lawsuit also claims that the Cavern Club was known for hosting other famous acts like the Rolling Stones, the Yardbirds, Elton John, the Kinks, and The Who.

Apparently, the Cavern Club and Hard Rock Café International, which owns restaurants, hotels, and casinos all over the world, have disagreed in the past regarding Hard Rock's use of the Cavern Club trademark. The Cavern Club owns trademark rights to that name in the United Kingdom, Australia, Hong Kong, Canada, Brazil, and the twenty-five European Community nations, while Hard Rock owns the U.S. trademark for the Cavern Club name.

The Cavern Club's recent trademark infringement lawsuit is in response to the September 29th court decision that will allow Hard Rock to uphold its U.S. rights to the trademark. That decision was made by the U.S. Trademark Trial and Appeal Board, which dismissed the Cavern Club's 2005 opposition to the Hard Rock's trademark registration.

In addition to alleging trademark infringement, last week's lawsuit is also accusing the Hard Rock of violating Nevada's business practices and alleges common law unfair competition. Lawyers for the Cavern Club called the Trademark Trial and Appeal Board's September 29th ruling "erroneous" and say that the Hard Rock's use of the trademark "is likely to cause and has caused confusion, mistake or deception" as to whether the Hard Rock venues are associated to Liverpool's Cavern Club.

While the Cavern Club can claim that its trademark is famous and thus that it gained some rights in the U.S., it appears that the Cavern Club may regret not protecting its trademark in the U.S. long ago. Owned by Florida's Seminole Indian tribe, Hard Rock Café International has two cafes in Las Vegas. However it does not own the Hard Rock Hotel and Casino in Las Vegas. It remains tangled up in a separate trademark litigation with the hotel/casino.

South By Southwest Music Festival Sues Austin Area Promoter For Trademark Infringement

November 22, 2011,

concert.jpgSan Diego - Each year Austin, Texas is home to one of the country's most popular music festivals, South By Southwest (SXSW). The festival takes place in downtown Austin and is concentrated in the Convention Center. Each year, the festival features hundreds of musical acts and has grown to include a film festival and interactive conference. To advertise and promote the festival, SXSW has obtained trademark registration for several logos and other trademarks.

SXSW recently filed an action in federal district court in the Western District of Texas alleging that concert promoter Joseph Gingerella doing business as Black Ice Booking infringed trademarks owned by SXSW. SXSW claims that Gingerella had booked and promoted concerts directly coinciding with the South By Southwest Festival. SXSW also claims that Gingerella has held "battle of the bands" type competitions to compete for a booking in Austin during the festival. SXSW claims that naming these competitions, "Road to South By" and advertising that the winner will play a show "sponsored, sanctioned, and produced" by SXSW constitutes trademark infringement.

Simply booking a concert during the musical festival at an Austin area venue would not constitute trademark infringement. However, advertising that the event was indeed sponsored, sanctioned by, or produced by the festival in an attempt to piggyback on the festival's reputation could amount to trademark infringement. SXSW is seeking actual damages, treble damages, and an injunction prohibiting Gingerella from continued infringement of the SXSW trademark. SXSW also seeks $2 million in statutory damages and attorney's fees.

Gingerella issued a statement denying the trademark infringement and claiming that while he has put on concerts during the music festival at Austin area clubs, he did not advertise that the concerts were sponsored by SXSW. Gingerella also claimed that his events were free and that he does not profit from his concerts scheduled during SXSW.

Kellogg's Ends Toucan Sam Trademark Dispute with Charitable Donation

November 16, 2011,

toucan.jpgSan Diego - Kellogg Co. of Battle Creek, Michigan has decided to drop its trademark infringement claims against the Maya Archaeology Initiative (MAI), a Northern California-based non-profit organization. Kellogg and the MAI issued a joint statement saying that in addition to dropping the lawsuit, Kellogg will be making a $100,000 contribution to help launch one of MAI's priority projects.

In its lawsuit, filed earlier this year, Kellogg claimed that the toucan in MAI's logo was a trademark infringement with its own Toucan Sam trademark used to market its famous Froot Loops breakfast cereal. Kellogg Co., founded in 1906, is the world's leading breakfast cereal manufacturer and marketer and is also a leading producer of other breakfast items and snack foods. The Maya Archaeology Initiative is a non-profit group that provides educational and training opportunities in Mayan history and culture to Guatemalan young people in order to protect and improve Northern Guatemala.

Attorneys for Kellogg had originally asked the non-profit to cease and desist using the Toucan logo as its symbol. The Kellogg Toucan Sam is a cartoon-like, bright blue bird with a colorful, striped beak meant to imitate the colors in its Froot Loops cereal. The MAI toucan is a more realistic version endemic to Central America and is black with a yellow beak. After months of discussions, Kellogg decided to drop the case after determining that a likelihood of confusion was not likely.

After Kellogg disclosed its contribution to the charitable organization, MAI president Dr. Francisco Estrada-Belli said, "Kellogg's important contribution to the Maya Archaeology Initiative will help us achieve our goal of building a Maya Cultural Center in Peten (Guatemala), the cradle of Maya history, so children, families and visitors can learn about the Maya and their rich heritage. We are grateful to Kellogg for joining us in these efforts."

In addition to making the generous contribution, Kellogg will also be featuring major Mayan accomplishments and a link to the MAI website next year on its Froot Loops cereal boxes.

Universities Seek Trademark Protection As .XXX Top Level Domain Launched

November 10, 2011,

domain-name-http- www.jpgSan Diego, CA - Recently, the sponsored top-level domain .xxx was launched to cater to adult entertainment websites. The domain will give pornographic and other websites the option to adopt a domain name other than .com. As the domain becomes available for registration to closed groups, universities have been purchasing domain names with the .xxx extension to protect university trademarks.

The .xxx domain began a "sunrise phase" on September 7, 2011, allowing trademark owners to purchase domain names containing their trademarks or combinations thereof. As of November 8, the domain began its "land rush" phase, in which registration is available to selected parties.

Universities have taken advantage of the opportunity to purchase their own domain names with the .xxx extension for only a few hundred dollars. Washington University in St. Louis purchased washu.xxx, Washingtonuniversity.xxx and wustl.xxx. The University of Missouri-Columbia registered Missouri.xxx and missouritigers.xxx. Spokespersons for the universities stated that the domains were registered to prevent internet users from encountering university trademarks at these .xxx sites. Though the universities could potentially file a claim for trademark infringement if their trademarks are adopted as domain names and infringed, the universities elected to act preemptively to prevent an association between the schools and adult content.

Many universities have also purchased domain names similar to their official website that end in .com or .net. In most cases, the universities use the alternate domain names to redirect users to its official site. However, Washington University's trademark manager stated that in this case the move was purely defense. The .xxx sites will not redirect users.

While many in the adult entertainment business plan to take advantage of the extension, some claim that the domain may allow internet services providers to block x-rated material with greater ease. The .xxx domain name will not be mandatory for pornographic and adult entertainment sites who may still operate under the .com domain.

Is the Apple App Store a Generic Trademark?

November 4, 2011,

iphone-apps.jpgSan Diego, CA - "App Store" may be synonymous with Apple's electronic storefront for handy software applications but the term could be too descriptive to merit trademark protection.

In an effort to protect the "App Store" trademark, Apple once again finds itself embroiled in a legal battle, this time against both Amazon and Microsoft. Amazon recently opened the "Amazon Appstore" for the Android operating system, Google's mobile operating system. While Microsoft's application storefront goes by the dissimilar "Windows Marketplace for Mobile," they have chosen to enter the battle nonetheless, perhaps to get back at Apple for attacking the Windows trademark throughout the years as being too descriptive itself. However, Intel has chosen to avoid entering the fray and instead named its application storefront "Intel AppUp."

A trademark must identify and distinguish a company's product or service from those sold by others. A term is merely descriptive or generic when it merely employs the common name of a product or service or describes it rather than designates the source of goods. Perhaps the true issue is that Apple itself created such a popular term in "app store" that the general public forgot who was the first to coin the term. No one can argue that Apple was the first to coin the term "App Store," with its original electronic storefront that opened in 2008, compared to the Amazon "Appstore" which did not open until 2011.

As part of this dispute Apple has alleged that the "App" in App store is short for Apple rather than Application. We're not sure most consumers would see it that way. At first blush, we think that Apple will be hard-pressed to get this trademark registered - but stay tuned.

Time Warner Cable Obtains Trademark For "Social One"

October 21, 2011,

socialnetworks.jpgSan Diego, CA - Time Warner Cable has recently obtained exclusive trademark rights for the term "Social One," its possible future platform that may offer subscribers a way to access Facebook, Twitter, and other social networks through TV.

The nation's second largest cable provider is attempting to steer consumers back in front of their television sets by offering a "single interface" for accessing social media accounts through TV and the Web.  Time Warner has also set its sights on using the Social One brand for "computer software for use on mobile and Web platforms which aggregates content from other sources, such as social media feeds and allows users to manipulate content from other sources," according to statements in its trademark application submitted in May.

The trademark application offers a more complete description of what the "Social One" trademark will be covering by stating that it will be, "providing access via a global computer network and television to email, instant messaging and social media accounts within a single user interface; providing online access to aggregated user content, namely, text audio, and video; providing Internet access; providing email and instant messaging services; [and] transmission of news."

With Americans spending more and more time each month connecting with friends on Facebook and other social media platforms, Verizon, Comcast, and other cable TV providers are starting to incorporate the social networks into their digital cable offerings.  Verizon's Widget Bazaar allows its FiOS TV subscribers to access their Facebook, Twitter, and YouTube accounts while Comcast has promised that the next version of its interactive program guide would allow subscribers to recommend content to Facebook friends.

Facebook is also on the same playing field, with its attempts to integrate its platform with a wide variety of media services.  Last week, the social networking giant announced that it would allow TiVo and Netflix subscribers to share information with friends about what content they are watching on TV.

Anheuser-Busch Files Trademark for San Diego Area Code 619

October 14, 2011,

beer-bottle-pouring.jpgSan Diego, CA - Earlier this year, Anheuser-Busch InBev acquired Chicago-based Goose Island Beer Company for $38.8 million and pledged an additional $1.3 million to expand Goose Island's brewing capacity to meet its rapidly growing demand. According to the Chicago Tribune, the deal included trademarks on "312 Urban Wheat" and "312 Urban Wheat Ale Goose Island Chicago," one of Goose Island's most popular beers. Anheuser-Busch recently applied for 15 additional trademarks for the area codes of major cities throughout the U.S. including San Diego's 619 and San Francisco's (415).

Anheuser-Busch's move to acquire these trademarks suggests that the company may plan to release similar pseudo-craft beers in the implicated cities to replicate the success found with Goose Island's 312 Urban Wheat. The idea being that having an area code associated with a beer provides a seemingly local and authentic feel to the beer that attracts thirsty consumers. The other prevailing theory is that Anheuser-Busch simply wishes to protect itself from the threat of its competition mimicking the success of 312 by releasing beers stamped with the area code of their respective cities.

The Applications were filed on an Intent to Use basis meaning they are not yet in use in commerce. If the USPTO issues a Notice of Allowance after the trademark is published for Opposition in the Official Gazette, Anheuser Busch will be able to request extensions for up to three years if the trademark is not yet in use. The trademark only protects the area code from being used in association with products or services that are likely to be confused with Anheuser Busch's use for beer. San Diego residents should be on the lookout for an Anheuser-Busch product disguised as a 619 craft beer.

Nonprofit group not feeling so charitable over sharing trademarks

October 7, 2011,

ribbon_pink.jpgSan Diego, CA - It's no secret that nonprofit organizations compete for donation dollars. So when Americans tighten their belts during economic downturns and give less to charity, the competition between these nonprofits can be fierce.

Susan G. Komen for the Cure spends close to one million of its donated dollars every year to protect its trademarks by policing the Internet for other charities and events that use any variation of "for the cure" in its name. Thus far, the charity which has managed to raise millions of dollars for breast cancer research, has filed trademark oppositions against many small organizations that lack the funds for legal representation. Some of these nonprofits include Surfing for a Cure and Cupcakes for a Cure, both of which raise money for cancer research.

Many have criticized the money and efforts Komen has spent opposing other charities, often times calling the group a bully. Those who have denounced the charity, think that its aggressiveness will not only damage smaller charities, but will be counterproductive to its own.

Despite the criticism, attorneys for Komen claim that they have a legal duty to the charity to protect its more than 200 trademarks, however they try to be plausible when dealing with the small nonprofits. A Komen attorney stated, "It's never our goal to shut down a nonprofit and we try very hard to be reasonable, but it's still our obligation to make sure that our trademarks are used appropriately so there's no confusion in the marketplace over where people's money is going."

When "for the cure" is used by other charities, a likelihood of confusion exists along with the threat of a donor thinking he is giving money to one charity, but in reality giving to another. Another problem that exists is when fraudulent charities pop up on the Internet, soliciting donations from people.

Although we understand the efforts to police the trademark, we wonder if $1,000,000 a year and 200 trademarks are really necessary.