Tag archives: Trademark

Making a splash in new markets is not always risk free

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in Trademark
Frogbikes Limited (“Frogbikes”), a British bicycle manufacturer, has filed suit in U.S. District Court for the Northern District of Georgia claiming that defendant Frog Scooters, Inc. (“Frog Scooters”) has infringed Frogbikes’ “FROG” trademarks (the “FROG Marks”) with the use of the term “frog” and its stylized “Frog” mark in connection with its scooter rental business. … Continue reading

Think using common terms on social media posts is no sweat? Think again.

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in Trademark
On November 11, 2021, fitness-tech company iFIT, Inc. (“iFIT”) filed a complaint in the U.S. District  Court for the district of Utah, claiming that lingerie and beauty retailer Victoria’s Secret infringed upon its registered SWEAT trademarks by prominently using “SWEAT” in its social media promotions for its fitness apparel and services.… Continue reading

Positively negative: Lack of social media helps defeat default judgment motion

Photo of Susan Ross (US)By Susan Ross (US) on Posted in Trademark
On November 2, 2021, a federal trial court in New York issued an opinion that combined breakfast restaurants, social media, trademarks, and COVID.  The judge ultimately ruled against the registered trademark owner’s request for a default judgment, in part based upon the defendant’s lack of social media advertising.  BYC, Inc. v. Broken Yolk, civ. no. … Continue reading

Social Media and Jurisdiction under FRCP 4(k)(2

Photo of Susan Ross (US)By Susan Ross (US) on Posted in Litigation
On August 27, 2021, the federal Ninth Circuit Court of Appeals ruled in an international trademark dispute where U.S. jurisdiction hinged on Federal Rule of Civil Procedure 4(k)(2).  Reversing the trial court, the Ninth Circuit ruled that personal jurisdiction existed over an Australian skin care product company, based in part on that company’s actions on … Continue reading

Social media and Satan: pitfalls of losing control of brand social media accounts

Photo of Susan Ross (US)By Susan Ross (US) on Posted in Trademark
Be careful whom you entrust with administrator access to your brand’s social media accounts. If an administrator does use your brand’s social media accounts beyond their permitted use, you should formally revoke their authority to access the accounts to allow potential legal action based on their unauthorized use after the revocation.… Continue reading

Social media – trademarks, accounts, and names

Photo of Susan Ross (US)By Susan Ross (US) on Posted in Trademark
On March 4, 2021, a federal trial court in New York issued a preliminary injunction that halted a bridal gown designer and social media influencer from using her social media accounts without her former employer’s permission. JLM Couture, Inc. v. Gutman, No. 20 CV 10575-LTS-SLC (S.D.N.Y. March 4, 2021) (2021 WL 827749).… Continue reading

#trademarked?

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in Trademark
In August of 2018, the U.S. Trademark Trial and Appeal Board (TTAB), which decides cases certain trademark cases, refused rapper will.i.am’s attempt to register a hashtag as a trademark. Specifically, i.am.symbolic,llc (will.i.am’s company), attempted to register #WILLPOWER for a variety of apparel goods. The Trademark Examining Attorney refused his application because WILLPOWER WEAR  was already … Continue reading

Grumpy Cat back in court

Photo of Stephanie Schmidt (US)By Stephanie Schmidt (US) on Posted in Copyright, Litigation, Trademark
We previously reported on Grumpy Cat Limited’s big win in a copyright and trademark suit. As a recap, Grumpy Cat—the social-media-famous grimacing feline, or rather the holding company owned by her “parents”—filed a lawsuit after the defendants went beyond the scope of a licensing agreement to market a variety of Grumpy Cat-themed coffee products. According … Continue reading

Trademarks, social media and lessons learned

Photo of Susan Ross (US)By Susan Ross (US) on Posted in Trademark
On June 14, 2018, a federal trial court in New York issued a decision relating to a restaurant owner’s claim that the restaurant manager was using the owner’s trademarks on social media in violation of the federal trademark law known as the Lanham Act. The trial court denied the owner’s claim, in a ruling that … Continue reading

Personal Brands, Social Media, and the Lanham Act

Photo of Susan Ross (US)By Susan Ross (US) on Posted in Trademark
On July 14, 2017, a federal trial court ruled on an interesting issue: could models and actresses, whose popularity on social media was a strong factor in determining their earning capacities, maintain a lawsuit under the Lanham Act against a “swingers club” that used their photos without consent?  In a case where social media played … Continue reading

That’s My Mark! Enforcing Trademark Rights on Social Media

Photo of Andrea Shannon (US)By Andrea Shannon (US) on Posted in Trademark
It is no doubt surprising and frustrating for brand owners when they find that someone has appropriated their trademarks on social media. A few of the common scenarios include: small competitors modifying logos and passing them off as their own; unauthorized distributors using logos and trademarks on their social media advertising; and social media users … Continue reading

Germany: Can you be sued for tweeting #Rio2016?

Photo of Sven Jacobs (DE)By Sven Jacobs (DE) on Posted in Trademark
The answer depends on who you are: For consumers there is little risk involved. Companies, however, did receive letters by the German Olympic Committee in recent weeks warning them about stealing intellectual property, similar to the letters send by the United States Olympic Committee. In particular Twitter accounts should not reference any Olympic results, share … Continue reading

Social media risks during the Rio Games

Photo of Saul Perloff (US)By Saul Perloff (US) on Posted in Trademark
In just four days, the world’s attention will turn to Rio de Janeiro and the Games of the XXXI Olympiad.  At the same time, sports enthusiasts will turn to social media to express their support for the Games, for their countries’ teams and for their favorite athletes. Individuals, news outlets, and official Olympic sponsors are … Continue reading

Can You Trademark a Hashtag?

Photo of Mayura Noordyke (US)By Mayura Noordyke (US) on Posted in Trademark
#Yes! In the United States, a hashtag can be trademarked if it serves a source-identifying function for the trademark owner’s goods or services. Hashtags, which started on Twitter as a way for users to follow conversations on particular topics, are words or phrases that follow the pound or hash sign (“#”). Since their inception, hashtags … Continue reading
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