Topic: Trademark

Models’ photos on social media – Second Circuit rules for defendants

By Susan Ross (US) on June 6, 2023 Posted in Trademark

On May 19, 2023, the Court of Appeals for the Second Circuit ruled in favor of defendants in a trademark matter involving unauthorized use of models’ photographs. Souza v Exotic Island Enterprises, Inc., Dkt. No. 21-2149-cv (2d Cir. May 19, 2023) (2023 WL 3556053). Background According to the opinion, a “gentlemen’s club” engaged a third … Continue reading

Social media, trademark settlement, breach of contract, and “material” violations

By Susan Ross (US) on July 8, 2021 Posted in Trademark

If you entered into a trademark settlement agreement where one party agreed not to use your registered trademark and then that party proceeded to use a very similar term on social media, is that a “violation” or a “material violation” of the agreement? The answer is important because it determines whether you can get summary … Continue reading

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

By Susan Ross (US) on April 16, 2021 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

Destruction of Social Media Accounts ≠ Transfer

By Susan Ross (US) on September 24, 2019 Posted in Trademark

We have previously written about trademark cases where one party was ordered to turn over social media accounts, websites, links, etc. that included the disputed mark(s). But what happens if the defendant doesn’t turn them over but instead destroys them?… Continue reading

#trademarked?

By Stephanie Schmidt (US) on November 6, 2018 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

By Stephanie Schmidt (US) on July 25, 2018 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

The growing importance of brand optimization strategies

By Daniel Daniele (CA) on May 15, 2018 Posted in Trademark

Brand recognition and brand awareness Having a social media presence in today’s digital and fast-paced era is critical. However, having a social media presence requires a long-term strategy that includes a plan to optimize the company’s brand awareness and brand recognition. These are some of the key factors in the profitability and longevity of a … Continue reading

Grumpy Cat Almost Smiling Over Big Award

By Stephanie Schmidt (US) on March 14, 2018 Posted in Copyright, Litigation, Trademark

Grumpy Cat has a new reason to turn that frown upside-down. Though the cat is known for her sneer, she is (or rather, Grumpy Cat Limited and its/her owners are) sitting pretty on a recent jury award in California of over $700,000 for trademark and copyright infringement and breach of contract. (Grumpy Cat Ltd. … Continue reading

Personal Brands, Social Media, and the Lanham Act

By Susan Ross (US) on August 30, 2017 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

So You Can Trademark a Hashtag – But Should You?

By Mayura Noordyke (US) on November 7, 2016 Posted in Trademark

We have previously discussed whether hashtags can be registered as trademarks (yes, they can!) and their increasing prevalence on social media. In this post, we take a closer look at whether brand owners should pursue trademark protection for marks incorporating hashtags.… Continue reading

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

By Andrea Shannon (US) on September 6, 2016 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?

By Sven Jacobs (DE) on August 18, 2016 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

By Saul Perloff (US) on August 1, 2016 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?

By Mayura Noordyke (US) on July 11, 2016 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

TTAB Blocks TM Registration for Social Networking Services

By Andrea Shannon (US) on June 13, 2016 Posted in Trademark

According to the Trademark Trial and Appeal Board (“TTAB”), only social media platforms like Twitter, Facebook, and LinkedIn will be able to register a trademark for the service of providing an online community.… Continue reading