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 judgment on your breach of contract claim, according to a federal trial court in Florida. (PayCargo, LLC v. CargoSprint LLC, Case No. 1:19-CV-22995-LOUIS (S.D. Fla. June 17, 2021 (2021 WL 2481867))… Continue Reading
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
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
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
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 registered for “Hats; Jackets; Pants; Shirts; Shoes,” and i.am.symbolic appealed the decision to the TTAB.… Continue Reading
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 to the suit, the contract was only intended to cover bottled iced-coffee beverages called Grumpuccinos.
Though judgment was entered, the tale is not over yet. Grumpy Cat Limited recently asked the court to award it over $320,000 in costs and attorneys’ fees from the defendants, … Continue Reading
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 provides some useful lessons to anyone who licenses a trademark. (Thousand Island Park Corp. v. Welser, 5:18-CV-117 (N.D.N.Y. June 14, 2018 (2018 WL 29803231)).)… Continue Reading
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 business:… Continue Reading
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. v. Grenade Beverage LLC, Civ. No. 8:15-cv-02063 (C.D. Cal. Jan. 24, 2018) (jury verdict)).… Continue Reading
Currently, in the midst of a jury trial in U.S. federal court, the San Diego Comic Convention (SDCC) has had a bumpy ride in its trademark suit in the Southern District of California against Dan Farr Productions and its co-founders for their use of the name Salt Lake Comic Con. On October 26, the Ninth Circuit Court of Appeals reversed the district court’s “gag order,” which essentially prevented the defendants from posting about the case on any social media platform.… Continue Reading
In April 2017, based on some key social media evidence, the Central District Court of California decided UL LLC v. Space Chariot Inc., 2017 WL 1423706 (C.D. Cal. Apr. 20, 2017). The court held on summary judgment that Space Chariot had infringed and counterfeited UL’s trademark, and awarded one million dollars in statutory damages. UL, a holder of various safety certification marks, complained that Space Chariot, a manufacturer of “hoverboard” toys, had violated UL’s trademark rights by displaying UL’s safety certification marks on its hoverboards without permission. The court summarized the issues: “The gravamen of UL’s complaint is that … Continue Reading
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 a prominent evidentiary role, the court permitted the models’ claim to proceed, and denied the defendants’ motion to dismiss. (Lancaster v. The Bottle Club, LLC, Civ. No. 8:19-cv-634-T-33JSS (M.D. Fla. July 14, 2017) (2017 WL 3008434).… Continue Reading
In today’s world, intellectual property owners are well aware that social media users frequently post infringing content. Companies and brand owners have developed various strategies for enforcing their intellectual property rights on social media, utilizing methods such as demand letters and takedown requests. Often there are so many infringing uses that brand owners must be strategic with their enforcement efforts by developing guidelines for the types of infringement that are worth confronting. For example, an infringer that is impersonating a company or selling counterfeit goods on social media may be worth the time and cost of enforcement measures, while a … Continue Reading
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
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 registering account names that incorporate trademarks.
Pursuing the usual enforcement techniques can be difficult on social media, particularly when the identity of the infringer is unclear or unknown. The good news for brand owners is that most social media websites prohibit the infringement of another’s … Continue Reading
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 or re-tweet anything from the official Olympic account, or use official hashtags including #Rio2016 or #Team.… Continue Reading
With the Rio Olympics well underway, Canadian brands need to be aware of the “do’s and don’ts” of advertising and social media content involving the Olympics and Olympic athletes.
The International Olympic Committee (IOC) and the Canadian Olympic Committee (COC) have long been aggressive in enforcing illicit use of the term “Olympics”, the five rings and the other associated Olympic Marks. See “Olympic and Paralympic Marks Schedule 1. Olympic and Paralympic Marks Act. S.C. 2007, c. 25. To this end, Canada, along with all other countries who have ever hosted an Olympic game, have created special legislation prohibiting … Continue Reading
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 generally free to post and tweet about the games and athletes during the roughly month-long blackout period which began last week and ends on August 24. However, non-sponsor brand owners in the United States could face potential legal action if they are not careful.… Continue Reading
#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 have become a popular way for Internet users to indicate that a post or other piece of content is related to a specific thing – a specific issue, a topic in the news, an event, or even a company or product.… Continue Reading
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
Diving head first into the deep end, the Trademark Trial and Appeal Board (“TTAB”), recently decided whether a chef’s application to register “JAWS” for an online cooking channel should sink or swim. In re Mr. Recipe, LLC.
The precedential decision is useful for anyone wishing to learn more about the role that a famous trademark, such as the JAWS® film name in this case, can play in the “likelihood of confusion” analysis at the US Patent and Trademark Office.… Continue Reading
Engaging with customers online is quickly becoming the norm as consumers increasingly use social media to ask questions, seek customer service, and participate in dialogue with a business or their brand. The use of social media to deliver customer service allows businesses to be at the forefront of our digital age. That said, businesses could be doing more to protect their brands, credibility and accountability over their various social media accounts. Namely, in building or maintaining trust with customers over online communications, businesses must find ways to help customers know they are engaging with the business’ legitimate social media account.… Continue Reading
Social media channels represent an exciting medium to reach out to the public and potential collaborators. Social media can also play an important role in helping generate positive buzz for organizations seeking to develop a market for their products or services. For example, many of today’s companies gauge the depth of market interest in their products not through traditional advertising or focus groups, but rather through leveraging social media, such as communication platforms (e.g., Twitter, WeChat, Facebook), and content sharing platforms (e.g., YouTube, Vine), and crowd-funding platforms (e.g., Kickstarter, Indiegogo, GoFundMe). Some companies are also using open, collaborative approaches to … Continue Reading
Our Top Five stories from 2015 also provide some “lessons learned” or considerations for companies who are considering using social media in 2016:
- Know what data you are collecting and where it is being transferred. Like more than 4,000 companies, Facebook had been sending member data of European citizens to the United States pursuant to the EU/US Safe Harbor. In October 2015, the European Court of Justice struck down the EU/US Safe Harbor, leaving companies scrambling to find an alternative way to send personal data from the European Union to the United States. Although the successor to the EU/US Safe