• Find the point of novelty
  • Broadcast your rights
  • Turn ideas into assets
  • Drive forward
  • Draw the future

Tag: Trademark

Trademark Registration in Clothing Should be Pursued Cautiously

I have written previously clothing trademarkabout the difficulties – or at least the special issues – involved in registering a trademark in connection with clothing.  There is an unfortunate disconnect between the way the Trademark Office views trademarks on clothing and the way the public sees them.  Until that disconnect is corrected, however, an applicant seeking to register a trademark for clothing needs to follow the advice of its attorney and file the application very carefully.  A good, candid discussion should always take place between any attorney and client that is planning on submitting a clothing trademark application.

The recently-released case In re Lululemon Athletica Canada Inc. (here, and reviewed nicely at TTABlog) illustrates the risks involved in a trademark application filed in connection with clothing.  The Trademark Office follows a very conservative policy that often conflicts with real-world understandings.  Lululemon filed a trademark application for a variation of their mark emblazoned across the entire front of an article of outerwear.  The Trademark Office refused registration of the mark as merely ornamental, a common rejection when the goods are clothing.  The applicant argued that other companies are now using “large marks” to indicate the source of the clothing, a practice that has changed and broadened from the common left breast logo that many companies have used.  Because of this new practice, it argued, consumers recognize and understand large marks to function as source-indicators, and thus, allow the designs to function as registrable trademarks.  The Trademark Office rejected that argument, however, stating that “the design is not inherently distinctive and instead is merely ornamental.”

The Trademark Trial and Appeal Board acknowledged that “[i]t may have once been the practice in the clothing industry to limit logos to small sizes in discrete areas rather than to have them ’emblazoned’ across a garment. …  [but it] is no longer the industry practice, or at least no longer the only one.”  This, of course, is not a recognition or agreement that a “large mark” is a trademark, but is instead merely a statement that even a common rule generally viewing left breast logos as trademarks may no longer be reliable.  Not helpful for those new clothing companies using their logos in this fashion.  Nor was it helpful for Lululemon: the Board agreed with the Examiner on the ornamentality, stating that the design looked more like piping – or decoration – than a trademark.

The lesson is here is to be extremely conservative when planning a trademark application on clothing.  More exotic uses of a mark must be considered risky, and clients should carefully weigh that risk.

Re-Branding Lance Armstrong

Lance Armstrong’s confession is huge news today, mostly for the fact that it is being made and not so much for what it may or may not contain. Many are calling this an effort to re-brand Lance so that he can save his charity and continue to compete in athletic events. This blog sometimes takes on an endurance-sports bent, and it seems appropriate to discuss the effectiveness of re-branding.

Though most came to know Lance’s charity as Livestrong through the words cut into its distinctive yellow bracelets, the charity was officially known as the Lance Armstrong Foundation.  Regardless, Livestrong was proudly and widely emblazoned on a huge range of products, the proceeds of which went to the foundation.  In October of last year, the charity changed its name to the Livestrong Foundation to distance itself from its founder and to cast “a presence that was bigger than” Lance.  The Lance Armstrong Foundation has filed for 57 federal trademark registrations and owns 53 live marks.  None of them have been transferred to Livestrong yet, even those that were filed as recently as March of last year.

In November, the UK publication The Guardian attacked the re-brand of the charity as incomplete until Lance confessed to doping. “[I]n refusing to contest the doping allegations against him, Armstrong has left the brand promise undefended and lacking authenticity.” I believe, however, that in the public’s eye, the man and the charity stand separately and have done so for quite some time. Although his involvement with his charity is certainly considerable and very personal, the public doesn’t transfer Lance’s successes and failures to the charity. We saw a large rise in donations to the charity following the release of the 200-page USADA report condemning Lance’s career. His sponsors who dropped him as an athlete have continued to support the charity. I still see lots of people wearing yellow bracelets even though they don’t personally support Lance. And if see someone envisions a tarnished figurehead when they see the Livestrong name, they should think more of a person who, following cancer, roared back to compete at the very highest levels of some of the toughest endurance sports among the toughest competitors in the world. While cheating certainly helped his bike racing, it didn’t give him the mental toughness, it didn’t fuel his enormous endurance engine, and it didn’t beat his cancer. Those are all characteristics of the Lance brand that the charity need not move away from.

Done to Death?

Countless writers and bloggers, Yours Truly included, have written about a trademark owner’s obligation to protect its mark.  The subject matter is cliched, but not for lack of importance.  Patrolling and monitoring for improper use, and ensuring proper self-use and proper authorized use, are fundamentals to trademark ownership, and it is never a bad idea to revisit the fundamentals every once in a while.

What I like most about this article written by Anderson Duff of Wolf Greenfield is its careful reminder that not all trademark disputes are acts of bullying.  He did a wonderful explanation of the role of humility and civility.

The Practice of Removing Sponsored Logos in Triathlon Advertisements

Several months ago, Slowtwitch.com erupted over an altered image that had been discovered of pro triathlete Hillary Biscay. The original image showed Biscay running during an Ironman-branded race with a jersey that bears a small blue decal. That decal is the logo for REV3, which is the organizer of a series of races that compete with Ironman races. Presumably, at the time, REV3 was one of her sponsors.

The altered image appeared in a promotional piece for the World Triathlon Corporation, owner of the Ironman trademarks. In the altered image, the REV3 logo had been removed. Underneath that image ran information about Biscay and Ironman Louisville.

We frequently see the removal or blurring of logos on TV. This is often done to make it clear that the logo’s company doesn’t appear to be a sponsor of the show or the television station. But the removal of an athlete’s sponsor’s logo is something different: the athlete has a contract with that sponsor to promote the company along with his or her personality and results. The removal of the logo interferes with that the contract and the ability of the company to promote itself.

Is this something that trademark law affects? Perhaps. The doctrine of reverse passing off makes liable one who removes a trademark and attempts to pass it off as their own. The infringing party need not replace the mark with its own; instead, merely leaving the product unbranded is enough for liability. The underlying harm is from the infringing party thwarting the efforts of the trademark owner to identify the source of the product, to link the product with existing goodwill surrounding the mark, and to advertise itself. The de-branding of athletes triggers similar harms. Here, REV3’s link to a successful athlete is eliminated and the promotional value of its logo on Biscay’s jersey is prevented, and passing off seems to be a viable claim, even though WTC isn’t passing the Hillary Biscay “product” off as one of its own. Moreover, it is possible that a general claim for unfair competition may lie as well.

Despite the above, it is doubtful that the practice will be discontinued. It is fairly widespread through cycling and triathlon, and to this point, companies seem to be accepting of the fact that their marks will occasionally be removed from their products or sponsored athletes.