Trademark Super Powers

Futbol Club Barcelona, known to its fans as Barça, is a worldwide powerhouse of professional soccer. It holds the record for the most FIFA wins.large

In May 2015 Barça filed an application to register a trademark made up of alternating blue and red vertical stripes. The application covered a bunch of stuff including shirts, jerseys, soccer shorts, footwear, and hats.

adidas, The Brand With Three Stripes®, was having none of that.

Do you think Barça’s red/blue striped logo is “confusingly similar” to the adidas logo? In other words, if you saw a running shoe with the blue/red stripe design would you think they were made by adidas?

Do any of these facts change your mind?

  • adidas has more than two dozen U.S. trademark registrations for their three-stripe logo.
  • adidas has been using its three-stripe logo on shoes since 1952 and on other athletic apparel since the 1960s.
  • adidas “sponsors internationally famous soccer players, including David Beckham, Lionel Messi, Paul Pogba, Mesut Ozil and Gareth Bale.” *
  • adidas uses the three-strip logo on soccer cleats, soccer balls, soccer jerseys, shin guards, and goalie gloves.
  • The Trademark Office examiner didn’t find Barça’s trademark confusingly similar to the ones owned by adidas.

Q:  What do you think happened after adidas opposed the application? Take some time to think about it. I’ll wait.

Lalalalalalalala.

A: Several months after adidas filed the opposition, Barça voluntarily agreed to withdraw its application.

Was that what you thought would happen?

 

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* Notice of Opposition, page 7.

Swastikas and Red Stars

In Hungary, the government is considering a bill to ban trademarks that include symbols of totalitarian regimes, including swastikas and red stars.* This wouldn’t just prevent registration of the trademark like we saw in Mr. Tam’s case. This would make using totalitarian symbols as a trademark a criminal offense. People could actually go to jail.

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If passed, the new law would have the biggest impact on Heineken, but it could also affect other companies, like San Pellegrino.

Whatever your political bent, I think you should have a problem with this bill. Both Heineken and San Pellegrino were using a red star before it was co-opted as a symbol of Russian communism. Heineken started using the five-pointed red star in 1916 and San Pellegrino first used it in 1910. It didn’t become a symbol of communism until at least 1917.

Let’s see what you think by looking at two items I found in the U.S. Trademark Office database that contain a swastika.

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This trademark is registered:

 

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This trademark is a portion of a pending application.

 

 

Does it matter to you that in the first case, the swastika is being used as a Buddhist symbol and the second one appears to be used as a neo-nazi symbol? Would you buy products or services offered by either of these companies?

If you think that neither should be allowed, do you think people who use them should go to jail or just be prevented from getting the extra protection of registration?

It’s important to think about free speech, even when talking about trademarks.

 

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*This played out before, in 2013. The Hungarian Constitutional Court threw out an earlier law that criminalized totalitarian symbols. That law was revised to include a requirement that the person using the symbol have the intent to undermine social peace.

Examiners are People, Too

Last weekend, I rode my bike to DUMBO[1] to confirm that I’m nowhere near cool enough to spend time there. My suspicions were borne out before I even entered the local exceptionally cool coffee house (ECCHO), so I left immediately to write a trademark blog instead. When facing your lack of cool, go back to what you do well.

I knew I wasn’t cool enough because outside the ECCHO was this:

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From the relative safety of my LES[2] office I checked to see whether Dog Parker, Inc., the maker of the DOG PARKER, had been able to register their trademark, which seemed to me to be “merely descriptive,” which would prevent its being registered.

I was surprised that they had succeeded in registering DOG PARKER for “Pet boarding services” with only a disclaimer for the word “dog”.[3] The examiner didn’t even question whether DOG PARKER was “merely descriptive” for selling use of this temporary dog house.

So, was I wrong? Was the Trademark Office wrong?

No one was wrong. It’s just that Trademark Office examiners are individuals and trademark law is a bit of an art, rather than a science. A different examiner may have reached a different conclusion and issued an office action refusing to register the trademark.

That said, if I were Dog Parker, Inc., I would definitely come up with a good generic phrase for this sort of thing so that DOG PARKER doesn’t become the generic phrase and they lose their rights.

 

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[1] DUMBO is an acronym for Down Under Manhattan Bridge Overpass. No neighborhood is cool until it has an acronym.

[2] Lower East Side. I’m almost cool enough to have an office on the LES. Close enough to fake it, anyway.

[3] A disclaimer means that the owner of the trademark doesn’t claim any exclusive rights to a particular word, in this case “dog.”