Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Curry Scores on Trademark Applications

Posted in Uncategorized

Perhaps Steph Curry should have been paying more attention to basketball rather than capitalizing on his trademark during the NBA finals. While Curry won’t get a payout from winning an NBA title, it looks like he has other business plans up his sleeve. On June 16, the day that the Warriors lost Game 6 to the Cavs (and the same game where Curry was ejected for throwing his mouthguard), Curry filed trademark applications for STEPH CURRY, STEPHEN CURRY, CHEF CURRY and CURRY.


The applications were all filed on an intent to use basis for a variety of goods including everything from knee pads to bath sandals to conducting fitness classes. Not surprisingly, “mouth guards for sports” were included in all four filings. I have no doubt that my son will be first in line for a Steph Curry branded mouth guard, if and when it hits the market.




A party with a bona fide intent to use a mark iqn commerce in connection with specific goods or services may file an application on the basis of intent to use. However, before the mark can be registered, the applicant must actually use the mark in commerce in connection with all the goods and services listed in the application. A declaration attesting to this use must be filed, as well as specimens showing use of the mark in connection with each class of goods and services. Any good or service not actually used by the applicant must be deleted from the application before the application proceeds to registration.

To be fair, Curry likely had very little involvement in timing of the actual filing of the trademark applications. Though Curry is listed as the applicant, Octagon, his agency, is also listed on the application. It comes as somewhat of a surprise that Curry is seeking registration of his own marks. Under Armour is the owner of a number of Curry-related registration and continues to seek registration of other marks related to Curry. However, it did abandon efforts to register the marks THE LEAGUE’S MOST UNGUARDABLE PLAYER, THE GAME’S NEW CREATIVE GENIUS, and FALL BACK. Perhaps it abandoned THE LEAGUE’S MOST UNGAUARDABLE PLAYER since Curry proved to be quite guardable during the NBA Finals.

More likely, Curry realized the value of owning his own intellectual property and licensing it rather than allowing third parties such as Under Armour to own his marks. This is becoming a trend among professional athletes, including one of Curry’s own teammates, Draymond Green. Draymond Green has filed an application to register of MONEY GREEN for sweaters, sweatshirts, and t-shirts.


For more on Steph Curry’s mouth guard chewing habit, click here:


Posted in Uncategorized

It is summer festival season in Middle Tennessee. Last week, we experienced the CMA Music Festival, followed by Bonnaroo. This coming weekend, the RC Cola and Moon Pie Festival takes place in Bell Buckle, Tennessee. The festival begins with a run in the early morning (to try and avoid the blistering heat). If you’re lucky, it ends with a drink of the celebrated beverage.

But what if you want to save your calories for the Moon Pies?

Then you might try a diet drink originally distributed by RC in the late 1950s: DIET RITE. Since approximately 2005,  DIET RITE PURE ZERO has been available in a number of flavors:


Since June, 2008, applications to register DIET RITE PURE ZERO and PURE ZERO have been suspended pending disposition of a consolidated opposition proceeding before the Trademark Trial and Appeal Board (“TTAB”). Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc. (collectively, “RC”) opposed registration of 17 applications for marks that include the term “zero” for use with soft drinks, sports drinks, and energy drinks filed by The Coca-Cola Company (“TCCC”), alleging that the term “zero” is generic or descriptive and thus requires a disclaimer. TCCC opposed the two applications filed by RC on the ground of likelihood of confusion.

An example of one of TCCC’s products is shown to the right:  sprite zero


Last month, the TTAB rendered its decision, finding the term “zero” not generic, but inherently descriptive. However, it also found that TCCC had satisfactorily shown acquired distinctiveness in the term “zero” when used as part of a mark for soft drinks and sports drinks. But not for energy drinks. So the TTAB gave TCCC two months to disclaim “zero” in its subject applications insofar as they pertain to energy drinks. Further, the TTAB dismissed TCCC’s likelihood of confusion claims against RC’s applications because TCCC failed to establish priority in its asserted family of ZERO marks. The appeal period is pending.

If you want to celebrate RC’s partial victory at the RC Cola and Moon Pie Festival this weekend, in
100 degree weather, you can run a

10K race, and drink a can of

0 calorie DIET RITE PURE ZERO soft drink

 side soda

“Professionally Known As” – Branding your Professional Name

Posted in Brands, Trademarks, Uncategorized

Here in Nashville, we are in the midst of the Country Music Association’s CMA Music Festival, where fans flock into our city to meet and hear their favorite artists.  Our city is inundated with music branding.  While some artists use their actual names, in the world of arts and entertainment, it is very common for an artist to adopt a stage name or to otherwise be known professionally as something other than his or her given name. The journey toward becoming “Professionally Known As”, already a complex path, is made even more complicated by the realities of today’s digital world. As I’ve traveled this road with several of my musical artists lately, I’ve seen several similarities in the process across the board.

In the music industry, the first consideration is music, but the very next consideration is image and branding. When considering a name, everyone on the artist’s team works together to identify a name that is strong for purposes of marketing the artist. We ask ourselves a list of questions:

  • Does the name create the image and branding that we want for this artist?
  • Is the name consistent with the artist’s sound?
  • Is it a name that can stand the test of time so that the artist can tour with that mark in his or her more senior years?
  • Will people want to wear that name on their t-shirt?
  • Can a graphic designer create a logo with the name that will grab fans’ attention and reflect who the artist is?
  • Could consumers be confused by the spelling of the name?
  • Will we lose fans/followers by making a name change?
  • When is the best time to make the name change?
  • Will the name be easily searchable online?
  • Will corporate sponsors want to co-brand with that name?
  • Will the name help create ancillary marketing opportunities outside the music industry?
  • If the artist plans to cross genres, will the name allow for that transition?


The most famous artist rebranding was Prince Roger Nelson.  Prince went by more than a dozen names over the course of his career, including simply “The Artist” and his infamous Love Symbol.  For more on Prince’s trademark journey, check out our prior blog post.  Prince—always unique and unmatchable—seemed to be rebranding because he felt his moniker had too much recognition (or the wrong kind of power) and wanted his music to be elevated above his name.  For most others, finding a name that will allow you to stand out in a crowd and gain more recognition drives branding.

Even if we can answer all of our branding questions to our satisfaction, we may still face several hurdles. For example, the name is only as strong as its marketability in social media. If the artist cannot acquire the domain name and all social media handles, then marketing can be very difficult. I always recommend that an artist acquire domains and handles the first time they search for them, and also acquire all misspellings and derivatives so that they can redirect fans to easily find the artist.  This is equally applicable to anyone choosing a new trademark.

Of course, even if all of the above considerations are satisfied, the most significant legal hurdle can be trademark registration. I advise my clients to contact me as soon as they think they have found a name that they like so that we can do a trademark clearance search for the key services and products you will want to sell.  This search is a valuable tool to identify major barriers early in the process and save the artist from having to later rebrand and lose momentum or fans. When we hit a barrier, it’s back to the drawing board to find a new name, which is why it is better to do the search early in the process. As an added layer of complication, even if the trademark appears to be available in the United States, it may not be available internationally. Since most artists plan international careers (and since all businesses are becoming increasingly global), it is therefore critical to consider availability of the trademark in key countries as well – touring countries as well as any other countries where you anticipate you will have fans/customers, distributors, or manufacturers for your merchandise.

The journey to becoming “Professionally Known As” is not an easy one, but if it is handled correctly, it can create a powerful and valuable brand for a successful artist.


By:  Guest Blogger and Entertainment Lawyer Extraordinaire Stephanie Taylor




Posted in Trademarks

As I reflected on Memorial Day, many images came to mind of family and friends who courageously gave their own lives to help protect ours.  They all shared a tremendous sense of pride for their military unit – an extension of their own identity giving rise to a lifetime bond with fellow soldiers.  Military trademarks are an extension of this pride, whether worn as a tattoo, a bumper sticker, or a Facebook profile picture.   We salute all of these brave men and women whom we are fortunate to call our protectors.

Here are a few of the military trademarks that signify courage and honor.  Just like commercial trademarks, these military trademarks each have their own brand, and several are federally registered.

Marine Corps SEMPER FIDELIS or

SEMPER FI  (Always Faithful)












(Always Ready)

National Guard ALWAYS READY.  ALWAYS THERE. national


My family and I visited the Kennedy Space Center over the holiday and were fortunate enough to be there on the day a SpaceX rocket launched.  The NASA emblem was emblazoned everywhere.  While NASA is not military, many astronauts were military first and many bravely gave their lives for the betterment of humanity.

We salute you all.



Monday Night Football

Posted in Brands, Trademarks

Last Monday, Pro-Football, Inc. petitioned the U.S. Supreme Court to hear its case (Pro- Football, Inc. v. Blackhorse) before the Fourth Circuit Court of Appeals rules on it, but only if the Supreme Court grants certiorari in Lee v. Tam. Asking the Supreme Court to take a case before the Circuit Court of Appeals renders its decision is really rare. Almost as rare as my having anything to say about sports. Which should soon be obvious, if you keep reading.

As a reminder, here’s the line-up: Pending before the U.S. Court of Appeals for the Fourth Circuit is Pro-Football’s appeal from a district court decision affirming the TTAB’s decision to cancel Pro-Football’s registrations for various marks that include the term “Redskins” on the ground that such term violates the anti-disparagement clause (Section 2(a)) of the Lanham Act. Pro-Football’s case has been fully briefed and the parties had been waiting for the Fourth Circuit Court of Appeals to schedule oral argument.

Ms. Blackhorse et al believe this would be preferable to the current team name.

Ms. Blackhorse et al believe this would be preferable to the current team name.

Meanwhile, last week in Lee v. Tam the director of the U.S. Patent and Trademark Office asked the Supreme Court to grant certiorari to review the Federal Circuit’s en banc decision invalidating the anti-disparagement clause of the Lanham Act on constitutional grounds, vacating the TTAB’s affirmance of the examining attorney’s refusal to register the mark “The Slants” (because it violated Section 2(a)), and remanding the case to the TTAB. Pro-Football filed its petition for certiorari less than a week after the director of the PTO filed the petition in Lee v. Tam.

It is rare for a party to leapfrog a court to seek review at the highest level, but occasionally one goes directly from high school to the big leagues. Pro-Football explains why its case should be heard as a companion to Tam, and in doing so it scores some good points. But it does such a good job, the Court may be disinclined to deny certiorari to Tam.

Michelle Lee: PTO Director

Michelle Lee: PTO Director

Allowing Pro Football’s case to be heard as a companion to Lee v Tam would provide the Court with an expanded view of how and when Section 2(a) may be applied. While Tam encountered it during the application process, Pro- Football has encountered it during cancellation proceedings commenced years following registration. Moreover, Pro Football makes some arguments in support of its case that Tam did not (such as vagueness and due process arguments) and Pro-Football has preserved certain positions that Tam conceded (such as the nature of the speech at issue). Additionally, Pro-Football proposes a construction of Section 2(a) that would allow the Court to avoid a constitutional issue.

But in some respects, it seems Pro-Football simply cannot stand to be sidelined, watching someone else when it has spent so many years crafting its arguments and preparing for the highest court in the land.

I would not be surprised if the Court chose to hear Pro-Football, Inc. v. Blackhorse as a companion case to Lee v Tam. But it remains to be seen whether Pro-Football’s Hail Mary petition will mark the end the losing streak the team experienced before the lower courts in its case.

America’s Prince

Posted in Brands, Copyright, Trademarks


The legal legacy of The Artist Formerly Known as  Prince_logo.svg is impressive; we’ll miss his fabled stories and exploits.  Years ago, we posted about the background dispute behind Prince’s fight with his label that resulted in his name change from Prince Rogers Nelson.

But these quirky stories aren’t what I find to be so impressive.  Instead it is the lack of information available about him on the Internet, especially for someone that famous who made his living from copyrighted works.  Nowadays Google is pretty on point for most topics; but not Prince.  My searches for legal disputes involving Prince review the well-known dancing baby “Let’s Go Crazy” lawsuit and the Facebook fan suit.  In fact most of the search results are actually around Richard Prince  (intriguing, but basically antithetical to Prince).

When I started researching this topic, I expected there to be more?  Then again, it turns out that it is very difficult to find Prince’s music on current social media sites.  Is that the genius of Prince?

We know he didn’t allow reporters to video or record him.   He was also quoted as saying “if you don’t own your Masters, your Masters own you.” It would seem that Prince did a much better job controlling both information about himself and music than I certainly ever imagined.  It also means it can be done.  Few people had as much content as Prince.  It would also appear that few people as much control over their messaging as Prince did.  Certainly England’s princes do not; Prince Harry alone may be responsible for pushing Prince’s bad press to the bottom of Google’s searches.

Another interesting side effect of Prince’s nearly ten years as Prince_logo.svg is that ten years of his career is basically invisible to Internet searches (other than as the Artist Formerly Known as Prince). He also gained additional advantages over his symbol as a trademark: not only is an unusual symbol one of the strongest types of trademarks, but also it is very difficult for people to infringe or dilute.  There simply is no good way to use Prince_logo.svg in a sentence.  He also registered the symbol as a trademark to provide himself more control over it.  An added benefit is that the symbol was also protected by copyright as an artistic expression.

I’m not suggesting that you change your name to a symbol or that you adopt Prince’s level of control over his brand.  However, there are certainly some lessons we could all learn from his brand and content control.

Prince, we’ll miss your quirky ways and your unique music.



“Stairway to Copyright Infringement”- Step Two in Spirit’s uphill climb to prove Led Zeppelin’s ‘Stairway to Heaven’ infringes its copyright

Posted in Uncategorized

Trademarkology wants to give a shoutout to our sister blog OP-IP and its recent post on copyright infringement. OP-IP can be found here: We suggest you subscribe. In the meantime, check out Stephen Weyer’s most recent post:

Followers of this blog and classic rock fans everywhere with a keen interest in the nuances of copyright infringement will recall that Led Zeppelin is being sued by the band Spirit for copyright infringement based on Zeppelin’s immortal song which Spirit alleges lifted portions from its guitar instrumental, Taurus.  The judge in the infringement suit has just now cleared the way for the ‘Stairway to Heaven’ copyright case to proceed to trial next week (reported on WTOP.COM).

This morning, I again listened to both the introduction of Zeppelin’s Stairway to Heaven and Spirit’s Tarsus instrumental (links to both at the bottom of this post).  While there are similarities, there are differences as well.  As one commentary to my original post put it, the Spirit instrumental is a standard chord progression whereas the introduction to Stairway to Heaven is much more than that.

The group, Axis of Awesome, very creatively demonstrated that a series of four chords makes up hundreds of popular songs, tens of which are featured in their song “Four Chords” (link below).  Yet most would agree that each of the songs featured are themselves unique creative works.

Turning to substance of the debate, does “Stairway to Heaven” infringe Spirit’s Taurus guitar instrumental?  In order to infringe an original work’s copyright, the alleged infringing work must be deemed “substantially similar” to the original work and the alleged infringer has to have had “access” to the original work.  In this case, “access” would not appear to be an issue as Led Zeppelin and Spirit toured together in 1968 and 1969.

Below are links to YouTube clips from Spirit’s “Taurus” and  Led Zeppelin’s “Stairway to Heaven.”  See if you think that the opening notes in Stairway to Heaven are substantially similar to the middle guitar instrumental in Spirit’s “Taurus” (e.g. starting around 0:43).  Since most are familiar with the iconic guitar progression in “Stairway to Heaven,” I present Taurus first.  Please let OP-IP know what you think.


Unfair Competition is Such a Headache

Posted in Trademarks

This week, in Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, Appeal No. 15-2335 (March 23, 2016), the U.S. Court of Appeals for the Fourth Circuit held that the Lanham Act permits plaintiffs to bring false advertising, false association, and trademark cancellation claims in the U.S., even if those plaintiffs do not themselves own a U.S. trademark registration or use the trademark in the U.S.

While this case is of interest to trademark practitioners generally, we were especially excited to see this decision issue because it is consistent with the outcome advocated by resident Trademarkologist Jennifer Kovalcik, who prepared the amicus brief on behalf of AIPLA.

Way to go, Jen!

Way to go, Jen!

The background facts and procedural details of the case are enough to give anyone a headache, so we will cut to the chase: Bayer Consumer Care AG and Bayer Healthcare LLC (collectively, “Bayer”) petitioned to cancel the U.S. registration for FLANAX owned by Belmora, LLC (“Belmora”). Bayer owns rights in the mark FLANAX in Mexico and has made millions of dollars of sales of naproxen sodium under that mark there over several decades. It does not use FLANAX in the U.S. (here, Bayer sells the ALEVE product). Belmora began using FLANAX in the U.S. just over ten years ago, and owns a U.S. registration for the mark. Bayer accuses Belmora of engaging in deceptive trade practices and unfair competition by falsely associating its product with Bayer’s FLANAX product and by false advertising. For example, Bayer accuses Belmora of adopting packaging that is very similar (if not identical) to the packaging for FLANAX Bayer uses in Mexico, for telling consumers that “now” FLANAX is available in the U.S., and otherwise implying that the FLANAX product in the U.S. emanates from the same source as the FLANAX product in Mexico.


flanax1               flanax2flanax3
Bayer’s FLANAX product                           Belmora’s FLANAX product

After the TTAB granted Bayer’s cancellation petition, Bayer sued for unfair competition in district court and Belmora appealed the TTAB decision to district court. The cases were consolidated and district court dismissed all of Bayer’s claims. Bayer appealed, and this week the U.S. Court of Appeals for the Fourth Circuit vacated the judgment of the district court and remanded the case for further proceedings.

The Court held that the plain language of Section 43(a) of the Lanham Act does not require a plaintiff to use its own trademark before it can bring an unfair competition claim under the statute. Rather, it is the defendant’s acts (the ones that allegedly constitute false advertising or false association) that must occur within commerce Congress may regulate before a plaintiff can bring a claim. The plaintiff only needs to believe that it is likely to be damaged by the defendant’s acts. And if pain medicine cannot remedy the injury, the plaintiff is likely to seek relief from the court.

Having decided that ownership and use of a mark in the U.S. was not a threshold requirement, the Court then had to determine whether the acts of unfair competition that Bayer alleged fell within the Lanham Act’s protected zone of interests and whether Bayer had satisfactorily pled that those acts proximately caused it injury. The Court determined that Bayer satisfied these prongs.

The Lanham Act makes the deceptive and misleading use of marks in commerce actionable, and it protects those engaged in commerce against unfair competition, so Bayer’s claims fall within the statute’s protected zone of interests. Bayer claimed that Belmora falsely associated its FLANAX product in the U.S. with Bayer’s FLANAX product in Mexico, which encouraged consumers to purchase FLANAX in the U.S. instead of in Mexico. Bayer also accused Belmora of false advertisement by deceptively implying that its FLANAX product was the same as the one found in Mexico. This encouraged consumers to purchase FLANAX from Belmora instead of ALEVE from Bayer in the U.S. In both cases, Bayer alleged that the acts of unfair competition proximately caused it injury in the form of damage to sales or reputation. The same reasoning applied to Bayer’s cancellation claim.

In light of the foregoing, the Court found that the district court erred in dismissing Bayer’s claims. Bayer should have a chance to prove its case. So the Court vacated the district court’s decision and remanded the case to district court.

This does not mean that Bayer owns the FLANAX mark in the U.S. Rather, Belmora does. Also, the Court’s decision was not based on the well-known marks doctrine[1] or Section 44 of the Lanham Act (which implements the Paris Convention), but rather, the plain meaning of Section 43(a) (unfair competition) and 14(3) (cancellation) and recent Supreme Court decisions. In fact, the Court emphasized that this was not a trademark infringement case. So owners of trademarks outside the U.S. should not conclude from this decision that their marks will be protected in the U.S. just because they are protected elsewhere or are well-known. Registration and use of marks is still important for protection in the U.S., even if not required for bringing unfair competition claims.

The case is far from over. Having won the right to bring its claims, it remains to be seen whether Bayer can prove them.


[1] The well-known marks doctrine is a doctrine that would protect foreign brands against harm to their reputation in the U.S., even if those brands are not registered or use in the U.S.

When Brands Go Bad

Posted in Brands, Trademark Basics, Trademarks

Have you ever looked at a product and thought, “what an awful name”?   If you did, I bet you did not buy that product.  A good name for your business or product is essential to success.  The recipe for finding this golden nugget involves equal parts creativity and research.  On the creative side, you have to have a mark that distinguishes you from your competitors.  Brands that merely describe the kind of business you are, your location, or what you do are generally too descriptive to be protected.  The more descriptive a name is, the greater the chance that the same or similar description is being used elsewhere by a competitor.  Choose a memorable, distinctive name, and leave the description to your byline or website.  If you invest in creativity, you’ll end up with a much stronger brand and greater ability to distinguish yourself in online search results.  Then, do your research and make sure your chosen name does not have an unfortunate translation or negative connotation.

For example, you might not want to name your product after a term that is associated with a global disease.  [Sorry, if I dashed your hopes of naming your new widget EBOLA.]   Tata Motors, the largest automobile company in India, announced early this year plans to launch a new car called  ZICA.  They reportedly chose the name ZICA as a short form for the phrase “zippy car.”  They failed to associate ZICA with the global spread of the Zika virus.  Despite the investment already made in commercials featuring prominent professional sports figures, Tata Motors scrambled to change gears and renamed the car.



Here are three steps you should take to avoid this problem and find a strong, protectable trademark:

  1. Conduct a Trademark Clearance Search

Start with a trademark clearance search to make sure that your brand is not already taken.  You can conduct the first wave yourself through Google or other online search. If the mark looks clear, an experienced trademark attorney can assist you with a more thorough search, including sources from federal registrations, state trademark registrations, trade publications, online resources, and other databases.  Prior use of a similar mark for related goods or services – even if not registered – can create superior rights to a mark and present a risk of infringement to your company.

  1. Ensure Availability as a Domain Name & Business Name

You should also confirm whether the mark you want to use is available as a domain name and business name.  In this regard, make sure you are notably different than other URL’s or business names in your state.  Be aware that business names and domain names can be registered with even one character differences.  If you have a business name registered and the URL, you could still be infringing another person’s registered trademark.  They are different animals.  The fact that a name can be registered, however, is not a confirmation that it should be used.  Most state business filing offices and domain name registries to NOT perform a trademark search or make any determination of whether a trademark is appropriate.  Therefore, for best clearance results, you have to look at both.   You also don’t want to spend money on a trademark registration only to find out that some yahoo has the domain you want and is suddenly willing to sell it for $50,000.

  1. Pass the Smell Test

Finally, make sure your mark doesn’t stink because it has another unfortunate meaning or connotation you don’t want associated with your brand.  Translate your name into other common languages, and make sure your mark is not going to be associated with something negative in your current market and your likely expansion market.


Chevy is reported to have flopped in Latin America with its NOVA because “no va” can be translated in Spanish to mean “it doesn’t go.”  Luckily for Chevy, this is an urban myth.  They actually had reasonable sales in Latin America.  The single word “Nova” has other meanings and connotations and is not immediately translated into the two-word phrase “no go”.  The myth does highlight translation risks which should be considered when picking a mark.  For you millennials, Chevy Nova’s were sold during the 1960’s through the 1980’s before you were born.  The Nova has made multiple appearances in movies and TV series, and is even rated by IFC as one of The Ten Coolest Cars in Movie History for its appearance in the action-horror movie  Death Proof (2007) directed by Quentin Tarantino.



The Zika virus has been associated with other horrors, and many consumers could associate the new ZICA car with those negative connotations in vast contrast to the positive messaging of the ZICA “It’s Fantastico” advertising campaign.  Tata Motors announced the new name of the ZICA car will be TIAGO –a masculine first name of Portuguese origin that translates to “James” in English.