California Trademark Attorney® Blog

March 2012 Archives

Oprah Victorious in 'Own Your Power' Trademark Lawsuit

March 20, 2012,

magazines.jpgCalifornia - Oprah Winfrey has emerged victorious in a trademark infringement lawsuit in which the owner of a motivational services company filed against the former talk-show host over the trademarked phrase 'Own Your Power.'

In the trademark infringement complaint, filed last year, Simone Kelly-Brown, a life coach and owner of Own Your Power Communications, insisted that it was her company that created the phrase along with the OYP acronym and the concept that people can "live their best life" if they believe that "anything you want in life is attainable." Kelly-Brown applied for trademark rights to 'Own Your Power' with the United States Patent and Trademark Office back in 2007.

Kelly-Brown's lawsuit had apparently been filed in response to an edition of O, The Oprah Magazine featuring the cover with a photograph of Winfrey and the headline, "Own Your Power." The cover also featured sayings such as "Unlock Your Inner Superstar," "Tap Into Your Strength," and "Focus Your Energy" with the issue running in conjunction with corporate-sponsored events and an episode of Winfrey's talk-show promoting the issue.

Own Your Power Communications, Kelly-Brown's company, has been in business since 1996, providing life coaching, empowering events, a radio show, and a blog to help individuals employ effective strategies to attain their personal and professional goals. Kelly-Brown's lawsuit asserted that Winfrey's use of 'Own Your Power' had violated her trademark rights and confused the origin of her trademark.

In his decision, Judge Paul Crotty ruled that there was no confusion about the source of the phrase and that Winfrey had the right to use descriptive phrases on the cover of her magazine. The judge also determined that the magazine's "O" trademark was identification that the 'Own Your Power' phrase was meant to be a headline, indicating the contents of the October 2010 issue.

The judge also ruled that Winfrey never used the trademark in bad faith, and that no likelihood of confusion was ever intended or created, and that she is not liable for the trademark being infringed by others because there was no direct infringement in the first place.

Neither party was available for comment.

Urban Outfitters Sued for Trademark Infringement by Navajo Nation

March 12, 2012,

indians.jpgCalifornia - The Navajo Nation has filed a lawsuit in the U.S. District Court of New Mexico against Urban Outfitters, accusing the popular clothing company of infringing on its Navajo trademarks. Last fall after receiving a cease and desist letter from Navajo Nation, Urban Outfitters removed its use of "Navajo" and "Navaho" from its website. However, Navajo Nation alleges in its complaint that Urban Outfitters continued to sell over 20 products in its subsidiary clothing stores such as Anthropologie and Free People, who have also been named in the lawsuit.

Navajo Nation claims in the lawsuit that it has had use in commerce under the Navajo trademark since 1943 and has been known as the Navajo tribe since as far back as 1849. Navajo Nation currently owns at least 86 registered trademarks, 10 of which are Navajo related trademarks and include goods such as clothing, blankets, footwear, and jewelry. The Navajo Nation has claimed that Urban Outfitters is using the Navajo trademark for clothing, jewelry, and accessories. However, one product of Urban Outfitters in particular has been said to be "derogatory and scandalous" and that is the "Navajo Flask". This product has been most disturbing to the Navajo Nation because it does not affiliate itself to any products related to alcohol and in fact bans the sale and consumption of alcohol on its reservation which includes land in Arizona, Utah, and New Mexico.

In the lawsuit filed February 28, 2012, the Navajo Nation states, "In this action, the Navajo Nation seeks to protect its famous and distinct Navajo name and trademark, and to ensure that consumers are no longer deceived, confused, or misled in their pursuits to find and acquire authentic and genuine Navajo products." Navajo Nation is also suing Urban Outfitters for violating the Indian Arts and Crafts Act, which is a federal law making it illegal to sell arts and crafts by misleading consumers into believing they are authentic and made by a Native American tribe or person.

The Navajo Nation is seeking that Urban Outfitters completely stop using and selling products related to the Navajo trademarks as well as monetary damages. Urban Outfitters had no comment at this time.

Hermes Loses Trademark Infringement Lawsuit in China

March 2, 2012,

purse.jpgCalifornia - French fashion house Hermes International has recently lost a trademark infringement lawsuit against a Chinese company that registered a similar trademark. A Chinese court has also rejected Hermes' bid to register the Chinese translation of the famous French name.

Since 1997, Hermes has reportedly tried to convince China's trademark board to cancel a trademark held by Dafeng Garment Factory, a menswear company from southern China. That company had trademarked the term "Aimashi," which is the Chinese translation of Hermes. Despite registering the Hermes brand in China in 1977, the company reportedly did not register its brand name in Chinese at the same time. Ruling against Hermes, the Chinese court said that the French company had not provided evidence that the "Aimashi" trademark had been registered by the menswear company illegally or that the trademark was well known among consumers in China.

Roughly translated, the Hermes version of Ai Ma Shi means "officials who love horses," a tribute to the iconic company's equine origins. Dafeng's version of Aimashi, however features a rare Chinese character, which is part of the word agate -a type of crystal- and is often used for translating the names Mary and Emma into Chinese.

Hermes is not the only foreign company to face challenges in defending its trademark in China. Apple Computer recently lost the rights to use the "iPad" trademark in China after losing its trademark infringement battle to Proview Technologies. Earlier this month, former Chicago Bulls point guard Michael Jordan filed a trademark infringement complaint with a Chinese sportswear company for using a trademark that is the Chinese translation of his name. Although Jordan has never registered the Chinese translation of his moniker in China, Chinese law prohibits companies from freely using the names of celebrities, even if those people have not registered trademarks for their famous names.

Established in Paris in 1837, Hermes specializes in fine leather goods and handbags, lifestyle accessories, perfume, luxury goods, and ready to wear apparel. Known around the world among high fashion brand-conscious consumers, the rejected bid to register its name in Chinese will not likely affect Hermes' popularity or brand recognition among fashionistas in China.