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NFL Star Revis Finally Gets Trademark for "Revis Island"

October 21, 2013,

football.jpgCalifornia - Tampa Bay Buccaneer cornerback Darrelle Revis was granted trademark protection over the phrase "Revis Island" last month, according to documents filed with the United States Patent and Trademark Office (USPTO). Revis originally filed the application for "t-shirts, sweatshirts, sweatpants, hats, footwear, sleepwear, swimwear" in January 2010. The application process was long and attenuated, as Revis went back and forth with the USPTO filing four extensions of time to file a Statement of Use before finally being granted protection on September 24th.

The former New York Jets player earned the nickname "Revis Island" during his time in New York, where he became known for his ability to shut out opponents, isolating them and rendering them unable to catch a pass. His one-on-one coverage of some of the best receivers in the NFL has prompted countless comments that they have taken a "trip to Revis Island." This impressive play earned him the Jets franchise record for most career passes defended. He has also been selected to play in the Pro-Bowl four times.

Now that the "Revis Island" trademark has registered, Revis is free to expand upon his success by selling merchandise under the name he worked (and played) hard to create. Indeed, this appears to be just another step in Revis' building of his brand as he already has a Nike shoe named after him, the Zoom Revis, which sells for $130 a pair. While there is no official word on what exactly he plans to sell under the new brand, Revis' broad fan base surely provides a ready market for "Revis Island" apparel and merchandise.

Revis' registration marks one in a long chain of famous athletes and celebrities seeking trademark protection over their coined nicknames and phrases. Among a growing list, the Houston Rockets' Jeremy Lin trademarked "Linsanity," Olympic swimmer Ryan Lochte field for protection for his catchphrase "Jeah" and Chad Johnson filed an application for an "Ochocinco" logo. Beyond athletes, celebrity music couple Jay Z and Beyonce recently made headlines by taking things a step further and filing for trademark protection of their daughter's name "Blue Ivy" the same month that she was born.

Ninth Circuit Reverses Ruling that Jeweler's RED GOLD Trademark is Generic

March 22, 2013,

jewelry.jpgCalifornia - The Ninth Circuit reversed the lower court's ruling that dismissed a lawsuit brought by jewelry designer Solid 21, Inc. alleging that its rival Breitling USA, Inc. infringed it RED GOLD trademark, saying the lower court erred when it ruled that the trademark was generic and therefore not protectable.

The Ninth Circuit reversed U.S. District Judge Gary A. Feess' ruling that dismissed Solid 21's lawsuit for failure to state a claim and remanded the case to the California district court, saying that the evidence provided by Solid 21 gave it the presumption that the trademark is not generic.

"Solid 21 has alleged in its complaint and submitted supporting documentation indicating that its "red gold" mark is registered in accordance with the Lanham Act," the appeals panel's opinion read. "Solid 21's federal registration of its trademark constitutes prima facie evidence of the trademark's validity."

Solid 21 asked the Ninth Circuit to revive its lawsuit early this month, claiming that Judge Feess of the Central District of California made a rash decision when he ruled that "red gold" is a generic term for the amber-hued alloy made from gold and copper.

Breitling argued that Solid 21 could not protect a term that describes the metals the product is made out of. It also argued that there is not a rule preventing judges from dismissing a trademark infringement case at the motion to dismiss stage on grounds that the term is generic. It also argued that Judge Feess appropriately considered its dictionary evidence that Solid 21's RED GOLD trademark is merely descriptive of a specific kind of gold that has a reddish hue from being alloyed with copper.

Solid 21 argued that a trademark should not be ruled generic at the motion to dismiss stage because it is a factual inquiry. It said that a motion to dismiss would have to be turned into a motion for summary judgment in order for the judge to dismiss the case based on genericness.

The appeals panel cautioned Breitling that it is hard to overthrow the presumption of validity and that it has the burden to prove the trademark is not protectable.

The lawsuit is one of 15 filed by Solid 21 in January of 2011 in an attempt to protect the RED GOLD trademark against brands including Bulgari, LVMH Moet Hennessy Louis Vuitton, Rolex and Swatch. The other lawsuits were on hold awaiting the Ninth Circuit's decision on the case against Breitling.

RIM Wins in BBM Trademark Infringement Case

June 1, 2012,

cellphone_blackberry.jpgCalifornia - Research in Motion (RIM), the creators of Blackberry, won a hard fought victory in court today over use of the BBM trademark.

BBM, or Blackberry Messenger, is an instant messaging application that is sold pre-installed with the Blackberry smart phone. Despite the well-known name and nature of the application here in the United States, the use of the trademark BBM was recently challenged by Canadian television giant BBM Canada. BBM Canada filed a trademark infringement lawsuit with the Canadian federal courts over the use by RIM of its long-used and trademarked name BBM. A cease-and-desist letter had been sent to RIM in 2010, but the letter failed to illicit the response that BBM Canada had anticipated.

In the current trademark case, the court determined that although the trademarked term BBM was owned by the Canadian television company, the two combatants operated in two different industries. And although BBM Canada had long standing ownership of the mark for over fifty years, RIM had not infringed on this ownership because of the fact that they used the trademark BBM in a distinctly different industry. Therefore, confusion among consumers was held to be unlikely.

The news of the win its current infringement case comes on the heels of an earlier trademark infringement case involving RIM and its Blackberry products. In the earlier case, RIM was forced to make changes to its soon to be released Blackberry 10 BBX Operating System. Basis International, the owner of the confusingly similar trademark BBX, sued RIM in Albuquerque, NM federal court to prevent the use of its trademark in RIM's new product release. Blackberry was subsequently forced to make last minute changes to its operating systems and product release materials prior to its Blackberry 10 product launch.

This latest win against BBM Canada could not come at a better time for the beleaguered smart phone manufacturer. RIM has suffered an extremely difficult year with downturns in sales and layoffs resulting from product problems, including global outages and customer dissatisfaction. The latest round of Blackberry outages resulted in a class-action lawsuit against the manufacturer and is not likely to be resolved any time soon.

Nike Sued for Trademark Infringement Over "Lottery Pick"

May 17, 2012,

basketball.jpgCalifornia - A term synonymous with the National Basketball Association is at the center of a trademark infringement complaint against Nike. Urban Motive Sportswear has filed a lawsuit against the sportswear giant for allegedly violating its "Lottery Pick" trademark after Nike used it on a Michael Jordan jacket.

In its trademark infringement complaint, filed in a United States district court in Illinois, Urban Motive Sportswear is alleging that Nike outright stole its trademark by using it on a jacket for sale called the Jordan LS Lottery Pick Jacket. The company registered the term "Lottery Pick" with the United States Patent and Trademark Office back in 2006. The company also claims that it has been selling sports apparel, an energy drink, and other merchandise with the trademark for years.

According to Urban Motive Sportswear, Nike's alleged infringement is particularly harmful to its business since it has done most of its marketing in Chicago, the town where Michael Jordan played out most of his NBA career with the Bulls and where it claims confusion has been created among consumers. The company also contends that it provided Jordan's sons with free sportswear.

In official court documents, Urban Motive Sportswear wrote that Nike's infringement on its trademark has "damaged us in a manner that cannot fully be measured or compensated in economic terms and for which there is not adequate remedy at law."

In the NBA, fourteen teams participate in the Draft Lottery, which is weighted so that the team with the worst record will have the best chance to secure a higher draft pick. The term "lottery pick" is a draft pick whose position is determined through the lottery, while the non-playoff teams involved in the process are often called "lottery teams."

Nike, which refused to comment on the pending litigation, is being sued for unspecified monetary damages.

Michael Jordan, otherwise known as "His Airness", was not named as a defendant in the lawsuit. The former player, who was inducted into the Basketball Hall of Fame in 2009, has been credited by many as being the greatest professional basketball player of all time. Having led the Chicago Bulls to six national championships, Jordan has been one of the most effectively marketed athletes and was considered responsible for popularizing the NBA on a global level in the 1980's and 1990's.

Facebook Claims the Word 'Book' as a Trademark

April 3, 2012,

facebook.jpgCalifornia - If you are among the 845 million active Facebook users, then you can soon expect to review a new Statement of Rights and Responsibilities from the social network giant. Last week Facebook announced that it would soon be updating its Statement of Rights and Responsibilities, giving ample time for its users to voice their concerns to the company. Users had up to last Thursday to state any concerns with the new agreement and Facebook is currently reviewing the feedback. Once all changes are finalized users can expect to receive notification about the new Statement of Rights and agree to it or discontinue using the site.

Among the current 9 pages of changes, which are open for public viewing, Facebook swapped out its '32665' trademark which it previosly abandoned and now lists the word "book" as a trademark. The previous excerpt in the Statement of Rights and Responsibilities stated: "You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar trademarks, without our written permission". It will now change to: "You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar trademarks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission." The change is listed in the 'Facebook Site Governance' section of the agreement.

Other changes to be expected in the new agreement will include sharing your content and information, safety or "community standards", special provisions applicable to social plugins, and special provisions applicable to software. Although Facebook has yet to file a trademark application with the U.S. Patent & Trademark Office for the word 'book', adding the word to its new user agreement might be the first step in that direction. Facebook currently has at least 70 trademarks in addition to the eight listed in the excerpt above such as 'FriendFeed', 'Like' and 'FacePile'. Although Facebook has successfully trademarked the word "Face" it may not be as easy to trademark the word 'book'.

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.