Articles by: Kevin Hartley

All Day I Dream About Opposition Proceedings

While it looks like there might not be much Ryder Cup drama this year, there has been no lack of golf-related drama in recent years. Much of the drama has related to the fledgling LIV Golf tour, which now finds itself in a new dispute. This time, it is with Adidas, which recently initiated an opposition proceeding before the United States Patent and Trademark Office seeking to prevent LIV from registering its logo: In its Notice of Opposition, Adidas argues that it has been using a similar three-striped mark for decades and that if LIV were allowed to register its [...]
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an image of the FANTASY LIFE Trademark Registration

Come for the Trademark Advice. Stay for the Fantasy Football Sleepers.

The week before the NFL season. That special time of year when friends (or frenemies) get together to build fake football teams for bragging rights. One of the keys to fantasy football success is being able to identify “sleepers.” Just don’t sleep on applying for trademark protection if you are in the fantasy sports business. Currently, there are over 600 registered marks that identify “fantasy sports” as part of their goods or services with over 500 more pending applications that do the same. Four of those registered marks (and one pending application) are owned by one of the forefathers of [...]
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Nashville Soccer Club Logo

Messi has Arrived in MLS, Expect More U.S. Trademark Applications to Follow

On Saturday, Lionel Messi comes to our hometown for a showdown with Nashville SC for the Leagues Cup championship. Tickets to the match are . . . not inexpensive. Not surprisingly, Messi has taken the MLS by storm, scoring in every game since arriving in the league. Messi hasn’t just mastered the beautiful game. He has also implemented a masterful international trademark strategy with over 100 registered marks worldwide. Most of the registrations are for either his name or his M logo: Surprisingly, Messi’s only has one registration in the United States, which is for his M logo for a [...]
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Photo of Twitter X sign

X and The Risks of Rebranding

Last week, Randy wrote about some lurking trademark issues that could await Elon Musk as he rebrands Twitter to X. Musk’s decision shines a spotlight on the risks associated with rebranding. Not only can rebranding lead to a potential dispute with another trademark owner, as Randy discussed, but it can also cause a brand to lose a lot of value. Trademarks can be valuable assets, but with the rebrand, $4 to $20 billion in value vanished overnight based on estimates from analysts and brand agencies. Musk purchased Twitter for $44 billion in October. Coincidentally, the company is currently valued at [...]
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Old Taco Bell logo

Taco John and Taco Bell Take the High Road so Everyone Can Celebrate TACO TUESDAY

Last week, Randy wrote about the “spectrum of trademark distinctiveness” and how generic terms cannot be protected as trademarks. This week, Taco John made news when it agreed to abandon its trademark registration for TACO TUESDAY for restaurant services after a recent challenge by Taco Bell alleging that TACO TUESDAY was generic and not entitled to trademark protection. Brand owners can learn a lot from how both Taco John and Taco Bell navigated the dispute to avoid an unsavory outcome. Taco Bell brought a unique blend of humor and law to its Petition for Cancellation of the TACO TUESDAY registration [...]
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Bed Bath and Beyond coupon

Overstocked with IP Assets: Two Takeaways from the Bed Bath & Beyond IP Acquisition

When I first heard that Bed Bath & Beyond was shuttering, I shuddered to think about finding a new go-to place to buy Mahogany Teakwood candles. A moment later I realized that I was confusing the home goods store with Bath & Body Works. It wasn’t the first time I had confused the two alliteratively-named retailers, but - with the news - I thought it could be my last. That is, until recently when Overstock.com bought Bed Bath & Beyond’s intellectual property assets out of bankruptcy for $21.5 million. More like Bed Bath & (Saved from the Great) Beyond. After [...]
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Harry Potter Trademark Certificate

What Startups Can Learn from Harry Potter about the Value of Trademark Registrations

Trademark attorneys often talk about how a trademark embodies the goodwill of a business. When I try to wrap my brain around the idea, I often think about my favorite part of the Harry Potter series. Toward the end of the series, Harry asks Professor Dumbledore whether something he is experiencing is real or happening in his head. Dumbledore responds, "Of course it is happening inside your head, Harry, but why on earth should that mean it is not real?" Just because it can be hard to grasp the intangible goodwill of a business it does not mean the goodwill [...]
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Dunkin’ Don’tnuts

I have a bit of a sweet tooth. Just last week, my mother-in-law left a bag of pumpkin spice donuts at my house. The donuts didn’t survive the night. Unfortunately for donuts, they did not survive Dunkin’ Donuts’ recent rebrand either. Earlier this week, Dunkin’ Donuts made the announcement that it would be dropping the “Donuts” from its name. I could try to provide a pithy explanation for the rebrand, but let’s leave that to Stephen Colbert. While the rebrand was a surprise to many, anyone with a keen eye on USPTO filings would have noticed the company filed multiple [...]
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FitzMagic

“FitzMagic” Trademark may Result in Unwanted Communications

As you may have noticed, around the Tree we love puppies, beards, football, and trademarks. This post is about all those things. Ryan Fitzpatrick is best known for two things, going to Harvard and his majestic beard. Also, from time-to-time, he plays like an elite quarterback. Filling in for the suspended Jameis Winston, Fitzpatrick has led the Tampa Bay Buccaneers to a surprising 2-0 start in impressive fashion, tossing 8 TDs. Going back to 2010 in Buffalo, when Fitz flexed his football skills, fans celebrated him as “Fitzmagic.” Use of the nickname abounds with Tampa’s fast start. So, it was [...]
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Bortles sacked

#Sacksonville, More Like #Oppositionsonville

tl;dr – You should always file a trademark application with the USPTO sooner rather than later. Last week, we wrote about when and how to oppose a trademark application. This week, trademark oppositions are back in the news. And, wouldn't you know, it relates to football. In October 2017, the Jacksonville Jaguars filed an application for the trademark #SACKSONVILLE for shirts and entertainment services related to professional football. In the application, the Jags claim they began using #SACKSONVILLE as a trademark in commerce at least as early as September 2017. The application was published for opposition on March 6, 2018. [...]
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