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A Legal Minute: Trademark Action 2012

Written by Alexander Tucker   // 11/25/2012

The Hobbit Trademark ActionEDITORIAL

A Legal Minute: A little bit of the legal side of the biz you can read in a minute.

Trademark Action 2012

 

One of the more interesting developments in the legal world over the past year has been the increase in high profile trademark filing and lawsuits.  Truth be told, the legal activity in the trademark world is not new, but it does seem to be higher profile.  From Jay-Z and Beyonce’s baby to direct to home movies that seek to trade on the name of high profile films hitting theatres, there are a number of interesting claims and disputes on the books.

 

Blue Ivy: Just days after Jay-Z and Beyonce’s child, Blue Ivy was born, the happy couple filed applications with the U.S. Patent and Trademark Office to protect the name and use it in fourteen goods and services classes, from skin care products to CDs, ring tones to baby bedding.  Anytime a person applies for trademark protection, they can choose from numerous classes, or file in each class depending on what they want to exploit.  Filing across all classes can be pricey at a minimum of $275 a pop, but the payoff can be lucrative.  The Carters (Jay-Z and Beyonce) tried for numerous classes, but as happens in high profile filings, they many others are tying to capitalize on the name by filing competing applications or challenging their filings.

 

It is up to the trademark office to sift through all the applications and give each application its fair shake.  I find it interesting how the Carters, savvy business people themselves, have already sought to secure monetization of their child’s name.  The process has been slowed by people seeking to trademark Blue Ivy concurrently, but ultimately the Carters will probably be successful.  Their application was published November 7th and it looks good.  They did lose out on using Blue Ivy in the wedding planning business though.  A Boston wedding planner secured her rights to Blue Ivy in the midst of the filings.

 

Tebowing: Back when “Tebowing” became a phenomenon, a very clever Tim Tebow (or his advisors through XV Enterprises), made sure to file trademark applications in seven classes.  Tebow also ran into the issues of others trying to capitalize on the name.  But, after diligent work, the Trademark Office has published the applications for opposition, meaning someone will have to make a pretty convincing case of prior use to stop the eventual securing of the trademark by Tebow.  The ability of Tebow to capitalize on a gesture he performs during each pregame may actually be his longest lasting legacy.

 

Louboutin Shoes: In an interesting result that came out of trademark litigation, the unique red soled shoes from designer Christian Louboutin were given trademark protection after it was that the glossy red soles that differed from the heel color had acquired a secondary meaning.  What does that mean?  Well, the red soles are unique and distinctive enough that the look deserves trademark protection since no one else does it.  And now, no one else will without trademark infringement.  The decision opens up interesting new precedent for designers that can span across a few industries.

 

The Hobbit: The Film Production company, The Asylum, has a long standing tradition of releasing direct to video (or streaming) films that allude to a relation to major blockbusters in theatre.  The most recent release is Age of the Hobbits which seeks to capitalize on the forthcoming The Hobbit.  This is just the most recent “mockumentary” after recent releases such as American Warships (originally American Batttleships before a judge ruled that the name violated the Battleship trademark) and Abraham Lincoln v. Zombies.  The most recent Age of the Hobbits film is being challenged by the studios behind The Hobbit, and if not for their recent loss on the challenge from the studios behind Battleship, I might believe The Asylum would be safe, but they will have a challenge in front of them.

 

The recent trademark filings and challenges through litigation show an interesting trend in the trademark world.  Trademark laws are strong in the United States, and as long as they remain so, parties will seek to get trademark rights since they can last in perpetuity.  It creates a great potential revenue stream.  By registering a mark, the owner has the ability to leverage licensing rights or sue to enforce its trademark rights.  The recent trademark action has actually led a well respected trademark attorney to trademark the term “trademarklawpocalypse,” in order to describe the activity we have seen in the trademark world over the past year.  With the year almost at an end, it will be interesting to see what comes to pass in 2013 and beyond.

 

Roberto “R.C.” Rondero de Mosier is an attorney licensed to practice law in Texas, California, New York and Illinois.  He is a partner at Gonzalez & Mosier Law PLLC.  His practice specializes in Entertainment Law and Intellectual Property rights.  In his spare time he enjoys watching television and films, and writing about it.  Follow him on Twitter @showbizattorney, or e-mail him at rc@gonzalezmosier.com.


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