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Brand News: The Mixed (Up) Reality of Brand Protection

Brand News: The Mixed (Up) Reality of Brand Protection

by | Feb 15, 2023 | Brand Protection 101, US Registration, Education

Three simple words: Likelihood of Confusion.

This is the test used to determine whether one brand is infringing the rights of another brand.

Generally speaking, you compare the similarity of the brands and the relatedness of the goods or services sold under those brands.

I first encountered this test 20 years ago, and thought “This will be easy.”  It has gotten harder ever since.  If you think it is easy, you’re missing something.

Two things have made this more difficult over the past 2 decades: Technology and Freedom of Expression.  Today’s post focuses on #technology, and specifically mixed reality.

The legal world is struggling.  Are goods sold in the real world necessarily related to those goods sold in the meta world?  Most lawyers think “Of course they are,” but those same lawyers advise their clients to file #trademark applications covering the meta world– just in case.  I am one of those lawyers.

A recent decision helps resolve this issue.  Hermes sued an artist who sold NFTs in the meta world that looked like Birkin bags.  MetaBirkins. Hermes does not sell virtual Birkin bags, nor have they sought registration for this right.  They felt that their registered rights in the real-world Birkin bags gave them sufficient rights in the meta world.

Hermes was right.  They won.  While this decision is not binding precedent for all future suits, it certainly helps clarify whether goods in the real word are related to those in mixed reality.

Another win for brand rights!  Now excuse me as I file more applications to register my clients’ goods in the meta world.

Should a Business Owner Handle Their Own Dispute?

Should a Business Owner Handle Their Own Dispute?

by | Feb 14, 2023 | Brand Protection 101, Office Actions, Cease & Desist, Infringement, Education

Read on.  My answer to this question may shock you!

Last year a client came to me with bad news.  This client had operated a restaurant for a number of years.  The building it was in suffered a disaster, and he was forced out of business for months.  While he was working to reopen, he learned that another company was trying to beat him to the punch.  This other company was trying to open a competing restaurant with the EXACT same name.  What’s worse is that he had a business connection with this other company. 

My client came to me with a few simple questions:
– Can another party take my name when I’m not using it? 
– If not, what steps can I take to prevent this?

I told him he did not lose its rights in his brands when his restaurant was closed for an excusable reason.  You lose your rights in a brand when you abandon it, and his situation showed that he was clearly not trying to abandon it. 

Being in the right and enforcing your rights are two different things.  I like to try the least disruptive method as an initial step.  In this case I asked “Did you say you know the other party?”  He said he had a few connections; that some of the people connected with the other restaurant were former colleagues.  So I suggested “Why don’t we start with a phone call between you and the other business?”



My client was flummoxed.  Did a lawyer just suggested something less than a lawsuit?  What about a cease and desist letter?  What about a call from the lawyer?  Didn’t we have to start this with a grand legal gesture?  I told him we could use these steps later if necessary.  I like to try to resolve matters as simply as possible because it is more efficient and may even allow the parties to preserve relationships.

My client’s call was well received.  He let them know that he planned to reopen the restaurant and didn’t want the public confused about which of the #restaurants was owned by the company that always ran it.  It seems the other party got this.  The initial response was that they would not use my client’s brand on their new restaurant.

Another win for brand rights!

How Does LeBron Celebrate Taco Tuesday?

How Does LeBron Celebrate Taco Tuesday?

by | Feb 8, 2023 | Brand Protection 101, US Registration, Infringement, Education

People often come to me to help them win a #trademark battle. A few times in my career I have advised that they should lose the battle. LeBron James has obviously been given that same advice.

King James apparently likes to use the term “Taco Tuesday” in his various business ventures. This phrase is used by many businesses, and he wanted to reduce the chance that he would be sued by one of these other businesses. How did he handle this? LeBron filed an application to register “Taco Tuesday,” but he KNEW it would be refused.

The USPTO thoroughly reviews every application filed and is known to refuse approximately 80-85% of applications submitted. King’s legal team submitted the application KNOWING that the USPTO would find the term was a common phrase and therefore could not function as a trademark.

How is this helpful? Now if a third-party challenges James’ use of #TacoTuesday he can quote the refusal from the USPTO stating that no one can own rights in this brand, thus all parties are free to use this phrase.

IP law is not intuitive. The strategies used in IP law are not common. I can help you make sense of this strange land and deliver a plan that is effective for your business.

How to Grow Your Business

How to Grow Your Business

by | Feb 7, 2023 | Brand Protection 101, Education

Business owners often ask me how to #grow their businesses. While many experts can weigh in, from my perspective the most important step is to secure rights in the intellectual property that identifies or supports the business.

There are many ways to grow a business. Some common ways include the owner financing new locations or #franchising /licensing that right to third parties. Protecting your brand is important in either situation.

This week I read a story that demonstrated how important securing your brand can be. Hofbrauhaus of America Franchise (HOA) franchised the right to third parties to start Hofbräuhaus German restaurants throughout the country. Before forming this franchise system, HOA registered many brands used by the business, including seeking copyright in the architectural design of the building.

One franchised store was located in Belleville, Illinois. The owner of this location stopped making payments to HOA. HOA attempted to negotiate this payment dispute, but eventually moved to close this location.

The suit between HOA and this owner of course mentions the failure to pay. I enjoyed the list of other franchise agreement failures, including:
-not maintaining the required operating hours;
-not conforming to the menu template;
-not employing an approved German- or Austrian- style band; and (worst of all)
-serving domestic beer!

The court appointed a receiver for the location. The receiver has begun the step that the public perceives as the end: the de-branding of the restaurant.

The restaurant is just another German style restaurant without the name Hofbräuhaus and the unique building shape. Hire a band? Not unique. Serve Weiner Schnitzel? Expected. The branding made it unique, and taking the branding away was the true power. Brand protection supplied this power.

Common Law Trademark Rights

Common Law Trademark Rights

by | Feb 6, 2023 | Brand Protection 101, US Registration, Warning Signs, Infringement, Education

You are not required to get your brands registered. While registration enhances your rights in a brand, you have a certain amount of legal protection by simply using your brand in the marketplace.

The rights given to unregistered brands are called “common law” rights. In essence, you have the right to prevent another party from using an identical or highly similar name in connection with identical or highly related goods or services within the geographic zone in which you use your brand. Maybe an example will help.

Hudson House is a restaurant in Redondo Beach, California. They opened in 2008 and serve casual bar fare. This week a Texas company opened a restaurant named Hudson House in West Hollywood that serves upscale Americana. These restaurants are 20 miles apart.

The original company sued the Texas newcomer for trademark infringement. The original company does not have a registration, but they can show:
– the newcomer is using the exact same name;
– the newcomer offers a highly related type of restaurant service (with some menu items overlapping); and
– at only 20 miles apart, the newcomer is almost certainly within the same geographic zone (insert joke about California traffic here).

My prediction is that the newcomer will be forced to change its name.

By the way, would it matter if the original restaurant had gotten a registration? ABSOLUTELY! That is, the original restaurant would have a slightly easier time proving its rights in the name, and also they could request #trebledamages and their own #attorneysfees. Registrations are pretty cool….