Tag: federal

Costco’s “Tiff” gets Costly

According to Tiffany & Co., imitation is NOT the sincerest form of flattery!

A federal jury ruled Thursday that Costco Wholesale Corp. should pay $5.5 million to Tiffany & Co. for violating the iconic jeweler’s trademark through the sale of diamond engagement rings labeled “Tiffany.”  The $5.5 million far surpasses the $781,000 that Costco has argued should be the maximum it owes, which the retailer says it based on some 2,500 rings that the court ruled infringed on the trademark name.

Costco’s argument that it was merely a description of ring settings is not all that far-fetched. A “Tiffany” setting, developed in the 19th century by Charles Lewis Tiffany to raise up a diamond for maximum sparkle, is often considered to be a type of ring setting, and people inside and outside the industry toss the term around similarly to how the word “Kleenex” has become synonymous with facial tissue.

While the diamonds may be genuine, the court says Costco went too far with its use of the word “Tiffany,” to the point of letting — or even encouraging — customers to believe they were buying Tiffany rings, and not just rings with Tiffany settings.

Costco last year took steps to address this issue, agreeing with a request by Tiffany to stop using its name. Costco also sent a letter to customers clarifying that the rings were not “Tiffany & Co.” products and offered refunds to those who were disappointed.   Good thing Costco didn’t pack its rings in robins’ egg blue boxes!  That color is also a Federally registered trademark: “The mark consists of a shade of blue often referred to as robin’s-egg blue which is used on boxes” according to the registration.

Redskins Offensive Trademark

REDSKINS TIME OUT AT FEDERAL APPEALS COURT

A federal appeals court has postponed hearing arguments as to whether the trademark REDSKINS is offensive.
Both the team and the federal government agreed the case should be put on hold until the U.S. Supreme Court decides another trademark case that raises the same basic issues. The team is challenging a decision by the U.S. Patent and Trademark Office to cancel the trademark for the name “Redskins” on the grounds that it is offensive.

While that case was pending, the U.S. Supreme Court agreed to hear a dispute involving Asian American musicians from Portland, who were refused trademark registration for their band’s name, The Slants (see my other Blog Post on this). The USPTO refused to register THE SLANTS as a federal trademark for names considered offensive, which is the same law at issue in the Redskins case.

A lower court found that provision to be unconstitutional, as a restraint on free speech, so the feds are now appealing. A decision is expected by late June. Although the loss of a registration would not strip the team from being able to use the name, it would bar them from federal benefit protections including the right to exclusive nationwide use of the mark, and to enforce its trademark rights against infringers.

There are many reasons why a trademark might be threatened, one of which could be changes on social standards, or perhaps changing meanings.

The history of the fight for the Redskins brand can be found on Wikipedia here

See also, our article on the band ‘The Slants’

“The Slants” Trademark Case Heard by Supreme Court

“The Slants” had their trademark challenged as disparaging and took it to the Supreme Court.

Asian American Simon Tam is battling the federal government over his band’s trademark, under a federal law that forbids the registration of “disparaging” marks.  The Slants first tried to register their band name in 2011, but the U.S. Patent and Trademark Office (“USPTO”) refused the trademark application for “The Slants” as being offensive to people of Asian ancestry.  Tam appealed.

Last December, the appeals court of the federal circuit ruled that the law in question [Section 2(a) of the Trademark Act, which prohibits registration of a trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”]  violates the Constitution.

“It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys,” said the appeals court in the ruling, which noted that denying The Slants the request for a trademark amounted to “viewpoint discrimination.”

The dispute provoked a lively Supreme Court argument in January over free speech, political correctness and the government’s refusal to sanction what it sees as a racial slur.

The justices struggled over whether the refusal by Congress and the Patent and Trademark Office’s to register trademarks that can be seen as disparaging people or their beliefs violates the 1st Amendment.

While The Slants are proud of their music, it’s always gone hand-in-hand with political advocacy. They seek to help other marginalized groups, ranging from gays and lesbians to the Black Lives Matter movement, through workshops and charitable activities.

“Arts and activism have always moved forward together,” Tam says.

This case is similar to the Redskins case and can be found in much more detail on wikipedia

Trademarks for Start-Ups – Do I need to worry about a trademark when my business is just getting started?

QUESTION:

I just thought up a GREAT name for my start-up but I did not do a trademark search. The business name looks clear. It took forever to come up with this name! Do I really have to worry about trademarks now? Money is so tight!

ANSWER:

Coming up with the perfect name is the most important step to attracting customers, but what about a trademark search? Let’s say you want to register SUZIE’S CUPCAKES LLC in the State of Delaware, and you’ve got your cupcake pans greased, and are ready to start baking and shipping. And you’ve registered suziescupcakes.com as your domain. Sounds yummy!

But, not so fast! SUSIECAKES is a Federal trademark and even though it uses a different spelling of “Suzie” and the word “cakes” not “cupcakes,” the owner of that trademark could threaten you with a trademark infringement lawsuit. Why? Because SUZIE’S CUPCAKES could well be considered “confusingly similar” to SUSIECAKES, and the SUSIECAKES registered trademark is enforceable in all 50 States. While you may not be ready to file for a Federal trademark just yet, you should consider having a experienced trademark attorney conduct a search and give you a legal opinion on the use of your business name. Many trademark attorneys charge a fixed fee for a search and opinion. It could be the best investment you’ll ever make for your business!

Disclaimer: The foregoing fact situation has been created by way of example only and is not intended, nor should be construed as, legal advice.