Category: Branding

Branding, Law, Marketing, Trademarks

Eagle Rare Unable to Claw Away Eagle Trace in Battle Over Eagle Park. 

Eagle statue

Applicant, Eagle Trace Brewing Company LLC, applied to register the following standard-character marks on the Principal Register: EAGLE PARK DISTILLING for “distilled spirits; alcoholic beverages, except beer” in International Class 33;1 and EAGLE PARK BREWING COMPANY for “alcoholic beverages, namely beer” in International Class 32.

Sazerac Brands, opposed both applications on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting prior rights in and ownership of marks registered on the Principal Register: EAGLE RARE (standard characters) for “bourbon whiskey” in International Class 33;3 and for “whiskey” in International Class 33.

Despite some similarities, including the presence of the word Eagle in the marks, the Board dismissed the opposition.

Read the USPTO TTAB decision here: 

Click to access ttabvue-91272260-OPP-46.pdf

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Branding, Copyright, Entertainment, Influencer Marketing, Trademarks, Unfair Competition

Kardashian YouTube Video of Office Furniture Prompts Lawsuit Against Celeb & Interior Designer

How Can Designers Protect Their Intellectual Property?

Interior Design and knockoff furniture made headlines in a recent New York Times article, most likely due to the celebrity attached to the controversy. The complaint filed by the Judd Foundation against interior design firm Clements Design, Inc. and the designer’s client, Kim Kardashian, alleges claims for trademark infringement, copyright infringement, unfair competition, false advertising, and false endorsement related to the sale and promotion of allegedly knockoff Donald Judd designed furniture.

Filed in California, the Judd Foundation brings its unfair competition claims primarily under 15 USC 1125(a) based upon Clements Design’s and Kardashian’s use of alleged Judd Design knock-off, publicized on Kardashian’s YouTube channel in August 2022.

For more information about this lawsuit, please check out this Business of Home podcast in which I’m honored to be mentioned. That podcast is available here.

Designers take note: the Judd Foundation (in-artfully) alleges the Designer’s use of a photograph of a Judd-designed table in the Designer’s proposal to Kardashian is copyright infringement leading to unfair competition.

Contact Us Today

We have more than 25 years of experience representing clients in state and federal courts, and in the United States Patent & Trademark Office.

Adler Law Group is located in Chicago, Illinois, but serves clients throughout the United States including New York, as well as international clients.

Reach out today for all your trademark, copyright, licensing, litigation and business issues.

Advertising, Branding, Business, Entertainment, Privacy, Publicity Rights

Ping® by Adlerlaw January 2024 – A Brief Comparison of NY and IL NIL laws.

This month’s issue of Ping® highlights some trends in digital advertising. On June 29th, 2021, Illinois passed a Name, Image, Likeness (NIL) law for their colleges and institutions allowing a student-athlete to earn compensation commensurate with market value while enrolled at a postsecondary educational institution, and obtain and retain a certified agent for any matter or activity relating to such compensation.  This has prompted some discussions around different states treatment of right of publicity laws. This month’s issue of Ping® briefly compares NY and IL NIL laws.

Illinois vs New York Right of Publicity Acts: Key Differences and Protections

A Brief Comparison of the Illinois & New York Right of Publicity Acts

The Illinois Right of Publicity Act

The Illinois Right of Publicity Act is a state law that protects the commercial value of an individual’s identity. It prohibits the unauthorized use of an individual’s “Identity,” which means any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener, including but not limited to (i) name, (ii) signature, (iii) photograph, (iv) image, (v) likeness, or (vi) voice. The act also allows individuals to transfer their right of publicity to their heirs after death. However, the Illinois law is unique in that it provides for a broad definition of “commercial purpose,” which includes any use that is “primarily intended for commercial advantage or monetary gain.” This means that even non-commercial uses of an individual’s identity could be considered a violation of the law if they are intended to promote a product or service.

Learn More About Illinois Right of Publicity Act

The New York Right of Publicity Act

The New York Right of Publicity Act is another state law that protects an individual’s right to control the commercial use of their name, image, or likeness. However, unlike the Illinois law, New York’s law only applies to uses for advertising or trade purposes. This means that individuals in New York may have less protection against non-commercial uses of their identity. Additionally, the New York law does not provide for the transfer of an individual’s right of publicity after death, meaning that the right to control the commercial use of their identity ends when they pass away.

However, the New York Act provides some post-mortem protection for certain commercial exploitations of individuals’ rights of publicity for 40 years after death for those persons whose publicity rights had commercial value, at the time of or due to, their death. There are a number of other limitations, exceptions and nuances, including that protections only arise from deaths after May 29, 2021.

Learn More About New York Right of Publicity Act

Advertising, Branding, Business, Design, Infringement, Law, Trademarks

Ping® By Adlerlaw – The Importance of Trademarks for Lighting Designers.

A recent Trademark Trial and Appeal Board (TTAB) decision is noteworthy for the lighting-design industry. This trademark application rejection sheds light on strategies for lighting designers seeking to protect their trademarks. This begins with the approach to the application process itself. 

In In re B-K Lighting, Inc., Serial No. 88769422 (January 27, 2023) [not precedential], the USPTO refused to register “AGI2” for “lighting fixtures,” finding confusion likely with the registered mark “AGI & Design” for lights, lighting assemblies, and light fixtures for architectural signage. As is often the case, applicant B-K Lighting was left scrambling to distinguish its trademark from the cited “AGI & Design” registration. The TTAB’s analysis of nature and relatedness of the goods, the trade channels, and the classes of purchasers, may be helpful to other brands in the lighting industry when trying to protect their trademarks.

Read the full article here.

Advertising, Affiliate Marketing, Branding, Business, Content Development, Creative Content, Design, Entertainment, Evidence, furniture, Law, Marketing, Patent, Strategy, Trademarks

Ping® – Arts, Entertainment, Media and Advertising Law News – Protecting Furniture Design Keeps Getting Harder

Herman Miller, Inc. – a leading furniture brand and purveyor of the iconic Eames Chair Design – suffered a loss at US Trademark Trial and Appeal Board (TTAB) in its bid to protect as “trade dress” the design of the chair. The case involves a well-known chair design dating from the 1940’s, by designers Ray and Charles Eames. The chair ultimately was recognized by Time Magazine as the Best Design of the 20th Century, and now is in the design collections of numerous museums. Herman Miller sought registration of most of the chair’s configuration as a mark, depicted in more than one view, for “furniture, namely, chairs.”

The court weighed each of the Morton-Norwich factors, concluding that the proposed three-dimensional product configuration as a whole indicates that it is functional. The court found that patent evidence, the advertisements touting utilitarian advantages of the design, and the limited availability of alternative designs that would work equally well, proved functionality.

Key Take Aways:

  1. Beware of patent evidence in trade dress protection due to risk that distinctive design elements be treated as de jure functional. In general, examining attorneys no longer make this distinction in Office actions that refuse registration based on functionality. De facto functionality is not a ground for refusal. In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1282 (TTAB 2000); In re Parkway Mach. Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB 1999).
  2. Ensure that advertising promotes the nonfunctional design elements, such “look for” advertising. Examples include evidence, including SEO data, that connected the applicant’s efforts to promote the applied-for mark as a trademark and consumers’ ability to conceive of the applied-for mark as such, and examples of unsolicited media coverage

Advertising, Affiliate Marketing, Branding, Business, Cloud, Compliance, Contracts, Copyright, cyber risk, cybersecurity, data privacy, Ecommerce, FTC, Influencer Marketing, Internet, Law, Marketing, Media, Monetizing Content, Social Media, Trademarks

What Is Cyberlaw?

On November 13, I had the honor of providing a lecture on Cyberlaw to students at the Boston College Law School. Virtually, of course. I had been asked to talk about trends in Cyberlaw with a specific focus on issues related to intellectual property.

So what is Cyberlaw? Simply put, it is the “Rules of the Road” for the “information superhighway.” Cyber law is the law that governs rights, obligations and remedies of people and transactions conducted over global computer networks.

In a year that has seen hyperbolic growth in technology, commerce, and communications, this topic couldn’t be more timely. In order to frame the discussion, the scope featured a discussion of the Three Cs of Cyberlaw: Connections, Content and Commerce.

The first part of the discussion centered around Content, or issues related to Copyright, such as Free Speech/First Amendment CDA Sec. 230, Creative Works, Media and Entertainment, UGC and the DMCA.

The Second part of the discussion centered around Commerce or issues related to Trademarks, marketing and branding, such as: Marketing/Advertising, Domain Names – Cyberpiracy prevention, Keyword Advertising and Social Advertising.

The third and final part of the discussion focused on Connections and Communications and issues related to Personal Data, Stalking, Harassment, Surveillance and Sovereignty, issues around Social Media Freedom of Speech v. Freedom of Reach, and the latest developments around Political speech online.

The lecture closed with a Q&A focused primarily on Navigating Law School and Professional Practice.

Advertising, Affiliate Marketing, Branding, cloud computing, Ecommerce, Marketing, SaaS, Social Media, Strategy

COVID-19 is changing consumer behavior in important and probably permanent ways.

COVID-19 is changing consumer behavior in important and probably permanent ways. This is why marketers should take notice.

Sparked by the coronavirus pandemic, consumer and business e-commerce transactions accelerated the ongoing shift toward online commerce. This enables even more marketing opportunities that create real time connections with customers. From pink ribbons to Product Red, social feeds are full of calls to support those in need. In this way, online cause marketing can drive “consumption philanthropy” replacing mindless buying with virtuous action. Tying cause-worthy buying with the latest ecommerce boom creates new opportunities for marketers.

However, before turning your blog, social media accounts, or website into a funnel to raise money for First Responders, it is important to understand that all states have laws that govern charitable solicitations. Running promotions and undertaking solicitations for charities means that unless the business itself is set up as a tax exempt charitable entity, these activities are considered “Commercial co-ventures.” Generally this is a person (or business) who, for profit, is primarily engaged in commerce other than in connection with soliciting for charities and who conducts a charitable sales promotion.

In Illinois, Sec.3. (b) of the Solicitation for Charity Act provides the following persons shall not be required to register with the Attorney General: 3. “Persons requesting any contributions for the … benefit of any individual, specified by name at the time of the solicitation, if the contributions collected are turned over to the named beneficiary, first deducting reasonable expenses for costs of banquets, or social gatherings, if any, provided all fund raising functions are carried on by persons who are unpaid, directly or indirectly, for such services.” Emphasis mine.

Even if you are not raising money for a good cause, consider using disclaimer s to let your audience know product and company names are trademarks of the respective owners and does not imply any affiliation with or endorsement by them.

Advertising, Branding, Business, Copyright, Creative Content, Fashion Law, Law, Legislation, Photography, Uncategorized

Is It Necessary To Register A Design Copyright?

A client was asking “is it necessary to fill out all the paperwork to register a design even though the law says you already own it?”

It’s a good question. Technically, under the Copyright Act as amended in 1976, the author (creator) of a work owns the copyright. The 1976 Act states that copyright protection extends to original works that are fixed in a tangible medium of expression. This wording broadens the scope of federal statutory copyright protection from the previous “publication” standard to a “fixation” standard. No further action is necessary. Under previous versions of the law, there were publication requirements to perfect ownership.

Under section 102 of the Act, copyright protection extends to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”

Until the ’76 statutory revision to U.S. copyright law the Copyright Act of 1909 governed, under which federal copyright protection attached only when those works were 1) published and 2) had a notice of copyright affixed. In addition, state copyright law governed protection for unpublished works creating inconsistencies.

Despite the successful streamlining and efficiency of rights creation and enforcement, some challenges and inconsistencies remained. Most noticeably, there had been spit in the federal courts. Some courts required the certificate to litigate, some courts only required proof that an application had been filed.

Last year, the US Supreme Court ruled that in order for a copyright owner to enforce its rights against infringers, the copyright owner must have a registration certificate for the works that are being infringed.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ___ (2019) (PDF here) decided March 4, 2019, the US Supreme Court resolved this split among courts around the country by holding that the mere filing of a copyright application is not sufficient to allow a copyright owner to file suit – actual approval of a copyright application by the United States Copyright Office is required before suit can be filed. Approval comes only in the form of a Registration Certificate.

Returning to the client’s question, while it is true that the Copyright Act says  one owns the copyright in a work when it is fixed, it is no longer true that one can ignore the registration requirements. Yes, one does not have to do anything formal to own a copyright in a work one creates. However, one cannot enforce those rights without the registration certificate in hand. For all practical purposes, there is no reason not to register the copyright in any design, pattern or other distinctive element you create. The fees are relatively low ($65.00) and completing/filing the form can be done electronically.

A word to the wise, like all areas of Intellectual Property, there are nuances that are easily overlooked by the uninitiated. You should always consult with an experienced copyright lawyer when evaluating any individual situation.

Advertising, Branding, Business, Chicago, Contracts, Copyright, Creative Content, Ecommerce, Entrepreneurs, Infringement, interior design, Internet, Law, Litigation, Marketing, Ownership, Photography, Pinterest, Platforms, Restrictive Covenants, Small Business, Start-ups, Strategy, Trademarks, Twitter, Uncategorized

Advanced Issues in Contracts for Interior Designers

Every business transaction is governed by contract law, even if the parties don’t realize it. Despite the overwhelming role it plays in our lives, contract law can be incredibly difficult to understand.

Successful Interior Designers know how to manage the legal needs of the business while bringing a creative vision to life for a client or project. Confusion about rights, obligations, and remedies when things go wrong can strain and even ruin an otherwise promising professional relationship.

This program teaches new designers and entrepreneurs answers to some basic questions, such as:

  • What to do when clients / vendors / contractors don’t pay?
  • How can one use Indemnifications, Disclaimers and Limitations of Liability clauses to balance business risk when the parties may not be economically balanced?
  • What types of remedies are available and what are the limitations in scope for certain types of monetary and “equitable” remedies?

Take a deeper dive into advanced issues for interior design professionals. Learn how contracts can protect your design business and how to safeguard your rights.

Qualifies for .1 CEU credit.

This program was originally delivered on Aug. 17, 2017 at the Design Center at theMART 14th Floor Conference Center, 222 Merchandise Mart Plaza, Chicago, IL 60654

Advertising, Affiliate Marketing, Branding, Content Development, Copyright, Creative Content, Facebook, FTC, Healthcare, Internet, Marketing, Media, mHealth, Regulatory Compliance, Social Media, Strategy, Technology

TRENDS IN DIGITAL MARKETING

Digital Healthcare Continues to Evolve

Widespread distribution of digital communications technology (phone, tablets, ultra-portable laptops, gaming devices) has changed the nature of marketing. However, medical practices and other healthcare providers are reluctant to use digital marketing techniques. While most industries move away from the distribution of massive, shotgun-style email and snail-mail campaigns and toward targeted, social media and demographic-driven efforts healthcare marketing is falling behind.

Digital marketing execs face many challenges getting the message and media mix right. Early adopters provide a look into the changing nature of marketing. From a pragmatic perspective, there are barriers to entry for digital healthcare marketing efforts (privacy, regulatory), the growing use of content marketing (native, branded), social marketing, and electronic marketing strategies (email marketing, online scheduling, etc.) in the healthcare field and customer-oriented services that can be a strategic use of the Internet for marketing to providers, patients and third-party service providers.

The evolution of healthcare marketing toward greater use of “native,” sharable and relevant content provides both obstacles and opportunities in acquisition and use of third-party media content.

Use of content marketing is increasing.

On average, 35% of all marketers use print magazines, but 47% of healthcare marketers use them. In print, 28% of marketers use print newsletters compared to 43% of healthcare marketers, and 26% of marketers use print for annual reporting compared to 36% in healthcare. When it comes to using blogs, 74% of all marketers use blogs compared to only 58% in the healthcare industry. The situation is similar for social networks, with an interesting exception – 71% of healthcare marketers make use of YouTube, more than the average of 63%. This is likely because healthcare professionals use YouTube to televise procedures and interview doctors.

By now marketers should be accustomed to using their own creative content. However, focusing on owned assets like a website and email won’t move the needle enough to impact the bottom line. As a result, healthcare marketers are integrating new content (in the form or “advertorials” or “native” content). This in turn is developed alongside a long-term SEO strategy.

Native advertising distributes “sponsored” content on relevant pages, delivering relevant content to the right audience in a way that is non-intrusive and integrates with the user experience.

Native Content often involves use of product/service reviews and endorsements. It is important to include proper disclosures when using native content. The FTC will initiate enforcement actions against marketers that deceive consumers.

In the Matter of Son Le and Bao Le, the FTC charged that the two brothers deceived consumers by directing them to review websites that claimed to be independent but were not, and by failing to disclose that one of the brothers posted online product endorsements without disclosing his financial interest in the sale of the products.