Geekview: Cheeky Coverage of Recent Intellectual Property News

Posted by | January 27, 2013 | Geekview IP recap | No Comments

Cascadia Cup Clash Continues.

Vancouver holds the Cup, but who will take the Mark? The CASCADIA CUP trademark, that is. The Cascadia Cup is a non-league sanctioned trophy that supporters (avid fans) have awarded to the top northwest soccer team annually since 2004. The contestants for the Cup are the Portland Timbers, Seattle Sounders and the Vancouver Whitecaps. During the first year of the trophy, all three teams played in the United Soccer League (USL). Now they all play in Major League Soccer (MLS). In December, 2012, MLS filed an application to register the CASCADIA CUP trademark in Canada. Once the media caught wind of MLS’s steal earlier this month, the public cried for a foul to be called. As explained in an article on Forbes, Cascadia is not just a bioregion, it’s a way of life.  And mountain men don’t take lightly to theft. But, instead of a down and dirty soccer brawl — which, admittedly might be more fun for soccer fans to watch — the Supporter Groups that created the Cup (Emerald City Supporters, Timbers Army & the Vancouver South Sidersare fighting back through the legal system. On January 8, 2013 they incorporated as the Cascadia Cup Council, and on January 8, 2013 the newly formed corporation applied to register the CASCADIA CUP trademark in the U.S.  While the Council has a clear shot to its goal for brand protection in the States, we can only hope that MLS will act nobly and forfeit its position in Canada to the Council. And in the noble halls of East Carolina University, students are totally confused about where to go for classes tomorrow. . . 

Tomorrow starts where?

East Carolina wants to make sure that you know tomorrow starts here. Not at Cisco, not in South Carolina, but right here in East Carolina. Er, I mean at East Carolina University (ECU), which just happens to be in North Carolina. Confusing, I know. But is it as confusing as a University and a tech company using the same tagline? ECU thinks so, according to the lawsuit ECU filed against Cisco alleging  trademark infringement, false designation of origin, unfair competition, deceptive & unfair trade practices. ECU claims Cisco’s recent adoption of the TOMORROW STARTS HERE tagline will cause consumers to be confused into thinking that Cisco’s services originate with or are sponsored or approved by ECU (or vice-versa in the case of reverse confusion  — when the trademark owner is perceived to be an infringer). ECU has registered its TOMORROW STARTS HERE tagline in 2011 for “education services in the nature of courses at the university level.” Cisco launched its Tomorrow starts here campaign on December 10, 2012 on the same day that it filed 3 trademark applications for TOMORROW STARTS HERE for computer hardware & software, telecommunications services and technology design and information services. According to ECU’s complaint, the university utilized TOMORROW STARTS HERE in association with its College of Technology and Computer Science and its research, software development, intellectual property licensing and commercialization of technology and software long before Cisco’s adoption of the identical mark for overlapping goods and services. No doubt the marks are identical, but are ECU’s & Cisco’s goods & services so closely related that consumers are likely to be confused or are their similarities more cosmetic . . . 

Bad karma for Khroma.

Litigation is known to cause wrinkles, so it is good that the Kardashians have a cosmetics line. Too bad they chose to name it Khroma. That choice got them sued back in November by Chroma Makeup Studio, which sought a preliminary injunction preventing continued sales of KHROMA products during the lawsuit. Although the court found the CHROMA mark to be inherently distinctive and concluded that consumer confusion is likely under the 8-factor Sleekcraft test, it also found that the territorial scope of Chroma’s trademark rights are limited to Beverly Hills and Encino, California and the surrounding areas. Thus, the court declined to enjoin the Kardashians’ continued nationwide sales of KHROMA brand cosmetics, finding that it would be unfair to do so based on localized sales of Chroma products. Enter Lee Tillett, who has a cosmetics line called KROMA and a federal trademark registration to go along with it. The Kardashians brought a  declaratory judgment action lawsuit against Tillett’s company in November, asking the court to rule that they were not infringing the KROMA mark.  As announced in a recent press release on Kroma’s website, Tillet sued the Kardashians back in a countersuit for $10,000,000.00 against each of them and their Nevada IP holding company, Boldface. And so it goes. While no amount of concealer can mask the Kardashian sisters’ lackadaisical attitude about others’ trademark rights, the depth of their pocketbooks all but guarantees that they will crush Chroma and Kroma in court and in the marketplace.  And so it goes, and so it goes. It might go better with some crushed pomegranates, which, while tasty, apparently do not do many of the things the makers of POM Wonderful advertised them to . . . 

POM health claims are full of baloney.

POM Wonderful  (POM) does not treat or cure heart disease, rather all the litigation it is involved in probably contributes to it. The FTC spent over two years litigating a false advertising case against POM, issuing an opinion just last week. In an almost incomprehensibly long sentence, the FTC ordered POM to stop advertising that its products treat, prevent, diagnose, mitigate or cure any diseases unless such claims are substantiated by competent, reliable scientific evidence. At least, I think that is what this says:


IT IS ORDERED that Respondents, directly or through any corporation, partnership, subsidiary, division, trade name, or other device, in connection with the manufacturing, labeling, advertising, promotion, offering for sale, sale, or distribution of any Covered Product, in or affecting commerce, shall not make any representation in any manner, expressly or by implication, including through the use of a product name, endorsement, depiction, illustration, trademark, or trade name, that such product is effective in the diagnosis, cure, mitigation, treatment, or prevention of any disease, including, but not limited to, any representation that the product will treat, prevent or reduce the risk of heart disease, including by decreasing arterial plaque, lowering blood pressure, or improving blood flow to the heart; treat, prevent or reduce the risk of prostate cancer; or treat, prevent or reduce the risk of erectile dysfunction; unless the representation is non-misleading and, at the time of making such representation, Respondents possess and rely upon competent and reliable scientific evidence that, when considered in light of the entire body of relevant and reliable scientific evidence, is sufficient to substantiate that the representation is true.
 I feel safer now. Don’t you?

At its core, trademark law is consumer protection law.  Consumers have the right to rely on brands for consistency of source and quality and to rely on advertising for truthfulness. When that’s not the case, court cases ensue (pun intended).

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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