It is not often that craft beer lovers and ordinary St. Louisans will take interest in a trademark dispute. However, one such case caught the attention of both demographics. In this regard, long-standing conservative activist, Phyllis Schlafly, and her son, Dr. Bruce S. Schlafly, filed oppositions to the application filed by the St. Louis Brewery, LLC (manufacturers of Schlafly beer) to register the word SCHLAFLY for use in connection with beer products. The Schlaflys filed separate notices of opposition to the brewery’s registration of the mark on the ground that the word SCHLAFLY is primarily merely a surname under the trademark law and had not acquired distinctiveness to be eligible for registration. As an intellectual property attorney and an aficionado of good beer, this case really sparked my interest (As a person familiar with Schlafly products since 1991, I have to confess some bias). Nevertheless, the oppositions struck me as legal backwash.
In a decision that surprised no one who has remotely followed the craft beer industry, on August 4, 2016, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office dismissed the oppositions filed by the Schlaflys. (more…)
On May 11, 2016, a new federal law protecting trade secrets (the “Defend Trade Secrets Act”) went into effect. Prior to the law going into effect, remedies for trade secret theft were governed by the laws of the various states, which laws often provided for a lack of uniformity in enforcing trade secret protections. The new federal law has many facets to it, but the major change brought about by the law is that now, companies that have been the victim of trade secret theft have the option of suing under the federal statute, which allows for federal court jurisdiction and should provide for more uniformity in trade secret protection. (more…)
In today’s age, people and enterprises often routinely record personal and business communications for a variety of valid reasons. However, those persons and companies residing and doing business in Illinois should become familiar with the Illinois Eavesdropping Statute (720 ILCS 5/Art. 14) before recording conversations or allowing third parties to sit in on phone calls. This statute is rife with provisions that: impose restrictions on both law enforcement personnel and civilians on recording conversations and electronic communications; impose criminal liability and civil liability for violations of the statue; and set out exemptions from that liability.
The statute received recent publicity in connection with cases involving the prosecution of citizens for recording police offers and court personnel. In 2014, in response to decisions of the Illinois Supreme Court adjudicating its core provisions unconstitutional, the Illinois legislature amended the statute. The statute has long been recognized as one of the nation’s strictest statutes criminalizing eavesdropping and the amendments do not do much to change that distinction. As noted, the statute not only criminalizes eavesdropping, it provides for civil liability for its violation. Here are some of the more significant features of the statute. (more…)
Clients often ask me: “Can we trademark this?” or “Should we trademark this?”
I respond bluntly, but politely: “In the United States, we do not “trademark” anything.”
Admittedly, I can be an annoying verbal perfectionist. However, the true reason I respond bluntly is because it genuinely matters to me that my clients fully understand the core, easily graspable principles of how trademark and service mark rights are created. A long-winded (i.e., “typical lawyer”) explanation, with caveats, disclaimers and war stories would thwart that objective. As a matter of fundamental branding acumen and saving attorneys’ fees, all businesses must to understand how marks (i.e., their brands) are created. Startup companies should have this understanding right from the beginning, particularly if they have a near term exit strategy as part of their start up strategy. (more…)
This past October, in nClosures Inc. v. Block and Company, Inc., the 7th Circuit Court of Appeals ruled that under Illinois law, a confidentiality agreement is not enforceable in absence of proof that reasonable efforts were undertaken to maintain the confidentiality of information shared pursuant to the agreement.
A. Why is this ruling important?
Virtually every company uses confidentiality agreements. Many do so routinely — with the full expectation they will be enforced on the basis that the parties contractually agreed to treat all information shared as confidential.
The nClosures ruling turns that expectation on its head and indicates that confidentiality agreements are not automatically enforceable and are only enforceable when the shared information is actually confidential. (more…)
What we Learned From the Specialized Trademark Incident
Part 3 – The Internet Determines Whether Marks are Confusingly Similar.
In my last post, I followed upon the discussion of the Specialized trademark saga. That saga provides another important pointer for trademark practitioners.
A trademark can only have one owner — the owner is the exclusive source or quality control agent of the goods sold under the mark. (That owner may in turn license others if the owner is monitoring the quality of goods sold under the mark. So in the case here, ASI was assumedly monitoring the quality of Specialized bikes sold under the Roubaix mark.) This is an important point, because it puts a trademark owner in a difficult position. (more…)
What we Learned From the Specialized Trademark Incident
Part 2 – Never Miss an Opportunity to Publicly Scold Your Competitor.
In my last post, I opened a discussion on the Specialized trademark saga, with the goal of highlighting what hard rules, according to the Internet, apply when dealing with a mark infringement issue. Our first take-away point was this little gem: Mark owners who fear infringement must investigate the veteran status of the alleged infringer before sending out a cease and desist letter. The saga teaches us a second rule, which I explain below. (more…)
What We Learned From the Specialized Trademark Incident…
Part 1 – Always Investigate the Infringer’s Military Service History
People always complain: Why must everything in the law be so uncertain? What happened to black and white rules of law? How come everything involves a multi-factor balancing test that depends upon facts that require a 36-month lawsuit to uncover and a jury three days to decide? Well, sometimes, current events provide us a lesson that does provide us with black and white principles of law.
For example, three months ago the Specialized Bicycle company sparked a wildfire of Internet discussion when it sent a letter to a Cochrane, Alberta bicycle shop requesting it cease from using the word ROUBAIX as part of its name. It seems the bicycle shop decided to call itself “Café Roubaix.” The backlash supposedly went “viral” and even included reports appearing on cycling media outlets. An example of the “jumping on the pile” response from the Internet are the several articles appearing last December on the Velonews website. I especially liked the story objectively entitled: “Specialized’s disastrous trademark case is unnecessary to defend the brand.” So what are the hard and fast rules of law we learned from this incident? Well, here is the first rule: Investigate whether the alleged infringer is a war veteran.
Every story I came across about this matter pointed out that the bicycle shop owner was a veteran of the Afghanistan war. And though I am greatly in favor of veteran rights and accommodations (and was so years before it became Hollywood fashionable to do so), I was not sure what veteran status had to do with trademark rights. Of course, the Internet is never wrong. In discussing the pertinent merits of the Specialized trademark matter, the Internet nabobs would certainly not key onto an immaterial point just to create press? Would they? That would be so highly unusual.
I instruct all clients forming a new business or rolling out a new brand that the best money one can spend is on a comprehensive search to determine what other marks and names may be out in the business world that could pose infringement issues. In this case, the bike shop’s owner apparently opened his shop without even checking the Canadian intellectual property office’s registry of marks. Had he, he would have seen that Specialized owned a registration for the mark “ROUBAIX” for use in connection with bicycles and bicycle components. (Be honest reader, if you saw that registration, would you open up a bicycle shop named “Café Roubaix” without evaluating the trademark risks?) Nevertheless, comment posters vilified Specialized as a trademark bully. So putting aside the question of whether there is any type of infringement between Specialized’s registered mark and “Café Roubaix,” the Internet tells us that mark owners who fear infringement must investigate the veteran status of the alleged infringer before sending out a cease and desist letter. According to the Specialized case, this is a relevant inquiry under trademark law. By extension of this first rule, one must not assert mark rights against a veteran of the Afghanistan conflict. I have no idea what should happen if the alleged infringer has a blemished military record.