Trying to trademark a meme? OK Boomer

First came the “OK Boomer” memes on social media. Then came the T-shirts, phone cases and other merchandise emblazoned with the viral retort. Now, get ready for an all-out war at the US Patent and Trademark Office and a possible television series using the phrase.

On Nov. 11, Fox Media filed a trademark application for a TV show called “OK Boomer,” one among a handful of applicants hoping to secure rights to the phrase hurled by Generation Z and millennials to older people who don’t understand their positions on various issues and anyone issuing condescending remarks. (This month, Chloe Swarbrick, a 25-year-old New Zealand lawmaker, even used it in Parliament to respond to a heckler during a debate on a zero carbon bill.)

At least 5 current trademark applications are pending for the phrase, according to the federal office’s online database. Fox Media said in its application that it wanted to use it for an “ongoing television series featuring reality competition, comedy, and game shows.” A spokeswoman for Fox Media, Alex Gillespie, said Tuesday that the company had no comment about the filing. A spokeswoman for the federal patent office, Julianne Metzger, said Tuesday that the office “does not comment on trademark applications.”

Separate applications filed Oct. 31 (by a man named Kevin Yen) and Nov. 14 (by jewelry company Rust Belt Creations Co.) want to use the phrase on clothing items. Another application, filed Nov. 12 (also by Rust Belt Creations) plans to sell decals and stickers. And an application filed Wednesday (by William Grundfest, a television show producer known for “Mad About You”) plans to use “OK Boomer” for live stage performances and lectures.

The other applicants did not immediately respond to requests for comment Tuesday.

In light of the phrase’s popularity, it’s not likely that any of the applications will be approved, said Josh Gerben, a trademark lawyer and founder of Gerben Law Firm, who noticed the filing by Fox Media on Monday.

“I think they are all very likely to meet the same fate, which is the USPTO will issue what is called a widely used message refusal,” Gerben said in an interview Tuesday, adding that the definition of a trademark “has to identify a single company or individual as a source of a product or service.”

Once something like a meme goes viral and is widely used by people, it cannot legally function as a trademark, he said.

It will typically take the office around four months to deliver a decision on the applications, Gerben said, but a pending application should not stop a company from beginning work.

“There is no requirement under US law to own a trademark registration to make a product under a name,” he said.

It’s unlikely that merchandise sellers will have any issues selling “OK Boomer” gear, he said, but none of them will be able to stop the sale of competing products.

Attempts to trademark popular cultural phrases are not new.

Earlier this year, Cardi B filed an application to trademark the catchphrase “Okurrr” to use on clothing and paper goods. It was denied over the summer, according to CNN.

LeBron James met the same fate when he tried to trademark “Taco Tuesday.” In its rejection in September, the office said the phrase was “a commonplace term, message or expression” that is widely used.

While Gerben said he expected to see other applications to trademark “OK Boomer,” he noted that viral memes are short-lived.

People filing trademarks are typically hoping to hit a gold mine, he said.

“People are only going to want their ‘OK Boomer’ shirts in likelihood for a little while,” he said.


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McDonald's loses 'Big Mac' trademark case to Irish chain Supermac's

McDonald's Corp has lost its rights to the trademark "Big Mac" in a European Union case ruling in favor of Ireland-based fast-food chain Supermac's, a decision from the EU's Spain-based Intellectual Property Office (EUIPO) showed.

The judgment, provided to Reuters by Supermac's, revoked McDonald's registration of the trademark, saying that the world's largest fast-food chain had not proven genuine use of it over the 5 years prior to the case being lodged in 2017.

The EUIPO did not respond to phone calls and emails requesting comment.

McDonald's was not immediately available to comment on the decision. The decision said the company can still appeal.

With the revocation, Supermac's said it can now expand in the United Kingdom and Europe. The ruling also allows the Irish chain to use the "Big Mac" name on any food items it will sell.

Supermac's said it had never had a product called "Big Mac" and that McDonald's had just used the similarity of the two names to block the Irish chain's expansion.

"Supermac's are delighted with their victory in the trademark application and in revoking the Big Mac trademark which had been in existence since 1996," founder Pat McDonagh told Reuters in an email.

"This is a great victory for business in general and stops bigger companies from "trademark bullying" by not allowing them to hoard trademarks without using them."

source: news.abs-cbn.com

Gucci, YSL sue Alibaba over counterfeit goods

NEW YORK - A group of luxury goods makers sued Alibaba Group Holding Ltd on Friday, contending the Chinese online shopping giant had knowingly made it possible for counterfeiters to sell their products throughout the world.

The lawsuit was filed in Manhattan federal court by Gucci, Yves Saint Laurent and other brands owned by Paris-based Kering SA seeking damages and an injunction for alleged violations of trademark and racketeering laws.

The lawsuit alleged that Alibaba had conspired to manufacture, offer for sale and traffic in counterfeit products bearing their trademarks without their permission.

A spokesman for Alibaba, Bob Christie, said in a statement:

"We continue to work in partnership with numerous brands to help them protect their intellectual property, and we have a strong track record of doing so. Unfortunately, Kering Group has chosen the path of wasteful litigation instead of the path of constructive cooperation. We believe this complaint has no basis and we will fight it vigorously."

Concerns over fake products on Alibaba's platforms, including online marketplace Taobao, have dogged it for years, although the U.S. Trade Representative removed Taobao from its list of "notorious markets" in 2012 in light of progress made.

Friday's lawsuit marked the second time in less than a year that the Kering brands had sued Alibaba over the alleged sale of counterfeit products.

An earlier lawsuit was filed in July only to be withdrawn the same month with the ability to refile it while the Kering units worked toward a resolution with Alibaba, according to court records.

The lawsuit alleged that Alibaba and its related entities "provide the marketplace advertising and other essential services necessary for counterfeiters to sell their counterfeit products to customers in the United States."

The lawsuit cited, for example, an alleged fake Gucci bag offered for $2 to $5 each by a Chinese merchant to buyers seeking at least 2,000 units. The authentic Gucci bag retails for $795, the complaint said.

Alibaba has allowed for counterfeit sales to continue even when it had been expressly informed that merchants were selling fake products, the lawsuit said.

The lawsuit seeks a court order that, among other things, would block Alibaba from offering or facilitating the sale of counterfeit products and unspecified damages that could include $2 per counterfeit item under a statutory regime.

The case is Gucci America Inc v. Alibaba Group Holding Ltd, U.S. District Court, Southern District of New York, No.15-03784.

source: www.abs-cbnnews.com

Oprah prevails in 'Own Your Power' lawsuit

NEW YORK - Oprah Winfrey has prevailed in a trademark lawsuit challenging her use of the phrase "Own Your Power" in her namesake magazine, on TV, on websites and in social media accounts.

U.S. District Judge Paul Crotty in Manhattan ruled on Thursday that Winfrey, her company Harpo Productions Inc and her publisher Hearst Corp demonstrated that the phrase "lacks the requisite distinctiveness" to deserve trademark protection.

Crotty also said Simone Kelly-Brown, a motivational speaker and business coach who said she trademarked the phrase in 2008, and her company Own Your Power Communications Inc did not show that Winfrey's use of the phrase would likely confuse consumers.

"Though they may aspire to do so, plaintiffs present no evidence indicating a likelihood of creating a global media presence capable of attracting an audience of millions," Crotty wrote.

Patricia Lawrence-Kolaras, a lawyer for the plaintiffs, said her clients plan to appeal Judge Crotty's decision.

Jonathan Donnellan, Hearst's deputy general counsel, said the defendants are pleased with the decision.

Crotty previously dismissed the lawsuit in March 2012, only to have a federal appeals court revive it 14 months later because the defendants did not show that their use of "Own Your Power" constituted fair use.

In Thursday's decision, Crotty said the defendants made that showing by having used the phrase in good faith, in conjunction with other words and images associated with Winfrey, and to convey an "overall message of self-empowerment."

Winfrey, 61, is one of the most popular talk-show hosts in history. She runs the cable network OWN, which she created in a joint venture with Discovery Communications Inc.

Forbes magazine on Thursday estimated Winfrey's net worth at $3 billion.

The case is Kelly-Brown et al v. Winfrey et al, U.S. District Court, Southern District of New York, No. 11-07875.

(Reporting by Jonathan Stempel in New York; Editing by David Gregorio and Andre Grenon)

source: www.abs-cbnnews.com

Converse sues over iconic Chuck Taylor shoe

NEW YORK - Worn by millions all over the world, the Converse sneaker is a slice of Americana beloved by everyone from British public school boys to rap stars, from aged rockers to athletes.

But popularity has a dark side.

Converse Inc is complaining that more than two dozen companies are knocking off, mass-producing and selling imitations of its legendary Chuck Taylor shoe. And it's had enough.

On Tuesday, the Nike subsidiary filed lawsuits against 31 companies for breach of trademark. Among the defendants are Wal-Mart, Ralph Lauren Corporation and Tory Burch.

Of the 31 companies, four are based in China, two in Canada, one in Australia, one in Italy and one in Japan.

Converse is also demanding that the International Trade Commission ban imports, distribution, sale and use of imitation Converse footwear in the United States.

"We welcome fair competition, but we do not believe companies have a right to copy the Chuck's trademarked look," said Jim Calhoun, president and CEO of Converse Inc.

The Chuck made its debut on US basketball courts in 1917 and since then, Converse says it has sold one billion pairs of the shoe worldwide that bear the Asserted Trademark.

It claims to have spent hundreds of millions of dollars on advertising the shoes, famous for their star, stripes and rubber toe tip, and acknowledges benefitting from extra publicity reaped from books, magazines, newspapers, movies and TV shows.

In one of the suits, Converse demands a trial by jury at the federal court in Brooklyn against Kmart Corporation.

It accuses the Illinois firm of trademark infringement, unfair competition, trademark dilution and unfair business practices.

The suit accuses Kmart of selling, distributing, promoting and advertising "confusingly similar" footwear and "intentionally and willfully" violating Converse's trademark rights.

source: www.abs-cbnnews.com

Court says Apple can still sell iPads in Shanghai

SHANGHAI — A Shanghai court has rejected a request in a trademark case to stop Apple selling its iPad tablet computers in the city, averting an embarrassing suspension of iPad sales in its own flagship stores.

The Shanghai Pudong New Area People’s Court denied a request by Proview Technology (Shenzhen) for the injunction and agreed to Apple’s request that the trademark infringement case be suspended pending a ruling in a separate case in a higher court.

The decision, announced on Thursday on the court’s website, gives Apple some leeway in a larger battle over the iPad trademark in China, which is important to Apple not only as a consumer market, but also because the country is a major production base for the iPad and other of its products.

Its attention will now shift to the appeal it has filed against an earlier decision in Proview’s favor by a court in Shenzhen, in the southern province of Guangdong.

“It’s a great help to Apple by giving it some breathing space,” said Ren Wenfeng, a lawyer at Guo Ce Law Office, which is not involved in the Proview-Apple dispute.

“But it’s not clear whether Apple will eventually win the trademark infringement case in China, as the crucial thing will be the ruling by the Guangdong higher court.”

The dispute, which dates back to a disagreement over what was covered in a deal for the transfer of the iPad trademark to Apple in 2009, has seen iPads seized by authorities in some Chinese cities.

Proview, which maintains that it holds the iPad trademark in China, has been suing Apple in various jurisdictions in the country for trademark infringement, while also using the courts to get retailers in some smaller cities to stop selling the tablet PCs.

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An injunction on iPad sales in cosmopolitan Shanghai would have dealt a bigger blow than the earlier cases, as it would have forced the U.S. tech giant to remove the tablet PCs from the shelves of its three own stores in Shanghai, one of its biggest markets.

“This is a wrong decision,” Roger Xie, Proview’s lawyer, said by telephone. “We will submit an application for the court to reconsider its decision.”

The outcome of the broader dispute, which Proview has said it is willing to settle out of court, will now hinge largely on the decision of the higher court in Guangdong, with a hearing in that case scheduled for February 29.

A decision against Apple in that case would set a precedent that would create an uphill battle in other cases in lower courts around the country.

Proview and its eight main creditors, which include lenders such as Bank of China, China Minsheng Banking Corp and China Merchants Bank Co Ltd, would prefer an out-of-court settlement with a sum of compensation, executives close to the situation said.

Proview’s parent, Hong Kong-listed Proview International Holdings Ltd, was the first Taiwanese technology company to list in Hong Kong, and by the end of the 1990s numbered itself among the top five computer monitor makers.

In 1999 it partnered with U.S. chip maker National Semiconductor to launch the I-PAD, a stripped-down desktop computer whose main selling points were its Internet connectivity and ease of use.

Proview continued to grow, shifting from computer monitors to become the world’s third-largest OEM manufacturer of flat panel TVs, but by August 2009, when Apple began trademark talks through a proxy, Proview had been badly hammered by the financial crisis.

Trading of its stock was suspended in Hong Kong in August 2010 after creditors in China went to court to recover assets. The company faces delisting in June if it cannot provide the Hong Kong Stock Exchange with a viable rescue plan.

source: interaksyon.com