Canadian Olympic Committee Sues North Face for Misleading Customers

An Accused North Face Product

Canadian news is reporting that the Canadian Olympic Committee (the "COC") is suing apparel maker The North Face, alleging that it infringed upon the Olympic trademarks and attempted to mislead customers into believing that it had sponsored the games, when it hasn't.

The lawsuit, which was recently filed in British Columbia, formally alleges that the North Face sold jackets and bags adorned with the maple leaf and "RU/14", which the COC alleges is a reference to Russia and the 2014 Sochi Games, while others featured "2.7.14", an alleged reference to the date of this week's opening ceremonies.  Further, the lawsuit alleges that some of the items were identified with such names as "Men's Sochi Full Zip Hoodie."

The lawsuit claims that the COC had warned the North Face about its concerns on multiple occasions, but that the warnings went largely unheeded.  

The North Face apparently responded by saying:  "[W]e are not an official sponsor of the COC or Team Canada and never indicated we were.  We do not agree with the COC's claims and we are disappointed they have taken this action."

The COC has been accused of overzealously protecting its brand. For example, in 2004, the COC launched a high-profile battle to force the Olympia Pizza and Pasta Restaurant in Vancouver to remove signs that featured the Olympic rings and torch. The restaurant owner defied the committee's demand, and the signage apparently still remains in place today.

"Thanksgivingukkah" Trademarked Over One Year Ago

Screenshot from ModernTribe.com

"Thanksgivingukkah" is the term being used to describe the very rare confluence of Hannukah and Thanksgiving.

However, those seeking to commercialize the term may want to think twice:  An enterprising Boston resident had the prescience over a year ago to trademark the term.

Local Boston news is reporting that Dana Gitell trademarked the term in 2012, and has partnered with Atlanta-based company Modern Tribe to create a line of Thanksgivingukkah themed merchandise, including an apron with a turkey and a menorah on it.

Tommy Gun Maker Sues Al Capone For Boozy Trademark Infringement

Saeilo Enterprises, Inc., current manufacturer of the old school Thompson submachine gun (left), often referred to as a “Tommy gun,” recently filed a lawsuit claiming trademark infringement against Chicago-based liquor company, Alphonse Capone Enterprises, Inc.  Capone Enterprises has no clear legal connection to the Chicago gangster of the 1920's, but is clearly attempting to profit from an association with the notorious Public Enemy Number One.

At issue is the fact that Capone Industries has been selling a new brand of vodka under the Tommy Guns name in a bottle that is intentionally shaped like a Tommy gun. 

Saeilo owns a federally registered trademark for TOMMY GUN in connection with actual firearms, and the trademark has been used constantly since 1920 in connection therewith (including use by the Chicago gangster, not the Chicago liquor company).

The gun maker is also the owner of a separate TOMMY GUN trademark that covers clothing. Saelio does not apparently own any federal trademark on the name for alcoholic beverages.


In contrast, Al Capone Enterprises owns a current federally registered trademark for TOMMY GUN for beer, wines and spirits.

The complaint, which was filed in federal court in Chicago in March 2013, alleges that Al Capone Industries does not have authorization to use the Tommy Gun trademarks on alcoholic beverages that carry a reproduction of the Tommy Gun name and distinctive shape. 

Additionally, Saeilo claims that Capone’s conduct not only violates federal trademark laws, but also Illinois state law and common law. Saeilo further brought claims under Illinois’ Trademark Registration and Protection Act, as well as the Illinois Deceptive Trade Practices Act.

As owner of the trade dress rights in the design of the Thompson submachine gun or “Tommy Gun,” Saeilo claimed that Capone’s unlawful use of the Tommy Gun trade dress was likely to cause “confusion or mistake and/or is likely to deceive consumers as to the affiliation, connection of association of [Capone] with Saeilo,” and of course, Saeilo seeks a permanent injunction and damages.

An interesting legal question arises as to whether and when phrases used to describe firearms can be legally trademarked by the gunmaker, or even by others, in connection with alcoholic beverages.

For example, the trademark of Colt Buntline Special .45 is owned by Colt's Patent Firearms Manufacturer. But Colt 45 in connection with clothing is owned by Pabst Brewing Company. It is unclear why Pabst does not own a federally registered trademark for Colt 45 in connection with its malt liquor beverages.

What if the Redskins Lose Their Trademarks, But Keep Using Them?

The Washington Redskins' logo

On Thursday, March 7, 2013 the Trademark Trial and Appeal Board for U.S. Patent and Trademark Office (the "TTAB") heard oral arguments in a case involving a decades-old question: whether the Washington Redskins' federal trademark registrations should be cancelled because they are allegedly offensive to Native Americans.

The case has now been fully briefed and submitted for a decision.  All that remains now is the court's determination: Will the Washington Redskins franchise lose its federal trademark registrations?

Commentators' predictions are mixed. Some argue that, if history is any judge, it would appear that Native Americans are poised to win this most recent battle cancelling the Washington Redskins' famous trademarks. Others aren't so sure, but argue that the poor publicity involved should counsel a branding change.

All commentators agree that what would likely occur if the worst case scenario happens to the Redskins would be years of further appeals to delay the impact of the ruling.  Will the Washington Redskins continue use its brand in the interim?

When confronted with this question, the owner of the team announced that it will "NEVER change its name." (capital letters in original).

But what would happen, long term, if the team loses its federal trademark registrations?  Wouldn't the team still possess at least some rights to prohibit third party uses?

Probably not. Third parties would begin using the name in an unauthorized manner, and take their chances. Without any federal trademark registrations and with a precedential public ruling finding the marks to be offensive and scandalous, the team would face an uphill battle legally protecting and further monetizing its existing brands.

From a practical standpoint, the team would probably face an onslaught of rampant counterfeiting that it could not legally stop. Without any valid or enforceable federal trademark registrations on file, the team would not be able to avail itself of the criminal and other protections that the law authorizes against counterfeiters.  Similarly, there would no longer be any legal bar to importation of unauthorized items bearing the team's name or logos.

Perhaps worse yet, the various lucrative licenses for team-branded products and third party endorsements could be prospectively ignored on the grounds that the team lacks any appreciable intellectual property rights to further license.

It is also worth noting that, even if the team wins this round in the TTAB, some Congressional Democrats have attempted to legislate the issue against the team.

Perhaps the moral of the story is "never say never" when it comes to branding and intellectual property.

Is Albert Einstein Now in the Public Domain?

The GM Ad

Albert Einstein was no stranger to the concept of Intellectual Property.  In fact, he was a patent clerk in Switzerland as a young man.

Einstein later emigrated to the United States and took up residence in Princeton, New Jersey and held a professorship at the prestigious Institute for Advanced Study.  Einstein contributed so significantly to modern science that his name and likeness are still synonymous with genius.

Albert Einstein died in 1955, naming the Hebrew University of Jerusalem as one of the beneficiaries of his will.  As part of that will, he bequeathed all of his Intellectual Property, including any rights to his likeness or persona.

Over five decades after his death, many successful commercial products still bear his name and likeness.  So much so, in fact, that Forbes lists Einstein as one of the top 15-earning "dead celebrities," raking in up to $10M per year.

For example, new parents are familiar with the BABY EINSTEIN and LITTLE EINSTEIN products and videos.  These products were licensed by the Hebrew University, helping to make EINSTEIN a very valuable trademark.

However, now that 5 decades have past since Albert Einstein's death, Courts have ruled that at least some of Hebrew University's valuable rights may be at an end.

Carmaker General Motors had used an altered image of Einstein in a 2009 ad for the GMC Terrain, a sport utility vehicle.  The ad, which ran only once in People magazine, showed Einstein's face pasted onto a muscular body with an "e=mc " tattoo.  It carried the slogan "Ideas are sexy too." (See above)

Hebrew University sued GM in 2010, arguing the carmaker had no right to commercially utilize Einstein's image, and demanding damages.

But the Court ruled that descendants' right to control an image after death must be balanced with the public's right of expression.

The Court also ruled that any right Hebrew University had to sue expired in 2005 - 50 years after Einstein's death, because that was the limit on copyright law in 1982, when Hebrew University acquired Einstein's right of publicity.

Ghosts of Christmas Past: Gimbels Department Store

One of the most fascinating traits of trademarks is how they become part of our shared culture, seeping into our daily lives in a way that we don’t even realize until they are gone but not forgotten.

Some trademarks persist for generations, as others fade into memory as they are abandoned, only to reappear in movies, creating a sense of nostalgia.

Case in point:  You may have noticed the reference to Gimbel’s Department Stores in the popular holiday movie Elf.

Gimbels was actually once the largest department store chain in the world.  

Gimbels was so successful, that in 1922 the chain went public, offering shares on the New York Stock Exchange (though the Gimbel family retained a controlling interest). 

By the time of World War II, profits had risen to a net worth of $500 million, or over $8 billion in today’s money.

Gimbels New York flagship store was located in the cluster of large department stores that surrounded Herald Square – the current home of Macy’s.

By 1987, Gimbels no longer existed as a department store chain.

However, a small souvenir store in Boothbay Harbor, Maine, actually still owns the federal trademark, as it has existed as “Gimbel & Brothers Country Store” since the early 1970’s.

Indeed, Director Jon Favreau reportedly paid the country store $5,000 in licensing fees to use the Gimbel’s name in Elf.