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Legal Tracker: Anti-competition & Trademark Registration Edition

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The European Commission slaps Nike with a €12.5 million ($14.14 million) fine for its decade-long violation of an EU law prohibiting “agreements between companies that prevent, restrict, or distort competition” within its 28-country Single Market. The sportswear giant’s licensing agreements prevented European licensees from selling products cross-border themselves—instead requiring them to refer orders for out-of-territory sales to Nike. Affected marks included FC Barcelona, Manchester United, Juventus, Inter Milan, and AS Roma, as well as national federations like the French Football Federation. Stateside, the Portland-based company is facing three separate lawsuits alleging discriminatory employment practices.

Urban Outfitters is under fire with a lawsuit from fragrance company Eris Parfums, which claims that the retail chain infringed its “Mx.” mark for a unisex fragrance and even copied the promotional copy on its website. The infringing description apparently ribbed on Eris’ description of its scent as an “inclusive fragrance for all genders” whose name is a reference to the gender-neutral honorific “Mx.” used in lieu of “Mr.” or “Ms.” and which “blur the boundaries between conventional binary ‘his’ and ‘hers’ scents.”

Olivia Jade, the 19-year-old influencer at the center of the college admissions scandal, suffers another setback. To sum up the losses so far, Jade lost 1.4 million Instagram followers and 1.9 million YouTube subscribers as well as influencer partnerships with brands like Sephora (which discontinued her highlighter and bronze palette), Estée Lauder, and TRESemmé, among others. Now, the United States Patent and Trademark Office (USPTO) rejected her trademark application for “Olivia Jade” and “Olivia Jade Beauty”. Specifically, the USPTO noted that the application’s description of beauty products was overly broad and that “[p]roper punctuation in identification is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.” It’s a common enough rejection, with an easy enough fix: The office suggested, for example, that “moisturizer” be amended to read “skin moisturizer” and that “concealer” read “facial concealer”, as well as introducing three commas into “make-up setting spray lipstick lip gloss [sic]”.

The attorney of record behind the (surprisingly slapdash) application is Perry Viscounty, who is also representing Jade’s parents in the college admissions scandal. Jade still has a chance to re-submit her application with the recommended changes. Note that rejections are very common; in fact, USPTO examiners have somewhat perverse incentives to initially reject applications. Typically, this isn’t a problem because applicants have another shot at re-submitting their application (by simply making the examiner’s suggested changes) with no extra financial penalty (aside from paying the lawyer). What’s odd here is that this is the second such rejection—Jade will need to re-file her entire application, and pay all the associated fees all over again.

But Jade isn’t the only one whose trademark application aspirations have been thwarted—the USPTO denied Warner Bros. protection over the phrase “I solemnly swear that I am up to no good.” There were two reasons behind the refusal: (1) the phrase is actually an “informational slogan” and doesn’t actually function as a trademark and (2) registration would give rise to a “false association” among consumers.

To the first point, when associated with goods or services, the phrase doesn’t actually indicate the “source” of those goods/services because it is “commonly used in everyday speech” in books, movies, and everyday conversation and “merely conveys an ordinary, familiar … sentiment.” In other words, nothing in the phrase inherently suggests that there is one unique face behind any branded goods/services, much less that that source is Warner Bros. (Showing secondary meaning—that consumers have grown to associate the phrase with Warner Bros.—is not enough to overcome this rejection.)

To the second, Warner Bros.’ use of the phrase “may falsely suggest a connection with J.K. Rowling” and her book, Harry Potter and the Prisoner of Azkaban. Apparently, the phrase is so closely connected with Rowling that consumers would overwhelmingly presume that she, and not Warner Bros., would be the source of, or endorsed, any branded goods. If those two reasons seem contradictory, they are—but Warner Bros. will have to overcome both of them to succeed in its ambitions. (Incidentally, Warner Bros. also has an outstanding issue with the list of goods/services it claims protection for under the proposed mark—the examiner suggested “cloth napkins” be amended to “cloth table napkins” so that there’s no confusion, with, say “cloth napkins for removing make-up.”)


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