The Briefing by the IP Law Blog

The estate of the late singer and songwriter Isaac Hayes sued former President Donald Trump for using one of his songs at campaign events and rallies. Scott Hervey and Tara Sattler discuss this case in this installment of The Briefing.

Watch this episode on the Weintraub YouTube channel.

Scott:

I’m Scott Hervey from Weintraub Tobin, and we’re joined today by Tara Sattler as we talk about the recent ruling in Isaac Hayes enterprises versus Donald Trump enterprise on today’s episode of The Briefing.

Tara, it’s good to have you back.

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Scott:

Tara:

Scott:

The FTC recently announced a new rule to combat fake consumer reviews and testimonials. Scott Hervey and Jessica Marlow explain how this decision will impact businesses and the influencer marketing industry in this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel.

Scott:

Jessica, welcome back to The Briefing. It’s been a while.

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Jessica:

Scott:

Thank you for joining us for today’s episode of The Briefing. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

Punchbowl News won the trademark infringement lawsuit filed by greeting card and event planning company, Punch Bowl Inc., despite a previous setback at the Ninth Circuit. Scott Hervey and Jamie Lincenberg discuss this recent development in this installment of The Briefing.

Cases Discussed:

Watch this episode on the Weintraub YouTube channel here.

Scott:

I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Jamie Lincenberg. We are going to talk about this case again and the future of trademark infringement cases in light of the recent changes to the applicability of the Rogers Test on this next installment of The Briefing.

Jamie, welcome back to The Briefing.

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

The Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it is also used to perform some expressive function.

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

The US District Court for the Northern District of Ohio issued an opinion in Hayden V. 2K Games, Inc. that could potentially put an end to tattoo copyright cases. Scott Hervey and Tara Sattler discuss the court’s opinion on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

A New York Judge dismissed former Rep. George Santos’ lawsuit against Jimmy Kimmel Live over the late-night host’s use of personalized Cameo videos in one of his segments. Scott Hervey and Tara Sattler discuss this decision on this installment of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

Scott:

Tara:

A group of senators introduced an update to the ‘No Fakes Act,’ which protects the voice and visual likeness of individuals from unauthorized AI-generated recreations. Scott Hervey and James Kachmar discuss the changes to this act on this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Scott:

James, welcome back to The Briefing. It’s been a while.

James:

Scott:

James:

Scott:

James:

Scott:

James:

Scott:

James:

Scott:

James:

Scott:

James:

Scott:

The Trademark Trial and Appeal Board often consider wine, beer, and non-alcoholic beverages related when determining the likelihood of confusion despite there being no per se rule on the matter. Scott Hervey and Jamie Lincenberg discuss the TTAB’s long-standing opinion on this episode of The Briefing.

Read Scott’s article on the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.

Scott:

I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and frequent Briefing contributor, Jamie Lincenberg. I thought it would be interesting to revisit this topic ten years later. So today, we’re going to take an updated look at beer, wine, water, and likelihood of confusion on today’s episode of The Briefing.

So, Jamie, welcome back.

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

Jamie:

Scott:

‘Gabby’s Table’ was denied registration in a major Trademark decision that impacts affiliate marketing. Weintraub attorneys Scott Hervey and Jamie Lincenberg break down what this means for your business in this episode of “The Briefing”

Watch this episode on the Weintraub YouTube channel here and listen to the full podcast here.

Scott

On July 1st, 2024, the US Trademark Trial and Appeal Board issued a precedential decision that has great implications in today’s world of affiliate marketing. In the decision of In re Gayle Weiss, the T-Tab upheld an examiner’s refusal to register the mark Gabby’s Table for computerized online retail store services in the field of cooking utensils, cookware, etc. Because the specimen submitted by the applicant, the Gabby’s Table website, failed to show the mark used in commerce in connection with the identified services. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Jamie Lincenberg. Today, we’re going to break down this decision and its implications for affiliate marketing on today’s episode of “The Briefing.”

Jamie, welcome back. It’s been a while.

Jamie

Thanks, Scott. Yeah, it’s nice to join you again.

Scott

Always great to have you, Jamie. But let’s dive into this presidential decision by the Trademark Trial and Appeal Board. As I said in the opening, the TTAB case results from an applicant’s appeal from a trademark examiner’s refusal to register the Gabby’s table, Trademark for online retail store services. I think the main point of this decision is to clarify the boundaries of what can and cannot be considered retail store services, especially in the digital age where online businesses blur traditional lines. This decision also shows the critical issue of providing acceptable specimens of use during the trademark registration process.

Jamie

Before we get into that, can I point out a procedural issue highlighted by the TTAB that is an important thing to highlight here?

Scott

Yeah, absolutely. Go for it.

Jamie

Before the board got to the core of the appeal, the board addressed the applicant’s request that the board take judicial notice of certain third-party registrations and follow a hyperlink for information regarding Amazon affiliates. The board denied both of those requests. They emphasize that evidence must be submitted properly through a request to suspend the appeal and remand the application for further examination. This aligns with established procedures which require a formal process to introduce new evidence after an appeal has been filed.

Scott

Yeah, Jamie, that’s great. That’s a really important procedural point to make because it seems to be something that comes up frequently in TTAB disputes. So, practitioners who are appealing an examiner’s refusal to register and want to introduce new evidence, evidence that was not introduced during the office action, and response to office action procedures, you need to suspend the TTAB proceeding or mandatory examining attorney and introduce new evidence on the record that way. Now, let’s get to the point of the case. Digging into the heart of the decision, the specimen abuse. For those unfamiliar with what a specimen is, it’s essentially a sample that shows how a trademark is actually being used in commerce. The specimen needs to create a direct association between the mark and the services it represents.

Jamie

In this case, the applicant specimen was a web page featuring products recommended by the applicant with a “Buy Now” button. The problem was that clicking this button didn’t lead to a purchase directly from the applicant; instead, it redirected users to third-party websites like Amazon, where the products could then be bought.

Scott

Right. And the TTAB found that this did not constitute an acceptable specimen because it didn’t show the applicant providing the retail services directly. Instead, it only showed the applicant engaged in affiliate marketing. Affiliate marketing typically involves promoting third-party products or services through various online platforms. When someone makes a purchase via an affiliate’s link, the affiliate usually earns a commission. It’s a business model that’s become increasingly popular with the rise of influencers, bloggers, and online content creators.

Jamie

The TTAB made it clear that affiliate marketing doesn’t equate to operating a retail store. The distinction there lies in the nature of the services provided. Retail services, according to the TTAB, involve the direct sale of goods or services to consumers. This includes everything from brick-and-mortar stores to e-commerce websites that handle transactions directly with the customers. On the other hand, affiliate marketing doesn’t involve direct sales or transactions. Instead, affiliates merely direct potential buyers to a retailer’s platform, where the actual purchase then takes place. The affiliate is acting more as a middleman connecting consumers with products but not handling the sale itself.

Scott

And the board pointed out that an acceptable specimen for a service market must show a direct connection between the market and the services. In this case, simply listing products with an affiliate link did not meet that standard for a retail store. If the services are as retail store services, then the specimen must show that consumers are able to purchase the goods from the applicant and not some other third party.

Jamie

What are the big takeaways from this decision? I think, first, it underscores the importance of submitting a specimen that clearly demonstrates the use of the mark in connection with the specific services listed in the application.

Scott

Right. That’s a great point. Second, I think it highlights the strict procedural rules around introducing evidence in trademarked appeals, attempting to add evidence via hyperlinks or during the appeals process without following the correct steps simply won’t fly.

Jamie

Yeah. And lastly, but I think probably the most important point is the precedent set that the USPTO will now require retail services to have that direct transactional relationship with consumers. And specimen submitted in support of an application to register a mark for retail services must be able to show this direct transactional connection.

Scott

Yeah, and on a broad level, I think this case is also a reminder to carefully consider how you categorize your business activities when you are applying for a trademark. Misclassifying your services could lead to legal challenges or, in this case, a rejection from the trademark trial and appeal for it.

Jamie

Right. Thanks, Scott. I think this is really helpful and important information to share.

Scott

Yeah, I must agree, Jamie. Well, that’s all for today’s episode of “The Briefing.” Jamie, thanks for joining us today. And thank you, the listener or viewer, for tuning in. We found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with and colleagues. And if you have any questions about the topics we cover today, please leave us a comment.

In Blue Mountain Holdings v. Bliss Nutraceuticals, the 11th Circuit upheld a U.S. District Court finding that Lighthouse Enterprises issued a naked license to Blue Mountain, which covered the trademark in question. Scott Hervey and Eric Caligiuri discuss this case and how to avoid bearing the risks of a naked license in this featured episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Scott:

Eric:

Scott:

Eric:

Scott:

Eric:

Scott:

Eric:

Scott:

Eric:

Scott:

Eric:

Scott:

Eric:

Weintraub attorneys Scott Hervey and Jessica Marlo explore the US Olympic Committee’s lawsuit against Prime Hydration, co-founded by Logan Paul, for using Olympic trademarks in their ad campaign with Kevin Durant. Discover the power of Olympic trademarks and their protection!

Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.

Show Notes:

Scott

The United States Olympic and Paralympic Committee has filed a lawsuit in the United States District Court for Colorado against Prime Hydration, a sports drink company co-founded by social media influencer Logan Paul. The complaint alleges that Prime Hydration’s ad campaign featuring NBA star and Team USA member Kevin Durant infringes numerous Olympic trademarks. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and huge Olympic fan, Jessica Marlo. We are to talk about this case and the unique aspects of Olympic trademarks in this installment of “The Briefing.”

Jessica, welcome back to “The Briefing.”

Jessica

Thank you for having me.

Scott

Jessica, I know your absolute fascination with the Olympics runs deep, so I thought this would be a fantastic topic to discuss with you.

Jessica

Absolutely. This is the perfect marriage of all of my favorite things. Having been a gymnast, going to the Olympic Gymnastics Trials every four years and working in the brand and licensing space, this is everything bundled into one. So I’m very excited to talk about this.

Scott

The trifecta. The gold, the gold medal, as they say. We’re about halfway into the Paris Olympics, but this lawsuit was filed just before the Paris Olympics started. But let me give you a little background on the Olympic trademarks. Under the Ted Stevens Olympic Amateur Sports Act, Congress granted the USOPC, exclusive ownership of certain Olympic-related words and symbols, including the name United States Olympic Committee, the words Olympic, Olympian, going for the Gold, Team USA and the International Olympic Committee’s symbol of the five interlocking rings. The act also permits the USOPC to authorize its contributors suppliers to use these Olympic-related words and symbols, and it also allows the USOPC to initiate lawsuits to address unauthorized uses. The USOPC’s rights are strong, and they were acknowledged as such by the Supreme Court in San Francisco Arts and Athletics versus the United States Olympic Committee, which involved a suit to injoin San Francisco Arts and Athletics use of Gay Olympic Games.

The Court noted that the legislative history demonstrated that Congress intended to provide the USOPC with an absolute monopoly over the use of the word Olympic. It doesn’t matter whether any unauthorized use of the word tends to cause confusion or not. All uses by parties other than the USOPC and those they authorize are prohibited, absolutely prohibited. Third-party marks that contain the designated Olympic-related words or symbols or any combination thereof cannot be registered on either the principle or the supplemental register, and nor can that matter be disclaimed. Those marks must be refused registration by the US Patent and Trademark Office on the grounds that the mark is not in lawful use in commerce. The US Olympic Trademark rights, they’re stronger than normal trademark rights, as you can see.

Jessica

Absolutely. The USOPC and its international counterpart, the IOC, are extremely diligent in protecting the Olympic marks, and this is all driven by revenue generated from sponsors. So Olympic sponsorships are the second biggest revenue source for the IOC right behind its broadcast rights. Sponsors pay hundreds of millions of dollars to be the exclusive sponsors of the Olympic Games, and Olympic organizers are required to make sure no one gets a free ride.

Scott

That’s right. And with the 2024 Paris Olympic Games underway, it’s no surprise that the USOPC is stepping up its enforcement activity. Actually, they stepped it up prior to the Olympic Games. With regard to prime hydration, the product packaging for its Kevin Durant collaboration shows use of the USOPC mark, Olympic, Olympian, Team USA, and going for gold. Ad copy for the product refers to the product as the, “Kevin Durant Olympic Prime Drink”. Let’s have our producer put up the drink can graphic on the screen here. You can see quite a number of references to Olympic trademarks and trademarks that are protected and owned exclusively by the USOPC. The USOPC claims that prime hydration failed to cease use of these Olympic marks after the USOPC sent Prime a cease and assist letter.

Jessica

Wow. Well, Coca-Cola has a license deal with the USOPC that gives it the exclusive use of Olympic trademarks, including Olympic and Team USA, for its beverages in the United States. The USOPC says that the license fee Coca-Cola pays for this right is significant. Understandably so. Clearly, a significant component of value is exclusivity. In its complaint against Prime Hydration, the USOPC argues that the revenue from being able to grant exclusivity, this revenue which is vital to the funding and the training and entering of US teams for the Olympic, Paralympic, Youth Olympic, Pan-American, and Parapan-American Games, is threatened when individuals and organizations use the USOPC trademarks without authorization.

Scott

That’s right. The complaint that was filed against Prime Hydration alleges a violation of the Ted Stevens Olympic and Amateur Sports Act, various violations of the Lanham Act, and a violation of the Colorado consumer protection laws and unfair competition laws. The complaint seeks damages, and it includes a claim for trouble damages and punitive damages and an injunction. But interestingly, I did not see on a docket, it might have been that I missed it, but I did not see on a docket a motion for a TRO, a temporary restraining order, which is odd given that these types of infringements, especially when time is of the essence, they’re usually partnered with a TRO.

Jessica

That’s interesting. What we’ve learned, if nothing else, is that you don’t touch the Olympic trademarks. The USOPC and its international counterpart, the IOC, will come after you swiftly and aggressively. It’s understandable when we’re talking about the money that’s coming from the licensing of these marks and how it really helps fund the training of these athletes and entering into the games. I mean, that’s something that really needs to be protected for the success of the country as it relates to its participation in any of the various Olympic, Paralympic, Youth, Olympic, Pan-American and Pan-American Games.

Scott

Absolutely. What I’m surprised over or with is that nobody flagged these issues to Prime Hydration. No one on Kevin Durant’s team, which I assume had approval over the product and ad copy. Nobody within Prime Hydration, none of its distributors. It just seems odd that everybody was asleep at the wheel here. But nonetheless, I think my expectation is that this will settle. I don’t think that we’re going to see any further action in the case itself. But if we do, we’ll be certain to- We’ll be back. Give you an update for sure. Jessica, thanks. Thanks for joining us. Is there anything that you want to say before we wrap this up?

Jessica

Go Team USA!

Scott

That’s what I thought. Thanks again for joining us.

Jessica

Thank you.

Scott

Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe. Leave us a review and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.