Michael Jordan, Jewel Food Stores, Wheaties, the Right of Publicity and the Lanham Act...

Our longest title to date!  We shall endeavor, however, to simplify the remarks made here in connection therewith.  We begin with a recent 7th Circuit, U.S. Circuit Court of Appeals, decision in Jordan v. Jewel Food Stores Inc., 2014 WL 6270603 (7th Cir. 2014).

Michael Jordan (MJ). Yes, that Michael Jordan... of NBA fame, of Nike footwear, etc.  Jewel Food Stores (Jewel) got into trouble with MJ when they placed a paid one-page ad in a special Sports Illustrated commemorative issue celebrating MJ's induction into the NBA Hall of Fame.  Unfortunately, for Jewel they spent too much time on associating themselves and their brand, logo and slogan with MJ's name in this ad and the court held that this was the type of commercial speech not protected by the First Amendment.  (Per the Court, commercial speech is "speech that proposes a commercial transaction.")  The court determined that Jewel's ad was an example of "image" advertising, which the court noted is "ubiquitous in all media", that is intended to promote its own brand loyalty through the prominent use of its own brand, logo and trademarks in connection with MJ's world famous celebrity status and the goodwill attached to his name, likeness, etc. (Per the Court, "Jordan is a sports icon whose name and image are deeply embedded in the pop culture and easily recognized around the globe.")

Trivia Flashback... to the Fall of 1990 when I purchased a box of WHEATIES® with MJ on the box (see above) at a Jewel Food Store in downtown Chicago. True story.  No problem here. Wheaties got approval for this use and no doubt this was a time when MJ had not yet won his first NBA Title and Ring... though he would that very season...  and perhaps his people weren't as aggressive in protecting the commercial value of his name and likeness. I've kept the box which is in good shape despite it resting on a refrigerator for the past 10 plus years.

x-ref:  Per Wikipedia...

"Michael Jordan holds the record for most depictions on a Wheaties box, a total of 18 times, followed by Tiger Woods at 14 times."

     http://en.wikipedia.org/wiki/Wheaties

---

For more information about Trademarks, Copyrights and Licensing, we invite you to visit our website at:  www.TrademarkEsq.com

Kind regards,

William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, California

***   ***   ***

Happy St. Patrick's Day... EARTHQUAKE!...

6:26 a.m., Los Angeles, Calif....  St. Patrick's Day morning!... and an Earthquake too!  Talk about "Top of the mornin'..."

http://digg.com/video/ktla-st-patricks-day-earthquake-3-17-2014

http://www.reuters.com/article/2014/03/17/us-usa-earthquake-santa-monica-idUSBREA2G0Y420140317

http://www.myfoxla.com/story/24994159/watch-exact-moment-earthquake-strikes-fox-11-studios?utm_source=dlvr.it&utm_medium=twitter

(Image source: Irish Heritage)

*** St. Patrick's Day 2014: Facts, Myths and Traditions ***

     http://news.nationalgeographic.com/news/2014/03/140314-saint-patricks-day-2014-culture-nation-ireland/?utm_source=Facebook&utm_medium=Social&utm_content=link_fb20140317news-stpats&utm_campaign=Content

---

William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
http://www.TrademarkEsq.com

***   ***   ***

Out and about in Santa Monica...

Dateline: Tuesday Afternoon & Evening, March 11, 2014

Where:  Santa Monica, California

Afternoon before and after lunch...

6th St. & Broadway

5th St. & Broadway

Third St. Promenade

Santa Monica Blvd at Fourth St....

Santa Monica Blvd. at Fifth St...

Early evening...

Wilshire Blvd... rush hour

Wilshire Blvd. between 5th and 6th St.

5th St. just south of Wilshire Blvd... a crew of bike riders heading home after school...

The Pacific Ocean from the "One Wilshire Bldg. at Ocean Ave. and Wilshire Blvd.

PERRY'S on the beach:  PLAY - SUN - PARTY...

 So did you happen to notice any trademarks or service marks in these photos?...  The REI® trademark and service mark appears in one of the afternoon photos.  A skateboarder on his skateboard and a classic 50's era Chevrolet appears in the evening photos, along with a crew of BMX bicycle riders and a moped, and some umbrellas and beach chairs on the beach in another photo.

For more information about trademarks, please visit our website at:

     www.TrademarkEsq.com

Respectfully submitted,


William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, Calif.

(All Photos By & Copyright William E. Maguire 2014.)

***   ***   ***

Summer in March...

The Clock Tower Bldg. just off the Third St. Promenade in Santa Monica, Calif.

Southern California is experiencing a heat wave with temps in Santa Monica in the upper 70's and even 80's the past three days.  It was easily in the 80's today as it was yesterday on the sand.  We took a walk after lunch around 2 pm and headed on over to the bluffs at the end of Route 66 (aka, Santa Monica Blvd.) and had a look at the beach. Not a cloud in the sky and barely a stitch of wind.  We took some photos so you can enjoy the scenery too...

be sure to wear sunscreen...

Even the lifeguards are busy with this guard heading out with his paddleboard to escort two long distance swimmers back to shore...

The Georgian Hotel looking stunning under blue skies...

How about those red rims!?... 

Custom chopper on Santa Monica Blvd...

Even the plants are happy about the weather... just check out the smile on this flower!?...

 ---

For the trademark inclined and oriented, this walk of ours encountered more than a handful of trademarks from cars to bikes to hats to board shorts to paddleboards to motorcycles, to a fancy beach close hotel, as well as a popular nationwide branded kids clothing store (GAP KIDS).  Each of these types of items can be registered with the U.S. Patent and Trademark Office, subject to the availability of the trademark chosen by the purveyor of said goods and/or services.

For more information about trademarks, we invite you to visit our website at:

     http://www.TrademarkEsq.com 

Respectfully submitted,


William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, California

(All photos by & © William Maguire 2014.)

***   ***   ***

Trademarks At Nite...

When the sun goes down here are two trademarks that light up, as it were...

 Wahoo's Fish Taco®, a cult favorite in California and Hawaii... legions of fans swear by their fish tacos. A U.S. Federal service mark as well, including the following registration:

Word Mark	WAHOO'S FISH TACO
Goods and Services	IC 042. US 100 101. G & S: restaurant services. FIRST USE: 19890100. FIRST USE IN COMMERCE: 19890100
Mark Drawing Code	(1) TYPED DRAWING
Serial Number	74640714
Filing Date	March 1, 1995
Current Basis	1A
Original Filing Basis	1A
Published for Opposition	October 24, 1995
Registration Number	1949071
Registration Date	January 16, 1996
Owner	(REGISTRANT) Lamkone Restaurants, Inc. CORPORATION CALIFORNIA

---

800 Degrees® Pizza above.  New to Santa Monica (at 2nd St. & Wilshire Blvd.) but not to UCLA students who line up regularly in the evening in Westwood Village where the customer gets to pick and choose the ingredients for their personal pizza.  The owner of this growing specialty pizza restaurant chain has several trademarks and service marks on file, including the following:

Word Mark	800º DEGREES
Goods and Services	IC 043. US 100 101. G & S: Restaurant services. FIRST USE: 20120131. FIRST USE IN COMMERCE: 20120131
Standard Characters Claimed
Mark Drawing Code	(4) STANDARD CHARACTER MARK
Serial Number	85733695
Filing Date	September 20, 2012
Current Basis	1A
Original Filing Basis	1B
Published for Opposition	February 26, 2013
Registration Number	4448869
Registration Date	December 10, 2013
Owner	(REGISTRANT) 800 Degrees, LLC LIMITED LIABILITY COMPANY CALIFORNIA

and

Word Mark	800 DEGREES
Goods and Services	IC 043. US 100 101. G & S: Restaurant services. FIRST USE: 20120131. FIRST USE IN COMMERCE: 20120131
Standard Characters Claimed
Mark Drawing Code	(4) STANDARD CHARACTER MARK
Serial Number	85733686
Filing Date	September 20, 2012
Current Basis	1A
Original Filing Basis	1B
Published for Opposition	February 26, 2013
Registration Number	4389566
Registration Date	August 20, 2013
Owner	(REGISTRANT) 800 Degrees, LLC LIMITED LIABILITY COMPANY CALIFORNIA

---

The registration of the name of a restaurant is an important part of the recipe for success as these two businesses illustrate.

For more information about trademarks, we welcome you to visit our website at:

     www.TrademarkEsq.com

Respectfully submitted,

William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, California

(Photos by & © William E. Maguire 2014.  The service marks discussed herein are the property of their respective owners as indicated above.)

***   ***   ***

From Silicon Valley to Venice...

Venice Beach

From Silicon Valley to Venice...

That's going to mean less REI and alot more QUIKSILVER...

Look who has exited Google for Venice, Calif. based SnapChat and, no doubt, more money and stock...

Per WSJ, "Peter Magnusson, a former engineering director at Google, has joined the Los Angeles startup as a vice president of engineering."

    http://blogs.wsj.com/digits/2014/02/18/snapchat-poaches-google-veteran-in-engineering-push/

In case Mr. Magnusson is listening, below is a link to our trademark article about the beach that will get you up to speed on the brands you are going to see more of now that you are going to be living in So. California.

AT THE BEACH:  A Primer on the Selection and Clearance of Trademarks

        http://trademarkesq.com/pages/article9.php

Be sure to check out Groundwork Coffee on Westminster just off the Venice Boardwalk...

      http://www.groundworkcoffee.com/pages/venice-on-the-boardwalk

Venice Boardwalk

Congratulations on your new position with SnapChat. Good luck and best wishes!  And don't forget to start using sunscreen!

(Photos by & Copyright William Maguire 2013/14).
---

Respectfully submitted,


William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, Calif.
www.TrademarkEsq.com

***   ***   ***

Facebook + WhatsApp: The Marriage...

(Image property of Facebook. Used here as a "Fair Use".)

How much?!...

Feb. 19, 2014

FACEBOOK announces acquisition of WhatsApp for $19B.... BILLION!!! 

FYI:  "WhatsApp launched in 2009 with the right focus on a lean, clean, and fast mobile messaging app." (*TechCrunch).

(Image property of WhatsApp, er, Facebook. Used here as a "Fair Use".)

And wouldn't you know it but WhatsApp has a couple of trademark and service mark registrations for WHATSAPP, as follows (per the USPTO's TESS database at uspto.gov):

Word Mark    WHATSAPP
Goods and Services    IC 042. US 100 101. G & S: Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of personal productivity, wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices. FIRST USE: 20090224. FIRST USE IN COMMERCE: 20090224
Standard Characters Claimed   
Mark Drawing Code    (4) STANDARD CHARACTER MARK
Serial Number    77703877
Filing Date    April 1, 2009
Current Basis    1A
Original Filing Basis    1A
Published for Opposition     January 18, 2011
Registration Number    3939463
Registration Date    April 5, 2011
Owner    (REGISTRANT) WhatsApp Inc. CORPORATION CALIFORNIA 3561 Homestead Road, #416 Santa Clara CALIFORNIA 95051

and

Word Mark    WHATSAPP
Goods and Services    IC 009. US 021 023 026 036 038. G & S: Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, telecommunications networks and downloadable computer software for processing images, graphics, audio, video, and text. FIRST USE: 20090910. FIRST USE IN COMMERCE: 20090910
IC 038. US 100 101 104. G & S: Telecommunication services, namely, data transmission and reception services via telecommunication networks; electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; instant messaging services; mobile phone communication services. FIRST USE: 20090910. FIRST USE IN COMMERCE: 20090910

Standard Characters Claimed   
Mark Drawing Code    (4) STANDARD CHARACTER MARK
Serial Number    85326910
Filing Date    May 22, 2011
Current Basis    1A
Original Filing Basis    1A
Published for Opposition     October 25, 2011
Registration Number    4083272
International Registration Number    1085539
Registration Date    January 10, 2012
Owner    (REGISTRANT) WhatsApp Inc. CORPORATION CALIFORNIA #416 3561 Homestead Road Santa Clara CALIFORNIA 950515161

---

So next time you are thinking what your company is worth... don't forget your trademark and/or service mark rights, eh?!...

Comment:  Intellectual Property rights are certainly the core of this acquisition. Such i.p. rights have been fundamental to the successful expansion of this company's services.  In this regard,
TechCrunch has published an article online about the market penetration, esp. in Europe and Emerging markets, of WhatsApp:

    http://techcrunch.com/2014/02/19/facebook-whatsapp/

Other resource information (URL's cited; copy and paste into your browser to view):

http://www.forbes.com/sites/briansolomon/2014/02/19/stunner-facebook-to-buy-whatsapp-for-16-billion-in-cash-stock/

http://techcrunch.com/2014/02/19/facebooks-19-billion-whatsapp-acquisition-contextualized/?utm_campaign=fb&ncid=fb

http://www.latimes.com/business/technology/la-fi-tn-facebook-buys-whatsapp-mobile-messaging-20140219,0,7246364.story#axzz2toUziGXe

http://techcrunch.com/2014/02/19/facebook-falls-5-in-after-hours-trading-after-announcing-16b-cash-and-stock-to-buy-chat-app-whatsapp/?utm_campaign=fb&ncid=fb

---

Respectfully submitted,


William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, Calif.
www.TrademarkEsq.com

***   ***   ***

2014: Trademarks On The Snow...

ARMADA® snow skis. Photo © by Will Maguire 2014.

Ever wondered about the brand names and trademarks you see out there on the ski slopes?...  Here are just a few of them... 

Helmet by BURTON®; Goggles by GRENADE®; Jacket by QUIKSILVER®

Wool beanie featuring the "T-Star" logo/design by Tribal Streetwear, Inc.

Cup of Coffee & Glazed Twist Doughnut by Mammoth Mountain

"Wall Street"... as it should be... at Mammoth Mountain

If you are selling products for use on the snow, don't forget to look after your intellectual property rights, including trademarks and copyrights. Interested in more information on trademarks on the snow, please have a look at our earlier blog post from this past November 2013:

      http://trademarkesq.blogspot.com/2013/11/trademarks-on-snow.html

Respectfully submitted,

William E. Maguire

LAW OFFICES OF WILLIAM E. MAGUIRE

Santa Monica, California

www.TrademarkEsq.com

(All photos by & Copyright Will Maguire 2014.)

***   ***   ***

The Use of A Registered Trademark for Heroin...

Heroin labeled as "Theraflu".  Photo source:  Allegheny County Medical Examiner’s Office;  x-ref:  http://pittsburgh.cbslocal.com/2014/01/30/2-arrested-in-connection-with-theraflu-heroin/

The recent spate of overdose deaths from the use of a tainted strain of heroin labeled as "Theraflu" have been horrific.  The additional death this past weekend of Academy Award winning actor, Philip Seymour Hoffman, from a heroin overdose adds an even more ominous tone to this unfortunate ongoing storyline.

A separate issue from a trademark perspective concerns the use by the purveyors of the tainted heroin labeled as "Theraflu" and the fact that this is also the brand name and registered U.S. Federal Trademark owned by Novartis for cold medicine, namely, THERAFLU®.

Above is the official Theraflu® logo belonging to Novartis for its cough and cold medicine; Used here as a fair use for scholarly and academic purposes.  The Theraflu logo and trademark are the property of Novartis AG Corp.

Below is partial extract of the current USPTO "TESS" record of this trademark registration:

Word Mark    THERAFLU
Goods and Services    IC 005. COUGH AND COLD PREPARATION. FIRST USE: 19861030. FIRST USE IN COMMERCE: 19861030
Mark Drawing Code    (1) TYPED DRAWING
Serial Number    73637147
Filing Date    December 24, 1986

Published for Opposition     May 26, 1987
Registration Number    1452879
Registration Date    August 18, 1987
Owner    (REGISTRANT) SANDOZ PHARMACEUTICALS CORPORATION CORPORATION DELAWARE 59 ROUTE 10 E. HANOVER NEW JERSEY 07936
(LAST LISTED OWNER) NOVARTIS AG CORPORATION SWITZERLAND CH 4002 BASEL SWITZERLAND

Assignment Recorded    ASSIGNMENT RECORDED

Type of Mark    TRADEMARK
Register    PRINCIPAL
Affidavit Text    SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20070911.
Renewal    1ST RENEWAL 20070911
Live/Dead Indicator    LIVE

---

A January 30, 2014, article published by the CBS affiliate in Pittsburth, PA, at:

     http://pittsburgh.cbslocal.com/2014/01/30/2-arrested-in-connection-with-theraflu-heroin/

indicates that there have been 22 deaths to date due to overdoses of the Theraflu fentanyl-laced heroin.  This underscores the seriousness of this epidemic of drug overdoses, which may well continue until word gets out on the street and the media as to this insidiously poisonous strain of heroin.  Fentanyl, a prescription painkiller, is said by itself to be 70 to 100 times more powerful than morphine.

On the other hand, what is going on in the mind of the consumer of cold medicine that seeks relief from the common cold and the seasonal flu and who might otherwise select the authentic Novartis owned cold remedy, THERAFLU®?  Will there be confusion?  Perhaps amongst some people there could be.  And what of the disparagement of the brand and the trademark?  The packaging and distribution of a killer strain of heroin by the same name cannot be good for the brand owned by Novartis.  Novartis even owns the internet domain name registration for Theraflu.com and has a whole website devoted to this product:

     http://www.theraflu.com/index.shtml

It is one thing to be able to target a known counterfeiter but the successful effort to eradicate a scourge such as this deadly strain of heroin is going to require the combined efforts of Federal and State resources and law enforcement, the media, as well as the efforts of Novartis in terms of its legal remedies and public relations strategy.

There is also little doubt that the use of Theraflu as the name for this lethal strain of heroin has already tarnished and is going to continue to negatively impact the Novartis brand and trademark, THERAFLU®.  The financial fallout and negative impact on the brand value of THEAFLU® is likely going to depend on how long this illegal strain of heroin continues to be distributed on the black market.

As this story develops, we shall endeavor to include links to media and other public information that is posted online.

-----

Additional Links/Comments:

•  The Brutal Business Of Heroin Brings Wave Of Overdoses In Pa.

http://www.npr.org/2014/02/02/270640525/the-brutal-business-of-heroin-brings-wave-of-overdoses-in-pa?utm_content=buffer7fb69&utm_medium=social&utm_source=twitter.com&utm_campaign=buffer

excerpt:

RATH: That's Dr. Neil Capretto. He's the medical director at the Gateway Rehabilitation Center in Pittsburgh. He says dealers have stamped the drug with a street name Theraflu. Dr. Capretto says that is no accident.

CAPRETTO: Well, what does the product Theraflu treat? Flu symptoms, cold symptoms. What does going through opium or heroin withdrawal feel like? It feels like a very bad case of the flu multiplied times 10. They call it dope sickness. So it's basically marketing. We will treat your withdrawal symptoms if you're, quote, "dope sick" with this Theraflu.

(excerpted for fair use purposes only)

---

•  Theraflu - From Wikipedia, the free encyclopedia

http://en.wikipedia.org/wiki/Theraflu

excerpt:

Misuse of name

In 2014, several people in Pennsylvania died after overdosing on a mixture of heroin and fentanyl, 2 powerful narcotics that had been mislabeled (on the street) as "Theraflu."

-----

Respectfully submitted,

William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, Calif.
www.TrademarkEsq.com

***   ***   ***

Bicycles and Surfboards...

Photo © Will Maguire 2014.

Dateline: Wednesday morning, January 29, 2014 at approx. 9:30 a.m. on Ocean Avenue in Santa Monica, Calif., just south of the pier...  With the cold weather back east we can rest assured that they are not riding their bikes to the beach in the morning in a t-shirt and shorts while cradling their surfboard on the side mount rack... as shown above, which was observed this morning on the way to the office.

Bicycles are goods in commerce that are identified by brand names and protected by trademarks.  These can, of course, be registered with the U.S. Patent and Trademark Office (USPTO) in International Class #12.  Some examples includes Schwinn®, Cannondale®, and Trek®. 

Surfboards can also be registered and are found in Intl. Class #28 with other sporting goods. Some noteworthy examples of brand names and trademarks for surfboards include: Rip Curl®, Channel Islands®, and Lost®.

For a quick and easy read on the basics of Trademarks, have a look at the following article on our website:

At The Beach: A Primer On the Selection, Clearance and Registration of Trademarks

     http://trademarkesq.com/pages/article9.php

---

Respectfully submitted,


William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
Santa Monica, Calif.
www.TrademarkEsq.com

***   ***   ***

Before the fog rolled in.....

It was nice and clear and warm when we stopped for a late lunch around 2:30 pm - 3 pm. The coast was clear... though we spotted a fog bank off of Malibu.  Then around 5 pm, dense fog rolled into Santa Monica... Have a look.

The Third St. Promenade at 2:40 pm...

At approx. 3 pm, the coast is clear!...  In the distance below, however, you can see the fog bank along the coastline of Malibu...

Avoid 5th St. and Colorado Ave. in Santa Monica.... in background below... it's closed due to construction... it's a mess!

Santa Monica Fire Dept... on Broadway...

Gotta love all them stickers!...

And then the dense fog rolled in around 5 pm.....  Downtown Santa Monica shown at right below at corner of 5th and Broadway with the roof of apparel retailer, Fred Segal, in the foreground.

 

Be careful out there if you are in Santa Monica due to the fog.....

(All photos by & Copyright Will Maguire 2014.)

Respectfully submitted,

William E. Maguire

LAW OFFICES OF WILLIAM E. MAGUIRE

Santa Monica, Calif.

www.TrademarkEsq.com

***   ***   ***