Category: Trademarks

What it do baby? Kawhi seeks to trademark catch phrase

What it do baby.  A call-out made famous by then Toronto Raptors Kawhi Leonard as he sat in the back of a car with teammate Serge Ibaka.  Leonard is seeking to trademark the catchphrase to sell merchandise.

Leonard, known for his laconic, deadpan delivery became an ascending NBA star this past year as he helped the Toronto Raptors with the NBA title.  He then moved back to his hometown of Los Angeles to play with the Los Angeles Clippers.

New Balance, his apparel sponsor, capitalized on his personality with a simple, straightforward marketing campaign.  New Balance released “Board Man Gets Paper” and “Fun Guy” in bold type on black t-shirts sold out once they were released.  Leonard’s game and popularity grew and New Balanced took advantaged of the timing.

While this was happening, Leonard is embroiled in a lawsuit with his former sponsor, Nike, over a logo he states he created but Nike copyrighted and now states is owned by the brand, not Kawhi.  Leonard initiated the lawsuit, but Nike has filed counterclaims which include a breach of contract.  The lawsuit is still pending.

The latest trademark application is filed by Leonard’s LLC to ensure no dispute with New Balance.

Kawhi Leonard sues Nike over “Klaw” logo

Kawhi Leonard has filed a lawsuit against Nike for the use of his “Klaw” logo.  The Toronto Raptor’s forward argues that the company ‘falsely claimed’ that it created the logo in a copyright registration.

Leonard, who is now a New Balance-sponsored athlete, claims that he came up with the “Klaw” logo and gave Nike permission to use the logo when he was a Nike-sponsored athlete.  The copyright registration filed by Nike was done without his consent according to the Leonard’s lawsuit which was filed in California federal court.

In the lawsuit, Leonard alleges that he had contemplated the logo since college and created a drawing of a logo in December 2011/January 2012.  Leonard signed a “Men’s Pro Basketball Contract” with Nike in October 2011.

Nike approached Leonard about a personal logo.  While the Beaverton, Oregon-based company provided proposals, Leonard claims to have rejected them.  While Leonard agreed upon a logo, he claims that he retained ownership of that logo.  In May 2017, Nike registered with the U.S. Copyright Office, the logo accepted by Leonard.

Leonard applied for a trademark based on his logo in November 2017.  Now a New Balance athlete, intends to use the “Klaw” logo on sportswear but Nike claims that it owns the mark and has registered the Copyright.

Leonard is seeking a Declaratory Judgment from the Court which would state that Leonard is the true owner of the logo.

This case involves the intersection of Copyright law and Trademark law.  Copyrights are original creative works while Trademarks are recognizable signs, designs or expressions for a good or service.  A logo, like the one fought over here, can be both a copyright and trademark.  While distinguishable, Leonard claims he created the logo that he used with Nike.  It can also be used for a trademark as Leonard intends to use the mark on branded clothing.

The case is notable since there did not seem to be a contract regarding who owns the rights to intellectual property used while marketing Leonard.  This seems that it would have outlined ownership rights of things like this.  Nike claims that it owns the copyright and will likely argue that it assisted Leoanrd with the logo and thus retained ownership since he was under contract at the time.

Obviously, with Leonard’s great run with the Raptors this year, he is looking to capitalize with his new company, New Balance.   Also, the Los Angeles Clippers, which hopes to land Leonard after this season, hoped to buy the logo from Nike.

The lawsuit shows the need for contracts to be detailed enough to contemplate things like intellectual property rights.  It also shows the intersection of copyright and trademark law and its uses.

Red Dead Redemption 2 takes Pinkerton to task in TM lawsuit

The makers of the popular video game Red Dead Redemption are suing the security company Pinkerton, for use of the security company’s name in its video game.  Take-Two Interactive, the makers of the game are suing claiming they have a right to use the name based on the First Amendment.

Pnkerton Consulting & Investigations delivered its cease-and-desist letter in December after the video games release.  Although cordial, it argued that Take-Two was using Pinkerton’s “goodwill” associated with the company’s trademarks.

In these situations, the argument is that the video game is falsely associating itself with the security firm.

Red Dead Redemption 2 is a sequel to the popular video game set in the Wild West in the late 1800s.  There are references to the Pinkerton National Detective Agency and Pinkerton agents which played a role in law enforcement during this time.  In the video game, agents of the Pinkerton National Detective Agency are in pursuit of the outlaws.

The lawsuit argues that the use of the Pinkerton name is “neither excessive nor exceptional.”  They argue that there are 60 hours of storyline in the game and of the 106 “missions,” Pinkerton characters are only in 10.  They also note that Pinkerton has been utilized in other western shows.

Take-Two argues that the Pinkerton National Detective Agency are a part of the popular media and culture and are protected by the First Amendment.  They cite to various media which have used the Pinkerton name without legal repercussion.  It also argues that the Pinkerton company’s IP of today differs from the historical agents identified in the video game.

Take-Two argues that the Court should issue a declaratory judgment of non-infringement under the First Amendment, Nominative Fair Use and or no Likelihood of Confusion.

The lawsuit will be an interesting one to follow for those wanting to use historical trademarked names in their own copyrighted work.  There is a viable argument under Fair Use and Likelihood of Confusion.  But, the issue to look for is whether a Court would determine that the use of the mark is valid under First Amendment purposes as this could stretch the use of other trademarks in other works of authorship.

(The two images are embedded in the lawsuit found here.)

Kobe Bryant protects “The Black Mamba” Trademark

Via my post on Seattle Copyright and Trademark:

Attorneys on behalf of Kobe Bryant have filed a Notice of Opposition against a Los Angeles company over the application to use The Black Mamba.

The company, 47/72, Inc., has until March 12th to file an answer.

The Notice of Opposition filed on January 31st claims that the intent to use the retired Lakers’ longtime nickname would cause a likelihood of confusion, false suggestion of a connection and the name consists of the name of a living individual without his consent.

The applicant filed an “intent to use” application (had not used the mark but intended to do so in the future) less than a week after Bryant’s last game in the NBA.  The intent was to apparently sell clothing online.  According to the Notice of Opposition the company has attempted to trademark famous phrases for its own benefit.  Examples include “To Infinity and Beyond,” “Let it Go,” and “Nanu Nanu.”

Bryant’s attorneys had filed a Letter of Protest in May 2016 which was forwarded to the Examining Attorney.  The applicant mark was opposed after it was published for opposition.  Bryant’s attorneys requested and received an extension to file its opposition.

The case reflects the vigilance it takes to protect an existing trademark.  It will also be an interesting case to see how the USPTO looks at this issue if the applicants decide to pursue the mark.

LA Gear files opposition to LA Chargers Trademark

From my Copyright and TM Blog:

The San Diego Chargers NFL franchise is moving up the 5 to Los Angeles.  Among the issues that the franchise had to address is a trademark issue involving its logo.

The franchise, Chargers Football Company, LLC, filed for the mark last January.

The logo has been under criticism by the public and has been opposed by LA Gear.  You might recall LA Gear was popular for footwear back in the 1990s.

The trademark was published for opposition on December 20, 2016 and LA Gear filed an opposition on the same day.

In its Notice of Opposition, LA Gear claims that the proposed mark by the Chargers will be over to the “same classes of consumers and at least through the same channels of trade as Opposer’s (LA Gear’s) Goods.”  its mark will be diminished and dilute “the distinctive quality” of its famous marks.

LA Gear by JASONCRUZ206 on Scribd

The Chargers have until February 7, 2017 to file an Answer.