Trademark filings and lawsuits reflect trends in industry and brand protection.
The fashion industry and retail use intellectual property (IP) in courts and outside of them to protect their trademarks and control their use.
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2021 saw brands dealing with current issues, such as customization, resale, and sustainability.
Non-fungible tokens (NFTs) and other tech mainly concerned with blockchain technologies were also getting the attention of brands.
NFTs and other new technology are a way for brands to connect with consumers and enjoy new revenue streams. As a result, they naturally seek to stop unauthorized users from using their trademarks in the metaverse.
We review some of the most interesting lawsuits and trademark filings of 2021.
NFTs: Miramax v. Tarantino
Production company Miramax sued director Quentin Tarantino over his plan to auction off a collection of seven non-fungible tokens (NFTs) based on Pulp Fiction.
The collection is expected to include NFTs that show scans from Tarantino’s original handwritten screenplay pages or scenes of Pulp Fiction and a drawing.
Miramax claims he does not own the right to issue NFTs and accuses the director of violating its copyright and trademark to the 1994 film, in addition to breach of contract and unfair competition.
With NFTs exploding, it seems that Miramax seeks to ensure that creators will not use new technologies to benefit from rights in the company’s library.
Tarantino asked the court to toss out the “offensively meritless lawsuit”.
This lawsuit is one of the first to deal with the still vague nature of NFTs: Is it a right to media or is it, in essence, the publishing of a screenplay. As such, it has the potential to have long-term consequences.
More lawsuits involving NFTs are expected to be filed in courts as creators, brands and others struggle with the legal issues surrounding ownership of NFT assets.
Resale: Chanel vs. The RealReal
The luxury resale market is booming, and one of the most significant players is The RealReal, a marketplace for authenticated luxury consignment.
Luxury brand Chanel filed a trademark infringement and counterfeiting case against The RealReal.
It alleges that the luxury resale platform engages in false advertising and sold counterfeit handbags bearing the Chanel logo.
The RealReal claims that Chanel engages in anticompetitive conduct with the aim to eliminate the secondary market for its products and monopolize the market.
The RealReal claims it poses a threat to Chanel because Chanel wants to control the supply and price of its goods, both new and pre-owned. They claim that a robust resale market disrupts Chanel but gives consumers access to the brand and benefits them.
Photo by: Mona Siswanto. Free to use under the Unsplash License
Customization: Nike and Satan-shoes
Shortly after MSCHF released 666 pairs of “Satan Shoes” promoted by Lil Nas X, Nike responded with a trademark infringement and dilution suit.
Although MSCHF “art collective” has purchased authentic Nike sneakers, it customized them (a drop of human blood in each pair included) with no consent from Nike and this, said Nike, turned them into something that is not a genuine Nike product.
The case is interesting as it highlights issues regarding the resale of authentic trademarked goods that have been modified to create customized goods without the consent of the original brand.
Eco-friendliness: Allbirds and sustainability
Ethics, eco-friendliness and sustainability are issues that increasingly influence consumer loyalty and purchasing decisions.
Allbirds is a brand of footwear that makes wool sneakers and focuses its marketing around claims of sustainability. In response, the lawsuit alleges that Allbirds has misled consumers with claims regarding its environmental practices and animal welfare.
Based mainly on an article by Peta, the lawsuit claims that Allbirds’ actions do not match the eco-friendly marketing and are, therefore, “false, deceptive and misleading”.
Allbirds has responded with affirmative defenses and applied to dismiss the case.
With an exploding number of companies making eco-friendly claims, this case attempts to hold the company accountable for its sustainability claims, previously viewed as unactionable.
Trademark: Adidas and three-stripes trademarks
The adidas three-stripes trademarks distinguish adidas in a very competitive market.
But to what extent should trademarks protect stripes? And should they be exclusive, or can other brands use them too? Adidas is known for its proactive brand protection (see: 3-Stripes Brand Protection).
A 2021 case is concerned with this issue. In 2021, adidas sued Thom Browne for trademark infringement and dilution over Thom Browne’s “Four Bar Design”.
Adidas claims it has used and promoted footwear and apparel bearing its famous and distinctive Three-Stripe trademarks for decades and has invested “millions of dollars” to promote its marks.
It alleges that “despite Thom Browne’s knowledge of adidas’s rights in the famous Three-Stripe Mark” for apparel and footwear, Browne “has expanded its product offerings far beyond [its] formal wear and business attire and is now offering for sale and selling athletic-style apparel and footwear featuring two, three, or four parallel stripes in a manner that is confusingly similar to adidas’s Three-Stripe Mark.”
While this is going on, defendant Thom Browne has chosen to bring suit against adidas in London.
Among other things, Browne asks the court to invalidate more than 20 adidas trademarks relating to its three-stripe design.
As of the end of 2021, the case is ongoing.
Lookalikes: New Balance vs. Michael Kors
The famous source-identifying New Balance N the cause of a lawsuit filed against Michael Kors.
The claim states that Michael Kors “recently began using an N design on footwear that is virtually identical and confusingly similar to” the New Balance mark, as well as the trade dress-protected design of its 574 sneakers.
New Balance claims that Kors’ “intentional adoption of a letter N on footwear is likely to cause confusion among consumers and/or suggest an affiliation, connection, or association [with] New Balance.”
Infringing imports: Crocs to stop copy of designs
Crocs, the famous footwear brand, filed a complaint with the U.S. International Trade Commission (ITC).
It claims that over 20 companies, including names such as Skechers and Walmart Inc., infringe on the Crocs name and shoe designs.
Crocs complains regarding the unlawful importation and sale of “certain footwear products and packaging that violate registered trademarks used in connection with certain Crocs shoes.”
The alleged copy of Crocs’ trademarked designs includes things like “the three-dimensional configuration of the outside of an upper of a shoe” and others.
Crocs has enjoyed a surge in popularity, particularly of its foam clogs. As often happens with successful designs, there are copycats. Crocs chose to file the ITC, a federal government agency charged with protecting U.S. domestic entities from unfair competition, including by trademark infringement.
After the filing, the ITC announced it had launched an investigation.
Broader protection: Chanel 5
Chanel has a new filing with the U.S. Patent and Trademark Office (USPTO).
The brand is looking to register the number 5 for use on cosmetics. In other words, it is asking to protect not only Chanel No. 5 but simply 5.
If granted, it will give the brand broader protection. Other brands also file to strengthen and broaden their intellectual property rights.
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