In the Floor and Decor case, the Respondent had hired and paid a Web development company to design a Web site, but the developers never built the site. The Panel found this failure to be “troubling,” and found it “curious” that the Respondent redirected the site to one of her other Web sites, “rather than make efforts to achieve a specific website at the disputed domain name.” In other words, it’s not enough to hire Web developers and pay them to build a site. The Panel allowed no room for the normal ebb and flow of life, or the demands of operating a small business. Many small business owners are not tech savvy, and after three years of fighting with their developers, the Respondents in this case gave up and simply pointed the domain name to another site they owned. The Panel recognized, however, that the Respondent’s 22 years of use of the FLOOR & DECOR trademark in connection with their business gave them an unassailable claim to the disputed domain name.

In the Danshar decision, the Panel found that the Respondent did not have legitimate rights or interests to the domain name MineralCare.com, because the Respondent had pointed it to a site that sold competing products after the Complainant had severely curtailed its distribution rights. In that case, the Complainant’s predecessors had authorized and sanctioned the Respondent to use the domain name as a distributor of its products, but later sought to revoke that assent after a sale of the business to new owners. Although few would disagree that the Respondent’s use of the domain name was legitimate and bona fide when registered and during the term of its distributorship, the Panel found that a once-legitimate claim to a domain name could be rendered illegitimate by what it found to be subsequent bad faith use. On the question of bad faith registration, however, the Panel found that the Respondent had clearly registered the domain name in good faith.

The Panel also held that passive holding of a domain name, by itself,
does not constitute bad-faith. While passively holding a domain name
can be a factor in determining bad-faith, the Panel required more
evidence to show the intention of the domain owner was to take
advantage of the trademark owner, such as offering to sell the domain
name.

The Panel also held that a trademark registration is not by itself sufficient to
prove that trademark is well-known or give constructive notice to show bad-
faith in registering a domain name.

Hermès registered the trademark HERMES in China in 1977, but did not register the Chinese characters that comprise its operating name in China: Aimashi (爱马仕). Then, in 1995, the Defeng Garment Company filed for 爱玛仕, slightly different but pronounced exactly like Hermès’ Chinese operating name. Hermès filed an opposition to the trademark, claiming that it would be confusing to consumers.

Fifteen years later, the Chinese Trademark Appeal Board denied Hermès’ opposition saying it could not prove the Hermès brand name was sufficiently famous in the mainland China market and that Hermès could not prove the mark was deceptively obtained.

As is evident in this HERMES matter and the recent trademark woes of Apple’s iPad, Jeremy Lin, and Michael Jordan, companies doing business in China need to be vigilant not only of knockoffs but also of Chinese companies or individuals trading off the Chinese name or transliteration of their marks.

What Apple failed to realize was Proview International of Taiwan did not own the IPAD trademark for mainland China. A subsidiary of Proview International, Proview Technology (of Shenzhen. China) owns the trademark and filed a trademark infringement suit against Apple. While a Hong Kong court sided with Apple last year, Shenzhen Intermediate People’s Court ruled in Proview Technology (Shenzhen)’s favor last moth, which Apple promptly appealed.

The dispute between the companies is escalating at a quick pace. Proview Technology has requested Apple iPads be confiscated and that any imports/exports of the infringing products be banned. Apple, while waiting for the appeals process, believes Proview Technology has not lived up to its side of the bargin it struck with Proview International. Media reports suggest the infringement suit is a last attempt for the financially beleaguered Proview Technology to generate some cash from Apple, especially since it is not believed Apple will win its appeal. If nothing else, Apple has learned a very expensive and embarrassing lesson in due diligence for the next time it goes looking for trademark deals.

The world has been noting Blue Ivy Carter’s birth in many ways, including naming a new strain of marijuana after the baby and claiming she is the new anti-christ or at least a member of the Illuminati. With her fame already firmly established, L’il Blue Ivy already had Baby’s First Legal problem. Only four days after Blue Ivy’s birth, New York-based fashion designer Joseph Mbeh filed a trademark application for “Blue Ivy Carter NYC” for a range of infant and toddler clothes. Mbeh is reluctant to speak to the media, claiming “We have a line of clothing which is an elite brand.” Mbeh is a Cameroon native who interned for Phat Farm. The application was filed without the consent of either Beyonce or Jay-Z but claims use of the mark since January 9, 2012-two days after Baby Blue was born. Mbeh’s trademark attorney was visiting with Michael Jackson’s doctor and could not be reached for comment.

As quickly as the Mbeh trademark drama started, it has ended, but not before several tantalizing new twists. On January 25, 2012, Mbeh’s trademark application was expressly abandoned.

Perhaps inspired by all the recent press, CBH By Benton Clothier LLC (CBH) filed for “BLUE IVY CARTER GLORY IV” on January 20, 2012 for a variety of beauty, cosmetic, and fragrance products. Hitting on many important parts of Blue Ivy’s young life so far, this new trademark application features not only her name (Blue Ivy Carter); but also the name of the song, “Glory”, written about and featuring her; and “IV” Roman numerals for “four” which is also her mother’s favorite number and inspiration for the “Ivy” in her name. It appears that CBH is a business that offers fashion designers services to develop their own companies, including registering trademarks. In yet another twist, CBH is claiming it has used “BLUE IVY CARTER GLORY IV” since February 14, 2011, long before the baby or the baby’s name was conceived. Yet, an inconclusive web search has shown if CBH has been using the trademark, it has not been on the internet.

The fate of BLUE IVY CARTER GLORY IV is already in jeopardy since it is currently being blocked by an Office Action, in part because the infant, according to a USPTO Examiner, “is so famous that consumers would presume a connection” between her and any goods with her name on them.

In what was likely thought to be a move to end the trademark dispute, a holding company controlled by Jay-Z and Beyonce, BGK Trademark Holdings, LLC, filed a trademark application for BLUE IVY CARTER for a myriad of goods and services. Unfortunately, the trademark insanity caused by the famous Little Carter will unlikely end anytime soon, mainly because “Blue Ivy” is already a registered trademark.

Blue Ivy is the name of a small set of stores based out of Wisconsin and has been in use, according to their USPTO registration, since 2000. Also, only a few days after Beyonce’s company joined the Blue Ivy bandwagon, yet another trademark application was filed by yet another “Blue Ivy” business out of Boston. This other Blue Ivy company offers a range of party/planning services and claims to have used the name since 2009.

While some of the recent “Blue Ivy” trademark filings may have tried to capitalized on the famous baby’s birth and name, these last two companies may pose a significant obstacle to Baby Carter getting her trademark. In the US trademark system, whoever uses a trademark first ultimately gets the rights to the name regardless of who files for registration first; that would seem to knockout Beyonce and Jay-Z’s recent IP moves to get their baby’s name as a registered trademark since at least two other people have legitimately been using “Blue Ivy” before them for related services. While the frenzy of filing seems to be calming down, the saga of Blue Ivy Carter’s trademarks seems hardly over.

Lin, snapped up by the Knicks after many of their stars were injured and when the team was on an embarrassing losing streak, managed to nearly single-handily reverse the team’s fortune. On February 4, Lin managed to help the Knicks to just their third win in fourteen games and starting a winning streak which would soon be known as LINSANITY.

How long Lin can keep up his winning ways is a mystery, but the fame it has generated has already caused some legal headaches. Soon after Lin made his February 4 mark on the NBA, people started to capitalize on the phenomenon. On February 7, Matthew Chang (who has no affiliation with Lin) filed a trademark application for LINSANITY claiming an extensive list of clothing items. Chang has said he would be willing to sell the trademark should Lin (or likely others) be willing to buy it.

Just two days later, on February 9, Lin’s old high school basketball coach Andrew W. Slayton also joined the trademark frenzy. Not only did Slayton apply for the trademark LINSANITY, he registered the domain names www.linsanity.com and www.thejeremylinshow.com to sell t-shirts in 2010, long before the current hype. Slayton said “I always knew Jeremy would be amazing. I believe in this” so much so that Slayton registered the website without Lin’s knowledge or consent.

Even without Lin himself jumping into the trademark fray, it will still take the USPTO several months to sort out who will finally get rights to hawk merchandise under the LINSANITY trademark and if either of the two applications already filed will get any trademark rights at all. Since LINSANITY is so clearly based on a person and his name, the USPTO may require Lin to give consent to one of these application owners for fear of consumers confusingly assuming Lin is connected to the LINSANITY trademark.

Pixar, who has an uncanny ability to create blockbuster movies, will need some of their movie magic to solve a trademark dispute for its upcoming movie Brave. Brave is set in 10th-century Scotland, and features Merida, Pixar’s first female protagonist. The film is scheduled to open on June 22, 2012 yet is currently mired in a growing dispute with Major League Baseball’s Atlanta Braves over the title of the movie.

The Atlanta Braves have filed a Notice of Opposition with the Trademark Trial and Appeal Board temporarily blocking Disney (who now owns Pixar) from registering the term “Brave” for a variety of goods and entertainment services covering nine (9) trademark applications. Even though the Atlanta Braves do not own any registered trademark rights to the singular “Brave,” the MLB organization alleges there would be irreparable damage to them. Atlanta claims there would be confusion if Pixar used “Brave” because the singular term “Brave” is often used when referring to a single ball player from the club.

Both the Atlanta Braves and Disney have apparently entered into settlement negotiations to attempt to resolve this dispute. No word on how this trademark disagreement may affect spring training for the Atlanta Braves, who use the ESPN Wide World of Sports Complex located at Walt Disney World.

Question for the MLB Braves: After the historic choke job last season, rivaled only by the Boston Red Sox ineptitude and the unforgettable choke-fest put on my my own beloved New York Mets in 2007, why would Pixar, probably the most successful movie production company in the world at turning out consistently great movies, want to be confused with the Atlanta Braves? Also, do kids really think they’re going to see a movie about a baseball team? Seriously? In an unrelated story, Native Americans are suing the Atlanta Braves for commercial disparagement.

Within hours of Suggs creating BSHU, merchandise started to appear online. Three days later, Brian Bussells filed for the trademark “Ball So Hard University” and started to sell clothing. Even Suggs appeared in a press conference wearing a Bussells shirt and acknowledged he had nothing to do with the selling of the shirt. Then, about a week and a half after Suggs first created the name, Suggs’ corporation, Team Sizzle Films, Incorporated, filed five trademark applications for the same trademark as Bussells. Since the filings, cease-and-desists letters have been sent from Suggs’ representatives to others selling BSHU merchandise, although it is not clear if Bussells received one of these letters.

It could be up to the United States Patent and Trademark Office to determine if Bussells or Suggs has priority to the Ball So Hard University trademark. Bussells may be able to prevent Suggs from using a mark Suggs himself coined if the Trademark Office honors Bussells’ earlier filing. However, Suggs’ trademark attorney has suggested arguing that BSHU is apart of his public persona and Bussells’ use of the mark would confuse consumers into believing Suggs is associated with Bussells’ venture. Suggs and Bussells will turn this gridiron fight to the USPTO to find out who will be the mascot of this University.