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Did you know that works subject to copyright protection can theoretically also be used as trademark signs? In most countries artistic work, a title of a book, or even a character name, can be used as a trademark - unless it falls under the provision of “descriptiveness and distinctiveness”.

In February 2019, USPTO issued a warning to attorneys to beware of any foreign solicitation which offers to pay to use their information to file trademarks. The statement read:

Michael Jordan retired from basketball in 2003. That’s 16 years ago. However, thanks to the ‘Jordan’ brand operated by Nike, he still earns around $100 million a year. Football legend David Beckham left the sport in 2013, but somehow, I don’t think he is relying on a British government pension. He is raking in around $75 million per annum, thanks mainly to deals with H&M and Adidas.

Walt Disney has faced uproar in parts of Africa for trademarking “hakuna matata”, a Swahili phrase meaning “no worries”. It has owned the trademark since 1994; however, as we shall see, the conversation on cultural appropriation has developed significantly in the last 20-odd years.

In saturated markets, many brands have to push the boundaries to be heard above the cacophony of marketing noise. Kmart’s ‘ship my pants’ and Kraft’s ‘get your chef together’ are genius examples of how using risqué wordplay can create catchy advertisements and brand awareness. But how far can the envelope be pushed?

Michael A. Einhorn is an economic consultant and expert witness in the areas of intellectual property, media, entertainment, and technology. He received a B.A. from Dartmouth College and a Ph. D. in economics from Yale University, and is a former professor of economics at Rutgers University. He is the author of seventy articles related to intellectual property and economics, as well as the book Media, Technology, and Copyright: Integrating Law and Economics. Dr. Einhorn has worked on matters in trademarks, trade secrets, and false advertising that have involved Samsung Electronics, Dish Network, Madonna/Material Girl, Jakks Pacific, Kische USA, Oprah Winfrey/Harpo Productions, Avon Cosmetics, The New York Observer, the Kardashians/BOLDFACE Licensing), The Weather Channel, Hasbro, J. Walter Thompson/Banco Popular, Kia Motors, Coca Cola, and General Automobile Insurance Company.

From the vantage of an economic expert active in valuation of intellectual property, this blog reviews some issues in remediation in U.S. trademark law, with particular regard to litigation concerns that damage experts should be made aware of. This blog is a shortened version of a paper available online that includes fuller analysis and citation, and is the first of a series of related blogs that will appear on this website.

The 4 Horsemen of the Brandpocalypse

It was late on Halloween evening
And the office had quietened down.
A lone trademark attorney
Sat at his desk and frowned.

"Although the trademark is an essential element in the system of undistorted competition its purpose is not, however, to protect its proprietor against practices inherent in competition" (1).  

For the marketing team charged with the creation of new brand names, finding a name that conjures up the right image, resonates with potential customers and conveys not just the core functionality of the product but also the benefits, is absolutely critical. Legal safety then adds a new dimension of complexity to an already complicated and challenging process. Finding or creating the perfect name and then having it rejected is heartbreaking.

Around the world, each country has developed differently. Even between countries that share common ancestors and language, the differences can be astounding. The business globe is split into ‘key regions’ where closer countries are grouped together - such as North America, EMEA, Europe and Asia. As you move from looking at countries to continents, the gap in natural cultural understanding of those markets tends to grow wider.