Photo by Pineapple Supply Co. ()

Sally Yoon is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Given the power of Apple’s brand, it is no surprise that they actively challenge trademarks that resemble their own to protect the dilution of their trademark. But this raises some key questions: Should Apple have the right to challenge all trademarks relating to an apple? What about fruits that bear a resemblance to an apple? In its act of trademark enforcement, Apple seems to be casting the net as widely as possible. According to the , a research initiative seeking to hold large technology companies accountable, Apple filed 215 trademark oppositions, nearly two-thirds more than all the trademark oppositions of Microsoft, Amazon, Facebook and Google.

Apple’s numerous filings are targeting that are seemingly unrelated to the company’s brand, including but not limited to “an organization that supports families of children with autism, a school district in Appleton, Wisconsin, and an online test prep service for nursing students”.

The as “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”  Apple has taken issue with individuals and businesses trademarking anything related to apples, and even other fruits. Those targeted include individuals and businesses providing services that Apple does not, such as . , Apple also filed an opposition to the trademark of Stephanie Carlisi’s stage name “Franki Pineapple”, as they were “both the names of fruits, and thus convey a similar commercial impression”.

Apple’s argument against these companies in mainly emphasizes Apple’s  significant brand value – as a business grows, so do its efforts to prevent the brand’s dilution. Many smaller parties are unable to respond to opposition because of the costs involved; it can often seem like they have no choice at all. With no opposing voice loud enough to fight back, arguments emphasizing brand values only encourage large companies to continue to enforce their trademarks aggressively and boundlessly.

However, brands attached with the term “trademark bully” can face negative consequences and be reprimanded by the courts for filing “weak” cases. In 2016, Louis Vuitton’s inability to pass off ’s parodical products as a “joke” led to . , the district judge stated that “[i]n some cases … it is better to ‘accept the implied compliment in [a] parody’ and to smile or laugh than it is to sue”.  For this reason, trademark enforcement can be seen as a double-edged sword.

Image from United States District Court for the Southern District of New 91��ɫ

In the media, world-famous brands are often , and infringers are sympathized with. Still,  many companies are simply trying to protect their brand’s dilution. Clarifying the thresholds for depreciation of value and distinctiveness of trademarks would be beneficial to ensure that smaller businesses and individuals are not silenced by nets cast too widely and prevent companies from enforcing their trademarks over-aggressively and falling victim to the double-edged sword of trademark enforcement.

The post Which Fruits are Off-Limits? appeared first on IPOsgoode.

Photo from Nike

Alexandria Lewis & Ian Rothweiler are JD Candidates at Southwestern Law School. This article was originally written as a requirement for Victoria Burke and John Begakis’ course on Fashion Law.

Trademark Infringement / Anti-Dilution – Nike v Warren Lotas

Warren Lotas partnered with Jeff Staple to "reinterpret" Staple’s original 2005 collaboration with Nike on the classic Nike Dunk shoe. Nike wasted no time and quickly filed a trademark infringement and anti-dilution lawsuit. The shoes and respective trade dress were nearly identical replicas of the original Dunks, so Nike had a strong case that the Lotas shoes were likely to confuse the general public as to their origin, source, sponsorship, or affiliation with Nike.

As a defense to the trade dress rights infringement claims, Lotas claimed that the tread on the sole of the shoes served a utilitarian function because they are essential to their use and purpose, and thus the quality of the sole.

Staple, who has a history of working for Nike and is the registered owner of the Staple Pigeon brand (seen on Lotas shoes), was left out of the litigation between Nike and Lotas. This is strange, as he was a co-partner in the Lotas product and his trademark pigeon is part of the trade dress of the allegedly infringing shoe. Lotas effectively received constructive approval from Staple to go forward with the Dunk lookalike.

Not only was Nike seeking injunctive relief to enjoin Lotas from selling the allegedly infringing sneakers, but also monetary damages. It is hard to imagine that the existence of these sneakers will damage Nike’s brand (worth $160 billion) enough to warrant monetary damages. The unfortunate reality for Lotas is that Nike has unlimited resources to take on nonstop litigation against designers, manufacturers, and distributors to protect their trademarks. This creates a chilling effect that moves up the supply chain, instilling fear of a pending Nike lawsuit among all involved parties. If trademark law ultimately serves to protect the consumer, do these disputes really put the consumer at risk or is Nike just flexing their muscles and depriving many would-be purchasers of new and potentially more appealing designs because they can?

Photo from MSCHF

Trademark Infringement - Nike v MSCHF

MSCHF, the Brooklyn-based art collective known for distorting the look and feel of well-known products and services, employs several risqué and even arbitrary design methods. Just look at its squeaking rubber chicken bong and YouTube channel presenting videos of a vat of mayo or a photograph of Pete Davidson. Needless to say, MSCHF reimagines popular items and brands to offend more conservative sensibilities.

In early 2021, MSCHF leaned into its disruptive attitude by collaborating with rapper Lil Nas X to craft 666 pairs of Nike Air Max 97 shoes with a Satan-themed twist. The expensive sneakers featured an inverted cross and a bronze pentagram charm embossed with “LUKE 10:18”, a Bible verse which reads “I saw Satan fall like lightning from heaven”. The design model was thought up to promote the Old Town Road artist’s devil-themed music video, Montero (Call Me by Your Name), as well as to increase awareness about MSCHF’s wicked genius.

Most Nike enthusiasts were bummed when the shoes sold out within 60 seconds. Religious or spiritual beliefs aside, so-called “sneaker heads” wanted a pair of rare 97s containing a drop of human blood in the sole.

While progressive critics praised MSCHF’s devilish design, Nike sued MSCHF for trademark infringement. Nike alleged confusion and deception surrounding the shoes’ source because MSCHF’s use of the iconic Nike swoosh implied authorization. Nike also alleged dilution by trademark tarnishment, as enraged customers boycotted original Nike products, hurting their pockets and long-held goodwill with consumers.

Nike obtained a permanent injunction order restricting MSCHF’s production, promotion, and sale of ‘Satan Shoes’. Nike also ordered all attorney fees and profits collected from shoe sales, reaping all the benefits of MSCHF’s creative, albeit mischievous work.

Unsurprisingly, Nike didn’t react with the same disapproval toward MSCHF’s ‘Jesus Shoes’ which had dropped earlier. Celebrities as well-known as Drake sported them. This seems to be due to Christian imagery not holding the stigma that Satanist imagery does today. Nike seems to sue for trademark infringement subject to society’s tolerance of alternative views, and MSCHF exists to push our boundaries.

The post A Brief Recent History of Nike’s Trademark Battles appeared first on IPOsgoode.

Photo from Getty Images

Lauren Romero is a JD Candidate at Southwestern Law School.

“That which we call a rose by any other name would smell as sweet” … but would that which we call a brand by any other name be as hype?

Founded in 2016, Los Angeles-based streetwear brand formerly known as Chinatown Market offers everything you’d need to fit in on Fairfax Avenue. Appearing on the “” podcast, founder Mike Cherman cites the New 91��ɫ street markets that he visited as a kid as inspiration for its name. The problem? As a white man, Cherman is an outsider who is profiting off the Chinatown name.

“Cultural appropriation” usually receives little attention or punishment from courts. Although huge name brands are often called out for it , “cultural appropriation” is a difficult cause of action to present. In a rare occurrence where cultural appropriation was brought to the court’s attention, the Navajo Nation brought a trademark infringement claim against retailer Urban Outfitters (UO). The case, filed in 2012 in the U.S. District Court in New Mexico, alleged that UO infringed the NAVAJO trademark in a way that inaccurately linked the Navajo Nation with designs printed on UO garments. While cultural appropriation was not a cause of action in this case, the discussion surrounding white-owned companies’ use of designs, names, and clothing belonging to another culture arose to the forefront of fashion law. Eventually, the case was settled for an undisclosed amount and UO agreed to collaborate with the Navajo Nation on authentic Native American jewelry. Issues of cultural appropriation continue to play out in the court of public opinion.

Photo from Twenty20.com

. Hashtags like #StopAsianHate flooded social feeds to bring attention to horrific attacks and show solidarity with the AAPI community. After noticing Chinatown Market’s silence, Julian Han Bush created an for Chinatown Market to rebrand. In the petition, Bush explains that “Chinatown is not for sale” and discusses the cultural significance of Chinatowns.

Businesses and community members in New 91��ɫ’s Chinatown suffered due to the COVID-19 pandemic. Lack of foot traffic resulted in lack of customers for many family-owned businesses; racism cast its ugly shadow on the once lively streets of Chinatown as community members fought against racist attacks. As a response, two New 91��ɫers began an initiative called to help struggling small businesses. They raised over $2 million to aid businesses in keeping their doors open. While members of the community helped one another during this time, Chinatown Market posted an Instagram story and offered a single shirt, with proceeds apparently going to AAPI organizations.

Photo from Market

The brand drew waves of criticism from folks on Instagram who argued that it was coming up short. Chinatown Market released a on May 20, 2021, acknowledging the discourse surrounding their name. They announced a name change along with a decision to sell all existing merchandise and donate the proceeds to non-profit organizations supporting the AAPI community. On August 15, Chinatown revealed their rebrand and began promoting new designs emblazoned with their new name, “Market”.

While a rebrand and donations are steps in the right direction, the conversation remains open. Can designers respectfully pay homage to cultures that they don’t belong to? Should they? These questions may not have solid answers, but I would like to provide some tips on how to appreciate cultures without exploiting them or taking them as your own.

At the 2015 Met Gala, Rihanna turned heads and broke necks in Chinese designer Guo Pei’s design. The theme for that year’s Gala was “China Through the Looking Glass,” which focused on the impact of Chinese design on Western fashion. As usual, Rihanna understood the assignment with the stunning design, which featured a massive canary yellow cape with waves of embroidered florals. While many high-profile guests chose to wear American or European designers, Rihanna highlighted a Chinese designer and gave visibility and appreciation to AAPI designers.

As individuals, we can shop consciously. Various streetwear brands similar to “Market” are AAPI-owned and/or do not appropriate AAPI culture. For example, Akashi-Kama is a sustainable Japanese-American streetwear brand founded by Alec Nakashima, who draws inspiration for his designs from both Japanese culture and American streetwear.

Noragi Jacket by Akashi-Kama

By putting our wallets where our mouths are, we can ensure that AAPI businesses flourish and that we are contributing to cultural appreciation and not appropriation.

The post The Market Value of Chinatown’s Culture appeared first on IPOsgoode.

On November 21, 2012 the U.S. Bankruptcy Court for the Southern District of New 91��ɫ  Hostess' motion, and the company began the process of selling their assets.

The market for well established brands appears to be quite good.  In 2009,  bought Polaroid^TM adding to their collection of well-established brands bought from companies in bankruptcy.  Armed with the brands, Gordon Brothers and Hilco remarketed goods to consumers by changing the underlying business models, which failed, into ones that work.  By acquiring these well-established brands, companies such as Gordon Brothers and Hilco can capitalize on the consumer recognition of the product without needing to be burdened by any of the original company`s mistakes.

In the food market especially, selling food with a recognized brand appears to be crucial.  With grocery stores only stocking shelves with their highest selling products, it is becoming harder for midsize food companies to compete.  The result is that companies which offer fewer food products are selling their product brands to larger food companies.  One example, from earlier in 2012, is Proctor & Gamble who sold the ^TM brand and related assets to Kellogg’s for $2.695 billion dollars.

There are several food industry giants that might be willing to purchase the Hostess brands.  One obvious candidate is Flowers Foods (hereafter “Flowers”), a rival of Hostess, whose  have jumped since the announcement of Hostess’s bankruptcy proceedings.  In 2011, Flowers  the Tasty Baking Company when that company was in a similar financial state as Hostess.  With the purchase, Flowers gained access to the Tastykake^TM brand, another fine example of a cream-filled confection.  When asked to comment about the purchase, , Chairman and CEO of Flowers Foods, said that “We recognize that consumers hold Tastykake in very high regard when it comes to product quality and freshness”.  Clearly, Mr. Deese recognized the advantage of purchasing an established brand.  Perhaps Flowers will end up taking the same view when it comes to the Twinkie^TM, or other Hostess brands, should they decide to purchase any of their brands.  However, Flowers has yet to comment about the possibility of purchasing Hostess brands.

The drawback from buying brands rather than buying all assets of a bankrupt company is that employees are inevitably left without jobs.  During the winding down process, Hostess only intends to  about 3,200 employees of the former 18,500 to assist in the process.  Of those that , 94% will find themselves unemployed within the first 16 weeks of the year-long process.  Since Flowers Foods recently acquired all assets of the Tasty Baking Company, it is doubtful that they would attempt to buy the Hostess assets as a whole as well.  If they decide to purchase any assets of Hostess, it will probably be limited to brands, and former employees of Hostess will be out of work.

Although it may not be Flowers, it does seem likely that Hostess brands like Twinkie^TM will be bought by some other food company.  Those people who are thinking of buying boxes of Twinkies on eBay can relax - The Twinkie probably isn’t going anywhere anytime soon.

Adam Stevenson is a JD Candidate of Western University, faculty of law.

The post If Twinkies can Survive Nuclear War, They can Survive This appeared first on IPOsgoode.