February 23, 2012

When A New Product Name is a Slam Dunk

Seller Beware: Consumer Protection Insights for Industry

Jeremy Lin's surprising rise from the New York Knick's bench to game winning starter has sparked "Linsanity" around the country, and spurred a race to the US Patent and Trademark Office (PTO) among entrepreneurs hoping to claim trademark rights in the catch phrase and cash in on the excitement. This race provides a cautionary tale for companies that may be sleeping on their own trademark rights.

Since the unexpected star was catapulted into the headlines, at least seven "Linsanity" trademark applications have been filed with the PTO, including one by Lin himself. But, Lin wasn't the first. Prior to his application -- but only days after his rapid rise to fame began -- two individuals, apparently unrelated to Lin, applied to register "Linsanity" for use in connection with various items of athletic and other apparel. So is Lin out of luck? Possibly not. Although one of the applicants claims to already be using "Linsanity" (Lin's application is based on his intended use of his name on products), a trademark application may be rejected if it falsely suggests a connection with a living person, or if the mark includes the name of a living person who has not given his consent. Just last month, the PTO cited both of these bases in an a letter requesting further information from an individual who had applied to register "Blue Ivy Carter NYC," which the examining attorney determined the public would likely associate with Beyonce and Jay-Z's famous baby of the same name. That application has since been abandoned.

As the Blue Ivy Carter letter shows, celebrities -- including those newly born or newly made -- have some arguments at their disposal to challenge another's trademark application that are less likely to apply to the rest of us. If your company is currently using a mark, you should consider promptly applying to register it with the PTO to secure maximum rights. If you have developed a mark that you genuinely intend to use, even if you haven't done so yet, you should also consider filing an intent-to-use application with the PTO. If the process is successful, it may prevent a potential headache down the road if your idea later becomes a trendy one.

© Arnold & Porter Kaye Scholer LLP 2012 All Rights Reserved. This blog post is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.

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