Mitchell Stabbe has over thirty years of experience in virtually all aspects of trademark law. Over the course of his career, Mitch has experienced numerous changes in trademark law and in technology, with the former often several steps behind the latter. Today, his practice focuses on the ever-evolving interplay between trademarks and the Internet. Over the last few years, for example, Mitch has regularly advised clients and provided comments to ICANN concerning the roll-out of hundreds of new generic top level domains (gTLDs) and the protections available to brand owners against cybersquatting and other domain name abuses.

Mitch also counsels clients on the availability and registration of trademarks and service marks and has prosecuted over a thousand applications before the US Patent and Trademark Office. He also is experienced in drafting and negotiating contracts, licenses, assignments and security interests involving intellectual property rights.

Mitch has litigated numerous trademark and copyright infringement and unfair competition civil actions in federal court, including actions against infringers and gray market importers, as well as adversary proceedings in federal court and before the Trademark Trial and Appeal Board (TTAB). In addition, he has successfully prosecuted over fifty claims under the Uniform Dispute Resolution Policy (UDRP) to compel the transfer of domain names registered in bad faith.

He has represented companies from a wide array of industries, including communications, media, publishing, technology, education, not-for-profit associations, real estate leasing, banking, and premium cigars.

Last year, we posted some guidelines about engaging in or accepting advertising or promotions that directly or indirectly alludes to the Super Bowl without a license from the NFL. We are at that time of year again, so here is an updated version of our prior post.

In addition to the monies it receives annually for the right to broadcast the Super Bowl, the NFL receives more than $1 billion in income from licensing the use of the SUPER BOWL trademark and logo. Not surprisingly, is extremely aggressive in protecting its golden goose from anything it views as unauthorized efforts to trade off the goodwill associated with the game. Accordingly, with the coin toss almost upon us, advertisers need to take special care before publishing ads or engaging in promotional activities that refer to the Super Bowl. Broadcasters and other news publishers have latitude to use the phrase “Super Bowl” in their news and other editorial content, but they need to wary of engaging in activities, particularly in advertising and promotion, that the NFL may view as trademark or copyright infringement. (These risks also apply to the use of “Final Four” or “March Madness” in connection with the upcoming NCAA Basketball Tournament.)

Simply put, the NFL views any commercial activity that uses or refers to the Super Bowl to draw attention as a violation of its trademark rights. Many of the activities challenged by the league undoubtedly deserve a yellow flag. However, the NFL’s rule book defines trademark violations very broadly. If anyone were willing to throw the red flag to challenge the league’s position, a review from the booth might reverse some of those calls.
Continue Reading As Super Bowl Approaches, Advertisers Should Be Aware of The NFL’s Efforts to Protect Its Golden Goose – 2017 Update

As David Oxenford has previously commented, even in states where marijuana has been legalized, broadcasters should be cautious about accepting advertising for marijuana or related paraphilia.  Specifically, decisions by the FDA and the Department of Justice have done little to cut through the smoke shrouding the issue.  Now, perhaps the last United States agency that one might expect to have anything to say has weighed in as well, but the haze remains thick.

Specifically, the US Patent and Trademark Office is not viewed as a policy-making agency, charged with making decisions about what activities or behavior are permissible or impermissable.  Rather, it determines whether trademarks qualify for federal protection through registration, considering issues such as the distinctiveness of a mark and whether it is confusingly similar to a previously registered mark.  As we have discussed in our Trademark Basics for Broadcasters series and our follow-up free webinar, although the various factors seem cut and dried, there is often a great amount of subjectivity and discretion that goes into evaluating each factor.
Continue Reading Accepting Advertising for Marijuana or Marijuana Paraphernalia:  The Trademark Office Rules on a Related Issue that Provides More Reason For Caution

With Election Day finally upon us, we wait in anticipation (and with a fair amount of nail biting) as the fate of our country is decided. But that doesn’t mean there isn’t room for some trademark fun, looking at how law and trademarks can collide. But first, a reminder — don’t forget to dial into our upcoming Trademark Basics webinar, Tuesday, November 15th at 1pm Eastern Time for a live overview of the many issues we have discussed in the last few weeks. Register here today!

And now, back to the law. Even seasoned politicians can get into trademark trouble when crafting their campaign branding strategies. We’ve summarized three somewhat amusing cases below as an Election Day stress reliever!

  • One Quacky Dispute. Tim Hagan, a former candidate for the for governor of Ohio, ran a campaign against incumbent Governor Robert Taft riffing off of the famed “AFLAC DUCK” commercials, in which a white duck repeatedly quacks the AFLAC insurance company’s name in a distinctive, nasal tone. Hagan’s internet commercials included a crudely animated character made up of Governor Taft’s head sitting on the body of a white cartoon duck, with the duck quacking “TaftQuack” several times during each commercial. Hagan broadcast these commercials on his website, www.taftquack.com. The insurance company thought it was no quacking matter and filed a lawsuit in an Ohio district court. The court ultimately determined that the use of this character or the AFLAC marks did not constitute trademark infringement because the ads constituted core political speech warranting First Amendment protection.


Continue Reading Trademark Tuesday, Election Day Special – Trademark Tales from the Campaign Trail

Over the last few weeks, we’ve offered insights about how you can stay out of legal hot water by establishing good practices with regard to your company’s trademark portfolio (see Part 5 of our Trade Basics series here, which contains links at the end to the other parts of the series). Unfortunately, not all companies have followed such wisdom. With Halloween just around the corner, we thought you might appreciate some Tips and Tales from the Trademark Crypt!

To help you avoid becoming another trademark horror story, don’t forget to dial into our upcoming Trademark Basics webinar, November 15th at 1pm Eastern Time for a live overview of the many issues we have discussed in the last few weeks. Register here today!

  • Searching Proposed Descriptive Marks. We have previously discussed how descriptive marks may become protectable as trademarks if they acquire what is known as “secondary meaning.” Just because a mark is descriptive doesn’t mean that you shouldn’t conduct a trademark search. In 1984, the manufacturer of GATORADE® beverages decided to use the slogan “Gatorade is Thirst Aid.” Its in-house counsel concluded that “Thirst Aid” was merely descriptive and therefore did not run a search before approving the slogan. A search would have revealed that the mark THIRST-AID® had been in use since 1921 and had been registered since 1950 in connection with soft drink products. The owner of the THIRST-AID® mark filed a trademark infringement claim and ultimately was awarded in excess of $10,000,000 in damages.
  • Running Down All Potential Impediments. Due diligence means more than running a trademark search. It means taking appropriate action to run down possible impediments before proceeding. In one case, a company named “Big O” used the marks “Big O Big Foot 60” and “Big O Big Foot 70” for tires, but its application to register BIG FOOT as a trademark was denied. Subsequently, Goodyear began using BIG FOOT for snowmobile tracks and, later, for tires. It ran a trademark search and concluded that there were no conflicting marks. It is not clear, but, most likely, the person who reviewed the search saw Big O’s abandoned application, but may not have tried to determine whether the mark was still in use. (It should be noted, however, that in 1974, the ability to locate marks that were in use, but were not registered, was far more limited than today.) In any event, a jury awarded Big O $2.8 million in damages (which was reduced to $678,302 on appeal) and $16.8 million in punitive damages (which was reduced to approximately $4.1 million on appeal).
  • Running Down All Potential Impediments – Part 2. Many companies translate their marks into Spanish for purposes of marketing to the Hispanic community. Even with a well-established trademark, a search should be conducted for the translated mark. Several months ago, a trademark infringement action was filed against Kentucky Fried Chicken for using “Para chuparse los dedos” on the basis that it is the Spanish-language translation of “Finger Lickin’ Good.” The plaintiff owns a restaurant in Southern California and has a registration for a logo that contains the identical phrase, “Para Chuparse Los Dedos,” which it says translates to “To Lick Your Fingers” in English. (We offer no comment on the possible outcome of this litigation, but mention it to illustrate the need for a thorough and competent trademark search before using almost any new mark.)
  • Clearing Advertising Copy. Famed boxing announcer Michael Buffer has reportedly been involved with at least 100 legal actions over his famous catchphrase LET’S GET READY TO RUMBLE® and claims to have never lost a case. Unfortunately, many radio stations and other media outlets have used the phrase without authorization (presumably without first consulting counsel), with many not aware that the catchphrase is legally protected, and have ended up on the receiving end of a cease and desist letter from Buffer’s attorney. At least one station was brought to court and was held liable for $175,000 worth of damages, while other awards have ranged from four to six figures.


Continue Reading Trademark Basics, Halloween Special: Tips and Tales From the Trademark Crypt

Once you have identified your marks and sought protection through registration for some or all of them, there are still going to be other issues that you will need to consider. Trademark owners have an obligation to police their marks and take steps to stop infringers. Otherwise, they may run the risk that someone else will profit off their marks or tarnish the reputation they have developed for those marks. In extreme cases, the failure to police one’s marks may result in losing them entirely. The biggest issues in trademark protection today arise from the use of trademarks on the Internet. In this blog, we identify some situations that you may encounter or want to think about.

Also, note that we have set a date for our free webinar – please join us on November 15th at 1pm Eastern Time for a live overview of the many issues we have discussed in this series. You can register here.

Cybersquatting

You undoubtedly have one or more websites to promote your services, to interact with your listeners or viewers or to make video or audio available for online viewing or listening. You have spent a fair amount of time and money promoting your sites. Then, you learn that someone else has registered and is using a domain name that is confusingly similar to your domain name or one of your trademarks to attract traffic to their site. There are numerous ways that these cybersquatters can register a variation on your domain name or mark: adding (or dropping) a hyphen, adding a generic term, misspelling a word, omitting a letter, and replacing the letter “o” with a “zero” or the letter “l” with a “one” are some of the most common.
Continue Reading Trademark Basics, Part Five: Trademarks on the Internet

Prospective advertisers come to your station and describe their ideas for local ads. A realtor’s ad ends with “There’s no place like home.” A boat builder says he will tell buyers, “You’re going to need a bigger boat.” And, a used car salesperson wants to say “I’m gonna make you an offer you can’t refuse.” These are pretty clever and, after all, they are everyday catchphrases, right?

Just don’t do it.

Advertising campaigns can be a source of legal liability for broadcasters when they merely allude to famous creative content that is protected under intellectual property laws. The recent decision in Lion’s Gate Entertainment, Inc. v. TD Ameritrade Services Company, Inc. demonstrates how broadcasters that publish ads containing pop culture references can run afoul of trademark rights and other legal issues.
Continue Reading Dirty Dancing with Trademark Rights: How Pop Culture References in Ads Can Raise Legal Issues

Two months ago, I wrote here about the risks of publishing ads or engaging in promotional activities that refer to the Super Bowl without approval of the NFL. Now, with the NCAA Basketball Tournament about to begin, broadcasters, publishers and other businesses need to be multiply wary about potential claims arising from their use terms and logos associated with the tournament, including March Madness,® The Big Dance,® Final Four® or Elite Eight,® each of which is a federally registered trademark.

The NCAA Aggressively Polices the Use of its Trademarks

It has been estimated that, last year, the NCAA earned $900 million in revenue associated with the NCAA Basketball tournament. Moreover, its returns from the tournament have historically grown each year. Most of this income comes from broadcast licensing fees. It also has a substantial amount of revenue from licensing March Madness® and its other marks for use by advertisers. As part of those licenses, the NCAA agrees to stop non-authorized parties from using any of the marks. Indeed, if the NCAA did not actively police the use of its marks by unauthorized companies, advertisers might not feel the need to get a license or, at least, to pay as much as they do for the license. Thus, the NCAA has a strong incentive to put on a full court press to prevent non-licensees from associating their goods and services with the NCAA tournament through unauthorized use of its trademarks.
Continue Reading It’s March Madness! Know the NCAA’s Rulebook or Risk A Foul Call Against the Unauthorized Use of Its Trademarks