branding – Attorney Evan Brown

December 18, 2024 Trademarks, Unfair Competition

When does a neighborhood name become a trademark?

neighborhood trademark
Stephanie Reveron sued multiple companies, including Zumiez, New Balance, Amazon, Etsy, Zazzle, and Redbubble, for trademark infringement. Plaintiff claimed that her trademarks, such as LES NYC and LOWER EAST SIDE were being improperly used on clothing and other products. She argued that defendants’ use of these marks created consumer confusion and amounted to unfair competition.

Defendants moved to dismiss the claims. They argued that their use of the words “Lower East Side,” “LES,” and similar phrases was protected under the “fair use” doctrine of trademark law. Specifically, defendants claimed they were using these terms descriptively to refer to the well-known geographic location in New York City, not as trademarks to identify the source of the goods.

The court dismissed certain claims but let others proceed. For certain defendants, such as New Balance, Etsy (partially), and Zazzle, the court found that the use of “Lower East Side” and similar terms clearly referred to the neighborhood, not to plaintiff’s brand. This use was descriptive, in line with the fair use defense, and did not infringe plaintiff’s rights. For others, such as Amazon and Redbubble, the court found that the use of the phrases—especially when stylized or prominently displayed—could plausibly be interpreted as trademarks, making dismissal inappropriate at this stage.

Why did the court reach this decision?

The court considered the fair use defense, which allows the use of trademark-protected words in a descriptive sense if done in good faith. The court reasoned that the phrases “Lower East Side” and “LES” are commonly understood as referring to the geographic location—a neighborhood in New York City. For most defendants, this descriptive use was clear, especially when the words appeared alongside other terms or images referencing the neighborhood. The court also noted that fair use often turns on context: when words appear on a product without clear descriptive meaning, the line between fair use and trademark infringement becomes less certain.

For defendants such as Amazon and Redbubble, the court found that more analysis was needed. In some cases, the terms “LES” or “Lower East Side” were stylized or prominently displayed in a way that might suggest they were being used as a brand identifier rather than in a purely descriptive sense. As a result, the court allowed those claims to move forward.

In short:

The court dismissed claims against most defendants because their use of the words “Lower East Side” and “LES” was descriptive and protected under the fair use defense. However, for some defendants, such as Amazon and Redbubble, the court allowed the claims to proceed because the use of the phrases could plausibly be seen as a trademark rather than a description of a location.

Three reasons why this case matters:

Clarifies Fair Use: The case highlights how courts apply the fair use defense when trademarks overlap with descriptive geographic terms.
E-Commerce Accountability: It raises questions about the role of online platforms, such as Amazon and Etsy, when third-party sellers offer potentially infringing products.
Balancing Trademark Rights: The case underscores the challenge of balancing trademark protections with the public’s right to use common words, such as neighborhood names, in a descriptive way

Reveron v. Zumiez, Inc. et al., 2024 WL 5131627 (S.D.N.Y. Dec. 17, 2024)

July 24, 2023 Trademarks

When X makes it an ex-brand: Can a company retain rights in an old trademark after rebranding?

This past weekend Elon Musk announced plans to rebrand Twitter as X. This strategic shift from one of the most recognized names and logos in the social media realm is stirring discussion throughout the industry. This notable transformation raises a broader question: Can a company still have rights in its trademarks after rebranding? What might come of the famous TWITTER mark and the friendly blue bird logo?

Continued Use is Key

In the United States, trademark rights primarily arise from the actual use of the mark in commerce (and not just from registration of the mark). The Commerce Clause of the United States Constitution grants Congress the power to regulate commerce among the states. Exercising this constitutional authority, Congress enacted the Lanham Act, which serves as the foundation for modern trademark law in the United States. By linking the Lanham Act’s protections to the “use in commerce” of a trademark, the legislation reinforces the principle that active commercial use, rather than mere registration, is a key determinant of rights in that trademark. So, as long as a company has genuinely used its trademark in commerce (assuming no other company has rights that arose prior in time), the company retains rights to that mark.

Though a company may transition to a new brand identity, it can maintain rights to its former trademark by continuing its use in some form or another. This might involve selling a limited line of products under the old brand, using the old brand in specific regions, or licensing the old trademark to other entities. Such actions show the company’s intent to maintain its claim and rights to the mark—such rights being tied strongly to the actual use of the mark in commerce. No doubt continued use of the old marks after a rebrand can be problematic, as it may paint an unclear picture as to how the company is developing its identity. For example, as of the time of this blog post, X has placed the new X logo, but still has the words “Search Twitter” in the search bar. And there is also the open question of whether we will in the future call content posted to the platform “tweets”.

Avoiding Abandonment

If a company does not actively use its trademark and demonstrates no intention to use it in the future, it runs the risk of abandonment. Once a trademark is deemed abandoned, the original owner loses exclusive rights to it. This is obviously problematic for a brand owner, because a third party could then enter the scene, adopt use of the abandoned mark, and thereby pick up on the goodwill the former brand owner developed over the years.

What Will Twitter Do?

It is difficult to imagine that X will allow the TWITTER mark to fall into the history books of abandoned marks. The mark has immense value through its long use and recognition—indeed the platform has been the prime mover in its space since its founding in 2006. Even if the company commits to the X rebranding, we probably have not seen the end of TWITTER and the blue bird as trademarks. There will likely be some use, even if different than what we have seen over the past 17 years, to keep certain trademark rights alive.

From the archives:

Is Twitter a big fat copyright infringing turkey?

April 16, 2023 Artificial Intelligence

Five legal issues around using AI in a branding strategy

AI branding strategy

The ability of AI to gather, analyze, and interpret large sets of data can lead to invaluable insights and efficiencies. But as businesses increasingly rely on AI to develop and execute branding strategies, they must be aware of the potential legal issues that can arise. Here are five issues to consider:

Data Protection and Privacy Laws: AI systems often require vast amounts of data to operate effectively, much of which may be personal data collected from customers. This brings into play data protection and privacy laws, such as the General Data Protection Regulation (GDPR) in the European Union and the California Consumer Privacy Act (CCPA) in the United States. Non-compliance with these laws can lead to substantial fines and reputational damage. So businesses must seek to ensure that their use of AI complies with all applicable data protection and privacy laws.

Intellectual Property Rights: AI systems can generate content, designs, or even brand names. But who owns the rights to this AI-generated output? This is a complex and evolving area of law, with different jurisdictions taking different approaches. Businesses need to remember to consider intellectual property issues, both in the context of protecting their own rights and not infringing upon the rights of others.

Bias and Discrimination: AI systems learn from the data on which they are trained. If this data contains biases, the AI system can amplify these biases, leading to potentially discriminatory outcomes. This not only has ethical implications but also legal ones. In many jurisdictions, businesses can be held liable for discriminatory practices, even if unintentional. Businesses should ensure their AI systems are trained on diverse and representative data sets and regularly audited for bias.

Transparency and Explainability: Many jurisdictions are considering regulations that require AI systems to be transparent and explainable. This means that businesses must be able to explain how their AI systems make decisions. If a customer feels that it has been unfairly treated by an AI system, the business may need to justify the AI’s decision-making process. Compliance with these requirements can be challenging, particularly with complex AI systems.

Contractual Obligations and Liability: When businesses use third-party AI systems, it is crucial to clearly understand and define who is responsible if something goes wrong. This includes potential breaches of data protection laws, intellectual property infringement, and any harm caused by the AI system. Businesses should ensure their contracts with AI vendors clearly outline the responsibilities and liabilities of each party.

While AI presents numerous opportunities for enhancing a branding strategy, it also introduces a range of legal considerations. Businesses must navigate these potential legal pitfalls carefully so that they can leverage the power of AI while minimizing legal risk.

March 17, 2023 Contracts, Trademarks

The power of publicity and trademark use provisions in legal agreements

publicity agreement

In today’s brand-conscious marketplace, legal agreements between businesses often contain clauses allowing for publicity of the agreement itself and use of each other’s trademarks. This practice of mutual brand promotion can lend credibility to the involved parties and also serve as a powerful marketing strategy.

Understanding Publicity and Trademark Use Provisions

Publicity provisions in a legal agreement permit the parties involved to disclose specific details about their agreement to third parties. This could involve a simple announcement about the partnership or a more detailed disclosure about the agreement’s purpose and scope.

Trademark use provisions allow parties to use each other’s trademarks, logos, or brand names. This could be in marketing materials, on products, or in other forms of communication such as websites and social media content.

Why Include Publicity and Trademark Use Provisions?

While the specifics can vary, there are several general reasons why parties might wish to include these provisions:

Brand Awareness: Such provisions can help increase brand visibility and recognition, particularly when partnering with a well-known or highly respected company.
Credibility and Trust: The ability to publicize a partnership or to use a trusted brand’s trademark can lend credibility and foster trust among customers and stakeholders.
Market Penetration: For companies looking to break into new markets, a strategic partnership with a well-known brand can offer a significant advantage.

Key Considerations

Before including these provisions in an agreement, the parties should consider several key points:

Scope of Use: The agreement should clearly define what aspects of the agreement can be publicized and how each party’s trademarks can be used.
Quality Control: Trademark owners will want to ensure that their trademarks are used in a manner consistent with their own quality standards and brand identity.
Duration and Termination: It should be clear when the rights to publicity and trademark use begin and end, and what happens upon termination of the agreement.
Approval Process: Typically, any use of the other party’s trademark or any public disclosure of the agreement would require prior approval.
Indemnification: The agreement should include indemnification provisions to protect against any legal repercussions from the use of trademarks or publicity statements.

Publicity and trademark use provisions can be powerful tools in a legal agreement, offering enhanced brand visibility, credibility, and market penetration. However, they must be handled with care, considering the scope, quality control, duration, approval, and indemnification issues that may arise.