As the Cubs neared their historic World Series win, opportunists saw a way to cash in. %CUT% Imagine if you will, it’s September 2016. Cubs are on their way to breaking a 108 year losing streak. The streets of Chicago are lined with euphoric fans. Tables full of Cubs merchandise are everywhere. Street vendors are encouraging fans (whether die hard or fair weather) to purchase logo branded merchandise to support the Cubs. But there’s a problem with this picture. Some of those vendors don’t have a license from the Cubs. So, their blue, red and white merchandise is counterfeit. The Cubs filed suit against 84 counterfeit vendors seeking an injunction. The suit was settled with a confidential settlement agreement and a permanent injunction. What isn’t confidential is that the vendors acknowledged that their products bear “substantially indistinguishable” or “confusingly similar” imitations of the Cubs’ marks. The vendors also admitted they have no legitimate right to use those marks.

Sometimes, the last word isn’t really the last word. %CUT% Here are some updates for previous posts:

The New York Yankees were not amused when someone tried to register parodies of its famous trademarks %CUT%. IET Products thought it would be funny to register trademarks that parodied the New York Yankees longtime logo and catch phrase. IET replaced the bat on the logo with a syringe referring to alleged steroid use by the players. Not willing to stop there, IET also sought to register “The House that Juice Built” as a parody of the famous catch phrase “The House that Ruth Built” (meaning Babe Ruth for the initiated). The TTAB refused to allow registration of IET’s marks. The TTAB reasoned that IET wasn’t really interested in making commercial use of the marks because they were going to be used as an “ornaments” on IET’s goods.

If you don’t use your trademark, it could become a zombie. %CUT% Macy’s Department Stores has been absorbing local department stores and their trademarks for decades. Once Macy’s takes over, it rebrands the store. But, those old department store trademarks still exist in the minds of the consuming public. In other words, the dead trademarks became zombies. Seeing the marketing potential of zombie trademarks, Strategic Marks started selling T-shirts using them. Macy’s filed a trademark infringement suit against Strategic Marks and won. It helped that Macy’s hadn’t really abandoned most of the trademarks. It was using them in its “Heritage Collection”. In the end, the parties settled and Macy’s transferred some trademarks to Strategic Marks.

Someone registered the trademarks associated with Yosemite National Park and it wasn’t the National Park Service. How could that happen? %CUT% Until recently, the National Park Service had a concessions contract with Delaware North Parks & Resorts Inc. to run Yosemite National Park attractions, including the Ahwahnee Hotel, the Wawona Hotel, Curry Village and Badger Pass. Delaware North lost the contract in an open bidding process. Delaware North filed suit claiming that the bidding process was unfair. Then Delaware North pointed out that one of its subsidiaries had registered the trademarks associated with Yosemite. Now Delaware North won’t let the National Park Service and the successful concessions contractor use the trademarks. The National Park Service has brought a proceeding before the Trademark Trial and Appeal Board seeking cancellation of the registrations based upon “False Association”, “Abandonment” and “Dilution”.