Two of the biggest brands in the fitness industry went head-to-head recently in a lawsuit for trademark infringement, which means one company is using some form of a trademark that another company believes is too similar to their own. Peloton has sued Lululemonover trade dress, which is a type of trademark that encompasses product design or product packaging.
Brief History of the Parties
Peloton is known for its high-end, at-home workout machines and classes, and has sued to protect its athletic wear line from trademark infringement. At number 1, Lululemon Athletica is the most popular activewear brand of 2022. To understand the sheer size and popularity of Lululemon compared to Peloton, when it comes to clothing, Peloton does not even appear in the top 15 most popular brands of 2022, according to USA today.
Ten Studio Albums. Five Tours. Two Re-Recordings. One Massive Fanbase. We know all too well that Taylor Swift is the pinnacle of success for the music industry. Spanning multiple genres from country to pop and even some folk(lore), Taylor Swift has accomplished a lot in her first 32 years of life. But what’s gotten her to this level of recognition?
Some say it’s her songs. Some say it’s her stage presence. Others say it’s her re-recordings. Taylor Swift says it could be her songs, “with a catchy hook and an intensely cathartic bridge section.” Call it what you want, I say her level of recognition comes from her fearless team of lawyers registering her trademarks.
Donald Trump, a divisive figure in our current political climate, has faced a massive setback with his new social media network “Truth Social.” On August 2nd, the United States Patent and Trademark Office (“USPTO”) denied Trump’s application to federally register (which grants federal protection of the trademark) the network’s name as a trademark. This is one of many setbacks that the former President has faced since leaving office. This relatively minor setback could potentially cause major re-branding issues for Truth Social further down the line if his appeal is unsuccessful. If Trump continues using the mark, he may be sued and will eventually have to change the name of his social media network or incur major legal fees.
In March 2022, the greatest NFL quarterback of all time, Tom Brady, announced the end of his short-lived “retirement” and would be pursuing new business endeavors. Almost immediately, I saw ads on my Instagram feed for his new athletic clothing line called “BRADY”. What intrigued me the most was not the price of over $100 for a sweatshirt, but the superscript “TM” in the brand’s logo. As a student interested in intellectual property, this made me curious – what else has Brady trademarked?
Companies have all kinds of intellectual property (IP), including trademarks, but just how important is that IP to a company? As a business attorney for nearly 40 years, Professor Patricia Lee of Loyola can tell you that trademarks and other forms of IP are hugely important and becoming more important every day.
As the director of the Loyola Business Law Clinic, Prof. Lee and her students find that trademark and other IP issues are a natural part of assisting and counseling the clinic’s clients. “Trademarks are very important to business startups and non-profit organizations,” said Prof. Lee.
So, where is Prof. Lee from and how did she get into business?
While big companies may have dozens of trademarks, smaller and lesser-known companies can also have valid trademarks, as long as they satisfy the trademark criteria.
Can a large company infringe a smaller company’s mark? Yes! This is sometimes referred to as “reverse confusion,” where the small company is the first user and the large company is the later user. But, there can still be confusion among consumers. The larger company may use its money and resources (like ads) to infiltrate the smaller company’s market with a similar mark on similar goods or services.
I love board games and have been playing a lot of Settlers of Catan online during the pandemic. I use a site called colonist.io, which is an offshoot, unaffiliated version of the Settlers of Catan game. During my Intellectual Property (IP) class with Professor Ho earlier this year, I wondered how IP rights extend to board games. When we tend to think of IP, we might think of cool technological inventions for patents or Disney’s Mickey Mouse for copyright. IP generally relates to protecting human created products, names, and expressions, and can give its owner rights to protect these.
Thousands of people have taken to the streets, amid the COVID-19 pandemic, to demand justice and equal treatment for Black Americans after the murder of George Floyd. Throughout these protests, the slogan “Black Lives Matter” is often used by those condemning the treatment of Black Americans at the hands of police officers around the country. Is this phrase a trademark, and if it is, who owns it? Do trademark principles allow the Black Lives Matter Foundation, an entity associated with the movement, to have a trademark in phrases such as “Black Lives Matter” so that they can prevent other entities from commercially profiting from using it?
Let’s start by discussing some trademark principles.