Weekly IP Buzz for the week ending July 26, 2019

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending July 26, 2019.

Philadelphia Bar, The Jacks NYB, Seeks Play Gloria! Trademark Rights

A Philadelphia bar is seeking to trademark ‘PLAY GLORIA’ and use it in connection with the sale of apparel and merchandise emblazoned with the mark, claiming first use and creation of the connection of use with the mark in support of the St. Louis Blues, a hockey team that used Laura Branigan’s 1982 song “Gloria” throughout their Stanley Cup championship series.

The Use of “Play Gloria” as a Trademark

While it is relatively common for sports teams to use songs as rallying cries for their fans, the question of who used it first, the team or the fans, can often become muddled.  Moreover, because the sports teams naturally have more resources at their disposal, including but not limited to, legal teams, press divisions, and merchandise manufacturers, fans may often back down from claiming first use or credit for the popularity of the song’s use in connection with any particular sports team.

As the Blues have used the song “Gloria” as both their rally song and postgame victory song, the phrase “Play Gloria” has been printed on all sorts of fan merchandise.  Not only have the Blues sold their own apparel with the phrase “Play Gloria” on it, but several other third parties also sell t-shirts, hats, and other similar sports paraphernalia with the phrase printed on it.  

The Jacks NYB Claims First Trademark Rights in Play Gloria

The Philadelphia bar, The Jacks NYB, has claimed rights of first use and filed trademark applications to register the marks “PLAY GLORIA” and “PLAY GLORIA!” in order to assert exclusive rights to use the mark in connection with the sale of fan apparel.  Although the Blues are actually involved in the creation of the use of the song as a victory song because the idea to adopt the song came from a mix of interaction between fans and actual Blues hockey players that had been watching a football game at the bar, the Blues have officially stated that they have no involvement with the pending trademark applications and have pulled previously existing merchandise with PLAY GLORIA printed on it from their official store.

The Jacks NYB note that St. Louis media has covered the origin story extensively, which they cite as more evidence to bolster their claims of first use.  And while the applications have not been officially approved, trademark counsel representing the Philadelphia bar has already sent a number of cease-and-desist letters to other vendors that currently sell merchandise with PLAY GLORIA printed on it.  While The Jacks NYB has confirmed that they have already become embroiled in a legal dispute with Arch Apparel over the pending mark, they have vehemently denied bringing any sort of legal action against the St. Louis Blues hockey team itself.

Read the full article here.

Japan Politely Asks Kim Kardashian to Rebrand: Kimono Trademark

Kim Kardashian is no stranger to controversy or being in the news, but her latest business foray has piqued interest abroad as well as in the intellectual property field.  The latest public criticism has come from Kardashian’s decision to name her new shapewear line “Kimono,” and her recent moves to trademark “KIMONO,” “KIMONO BODY,” and “KIMONO WORLD” in connection with the shapewear line.

Kardashian’s choice to use “kimono” has incited a considerable amount of public criticism and response.  Those involved in questioning Kardashian’s choice range from individuals on the Internet all the way to national representatives in Japan.  Specifically, the mayor of Kyoto City, Daisaku Kadokawa has penned an open letter to Kardashian, inviting her to visit Japan to experience “the essence of Kimono Culture” in hopes that she will reconsider use of the term in connection with her shapewear line.  While a country cannot typically intervene in a trademark application without holding specific rights in the contested mark or a confusingly similar mark, the mayor of Kyoto City hoped to persuade Kardashian by noting that the kimono had not only been an important part of Japanese cultural history, but also because the Japanese government is actively working to register kimono with UNESCO to be listed on the Intangible Cultural Heritage List.

Similarly, social media has also been abuzz in protest of Kardashian’s latest move.  Across multiple platforms such as Facebook, Instagram, and Twitter, Japanese women have posted photographs of themselves in actual kimonos in protest against Kardashian’s latest business venture.  Despite all of the public outcry, such sentiment is prohibited from impacting the U.S. Trademark Office’s decision.  The decision over whether Kardashian will be able to successfully register “KIMONO” is left ultimately up to the U.S. Trademark Office alone, and the federal agency is banned from making subjective decisions on the registrability of the mark based on public sentiment.  

Read the full article here.

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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.

Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.