America’s favorite export, that’s right, LeBron James, and his media company, and Nike were all sued for trademark infringement this week in the Federal District Court of Washington D C.
Why were they sued for trademark infringement and what does that tell the small business? So first off they were, excuse me, they were sued for trademark infringement because all of these entities, LeBron James’ media company and Nike are using a phrase called “I am more than an athlete,” which another company in the Washington DC area already has registered for a clothing and other apparel in the nonprofit industry.
In other words, they’re selling clothing in order to raise funds for other charities. So it’s very tricky, actually, when it comes to trademark law because, obviously, Nike and LeBron James are using this phrase in clothing. But if you go take a look at the use, the use is really on the front of the clothing, maybe on the sides, maybe on the sleeves.
And in trademark law we call that ornamental use. Ornamental use of a phrase where people are not really expecting a trademark is not really trademark use. We have to have in clothing use of a trademark on hang tags, on the back tags maybe where consumers expect it like on a breast pocket or maybe on the back of jeans.
Those particular areas show us that, that that’s where branding typically happens and therefore it’s trademark use and not ornamental use. So that could easily be a defense that is used. That’s not actually trademark use.
The other issue that I have is if I’m the plaintiff, also ornamental use might be a problem. The registration of the trademark not withstanding, if there’s ornamental use only then the plaintiff doesn’t have a trademark to enforce.
The lesson here is if you’re an apparel company of any sort, no matter what kind of apparel is being made, you have to make sure that your trademarks are used properly as a trademark hang tags, breast pockets, back pockets.
Those particular areas show that your mark is not, ornamental, if it’s just on the front, that’s going to be ornamental and therefore not a trademark.
I’m Anthony Verna, managing partner of Verna Law where we focus on IP and advertising law. Visit us vernalaw.com. See you next time.