February 2012

February 21, 2012, by Mandour & Associates, APC

Los Angeles – People other than New York Knicks player Jeremy Lin are looking to profit from his fast-rising fame by attempting to trademark the word “Linsanity,” the term being used to describe the frenzy surrounding the Taiwanese point guard.

Los Angeles resident Yenchin Chang was the first of four people other than Lin to file trademark applications for “Linsanity” with the United States Patent and Trademark Office. Chang, who also is of Taiwanese decent, is in no way affiliated with the twenty-three-year-old Lin, who has led the Knicks to a five-game winning streak after being let go by the Golden State Warriors.

“I wanted to be part of the excitement,” stated Chang, an entrepreneur in the import/export business. He added, “I’m very proud of Jeremy.” The Harvard-educated Lin was not selected in the NBA draft but was picked up in a partially guaranteed contract deal with his hometown team, the Golden State Warriors. The Warriors subsequently released him. Lin is the first American player in the NBA to be of Taiwanese decent.

According to the USPTO website, Mr. Chang filed for the trademark on February 7th. The “Linsanity” application was filed for use in relation to apparel. Another trademark filing was made two days later by Andrew W. Slayton of Los Altos, CA. Slayton, who used to coach Lin in high school, registered the domain names Linsanity.com and thejeremylinshow.com with both sites selling Lin-related merchandise.

Lin’s New York Knicks’ jersey has been the most popular online seller since February 4, when he scored twenty-five points and had seven assists in a game against the New Jersey Nets. Since then, Knicks hats and jerseys have become some of the most sought-after merchandise, more than any other NBA team currently.

Jeremy Lin is probably more concerned with maintaining his playing streak right now. However, to his credit he did file his own Linsanity trademark application on February 13th, just a day before two other would be entreprenuers. The trademark office will likely approve Chang’s first filed application. It will then be up to Lin to contest the filing by alleging a likelihood of confusion and a bad-faith attempt to profit off of his popular name. The two applications filed after Lin’s will also receive refusals and will most likely abandon.

February 10, 2012, by Mandour & Associates, APC

Los Angeles – Sprinkles Cupcakes, headquartered in Los Angeles, has recently settled a trademark infringement lawsuit with a Fairfield, Connecticut bakery that was operating under a similar name. The popular cupcake chain, which first opened in Beverly Hills in 2005, was the first cupcake-only bakery.

Sprinkles filed its trademark infringement complaint in July after Pink Sprinkles Bakery opened up on the east coast. That business, founded in 2009, calls itself “Fairfield’s first cupcake boutique in Brick Walk Promenade” and boasts about its staff’s decades of baking experience.

In its complaint, Sprinkles claimed that the similar business names – Sprinkles and Pink Sprinkles – were likely to cause confusion in the marketplace, causing damage to Sprinkles and injuring its reputation in the trade and with the public.

“The client had no idea there was anything called Sprinkles Cupcakes, because there were no stores here,” stated a trademark attorney for Pink Sprinkles. “It was an innocent mistake, and it was resolved amicably,” he added. As a result of the settlement, Pink Sprinkles has changed its name to Pink Cupcake Shack.

According to the lawsuit, Sprinkles sells its cupcake mix to several Williams-Sonoma retail stores, some of which are in Connecticut. The chain also has existing cupcake shops in New York, Chicago, and several other major cities in the United States. The lawsuit also stated that Sprinkles has plans to expand to Boston, Philadelphia, Toronto, London, and Paris.

In the past few years, since the marketplace for trendy, decorative cupcakes has become more and more competitive, Sprinkles has stepped up its game to protect its intellectual property. The chain, a hit with women and children, has worked hard to build its brand and image. In fact, its founder Candace Nelson, is a judge on the Food Network’s reality show Cupcake Wars and her famous cupcakes have been featured on “The Oprah Winfrey Show,” “The Today Show,” and “Entertainment Tonight,” to name a few.

In 2008, Sprinkles went after a Montecito, California cupcake shop called Sprinkled Pink Cupcake Couture because it was using a name to close for comfort for the chain along with a similar decoration that was too close to its trademarked dot. The cease and desist letter demanded that the Montecito bakery immediately change its name and decoration even though the owner had registered the business name in 2003. The bakery is no longer in business.

 

February 1, 2012, by Mandour & Associates, APC

Los Angeles – Sara Lee announced that it has signed an exclusive nine-year licensing agreement with Royal Philips Electronics. The agreement will cover all Philips-branded consumer coffee systems and will give Sara Lee full rights to use the SENSEO trademark.

Both companies currently co-own the SENSEO brand, with each having a fifty percent stake. Under the terms of the new agreement, Sara Lee will reportedly pay a total of $220.5 million in royalties to Philips over nine years.

According to a statement issued by Sara Lee Corp., the goal of the partnership with Philips is to drive innovation and expansion into new markets for its SENSEO brand, a global leader in the single-serve coffee segment. Since 2001, the two companies have collaborated on SENSEO, developing it into one of the world’s leading single-serve coffee systems, with over 33 million appliances sold worldwide. Sara Lee has been the manufacturer of the individual coffee pods, and Philips is the designer, manufacturer, and distributor of the single-serve coffee machines.

Under the agreement, Philips will continue to control the design, production, and distribution of the coffee machines, with Sara Lee taking full control of the SENSEO trademark, expanding it to new markets across the world. Sara Lee reportedly plans to accomplish this through its recent acquisitions of two overseas coffee and tea companies, CoffeeCompany, a chain of sixty cafes in the Netherlands, and House of Coffee, a beverage foodservice company with customers in Denmark and Norway.

“Owning 100 percent of SENSEO, our most global coffee brand, is a major step for ‘CoffeeCo’ as we prepare for our upcoming spin-off into a separate, publicly-traded company,” said Michiel Herkemij, chief executive officer of Sara Lee Coffee and Tea. Herkemij added, “With increased innovation, we believe this move will enable us to build on our leading position and further position SENSEO as a global power brand in the coffee segment.”

Sara Lee Corp., established in 1956, owns a large portfolio of well-known trademarked brands, including Ball Park, Hillshire Farm, Jimmy Dean, Pickwick Teas, Douwe Egberts, Sara Lee, and SENSEO. The company, which employs approximately 20,000 people worldwide, brings in nearly $8 billion in annual net sales from its brands of food and beverage products. With its announcement that the company will divide into two publicly-traded entities, Sara Lee will continue its focus on the North American meat market while it seeks expansion into the international coffee and tea markets as well.