Cele-Branding: Dedicated to Protecting Celebrity Brands (Trademarks, Trade Names, Copyright)

Susan Lucci's Celebrity Branding Efforts

Aimee Kaplan — Thu, 25 Sep 2008 05:00:00 GMT

Susan Lucci is a Daytime Emmy Award-winning actress. Lucci is best known for playing the role of Erica Kane on the television soap opera All My Children. She has appeared on All My Children since the show's inception on January 5, 1970.

Lucci was nominated for the Outstanding Lead Actress in a Drama Series Emmy for her work on All My Children almost every year since 1978. After 18 failed nominations in a row, she finally won in 1999. Lucci reportedly earns over $1 million a year, making her one of the highest-paid actors in daytime television.

In addition to her role on All My Children, Lucci has appeared in a number of television shows including Saturday Night Live and her most recent spot on this season’s Dancing With The Stars.

Lucci has also sought to protect her name as a trademark. A search of the U.S. Patent and Trademark Office Website Database yields two live “hits” including:

YOUTHFUL ESSENCE BY SUSAN LUCCI + Design U.S. Trademark Registration No. 2,852,460 for use on “skin care system comprised of skin cleansers, skin creams, skin moisturizers, skin toners, facial mists and hand held battery operated skin cleansing tools with sponge attachments all sold together as a unit” in Class 3.
PERSONAL MICRODERMABRASION BY SUSAN LUCCI U.S. Trademark Application Serial No. 78/359,065 for use on “skin care system comprised of skin cleansers, skin creams, skin moisturizers, skin toners, facial mists and hand held battery operated skin cleansing tools with sponge attachments all sold together as a unit” in Class 3.

Lucci’s fans look forward not only to her performances on Dancing With the Stars and All My Children, but also to her expanded celebrity branding efforts.

Aimee Kaplan, the trademark lawyer dedicated to actors protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Michael Kors: Project Trademarks

Aimee Kaplan — Wed, 24 Sep 2008 05:00:00 GMT

Michael Kors is an extremely well-known American designer known for multiple collections, ranging from high-end designer collections to his more affordable MICHAEL Michael Kors line. Kors is a judge on the Emmy-nominated reality television program Project Runway, which currently airs on Bravo. He is also a contributor to Harpers Bazaar magazine.

With his three collections, and television and magazine appearances, Kors has become a household name. But has he protected his trademarks?

A search of the U.S. Patent and Trademark Office Website Database yields 16 live “hits” including:

MK MICHAEL KORS Registration No. 3,438,412 for use on “eyeglass frames, eyeglasses, sunglasses, eyeglass cases, eye shades, protective eye wear and eye wear for sports” in Class 9; “handbags” in Class 18; and “men's and women's clothing, namely, dresses, skirts, blouses, pants, jackets, blazers, coats, raincoats, capes, ponchos, scarves, hats, gloves, sweaters, belts, hosiery, bathing suits, halter tops, socks, jeans, warm up suits, sweatshirts, sweatpants, leggings, shorts, slacks, sport coats, sport shirts, suits, T-shirts, tuxedos, vests, ties; undergarments for men and women, namely, boxer shorts, bras, bustiers, camisoles, nightgowns, nightshirts, pajamas, panties, undershirts, underwear; footwear and headwear; belts” in Class 25.
MICHAEL KORS Registration No. 3,160,981 for use on “watches” in Class 14.
MK MICHAEL KORS Application Serial No. 78/278,276 for use on “Jewelry, including jewelry made of precious and non-precious metals; watches, timepieces, namely, clocks” in Class 14; and “Tablecloths, textile napkins and placemats; bed covers, bedding, namely, sheets, pillow cases, duvet covers, bedspreads, comforters, shams, blankets; towels and wash cloths” in Class 24.
MICHAEL MICHAEL KORS Registration No. 3,080,631 for use on “eyeglass frames, eyeglasses, sunglasses, eyeglass cases, eye shades, protective eye wear and eye wear for sports” in Class 9; “carrying cases, namely, attaché cases; bags, namely, tote bags; luggage; suitcases; umbrellas; handbags; purses; wallets” in Class 18; and “men's and women's clothing, namely, dresses, skirts, blouses, pants, jackets, blazers, coats, raincoats, capes, ponchos, scarves, hats, gloves, sweaters, belts, hosiery, bathing suits, halter tops, socks, jeans, warm up suits, sweatshirts, sweatpants, leggings, shorts, slacks, sport coats, sport shirts, suits, t-shirts, tuxedos, vests, ties; undergarments for men and women, namely, boxer shorts, bras, bustiers, camisoles, nightgowns, nightshirts, pajamas, panties, undershirts, underwear; footwear and headwear; belts” in Class 25.
MICHAEL KORS ISLAND Registration No. 3,146,355 for use on “fragrance products, namely perfume, cologne, eau de parfum, solid perfume, essential oils for personal use, eau de toilette, body powder; non-medicated skin care preparations; bath products namely, bath oil, bubble bath, bath powder, bath salts, shower gels and lotions; soap for personal use; self-tanning compositions namely, tinted lotions and gels; after sun care compositions namely, moisturizers, lotions and gels; skin cleansing creams, lotions and gels; hand lotions, creams and gels; skin moisturizing lotions, creams and gels” in Class 3.
MICHAEL KORS Registration No. 3,319,381 for use on “bed covers, bedding, namely, sheets, pillow cases, duvet covers, bedspreads, comforters, shams, blankets” in Class 24.
VERY MICHAEL KORS Application Serial No. 77/186,026 for use on “fragrances for personal use; non-medicated skin care preparations; cosmetics” in Class 3.
MICHAEL KORS VERY PRETTY Application Serial No. 77/345,394 for use on “fragrances for personal use; non-medicated skin care preparations” in Class 3.
KORS MICHAEL KORS Registration No. 2,824,657 for use on “men’s and women’s clothing, namely, bandannas, bathing suits, belts, blazers, blouses, bodysuits, capes, caps, cardigans, chemises, coats, culottes, ear muffs, gloves, halter tops, hats, headbands, hosiery, jackets, jeans, jogging suits, jumpers, jumpsuits, kerchiefs, kimonos, leggings, leotards, loungewear, mittens, mufflers, neckerchiefs, neckties, neckwear, overalls, pants, pantsuits, pantyhose, parkas, pedal pushers, playsuits, ponchos, pullovers, raincoats, scarves, shawls, shirts, snowsuits, sport coats, sport shirts, stockings, stoles, suits, sweat pants, sweat shirts, sweaters, t-shirts, trousers, tuxedos, vests and warm-up suits; footwear for men and women, namely, athletic shoes, boots, clogs, galoshes, moccasins, overshoes, sandals, sport shoes, dress shoes and sneakers; and undergarments for men and women, namely, boxer shorts, brassieres, bustiers, camisoles, corselets, garter belts, girdles, negligees, nightgowns, nightshirts, pajamas, panties, peignoirs, undershorts and undershirts” in Class 25.
MICHAEL KORS Registration No. 2,547,039 for use with “retail store services in the fields of clothing, jewelry and clothing accessories” in Class 35.
MICHAEL KORS Registration No. 2,708,259 for use on “cosmetics, namely, aftershave lotion, antiperspirant, artificial eyelashes, artificial fingernails, bath powder, bath salt, beauty mask, blusher, body lotion, body oil, body powder, bubble bath, cold cream, cologne, cotton swabs for cosmetic purposes, cuticle removing preparation, dentifrice, electric pre-shave lotion, emery boards, eye makeup, eye makeup remover, facial makeup, facial scrub, hand lotion, hand soap, lip gloss, lipstick, mouthwash, nail hardener, nail polish, nail polish remover, nail polish top coat, nail strengthener, night cream, perfume, personal deodorant, rouge, shave cream, shower gel, skin cleaning cream, skin emollient, skin moisturizer, skin toner, suntan lotion, talcum powder, toilet soap, toilet water, and toothpaste; hair care products, namely, hair conditioner, hair dressing for men, hair dye, hair rinse, hair shampoo, and hair spray” in Class 3.
KORS MICHAEL KORS Registration No. 2,810,931 for use on “fragrance products, namely, perfumes, eau de parfum, solid perfume, colognes, eau de cologne, eau de toilette, after shave lotion, scented aromatherapy oils, creams and powders; bath products, namely, bath oil, bubble bath, bath powder, flakes and salts, and shower gel and lotions, body powder and talcum powder, bronzing powder, suntan lotions and creams, skin toner, self-tanning compositions, after sun care compositions, skin cleaning cream, skin moisturizer and hand lotions; facial products, namely, eye makeup and remover, facial makeup, beauty mask, blush and rouge, lipstick and lip gloss; nail products, namely, nail polish and remover, nail hardener, cuticle removing compositions; hair care products, namely, shampoo, conditioner, spray, mousse, rinses and dyes; antiperspirants and deodorants, exfoliators for face and body; preshave lotion; dentifrice, tooth paste; and mouthwash” in Class 3.
MICHAEL KORS Registration No. 2,520,758 for use on “eyeglasses, eyeglass cases” in Class 9.
MICHAEL KORS Registration No. 2,520,757 for use on “handbags, billfolds, credit card cases, suitcases, back packs, key cases, knap sacks, tote bags” in Class 18.
MICHAEL KORS Registration No. 2,049,326 for use on “clothing for use by women; namely, anoraks; ascots; babushkas; bandanas; bathrobes; belts; blazers; blousons; bodysuits; boleros; boots; caftans; camisoles; capes; caps; cardigans; chemises; clogs; fur coats; suit coats; culottes; earmuffs; gloves; nightgowns; halter tops; hats; headbands; hosiery; jeans; jogging suits; jumpers; jumpsuits; kerchiefs; kimonos; leggings; loungewear; mittens; moccasins; mufflers; neckerchiefs; neckties; neckwear; nightshirts; pajamas; pantsuits; parkas; pedal pushers; pinafores; ponchos; pullovers; raincoats; sandals; scarves; shawls; shorts; undershirts; athletic shoes; gym shorts; sweat shorts; ski suits; slacks; snowsuits; socks; sport coats; sport shirts; stockings; stoles; suits; suspenders; sweat pants; sweat shirts; T-shirts; trousers; vests; vested suits; and warm-up suits; and, clothing for use by men; namely, anoraks; ascots; bandanas; belts; blazers; capes;cardigans; clogs; fur coats; suit coats; gloves; hats; jeans; jogging suits; kerchiefs; mufflers; neckerchiefs; neckties; neckwear; parkas; pocket squares; ponchos; pullovers; raincoats; scarves; shorts; undershirts; [athletic shoes;] gym shorts; sweat shorts; ski suits; slacks; sport coats; sport shirts; suits; suspenders; sweat pants; sweat shirts; T-shirts; trousers; tuxedos; vests; vested suits” in Class 25.
MICHAEL KORS Registration No. 1,977,507 for use on “ladies' clothing; namely, dresses, jackets, pants, skirts, shirts, blouses, shorts, sweaters, coats, swimwear” in Class 25.

The earliest trademark has a filing date of December 3, 1990 which indicates that Kors knew early to file trademark applications to protect his name as a designer. The plethora of additional filings show that trademarks applications are always in style!

Aimee Kaplan, the trademark lawyer dedicated to designers protecting their celebrity brands

Copyright 2008 Aimee Kaplan

This post is dedicated with much love to my Grandma, a woman who's always in style.

Professional Golfer Natalie Gulbis The Brand

Aimee Kaplan — Tue, 23 Sep 2008 05:00:00 GMT

A celebrity post by David Dawsey, the I.P. Golf Guy and author of the Golf-Patents Blog.

How much is a pretty face and a good golf game worth? A lot! Just ask 25 year old multimillionaire Natalie Gulbis.

The products that she endorses get a lot of mileage from her name and face. In fact, in an unusual twist in the golf market I suspect that the number of golfers that know the brand of GPS rangefinders and grips that she endorses is much higher than the number of golfers that know the brand of clubs or balls that she plays.

Recently Natalie has begun to protect her brand. In July Natalie’s company NAG Sports, LLC filed two trademark applications. First, NAG Sports filed a design mark application (Serial Number 77515963) that describes the mark as:

The mark consists of two swans facing each other. The necks of the swans form a heart with the word "Natalie" in the middle. The body of the swan on the left forms the letter "G" and the body of the swan on the right forms the letter "G" in reverse.

This makes perfect sense given that Natalie is of Latvian descent with Gulbis meaning swan in Latvian. You can view the design mark in the upper left corner of Natalie’s website. The application includes the following list of goods and services that NAG Sports plans to associate with the mark:

IC 003. G & S: cosmetics, perfume
IC 014. G & S: jewelry, jewelry cases, watches

IC 016. G & S: stationery writing paper and envelopes, stationery cases, books in the field of golf, calendars, office supplie

IC 018. G & S: purses

IC 025. G & S: athletic footwear, coats, golf shirts, hats, shirts, shorts, slacks, skirts, socks, sun visors, t-shirts, outerwear

IC 028. G & S: covers for golf clubs, golf club grips, playing cards and card games, games

IC 029. G & S: protein based, nutrient-dense snack bars, drinks

IC 041. G & S: entertainment in the nature of competitions in the field of golf; entertainment services, namely, personal appearances by a sports celebrity; providing a website on a global computer network featuring information about appearances, accomplishments, exploits and biography of a professional golfer

The second trademark application is a word mark application directed to the NATALIE GULBIS mark (Serial Number 77533008) and is directed to the same goods and services listed above.

It looks like Natalie has big plans to expand her brand way beyond the typical golf products!

David Dawsey - The Golf Trademark Lawyer
PS – check out these posts for more on golfers and their trademarks: Greg Norman, Tiger, Bubba Watson, Tiger, Shark, Golden Bear, and Arnie, Tadd Fujikawa.

The Rachel Zoe (Trademark) Project

Aimee Kaplan — Wed, 17 Sep 2008 05:00:00 GMT

Rachel Zoe is a very well-known fashion stylist who has worked with many A-list celebrities including Jennifer Garner, Joy Bryant, Demi Moore, Cameron Diaz, Debra Messing, and Nicole Ritchie. In 2007, Zoe released a style guidebook with Rose Apodaca titled Style A to Zoe: The Art of Fashion, Beauty, and Everything Glamour. She is also the star of a new reality television show entitled “The Rachel Zoe Project” which started last week on Bravo. In the very first episode of the show, Zoe discusses her future plans to embark on her own branding efforts. Has she started? The answer is yes.

A search of the U.S. Patent and Trademark Office yields two “hits” including:

RACHEL ZOE U.S. Trademark Application Serial No. 77/518,738 filed for use on” skin care preparations, namely lotions, body creams, face creams, skin emollients, skin toners, astringents for cosmetic purposes, and facial, body and beauty masques; cosmetics, namely lipstick, eyeshadow, foundation cream, blushes, face powder, eye pencils, lip pencils and mascara; personal hygiene products, namely soaps, deodorant for personal use, shower gel, perfumes and colognes, and massage oils; hair care products, namely shampoos and conditioners” in Class 3; “sunglasses” in Class 9; “jewelry, namely watches, necklaces, bracelets, earrings, rings, charms and pins” in Class 14; “handbags” in Class 18” and “clothing, namely body suits, bras, brassieres, briefs, bustiers, camisoles, crop tops, garter belts, girdles, hosiery, knit tops, leotards, lingerie, negligees, panties, pantyhose, petite culottes, socks, slips, stockings, t-shirts, long sleeve t-shirts, tank tops, tights, thongs, underpants, undershirts and underwear” in Class 25.
RZ + Design U.S. Trademark Application Serial No. 77/520,490 filed for use on “skin care preparations, namely lotions, body creams, face creams, skin emollients, skin toners, astringents for cosmetic purposes, and facial, body and beauty masques; cosmetics, namely lipstick, eyeshadow, foundation cream, blushes, face powder, eye pencils, lip pencils and mascara; personal hygiene products, namely soaps, deodorant for personal use, shower gel, perfumes and colognes, and massage oils; hair care products, namely shampoos and conditioners” in Class 3; “sunglasses” in Class 9; “jewelry, namely watches, necklaces, bracelets, earrings, rings, charms and pins” in Class 14; “handbags” in Class 18; and “clothing, namely body suits, bras, brassieres, briefs, bustiers, camisoles, crop tops, garter belts, girdles, hosiery, knit tops, leotards, lingerie, negligees, panties, pantyhose, petite culottes, socks, slips, stockings, t-shirts, long sleeve t-shirts, tank tops, tights, thongs, underpants, undershirts, underwear” in Class 25.

Both applications were filed on behalf of Rachel Zoe, Inc., a California corporation.

Whatever your passion in fashion, Zoe proves that trademark applications are always in style.

Aimee Kaplan, the trademark lawyer dedicated to celebrity stylists protecting their brands

Copyright 2008 Aimee Kaplan

Phelps Phan Starts Michael Phelps Branding Effort

Aimee Kaplan — Tue, 16 Sep 2008 05:00:00 GMT

Anyone who watched the Olympics this year couldn’t help but hear about Michael Phelps. For those of you who may have missed it, Phelps is a swimmer on the American Olympic team. Phelps holds the record for the most gold medals won at a single Olympics with the eight gold medals he won this year. As of August 2008, he also holds seven world records in swimming.

After the Olympics, Phelps has been making a few celebrity appearances including the VMAs and Fashion Rocks. In addition, Michael Phelps recently appeared with Lil Wayne and Amy Poehler on Saturday Night Live, where Phelps was the host. With all of these appearances, Phelps may decide to commence his branding efforts. However, it appears that one eager "Phelps phan" may have attempted to beat him to the punch.

A search of the U.S. Patent and Trademark Office Website Database yields one hit: the MICHAEL PHELPS U.S. Trademark Application Serial No. 77/550,778 for use on “A-shirts; Anglers' shoes; Apres-ski shoes; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic shoes; Ballet shoes; Balloon pants; Ballroom dancing shoes; Baseball shoes; Beach shoes; Bermuda shorts; Board shorts; Bowling shoes; Boxer shorts; Boxing shoes; Button-front aloha shirts; Camp shirts; Canvas shoes; Capri pants; Cargo pants; Cleats for attachment to sports shoes; Clothing for wear in judo practices; Clothing for wear in wrestling games; Cycling shoes; Dance shoes; Deck-shoes; Denims; Dress shirts; Drivers; Fitted shoe or boot covering to protect the shoes or boot from water or other damage; Fitted swimming costumes with bra cups; Fleece shorts; Football shoes; Golf shirts; Golf shoes; Gym shorts; Gymnastic shoes; Handball shoes; Head wear; Heel pieces for shoes; Hockey shoes; Hooded sweat shirts; Infant wear; Infants' shoes and boots; Insoles; Jeans; Jogging pants; Knit shirts; Leather pants; Leather shoes; Long-sleeved shirts; Lounge pants; Moisture-wicking sports pants; Moisture-wicking sports shirts; Night shirts; Non-disposable cloth training pants; Nurse pants; Open-necked shirts; Panties, shorts and briefs; Pants; Paper shoes used when going through metal detectors to keep feet and socks clean; Petti-pants; Pique shirts; Pleated skirts for formal kimonos (hakama); Polo shirts; Protective metal members for shoes and boots; Rubber shoes; Rugby shirts; Rugby shoes; Rugby shorts; Running shoes; Scientific and technological apparel, namely, shirts, pants, jackets, footwear, hats and caps, uniforms; Shirt fronts; Shirt yokes; Shirts; Shirts for suits; Shoe dowels; Shoe inserts for primarily non-orthopedic purposes; Shoe pegs; Shoe soles; Shoe straps; Shoes. Shoes soles for repair; Short overcoat for kimono (haori); Short petticoats; Short sets; Short trousers; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Shorts; Ski and snowboard shoes and parts thereof; Ski pants; Ski wear; Skiing shoes; Skirt suits; Skirts; Skirts and dresses; Sleep shirts; Sliding shorts; Snow pants; Snowboard pants; Soccer shoes; Sport shirts; Sports pants; Sports shirts; Sports shirts with short sleeves; Stretch pants; Surf wear; Sweat pants; Sweat shirts; Sweat shorts; Swim caps; Swim trunks; Swim wear; Swim wear for gentlemen and ladies; Swimming caps; Swimming caps; Swimming costumes; Swimming trunks; T-shirts; Tap pants; Tap shoes; Tee shirts; Tennis shoes; Tennis wear; Toboggan hats, pants and caps; Tongue or pullstrap for shoes and boots; Track and field shoes; Track pants; Training shoes; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underwear, namely, boy shorts; Volleyball shoes; Walking shorts; Waterproof jackets and pants; Wearable garments and clothing, namely, shirts; Wind pants; Wind shirts; Women's shoes; Work shoes and boots; Yoga pants; Yoga shirts” in Class 25.

Is the application legitimate? It’s filed by Wen Yi Wu, an individual citizen of China who resides in New York City, New York. The application is newly filed and has not yet been assigned to an examining attorney. Most likely, the trademark examiner will require that a Consent signed by Phelps be submitted in which he consents to the use of his name on these goods. In the meantime, Phelps may wish to monitor this application as well as any uses of his name on goods.

Aimee Kaplan, the trademark lawyer dedicated to athletes and Olympic medalists protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Nicole Kidman Protects Her Celebrity Brand

Aimee Kaplan — Mon, 15 Sep 2008 05:00:00 GMT

Nicole Kidman is an Academy Award and Golden Globe winning actress and one of the highest-paid actresses in the motion picture industry. In addition to her many movie roles, she serves as a UNIFEM and UNICEF Goodwill Ambassador. She is also well known for her former marriage to Tom Cruise and her current marriage to Keith Urban.

Aside from being featured in Chanel No. 5 advertisements, Kidman is not well-known for celebrity branding. However, a search of the U.S. Patent and Trademark Office Website Database does yield the NICOLE KIDMAN U. S. Trademark Application Serial No: 77/012,982 filed for use on:

Class 9: Motion picture films featuring action, adventure, dramatic, comedic, documentary, sports, music and animation themes; DVDs, CDs, CD-Roms, audio and video cassettes, and computer software featuring movies in the field of action, adventure, drama, comedy, documentaries, sports, music and animation; downloadable movies, shows, music, graphics, and ring tones via a global computer network and wireless devices; computer game and video game software;

Class 16: Printed publications, namely, books, magazines, newsletters, and newspapers in the field of entertainment and motion pictures; series of fiction books; series of non-fiction books in the field of biographies; children's books; posters, stickers, calendars, stationery, postcards, note cards, sticker albums, coloring books, note books, greeting cards, mounted and unmounted photographs, photograph albums, printed scripts and screenplays featuring action, adventure, dramatic, comedic, documentary, sports, music and animation themes; cartoon strips, cartoon prints

Class 20: Figures and figurines made of plaster, plastic, wax, or wood; non-metal and non-leather key chains

Class 21: Figures and figurines made of china, crystal, earthenware, glass, porcelain; mugs, dishes, beverageware

Class 25: Clothing, namely, t-shirts, hats, jackets, sweatshirts, pants, tops, bottoms, headwear, footwear, underwear, coats, vests, dresses, and belts

Class 28: Toys, games and playthings, namely, plush toys, bath toys, bendable toys, battery operated action toys, children's multiple activity toys, drawing toys, dog toys, cat toys, mechanical action toys, inflatable toys, ride on toys, push toys, pull toys, toy vehicles, sand toys, stackable toys, squeeze toys, board games, card games, toy figures, dolls and doll accessories, talking toys, stuffed toys, wind-up toys, musical toys, action skill games, coin-operated video games, game tables, manipulative games, parlor games; Christmas ornaments

Class 38: Television broadcasting; broadcasting music, television shows, movies and radio programs via a global computer network; communications services, namely, transmitting streamed sound and audio-visual recordings via the Internet and to mobile telephones and devices; providing online bulletin boards and chat rooms for transmission of message among computer users

Class 41: Entertainment services, namely, motion film production and distribution; providing a website featuring entertainment news, games, graphics, music, film clips, photographs, movies and shows, and other multimedia materials; production and distribution of television programs and cable television programs; entertainment services in the nature of on-going television shows or variety shows; live performances by an actress and entertainment personality

The application was filed in the name of Nicole Kidman as an individual U.S. citizen. The application is pending and the first request for extension of time to file a Statement of Use has just been granted for the application.

Kidman’s fans in the United States (as well as all around the world) look forward to Kidman promoting her celebrity brand.

Aimee Kaplan, the trademark lawyer dedicated to actresses protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Brand It like (David) Beckham

Aimee Kaplan — Fri, 12 Sep 2008 05:00:00 GMT

David Beckham is well-known to soccer fans for his skill on the field. He has played for Manchester United, Real Madrid, and most recently, Los Angeles Galaxy. He currently has the highest salary in MLS history. In 2007, Beckham was listed as by Forbes magazine as Number 15 on its list of most influential celebrities. Beckham has also gained a significant amount of fame and status as a celebrity by virtue of his marriage to Spice Girl Victoria Beckham, otherwise known as “Posh Spice.”

In addition to his time on the soccer field, Beckham has several endorsement deals including his cologne David Beckham Instinct with Coty. According to Forbes Magazine, Beckham earns approximately $32 million a year and is one of the highest-earning soccer players. Beckham earns more from endorsements than any other player in the game. He has signed deals to be the face of Gillette and Adidas, as well as sell sunglasses for Police, clothes for U.K. retailer Marks & Spencer, soft drinks for Pepsi and mobile phones for Vodafone.

Beckham has also filed a few trademark applications for use on a plethora of goods and services. A search of the U.S. Patent and Trademark Office Website Database yields three “hits” including:

•   DAVID BECKHAM INSTINCT U.S. Trademark Registration No. 3,184,025 for use on “Bleaching preparations and other substances, namely, powders, gels, tablets, and liquids for laundry use; general purpose cleaning, polishing, scouring and abrasive powders, gels, tablets, and liquids; soaps; perfumery and perfumes; essential oils; cosmetics; hair lotions; dentifrices; eau de cologne; cologne; eau de toilette; scented body spray; after sun block, lotions, creams, gels, milks and balms; pre-shave and after-shave lotions, balm, cologne, creams, gels, milk and moisturising cream; after-shave and after-shaving preparations, namely, lotions, balm, cologne, creams, gels, milk and moisturisers; articles for hair care, namely, shampoos, conditioners, heat protection sprays, hot oil treatments and hair serums; body care products and preparations, namely, moisturizers, waxes, exfoliating treatments, anti-wrinkle creams, skin firming creams, cleansers, toning creams, hand creams, cuticle cream, cuticle conditioners, nail creams, softeners and hardeners, body wash, body scrubs, body gels, body emulsions, body masks, facial scrubs, shower gels, fake tan treatments, anti-spot and anti-blemish treatments, acne treatments, age retardant gel and lotions, anti-aging creams, aromatherapy creams, aromatherapy oils, aromatherapy lotions, baby oil, bathing lotions, beauty creams, beauty lotions, beauty gels, beauty masks, beauty milks, beauty serums, and exfoliant creams; preparations for the hair and body, namely, body and beauty care preparations, exfoliants for the hair and skin, facial cleansers, facial concealers, facial masks, facial scrubs, facial washes, hair bleach, hair decolorants, massage oils and skin emollients; hand lotions and toilet waters; anti-perspirants; deodorants; fragranced anti-perspirants; fragranced deodorants; hair care preparations, hair color, and hair styling preparations; shaving lotions; hair dyes and other cosmetics. car polish and cleaning preparations; non-medicated skin creams and lotions; styling gels, lotions and mousse; fragranced skin care preparations; fragranced body care preparations; fragranced facial moisturizer; fragranced face care preparations” for use in Class 3.   Interestingly, this application was filed pursuant to the Madrid Protocol.
•   THE DAVID BECKHAM ACADEMY + Design U.S. Trademark Application Serial No. 78/584,486 for use on large variety of goods and services, among others, in many classes including perfume, body and hair products in Class 3; key rings and key chains in Class 6; sunglasses and computer and electronic goods in Class 9; jewelry, watches and other goods of precious metal in Class 14; printed matter and paper products in Class 16; bags, wallets and satchels made of leather in Class 18; household and kitchen utensils in Class 21; bed and table linen, towels and curtains in Class 24; clothing in Class 25; toys and games in Class 28; food and beverage products in Classes 29, 30 and 32; entertainment, education and coaching services in Class 41; and restaurant and cafeteria services in Class 43.
•   GO 3 DAVID BECKHAM 3 + Design U.S. Trademark Application Serial No. 77/429,905 for use on pharmaceutical and medical preparations, among other goods, in Class 5 and various food and beverage products in Classes 29, 30 and 32.

The first two marks are owned by Beckham Brand Limited, and the last application is filed on behalf of Go3 Limited.

Beckham is obviously focused on his branding and endorsement efforts. He has expanded the typical celebrity branding effort of clothing and perfume/cologne into food, home goods, and even restaurant and cafeteria services. Beckham is renowned for his excellent soccer skills, but it is likely that his success will continue to grow with his celebrity branding efforts.

Aimee Kaplan, the trademark lawyer dedicated to celebrity branding by athletes

Copyright 2008 Aimee Kaplan

The TTAB Gives Sam Edelman’s Newest Trademark Application The Boot

Aimee Kaplan — Fri, 12 Sep 2008 05:00:00 GMT

Sam Edelman is known in fashion for his stylish, comfortable footwear. The "Sam" of the trend setting "Sam & Libby" footwear line, his signature line of women's shoes combine fashion forward style with comfort and craftsmanship. His shoes are sold in Macy’s and Nordstroms as well as other stores across the country. However, as the TTABlog reports, being well-known as a footwear designer does not entitle one to use his or her name when the line expands. In its most recent precedential decision, the Trademark Trial and Appeal Board (“TTAB”) affirmed a refusal to register the SAM EDELMAN mark for use on “luggage, handbags, purses, wallets, all-purpose tote bags, all-purpose sports bags, backpacks” in Class 18. The basis for the refusal was a likelihood of confusion with the EDELMAN mark registered by a different party for use on handbags, luggage trunks, among other goods in Class 18. The TTAB affirmed the examiner’s refusal even though the SAM EDELMAN mark (Registration No. 3,271,895) was already registered for use on “footwear, namely, boots, shoes, slippers and sandals.” In fact, the TTAB specifically noted that “…the fact that SAM EDELMAN is an individual’s name does not give applicant an unfettered right to use that name if it conflicts with a previously registered mark.”

While the TTAB may have given his newest application the boot, Edelman can continue to use his mark on his signature footwear. For any additional product lines, Edelman may have to use a different mark.

Aimee Kaplan, the trademark attorney dedicated to celebrity branding

Copyright 2008 Aimee Kaplan

Ryan Seacrest: Television, Radio, and Trademarks

Aimee Kaplan — Thu, 11 Sep 2008 05:00:00 GMT

For those of you who haven’t seen him as the host of American Idol, co-host of E! News and Dick Clark’s Rockin’ New Year’s Eve, or heard him host America’s Top 40 on the radio, Ryan Seacrest is an Emmy award-nominated television and radio host and television producer. Seacrest also developed and produced shows for the E! Network, including Denise Richards: It's Complicated. Seacrest has endorsement deals with both Proctor & Gamble and Coca-Cola. According to Forbes magazine, Seacrest reportedly earns $32 million a year.

With all of this hard work, Seacrest is undoubtedly a very busy man. Does he even have time to protect his trademarks? The answer is yes. A search of the U.S. Patent and Trademark Office Website Database yields seven live “hits” including:

RSP RYAN SEACREST PRODUCTIONS + Design U.S. Trademark Application Serial No. 78/528,508 for use with “entertainment services, namely, radio and television programs featuring performances by a television and radio personality; entertainment services, namely, production of radio and television programs; entertainment services, namely, production of live musical events and concerts” in Class 41.
RSP RYAN SEACREST PRODUCTIONS + Design U.S. Trademark Registration No. 3,383,430 for use with “entertainment services, namely, television programs featuring performances by a television and radio personality; entertainment services, namely, production of television programs” in Class 41.
RYAN SEACREST PRODUCTIONS U.S. Trademark Registration No. 3,024,418 for use with “entertainment services, namely, the production of radio and television programming” in Class 41.
RYAN SEACREST U.S. Trademark Registration No. 3,234,453 for use on “clothing, namely, shirts” in Class 25.
RYAN SEACREST U.S. Trademark Registration No. 2,995,854 for use with “entertainment services, namely, hosting radio and television programs” in Class 41.
ON AIR WITH RYAN SEACREST U.S. Trademark Registration No. 2,964,302 for use with “entertainment services, namely, radio and television programs featuring performances by a television and radio personality” in Class 41.
ON AIR WITH RYAN SEACREST + Design U.S. Trademark Application Serial No. 77/501,560 for use with “entertainment services, namely, radio and television programs featuring performances by a television and radio personality” in Class 41.

All of these marks were filed on behalf of Ryan Seacrest Productions, Inc., a California corporation.

Almost all of these marks deal with Seacrest’s main line of work (i.e., entertainment services) although he has apparently expanded his branding efforts to a line of shirts. Since Seacrest continues to add more programs to his already busy schedule, it may be that he will continue to expand his RYAN SEACREST brand in the future. His fans, possibly Simon Cowell included, look forward to it.

Aimee Kaplan, the trademark lawyer dedicated to entertainers and hosts protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Madonna: The Material Girl Protects Her Trademarks

Aimee Kaplan — Wed, 10 Sep 2008 05:00:00 GMT

As Madonna enters her fifth decade, she has never had more fans. Guinness Book of World Records lists her as the world’s most successful female recording artist of all time, and the top-earning female singer in the world. She has an estimated net worth of over US$400 million, and has sold over 200 million records worldwide. She is ranked by the Recording Industry Association of America (RIAA) as the best-selling female rock artist of the twentieth-century. On March 10, 2008, she was inducted into the Rock and Roll Hall of Fame.

In 1992, Madonna founded her own entertainment company Maverick consisting of a record company, a film production company, and also music publishing, television, merchandising and book-publishing divisions. It was a joint venture with Time Warner as part of a $60 million recording and business deal. The deal gave her a twenty percent royalty. Madonna also became the worldwide model for the company H&M in 2006. As part of the deal, Madonna designed a track suit. The next year, H&M carried the clothing line M by Madonna which was launched internationally and sold out almost immediately.

With her multiple albums, movie career, and clothing line at H&M, Madonna has become a household name. She has continually reinvented herself, shocked audiences, and been adored by millions. But has she protected her trademark?

A search of the U.S. Patent and Trademark Office Website Database yields two “hits”:

•   MADONNA U.S. Trademark Registration No. 1,463,601 for use on clothing, namely, t-shirts, vests, sweatshirts, tops, pants and dresses in Class 25. The mark was registered on November 3, 1987 and claims a first use date of April 10, 1985.
•   MADONNA U.S. Trademark Registration No. 1,473,554 for use with entertainment services, namely, live and recorded musical, dance and dramatic performances. The mark was registered on January 19, 1988 and claims a first use date of March 1979.

Each application is filed in the name of Madonna Ciccone dba Madonna.

While Madonna may not have as many trademark applications on file as other celebrities, she clearly knew the value of protecting her trademarks well before the celebrity branding trend.   Her fans look forward to her Sticky & Sweet tour as well as additional branding efforts.

Aimee Kaplan, the trademark lawyer dedicated to musicians and actresses protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Rihanna: The “Good Girl Gone Bad” Protects Her Trademarks

Aimee Kaplan — Tue, 09 Sep 2008 05:00:00 GMT

In recent years Rihanna has burst on the music scene as Jay-Z’s protégé. She’s a multi-platinum MTV VMA, Grammy, and American Music Award winning artist, and CoverGirl spokesperson. Since the release of her debut album, Rihanna has amassed eleven top 40 hit singles in the U.S., and has four Billboard Hot 100 songs (“Disturbia,” “Take a Bow,” “Umbrella,” and “SOS”), tying her with Mariah Carey and Beyoncé as the female solo artist with the most number one songs this decade.   She performed the opening number in last night’s VMA’s, a huge honor given that it was the 25th anniversary of the VMA’s.

As Rihanna’s career blossoms, she has also begun protecting her name as a trademark. A search of the U.S. Patent and Trademark Office Website Database yields ten “hits” including:

•   RIHANNA U.S. Trademark Application Serial No. 77/441,771 for use on umbrellas in Class 18 (Rihanna signed a deal with Totes for umbrellas after her hit song “Umbrella.”).
•   RIHANNA U.S. Trademark Application Serial No. 78/684,841 for use on posters; calendars; temporary tattoos; stickers; decals; magazines, books and other printed materials in Class 16.
•   RIHANNA U.S. Trademark Application Serial No. 78/684,830 for use on musical sound recordings; audio-visual recordings, computers, computer accessories, and interactive video game programs, among other electronic goods, in Class 9.
•   RIHANNA U.S. Trademark Application Serial No. 78/684,877 for use with “Modeling agencies; modeling for advertising or sales promotion; product demonstration services in shop windows by live models; promoting the goods and services of others through issuance of product and/or service endorsements, and through appearances for product and/or service advertising; distributorships in the field of musical audio and video recordings” in Class 35 and record production; music production; audio recording and production; videotape production; motion picture song production, among other services, in Class 41.
•   RIHANNA U.S. Trademark Application Serial No. 78/684,857 for use on clothing and clothing accessories in Class 25.
•   RIHANNA U.S. Trademark Application Serial No. 77/482,096 for use on jewelry, watches and other goods of precious metal in Class 14.
•   RIHANNA U.S. Trademark Application Serial No. 77/482,078 for use on cosmetics, fragrances, and other goods in Class 3.
•   RIHANNA U.S. Trademark Application Serial No. 77/441,798 for use on all-purpose sports and athletic bags; beach, book, carry-on, duffel, diaper, gym, leather shopping, shoulder, tote and travel bags, among other goods, in Class 18.
•   R + Star Design U.S. Trademark Application Serial No. 77/441,987 for use on all-purpose sports and athletic bags; beach, book, carry-on, duffel, diaper, gym, leather shopping, shoulder, tote and travel bags, among other goods, in Class 18.
•   R + Star Design U.S. Trademark Application Serial No. 77/442,003 for use on clothing and clothing accessories in Class 25.

All of these applications were filed in the name of Roraj Trade, LLC, a New York limited liability company, and most of them were filed on an intent-to-use basis.

Rihanna’s fans can now not only look forward to her new music but also seeing the RIHANNA brand products and services in stores.

Aimee Kaplan, the trademark lawyer dedicated to musicians protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Rachel Bilson Protects Her New Clothing Line

Aimee Kaplan — Mon, 08 Sep 2008 05:00:00 GMT

Rachel Bilson used to be known as the “other” girl on The O.C. However, in recent years, she has appeared in several films (most recently Jumper) and has become even more popular for her fashion choices. That’s probably the reason why DKNY signed a deal with Rachel to design a junior sportswear line called EDIE ROSE. Bilson reportedly did not want her own name on the label, but named the line after her grandmother (Edie) and a close family friend (Rose). The line, to be sold in Macy’s, Lord & Taylor and Nordstrom, is mostly black and white with some yellow (after a yellow scarf which inspired Rachel).

Now for some of the most important questions (from a trademark point of view): was a trademark application filed and who owns it? The EDIE ROSE Application Serial No. 77/362,536 was filed for use on “tops; jeans; dresses; shirts; jackets; sweaters; caps; pants” in Class 25. The application was filed on January 2, 2008 on behalf of Rachel Bilson. The application was published for opposition on June 10, 2008, and a Notice of Allowance recently issued on September 2, 2008. Once a Statement of Use is submitted in which a specimen (such as a hangtag or clothing label) and the dates of first use are submitted, the application will then proceed towards registration.

While Rachel does not yet appear to own a RACHEL BILSON trademark application (and appears reluctant to put her own name on a label), many fans look forward to seeing her line in the stores and hope that she will continue with EDIE ROSE and her own branding efforts.

Aimee Kaplan, the trademark attorney dedicated to actors and actresses protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Tyra Banks: America's Next Top Mogul

Aimee Kaplan — Sun, 07 Sep 2008 05:00:00 GMT

Tyra Banks is well-known as a supermodel, appearing in runway shows as well as in Victoria’s Secret’s advertising campaigns and on the cover of the Sports Illustrated Swimsuit Edition. However, in recent years, Tyra has become more well-known for her work off the catwalk. Her production company, Bankable Productions, co-produces two very popular shows which Tyra created: America’s Next Top Model and The Tyra Show. From her two shows, Tyra makes an estimated $18 million a year, and her net worth is estimated at $75 million.   She owns twenty-five percent of America’s Next Top Model, and her production company Bankable Productions signed a deal to develop projects for Warner Brothers television. With each of her projects, Tyra has used her power to effect change, whether in the modeling industry or by covering difficult and controversial topics on The Tyra Show.

With all of this hard work, Tyra has also found time to file a multitude of trademark applications.   All of the following intent-to-use applications were filed on behalf of Ty Loke, LLC, a California limited liability company:

•   TYRA BANKS (Application Serial No. 78/686,702) for use on cosmetics, perfume, hair products, candy, and gum, among other goods, in Class 3.
•   TYRA BANKS (Application Serial No. 78/686,754) for use on candles and related goods in Class 4.
•   TYRA BANKS (Application Serial No. 78/686,805) for use on nutritionally fortified beverages; vitamin and mineral supplements; ready to eat nutritional food bar for use as a meal replacement; baby food; room deodorants, among other goods, in Class 5.
•   TYRA BANKS (Application Serial No. 78/686,820) for use on musical sound recordings; audio-visual recordings, namely, compact discs, tape cassettes, audio cassettes, audio tapes, audio discs, records, CD-ROMs, video tapes, video cassettes, video discs, DVDs, DATs, MP3s, and laser discs, all featuring music; downloadable musical sound recordings; downloadable video recordings featuring music; downloadable electronic publications in the nature of books, booklets, magazines, journals, manuals, brochures, leaflets, pamphlets and newsletters, all in the field of music, entertainment, beauty, fashion, modeling, lifestyles, home décor, the arts, culture, politics and education; interactive video game programs, among other goods, in Class 9.
•   TYRA BANKS (Application Serial No. 78/686,836) for use on a variety of electric goods including electric grills, cookers, ovens, fans, and lamps, among other goods, in Class 11.
•   TYRA BANKS (Application Serial No. 78/686,846) for use on jewelry, watches and other goods of precious metal in Class 14.
•   TYRA BANKS (Application Serial No. 78/686,860) for use on a variety of paper products in Class 16.
•   TYRA BANKS (Application Serial No. 78/686,870) for use on all-purpose sports and athletic bags; beach, book, carry-on, duffel, diaper, gym, leather shopping, shoulder, tote and travel bags, among other goods in Class 18.
•   TYRA BANKS (Application Serial No. 78/686,880) for use on furniture, among other goods, in Class 20.
•   TYRA BANKS (Application Serial No. 78/686,887) for use on mugs, cups, goblets, bottles and jars sold empty, among other household goods, in Class 21.
•   TYRA BANKS (Application Serial No. 78/686,895) for use on blankets, towels, and fabric, among other goods, in Class 24.
•   TYRA BANKS (Application Serial No. 78/686,906) for use on clothing and clothing related accessories in Class 25.
•   TYRA BANKS (Application Serial No. 78/686,928) for use on hair accessories and pins, among other goods, in Class 26.
•   TYRA BANKS (Application Serial No. 78/686,939) for use on wallcoverings; wallpaper; wall hangings, carpets, among other goods, in Class 27.
•   TYRA BANKS (Application Serial No. 78/686,943) for use on toys and playthings, sporting goods, arcade games, hand held unit for playing video games and accessories, hand held unit for playing electronic games and coin-operated video games; Christmas tree accessories, toy candy dispensers and holders, among other goods, in Class 28.
•   TYRA BANKS (Application Serial No. 78/686,978) for use with retail stores, wholesale stores, mail order services, online ordering services, online retail stores, electronic retailing services via computer, and retail store services, available through computer communications and interactive television, all featuring cosmetics, hair, nail, bath and body products, candles and accessories, bags and accessories, clothing and accessories, footwear, eyewear and accessories therefor, jewelry and watches and accessories, among other services, in Class 35.
•   TYRA BANKS (Application Serial No. 78/686,982) for use with “entertainment services, namely, personal appearances by an entertainer, personality, celebrity or model; entertainment services, namely, live, televised and movie appearances by a professional entertainer; entertainment services, namely, providing information, commentary and articles about music, fashion, beauty, modeling, television, movies, and general entertainment, all online via a global computer network; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials; music publishing services; music composition and transcription for others; song writing services; publication of online magazines; publication of books, of magazines, of journals, of newspapers, of periodicals, of catalogs, and of brochures; record production; music production; audio recording and production; videotape production; motion picture song production; production of video discs for others; recording studios; entertainment services, namely, producing musical audio and video programs; distributing musical audio and video programs; distribution of musical audio and video recordings for broadcast; entertainment in the nature of live musical performances; entertainment, namely, live music concerts; television and radio production; television and cable television show production; radio entertainment production; motion picture film production; film editing; special effects animation services for film and video; entertainment in the nature of on-going television, cable television and radio programs featuring music, comedy, drama, fashion shows, exhibitions and competitions and spoken word; television and cable television programs featuring music, comedy, drama, fashion shows, exhibitions and competitions and spoken word; entertainment in the nature of ongoing television and cable television reality shows and programs. entertainment, namely, an ongoing talk show broadcast over television, cable television, radio, satellite, audio and video media; providing a variety show distributed over television, cable television, radio, satellite, audio and video media; entertainment in the nature of beauty pagents; entertainment in the nature of fashion shows; entertainment in the nature of ongoing television and cable television shows and programs featuring modeling and/or beauty competitions, events and exhibitions; entertainment services, namely, conducting contests and parties; night clubs; educational services in the nature of beauty schools; educational services, namely, conducting courses, classes, seminars, workshops, lectures and conferences in the fields of beauty, fashion, modeling, acting, music, the arts, physical fitness, health and nutrition, and distributing course materials in connection therewith; educational services, namely, providing tutorial sessions and conducting programs in the fields of beauty, fashion, modeling, acting, music, the arts, physical fitness, health and nutrition; educational services, namely, one-on-one and group mentoring in the fields of beauty, fashion, modeling, acting, music, the arts, physical fitness, health and nutrition; charitable services, namely, academic mentoring of school age children and young adults; theatre productions; entertainment services, namely, providing an on-line computer game; providing a computer game that may be accessed network-wide by network users; recreational, sport and summer camps; physical fitness consultation and instruction; providing an online computer database featuring information regarding physical fitness, exercise, nutrition and health; providing fitness and exercise facilities; health club services, namely, providing instruction and equipment in the field of physical exercise” in Class 41.
•   TYRA BANKS (Application Serial No. 78/686,985) for use with restaurant and bar services, and spa services, among other services, in Class 43.

Each of these applications contain an extensive goods or services description, and indicate that Tyra is serious about expanding, and protecting, her brand. Interestingly, there do not appear to be any trademark applications filed for BANKABLE PRODUCTIONS or THE TYRA SHOW.   There are AMERICA’S NEXT TOP MODEL applications on file, but those applications are filed in the name of Pottle Productions Inc., a California corporation.

Tyra’s star has been, and continues to be, on the rise. With all of her hard work and enthusiasm, there are certain to be more trademark application and more branding efforts in her very bright future.

Aimee Kaplan, the trademark attorney dedicated to models and moguls protecting their celebrity brands

Copyright 2008 Aimee Kaplan

Music Mogul Jay-Z Protects His Celebrity Brand

Aimee Kaplan — Tue, 13 Nov 2007 05:00:00 GMT

Rap star and music mogul Jay-Z (real name: Shawn Carter) is one of the most financially successful hip-hop artists and entrepreneurs in the United States. He is the president and CEO of Def Jam Recordings and co-founded Roc-A-Fella Records and the Rocawear clothing brand. He also co-owns The 40/40 Club and the New Jersey Nets NBA team.

With all of his financial success, it is no wonder that Jay-Z owns trademark registrations to protect his JAY-Z brand. A search of the U.S. Patent and Trademark Office Website Database yields four “live” hits for JAY-Z including:

JAY-Z (Registration No. 2485110) for use with “entertainment services in the nature of live musical performances by a performer or group” in Class 41.
JAY-Z (Registration No. 2485107) for use on “clothing for men, women and children, namely, shirts, T-shirts, jackets, sweatshirts, jerseys, hats, caps, scarves and bandanas” in Class 25.
JAY-Z (Registration No. 2485105) for use on a “series of musical sound recordings and prerecorded videotapes and videodiscs featuring music” in Class 9.
JAY-Z (Registration No. 2485104) for use on “printed matter, paper and stationery products, namely, posters, stickers, bumper stickers, postcards, decals and concert souvenir programs” in Class 16.

All of these marks are registered to Shawn Carter individually.

The marks were registered in 2001. In 2007 Jay-Z filed Section 8 & 15 Affidavits of Continued Use and Incontestability for each registration. While Jay-Z may keep his fans guessing with his retirement in 2003 and his return in 2006 with album “Kingdom Come,” the filing of maintenance documents for his trademark registrations indicates that Jay-Z plans to keep his celebrity name for use on the above-listed goods and services for the next few years, at least.

Aimee Kaplan, the trademark attorney dedicated to hip-hop artists and entrepreneurs protecting their celebrity brands

Copyright 2007 Aimee Kaplan

Protecting a Celebrity Surname: Shaun White

Aimee Kaplan — Mon, 12 Nov 2007 05:00:00 GMT

Anyone familiar with snowboarding has heard of Shaun White, a world famous snowboarder, skateboarder and Olympic and X Games athlete. While Shaun is young, his achievements are impressive. Many companies have taken notice: some of his sponsors include Burton, R.E.D., Oakley, T-mobile, Target, Red Bull, Sony, Mountain Dew, HP, and American Express, among many others.

Despite these many sponsorship deals, it is surprising that Shaun does not own any trademark applications or registrations to protect the SHAUN WHITE brand. However, it appears that Shaun may have licensed use of his name to his sponsor Burton for a line of snowboards, bags, and clothing items. Burton has filed a trademark application for THE WHITE COLLECTION (Application Serial No. 77048479) for use on “bags, namely, all purpose bags, day packs, backpacks” in Class 18; “snowboards” in Class 28; and “clothing, namely, jackets, pullovers, sweatshirts, shells, pants, vests, shirts, hats, gloves, headbands, long underwear, boots” in Class 25. The application has initially been refused by the U.S. Patent and Trademark Office on the grounds that the mark is descriptive (i.e., some of the Applicant’s clothing is white or nearly white).

It can often be difficult for an individual to protect his or her last name when filing a trademark application. Here, the application has been refused because WHITE in THE WHITE COLLECTION is arguably descriptive. However, a more common reason for refusal is that a mark is a primarily merely a surname and does not have any trademark significance. In other words, consumers will not see the mark as a trademark but merely as someone’s last name. One way to overcome a descriptiveness or surname refusal is to demonstrate that a mark has acquired distinctiveness due to the extensive use and promotion of the mark in the United States. Typically an applicant shows that a mark has acquired distinctiveness by submitting evidence of the sales and advertising of the goods/services on which the mark is used for at least five years. The examiner’s determination is made on a case-by-case basis and an examiner is given broad discretion in making that determination.

For THE WHITE COLLECTION Application, Burton has argued that the line of clothing is named after Shaun White and is not descriptive of the color white. The application is currently pending before the U.S. Patent and Trademark Office.

Aimee Kaplan - the trademark attorney dedicated to athletes protecting their celebrity trademarks

Copyright 2007 Aimee Kaplan

SuperModel and Celebrity Brand: Heidi Klum

Aimee Kaplan — Thu, 08 Nov 2007 05:00:00 GMT

Heidi Klum’s celebrity branding empire is ever expanding. Not only is she a well-known supermodel often featured in Victoria’s Secret campaigns, but she is the host of Project Runway, is married to Seal, and has her own jewelry line and candy brand. What trademarks has she filed to protect the HEIDI KLUM brand?

A search of the U.S. Patent and Trademark Office Website Database yields five “live” hits, including, among others:

HEIDI KLUM (Registration No. 2933420) for use on with “deodorant soap, anti-bacterial soap, skin soap, toilet soap; perfume, eau de perfume, eau de toilette, eau de cologne; essential oils for personal use; cosmetic products, namely, body cream, body emulsions, body mask cream, body-mask lotion, body mask powder, body masks, body oil, body powder, body scrub, shower gel, body lotion, after-shave lotion, deodorants and antiperspirants; hair tonics; dental cleansers, namely, dental bleaching gel, non-medicated dental rinse, tooth paste, tooth polish and tooth powders; aromatherapy creams, lotions and oils” in Class 3; “items for healthcare, namely medicated bath preparations, namely, menthol vapor bath preparations for babies, medicated bath salts, medicated hair care preparations, medicated shaving preparations, and medicated skin care preparations; salts for medical purposes, namely, Epsom salts and smelling salts; medicinal herbs; medicinal oils; dietary and nutritional supplements; dietetic beverages and food adapted for medical purposes; dietetic substances adapted for medical use; dietetic food preparations adapted for medical purposes; vitamin and mineral supplements; herbal supplements” in Class 5; “desk, pocket and wall calendars; books featuring photographs; books and magazines in the field of fashion, photography, modeling, fitness, beauty, and health; photographs, pictures and art prints featuring images” in Class 16; “goods made of leather and imitation leather, namely key holders, key rings, key chains, key cases, suit carriers, wallets, purses, business-card holders, document holders, backpacks, packaging bags, travel bags, shopping bags, beach bags, handbags, tote bags, shoulder bags, sling bags, shoulder belts, boxes, briefcases, trunks, suitcases, garment bags, rucksacks, attache cases; umbrellas and parasols” in Class 18; “furniture, namely armchairs, chairs, sofas, cabinets, cupboards, desks, dinner wagons, tea carts and magazine racks; mirrors; picture frames” in Class 20; “urns, vases and planters; serving trays not of precious metal, decorative trays not of precious metal; non-metal decorative boxes; dinnerware; ceramic, porcelain and earthenware goods, namely, mugs, jugs, bowls, plates, coffee cups, tea cups, saucers, tea pots and coffee pots; tea caddies; serving utensils, namely, pie servers, cake turners, spatulas, pot and pan scrapers, and cake servers; champagne buckets; beverage glassware, namely, high ball glasses, old fashioned glasses, wine goblets, carafes, pitchers; ice buckets; cocktail shakers; cork crews; glass decanters; cleaning combs and hair combs and sponges for household and cosmetic purposes” in Class 21; “plastic coasters” in Class 24; “clothing, namely, pants, skirts, shorts, jeans, shirts, sweaters, jackets, vests, coats, rainwear, swimwear, sleepwear, underwear, lingerie, sweatshirts, T-shirts, belts, leather belts, hats, gloves, socks, stockings, scarves, hats, caps and shoes” in Class 25; “sport equipment, namely, ankle and wrist weights for exercise, exercise weights, bags especially designed for skis and surfboards, skis, surfboards, sport balls for games, skating boots with ice skates attached, golf bags with or without wheels, golf gloves, ice skates, in-line roller skates; board games, playing cards, chessboards; playthings, namely play balloons, plush toys and puppets” in Class 28; “talent and modeling agency services; business-marketing consulting services; product merchandising services; preparing and placing advertisements for others; conducting and organizing exhibitions to promote the goods and services of others” in Class 35; “services for providing food and drink, namely bar services, cafes, cafeterias, canteens, catering, hotels, restaurants, self-service restaurants and snack bars; providing temporary housing accommodations” in Class 43; and “hygienic and beauty care for human beings, namely aromatherapy services; health spa services, namely, cosmetic body care services; beauty salons, hairdressing salons and manicuring services” in Class 44.
HEIDI KLUM (Registration No. 2973975) for use on “candy” in Class 30.
HEIDI KLUM (Registration No. 3287781) for use on “eyeglasses and sunglasses; eyeglass and sunglass frames; videotapes and video cassettes featuring music and exercise videos, news and general-interest information, namely travel, fashion, health, and beauty tips” in Class 9; and “costume jewelry, fine jewelry and objects of precious metal, namely amulets, bracelets, chains, charms, earrings, rings and medallions; precious stones, semi-precious stones and pearls; alarm clocks, clocks, watches” in Class 14.

Heidi has gone to great lengths to protect her name with a wide variety of goods in many different classes. While she may only have a few registrations, her HEIDI KLUM Registration No. 2933420 and H HEIDI KLUM + Design Registration No. 2933418 pack a lot of “bang for the buck” with goods and services in a variety of classes (both marks are registered for similar goods and services, as are the HEIDI KLUM Registration No. 3287781 and H HEIDI KLUM + Design Registration No. 3246077.)

The premiere of Season 4 of Project Runway is coming soon, and Heidi must determine whether a group of new designers are “in” or “out.” While that decision may be difficult, it appears that with respect to protecting her celebrity brand, Heidi has determined that federally registered trademarks are “in.”

Aimee Kaplan - the trademark attorney dedicated to models protecting their celebrity trademarks

Branding the Athlete… The Good Old Boy Bubba Watson Inks Deal with Steve & Barry’s® for Collection of High-Quality, Low-Priced Golf and Casual Apparel

Aimee Kaplan — Wed, 07 Nov 2007 05:00:00 GMT

A celebrity post by David Dawsey, the I.P. Golf Guy and author of the Golf-Patents Blog.

A properly branded athlete can often generate more revenues from endorsement deals then they can generate from actually playing the sport that made them famous. The key words in the previous sentence being “properly branded.” So who is responsible for making sure an athlete is properly branded? The athlete, the agent, the business manager, the accountant, the attorney, … There isn’t one correct answer for all athletes. After all, the athlete has to be talented, charming, and personable to begin with, but someone else has to be responsible for ensuring long-term business success.

There is no doubt that professional golfer Bubba Watson has done his part in creating a unique persona. The persona includes a good old boy golfer named Bubba that hits the ball a mile with a pink-shafted driver.

Bubba has teamed up with 200+ store national chain Steve & Barry’s® to introduce a BubbaGolf™ collection of high-quality, low-priced golf and casual apparel. The collection will include golf pants and shorts, polo shirts, hats, visors, and windjackets; all of which will be priced at $14.98 or less.

Now, since this is a blog dedicated to legal aspects of celebrity branding… let’s take a look at what has been done to protect the trademark.

A trademark application has been filed for the BUBBAGOLF mark in two international classes; namely, international class 018 for “all-purpose sport bags, backpacks, handbags, duffel bags, shoulder bags, and wallets not of precious metal,” and international class 025 for “beachwear, belts made of leather, belts made of textile, coats, footwear excluding orthopedic footwear, jackets, jeans, headwear, sweaters, sweatshirts, pants, shorts, shirts, windshirts, tracksuits, and undergarments.”

Interestingly, the application lists the owner of the mark as 4004 Incorporated. Surely, that must be a company owned by Bubba, right? Wrong, 4004 Incorporated is the parent company of Steve & Barry’s. This peaked my interest, so I decided to check out Bubba’s website. The website is nice, but oddly includes a copyright notice listing Steve & Barry’s. Odd, right? Well, it only gets more interesting. The URL was registered in the name of a person with a Steve & Barry’s email address. I hope someone is advising Bubba on these issues and these seemly odd occurrences are part of a larger strategic master plan, but I doubt it. Shouldn’t a celebrity athlete own the trademarks and domain names containing their name?

Who do you think owns Tiger’s trademarks and URLs… a company owned by Tiger or Nike?

Paris Hilton Trademarks: That's Hot

Aimee Kaplan — Thu, 01 Nov 2007 05:00:00 GMT

With multiple perfumes, her own book, a reality television show, a few scandals, and a new deal to host a New Year’s Eve party at Las Vegas nightclub LAX for a reported one million dollars, Paris Hilton has created her own celebrity brand as a result of simply being famous. How well has she protected her brand?

A search of the U.S. Patent and Trademark Office (“PTO”) Website Database for PARIS HILTON yields twenty-two live “hits” including, among others:

PARIS HILTON (Registration No. 3249904) for use on “blank magnetic data carriers; pre-recorded compact discs, digital versatile discs and downloadable audio and audiovisual recordings in the fields of music and entertainment; eyewear; prepaid magnetically encoded calling cards; video output game equipment for use with televisions sold as a unit for playing a parlor type game; computer games, namely discs and computer game tapes; video and computer game cartridges,” “jewelry; watches and watch fobs; ornamental label pins,” “leather and imitation leather goods, namely, bags, wallets, purses and leather key chains,” “men’s and women’s clothing, namely, shirts, shorts, jeans, jackets, skirts, slacks, blouses, dresses, vests, coats, sweaters, scarves, swimsuits, underwear, underpants, slips, camisoles, bras, nightgowns, robes, socks, hosiery; infants’ and children’s clothing, namely t-shirts, sweaters, long sleeved shirts, shorts, pants, jumpers, jumpsuits, overalls, one-piece playsuits, pajamas, socks, dresses, skirts, men’s, women’s children’s and infant’s footwear and headwear, belts,” and “entertainment services, namely, personal appearances by a media celebrity; conducting parties in nightclubs; providing a web site featuring musical and dramatic performances, musical videos, film clips, photographs, and other multimedia materials; providing prerecorded music, information in the field of music, film, television, celebrities and popular culture, and commentary and articles about music, film, television, celebrities and popular culture, all on-line via a global computer network; live, televised and movie appearances by a professional entertainer; presentation of live show and musical performances.”
PARIS HILTON (Registration No. 3059587) for use on “fragrances, namely, perfumes, eau de parfum, cologne, eau de toilet, body lotion, bath gel, hand soap, perfumed soap and cosmetics.”
PARIS HILTON (Registration No. 3309679) for use on “clothing, namely, tee shirts, shirts, skirts, dresses, jackets, sweaters, shorts, sweatshirts, coats, jeans, vests, blouses, hats, underwear, slips, camisoles, bras, nightgowns, robes, socks, pajamas, bathing suits, belts and footwear.”
PH (Stylized) (Registration No. 3324011) for use on “jewelry watches.”
JUST ME PARIS HILTON + Heart Design (Registration No. 3201023) for use on “fragrances for personal use; perfume, perfume oils; eau de parfum; moisturizing skin lotion; body lotion; body oil; eye cream; eye gel; bath products, namely, bath and shower gel, bubble bath, bath soap in liquid, solid or gel form, bath oil, talcum powder, dusting powder, body powder, body emulsions, body masks, body scrubs, body spray and body cream; deodorant for personal use; cosmetics, namely, blusher, lipstick, lip gloss, lip balm, cosmetic pencils, lip liners, eye liners, mascara, makeup, eye makeup, facial makeup, and foundation makeup; massage oil; compact containing make-up, namely, face powder, facial makeup, foundation makeup, rouge, eye makeup, and eye makeup remover; eye pencils, eye shadow; eyebrow pencil; false eyelashes; adhesive for affixing false eyelashes; skin bronzing creams and body makeup; sun tan oil; shampoo; hair conditioner; hair spray, solid fragrance for personal use; potpourri, incense; sachets; make-up kits comprised of lipstick, blush, mascara and eye liner.”
JUST ME PARIS HILTON + Heart Design (Registration No. 3201022) for use on “candles.”
JUST ME FOR MEN PARIS HILTON + Heart Design (Registration No. 3198376) for use on “fragrances for personal use, eau de toilette, cologne; shaving preparations, namely, shaving gel, shaving cream, shaving balm, shaving lotion, after-shave lotion, after-shave balm; skin conditioners, moisturizing hand and body lotions, hair cleaning preparations; body cream soap, body scrub, deodorant soap for the body, bath gel, shower gel, skin soap, liquid soap for hands, face and body; talcum powder, eye cream, eye gel, skin toner, deodorant for personal use.”

All of these marks are owned by Paris Hilton individually.

Again, like Britney, I have to wonder whether Paris has actually used her mark on all of these products. For example, while Paris’ jewelry line was sold exclusively online, she has extensively marketed her perfumes, including her new CAN CAN fragrance. It is surprising that she has not extensively marketed a cosmetics line, especially with her perfumes already sold by leading beauty retailer Sephora. I’m also intrigued by the idea of a men’s grooming product line. It could be a possible gift idea for those “hard to buy for” men for the upcoming holiday season (in case he already has the PARIS HILTON brand watch fob listed in Registration No. 3249904).

Aimee Kaplan- the trademark attorney dedicated to celebrity branding

Gimme More: Britney's Trademarks

Aimee Kaplan — Wed, 31 Oct 2007 05:00:00 GMT

Notwithstanding numerous fashion faux pas and controversies, Britney Spears has become a household name. She’s sold millions of albums, appeared in movies, and has launched several perfume lines including the very popular CURIOUS, FANTASY, and her new perfume BELIEVE. But how well has she protected her name?

A search of the U.S. Patent and Trademark Office (“PTO”) Website Database for BRITNEY SPEARS yields six “live” hits, including:

BRITNEY SPEARS (Registration No. 2491505) for use on “binders; composition books; calendars; crayons; diaries; blank journals; letter writing sets; markers; memorandum boards; note books; personal desktop organizers; writing pads; pencils; pens; photograph albums; picture postcards; posters; stickers; temporary tattoos; trading cards; checkbook covers and book covers; mounted and un-mounted photographs” and “headwear; shirts; sleepwear and T-shirts, sweatshirts, rainwear and jackets.”
BRITNEY SPEARS (Registration No. 2302300) for use with “phonograph records featuring music; pre-recorded audio cassettes and compact discs featuring music; pre-recorded video tapes featuring music performances” and “entertainment services in the nature of live performances by a musical artist.”
BRITNEY SPEARS (Registration No. 2302300) for use on “jewelry, watches, and clocks,” “backpacks, daypacks, handbags, purses, cosmetic and hair accessory pouches sold empty, and wallets,” “inflatable furniture and photo plaques” and “hair ornaments and accessory kits containing hair ornaments; ornamental novelty pins and ornamental novelty buttons.”
BRITNEY SPEARS (Application Serial No. 78361364) for use on “cosmetics; cosmetic and make up products, namely, makeup, facial makeup, concealers, blushers, facial powders, foundation makeup, eye makeup, eye pencils, eyebrow pencils, mascara, false eyelashes, cosmetic compacts, cosmetic pencils, lipstick, lip gloss, lip pomades, lip pencils, makeup removers, eye creams, facial cleansers, toners, facial exfoliants and scrubs, facial creams, facial moisturizers, facial lotions and non-medicated facial treatments, non-medicated lip care preparations, lip cream, cosmetic pads, makeup applicators in the nature of cotton swabs for cosmetic purposes, pre-moistened cosmetic wipes, pre-moistened cosmetic tissues and towelettes, cotton sticks for cosmetic purposes, all purpose cotton swabs for personal use and cosmetic purposes; fragrance products, namely, perfume, cologne, eau de toilette, eau de perfume, eau de cologne and toilette water; skin care products, namely, skin moisturizers and skin moisturizer masks, skin conditioners, hand creams, skin cleansers, and wrinkle removing skin care preparations; non-medicated topical skin creams, ointments, gels, toners, lotions, sprays and powders; aromatherapy creams, lotions and oils; body and beauty care products, namely, body and beauty care preparations, massage oils, essential oils for personal use, talcum powder, bath beads, bath crystals, bath foam, bath gels, bath oils, bath powders, bath salts, face wash, body scrubs, body fragrances, body and hand lotions, body gels, shower gels, body oils, body powders, body exfoliants, body masks, body mask creams and lotions, shaving preparations, after shave lotions, shaving balm, shaving cream, shaving gel, skin abrasive preparations, non-medicated skin creams, and skin lotions for relieving razor burns. suncare products, namely, sunscreen preparations, sun tanning preparations and after-sun lotions; self-tanning preparations, namely, self tanning milk and cream, accelerated tanning cream, self-tanning lotions, gels and sprays; nail care products, namely, nail care preparations, nail polishes, nail polish base coat, nail polish top coat, nail strengtheners, nail hardeners, nail polish removers, nail creams, cuticle removing preparations, nail tips, and nail buffing preparations; hair care products, namely, shampoos, conditioners, mousse, gels, frosts, creams, rinses, sprays, hair color, hair waving lotion, permanent wave preparations, hair lighteners, hair dyes, hair emollients, hair mascara, hair pomades, hair color removers, hair relaxing preparations, hair styling preparations, hair removing cream, and hair care preparations.”
FANTASY BRITNEY SPEARS (Application Serial No. 78680794) for use on “cosmetics; facial makeup, concealers, blushers, facial powders, foundation makeup, eye makeup, eye pencils, eyebrow pencils, mascara, false eyelashes, face and body glitter, cosmetic compacts, cosmetic pencils, lipstick, lip gloss, lip pomades, lip pencils, makeup removers, makeup applicators in the nature of cotton swabs for cosmetic purposes, eye creams, facial cleansers, toners, facial exfoliants and scrubs, facial creams, facial moisturizers, facial lotions and non-medicated facial treatments in the nature of creams, lotions and scrubs; wrinkle removing skin care preparations, nail polishes, nail polish base coat, nail polish top coat, nail strengtheners, nail hardeners, nail polish removers, nail creams, cuticle removing preparations, nail tips, and nail buffing preparations; skin moisturizers and skin moisturizer masks, skin conditioners, hand creams, massage oils, essential oils for personal use, talcum powder, bath beads, bath crystals, bath foam, bath gels, bath oils, bath powders, bath salts, face wash, skin cleansers, skin highlighter, body scrubs, body fragrance sprays, body and hand lotions, body gels, shower gels, body oils, body powders, body exfoliants, body masks, body mask creams and lotions, shaving preparations, after shave lotions, shaving balm, shaving cream, shaving gel, skin abrasive preparations, non-medicated skin creams and skin lotions for relieving razor burns, non-medicated lip care preparations, lip cream, sunscreen preparations, suntanning preparations and after-sun lotions; self-tanning preparations, namely, self tanning milk and cream, accelerated tanning cream, self-tanning lotions, gels and sprays; perfume, cologne, eau de toilette, eau de perfume, eau de cologne and toilette water; toothpaste, deodorant for personal use and antiperspirant. cosmetic pads, pre-moistened cosmetic wipes, pre-moistened cosmetic tissues and towelettes; cotton sticks for cosmetic purposes; all purpose cotton swabs for personal use and cosmetic purposes; non-medicated topical skin creams, ointments, gels, toners, lotions, sprays and powders; aromatherapy creams, lotions and oils; hair care products, namely, shampoos, conditioners, mousse, gels, frosts, creams, rinses, sprays, hair color, hair waving lotion, permanent wave preparations, hair lighteners, hair dyes, hair emollients, hair mascara, hair pomades, hair color removers, hair relaxing preparations, hair styling preparations, hair removing cream, and hair care preparations; baby wipes; disposable wipes impregnated with chemicals or compounds for personal hygiene and household use; incense; room fragrances; fragrance emitting wicks for room fragrances; sachets; sachet-like eye pillows containing fragrances; scented ceramic stones; scented linen sprays and scented room sprays; scented oils used to produce aromas when heated; scented pine cones; potpourri; aromatherapy pillows comprising potpourri in fabric containers.”
BRITNEY SPEARS THE ONYX HOTEL TOUR 2004 (Application Serial No. 78378189) for use on “posters, photographs and concert tour books,” “clothing, namely, jackets, pants, t-shirts, sleepwear; headwear, namely, caps,” and “entertainment services, namely live performances by a musical artist.”

All of these marks are owned by Britney Spears individually.

Understandably, many of these products are related to her music and probably her promotional concert efforts (such as clothing, photographs, etc.) However, one wonders whether Britney has actually used her mark with all of the products listed in her registrations. For example, does Britney really use her mark on BRITNEY SPEARS brand clocks? What about temporary tattoos, checkbook covers, and hair accessory pouches sold empty? Technically, Britney does not have to prove her use of the mark on all the goods and services listed in an application when specimens of use are submitted to the PTO. Instead, she would be required to submit one specimen per class. [Note: The PTO divides all products and services into forty-five different (and sometimes arbitrary) classes for administrative purposes.] However, some recent U.S. caselaw has held that if a party alleges that they have used the mark on goods/services when they have not done so, the entire registration may be subject to cancellation on the grounds of “fraud on the PTO.” Of course, any case depends on the exact facts.

So what else is “curious” about Britney’s celebrity branding? Personally, I’m intrigued by the possibility of a cosmetic/personal care product line. Given the breadth of the current identification of goods in the BRITNEY SPEARS and FANTASY BRITNEY SPEARS applications, I wonder what exact products will be in the line and where those goods will be sold. For example, does Britney have a deal in the works with a department store or large retail chain like so many designers? Or will her continued and unfortunate notoriety prevent her from expanding her brand, despite the success of her new “Blackout” album? Since her new hit single "Gimme More" has been so popular (despite a lackluster performance at the VMA's), I imagine that Britney will continue to be very successful.

Aimee Kaplan - the trademark attorney dedicated to celebrity branding

Martha Stewart: Controlling Your Celebrity Brand

Aimee Kaplan — Tue, 30 Oct 2007 05:00:00 GMT

From home goods sold at Kmart and Macy's, a television show, books, magazines, and even her own radio show, Martha Stewart has built an incredibly successful empire based upon her brand. A search of the U.S. Patent and Trademark Office (“PTO”) Website Database yields fifty “live” hits for Martha Stewart, including, among others:

MARTHA STEWART LIVING (Registration No. 3313881) for use on “pre-recorded musical CDs.”
MARTHA STEWART LIVING (Registration No. 3252369) for use with “ongoing radio programs in the fields of homemaking, home care, cooking, housekeeping, decorating, gardening, entertaining, weddings, crafts, antique collecting, and holiday planning; production of radio programs.”
MARTHA STEWART EVERYDAY (Registration No. 3033100) for use on “furniture for the home, office, kitchen and bedroom; entertainment units and cabinets; kitchen cabinets.”
MARTHA STEWART SIGNATURE (Registration No. 2846568) for use on “interior and exterior paints.”
MARTHA STEWART SIGNATURE (Registration No. 2846567) for use on “hardwood flooring, laminated wood flooring, ceramic tiles, porcelain tiles and natural stone flooring.”
MARTHA STEWART SIGNATURE (Registration No. 2846566) for use on “carpets, area rugs and linoleum for use on floors.”
MARTHA STEWART EVERYDAY (Registration No. 2793077) for use on “ornamental ribbons made of textiles; bows for gift wrapping.”
MARTHA STEWART EVERYDAY (Registration No. 2793075) for use on “gift wrapping paper, metallic gift wrapping paper, tissue paper, paper bows, paper gift wrapping ribbon, cardboard and corrugated gift boxes, plastic and fabric gift bags, and paper gift tags.”
MARTHA STEWART EVERYDAY (Registration No. 2858817) for use on “artificial Christmas trees, artificial Christmas wreaths, artificial Christmas garlands, Christmas tree decorations, namely, ornaments, skirts, stands, and stand covers; Christmas wreath hangers and stands, Christmas stocking and stocking holders, and snow globes.”
MARTHA STEWART EVERYDAY GARDEN (Registration No. 2708561) for use on “gardening tools, namely, trowels, spades, hand-operated shears, pruning shears, shovels, rakes, bulb planters and edgers.”
MARTHA STEWART EVERYDAY GARDEN (Registration No. 2712763) for use on “dried plants; living plants and shrubs; live vegetable plants; flower bulbs; live trees; mulch; peat moss; birdseed; top soil; vegetable seeds; seed starter kits comprised mainly of soil, vegetable and flower seeds, and growing containers.”
MARTHA STEWART WEDDINGS (Registration No. 2628567) for use on “magazines and books in the field of weddings and wedding planning.”
MARTHA STEWART HOME (Registration No. 2499750) for use on “decorative upholstery, drapery, curtain and window treatment fabrics.”

All of these registrations are currently owned by a business entity, Martha Stewart Living Omnimedia, Inc. A point of interest is that the oldest MARTHA STEWART Registrations were not filed in the name of Martha Stewart or even her company. The applications filed for the AT HOME WITH MARTHA STEWART mark (now Registration No. 1560990) and AT HOME WITH MARTHA STEWART + Design mark (now Registration No. 1566030) for use on “bed sheets, comforters, pillow shams, dust ruffles, curtains, drapes, table cloths and accessory fabric for home decorating" were originally filed in the name of Kmart Corporation. These registrations were later assigned to Martha Stewart’s business entity Martha Stewart Living Omnimedia, Inc.

Why is this important? I believe that it is always important for a celebrity to own rights in his or her name. When I was younger, I collected dolls by a local Pittsburgh doll designer named Robin Woods (I even went to ballet school with her daughter Mimi!). Robin designed dolls under the ROBIN WOODS mark and had her own company, Robin Woods, Inc. When she had differences of opinion with others in the company, she left. Unfortunately for Robin, the company owned the trademarks and rights into her name. She was forced to design under the name ALICE DARLING for Madame Alexander. I don’t know what happened to Robin or the ROBIN WOODS and ALICE DARLING lines, but I was aware of trademarks and the importance of allowing others to use your name at a very young age.

Why did Martha Stewart allow Kmart to register her name? There’s no way to know the negotiations between the parties or the reasoning of her attorneys. However, the later assignment of the marks back to Martha does evidence the strength and value of her brand since she was able to renegotiate the contract terms to allow the transfer of ownership and control of these marks back to her company. Since Martha’s company now owns all of her trademarks, she could technically license those marks for use on any products and services (assuming that her contract with Kmart would allow it). However, like Oprah, Martha has been conservative with registering and using her name on a wide variety of different types of goods, and a future MARTHA STEWART perfume or clothing line may not be likely. Then again, who can predict the future? Would you have ever foreseen a Macy's commercial with Martha and Usher?

Aimee Kaplan - the trademark attorney dedicated to celebrity brands