Weekly IP Buzz for the week ending September 13, 2019

In this week's post, we look at Ariana Grande's IP infringement claims against Forever 21 following the launch of a social media marketing campaign by Forever 21. With the ease and widespread reach of social media advertising, companies should take special care to avoid the potential for third-party IP infringement prior to rolling out campaigns. 

Also, does the casual use of “Taco Tuesday” violate trademark rights? Although Taco John’s owns the U.S. federal trademark for TACO TUESDAY®, the mark may be in a downward spiral into genericide due to widespread public use. Sometimes, trademark protection and enforcement isn’t enough against public misuse.  

Ariana Grande v. Forever 21: Claims of Copyright Infringement and False Endorsement

As Forever 21 has been successful in selling to a large demographic that ranges from teenagers to shoppers in their mid-30’s, the brand had recently been in talks with music star Ariana Grande to launch a social media campaign using her likeness in association with Forever 21’s products.  When the two were unable to reach an agreement, however, Forever 21 proceeded to launch the social media campaign that was still heavily themed, allegedly, around Grande’s likeness.

Grande is suing both under state law and federal law, claiming that Forever 21 is guilty of false endorsement, copyright infringement, trademark infringement, and violating California’s right of publicity laws.  Specifically, Grande is claiming that after talks broke down due to Forever 21’s unwillingness to pay Grande what her likeness was worth, Forever 21 still went ahead and launched the campaign that was supposed to feature Grande, merely substituting another model that looks like Grande, but continuing to use the posts and themes heavily related to Grande on Forever 21’s Twitter and Instagram posts.  

As such, Grande is claiming that Forever 21’s campaign is misleading and illegally capitalizes off of the star’s popularity with the target audience as well as off the success of Grande’s latest album “thank you, next.” She is also claiming that the social media campaign misleads consumers into believing that Grande endorses Forever 21’s clothing and accessories when no such endorsement exists. 

As social media continues to increasingly dominate market channels of advertising, celebrity endorsements and lawsuits over them have become more frequent in number. As it currently stands, Grande is claiming at least $10 million in damages.  Both counsel and brand owners will benefit to follow this case as it raises important legal issues and is at the cross-section of intellectual property law and social media advertising and rights.       

Read the full article here.

Unsuspecting Moms Beware: Does Your “Taco Tuesday” Violate Trademark Rights?

Taco John’s owns the TACO TUESDAY trademark. Before you incorporate “Taco Tuesday” into your family’s weeknight menu, consider this: Cheyenne, Wyoming-based Taco John’s registered a federal trademark for TACO TUESDAY® with the United States Patent and Trademark Office (“USPTO”) in 1989 and has aggressively pursued various offenders of the mark nationwide for more than 30 years.  

Most recently, Taco John’s took aim at the Freedom’s Edge Brewery Company just five miles down the road from the Taco John’s headquarters. The complaint? Freedom’s Edge used “Taco Tuesday” to advertise a local taco truck that sets up shop outside the brewery one day per week.  In response, Freedom’s Edge took the complaint live on social media, sparking extensive comments both for and against Freedom’s Edge use of the phrase.

But can the use of one of the more common phrases in American pop culture truly give rise to trademark infringement claims? 

Although it remains undecided, it is likely any formal infringement claim related to the TACO TUESDAY® trademark would fail based on the doctrine of genericide.  Genericide of a trademark occurs when a previously strong mark loses its protection as a mark because the popularity or significance of the mark has caused it to become a generic name for a general class of goods or services.  For example, hovercraft, kerosene, lanolin, laundromat, linoleum, teleprompter and videotape all were formerly registered trademarks that lost their protection due to genericide.

Given the widespread use of “Taco Tuesday” in American culture—a reference that no longer bears any real identification of Taco John’s, but instead refers to a common American practice—it is likely that in any formal challenge, Taco John’s trademark could go the way of “raisin bran,” “aspirin,” and “dry ice” and would be deemed ineligible for trademark protection. 

Nevertheless, until a formal challenge is launched and an opinion offered by the USPTO and/or federal district courts, one should anticipate ongoing attempts by Taco John’s to preserve any rights and protections in the mark, leaving unsuspecting adopters of “Taco Tuesday” open to informal—and possibly formal—challenges to their use of the mark. 

Read more here.

Click to read the previous Weekly IP Buzz on Thriving Attorney.

For more posts, see our Intellectual Property Law Blog.

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

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