Trademarks

The Intersection of Trademarks and Art

Posted on by Gavin Law Offices

Written by: Mari Kat Gavin

Art and intellectual property law intersect in many obvious ways—intellectual property is, after all, the protection of human creation. However, copyright normally gets a lot of the spotlight. There is art in trademark law, don’t get me wrong. Andy Warhol’s series on consumer products are some of the most well-known works of art incorporating brands, and additionally commenting on them. However, I find that I less often find incorporation of trademarks in art that aren’t a commentary on consumerist culture.

This month, I was fortunate enough to encounter such a piece at the VCU Institute of Contemporary Art. In the Declaration Exhibit, I found the piece Edifice and Mortar by Sonya Clark. Clark used the unusual mediums of brick, hair donated by local Richmond barbers, and a blue glass mirror. She created a rectangular shape out of bricks and then incorporated the blue mirror so as to represent a subverted American flag. She then imprinted a portion of the Declaration of Independence on the front and TRADEMARKS on the back.

Okay, I’m getting ahead of myself. The words imprinted onto the back of the “flag” was not what you would consider a modern day trademark. However, trademarks are the oldest form of intellectual property, some say back to Roman times. Artisans would stamp their “mark” into goods that they had a hand in producing. Consumers could see these branded goods and be sure of the quality of the good that they would receive, because trademarks are, at their essence, an indicator of source. The twist here, is that the bricks reveal stamps that say “El Schiavo”, Italian for “Slave”.

This piece successfully integrates the concept of trademark law and consumer protection into a beautiful commentary on society, which often ignores the monumental part that slaves played in building our nation. This is especially poignant in Richmond, the second largest slave importation city in the nation during the time of slavery. Looking back to the mediums used, the hair donated by local Richmond barbers is very likely hair from descendants of slaves. Kudos to Clark for creating such a thought-provoking piece.

West End law firm sweeps into N.C. with new attorney

Posted on by Gavin Law Offices

Gavin Law Offices, which handles intellectual property matters for clients, earlier this month opened an outpost in Raleigh, North Carolina, after picking up attorney Alan Etkin. It’s the firm’s first office outside of Virginia.

Founder Pam Gavin said the expansion is similar to its January push into Charlottesville when longtime solo attorney Elva Mason Holland joined the fold.

“This is very much a similar story,” Gavin said of Etkin.

Etkin, who earned his law degree from Emory University, handles a variety of business law issues for closely held corporations.

“Alan and I worked together for years. He was in house with a big client,” Gavin said. “The company he was with was sold and he was doing his own thing and I said, ‘Why don’t we tackle this together?’”

Gavin also liked the idea of having an office in Raleigh to tap into that area’s concentration of tech firms and startups, a ripe environment for the firm’s bread-and-butter IP practice.

“It’s a great market for tech and intellectual property,” she said.

The firm, founded about 15 years ago after Gavin’s stints at McGuireWoods and Reed Smith, now has an attorney headcount of seven.

Gavin said she’ll keep her eye out for future growth through similar deals with attorneys.

“I’m always plotting and planning,” she said. “I’m just going to continue to grow.”

Click here for the full article on Richmond BizSense

Gavin Law Offices expands into Charlottesville

Posted on by Gavin Law Offices

A Richmond law firm that boasts clients in the entertainment industry has expanded its practice westward.

Gavin Law Office, which was founded locally in 2002, last month opened an office in Charlottesville.

The expansion was prompted by the addition of Elva Mason Holland, a Charlottesville attorney who had a longtime solo practice before joining Gavin.

Firm founder Pam Gavin said she’s had her eye on Holland for years.

“I’ve been trying to get her to work with me forever,” Gavin said. “She’s been solo. She needs more depth to the bench and I’m always interested in growing.”

Gavin said her firm’s practice and Holland’s book of business fit nicely together. Gavin Law represents musicians and a range of businesses, from startups up to large companies, in intellectual property matters. Holland represents talent in the entertainment business.

The new addition brings Gavin’s attorney headcount to six. Its local office is in Henrico County at 2229 Pump Road.

Holland has her bachelor’s and law degrees from UVA.

Gavin, also a UVA grad, began her career in bank marketing, before going back to law school at William & Mary. She started her own firm in 2004 after stints at McGuireWoods and Reed Smith.

Gavin has expanded the firm previously, including by adding a solo practioner in Bedford years back, before that attorney in that office decided to go back out on his own. She said this latest stop in Charlottesville won’t be the firm’s last.

“I’m always planning and plotting,” she said. “Continued expansion is on the horizon.”

Click here to read the full story in Richmond BizSense

Protecting Your Brand In China Against Trademark Squatting

Posted on by Stephanie Martinez

With its rapidly expanding economy, the largest middle class in the world, and significant manufacturing capacity, China can be a great new market for American businesses interested in global expansion or manufacturing goods for export in China.  Before expanding, however, American companies should first ensure that their brand is sufficiently protected from a common practice in China — trademark squatting.

Unlike the United States, China is a “first-to-file” country.  This means that, in order to accrue rights in a trademark in China, a company must be the first to file to register that trademark there.  This system is very different from the United States, where the senior user of a mark, regardless of registration, has rights.  In addition, the Chinese Trademark Office does not require an applicant to prove that it is using the applied-for mark before granting a trademark registration.  This system of first-to-file with no proof of use requirement allows unscrupulous individuals and entities to engage in the practice of trademark squatting, or registering Western brand names (or their Chinese-character equivalents) in China.  Trademark squatters in possession of a Chinese registration for a Western brand name will often either: (1) hold the registration hostage and demand large sums of money for a trademark assignment; or (2) sell cheap knockoff goods under the pirated trademark, leading the Chinese consuming public to link the Western brand with inferior products.

Unfortunately, many Western companies and famous individuals have experienced firsthand the consequences of trademark squatting in China.  One example is Nike and Michael Jordan’s line of Air Jordan shoes.  In 1993, Nike registered to protect the trademark JORDAN in English in China but neglected to file for the Chinese-character transliteration “Qiaodan.”  Several years later, Qiaodan Sports registered the Chinese trademark Qiaodan and began operating retail stores offering shoes and athletic wear under the Qiaodan mark, including selling shoes with a basketball player’s silhouette, similar to the silhouette found on Air Jordans.[1]  Qiaodon Sports also registered and used other marks commonly associated with the basketball player, such as the number 23 (Michael Jordan’s Chicago Bulls jersey number) and the names of Michael Jordan’s two sons.[2]  Currently, Qiaodan Sports operates approximately 6,000 retail locations in China, with many of its customers believing that Qiaodan Sports is endorsed by or affiliated with Michael Jordan.[3]  Upon learning of Qiaodan Sports in 2012, Michael Jordan instituted proceedings against the Chinese company.[4]  The Beijing Intermediate People’s Court, in finding for Qiaodan Sports, held there was insufficient evidence to conclude that Qiaodan referred to Michael Jordan.[5]  This ruling was upheld on appeal to the Beijing High People’s Court.

Companies interested in expanding into China can prevent trademark squatting by registering their English marks (if the company plans to sell goods in China using its English marks) as well as the Chinese-character equivalents.  Registering both the English marks as well as the Chinese-character equivalent forecloses the potential avenues trademark squatters might use to financially benefit from a Western company’s brand.  Registration can be sought either through Madrid extension filings or through a national filing with the Chinese Trademark Office.  — Stephanie Martinez

 

[1] National Public Radio, The Trademark Woes of Michael Jordan (And Many Others) In China (Aug. 16, 2015), http://www.npr.org/2015/08/16/430998321/the-trademark-woes-of-michael-jordan-and-many-others-in-china.

[2] Id.

[3] Id.

[4] Eben Blake, International Business Times, Michael Jordan Loses China Trademark Lawsuit to Chinese Knockoff Brand Qiaodan Sports (July 30, 2015), http://www.ibtimes.com/michael-jordan-loses-china-trademark-lawsuit-chinese-knockoff-brand-qiaodan-sports-2032080.

[5] Id.