Trademark & Ownership: Just Do It

Trademark & Ownership: Just Do It

Drew Chlan*

Trademark law in the United States provides an entity with a right of property.  15 U.S.C.A. § 1051 (2002).  If a person or corporation is found to be in violation of trademark law, the Code states that:

“Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided.”

Id. § 1114.

But what does this ownership of property entail?  More specifically, is this ownership protected outside of the jurisdiction that it is granted?  These issues are addressed in the on-going lawsuit involving NBA Hall of Famer Michael Jordan and China.

Following a celebrated professional basketball career, Michael Jordan has become a fashion icon with a popular brand of Nike clothing and shoes, Air Jordan.  Becky Sullivan, The Trademark Woes of Michael Jordan (and Many Others) in China, NPR (Aug. 16, 2015, 5:07 PM), http://www.npr.org/2015/08/16/430998321/the-trademark-woes-of-michael-jordan-and-many-others-in-china/.  As the popularity for Air Jordan has grown so too has the demand and usage of the Jordan name.  Id.  In the 1990s China, Nike trademarked the “Jordan” name, but Nike’s trademark only applied to the English version of “Jordan.”  Id.  Because of this oversight, a Chinese business group was able to trademark “Qiaodan” which is the Chinese transliteration for “Jordan.”  Id.  The “Qiaodan” group has a remarkably similar logo to Air Jordan, and the “Qiaodan” group has even trademarked the names of Michael Jordan’s sons in Chinese and English.  Id. While the resemblance is uncanny, Jordan has lost twice already in Chinese courts because Chinese trademark law protects the individual or entity that files for the trademark first.  Id.

Though injunctive relief is available to those who possess trademark ownership in the United States, the person who possesses the trademark grant must show that there is jurisdiction.  Steele v. Bulova Watch Co., 344 U.S. 280, 289 (1952).  The United States has taken good-faith efforts to protect companies of all countries in trademark controversies. 15 U.S.C.A. § 1126 (2002).  The United States’ Code declares that:

“The Director [of the United States Patent and Trademark Office] shall keep a register of all marks communicated to him by the international bureaus provided for by the conventions for the protection of industrial property, trademarks, trade and commercial names, and the repression of unfair competition to which the United States is or may become a party . . . This register shall show a facsimile of the mark or trade or commercial name; the name, citizenship, and address of the registrant; the number, date, and place of the first registration of the mark, including the dates on which application for such registration was filed and granted and the term of such registration; a list of goods or services to which the mark is applied as shown by the registration in the country of origin, and such other data as may be useful concerning the mark.”

Id.

In 2011, China reported having more trademark applications and valid registered trademarks than any other country in the world.  China Has World’s Most Registered Trademarks, China Daily (Apr. 21, 2011), http://www.chinadaily.com.cn/business/2011-04/21/content_12371841.htm.  While China’s collective innovation may be escalating, there are reasons for pause.  In 2010, a total of 2,026 first instance trademark-related cases were brought before Chinese administrative bodies, representing a year-on-year increase of forty-seven percent.  Supreme People’s Court, Intellectual Property Protection by Chinese Courts in 2010, at 6, (2011), http://www.cpahkltd.com/UploadFiles/20110509082512655.pdf.  While Chinese companies may be developing technology at an exponential rate, presently it is perhaps more plausible that individuals and companies are aiming to profit off of China’s lax  trademark laws and rulings. 

Jordan’s legal situation is not unique for American companies in China.  However, in 2006 Starbucks was able to win a lawsuit in China against a Chinese company using a nearly identical name.  Starbucks Wins Trademark Dispute, N.Y. Times (Jan. 2, 2006), http://www.nytimes.com/2006/01/02/business/worldbusiness/02ihtweb.0102starbucks.html/.  More contemporary cases though have not fared well for American companies. Apple had to settle a lawsuit in 2012, paying $60 million for the legal rights to use the iPad trademark in China.  Keith Bradsher, Apple Settles an iPad Dispute in China, N.Y. Times, July 2, 2012, at B7.  More recently, Tesla Motor Inc. was required to settle with a Chinese individual for the rights to the Tesla name and trademark.  Alan Ohnsman, Tesla Reaches Settlement to End China Trademark Dispute, Bloomberg (Aug. 6, 2014, 4:12 PM), http://www.bloomberg.com/news/articles/2014-08-06/tesla-reaches-settlement-to-end-china-trademark-dispute/.

While attention to trademarks regarding China has increased, there needs to be a more efficient solution than what is currently offered.  See Dan Harris, Register Your Trademarks in China, and Then Do It Again with China Customs, Above The Law (Aug. 17, 2015, 10:08 AM), http://abovethelaw.com/2015/08/register-your-trademarks-in-china-and-then-do-it-again-with-china-customs/.  Since both China and the United States serve as headquarters to some of the largest companies in the world in their respective jurisdictions, it would serve both countries well to establish a reciprocal mode of communication pertaining to these trademark disputes.  If diplomatic overtures cannot resolve business disagreements between China and the United States then perhaps recognized international bodies or jurists could serve as impartial arbiters.  While it is important that trademark issues in China have been raised and discussed by media outlets, now is the time for consequential action on behalf of present and future vulnerable companies.

A graduate of Loyola Blakefield High School and the College of William & Mary, Drew Chlan is presently a second year law student at the University of Baltimore School of Law. He currently serves as Law Scholar for Prof. Dillard’s Criminal Law class and as a Teaching Assistant to Prof. Bessler’s Introduction to Legal Skills class while also clerking for a former County Attorney of Harford County. Drew will interning with Judge Nickerson of the United States District Court for the District of Maryland beginning in January and will be working for Venable LLP as a Summer Associate in 2016.