By Sukey Omran

The Quaker Oats Company took an important step this year in deciding to overhaul its AUNT JEMIMA brand. Kristin Kroeplf of Quaker Foods stated: "We recognize Aunt Jemima's origins are based on a racial stereotype. While work has been done over the years to update the brand in a manner that intended to be appropriate and respectful, we realize those changes are not enough."
 
The AUNT JEMIMA brand used the "mammy" stereotype, namely the stereotype of an African American woman who is happy to be enslaved. The Aunt Jemima character was first created in the ministrel show song “Old Aunt Jemima”. Minstrel shows were known for skits and musical performances that involved entertainers in blackface. The original owner of the AUNT JEMIMA brand based the brand on the character in these minstrel shows. After acquiring the AUNT JEMIMA brand, the Quaker Oats Company moved away from the stereotypical mammy caricature, and updated the image of Aunt Jemima to that of a modern African American woman.  However, the name AUNT JEMIMA did not change, thereby perpetuating the link to the brand's racialized history.
 
What have we learned from this?  Brand owners should constantly re-evaluate their trademarks. If a trademark is imbued with a history or meaning that does not align with the brand, then a prudent course of action is to update or revamp the mark. Since marks may be renewed in perpetuity, and decades may pass between registration and subsequent renewals, brand owners should always include a re-evaluation step to ensure the brand is appropriate and that it resonates with consumers. 

By Trish Sawney

With the increase in homemade masks to help prevent the spread of COVID-19, it is important to understand what licensed fabric is and what one can do with it.

Licensed fabric is fabric on which there is a printed image that is protected by a registered trademark or copyright. Fabric that is produced under license requires an agreement between the fabric manufacturers and the copyright or trademark owner, to permit the reproduction of the owner’s design, characters, logo, etc., onto the  fabric.

Licensed fabric typically contains a notice printed on the selvage that the fabric is ‘for individual use only’ or that it is ‘not for commercial use,’ or both. The former means that you can use the fabric to make products for yourself; however, you cannot distribute them, even if you are doing so for free. The latter means you cannot buy the licensed fabric, create your product, and then sell it for profit. 

These notices are important and legally binding, yet often overlooked.  Masks created from licensed fabric and then sold online most often constitutes an unauthorized use of the fabric, and could lead to penalties such as having your online listing taken down, to an interim, interlocutory or permanent injunction, damages, and even legal costs. 

Therefore, although making homemade masks is laudable, be careful when using licensed fabrics as you will need authorization to distribute or selling these masks. 

For more information on licensing IP, please contact us.

By Sukey Omran

What inspires a trademark? Everyone has their story… but none quite like NBA player, Lou Williams. Williams has filed a U.S. trademark application for LEMON PEPPER LOU for use in association with various clothing articles. The trademark application, in Williams’ words, came out of the desire to 'own a joke'.
 
In order to resume the NBA season, players were required to abide by strict rules to protect the safety of their quarantine bubble. On a pre-approved trip to attend a friend’s funeral, Williams stopped in at an Atlanta strip club, famous for its delicious lemon pepper wings. When the media caught wind of William’s pit stop, he was plagued with the name “Lemon Pepper Lou”.
 
Williams' story goes to show that brands can originate from the most unlikely stories. Williams turned a joke into a business idea.
 
Contact us at Clancy PC to tell us your trademark origin story. 

By Trish Sawhney

In March 2019, Nike Inc. filed a trademark application with UPSTO for the term FOOTWARE. You may assume I have made a mistake in the spelling of FOOTWARE but I assure you, there was no typo on my part: the athletic company is hoping to trademark the term FOOTWARE in relation to hardware and software products used on or within footwear products. Nike hopes to use the brand FOOTWARE to market its smart footwear.

Understandably, many rival companies have expressed concern about this potential registration. Puma SE not only filed a “letter of protest” with the USPTO but has also initiated opposition proceedings against Nike’s application, asserting that the term FOOTWARE is ‘merely descriptive’ of technology-based footwear and therefore is not registrable. 

In its Notice of Opposition, Puma argues that Nike is not the only company that “combines footwear, hardware, and/or software technologies,” and so, “just as consumers understand that spyware describes software combined with spying, they will also understand that ‘footware’ describes software combined with foot products, including footwear.”

We will be closely monitoring this case and providing updates. If Nike can register its FOOTWARE trademark, it could be the beginning of a remarkable branding scheme.  

Its been an exciting week at Clancy PC, with the addition of not one but two new articling students! Trish Sawhney majored in both business and music at the University of Western Ontario, and came in top of her class in law school at the University of Birmingham. Welcome Trish!