Discussion (Chapter 7 – Intellectual Property Rights)

TrademarkRegistration

Whenseekingatrademark registration with the United States Patent and Trademark Office, you need to designate in which “class” you intend to use the mark. These classes, or more specifically, international trademark classifications, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), published by the World Intellectual Property Organization. That is a bunch of fancy words to say that there is an international agreement on trademark classifications.

These classifications had developed organically over the years and a description of each class can be viewed on the

USPTO website (Links to an external site.)

. Sometimes unusual combinations can result. For example, Class 9 includes computers and eyewear. It also used to cover video game controllers, but those were reclassified to Class 28 a number of years ago (computer based controllers remain in Class 9).

Oakley

What kind of eyewear do you own? If you wear

Oakley (Links to an external site.)

, odds are that the product is covered by one or more trademarks registered in Class 9. Here is the iconic Oakley “O” logo.

University of Oregon

If you are a football fan or a student trying to transfer to the

University of Oregon (Links to an external site.)

, chances are you are familiar with the Oregon “O” seen frequently on their campus and sports teams. Oregon has registered the mark in multiple classes, mostly to cover of all things stickers and athletic gear (none of which are in Class 9). They also licensed this mark out to multiple eyewear manufacturers to make and sell Oregon eyewear with the Oregon “O” logo.

And contrary to what you may (or may not) have heard, Tom Cruise did not play football at the University of Oregon.

Litigation

When Oakley became aware of the Oregon eyewear, they filed lawsuits against ALL of the eyewear manufacturers who made the glasses. They asserted a number of claims, including trademark infringement.

Oakley Water

After filing the lawsuit, Oakley became aware of a

water company (Links to an external site.)

selling artesian water also using the Oakley name. Oakley had registered the name in Class 9, but this other company had registered the same mark in a different class.

Question Presented

1. In the litigation between Oakley and the eyewear manufacturers, who do you think is likely to prevail and why?
2. If Oakley were to assert an infringement claim against Oakley Artesian Water, do you think they will prevail in that scenario?

Hint

Please do not try to search the Internet for the answers – unless you know the names of all the parties and/or have access to PACER (the Federal Court system allowing access to all cases), you will not find any information on the Internet.

I know this won’t deter some of you from trying, but you have been warned.