00:00:00
Speaker 1: All right, good morning, Happy Wednesday. I'm Ross.
00:00:03
Speaker 2: Thanks for spending some time with us on yesterday's show. We spent some time talking about a lawsuit between seven eleven and Nike based on Nike looking to release some new sneakers that had the same color pattern as the seven eleven logo and looking to release them on seven eleven, July eleventh, seven eleven Day, and Gina has a lot of questions, a lot of good questions, and inspired me to get in touch with Bill Honeker, who has been on the show before.
00:00:45
Speaker 1: He is the IP Guy.
00:00:46
Speaker 2: He's a former examiner for the WES Patent Office. His website is ipguy dot com. It stands for Intellectual property, by the way, ipguy dot com and epic. Gina, since you were so enthusiastic about this topic yesterday, I'm gonna just hand this to you to ask Bill.
00:01:06
Speaker 1: The first question.
00:01:06
Speaker 3: Sure, okay, Thanks Bill, appreciate you joining us.
00:01:09
Speaker 1: I'm curious.
00:01:10
Speaker 3: The biggest question that I had when we were looking back at this Nike seven to eleven situation is if businesses and companies can trademark certain colors, like do they have the opportunity of saying, okay, this combination that we have is seven elevens and seven elevens only or does it also deal with specific things of like Okay, another slurpee business can't have the same color, but a Nike shoe can.
00:01:35
Speaker 1: What's the situation here?
00:01:37
Speaker 3: Okay?
00:01:38
Speaker 4: Number one, companies can protect their colors, get trademark protection for those colors.
00:01:47
Speaker 5: The second part of the question, would it be limited to slurpees?
00:01:50
Speaker 6: Normally, trademarks are for certain products or services, so you can have two trademarks.
00:01:58
Speaker 5: But to come and he's had the same trademark but for different products or services in this case.
00:02:04
Speaker 4: Interestingly, seven eleven does put their stripes in that order, orange, green, and red on apparel, clothing, shoes, other things. So that argument is probably going to be difficult for Nike to make that, hey, we're not doing the same thing. Nobody's going to be confused, And the big question comes down who's going to be confused? And secondly, is seven Eleven's being deluded by being weakened by what Nike's.
00:02:40
Speaker 5: Doing at this time?
00:02:42
Speaker 3: Okay, so you talk about seven eleven's colors there, and I also did not know that.
00:02:47
Speaker 1: Seven eleven had apparel.
00:02:48
Speaker 3: But when you look at the Nike shoe. It has the stripe, the combination of the three colors. What if Nike created a shoe that was like a splotch of each color in different areas, would they be off the hook or the fact that they're also still dropping it on July eleventh, seven eleven free Slurpy Day playing a role in it?
00:03:10
Speaker 4: Would Nike would have better arguments if they hadn't used the three stripes and those specific colors and put it out on July eleven.
00:03:22
Speaker 5: If Nike had just put out.
00:03:24
Speaker 4: A show with orange, green, and red, probably not going to be an issue.
00:03:30
Speaker 6: But when you do the other things, make them stripes, make them in the same order, and put them out on July eleventh, that's an issue.
00:03:41
Speaker 1: Bill.
00:03:41
Speaker 2: What if they didn't do it on July eleventh? What if they never said they were going to do it on July eleventh because that horse has left the barn now and they can't change it, and say what But what if hypothetically they did it on some random day and seven eleven didn't have a peril.
00:03:59
Speaker 1: Then.
00:04:01
Speaker 4: Then Nike has got a better case because one of the things that seven eleven has to prove is that well to violate their trademark seven to eleven has to prove that consumers will.
00:04:16
Speaker 5: Be confused by what Nike's doing.
00:04:19
Speaker 4: So just using the three stripes is probably enough to show consumer confusion, but.
00:04:28
Speaker 7: They but it becomes would have it's a stronger argument because they're clearly associating it absolutely with seven eleven by launching on seven eleven's so called birthday.
00:04:42
Speaker 2: A listener a listener texting yesterday about John Deere and said something about John Deere having some kind of trademark or copyright or whatever protection over there green and yellow colors. And I assume that's true, But what exactly does does that cover? Like who can or can't use those same colors in combination?
00:05:06
Speaker 1: Like they're almost the same.
00:05:07
Speaker 2: Colors as Australia's national sports uniforms.
00:05:13
Speaker 1: Who can use these colors?
00:05:16
Speaker 4: Yeah, great question, and it goes back to what Gina was asking. You have to look at what the colors are being used on. John Deere has green and yellow famous trademark registered. Interestingly, John Deere sells apparel, They sell all kinds of things other than just farm equipment. So if you use green and yellow clearly on farm equipment or any kind of even home up.
00:05:47
Speaker 6: Any kind of equipment, you're going to run into a problem potentially with John Deere.
00:05:52
Speaker 5: With apparel, you're going to potentially run.
00:05:55
Speaker 6: Into a problem, particularly if it's in any way associated with agriculture or something that John Deere promotes.
00:06:04
Speaker 5: So it might might be beyond agriculture.
00:06:09
Speaker 6: It could be a particular show or something else where they've used the mark in connection with some type of service or product.
00:06:19
Speaker 2: But I could make a television company with a logo exactly in John Deere colors and that would be fine.
00:06:27
Speaker 5: Yes, Yeah, because.
00:06:29
Speaker 4: You're in a different business you're in people are not going to be John Deere doesn't own green and yellow.
00:06:38
Speaker 5: John Deere owns green and.
00:06:40
Speaker 6: Yellow in in connection with how they use those colors and what their company provides in the way of products and services. And then because John Deere seven to eleven are famous, they get a little bit bigger protection, and that's against the which doesn't have to show confusion. It just has to show, hey, you're deluding our mark and we don't want you to do that. So there's this little extra protection that's provided to them.
00:07:13
Speaker 3: And part of my ignorance here, Bill, but I'm curious, like is there like a trademark website or something where every company, every business knows everybody's trademarks. You can't have the deniability of like, well, I didn't know that you guys have this color trademark.
00:07:27
Speaker 4: Yeah, great question, and the answer is yes. The United States Patent and Trademark Office has a website of every trademark application that's ever been filed and every subsequent registration.
00:07:41
Speaker 5: You can go in.
00:07:42
Speaker 4: And put in seven to eleven as an owner, and it'll give you the hundreds of.
00:07:47
Speaker 6: Trademarks stay home, Same with Nike, same with everyone. It's available to the public.
00:07:52
Speaker 1: Can you do what the other one one of the go ahead? Could you put in.
00:07:57
Speaker 2: Green and yellow and in that in that database and see what companies.
00:08:02
Speaker 1: Have trademarks that include green and yellow?
00:08:05
Speaker 5: Yes, yeah, you can search by color. You can search by image.
00:08:12
Speaker 6: You can't really search by sound, but some trademarks apply to sounds.
00:08:16
Speaker 2: Okay, So last quick thing, because we're just about out of time.
00:08:19
Speaker 1: We are out of time, but I'm gonna ask you this question real quick.
00:08:21
Speaker 2: Anyway, is your guess I'm asking to speculate regarding seven eleven in the Nike shoes. Is your guess that seven to eleven simply does not want those shoes to come out, or wants Nike to pay them some millions of dollars so they can kind of spread the love around.
00:08:40
Speaker 4: I think they don't want that shoe to come out because it weakens their trademark.
00:08:44
Speaker 5: They have a duty to protect their trademark.
00:08:48
Speaker 6: They have to proceed against Nike, so they want they want an injunction.
00:08:53
Speaker 5: And my guess is this is a limited edition shoe.
00:08:57
Speaker 4: Dollars are not going to be enough to even support a losser.
00:09:01
Speaker 2: Bill Honeker is the IP guy. His website is I P g u Y dot com. Thanks Bill, that was a fabulous conversation. Appreciate your making time for us.
00:09:11
Speaker 5: Thank you appreciating on a great day.
00:09:14
Speaker 1: You too, Gina did did that?
00:09:18
Speaker 2: Yeah?
00:09:18
Speaker 1: Super interesting?
00:09:19
Speaker 3: Huh so like honestly, yeah, it makes so much more sense now since you say seven to eleven has apparel and they're claiming that this might conflict with their apparel. I think they have a better case now.
00:09:31
Speaker 1: Awesome, Yeah, that was that was a lot of fun. Gina had all the best questions
Speaker 1: All right, good morning, Happy Wednesday. I'm Ross.
00:00:03
Speaker 2: Thanks for spending some time with us on yesterday's show. We spent some time talking about a lawsuit between seven eleven and Nike based on Nike looking to release some new sneakers that had the same color pattern as the seven eleven logo and looking to release them on seven eleven, July eleventh, seven eleven Day, and Gina has a lot of questions, a lot of good questions, and inspired me to get in touch with Bill Honeker, who has been on the show before.
00:00:45
Speaker 1: He is the IP Guy.
00:00:46
Speaker 2: He's a former examiner for the WES Patent Office. His website is ipguy dot com. It stands for Intellectual property, by the way, ipguy dot com and epic. Gina, since you were so enthusiastic about this topic yesterday, I'm gonna just hand this to you to ask Bill.
00:01:06
Speaker 1: The first question.
00:01:06
Speaker 3: Sure, okay, Thanks Bill, appreciate you joining us.
00:01:09
Speaker 1: I'm curious.
00:01:10
Speaker 3: The biggest question that I had when we were looking back at this Nike seven to eleven situation is if businesses and companies can trademark certain colors, like do they have the opportunity of saying, okay, this combination that we have is seven elevens and seven elevens only or does it also deal with specific things of like Okay, another slurpee business can't have the same color, but a Nike shoe can.
00:01:35
Speaker 1: What's the situation here?
00:01:37
Speaker 3: Okay?
00:01:38
Speaker 4: Number one, companies can protect their colors, get trademark protection for those colors.
00:01:47
Speaker 5: The second part of the question, would it be limited to slurpees?
00:01:50
Speaker 6: Normally, trademarks are for certain products or services, so you can have two trademarks.
00:01:58
Speaker 5: But to come and he's had the same trademark but for different products or services in this case.
00:02:04
Speaker 4: Interestingly, seven eleven does put their stripes in that order, orange, green, and red on apparel, clothing, shoes, other things. So that argument is probably going to be difficult for Nike to make that, hey, we're not doing the same thing. Nobody's going to be confused, And the big question comes down who's going to be confused? And secondly, is seven Eleven's being deluded by being weakened by what Nike's.
00:02:40
Speaker 5: Doing at this time?
00:02:42
Speaker 3: Okay, so you talk about seven eleven's colors there, and I also did not know that.
00:02:47
Speaker 1: Seven eleven had apparel.
00:02:48
Speaker 3: But when you look at the Nike shoe. It has the stripe, the combination of the three colors. What if Nike created a shoe that was like a splotch of each color in different areas, would they be off the hook or the fact that they're also still dropping it on July eleventh, seven eleven free Slurpy Day playing a role in it?
00:03:10
Speaker 4: Would Nike would have better arguments if they hadn't used the three stripes and those specific colors and put it out on July eleven.
00:03:22
Speaker 5: If Nike had just put out.
00:03:24
Speaker 4: A show with orange, green, and red, probably not going to be an issue.
00:03:30
Speaker 6: But when you do the other things, make them stripes, make them in the same order, and put them out on July eleventh, that's an issue.
00:03:41
Speaker 1: Bill.
00:03:41
Speaker 2: What if they didn't do it on July eleventh? What if they never said they were going to do it on July eleventh because that horse has left the barn now and they can't change it, and say what But what if hypothetically they did it on some random day and seven eleven didn't have a peril.
00:03:59
Speaker 1: Then.
00:04:01
Speaker 4: Then Nike has got a better case because one of the things that seven eleven has to prove is that well to violate their trademark seven to eleven has to prove that consumers will.
00:04:16
Speaker 5: Be confused by what Nike's doing.
00:04:19
Speaker 4: So just using the three stripes is probably enough to show consumer confusion, but.
00:04:28
Speaker 7: They but it becomes would have it's a stronger argument because they're clearly associating it absolutely with seven eleven by launching on seven eleven's so called birthday.
00:04:42
Speaker 2: A listener a listener texting yesterday about John Deere and said something about John Deere having some kind of trademark or copyright or whatever protection over there green and yellow colors. And I assume that's true, But what exactly does does that cover? Like who can or can't use those same colors in combination?
00:05:06
Speaker 1: Like they're almost the same.
00:05:07
Speaker 2: Colors as Australia's national sports uniforms.
00:05:13
Speaker 1: Who can use these colors?
00:05:16
Speaker 4: Yeah, great question, and it goes back to what Gina was asking. You have to look at what the colors are being used on. John Deere has green and yellow famous trademark registered. Interestingly, John Deere sells apparel, They sell all kinds of things other than just farm equipment. So if you use green and yellow clearly on farm equipment or any kind of even home up.
00:05:47
Speaker 6: Any kind of equipment, you're going to run into a problem potentially with John Deere.
00:05:52
Speaker 5: With apparel, you're going to potentially run.
00:05:55
Speaker 6: Into a problem, particularly if it's in any way associated with agriculture or something that John Deere promotes.
00:06:04
Speaker 5: So it might might be beyond agriculture.
00:06:09
Speaker 6: It could be a particular show or something else where they've used the mark in connection with some type of service or product.
00:06:19
Speaker 2: But I could make a television company with a logo exactly in John Deere colors and that would be fine.
00:06:27
Speaker 5: Yes, Yeah, because.
00:06:29
Speaker 4: You're in a different business you're in people are not going to be John Deere doesn't own green and yellow.
00:06:38
Speaker 5: John Deere owns green and.
00:06:40
Speaker 6: Yellow in in connection with how they use those colors and what their company provides in the way of products and services. And then because John Deere seven to eleven are famous, they get a little bit bigger protection, and that's against the which doesn't have to show confusion. It just has to show, hey, you're deluding our mark and we don't want you to do that. So there's this little extra protection that's provided to them.
00:07:13
Speaker 3: And part of my ignorance here, Bill, but I'm curious, like is there like a trademark website or something where every company, every business knows everybody's trademarks. You can't have the deniability of like, well, I didn't know that you guys have this color trademark.
00:07:27
Speaker 4: Yeah, great question, and the answer is yes. The United States Patent and Trademark Office has a website of every trademark application that's ever been filed and every subsequent registration.
00:07:41
Speaker 5: You can go in.
00:07:42
Speaker 4: And put in seven to eleven as an owner, and it'll give you the hundreds of.
00:07:47
Speaker 6: Trademarks stay home, Same with Nike, same with everyone. It's available to the public.
00:07:52
Speaker 1: Can you do what the other one one of the go ahead? Could you put in.
00:07:57
Speaker 2: Green and yellow and in that in that database and see what companies.
00:08:02
Speaker 1: Have trademarks that include green and yellow?
00:08:05
Speaker 5: Yes, yeah, you can search by color. You can search by image.
00:08:12
Speaker 6: You can't really search by sound, but some trademarks apply to sounds.
00:08:16
Speaker 2: Okay, So last quick thing, because we're just about out of time.
00:08:19
Speaker 1: We are out of time, but I'm gonna ask you this question real quick.
00:08:21
Speaker 2: Anyway, is your guess I'm asking to speculate regarding seven eleven in the Nike shoes. Is your guess that seven to eleven simply does not want those shoes to come out, or wants Nike to pay them some millions of dollars so they can kind of spread the love around.
00:08:40
Speaker 4: I think they don't want that shoe to come out because it weakens their trademark.
00:08:44
Speaker 5: They have a duty to protect their trademark.
00:08:48
Speaker 6: They have to proceed against Nike, so they want they want an injunction.
00:08:53
Speaker 5: And my guess is this is a limited edition shoe.
00:08:57
Speaker 4: Dollars are not going to be enough to even support a losser.
00:09:01
Speaker 2: Bill Honeker is the IP guy. His website is I P g u Y dot com. Thanks Bill, that was a fabulous conversation. Appreciate your making time for us.
00:09:11
Speaker 5: Thank you appreciating on a great day.
00:09:14
Speaker 1: You too, Gina did did that?
00:09:18
Speaker 2: Yeah?
00:09:18
Speaker 1: Super interesting?
00:09:19
Speaker 3: Huh so like honestly, yeah, it makes so much more sense now since you say seven to eleven has apparel and they're claiming that this might conflict with their apparel. I think they have a better case now.
00:09:31
Speaker 1: Awesome, Yeah, that was that was a lot of fun. Gina had all the best questions
