Josh Gerben Profile picture
Oct 18 7 tweets 2 min read
Luka Doncic and his Mom are in a legal battle for control of his trademarks.

In September, Luka filed to cancel a trademark his Mom owns for "LUKA DONCIC 7."

Last week, his Mom fired back, seeking to dismiss the legal proceeding on technical grounds.

[1/7]
#lukadoncic Image
The legal dispute began last month.

For years, Luka consented to his Mom owning trademark registrations for his name.

However, that arrangement appears to have changed as Luka has filed a "Petition to Cancel" a trademark registration his Mom owns for "Luka Doncic 7."

[2/7]
Luka's "Petition to Cancel" indicates that:

1. He was young and relied on his Mom for help when he consented to her owning his trademarks.

2. He is now trying to file trademarks under his own company which have been blocked by the previous registration owned by his Mom.

[3/7]
This past Thursday, Luka's Mom responded, requesting that the case be thrown out because Luka's court filing lacks "valid ground for contesting the registration."

[4/7] Image
The response filed by Luka's Mom is surprising because, if there were active settlement negotiations, Luka and his Mom could have asked for the case to be suspended.

Instead, Luka's Mom filed the most aggressive response possible-- asking for the case to be tossed.

[5/7]
In her response, Luka's Mom sounds like someone with an ax to grind.

The motion even mentions that she "provided long-term assistance in Mr. Luka Doncic's business affairs" and that he "granted a written consent" for this arrangement.

[6/7] Image
This case, if litigated, could take 2+ years to resolve.

Nevertheless, the headline is that Luka and his Mom appear to have had a falling out.

They are now wrestling for control to the trademark rights for his name.

[7/7]

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More from @JoshGerben

Jul 19
Well, this is awkward.

The company that owns Shaq's trademarks (Authentic Brands Group) has opposed his son's trademark filing for "SHAQIR O'NEAL."

How on earth did this happen?

#Shaq
#Trademarks

A thread 🧵
[1/8]
The Notice of Opposition starts by claiming that Authentic Brands Group ("ABG") holds all the rights in Shaq's name, image and likeness.

This is true.

Shaq did transfer all of these assets to ABG and is a shareholder in the company.

[2/8]
Authentic Brands Group goes on to claim that the trademark for SHAQIR O'NEAL is "confusingly similar" to trademarks it owns for Shaq.

[3/8]
Read 8 tweets
Jun 22
The Ohio State University has successfully registered a trademark for "THE."

The registration was just issued on June 21st by the USPTO.

The application was filed back in August 2019. So why did it take 3 years to get approved?

A thread🧵
The USPTO refused Ohio State's trademark application for the word "THE" on Sept 11, 2019, for two reasons:

1. The trademark was "merely ornamental."

2. The clothing company Marc Jacobs had filed an application for "THE" several months earlier.

tsdr.uspto.gov/documentviewer…

[2/5]
Ohio State responded by:

1. Showing the USPTO that it was not using the trademark in a mearly ornamental manner, and

2. Opposing Marc Jacobs' trademark application for the word "THE."

ttabvue.uspto.gov/ttabvue/v?qt=a…

[3/5]
Read 6 tweets
Mar 8
I'm a trademark attorney who has assisted clients in registering 7,500+ trademarks on 6 continents.

Russia has threatened to "suspend" the trademark and patent rights of foreign companies that are ceasing operations in Russia.

Why is that significant?

A thread.
#UkraineRussia
Russian state media is reporting that the Russian government may suspend the trademark and patent rights of companies that are ceasing operations in Russia or in connection with "sanctioned goods."

[2/11]
This means that Russians might be able to use Fortune 100 brands and patents without the threat of litigation.

And it's significant because such a threat pressures the companies, who owe a duty to their shareholders, to think twice about further isolating Russia.

[3/11]
Read 11 tweets
Jan 5
I have assisted clients in registering 7,000+ trademarks in the US and around the world.

The Washington Football Team has likely filed a trademark application for its new team name.

The question is where.

#WashingtonFootball #WFT #NFL #trademarks

[a thread]
[1/6]
There is a treaty called the Paris Convention.

178 countries signed this treaty.

If a company files a trademark in 1 of the 178 countries, it may then file the same mark in any of the other countries WITHIN 6 MONTHS and get the priority date from the original filing.

[2/6]
The Cleveland Guardians used the Paris Convention when securing the trademark for its new team name.

In March 2021, the team filed a trademark for "Cleveland Guardians" in the Republic of Mauritius.

The application went unnoticed until the new name was announced in July.

[3/6]
Read 7 tweets
Oct 27, 2021
The Cleveland Indians have been sued over the team’s planned name change to The Cleveland Guardians.

A roller derby team named the Cleveland Guardians filed the lawsuit earlier today.

The lawsuit makes some juicy claims.

[a thread]

#ClevelandGuardians #ClevelandIndians
The elbows begin flying immediately in the complaint.

In the second paragraph the roller derby team asserts that two sports teams cannot reside in the same city and have the same name.

[2/8]
After coming out of the gate strong, the roller derby team goes on to posit that it has common-law trademark rights in northeast Ohio, going back to late 2013.

[3/8]
Read 8 tweets
Aug 16, 2021
There is a trademark battle underway in Kentucky.

The University of Kentucky has opposed a trademark application for "TEAM KENTUCKY" filed by the Commonwealth of Kentucky.

The University claims that it owns the word KENTUCKY when it comes to clothing products.

#Kentucky
[2]

You did not see this wrong.

The University of Kentucky and the Commonwealth of Kentucky are engaged in a trademark battle over who owns the trademark for KENTUCKY when it comes to clothing.
[3]

The University of Kentucky is claiming that consumers are likely to think any clothing products sold by the state government using the trademark "TEAM KENTUCKY" are actually products sold by the University.
Read 7 tweets

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