Trademark Lawyers And Celebrity Culture

Erika MurrayPatents

Being a public persona is hard work and often involves the help of a diligent trademark lawyer. In the United States, some of the most talked-about celebrities have been employing the help of trademark lawyers to protect their name – and the lucrative business that comes with the brand – but some have taken it a little too far and lost.

The most recent and notorious case of President Donald Trump picking a fight with a musician turned app developer who trademarked an app called iTrump has ended after the 40-year-old engineer and musician succeeded against Trump’s lawyers.

Tom Scharfeld released his app in Anaheim, California in January of 2011. He had filed the paperwork necessary with the United States Patent and Trademark Office to use the word ‘iTrump,’ prior to the release.

The app is of a virtual version of a trumpet that can be played with one’s fingers in a game that teaches users how to play the trumpet.

This was the second app by the developer who had created an app called ‘iBone,’ short for trombone. During his years at MIT as a mechanical engineer student, Scharfeld played in a jazz ensemble, which gave him the idea to create the apps. Both products had nothing to do with president Trump and were created strictly for educational purposes.

Scharfeld received a cease and desist letter from Donald Trump’s trademark lawyers, that demanded Scharfeld discontinue the use of the ‘Trump’ name. The letter explained that consumers might be confused by the name because Mr. Trump also has iPhone apps sold under his name. The letter also said, “…your company’s use of the iTrump mark causes dilution of the famous quality of the TRUMP mark and tarnishes the goodwill and reputation that Mr. Trump has built up over many years.”

After six years, despite the notoriety of Donald Trump, this trademark lawsuit ended in a loss for the infamous negotiator and now president.

The trademark case was “ridiculous” said Scharfeld, who had to deal with Trump’s trademark lawyers while at the same time generating interest for the app. He made a brief appearance on USA Today which created quite a buzz for the developer. “They wanted to disrupt my business.  I think they probably thought that I would go away easily, which is typical,” Scharfeld told Forbes.

 “I always felt the truth and the law were on my side,” he added, “…they were overreaching and couldn’t possibly be serious about this.”

Scharfeld was able to defend his ownership of the iTrump app without a trademark lawyer of his own, an impressive feat.

In this case, the defendant then went on the offensive, finding a number of administrative flaws in previous trademark applications and canceling a trio of related trademarks owned by Trump. Furthermore, Trump’s trademark lawyers were not able to register the fourth attempt, because Scharfeld argued that it was fraudulent.

After thousands of dollars in legal filings and the work of about six of Trump’s trademark lawyers, the dispute came to a close when Trump’s trademark lawyers surrendered the trademark to Scharfeld.

The deeper Scharfeld dug the more evidence he found that Trump’s trademarks were based on bad research, some were maintained without the proper paperwork, and some were simply abandoned. The case had forced Trump to recognize the legal limits of his name despite maintaining a ‘global trove of trademarks.’ Trump’s trademark lawyers explained that they did not lose, but withdrew voluntarily because Scharfeld’s app is designed to teach people music and is completely unrelated to Donald Trump. The president’s trademark lawyers no longer represent him.

Another curious trademark case where trademark lawyers had to work overtime has to do with the most famous celebrity family in North America, the Kardashians.

The trademark dispute began when Blac Chyna – who has been in a tumultuous relationship with Rob Kardashian for several years – wanted to trademark her name as Angela Renee Kardashian to use while working in entertainment and on her social media. Her request was opposed by the Kardashian sister clan. “This is the first one that’s ever been opposed,” Chyna’s trademark lawyer told PEOPLE magazine. The trademark lawyer says he has filed “many trademarks” for Chyna in the past.

The Chyna’s trademark lawyer is confident in this case, “…I think for us this is going to be a clear case win because it’s actually her name, [and] it’s not a poaching. I would hope that this is just a junior lawyer’s error, who’s just responding to everything and not really looking at who it’s from or why it was filed.”

The Kardashians oppose the trademark of the name because they believe that they will suffer damage to their reputation, including “irreparable injury.”

Blac Chyna a.k.a. Angela Renee Kardashian was engaged to fiancé Rob Kardashian in April, as the couple welcomed their first baby.

Corporate and trademark lawyer Antonio Battaglia created a successful business idea selling toilet paper hashtagged #LimpiateConTrump, which translates to ‘clean yourself with Trump.’ The key to the trademark lawyer’s success was to apply his trademark to hygienic products, which Trump neglected to do.

The product is in a start-up stage presently. The trademark lawyer says that production is scheduled to begin shortly with limited amounts of toilet paper becoming available to the public as early as the end of 2018.

“Once he won, we had to stop the fun approach and focus seriously on developing a product not based on a mockery but based on a response to an insult, based on helping migrants,” the trademark lawyer told Newsweek.