Law Is Stranger Than Fiction | Episode 13 Outsider

 

good afternoon and welcome to another

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edition of law is stranger than fiction

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I’m one of your co-hosts Steven Bergman

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and I’m your other co-host Barry Shoal

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and we are shareholders at the law firm

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of Richard’s Brant Miller Nelson today’s

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episode takes us back into the realm of

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trademark law where there’s another

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battle brewing over the use of what

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would seem to be a common word Berry yes

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indeed there is a battle brewing over

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the term Outsider utah-based apparel

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company Cool has obtained a trademark in

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the term outsider for certain apparel

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items it has sued industry giant LL Bean

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for its advertising campaign be an

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outsider let me stop you for a

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second so Cool obtained a trademark on

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the word outsider yes for particular

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items of apparel okay so they don’t have

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a general right to the word outsider

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they have it too for example describing

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one of their products for a line of

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outdoor wear yes okay so cool is suing

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LL Bean for trademark infringement

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notwithstanding the fact that LL Bean

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does not carry products manufactured by

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Cool in its stores and they’re suing

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them for using the word outsider yes

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even though they’re not are they

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describing any of their own products as

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outsider products I believe this is more

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of a general campaign encouraging

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consumers to be an outsider by attiring

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themselves in outdoor ware from LL Bean

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Cool is claiming that they might suffer

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financial damage if consumers are

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confused about the source of the

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products based on the outsider campaign

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so Cool is claiming that because LL Bean

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is promoting the use of its outdoor wear

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by saying be an outsider that people

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will be confused as to where to buy

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Cools outsider brand of products and

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that cool owns all rights in the term

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outsider with regard to outdoor apparel

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but now has LL Bean actually used

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the word outsider to describe any of their

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products only I believe in its in-store

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displays okay so in other words wear

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this and

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go outside type of thing wear this so

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you can be an outsider but they’re not

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saying for example buy LL Bean’s outsider

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pants or outsider shirts or

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anything like that correct

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okay and when was this lawsuit filed in

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October of last year and does this

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lawsuit have anything to do with the fact

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that LL Bean is planning to open its

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first store in the state of Utah well

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one wonders only because the

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inaugural LL Bean store will be located

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right down the street from Cool’s

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flagship store in Park City okay

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does Cool have any kind of history of

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aggressively protecting its trademarks

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as a matter of fact yes it’s sued Yeager

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over the use of an advertising campaign

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that urged its consumers to have a Cool

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spot cool as you might know is German

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for the word cool or neat so cool

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the clothing manufacturer is claiming

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that there may be consumer confusion

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resulting from Yeager’s advertising

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campaign as well okay and it’s my

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understanding in trademark law and I

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know you do a lot more trademark law

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than I do that you have to be aggressive

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in protecting your trademarks or trade

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names otherwise you’re at risk of losing

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them is that right that’s correct so one

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could say that in this instance Cool is

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simply protecting its rights by being so

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aggressive couldn’t they one could say

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that okay

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well that’s it for today’s story as I

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mentioned that Barry is an expert in

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trademark and copyright law if you have

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any issues concerning those areas please

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contact Barry or if you have a litigation matter

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concerning trademarks of copyrights

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please contact me and for now this is

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another edition of law is stranger than

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fiction