Advertising Law Blog

Chair of Olshan’s Intellectual Property Law Group and Co-Chair of the firm’s Brand Management & Protection Group Mary Grieco and Branding Department associate Morgan Spina published an article in Bloomberg Law entitled “OpenAI Trademark Victory Sets Roadmap for Avoiding IP Missteps.” In the article, Mary and Morgan discuss the key takeaways in the recent California ruling in which U.S. District Judge Yvonne Rogers sided with OpenAI in its trademark suit against Silicon Valley entrepreneur Guy Ravine and his company “Open Artificial Intelligence,” ruling that Ravine had violated OpenAI’s trademark rights, even though he registered the “open.ai” domain months before OpenAI’s founding. They analyze the intersection of intellectual property and fast-moving tech innovation, and what constitutes legitimate use of a trademark if a company predates a more famous brand and how entrepreneurs can navigate naming their AI ventures without triggering costly legal battles. “As the acceleration of technological innovation speeds up—particularly in the artificial intelligence space—this case serves as a reminder to companies that despite the rapid technological advancements, they can’t ignore existing intellectual property laws or skirt legal ethics lines to try to defeat competitors,” Mary and Morgan write. “[T]rademarks are protected in connection with certain goods or services, and if a senior user’s later use of a trademark extends beyond that initial protected use and any natural zone of expansion, then use of the trademark may not be protected in the same way.” They note the importance of following existing intellectual property laws, upholding legal ethics and the proper use of a trademark. They also emphasize that accurate and truthful representations to the U.S. Patent and Trademark Office are pivotal, or the consequences could be the loss of rights that companies are so eager to protect. “When first selecting a trademark, companies should ensure there are no existing overlapping registrations or common law usages that may impede the ability to protect the trademark in the future,” Mary and Morgan explain. “Moreover, companies should understand that prior use of a trademark doesn’t automatically extend protection to all future uses of that trademark.”