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Sheppard Mullin Team Wins Mark Dispute for Independent Publisher

Daily Journal
10.18.2023

Partner Laura Chapman led a team of Sheppard Mullin attorneys in their successful defense of client Nitashia Johnson in a trademark dispute against Advance Magazine Publishers, Inc.(“Advance”).

Johnson, a multi-media artist, created the book of photography and video series, “The Self Publication,” which reflected on her own experience as a person of color and celebrated the voices, resilience and beauty of the Black community. Advance, owner of SELF magazine and Conde Nast publications, opposed Johnson’s attempt to register The Self Publication as a trademark, claiming it infringed Advance’s trademarks and diluted SELF’s brand.

On October 13, 2023, the Trademark Trial and Appeal Board of the USPTO rejected Advance’s claims, finding that Advance failed to prove the “fame” necessary for dilution as well as no likelihood of confusion. “As a result of this case, there is now a written opinion that states that SELF is not a famous mark, and is a conceptually weak mark and only moderately commercially strong,” Chapman said.

The Sheppard Mullin team also included Irene Choe, Chante Westmoreland and Shirlyn Kim.

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