Trademarks


April 14, 2014 7:56 PM | Posted by Enriquez, E. Martin | Permalink

To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the "U.S. Sanctions Program").  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  Penalties for violating the U.S. Sanctions Program include civil and criminal fines, imprisonment, and the loss of tax credits or export privileges. 

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December 20, 2013 9:57 AM | Posted by Olafson, Shane | Permalink

In most U.S. states, merely using a trademark confers trademark rights to the owner.  As such, many companies question why they should spend time and money registering their trademarks with the United States Patent and Trademark Office (PTO).  There are many reasons to register a mark, but one of the most important reasons was recently highlighted in a case from the First Circuit Court of Appeals (the federal appellate court whose rulings cover Massachusetts, Rhode Island, Maine, New Hampshire and Puerto Rico).  That case is Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55 (1st Cir. 2013).   

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December 12, 2013 4:43 PM | Posted by Olafson, Shane | Permalink

On December 4, 2013, in Petroliam Nasional Berhad (Petronas) v. GoDaddy.com, Inc., the United States Court of Appeals for the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (“ACPA”) does not provide a cause of action for contributory cybersquatting.

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October 17, 2013 3:32 PM | Posted by Brody-Brown, Dana | Permalink

On June 12, 2013, the Trademark Trial and Appeal Board (TTAB) granted two motions for summary judgment based on lack of Applicant’s bona fide intent.

In the first of these decisions, Pacific Poultry Company, Limited v. George D. Stirling, Jr., Opposition No. 91204620 (June 12, 2013) [non-precedential], the Applicant, George D. Stirling, Jr., applied to protect SWEET G’S HULI MARINADE, SAUCE, GLAZE for “retail grocery stores”. Opposer, Pacific Poultry Company, claimed priority, likelihood of confusion, and lack of bona fide intent to use the mark in commerce “as a service mark for retail grocery stores”.  The record reflected that Applicant’s intent was not to operate a retail grocery store.  Instead, the mark was to be used with a food product.  

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October 1, 2013 8:02 PM | Posted by Norcross, Linda | Permalink

If you’re just launching a new business, there are a few things you need to consider before getting too far along in the name game.  Sure, you may have come up with what may well be the most brilliant brand in existence.  Ever.  BUT, before you go slapping that name on everything from shipping labels to stationery, here are three important tips to guide you down the path to building a strong and successful brand identity.

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September 10, 2013 1:45 PM | Posted by Horne, Alexandra | Permalink
On May 31, 2013, the U.S. District Court in the Northern District of Indiana ruled in favor of Plaintiffs Coach, Inc. and Coach Services, Inc. ("Coach") and against Defendants The Treasure Box, Heather Hiatt and Michael Hiatt on claims of trademark infringement and counterfeiting... read more
September 4, 2013 1:20 PM | Posted by Garrison, Sean | Permalink

Frequently, parties enter into IP license agreements in which the licensor grants a license or other rights to a bundle of its intellectual property (patents, copyrights, trademarks, trade secrets, know-how, etc.) pertaining to a particular product or technology.  In many instances, these agreements include both patents and non-patent IP - often referred to as “hybrid” agreements.  In considering the royalties to be charged in hybrid agreements, licensors must be careful to distinguish royalty payments attributable to any licensed patents from payments for the rights to the non-patent IP.  Failing to do so can lead to an unexpected cut-off of the royalty revenue stream.  Stephen Kimble learned the hard way.

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August 29, 2013 4:24 PM | Posted by Garrison, Sean | Permalink

In the course of a corporate restructuring or in the management and reorganization of a company’s IP assets, intra-corporate trademark assignments are not uncommon.  Perhaps a special entity is created to hold all of the company’s IP assets, or a corporate organization with multiple affiliates and subsidiaries may elect to consolidate its trademarks in the ultimate parent company or other entity.  There are any number  of possibilities in which one or more trademarks may be transferred from one corporate entity to another.  No big deal, right?  Well, not so fast.

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July 30, 2013 12:29 PM | Posted by Updegraff, Samantha A. | Permalink

Design patents are often a forgotten form of intellectual property despite the fact that they have been available to inventors and designers for over 150 years.  A design patent protects a new and original ornamental design of a useful product.  For example, a design patent can protect the shape of a bottle or the pattern on the bottom of a shoe or the ornamental design of a unique-looking bird house.  Design patents can be incredibly valuable to a company since they protect “iconic” designs ranging from Apple’s iPhone graphics to the original glass Coca-Cola bottle.

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July 7, 2013 5:46 PM | Posted by Edwards, Nathaniel | Permalink

Singer-songwriter Pharrell Williams recently filed a declaratory judgment suit in the Southern District of New York against will.i.am of the music group The Black Eyed Peas.  will.i.am owns the trademarks I AM and WILL.I.AM for clothing and entertainment and philanthropic services. The two artists have been in a dispute since will.i.am sent a cease and desist letter to Pharrell in December 2012 regarding Pharrell’s use of the mark I AM OTHER for clothing and entertainment production.  In April 2013, will.i.am filed oppositions against Pharrell’s eight pending federal trademark applications for the I AM OTHER mark.  Apparently fed up with will.i.am’s trademark enforcement tactics, Pharrell filed suit seeking a ruling that his I AM OTHER mark does not infringe the I AM and WILL.I.AM trademarks.

The case raises an issue many trademark owners face when policing their trademarks.  When do enforcement actions cross over the imaginary “actual controversy” line and subject mark owners to potential declaratory judgment suits?  read more
October 24, 2012 9:48 AM | Posted by Bayton, Emily | Permalink
Today we bring you Part Two of an article authored by our partner Ms. Emily Bayton and published by Law360 on October 16, 2012.  You can check out Part One of the article here:http://www.lrlaw.com/ipblog/blog.aspx?entry=601. read more
October 16, 2012 8:22 PM | Posted by Bayton, Emily | Permalink
As an intellectual property lawyer and avid sports fan, I’m always interested in a case involving the legal intersection between sports and IP. There are plenty of IP issues facing the sports industry. Like any other industry, it’s driven by money, much of which is generated from IP. From licensing of team names and logos, to broadcast and sponsorship rights, to merchandise deals, IP plays a large role in the value of the sports industry.

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August 28, 2012 6:11 PM | Posted by Horne, Alexandra | Permalink
On June 28, 2012, the Trademark Trial and Appeal Board ("TTAB") of the U.S. Patent and Trademark Office ("USPTO") ruled in favor of the Hershey Chocolate and Confectionary Corporation ("Hershey"), reversing the USPTO’s decision that Hershey’s candy bar configuration was functional and non-distinctive. read more
June 11, 2012 11:28 AM | Posted by Williams, Nikkya G. | Permalink

Genericide.  While the word might conjure up images of shadowy plots and midnight coups or sounds like it might be thrown around casually on Game of Thrones, luckily genericide does not involve the death of any person.  Unluckily, if you’re a trademark owner, it does involve the death of your trademark.  Many people don’t realize that, much like video killed the radio star, popularity and ubiquity can kill a trademark.  As my colleague Linda Norcross mentioned a little over a year ago (http://www.lrlaw.com/ipblog/blog.aspx?entry=322&fromSearch=true), a trademark owner must be ever on guard against the Looming Specter of Genericide (LSG, for short).

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April 27, 2012 4:31 PM | Posted by Willimas, Nikkya | Permalink

Let me first say that I love football and I went to Stanford.  But not when Stanford had good football teams, no, no.  I went to Stanford when we were lucky to win 4 games in the season .  So the recent, phenomenal success of Cardinal football is something I treasure deeply and hold onto with everything I have.  I tell you this so as to acknowledge any bias that may creep into the following.

 

SOMEONE IS SUING ANDREW LUCK!!!!

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March 13, 2012 11:06 AM | Posted by Buntin, Stephanie | Permalink
Everybody knows somebody who seems physically unable to peel his eyes away from his smart phone screen for longer than two seconds, regardless of his visibly offended dinner company or the swerving and honking of oncoming traffic. Some find it merely uncouth, while others cry “addict!” And for that very reason, Research in Motion Limited (“RIM”)’s popular Blackberry smart phone was dubbed “CrackBerry” by its enthusiastic fans. read more
March 2, 2012 4:14 PM | Posted by Brody-Brown, Dana | Permalink

Last month, the United States Court of Appeals for the 11th Circuit heard arguments on Appeal from a 2009 decision by the Northern District of Alabama in University of Alabama Board of Trustees v. New Life Art Inc.

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January 25, 2012 4:04 PM | Posted by Edwards, Nathaniel | Permalink

As a follow-up to my colleague Linda Norcross’ excellent blog piece last week, I thought I would provide our blog readers with another entertaining read on the controversial “aesthetic functionality” doctrine of trademark law.  Last February, the Ninth Circuit added to the confusing annals of aesthetic functionality doctrine by denying trademark protection to the iconic design displayed below.

                                                        

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January 17, 2012 6:12 PM | Posted by Norcross, Linda M. | Permalink
Famed high-fashion footwear designer Christian Louboutin is seeing red. Louboutin, famous for a lipstick red sole featured on its high-end heels, is embroiled in an ongoing legal battle with rival design house Yves St. Laurent (“YSL”), over the right to sell footwear bearing Louboutin’s signature red sole. read more
September 16, 2011 11:27 PM | Posted by Bayton, Emily; Edwards, Nathaniel | Permalink

NCAA Division I-A sports generated an estimated $4.1 billion in revenue in 2009 - a 60% increase in revenue in just five years.  With increased profitability comes an increased number of counterfeiters looking to capitalize on the valuable intellectual property rights of colleges and universities.  Colleges and universities face counterfeiting issues on several fronts - most prominently with tickets and merchandise - and can no longer take a back-seat approach in dealing with counterfeiting. 

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September 2, 2011 3:40 PM | Posted by Horne, Alexandra | Permalink

What’s in a company name? A great deal if you choose the name carefully, as it will identify the company and be recognized by consumers as the source of the company's products and services. With this in mind, you will want to:

1.      Choose a name that is memorable;

2.      Choose a name that is simple and easy to spell;

3.      Choose a name with a positive connotation;

4.      Consider an eye-catching design or logo; and

5.      Consider a distinctive corporate color.

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June 27, 2011 4:20 PM | Posted by Campbell, Flavia | Permalink
The Internet Committee for Assigned Names and Numbers (ICANN) has approved the launch of the new .XXX top-level domain name (“TLD”), targeted to serve the needs of the adult entertainment industry. As we've seen in the past, the launch of new TLDs may give cybersquatters the opportunity to register domain names that incorporate famous marks to later profit from selling them to their rightful owners. The risk of brand damage caused by such cybersquatting activities is enhanced in this case by the fact that the .XXX TLDs are, by definition, associated with sexually-oriented content. Sensitive to the issue, the registry behind the .XXX TLD is giving trademark owners outside the adult industry the opportunity to preemptively block their marks from being registered within a .XXX web address. read more
June 24, 2011 5:37 PM | Posted by Aikman-Scalese, Anne | Permalink
Brand owners need to be aware that the complex world of Internet domain name registrations is about to get more confusing. On Monday, June 20, the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved taking applications for an unlimited number of generic Top Level (after the dot) Domains. Qualified registrars may apply for any string of letters after the dot, e.g. (dot)realestate, (dot)casinos, (dot)sports, (dot)toys, (dot)music, or (dot)movies. The new “gTLDs” are expected to increase competition and foster free speech, but they also present a much more difficult trademark enforcement environment as brand owners struggle to ferret out and shut down unauthorized use of their marks and sales of counterfeit goods and services on the web. read more
April 29, 2011 7:22 PM | Posted by Norcross, Linda | Permalink

As Apple fights with Amazon.com to assert exclusive trademark rights in APP STORE for, ahem, a software application store, it may be a good reminder to trademark owners to formulate a strategy for avoiding the worst fate to befall a trademark…genericide. Yes, it is actually as deadly as it sounds. Genericide occurs when a trademark becomes generic, meaning it is no longer an indicator of the source of a particular product or service, but rather, has become synonymous with its general class. 

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April 22, 2011 4:48 PM | Posted by Brody-Brown, Dana | Permalink

On March 8, 2011, the U.S. Court of Appeals for the Ninth Circuit issued a key ruling in Network Automation, Inc.  v. Advanced Systems Concepts, Inc., No. 10-5840 WL815806 (9th Cir. March 8, 2011).  Reversing a District Court’s injunction, the Ninth Circuit found that purchase of a competitor’s trademark for use as a keyword in an internet search resulting in the appearance of an ad for defendant’s product in “sponsored links” did not constitute sufficient evidence of likelihood of confusion to support an injunction.

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April 18, 2011 5:49 PM | Posted by Edwards, Nathaniel | Permalink
Metro State University, a public university located in Denver, Colorado, announced plans in March to introduce state legislation that would allow it to change its name to Denver State University. The University of Denver, a private university located just a few miles from Metro State's campus, is not a fan of the proposed name change. read more
February 10, 2011 3:40 PM | Posted by Edwards, Nathaniel | Permalink

The Pac-10 Conference will add the University of Colorado and the University of Utah to its league next fall and will subsequently undergo a rebranding from the PAC-10 to the PAC-12. Whether rebranding or launching a new brand, one important consideration should be whether the domain names you want to use for your brand are available. The Pac-10 just found out that PAC12.COM - likely the most vital domain name for the launch of the Pac-10’s new brand - is registered to someone else.  

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February 1, 2011 5:54 PM | Posted by Brody-Brown, Dana | Permalink

The U.S. District Court for the District of Columbia recently held that the Trademark Trial and Appeal Board (TTAB) erred as a matter of law in applying the three-part test for primarily geographically deceptively misdescriptive marks. Guantanamera Cigar Co. v. Corporacion Habanos, S.A., Civil Action No. 08-0721 (RCL), 2010 WL 3035750 (D.D.C., August 5, 2010) reversing and remanding the prior TTAB decision in Corporacion Habanos, S.A. v. Guantanamera Cigar Co., 86 USPQ2d 1473 (TTAB 2008) [precedential].

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January 28, 2011 4:03 PM | Posted by Bayton, Emily; Edwards, Nathaniel | Permalink

The National Football League (NFL) will play its 45th annual championship game, more commonly known as the SUPER BOWL, on Sunday, February 6, 2011. The game will pit the Green Bay Packers against the Pittsburgh Steelers at Cowboys Stadium in Arlington, Texas. The SUPER BOWL mark is protected by trademark law, as are the team names, and businesses planning promotions centered around the game should use the SUPER BOWL mark and/or team names cautiously.

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January 27, 2011 4:50 PM | Posted by Garrison, Sean | Permalink
The home page at Blingville, LLC’s website (www.blingville.com) currently reads “New Facebook Game Coming Soon!” On August 18, 2010, Blingville, a West Virginia company, announced on its Facebook page that it had begun working on this new Facebook game, and the game has been in Beta testing since then. But will Blingville have to change its name? read more
January 26, 2011 3:11 PM | Posted by Norcross, Linda M. | Permalink
Innovation is a common buzzword these days, as companies search for new and unique ways to distinguish themselves and even turn a profit. How do companies large and small stand out among their competitors in today’s economy? How does a company turn an idea into a billion dollar intellectual asset, which ultimately strengthens its balance sheet and/or attractiveness to potential investors or purchasers? One way is to better understand how to build a solid brand identity that stands out and outlasts the others. When brand clearance and management is an afterthought that follows instead of intersects with the creative process, companies fail to take full advantage of the value of that brand. Companies with an understanding and appreciation for all of the factors that go into building an effective, competitive branding campaign will reap the benefits of a brand identity that enjoys strength, longevity, a more significant impact on the marketplace, and a far greater return on the initial investment. read more
January 26, 2011 12:35 AM | Posted by Edwards, Nathaniel | Permalink

The Western District of Washington is allowing the Microsoft Corporation to move forward with claims for contributory cybersquatting under the Anti-Cybersquatting Protection Act (ACPA) and contributory dilution under the Lanham Act. In an order denying the defendants’ motion to dismiss Microsoft’s claims, the court stated that causes of action for contributory cybersquatting and contributory dilution had never been directly addressed by statute or appellate courts.

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January 24, 2011 10:20 AM | Posted by Edwards, Nathaniel | Permalink

Ever wonder where the UGG brand name originated?  According to a recently filed suit in the District of Minnesota, in the early days of aviation, Australian pilots wrapped their feet and legs with sheepskin to keep warm in unheated airplanes.  Allegedly, the wraps were so ugly, the pilots referred to them as “UGGS.” 

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December 15, 2010 12:03 PM | Posted by Garrison, Sean | Permalink
Last week, at its Board meeting in Cartegena, Columbia, the Internet Corporation for Assigned Names and Numbers (ICANN) was expected to approve the implementation of a process to increase the number of generic top level domains (i.e. .com, .net, .org., etc.) that could be made available for registration of domain names.  read more
October 19, 2010 7:52 PM | Posted by Olafson, Shane | Permalink
Intellectual property accounts for the majority of all property owned by modern corporations. Because of its value, liability for alleged infringement is a major risk facing businesses today. Companies of all sizes may encounter lawsuits for a variety of intellectual property disputes, including patent infringement, trademark or trade dress infringement, copyright infringement, trade secret misappropriation, unfair competition, and privacy violations, just to name a few. read more
October 6, 2010 11:05 AM | Posted by Williams, Nikkya | Permalink
Hard Rock Café International (USA), Inc. (HRCI), the owner of the HARD ROCK trademarks, has sued the owners and operators of the Hard Rock Hotel and Casino in Las Vegas (“HRH”) and the producers and distributors of the reality TV show “Rehab: Party at the Hard Rock” for trademark infringement, trademark dilution, breach of contract, unfair competition and a declaration that the licensing agreement under which the Hard Rock Hotel and Casino operates is terminated.
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September 28, 2010 7:37 PM | Posted by Williams, Nikkya | Permalink

The epic battle that could have been Lindsay Lohan v. E*Trade came to a quiet end last Wednesday when the parties settled and stipulated to withdraw the lawsuit with prejudice.  This after a long summer of heavy briefing, however.  Here’s the tale of the tape for all of you keeping score at home.

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September 7, 2010 5:51 PM | Posted by Kouchoukos, Robert B. | Permalink

On August 6, 2010, New York Senator Charles Schumer introduced a new bill entitled the “Innovative Design Protection and Privacy Prevention Act” ("IDPPA") which would amend the U.S. Copyright Act to grant certain protections to new and original fashion designs.   While U.S. design patent and trade dress laws currently offer limited protections, the passage of the IDPPA would bring U.S. laws in line with those in the European Union, Japan and other foreign fashion markets that have long extended broader legal protections to unique and novel fashion designs.

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September 1, 2010 6:23 PM | Posted by Horne, Alexandra | Permalink

I. INTRODUCTION

Maker’s Mark Distillery, Inc. (“Maker’s Mark”) brought suit against Tequila Cuervo La Rojena S.A. de C.V., Casa Cuervo S.A. de C.V., Jose Cuervo International, Inc. (“Cuervo”) and their U.S. distributor, Diageo North America, Inc. (“Diageo”) in the U.S. District Court, Western District of Kentucky, at Louisville, alleging that the Defendants violated federal trademark and common law, by producing and distributing a bottle of tequila capped with a red dripping wax seal similar to the seal Maker’s Mark had used for over 50 years. Maker’s Mark alleged (1) federal trademark infringement, (2) false designation of origin, (3) dilution, and (4) common law trademark infringement and unfair competition under the laws of Kentucky.

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July 27, 2010 5:49 PM | Posted by Norcross, Linda | Permalink
You have probably heard these sayings a time or two: “Nice guys finish last.” “The early bird catches the worm.” “He who laughs last, laughs best.” These familiar idioms could all be associated with running a successful ambush marketing campaign. read more
July 21, 2010 5:55 PM | Posted by Bayton, Emily | Permalink
Apple’s slogan - There’s An App for That™ - is catchy and seemingly true.  Apple markets and sells applications for its iPhone product that cover almost anything a consumer could want . . . applications for cooks, students, moms and dads…applications for the outdoors, work, music, managing money, traveling and many more.  In a speech at the 2010 Apple Worldwide Developers Conference, Steve Jobs stated that Apple passed 5 billion total applications downloaded, with over $1 billion paid to application developers - these are staggering numbers.  But with the good, comes the bad... read more
July 16, 2010 2:19 PM | Posted by Brody-Brown, Dana | Permalink

The U.S. Trademark Trial and Appeal Board recently resumed proceedings in a long suspended case, originally filed in 1982. See United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. The action was filed by United Black Fund, Inc. seeking to cancel registrations for “BLACK UNITED FUND” and “NATIONAL BLACK UNITED FUND” held by National Black United Fund, Inc. based on the Plaintiff’s assertion of rights in the mark “THE UNITED BLACK FUND”. Both parties are civic organizations serving African-American communities.

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June 16, 2010 8:13 PM | Posted by Hiscox, Frank S. | Permalink
One of the greatest challenges facing those who market innovative products or services, is educating consumers about what the new products or services are, and what they can do for the consumer. Consumers usually won't buy something unless they understand what it is and have reason to want it. And one of the greatest tools available to the marketer to help meet this challenge is logical organization or categorization. If consumers can come to understand what the new thing is and what it does, the chances improve that they may want one, so if marketers can categorize the new thing as similar-to-but-better-than something familiar, chances improve that the consumer can develop a need or desire for it. As savvy marketers have known for many years, product categorization is the fundamentally important bedrock upon which much else rests, and whole categories of products and lines of specific products within them have been developed based on a clever marketer's recognition that consumers can, and will, draw finer and finer distinctions that influence their purchasing decisions if encouraged to do so. read more
May 17, 2010 11:51 AM | Posted by Edwards, Nathaniel | Permalink
Doctor’s Associates, Inc., the parent company of the Subway sandwich chain, recently applied for a federal trademark for FOOTLONG  for “restaurant services" ...  read more
May 6, 2010 5:54 PM | Posted by Garrison, Sean | Permalink

On April 28, 2010, the District Court for the Eastern District of Virginia granted summary judgment in favor of Google that its use and sale of “Rosetta Stone” as a keyword in its Adwords program did not infringe upon the Rosetta Stone trademark for language instruction software products.  This decision represents the most recent victory for Google in its battle against trademark owners claiming that the Adwords program violates their rights...

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April 13, 2010 12:23 PM | Posted by Horne, Alexandra | Permalink
On March 28, 2007 Safer, Inc., a Pennsylvania based pest-control company, filed a Notice of Opposition against OMS Investments, Inc., a subsidiary of The Scotts Miracle-Gro Company, with respect to its application for the mark DEER-B-GON, alleging a likelihood of confusion with its prior registrations for the DEER AWAY and DEER AWAY PROFESSIONAL marks. Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445, 94 USPQ2d 1031 (TTAB 2010). The marks covered identical goods, namely, deer repellent. read more
April 9, 2010 11:44 AM | Posted by Krieger, John | Permalink
Although Tiffany & Co. had probably wished it was an April Fool's joke, on April 1, 2010, the Second Circuit upheld the Southern District of New York's determination that eBay, Inc. was not liable for direct or contributory trademark infringement, nor trademark dilution of Tiffany's indisputably famous trademarks, by facilitating and allowing counterfeit Tiffany items to be sold on eBay. The circuit unanimously concluded that the burden of policing and protecting its trademarks in Internet commerce lay solely with Tiffany, not eBay. However, in handing less than complete victory to eBay, the circuit sent Tiffany's false advertising claim back to the district court for "reconsideration" of whether eBay's advertisements were misleading when they indicated Tiffany products were available on eBay's site. read more
April 7, 2010 11:19 AM | Posted by Williams, Nikkya | Permalink
As you’ve probably heard by now, a few weeks ago, Lindsay Lohan sued E*Trade over its “milkaholic Lindsay” commercial that originally aired during the Super Bowl and also aired during the Vancouver Winter Olympics (If you haven’t seen it yet, you can find it here (www.etrade.com/tv)). According to the complaint, E*Trade violated Lohan’s right of publicity under Sec. 51 of the New York Civil Rights Law, her right of privacy and her common law right of privacy to exclusive control of commercial use of her likeness, name, characterization and personality. How? By using Lindsay Lohan’s name and characterization in its ad. She is seeking an injunction preventing E*Trade from using the ad or any other ad using Lohan’s likeness; an injunction requiring E*Trade to recall and turn over all copies of the ad; an accounting of E*Trade’s profits; $50 million in compensatory damages; $50 million in exemplary damages and interest, costs and attorneys’ fees. That’s at least $100 million in damages before any accounting of profits, for those of you keeping score at home. read more
March 26, 2010 11:02 AM | Posted by Edwards, Nathaniel | Permalink

Melvin L. Vinson recently filed a trademark infringement suit against NIKE in the Western District of Wisconsin alleging trademark infringement and unfair competition based on Vinson’s trademark registrations for the MELO and MELO GEAR and Design marks for shirts, pants, hats and other apparel. 

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March 23, 2010 10:43 AM | Posted by Norcross, Linda | Permalink

Worth an estimated $19 million, the trademark TAVERN ON THE GREEN has become the subject of a bitter feud between the City of New York’s municipal government, and the descendant’s of Warren LeRoy, the last restaurateur to operate the establishment until its doors were closed in December of 2009.  The City has owned the parcel of land situated on the southwestern edge of Central Park since 1934.  The land, initially housed a sheep barn, but was renovated that same year to accommodate a seasonal restaurant called Tavern on the Green, which was so named by then Parks Commissioner, Robert Moses.  The City continued to pay the bulk of the costs for subsequent renovations.

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March 23, 2010 10:30 AM | Posted by Campbell, Flavia | Permalink
Last month, French high-end accessories manufacturer Louis Vuitton filed a lawsuit in federal court in New York against Hyundai Motor America over the use of an alleged imitation of the Louis Vuitton trademark on a commercial aired during the XLIV Super Bowl. read more
March 9, 2010 8:00 AM | Posted by William, Nikkya | Permalink
Having won the Academy Award for Best Picture and Best Screenplay, you would think that the players behind the film would be riding high on their success. But, they’ve still got a pretty major lawsuit still hanging over their heads. read more
March 2, 2010 8:00 AM | Posted by Brody-Brown, Dana | Permalink
In a precedential decision issued February 5, 2010, the Trademark Trial and Appeal Board granted a Motion for Summary Judgment filed by the Texas Department of Transportation (TxDOT) in a case pending against an individual, Richard Tucker, related to his registration and pending application for “DON’T MESS WITH TEXAS” for clothing. Texas Department of Transportation v. Richard Tucker, Cancellation No. 92030882 and Opposition No. 91165417 (February 5, 2010) [precedential]. read more
February 23, 2010 5:24 PM | Posted by Olafson, Shane | Permalink

The United States District Court for the District of Arizona recently dealt a strong blow to a company for willfully infringing Cricket Communication’s intellectual property rights.  In Cricket Communications, Inc. v. Nazir d/b/a GSM Cellular, Case No. 08-CV-00295, the Court held that the defendant had willfully infringed Cricket’s trademark rights in the Cricket® trademark.  The Court permanently enjoined the defendant from further infringing acts, and ordered the defendant to pay Cricket’s attorneys’ fees in their entirety.  In doing so, the Court found that “Defendant’s behavior throughout the course of this litigation may certainly -- at the very least -- be considered deliberate, willful, and fraudulent,” rendering the case exceptional under 15 U.S.C. § 1117(a).   

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February 18, 2010 10:25 AM | Posted by McCue, Michael | Permalink
In Daimlerchrysler Corporation V. American Motors Corporation, Cancellation No. 92045099, the Trademark Trial and Appeal Board denied DaimlerChrysler’s motion for summary judgment on its fraud claim and made it all but impossible for a petitioner to prevail on a fraud claim on summary judgment. read more
February 2, 2010 11:30 AM | Posted by Williams, Nikkya | Permalink
Over the weekend, the NFL sent a letter to Louisiana Senator David Vitter, backing off its claim that the NFL had trademark rights in the phrase “Who Dat” and calling the debacle a “significant misunderstanding.” Their clarification is that the NFL is not claiming “Who Dat,” they’re claiming “Who Dat” when it’s used in conjunction with Saints trademarks, like the Saints’ version of the fleur de lis. Therefore, as an NFL spokesman explained, the t-shirts one targeted business owner was selling were perfectly okay as long they are not advertised using any of the Saints marks. The business owner was apparently advertising the t-shirts as Saints gear read more
January 29, 2010 3:25 PM | Posted by Williams, Nikkya | Permalink

“Who dat? Who dat? Who dat say dey gonna beat dem Saints?” Apparently, the National Football League

A television station in New Orleans reported that earlier this week the NFL sent cease and desist letters to several small business owners regarding their use of “Who Dat” and the fleur de lis on merchandise and now the Who Dat Nation is up in arms.

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January 27, 2010 3:52 PM | Posted by Williams, Nikkya | Permalink

Ilich Ramirez Sanchez, aka world-famous terrorist Carlos the Jackal, wants final cut of a French documentary about his life and is willing to sue to get it, according to a story in the Washington Post.  Ramirez, sentenced to life in a Paris prison, has filed suit against French production company Film in Stock, demanding that it give him three months to review the content of, and impose changes to, the documentary once it’s completed in order to protect his intellectual property rights in his name and biographical image. He’s worried that the documentary will be a propaganda film unless he can monitor its accuracy. Isabelle Coutant-Peyre, Ramirez’s attorney and wife, also alleged that Film in Stock planned to portray Ramirez as the instigator of several terrorist attacks for which he was not convicted in violation of his right to presumption of innocence.

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January 14, 2010 5:27 PM | Posted by Williams, Nikkya | Permalink
Stanford (Go Cardinal!) wasn’t the only thing in Northern California upsetting the balance of the National Collegiate Athletic Association (“NCAA”) during the college football season. Since May 2009, eight putative class action lawsuits have been filed in the Northern District of California accusing the NCAA and its authorized licensing company, Collegiate Licensing Company (“CLC”), of violating either the Sherman Antitrust Act or individual student-athletes’ rights of publicity or both in the licensing of student-athletes’ likenesses to third parties. There’s also another case pending in the Eastern District of Tennessee. The name plaintiffs are all former student-athletes who were members of either NCAA Division I football teams or men’s basketball teams. read more
January 6, 2010 2:57 PM | Posted by Christine Klenk | Permalink
In 2009, several important trademark decisions and rulings issued, impacting trademark practice with respect to the topics discussed below:
Fraud/Maintaining Trademark Registration: The most notable decision, In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, (Fed. Cir.2009) heightened the requirements to successfully establish a claim of fraud as a basis for cancellation of a trademark registration. Prior to Bose, under Medinol v. Neuro Vasx, Inc., 67 USPQ2d 1205 (T.T.A.B. 2003), fraud was found where a party made a material statement that it knew or should have known to be misleading. read more