Since its first broadcast on February 1, 1942, the Voice of America radio service (VOA) has aired countless hours of programming in dozens of languages to what is currently an estimated global audience of over 100 million people. Although the history of the VOA name is storied and long, VOA’s efforts to protect that name are of a more recent vintage. VOA didn’t apply to register its name as a federal trademark until 2005, and didn’t get around to registering an internet domain name until after sites such as voiceofamerica.com… More
Category Archives: Trademark
Use of Porn Star Images in “Romance Fraud” Dating Profiles Fails to Support Trademark and False Advertising Claims
The plaintiff in Avalos v. IAC/Interactive Corp. called it “one of the biggest conspiracies ever executed on the internet” — the unauthorized use of images of adult film stars in fake online dating profiles. But in an opinion issued October 30, 2014, Judge Jesse Furman of the Southern District of New York held that trademark law was not the right way to go about solving this problem. The complaint was dismissed in its entirety.
The Romance Fraud Scam
On October 28, 2014, Judge Paul Grewal of the Northern District of California ruled that a political advocacy website’s confusing use of the mark CHOOSE ENERGY could stay up . . . but perhaps only until election day.
The plaintiff, Choose Energy, Inc., operates an online energy marketplace at chooseenergy.com, through which individuals and businesses in several states can shop for an energy supplier. Shortly before October 10, 2014, Choose Energy discovered that the website chooseenergy.org had been acquired by the American Petroleum Institute (“API”). API began using the… More
Brewers, distillers, and vintners are no strangers to themed seasonal offerings, so it’s not surprising that Halloween brings out some decidedly decrepit monikers. From PUMPKINHEAD (think reaping) to NOSFERATU, WITCH’S WIT to BRUJERIA, purveyors of alcohol capitalize on the creepy and market the macabre. Every once in a while, of course, great minds think alike, and so it is we were blessed with not one, but two HALLOWINE brand wines.
The Terrifying Trademark Opposition
As autumn sets in and Halloween approaches, my mind turns to jack-o-lanterns, skeletons, and phantoms. Phantom marks, that is. Equally incorporeal though perhaps somewhat less frightening than their ghostly namesakes, phantom marks are registered trademarks that contain a “phantom,” or changeable, element. A well-known phantom registration was _ _ _ _ _ _ FOR DUMMIES for various self-help books, where the dotted line represented different descriptive terms that vary according to the subject matter of the book. A hypothetical example of a phantom mark is… More
Appearances Aside, “Something More” Still Needed for Trademark Infringement Liability in Keyword Advertising Cases
Search engine optimization is a vital issue for brand owners. When a potential customer searches online for Company A, a well-known brand, Company A naturally wants its own website to be as high in the search results as possible and, ideally, at the top of the list.
But Company A is not alone. Its competitor, Company B, wants to show up in the search results as well. In fact, many a Company B, by purchasing Company A’s name as a “keyword” from a search engine (an “AdWord” as offered by… More
October is Pro Bono Month in many states, including Massachusetts, New York, Michigan, New Hampshire, Maine, Rhode Island, Indiana, Tennessee, and Alabama. The ABA has created an annual weeklong National Pro Bono Celebration, which this year is October 19-25. Recognizing the countless lawyers who devote their time and efforts to representing people of limited means, and urging all lawyers to do more, these pronouncements remind us that every attorney has an ethical responsibility to make sure that our system of justice is open to all persons, regardless of income. In… More
In Southern California Darts Association v. Zaffina, the Ninth Circuit held that a corporation, whose charter had been suspended by the state of California in 1977, had standing in 2012 to sue and to own trademarks as an unincorporated association.
The corporation in question, the Southern California Darts Association (“SCDA”), has organized and promoted darts tournaments at pubs since 1963. SCDA was originally organized as a California corporation, but at some point it stopped paying its corporate franchise tax and, in 1977, it was suspended by the state. Despite the… More
No matter how sophisticated we are on the outside, on the inside everyone has a favorite novelty t-shirt buried deep in the recesses of their juvenile subconscious. Mine is one that says “Welcome to Philadelphia. Now Go Home,” which so perfectly captures both the convivial pride and bewildering hostility of the city that raised me.
Many five-year olds these days have a different favorite t-shirt, sold by Gymboree subsidiary Crazy8, which features the pun: “Lettuce Turnip the Beet.” One problem though: artist Elektra Gorski had been selling t-shirts… More
How Not To Market Your Business Online (Even If It Works): Claims Against Fake Review Sites And Stolen Obituary Photos Survive Motion To Dismiss
Despite celebrity endorsements from the likes of Dennis Miller and Alan Thicke, all that glitters isn’t gold when it comes to the marketing of precious metal investments. In March 2014, American Bullion, Inc., which is in the business of encouraging individuals to convert their retirement savings to gold and silver, brought suit against its competitor, Regal Assets, LLC, in the Central District of California, alleging a host of unsavory internet marketing practices. Last month, the Court ruled that American Bullion had indeed stated valid claims for, among other things, false advertising… More
If you happen to be in the Boston area this August, and you are sick of the Freedom Trail, here’s an idea for a little trademark trail. Start in Cambridge at Moody’s Falafel Palace and head downtown past Kneeland Street to the waterfront. Then hop on a Harbor Island ferry and get off at Spectacle Island, where a piece of a vintage White Tower Hamburger plate recently washed up on the beach.
The Rise of the Castle
Upton Sinclair’s 1906 novel, The Jungle, discouraged many Americans from eating ground beef, but the owners of
Wizard of Oz Celebrates 75th Anniversary & Victory in Copyright and Trademark Dispute Over Film Characters
This August will mark the 75th anniversary of the release of the classic film The Wizard of Oz. As Warner Bros. celebrates the iconic status acquired by the film and its characters during the past seven-plus decades, the studio will likely also be rejoicing over a recent victory concerning the intellectual property rights in images of the characters from the film.
In the early 2000’s, Dave Grossman Creations, Inc. (DGCI) and others began acquiring restored versions of old posters and lobby cards (smaller versions of the posters) from The Wizard… More
As any IP lawyer will readily admit, trademark practice before the United States Patent & Trademark Office (PTO) comes with its fair share of annoyances: inconsistent treatment of similar applications, unreasonably stringent identification requirements, and so forth. Another difficulty lies in what appears to be a large number of registrations subsisting on the federal register, past their initial maintenance filings, despite a high likelihood that such marks are no longer used, or have never been used, in connection with some or all of their identified goods and services.
Highlights of Congressional Hearings on Copyright Moral Rights, Termination Rights, Resale Royalty, And Copyright Term
On July 15, 2014, the Judiciary Committee of the United States House of Representatives, through its Subcommittee on Courts, Intellectual Property and the Internet, held hearings regarding a number of copyright issues, including moral rights, termination rights, resale royalty and copyright term. Despite the eclectic nature of the hearing, all of the issues discussed fell under the general category of what Chairman Howard Coble (R-NC) described as the “rights of the creator, often referred to as the little guy.”
Representative John Conyers (D-Mich.) stated that, at the moment, the… More
“Big Chocolate” Gets Injunction Against Whack-A-Mole Senator; Trademark “Services” Include Political Activities
Last week, Judge William Quarles of the District of Maryland issued an injunction preventing Maryland Republican State Senator Steve Hershey from using his own campaign literature. The case was brought by the Hershey Chocolate Company, which alleged that the Senator’s campaign poster and other materials infringed the famous confectioner’s trade dress. The lawsuit must have come as no surprise to Senator Hershey because, prior to this, the parties had been playing trademark whack-a-mole for about a dozen years.
Big Chocolate Whack-a-Mole
In 2002, Mr. Hershey ran for County Commissioner, using… More
Late last year, in a matter of first impression, the Federal Circuit affirmed the Trademark Trial and Appeal Board and held that the city of Houston could not register its official municipal seal with the United States Patent and Trademark Office (USPTO). The basis for this decision was 15 U.S.C. § 1052(b), which forbids trademark registration for the “flag or coat of arms or other insignia of . . . any State or municipality.”
The city of Houston had argued that the statute’s purpose was to prevent public confusion as to… More
Do you want your company to control .app or .restaurant? Applying to operate a generic top-level domain (gTLD) isn’t for the faint of heart. Although several hundred companies ponied up the $185,000 application fee for over 1,900 total gTLD applications, that’s only the first stage in the process. Once filed, ICANN reviews each application for financial, technical, and operational competence, ensuring that each applicant has the financial wherewithal, technical savvy, and a comprehensive plan to safely operate the gTLD registry for at least the length of the initial ten-year contract term.
If an application passes muster, there are… More
In its recent decision in Cigar King v. Corporacion Habanos, the Federal Circuit Court of Appeals affirmed the cancellation of Cigar King’s trademarks after it failed to comply with discovery orders. This was only the latest in a long line of trademark disputes between cigar brands, and is by no means the first example of a stogie manufacturer that had a complicated relationship with a court order. Perhaps the party with the most chutzpah in this regard was the Fritz Brothers Company of Cincinnati.
In 1887, the Fritz Brothers… More
The matter of Terra Sul Corp. v. Boi Na Braza, Inc. involved a concurrent use proceeding between two restaurants over their nearly identical names. In theory, the scope of the conflict was nationwide, but in reality, as one party put it, “[t]his dispute has always been about New York City.” In a recent precedential opinion, the TTAB concluded that, because the “New York restaurant scene’s embrace is sufficiently broad to reach Newark,” a New Jersey restaurant’s area of concurrent use included New York City and, by extension, New York State.
In a ruling sure to generate heated discussion in the sports world, the trademark community and elsewhere, a divided panel of the Trademark Trial and Appeal Board (TTAB) has ruled that six registered marks including the term REDSKINS owned by the Washington NFL franchise should be cancelled.
A Long, Strange Trip
Of the six marks at issue, one was registered in 1967, three in 1974, one in 1978, and the most recent in 1990. It is well established that a finding of disparagement must be based upon perception of the term… More
The Supreme Court issued a unanimous decision last week in Pom Wonderful LLC v. Coca-Cola Co., a case pitting the false advertising provisions of the Lanham Act against the beverage labeling standards of the federal Food Drug & Cosmetics Act (FDCA). Pom Wonderful, maker of 100% pomegranate juice and other pomegranate-based products, brought false advertising claims against Coca-Cola, accusing its Minute Maid Pomegranate Blueberry drink of misleading consumers into believing they were drinking more pomegranate and blueberry juice than they in fact were. Coca-Cola’s drink, in… More
We previously reported on the dispute between the National Association for the Advancement of Colored People (NAACP) and the conservative activist Ryan Bomberger. Bomberger had repeatedly referred to the NAACP in online articles not by its actual name, but by the name “National Association for the Abortion of Colored People.” Bomberger characterized this alternative moniker as a parodic critique of what he perceived to be the NAACP’s pro-choice politics. The NAACP, on the other hand, saw Bomberger’s articles as likely to cause confusion among consumers. With the parties at an… More
The United States Patent and Trademark Office is soliciting comments on its draft version of the “Service Mark Specimens” examination guide. The topics covered by the guide include the elements of an acceptable service mark specimen, grounds for refusal, and common issues arising in the examination of specimens for technology-related services. Comments are due by July 16, 2014. More information is available here.
Flummoxed By FLANAX: TTAB Cancels Trademark Registration Based On Misrepresentation As To Source Despite No Use In U.S. By Petitioner
In an interesting precedential decision, the Trademark Trial and Appeal Board (TTAB) canceled a registration for FLANAX despite the fact that the petitioner, Bayer Consumer Care AG, did not use FLANAX in the United States, but only in Mexico. The case illustrates that the “misrepresentation as to source” provision of the Lanham Act can be a useful tool in egregious cases, and can be asserted even when a registration is no longer vulnerable to cancellation based on likelihood of confusion grounds under Section 2(d) because of the passage… More
After a week at the International Trademark Association Annual (INTA) Annual Meeting in Hong Kong, and another spent exploring the city and its surrounds, it’s nice to be heading back to the comparatively quaint major city we call home. But as I fly through Siberian airspace, over the North Pole, and through Canada en route to Beantown, I have a few parting thoughts.
The Gateway to Everything
In its recent decision in Sussman-Automatic v. Spa World, the Eastern District of New York dismissed a plaintiff’s trademark infringement claims, while allowing its claims for false advertising based on the same conduct to survive. The decision explores the boundaries between a false advertising “bait-and-switch” scheme and the “initial interest confusion” theory in Lanham Act cases.
The Mr. Steam Bait-and-Switch
The plaintiff, Sussman-Automatic (“Mr. Steam”), is the maker of the “Mr. Steam” brand of shower and spa products. According to the complaint, Spa World ran a website which advertised the… More
INTA annual meetings are always interesting, sometimes in ways that you don’t expect. This year’s meeting is in Hong Kong. I thought I would share my top five observations, both good and bad, about my experience so far.
On the good side of the ledger:
1. The Saturday night Gala was fun! I had never attended it before, and it was really nice. It was worth packing the extra black tie outfit, and I somehow even managed to navigate the shoe issue. Thanks to Iris and Stephen at the Copyright Clearance Center for inviting me.
2. … More
Milk Dud? False Advertising Lawsuit Against Makers of Muscle Milk Illustrates Interplay Between Lanham Act, FTC and FDA
In a lawsuit recently filed in the Southern District of Florida, Global Beverage Enterprises, Inc. (“Global”), the manufacturer of specialty carbonated beverages like Mr. Q. Cumber Sparkling Cucumber Beverage, brought Lanham Act claims against CytoSport, Inc., alleging false advertising of CytoSport’s popular Muscle Milk line of beverages. The basis of the claim is that the Muscle Milk beverages contain no milk and, therefore, the product name is false and misleading. If the case sounds vaguely familiar, it might be because this is not the first time Muscle Milk products have… More
Some recent administrative developments may be of interest to copyright and trademark practitioners:
Effective May 1, 2014, the U.S. Copyright Office has amended its registration fee schedule. This includes reduced renewal application fees and increased fees for registering multiple works. A complete list of the new fees is available here.
Updated Trademark Manual of Examining Procedure (TMEP)
On April 30, 2014, the USPTO issued the April 2014 update of the TMEP, which includes precedential case law and other changes since the October 2013 revision. Highlights of the changes are available from the USPTO… More
Yesterday, the United States Supreme Court decided Octane Fitness, LLC v. Icon Health & Fitness, Inc. and Highmark v. Allcare Health Management System, Inc., companion cases that will make it easier for prevailing parties to recover attorneys’ fees in patent infringement litigation. Together, the cases may have far-reaching consequences for litigation strategy and case management in cases involving a range of intellectual property disputes, not just patents.
Previous Standard for Recovering Attorneys’ Fees
Section 285 of the Patent Act authorizes a district court to award attorneys’ fees to the prevailing party “in exceptional cases.” The U.S. Court of Appeals for… More
In Dardenne v. MoveOn.org, the Middle Louisiana Federal District Court faced a conflict between trademark protection, on the one hand, and the First Amendment’s protection of political advocacy, on the other. The Court concluded that trademark law cannot be used to suppress political advocacy, at least in the absence of a compelling need to protect the mark and a demonstrable likelihood of confusion.
The State of Louisiana, through the office of the Lieutenant Governor, had previously registered and used “LOU!S!ANA Pick your… More
ICANN’s new generic top-level domain name (gTLD) program has introduced opportunities and risks for companies, and probably not in equal measure. Several weeks ago, we posted some guidance regarding steps all brand owners should be taking to secure their valuable trademarks in connection with the launches of the new top-level domain names. More
Last week, Taco Bell released a TV commercial featuring real men named Ronald McDonald enjoying Taco Bell’s new breakfast items. This is very creative advertising, but is not for the faint of heart. Using a competitor’s trademarks is always a risky business. Do not try this at home. At least not without calling your trademark lawyer first.
This Porridge is Just Right: Supreme Court Adopts “Zones of Interest” Standing in False Advertising Cases
When we last posted about Lexmark v. Static Control, we expected that the Supreme Court would endorse one of the circuit court tests to determine whether Static Control, the maker of a chip that facilitates printer cartridge remanufacturing, had standing to bring a false advertising claim against Lexmark, a company that makes printers and printer cartridges but is not strictly a competitor of Static Control. The case concerned Lexmark’s statements that the remanufacturing process and Static Control’s product were illegal and infringed on Lexmark’s intellectual property. Until now, the only… More
Social media has become a powerful marketing tool, allowing celebrities to develop their brands and images with the help of Facebook updates or Tweets that can reach millions of fans at the same time. Given the importance of social media as a brand-building medium, how should the law treat “fan accounts,” which are created by fans using a celebrity’s name? What protection does the law provide to celebrities trying to control usage of their personae and brands on social media platforms?
These questions are at… More
Today’s consumers depend on “crowd-sourced” review websites like Angie’s List and Yelp, which permit users to post and read reviews of goods and services. Businesses feel a corresponding pressure to encourage favorable reviews on such websites. But what happens when the website intervenes to regulate the reviews it hosts, perhaps (for example) by deleting reviews that appear phony or suspicious? Can a business sue the website for deleting reviews that would otherwise reflect positively on its goods or services?
Judge George A. O’Toole, Jr. of the U.S…. More
By now, you’ve probably heard the agonized shrieks of your friendly neighborhood copyright lawyer, decrying the Ninth Circuit’s opinion Garcia v. Google. If you haven’t had the time or inclination to read the opinion, here is a quick synopsis, followed by our list of nine ways in which many find the Ninth Circuit’s February 26, 2014 decision somewhat troubling.
Cindy Lee Garcia agreed to act in a low budget film called “Desert Warrior,” for which she was paid $500. The film she signed up for was never made,… More
CrossFit, Inc., the fitness training company, licenses its trademarked name and goodwill to over eight thousand affiliates worldwide at $3,000 per year per affiliate. When non-affiliate Jenni Alvies began posting on Facebook about fitness under the name “Crossfit Mamas” (including selling exercise apparel bearing the same name), CrossFit felt Alvies was infringing its mark.
So CrossFit did what anyone would do in this day and age. A CrossFit paralegal reviewed Facebook’s infringement policy and then sent Facebook a takedown notice pursuant to the Digital Millennium… More
Hey, These Japanese Mushrooms Aren’t Organic: The Ninth Circuit Addresses the Material Difference Standard in Relation to Produce as Parallel Imports
The Ninth Circuit recently issued a decision upholding the lower court’s finding at summary judgment that a U.S. importer of branded, gray market mushrooms infringed upon the rights of the U.S. trademark owner. Gray-market goods, also known as parallel imports, are branded goods legitimately produced and sold abroad that are imported into the United States without the consent of the U.S. brand owner. For a more in-depth discussion of the ramifications of and reasons for parallel imports, see this blog’s previous article here.
Material Differences: The Key to… More
Apparently, the answer is “One Love.” On December 6, 2013, Fifty-Six Hope Road Music, Ltd. (“Hope Road”), which controls reggae legend Bob Marley’s estate, filed a federal trademark infringement action against the restaurant company Raising Cane’s USA, LLC (“Raising Cane’s”). Hope Road alleges ownership of the trademark ONE LOVE in connection with a number of goods and services. It further claims that Raising Cane’s unauthorized use of the same mark in connection with restaurant services is a violation of Hope Road’s rights.
There seems to be little doubt… More
A recent opinion from the Western District of Virginia sets forth a useful framework for analyzing a variety of Lanham Act claims based on false commercial speech uttered in social media.
In October 2012, “Jim Chung” created a LinkedIn profile for himself. Chung identified himself as a 2010 graduate of Tsinghua University, a resident of Xinjiang, China, and a Software Engineer for the U.S. company AvePoint, Inc. Chung used his LinkedIn profile to connect with customers, software professional groups and fellow AvePoint employees. As with any LinkedIn… More
Kraft Still the Big Cheese: Seventh Circuit Affirms Injunction in Trademark Dispute over Cracker Barrel
Cracker Barrel Old Country Stores are easy to spot off the highway, but you won’t be noticing the company’s products in grocery store aisles any time soon.
The Seventh Circuit Court of Appeals recently upheld a preliminary injunction barring Cracker Barrel Old Country Store, Inc. (“CBOCS”), from selling branded food products, particularly packaged hams, in grocery stores. The appeals court found that the similarities between the CBOCS mark and that of Kraft Foods Group’s Cracker Barrel cheese products line could easily lead to consumer confusion.
In Charles Dickens’ A Christmas Carol, Ebenezer Scrooge’s transformation from miser to profligate is marked by his purchase of a turkey for the Cratchit family. Turkey used to be a luxury food, in most households suitable only for special occasions. In the 1930’s, Americans ate an average of only 1.7 pounds of turkey each year (compared to about 20 pounds today). After World War II, turkey farming became industrialized and its output cheaper. By the 1970’s, a cholesterol-conscious country began replacing traditional red meats with turkey burgers, turkey… More
Summary Judgment Denied in Trademark Dispute over “National Association for the Abortion of Colored People”
Anti-abortion activist Ryan Bomberger of The Radiance Foundation thought he had an unassailable First Amendment defense. After all, his use of the phrase “National Association for the Abortion of Colored People,” in order to criticize the National Association for the Advancement of Colored People (NAACP), was in the context an on-line political dispute over abortion. So when the NAACP threatened suit, Bomberger beat them to the punch with a quick-strike declaratory judgment action filed in the Eastern District of Virginia, followed shortly thereafter by a pre-discovery summary judgment… More
Naming Your Sales Division “Replica Products” Is Never A Good Idea or How Not To Facilitate Counterfeiters
Here’s some advice for online marketplaces giving sellers a platform to hawk their wares:
Do not name any of your sales divisions “Replica Products” or “Replica Retention.” Do not let your employees tell sellers that marketing counterfeit luxury goods will not be a problem. (It will be.) Do not let your employees tout replica sales as “one of the businesses that we rely on to get us a whole lot of revenue.” Do not enlist your employees to develop keywords to drive potential buyers to sellers of counterfeit products…. More
From AMC’s white-hot series The Walking Dead to the box office hit World War Z, the fictional zombie apocalypse is on a roll. Be forewarned, however: there may be a real undead threat lurking in your local supermarket or shopping mall, namely the zombie trademark. See, e.g., Anne Gilson Lalonde & Jerome Gilson, Gilson on Trademarks § 3.05 (2013) (discussing potential problems posed to consumers by zombie trademarks). What are these reanimated marks and does the consuming public truly need to beware of them?
New Trademark Law in China Promises Efficiency and Enhanced Enforcement Capabilities for U.S. Brand Owners
The People’s Republic of China is considered by some to be the next great economic superpower, and U.S. companies seeking to gain a foothold in the Chinese marketplace often begin by attempting to secure trademark rights in China for their many brands, famous and otherwise. However, they are often stymied by China’s complicated trademark registration system, a body of law relatively unfriendly to well-known foreign brands, and a number of bad apples that seek to take advantage of foreign trademark owners. It is good news, then, that… More
In Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 2013 U.S. App. LEXIS 18897 (6th Cir. Sept. 12, 2013), an industry veteran and a relative newcomer battled over the appearance of a rather specialized product: automatic lubrication pumps for commercial trucks.
The plaintiff, Groeneveld, began making its pump in the 1980s. Lubecore, the defendant, began selling its own pump roughly 20 years later. As shown below, the external design of the companies’ respective pumps is quite similar:
In April, 2010, Groeneveld brought suit against Lubecore in the U.S…. More
Hotel Dispute Gets An Extended Stay in Puerto Rico: First Circuit Case Illustrates the Limits of an Incontestable Registration
In the U.S., a senior user of a trademark can block a junior user within the geographic area of prior use, even if the junior user is the party with an incontestable U.S. federal registration. This is perfectly illustrated in a recent First Circuit decision.
Hotel Meliá, Inc. (HMI), the defendant-appellant in the case, has been operating Hotel Meliá in Ponce, Puerto Rico for over a century, but with no federal registration. The plaintiff-appellees were various… More
We previously reported that India was scheduled to become the 90th member of the Madrid Protocol Concerning the International Registration of Trademarks (the “Protocol”). We noted that this was a gratifying prospect, since India’s National Trademark Office is notoriously overburdened and slow-moving. Under the Protocol, a country is typically required to examine a registration request within 12-18 months. If the country does not raise any objections within this period, the mark is deemed registered in its territory. In other words, the Protocol provides an incentive for timely examination,… More
New generic top-level domain names (gTLDs) such as .fun, .law, and .money have been in the works for a very long time, and the first batch may be just around the corner. ICANN recently published a “hypothetical” timeline that pins the first top-level domain delegation date (the date the gTLD becomes active) as September 5, 2013. Whether this date is ICANN’s wishful thinking or not, the new gTLDs are coming, and maybe as early as this fall. With the first delegations in sight, this is… More
Say Good Bye to Boston Cream Thigh: Caballero Video Gives Up “Ben & Cherry’s XXX Ice Cream” Franchise
It turns out that the folks at Caballero Video were gentlemen after all, at least from Ben & Jerry’s perspective. Last September, the ice cream maker brought a trademark action in the Southern District of New York to put a stop to Caballero’s “Ben & Cherry’s XXX Ice Cream” line of pornographic videos. Caballero consented to preliminary injunctive relief during the pendency of the action. We have previously discussed the case and its place within the fine tradition of porn parody trademark… More
Unless you are Leonardo Da Vinci or Julius Caesar, you would probably have trouble registering your last name as a trademark. This is because last names are not generally considered to be inherently distinctive enough to qualify for trademark protection without proof of secondary meaning. However, there is an exception for historical names that are likely to be recognized by the public as referring not to an ordinary surname, but to a specific dead person.
A decision this week from the Federal Circuit, in a patent invalidity action, has been getting a lot of press for its suggestion that patent (and by implication trademark) holders may be able to avoid challenges to the validity of their IP simply by crafting a website disclaimer explaining that they will not sue certain competitors or other potential challengers. The decision has been argued by some to be an extension of the reasoning of the U.S. Supreme Court earlier this year in Already, LLC v. Nike, in which… More
An interesting debate recently occurred in the New England Journal of Medicine between a physician and the U.S. Food and Drug Administration (FDA) regarding whether the letters X and Z are used too frequently in pharmaceutical trademarks.
As most of our readers are well aware, the touchstone of whether any two trademarks can coexist in the U.S. — on the United States Patent and Trademark Office (PTO) registers and in the marketplace — is “likelihood of confusion.” The question, to put it simply, is… More
The Madrid Protocol Concerning the International Registration of Trademarks (the “Protocol”) provides a simple, unified, cost-effective means for citizens of member countries (including the United States) to register their marks in other member countries. By using the Protocol, trademark owners can obtain a single “International Registration” designating some or all of the member countries, instead of filing separate national applications in each country. If none of the member countries objects to the International Registration, the trademark owners will not have to hire attorneys in each country to assist them with… More
Copyright Owners Left Legally Jet Lagged? – The Supreme Court Embraces the International Exhaustion Doctrine
A multi-year legal drama over the proper scope of certain sections of the U.S. Copyright Act, as applied to goods made and first sold outside the United States, has finally come to an end. In a 6-3 decision issued yesterday, with dissents from Justices Ginsburg, Kennedy, and Scalia (strange bedfellows in many regards, judicially speaking), the Supreme Court, in the case of Kirtsaeng v. John Wiley & Sons, Inc., has embraced the concept of international exhaustion in relation to the copyright first-sale doctrine. This decision has far-reaching implications for copyright and trademark owners alike.
Under the… More
Several recent cases have highlighted the interesting issue of whether and when fictional characters – as distinct from the works they inhabit – are subject to copyright protection. Over the years, courts have developed two main tests for determining whether characters are worthy of copyright protection. First, as Judge Hand pointed out in the 1930 case Nichols v. Universal, stock characters are free for anyone to use, but characters that are sufficiently delineated are protected from imitation: “the less developed the characters, the less they can be… More
WINTER . . . I MEAN PRINTER . . . IS COMING: Game of Thrones Alleges Copyright Infringement by 3D Printer IPhone Dock
The inner twelve-year old boy in me doesn’t know which is cooler: the throne made entirely from swords for HBO’s Game of Thrones series, or the fact that 3D printer technology can now replicate that throne in my home at the touch of a button. It’s an interesting time to be a twelve-year old boy. It may be an even more interesting time to be an intellectual property lawyer because, like the imminent clash in Game of Thrones between the Seven Kingdoms and the evil forces beyond… More
It is a basic principle of trademark law that a mark can only be assigned with the goodwill of the business to which the mark relates, for the good reason that the mark is in fact inseparable from the business. But what kind of “business” is necessary to support ownership of a mark? A recent decision by the Federal Court in the Southern District of New York in Creative Arts by Calloway, LLC v. Brooks, a dispute among members of the family of the late musician… More
Kim, Kourtney, and Khloé , the reality-TV triple threat otherwise known as the Kardashians, are going to have to keep up with the federal court in California. The three sisters (not to be confused with Chekhov’s titular ladies), mostly famous for being famous, have been named in a trademark litigation counter-suit filed by the owner of KROMA makeup. The KROMA line was apparently launched in 2010.
In November 2012, Boldface Licensing and Branding filed an action for declaratory judgment of non-infringement against Kroma’s owner Lee Tillett, Inc. Boldface is the… More
Amazon has recorded another success in its battle with Apple over use of the term APP STORE. The U.S. District Court in California has granted Amazon’s motion for summary judgment on Apple’s claim of false advertising arising from Amazon’s use of the term APP STORE (or APPSTORE in practice) in connection with Amazon’s online store selling applications for Android devices and the Kindle Fire.
Nike’s Successful Retreat Strategy: Trademark Defendant’s Invalidity Counterclaim Is Moot Following Plaintiff’s Covenant Not to Sue
Nike, having sued competitor Already LLC for infringing its marks, later issued a covenant not to sue to Already and sought to dismiss the case. Defendant Already, however, had filed a counterclaim seeking a declaration that Nike’s mark was invalid, and argued that that counterclaim should proceed. The District Court dismissed the counterclaim, and the Second Circuit affirmed that there was no ongoing case or controversy. In an opinion issued yesterday, the Supreme Court affirmed this outcome.
Much of the affirming opinion came down to semantics. The… More
The start of a new year is a great time to take stock of where your company’s business has been and where it is headed. If you have not done a trademark audit within the last few years, here are five good reasons why you should make it a priority in 2013.
1. You may identify gaps in your registration coverage.
Often, taking a fresh look at a company’s trademark portfolio reveals significant gaps that should be filled. An attorney conducting a trademark audit will be on the lookout… More
Celebrity Trademark Watch: Elizabeth Taylor, Godmother of Celebrity Branding, Is This Year’s Highest Earning Dead Celebrity
The history of celebrity endorsements is over 100 years old, dating back to at least the late 19th century when acclaimed stage actress Lillie Langtry began appearing on packages of Pear’s Soap. Marketers have long known that, whether in connection with beauty products, breakfast cereal, soft drinks or yogurt, a celebrity spokesperson can lend “star quality” to a commercial brand. Of course, in today’s marketplace, celebrities not only endorse the products of others, but create their own as well. Myriad celebrities like Gwen Stefani, Katie Holmes, Jay-Z, Beyoncé, Jessica… More
In August of this year, Warner Brothers finally announced the release of Age of the Hobbits, Peter Jackson’s long-awaited follow-up to his Lord of the Rings trilogy, based on J.R.R. Tolkien’s famous fantasy novels. Age of the Hobbits tells the tale of a clever group of diminutive Indonesian tribesmen who convince Chinese actress Bai Ling to save them from a hoard of cannibals mounted on flying Komodo dragons.
Wait a second. Does that sound right? Actually, the Warner Brothers film is called
Within the past few days a number of news outlets, television programs, websites, and blogs have been reporting that former Denver Bronco and current New York Jets quarterback Tim Tebow has received a federal trademark registration for his signature, mid-game prayer gesture in which he drops to one knee while placing a fist against his forehead. This stance is known as “tebowing” and it quickly became an internet phenomenon, with legions posting pictures of themselves and others in similar repose online. The trademark story has been reported by USA Today, the LA Times, and… More
Decades of Delay Are OK: First Circuit Rejects Laches Defense Based on “Doctrine of Progressive Encroachment”
In a case on appeal from the District of Puerto Rico, the First Circuit held that the “doctrine of progressive encroachment” defeated a junior user’s laches defense, despite the fact that the junior user had been co-existing with the senior user for decades.
This case involved two banks, both started in the 1960s and both using the mark ORIENTAL. (Banks, it may be said, have become to the Lanham Act as railroads were to the Commerce Clause a century ago.) After the bank with junior rights (“Cooperativa”) greatly expanded… More
An often-frustrating aspect of IP law is that in relatively small matters, the cost of litigation can quickly become disproportionate to the value of the intellectual property in dispute. In other words, there is no automatic sliding scale of expenses that shifts according to the value of the IP.
That may be changing in the UK. On October 1, 2012, the UK government launched a new “small claims track” in the Patents County Court) (“PCC”), which specializes in copyright, patent and trademark matters.
The PCC “small… More
A Connecticut Superior Court judge has upheld a jury verdict that once again demonstrates the product liability risks faced by trademark licensors, particularly those who license technology as well as their marks. In Hannibal Saldibar v. A.O. Smith Corp, the court upheld a $2.4 million judgment against the Tile Council of North America, which had licensed its trademarks and patented technology for dry-set mortar to tile manufacturers, in favor of the estate of Saldibar, a plaintiff who had allegedly developed mesothelioma as a result of asbestos exposure. The case is… More
Porn Parody or Infringing Pun? Ben & Jerry’s Brings Trademark Action Against “Porno’s Finest,” Ben & Cherry’s
Last week, Ben & Jerry’s Homemade Ice Cream brought a trademark action in the Southern District of New York to put a stop to its naughty doppelganger, “Ben & Cherry’s XXX Ice Cream.” Distributed by Caballero Video, Ben & Cherry’s is a series of pornographic films with ice cream-themed titles such as “Boston Cream Thigh,” “Hairy Garcia” and “New York Super Fat and Chunky.” On Wednesday, the Southern District of New York will hear arguments from Caballero as to why… More
In a long-awaited decision, the Second Circuit, in a surprising twist, ordered that high-end shoe designer Christian Louboutin’s trademark registration for his signature red, lacquered outsoles be limited to designs in which such outsoles contrast in color with an adjoining upper.
As reported earlier, Louboutin sued Yves Saint Laurent over its sale of red shoes having a red outsole and red upper. The district court denied Louboutin’s request for a preliminary injunction, reasoning that a single color could never serve as a trademark for fashion items because such… More
The North Face Moves for Contempt Against “THE SOUTH BUTT” Defendants Over New Trademark “THE BUTT FACE”
Readers of this blog might remember our previous coverage of the 2010 trademark dispute between The North Face Apparel Corp. and The South Butt, LLC. The defendants in that case adopted the trademark THE SOUTH BUTT for clothing that resembled the style of clothing sold under the well-known mark THE NORTH FACE. According to the Complaint, South Butt repeatedly attempted to register THE SOUTH BUTT as a trademark and offered to sell its business to The North… More
Rawlings Sporting Goods Co. has brought suit (complaint here) against competitor Wilson Sporting Goods Co. for giving a Wilson® baseball glove with “metallic gold-colored webbing, stitching and lettering” to a major league player — Brandon Phillips of the Cincinatti Reds — who has won the “Rawlings Gold Glove” award in the past but is an endorser of Wilson rather than Rawlings.
Every baseball fan has heard of the Gold Glove awards given annually to 9 players from the National League and American League, respectively, for their defensive prowess. Some fans may not be aware, however, that the award was… More
Foley Hoag Attorneys to Screen Provocative, Academy Award-Winning LOGORAMA Film and Lead Discussion of Copyright and Trademark Fair Use Issues
Honestly, who hasn’t fantasized at some point about Ronald McDonald grabbing an Uzi and slaughtering his way through corporate America? LOGORAMA, the Academy Award-winning animated short, involves a gritty police chase set in a Los Angeles-inspired cityscape entirely populated by over 2,500 contemporary and historical trademarks and logos. We couldn’t let this provocative and fascinating film pass completely without notice in the legal community.
Marilyn Monroe was perhaps the more clever of Hollywood’s famous dumb blondes. While doubtless no rocket scientist, she nonetheless continues to exploit her carefully honed image to great effect even today. However, 1940’s screen siren Hedy Lamarr, herself a rare beauty, may have been the vixen with the truly beautiful mind. Indeed, she had the intellectual property to back it up — in 1942, several months after the U.S. entered World War II, she received a patent for inventing a secret communication system that she hoped would make radio guided torpedoes harder for… More
Just when you thought it was safe to bid on competitors’ trademarks as keywords — provided you played it smart, and didn’t put trademarks in the actual text of your sponsored ad except under certain limited circumstances — comes the Fourth Circuit’s decision in Rosetta Stone v. Google. In its opinion, the Fourth Circuit reverses, in significant part, the U.S. District Court for the Eastern District of Virginia for its apparently hasty summary judgment order in favor of Google, remanding the case for further analysis.
The AdWords Dispute
As the result of… More
In an ad run initially during the post-game show of the 2010 Super Bowl, Hyundai encouraged viewers to re-think “luxury” and as a result consider buying a Sonata. The ad, which can be viewed on YouTube here, juxtaposed images of “luxury” with everyday settings: policemen eating caviar, middle class houses with giant yachts parked next door, and — in what turned out to be a step too far — men playing basketball on an inner-city court, with a ball that bore designs very closely resembling Louis Vuitton’s “toile monogram.” This long-registered… More
Yesterday the University of Pennsylvania Law School’s Penn Intellectual Property Group (PIPG) held its annual symposium, which this year focused on fashion law. David Nimmer, of copyright treatise fame, delivered the keynote, entitled “Copyright and the Fall Line.” However, despite the light-hearted topic and big-name headliner, the event was probably most notable for the apparent absence of a late-invited guest, Michael Pantalony, in-house counsel at Louis Vuitton.
Trademark Offices Warn Applicants of Solicitations by Unscrupulous Companies: How Can a Trademark Owner Protect Itself?
It seems that a trademark owner cannot file a trademark application without subjecting itself to a frenzied barrage of unwanted solicitations by companies seeking the payment of fees in exchange for various trademark-related services, such as publication in the company’s private database or registry, trademark monitoring services, or recordation of the trademark with customs authorities. In some cases, the solicitations resemble invoices and appear to be issued by a government entity.
The volume of complaints regarding these solicitations has become so loud that the official trademark offices have begun to warn applicants about them.
Every now and then celebrities enjoy perks that you and I can only dream about. For the world’s newest music celebrity, Blue Ivy Carter, this is doubtless true as she has recently gotten some unusual white glove service from a government agency — something we all wish we could get the next time we’re at the registry of motor vehicles. Nonetheless, the life of a celebrity is not all glamour and fancy parties. For every moment an actor or musician spends basking in the spotlight, she or he spends countless hours auditioning, rehearsing, touring,… More
On Tuesday, high-end shoe designer Christian Louboutin told the Second Circuit that District Court Judge Victor Marrero got it wrong when he ruled that Louboutin failed to make a preliminary showing that his hallmark red-soled shoes were entitled to trademark protection, basing that holding on the broad rule that a single color for fashion items could not be trademarked under the Lanham Act.
A version of this article, which was co-authored by Anthony E. Rufo, was reprinted in the World Trademark Review.
How can the owners of famous trademarks enforce their rights without being given the dreaded “trademark bully” label? The answer lies in knowing where to draw the line, and in exercising diplomacy in letting people know when the line has been crossed.
Many brand owners tolerate minor third party uses of their marks, including unauthorized parodies, fan clubs and the like, which are undertaken in good faith. But brand… More
Anheuser-Busch InBev NV, owner of the U.S. “Budweiser” mark for beer, has recorded a small success in its longstanding efforts to establish worldwide exclusive rights to the Budweiser mark by purchasing the rights to Budweiser trademarks held by a small Czech brewery, Budejovicky Mestansky Pivovar.
However, this is a victory in a small skirmish in InBev’s much larger trademark war with another Czech brewer, state-owned Budejovicky Budvar NP. InBev (through Anheuser-Busch) and Budvar have been engaged in multiple disputes related to the Budweiser mark for… More
Stating that the antidilution law should be used as “a scalpel, not a battle axe,” Judge Laura Taylor Swain of the Southern District of New York once again found that Starbucks failed to prove that the famous STARBUCKS trademark was likely to be diluted by the use of the marks CHARBUCKS BLEND, MR. CHARBUCKS, and MISTER CHARBUCKS on dark roasted coffee. In her December 23 opinion, she ordered that judgment be entered in favor of the defendant, Wolfe’s Borough Coffee, Inc., and that the long-running case be closed.
This is… More
As most readers know, the Supreme Court held in the 2006 eBay decision that injunctions were no longer to be the norm in patent cases, and irreparable harm was not to be presumed. Instead, injunctions are within the equitable discretion of the district court, and are to be granted only if the plaintiff has shown entitlement under the traditional multi-factor test.
It’s been clear for some time that the same principles now apply in copyright and trademark cases as well. The First Circuit, for instance, addressed eBay in the context of a trademark cases in the Voice of… More
The lawsuit between Twitter and Twittad about which we wrote yesterday has ended barely a month after it began. Twitter and Twittad announced on October 10, 2011, that they have settled their dispute over Twittad’s registration of LET YOUR AD MEET TWEETS as a trademark. While the full terms of the settlement agreement are confidential, the Wall Street Journal reports that Twitter will drop its lawsuit, and Twittad will assign its rights in the registration to Twitter, although Twittad will continue to use the tagline with its services. [more]
UPDATE: Twitter and Twittad have settled their dispute. Click here for details.
The online “microblogging” service Twitter filed suit last month against Twittad, LLC, a company that enlists Twitter users to participate in advertising campaigns for pay. Twittad has registered the phrase LET YOUR AD MEET TWEETS with the United States Patent and Trademark Office (PTO) as an identifier for its advertising-related services. The lawsuit represents the latest step in Twitter’s efforts to assert proprietary rights in the term “tweet,” which, according to the Online… More
As mentioned in our prior blog entry, Facebook has sued Teachbook.com LLC in the Northern District of Illinois for infringement of the ubiquitous FACEBOOK mark, after losing a venue battle in the Northern District of California this past May.
Facing an astronomically larger opponent, Teachbook went for an aggressive strategy that has tempted many a defendant: to see if, despite the very high hurdle imposed by Rule 12, it could get the suit dismissed prior to discovery. It’s very difficult to win such motions even under the more… More
As reported recently, Facebook has dropped its suit against Lamebook, the subject of our prior blog entry, pursuant to a settlement agreement. This followed Facebook’s unsuccessful attempt to have the case transferred to its home turf in the Northern District of California.
According to the news report, Lamebook got to keep its name as part of the settlement, and did not even have to change its logo with the evocative “thumbs-down” icon and blue… More
A trademark is more than a designation of source. It is also a symbol of quality, attesting to the consistent, predictable nature of the identified goods or services. Consumers rely upon marks to insure that they purchase the same product or service they have come to know from prior experience.
For this reason, a company that uses its mark through licensees must control the quality of the goods and services that the licensees sell under the mark. If the licensor fails to do this–if it engages in “naked licensing” that fails to ensure a consistent and repeatable experience for consumers–the… More
The long-awaited study of so-called trademark bullies was recently released by the Department of Commerce. As you may recall from our prior blog post, the study was the result of legislation filed by Senator Leahy of Vermont and signed into law by President Obama on March 17, 2010 (Pub. L. 111-146, Sec. 4). The legislation gave the Secretary of Commerce one year to “study and report to [Congress] the extent to which small businesses may be harmed by litigation tactics [by corporations] [the purpose of which is] attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” (Subsequent to enactment, the words “of corporations” were stricken and replaced by “the purpose of which is” by Pub.L. 111-295, Sec. 6(h).)
The decision by Apple Corps, the Beatles’ music company, to allow distribution of Beatles songs on iTunes appears to have been vindicated by the initial sales figures achieved (two million singles sold in the first week, reports Billboard). However, the release of Beatles’ music on iTunes, the final act in the resolution of the long-running trademark dispute between Apple Computer and Apple Corps, also illustrates the basic truth underlying the resolution of many trademark negotiations: the company with the biggest consumer footprint ultimately wins.
When the… More
Lamebook, LLC operates a website, www.lamebook.com, at which people can submit amusing (or merely “lame”) messages and photos appearing on facebook.com – its tag line is “the funniest and lamest of facebook.” (Warning: some of the content is funny or lame mainly because it is off-color.) The editors screen the submissions and remove identifying information before displaying them on the site in various categories (such as “TypOHs”), and make revenue selling advertising space (as of this writing, the site had an Alexa® U.S. traffic ranking of 1,302, and ads for AUTOZONE and well-known car manufacturers were prominently featured). Imagine… More
The U.S. Court of Appeals for the Federal Circuit (CAFC) has affirmed the decision of the Trademark Trial and Appeal Board (TTAB) that Chippendales’ “Cuffs & Collar” trade dress (pictured below) is not inherently distinctive for “adult entertainment services, namely, exotic dancing for women in the nature of live performances.” In re Chippendales USA, Inc., No. 2009-1370 (Fed. Cir. October 1, 2010) (PDF).
For nearly ten years, Chippendales has been trying to obtain a registration of its trade dress based on inherent distinctiveness rather than acquired distinctiveness or “secondary meaning.” Chippendales filed its first application… More
In what would appear to be the final chapter of the battle between online giant eBay and luxury jeweler Tiffany, a Southern District of New York judge has bounced Tiffany’s false advertising claim, the only claim remaining following a Second Circuit decision earlier this year.
On remand, the district court focused on whether eBay’s advertisements about the availability of Tiffany merchandise on its site misled or confused customers since at least some purportedly Tiffany products were counterfeit. Tiffany conceded that there was no… More
The Massachusetts Appeals Court has served up a reminder to Massachusetts trademark licensors that they may be subject to liability for injuries caused by defective products bearing their licensed mark, even if they are not the manufacturer or seller of the defective product. Under the "apparent manufacturer" doctrine, a nonseller trademark licensor may be liable for defective products if the licensor "participated substantially" in the design, manufacture or distribution of the products. In Lou and others v. Otis Elevator Company, No. 09-P-632 (Mass. Ap. Ct. September 3, 2010), Otis had licensed its marks and its technology to a Chinese joint… More
In American Needle, Inc. v. National Football League, the U.S. Supreme Court held that the National Football League was subject to suit under the Sherman Antitrust Act regarding its practices in licensing team trademarks to merchandisers. Between 1963 and 2000, the IP licensing entity set up by the league, NFL Properties, had “granted nonexclusive licenses to a number of vendors,” including American Needle, “permitting them to manufacture and sell apparel bearing team insignias.” In 2000, however, an exclusive license was granted to Reebok. American Needle, having lost out on the deal, responded with an antitrust suit in the Northern District of… More
There is something for trademark holders and service providers alike in the Second Circuit’s opinion in Tiffany (NJ), Inc. v. eBay Inc. (PDF). In that case, the court held, among other things, that eBay’s Herculean anti-counterfeiting measures precluded direct and contributory liability for trademark infringement. The court reasoned that under either theory of liability, the mere fact that a service provider, such as eBay, knows in a very general sense that its website contains counterfeit products will not, standing alone, suffice to establish infringement. In the court’s view, liability premised on a service provider’s inducement of infringing conduct requires,… More
As previously reported, North Face sued South Butt for trademark infringement and dilution for using the name THE SOUTH BUTT and an arc designed to evoke the well-known logo for THE NORTH FACE. On the eve of a preliminary injunction hearing, the parties reported that they had settled their claims.
The Court thereafter entered two consent injunctions – one against the South Butt defendants (PDF), and another against a store that sold the allegedly infringing products (PDF). South Butt thereafter abandoned its federal trademark application for… More
Proving that history repeats itself, the TTAB recently decided a case that is strongly reminiscent of a matter we handled several years ago. In 2005 we defeated a challenge by Missiontrek Ltd. Co. to the registration of the software mark ONFOLIO, owned by our client Onfolio, Inc. Missiontrek claimed that ONFOLIO was confusingly similar to its previously-registered software mark CARTAGIO.
Instead of filing an answer to this challenge, we moved for summary judgment, claiming that the marks were so different that no facts developed in discovery or at trial could lead to a finding of confusing similarity. Although the TTAB rarely decides such… More
In a lawsuit that has grabbed the attention of the trademark community, The North Face Apparel Corp. sued The South Butt, LLC, its founder (college student Jimmy Winkelmann), and a pharmacy that sold allegedly infringing goods for using the mark THE SOUTH BUTT on clothing that resembled the style of clothing sold under the well-known mark THE NORTH FACE. According to the Complaint (PDF), South Butt repeatedly attempted to register THE SOUTH BUTT as a trademark and offered to sell its business to North Face for $1 million. The Answer (PDF) describes Jimmy Winkelmann as a “cherubic… More
Welcome to the Foley Hoag Trademark & Copyright Law Blog! In this space, we will aim to keep you apprised of significant developments in the law of trademarks, copyright, false advertising, domain names and the Internet, and related areas.
We will also share with you our thoughts on key legal developments, highlight instructive real-world lessons in intellectual property policing and protection, and discuss emerging intellectual property issues. We hope you find it useful, and welcome your comments and feedback.
Julia Huston Chair of Trademark, Copyright and Unfair Competition Practice Group
Joshua Jarvis Blog Editor and Associate, Trademark, Copyright and Unfair… More