Tag Archives: Trademark Infringement

IP Protection For Novelty T-Shirts: Copyright Or Trademark?

gymboree

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

Celebrity Trademark Watch: What Do Bob Marley and Chicken Fingers Have in Common?

Chicken

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

Faked LinkedIn Profile and Twitter Hash Tags Give Rise to Trademark and False Advertising Claims

Fawkes

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

cbocs

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.

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Summary Judgment Denied in Trademark Dispute over “National Association for the Abortion of Colored People”

naacp

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

Hotel Dispute Gets An Extended Stay in Puerto Rico: First Circuit Case Illustrates the Limits of an Incontestable Registration

Gran-Melia2 Melia

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.

The Dispute

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

Can a Website Disclaimer Prevent Declaratory Judgment Actions in IP Cases? Maybe…or Maybe Not

Disclaimer-1-272x300A 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

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.

First-Sale Doctrine

Under the… More

Superheroes of Copyright: When Do Fictional Characters Enjoy Copyright Protection?

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

Celebrity Trademark Watch: Kardashians Kalled to Kourt?

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

The APP STORE Trademark Wars: New Year’s Installment

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.

As is well known, Apple sells apps for Apple devices such as the iPhone and iPad through an online store known as the Apple… More

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

SORT OF THE RINGS: Will Trademark Fair Use Protect Age of the Hobbits?

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 More

Decades of Delay Are OK: First Circuit Rejects Laches Defense Based on “Doctrine of Progressive Encroachment”

orientalIn 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