Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’ll be exploring some of the more interesting takes on this approach,… More
Tag Archives: Trademark Infringement
With some cases, you just shake your head. In this case, a restaurant purveyor thought it would be okay to open a restaurant by the name of the “Krusty Krab.” For those of you who have no reason to have been watching cartoons for the past 20 years, this is the name of the restaurant in which SpongeBob SquarePants works, flipping crabby patties as a fry cook. … More
Just this month, two disputes over the trademark rights to beauty pageant names were resolved, pending appeal. In World Pageants LLC v. Miss G-String International LLC, the Trademark Trial and Appeal Board (“TTAB”) dismissed an opposition to the registration of MISS G-STRING INTERNATIONAL because the opposer’s mark (MISS NUDE INTERNATIONAL) just wasn’t similar enough to cause confusion. Meanwhile, in Organizacion Miss America Latina v.… 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,… 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.… 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.
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.… 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,… 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,… More
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.… 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,… 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,… 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,… 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.… 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.
As is well known,… More