Trademarks
April 2, 2012
30 Year Delay is Laches…Fourth Circuit Reverses Summary Judgment in Clear Channel Trademark Infringement Case
Ray Communications, Inc., a radio network owned by Bill and Lisa Ray, sued radio conglomerate Clear Channel for trademark infringement in June of 2008. Ray Communications, Inc. (RCI) owned a valid federal trademark in the mark “AGRINET”, a play on the words Agricultural and Network.
February 26, 2012
Ninth Circuit Affirms $836,000 Fee Award to Trade Dress Defendant
Published trade dress cases from the Ninth Circuit are relatively rare, but this month the Court issued an important opinion on the legal burden of a plaintiff to establish that their trade dress is nonfunctional. In the Court assessed whether a traction hoist qualifies for trade dress protection, and found it did not.
December 20, 2011
Footzyrolls Rolled into Tootsie Roll’s Mark?
Tootsie Roll Industries is suing small business shoe designer, Rollashoe LLC, for Lanham Act violations in the Northern District of Illinois. At issue in this case is whether Rollashoe’s trademark, Footzyrolls, likely causes confusion with Tootsie Roll or dilutes the value of the Tootsie Roll mark. Although tootsie roll is probably best known as a chewy, chocolate flavored confection, the Tootsie Roll mark doesn’t just appear in connection to the candy. It also appears on footwear, accessories, and clothing. The mark Footzyrolls is registered for footwear accessories, like “rollable ballet slippers, drawstring bag for alternate shoes and a small purse bag for the rollable slippers all packaged together in the small box.”
November 9, 2011
Tiffany and Company Supports Christian Louboutin’s Appeal to the Second Circuit and Protects Its Trademarked Color
Last summer, Infringement Nation covered the denial of Louboutin’s motion for preliminary injunction against shoe maker Yves Saint Laurent (YSL) on Lanham Act violations. Louboutin claimed its “Red Sole Mark” was infringed when YSL sold shoes with confusingly similar red soles. On Louboutin’s appeal, Tiffany filed an amicus brief in an effort to clarify trademark law involving color marks. Tiffany is a popular jewelry and fashion brand, well known for diamonds, “return to Tiffany” tag bracelets, fashion accessories, and the “Tiffany blue” that covers its boxes, bags, website, catalog, and shareholder reports. Tiffany involved itself in this suit because it objected to the district court’s “sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any ‘fashion item,’ even where the color has achieved ‘secondary meaning.’”
October 17, 2011
Twitter, Inc., Learns a Lesson in Trademark Registration
In 2009, Twitter filed for “Tweet” but the USPTO declined the registration because the marks “Let Your Ad Meet Tweets” and “Tweet” are confusingly similar. Twitter filed its motion for declaratory judgment to cancel Twittad’s mark. New businesses are cautioned to register their trademarks as soon as they conceive of trademarks they intend to use. Although some may be tempted to save on registration fees and rely on common law protection, Twitter’s recent lawsuit against Twittad demonstrates why new businesses should file their trademarks as soon as they intend to use it.
September 22, 2011
Summit Entertainment Polices the TWILIGHT Mark and Sues Owner of Twilight.com
Summit Entertainment, the producer and distributor of the Twilight motion picture series is suing Tom Markson in the Central District of California for false designation of origin, trademark infringement, dilution, unfair competition, and copyright infringement for Markson’s use of TWILIGHT. Even though Markson registered www.twilight.com in 1994, and the firstTwilight film was released in 2008, Summit alleges that Markson “changed his Website to post links and other material relating to the Twilight Motion Pictures, including copyrighted material owned by Summit” after the film became popular.
March 13, 2011
Ninth Circuit Clarifies Standard for Trademark Dilution Claim
The Court of Appeals for the Ninth Circuit reversed and remanded a district court opinion which found Abercrombie & Fitch Trading Co. did not dilute Levi Strauss’s registered mark, the “Arcuate” design. Levi contends that the district court’s application of the “identical or nearly identical” standard for comparing the marks is not the correct standard in light of the Trademark Dilution Revision Act of 2006 (15 U.S.C. Section 1125(c)). The Court of Appeals agreed with Levi. Levi’s Arcuate mark has been placed on clothing designs, which account for at least 95% of Levi’s revenue. The mark has been used for over 30 years. Levi alleged that Abercrombie’s stitched jean-pocket design incorporates “distinctive arcing elements” of its mark.
March 2, 2011
Too many Jumpin’ Jacks? No says the Trademark Board.
The Trademark Trials & Appeals Board (TTAB) recently reversed the trademark examining attorney's finding that the mark JUMPIN’ JACKS used for barbeque sauce is likely to cause confusion with a previously registered trademark, JUMPIN JACK’S used for “coffee-house services; and catering services.” The TTAB used the familiar DuPont factors to establish that the mark would not likely confuse the relevant market. The Board put particular emphasis on similarities of the marks and the similarities between the goods/services (two of the DuPont factors). The TTAB noted that the marks JUMPIN’ JACKS and JUMPIN JACK’S are identical in sound and, with the exception of the placement of the apostrophe, identical in spelling. But the Board looked the similarities of the goods/services, noting that the goods/services need not be competitive to support a finding likelihood of confusion. Although catering services and food products have been found to be “sufficiently related to give rise to a likelihood of confusion,” there is no per se rule that they are necessarily related.
February 27, 2011
Suggestive Trademark Survives Challenge
The Court of Appeals for the Ninth Circuit affirmed Lahoti v. Vericheck, Inc., on its second appeal to the Court. At issue in the second appeal was whether the district court correctly found Vericheck’s trademark "VERICHECK" suggestive and is therefore entitled to trademark protection. Additionally, the Court reviewed whether the district court’s determination of infringement was clearly erroneous. The district court found that VERICHECK was suggestive, and is therefore protectable without a finding that the mark acquired secondary meaning. If the mark was found to be descriptive, the mark would have to acquire secondary meaning in order for the mark to be protected. The Ninth Circuit held that the VERICHECK mark would have to describe the services that Vericheck provides for the mark to be descriptive. It concluded that that VERICHECK did “not immediately convey information about the nature of Vericheck’s services.” Further, consumers would have to resort to a “’multistage reasoning process’ to identify the characteristic of the product which the mark suggests,” which means the mark is not descriptive, but instead suggestive.
February 16, 2011
Will Ferrari’s Formula 1 Racer Name Change Be Enough to Avoid Ford’s Trademark Lawsuit?
Ferrari changed the name of its Formula 1 racer one day after Ford filed suit against Ferrari for trademark infringement. Ford contended that the F150 Ferrari (this trademark has no hyphen) was confusingly similar to Ford’s F-150 pickup and would likely lead to consumer confusion that would allow for Ferrari to “capitalize on and profit from the substantial goodwill” of Ford's F-150. In addition, Ford claimed Ferrari's use constituted trademark dilution. Trademark dilution occurs when an unauthorized use of the trademark takes away from the distinctiveness of the trademark. In a likely attempt to avoid the suit from continuing, Ferrari now refers to the racer by its full name, Ferrari F150th Italia. The racer denotes Ferrari’s 150th anniversary.
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