Posts Tagged: "tarnishment"

Spotify Successfully Opposes Two Marijuana-Related Trademark Applications

On January 11, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) issued a precedential decision finding dilution by blurring and sustaining two oppositions filed by Spotify AB against two marijuana-related trademark applications. Applicant U.S. Software Inc. filed trademark applications for POTIFY in standard characters, and stylized with a design on July 17, 2017, and May 2, 2018, respectively. These applications sought to register POTIFY for: “downloadable software for use in searching, creating and making compilations, rankings, ratings, reviews, referrals and recommendations relating to medical marijuana dispensaries and doctor’s offices and displaying and sharing a user’s location and finding, locating, and interacting with other users and place, in International Class 9.”

Logan Murr

January 17, 2022

Disney Slams Characters for Hire for Tarnishing the Disney Image

One of the interesting theories posed by the case is Character for Hire’s claimed right to use Disney characters, which derive from Norse mythology or centuries-old fairy tales. In its response to Disney’s motion for summary judgment, Characters for Hire argues that many of the Plaintiffs’ copyrights are based on prior works that have been in the public domain for hundreds of years such as Cinderella, Snow White, Rapunzel, Sleeping Beauty, Aladdin, Princess Aurora, Beauty and the Beast, the Little Mermaid, Thor and Loki. “It will be interesting to see how the Court delineates between established fairy tale characters and the original expression added to them by Disney,” Furey said.

Amanda G. Ciccatelli

December 5, 2017

Characters for Hire cite to Naked Cowboy in fighting Disney’s claims of copyright, trademark infringement

Characters for Hire also argued that the trademark infringement claims lacked the essential element of confusion. Citing to Naked Cowboy v. CBS, a case decided in Southern New York in 2012 involving trademark infringement claims asserted by a Times Square street performer against the use of his likeness in the soap opera The Bold and the Beautiful, Characters for Hire argue that the use of the names of fictional persons are merely descriptive of the entertainment services provided by the defendants. “Indeed, Plaintiff Disney is well aware of the limits of trademark enforceability having successfully defended a claim brought against them for using the famous ‘Caterpillar’ trademark for construction trucks in one of their films,” Characters for Hire argued. This statement references Caterpillar Inc. v. Walt Disney Co., a 2003 case decided in the Central District of Illinois wherein the court ruled that Disney’s use of construction vehicles with Caterpillar logos in the movie George of the Jungle 2 created no likelihood of confusion that Caterpillar either endorsed or sponsored the movie.

Steve Brachmann

October 28, 2017

U.S. v. Alvarez: Trademark Dilution and the First Amendment

Earlier this week, the United States Supreme Court handed down its opinion on the Stolen Valor Act (18 U.S.C. §§704). This poor little First Amendment case has been largely ignored for the simple fact that it was published just before the Healthcare Decision. U.S. v. Alvarez answers the question of whether it is acceptable to lie about receiving military awards, more specifically, the Medal of Honor. What is interesting about the opinion for us Intellectual Property nerds is that the concurrence and the dissent both appear to suggest that the harm resulting from such behavior is analogous to dilution in trademark law.

Beth Hutchens

July 3, 2012

Trademark Tarnishment: Trademark Law’s Dirty Little Secret

Dilution by blurring slowly whittles away at a trademark’s distinctiveness whereas dilution by tarnishment is an attack on the reputation and positive image of a mark. Here’s the thing: dilution by tarnishment is an entirely separate analysis from your garden variety Likelihood of Confusion analysis. But before click up your heels and scream “Yahtzee!” you should know that it’s really hard to make a tarnishment argument stick so don’t get all antsy to trot this one out. The standard is all over the place because it’s typically analyzed under a state’s dilution laws (if there are any). And I hate to do that lawyer “well, it depends” thing, but in this case, a tarnishment cause of action really does depend on the jurisdiction.

Beth Hutchens

October 21, 2010

IHOP v. IHOP: House of Pancakes Sues House of Prayer

On September 3, 2010, IHOP IP, LLC, a Delaware limited liability company, the owner of various IHOP registered trademarks in the United States, sued the International House of Prayer alleging various trademark infringement theories. The plaintiff IHOP brings two causes of action against the defendant. The first being the claim that the defendant through the use of various IHOP marks is engaging in dilution under 15 U.S.C. 1125(c). The second claim is straight trademark infringement under 15 U.S.C. 1114. Notably, the plaintiff IHOP did not bring a cause of action alleging likelihood of confusion, which is typically a ubiquitous cause of action in these types of cases.

Gene Quinn

September 30, 2010