Posts Tagged: "trademark dilution"

The U.S. District Court for the Central District of California recently issued a decision in the closely watched Patagonia, Inc. v. Anheuser-Busch, LLC, 19-CV-02702 case. Here, the clothing company Patagonia sued the beer company Anheuser-Busch for trademark infringement, unfair competition, dilution of a famous mark, and cancellation of Anheuser-Busch’s various PATAGONIA trademark registrations. Anheuser-Busch moved to dismiss certain claims, including the dilution claim, for failure to state a claim under Rule 12(b)(6). The court issued a decision finding that Patagonia had adequately pled its dilution claim. The case provides trademark practitioners with insight into early case strategies when asserting and defending against a trademark dilution claim.

Whether Ryan Fitzpatrick opposes or otherwise challenges Minkah Fitzpatrick’s registration of FitzMagic, one has to question the wisdom of seeking a trademark that NFL fans will associate with someone other than the trademark owner. “That defeats the entire point of a trademark,” said Gene Quinn, founder of IPWatchdog.com. “Trademarks are supposed to set you apart and specifically identify the source, this just seems guaranteed to cause confusion if the USPTO issues the trademark. Not a smart business move.”

British luxury fashion brand Burberry filed a complaint alleging trademark infringement and dilution against American retailer Target Corporation in the Southern District of New York. At issue in the case is the sale of scarves and other fashion items in Target stores which include a pattern closely resembling the iconic Burberry check trademark.

???In Montauk U.S.A. v. 148 South Emerson Associates the Second Circuit vacated-in-part an earlier ruling in a trademark case. In that ruling, the district court denied a motion for preliminary injunction filed by Montauk, which was asserting its trademark rights to marks associated with The Sloppy Tuna restaurant.

On March 21st, the Major League Baseball Players Association (MLBPA) filed a formal notice of opposition at the Trademark Trial and Appeal Board (TTAB) to challenge a federal trademark application filed by Michael P. Chisena of Garden City, NY. The trademark application, U.S. Trademark Application No. 87528440, seeks to protect the use of the standard character mark “HERE COMES THE JUDGE” in commerce on clothing including T-shirts, jerseys, athletic uniforms and caps.

Alibaba alleges that defendant Alibabacoin (ABBC) Foundation has engaged in an unlawful scheme to misappropriate the Alibaba name in order to raise over $3.5 million in cryptoassets from investors. The complaint alleges that scheme was a part of an Initial Coin Offering (ICO) that is neither registered nor approved by U.S.

Dallas, TX-based online dating app developer Match Group filed a suit in the Western District of Texas alleging claims of utility and design patent infringement, trademark infringement, and trade secret misappropriation against Austin, TX-based dating app provider Bumble. Match alleges that Bumble, which was founded by former employees of Match’s Tinder dating service, copied major elements of the interface from Match’s app including swiping elements used to identify potential matches.

On February 20th, Clearwater Beach, FL-based restaurateur Frenchy’s Corporate filed a suit alleging trademark infringement against the owners and operators of Frenchy’s Pizzeria & Tavern, located less than an hour’s drive away from Clearwater in Port Richey, FL. The suit, filed in the Middle District of Florida, aims to protect Frenchy’s Corporate trademark rights to the unregistered trademark “FRENCHY’STM” under…

A resounding en garde was declared by California craft beer brand Stone to MillerCoors, the second largest beer company in the United States, over the alleged taking of their brand recognition. On February 12, 2018 Stone Brewing filed a federal complaint alleging trademark infringement, false designation of origin, trademark dilution, and California unfair competition. The complaint requests preliminary and permanent injunction, declaratory relief, and both actual and treble damages on the basis of willful trademark infringement by MillerCoors… A particularly interesting factor in this case is likelihood of irreparable harm. MillerCoors may find room for defensive maneuvers due to recent shifts in the standard for proving irreparable harm.

Colgate-Palmolive (NYSE:CL) filed a lawsuit alleging trademark infringement in the Southern District of New York against Grand Rapids, MI-based oral healthcare company Ranir LLC. At issue in the case are toothbrushes being sold by Ranir which allegedly infringe upon the “360°” trademark, which is owned by Colgate… Since releasing the 360° branded line of toothbrushes and oral care products, Colgate has pursued federal trademark registrations to cover the use of the brand in commerce.

The notice of opposition filed by the Army to challenge the “VEGAS GOLDEN KNIGHTS” mark cites multiple grounds for opposition including priority and likelihood of confusion, dilution by blurring and false suggestion of a connection with an institution. In the case, the Army is asserting its own unregistered trademark of “GOLDEN KNIGHTS” used in connection with entertainment exhibition services, public relations and recruiting. Although the Army is opposing a standard character mark without a claimed color scheme, it also notes that the Vegas Golden Knights have chosen a similar black+gold/yellow+white scheme on uniforms and advertisements, which are used by West Point’s hockey team, known as the Black Knights, as well as the Tate Rink arena where the Black Knights play. This similar color scheme may further contribute to consumer confusion, the Army argues.

The suit, filed in the Western District of Texas, alleges that the mega retailer has been infringing on its IP related to trade dress covering aspects of YETI beverage holders in violation of a settlement agreement stemming from previous litigation activity which had played out between the two companies… The allegedly infringing products include 20- and 30-ounce beverage holders and a “Koozie” beverage container which are the same size and shape as the YETI trade dress. These products had previously been the subject of patent and trademark litigation played out between YETI and Wal-Mart

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.

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services.