Ten years ago, back in 2004, an interesting and somewhat unexpected story surfaced about Microsoft’s intellectual property portfolio. A man by the name of Rich Tanenbaum, who is the founder of Savvysoft, had been told by Microsoft to stop using the name TurboExcel for his own software. This in and of itself would not have been much of a story except for the fact that this news item exposed the almost incredible fact that Microsoft did not have a federally registered trademark in the United States on the name Excel.
Every company, no matter how large or small, has valuable intellectual property that can be protected. Frequently, however, many companies choose not to take the steps necessary to protect this intellectual property, which leaves the property vulnerable, weak or perhaps even non-existent in time. Generally, however, it is the so-called “Little Guy” that leaves the door open for the larger, IP sophisticated companies. This story demonstrated that even giant corporations can have intellectual property lapses. Apple has also had similarly famous lapses with respect to various “i” products, such as the iBook, which they had to acquire from a company that already had the rights to use that name commercially.
Is there anything one can do to stop competitors, large or small, from using your trade name even if you do not have a federally registered trademark? The answer is yes, although it is certainly far and away preferable to have a federally registered trademark.
Saeilo Enterprises, Inc. (Saeilo), current maker of the Thompson machine gun, sometimes referred to as a “Tommy gun,” recently filed a lawsuit claiming trademark infringement against liquor company, Alphonse Capone Enterprises, Inc. (Capone). At issue is the fact that Capone has been selling a new brand of vodka under the Tommy Guns name in a 19-inch bottle that is shaped like a Tommy gun.
In 1994, Kahr Arms (Kahr), a division of Saeilo Enterprises, Inc., was formed and five years later in 1999, Kahr bought Auto-Ordinance, the original manufacturer of the well-known Tommy Gun firearm. Additionally, Saeilo also owns the TOMMY GUN trademark for firearms, and the trademark has been used constantly since 1920. The company is also the owner of a separate TOMMY GUN trademark that covers clothing.
The complaint, which was filed in Illinois, specifically alleges that Capone, an Illinois corporation, did not have authorization to use the Tommy Gun trademarks on alcoholic beverages that carry a reproduction of the Tommy Gun marks. Additionally, Saeilo claims that Capone’s infringement not only violates federal trademark law, but also Illinois state law and common law.
On March 5, 2013 a jury returned a verdict against Frito-Lay North America (“Frito-Lay”) and in favor of Medallion Foods and Ralcorp Holdings, (collectively “Medallion Foods”) in the Eastern District of Texas –Sherman Division.
Frito-Lay brought a lawsuit against Medallion Foods for allegedly trademark infringement, trade dress infringement, unfair competition, and dilution under United States Trademark Act. Frito-Lay also alleged willful patent infringement under the patent laws of the United States.
In its amended complaint Frito-Lay alleged that Medallion Foods’ tortilla chips result from processes, which infringe one or more claims of United States Patent No. 6,610,344 either literally or under the doctrine of equivalents. Additionally, Frito-Lay contends that Medallion Foods is liable for infringing the ‘344 Patent under U.S.C. § 271, as well as the infringement being willful, entitling Frito-Lay to enhanced damages under §284.
On February 15, 2013, Tiffany and Company filed a lawsuit against Costco Wholesale Corporation in the U.S. District Court for the Southern District of New York, alleging that Costco was engaging in the sale of counterfeit TIFFANY diamond engagement rings. The complaint filed by Tiffany alleges counterfeiting, trademark infringement, dilution, unfair competition, injury to business reputation, false and deceptive business practices and false advertising. Tiffany’s is seeking a permanent injunction, damages, treble damages and punitive damages for the alleged infringement and other alleged unlawful acts, but if you read the complaint carefully it seems pretty clear that what they really want is to make a public example out of Costco. They want everyone to know that they are watching and when they find infringers they will act swiftly. Thus, Tiffany has asked for an apology and they want the world to know that they never have and never will sell their rings to discounters or wholesalers. For more information see Tiffany Sues Costco Over Counterfeit Diamond Rings.
This should have been an open and shut case. But then Costco decided to aggressively defend what seems indefensible.
Costco is basing its defense on the belief that the “[t]he word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.” See opening paragraph of the Costco Answer and Counterclaim. In support of this position Costco submitted dictionary definitions, pages from Wedding Planning for Dummies discussing rings, online articles (such as from About.com), online sales pages (such as from Amazon.com) and other materials.
Attorney Willie Gary, who has never been afraid of taking on the big boys, along with his team of legal eagles have recently filed a multi-million dollar claim on behalf of Earnest Evans, aka Chubby Checker, The Last Twist Inc., and the Ernest Evans Corporation against tech giant Hewlett-Packard and its subsidiary, Palm Inc. for trademark infringement, unfair competition and deceptive trade practices, dilution and false designation of origin.
So what exactly did HP and Palm do that has Chubby Checker “twisting” the wrong way? Well, apparently they released and maintained a software application made for Palm products that was called “Chubby Checker.”
The particular smartphone application is specifically geared toward the ladies or anyone interested in what it had to offer–it could be used to estimate the size of a man’s penis based on his shoe size.
HP claims that the application was removed during the same month that they received a cease and desist letter from Willie Gary asking them to take it down. Still, Willie Gary says that the suit is about “preserving the integrity and legacy of a man who has spent years working hard at his musical craft and has earned the position of one of the greatest musical entertainers of all time.”
The latest round of what seems to be a never-ending trademark battle between the United States Polo Association (USPA) and PRL USA Holdings, Inc. (referred to here as Ralph Lauren) has ended with Ralph Lauren emerging victorious over the polo association. Judges Reena Raggi, Peter Hall and Christopher Droney, all with the 2nd US Circuit Court of Appeals, recently issued an unsigned opinion finding that the USPA could, in fact, be banned from using a double horseman logo on its fragrances or cosmetics on the basis that the logo was too similar to trademarks currently owned by Ralph Lauren and such use constituted unfair competition.
Maryland-based performance apparel and sporting goods company, Under Armour (UA), has recently filed a lawsuit against sporting goods giant, Nike, claiming that Nike’s use of UA’s recently-launched advertising slogan “I WILL” violated its trademark rights. More specifically, the complaint alleges that Nike willfully infringed upon UA’s trademark rights when it launched its own ad campaign displaying “I WILL” for its sporting goods and apparel in a way that is similar to UA’s longtime use of the phrase.
So, what brought about UA’s use of the catch phrase in this latest ad campaign? Well, for the past decade, UA’s classic ads have asked athletes to “Protect this House.” The response to the commercial was a natural one: “I WILL.” The trademark has been featured in relation to a wide variety of the company’s products throughout the years, either by its inclusion in product names, in the packaging of its products, and/or on the products themselves. UA promotes its goods and services via the Internet (to include well-known social networks, such as FACEBOOK and TWITTER), print media, and just about every type of digital and broadcast media imaginable.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more.
Without hesitation I recommend One Simple Idea and think it should be required reading for any motivated inventor. There is so much to like about the book and so much that I think author Stephen Key nails dead on accurate. The book is educational, information and inspirational. For the $14 cover price it is essential reading.
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