Mehmet Oz, M.D. is taking the fight to the scam operators who have been duping the public using his good and extremely popular name. Indeed, the two-time Emmy Award-winning, nationally syndicated daytime series The Dr. Oz Show is launching an aggressive campaign to stop illegal use of the Dr. Oz name, image and show. This campaign dubbed “IT’S NOT ME,” began Monday, May 6, 2013.

As you may be aware, over the past several years the Internet has become overrun with advertisements featuring one or another product allegedly endorsed by Dr. Oz. On Monday Dr. Oz told viewers that he endorses none of these and he is going to fight to take back his name.

“Today I am taking back my name and protecting my viewers from people I consider dangerous, who try to mislead you into buying products I don’t endorse,” Dr. Oz told the audience. “Anything you see on this show is part of a conversation I am having with you about your health. We are always transparent about our trusted, official partnerships and a full list of these partners is available on our website.”

It should come as no surprise that a nerd such as myself is into Sci-Fi, so when news of the Fox / Firefly / Shiny Hat kerfuffle hit the ‘verse, I was naturally all over it like the Alliance on an illegal salvage operation.

For those of you who are totally missing out, Firefly was a briefly lived television show that aired on Fox in 2002. It only lasted for a few months before Fox yanked the plug (a most egregious decision that I shall never EVER forgive them for). In the years that followed, Firefly – the best space western you didn’t watch – gained a cult following that gives Trekkies a run for their money. In one of the episodes, the character Jayne Cobb receives a care package from his mother containing a homemade orange and yellow poofball hat. The hat wasn’t a focal point of the episode but fans of the show, known as Browncoats, can easily be identified at conventions by wearing this most cunning hat.

Despite collecting dust on the shelf at Fox for over a decade, the fans’ devotion to Firelfly has kept the series alive. If you’ve never been to a convention like ComiCon, it’s common to see folks dressing up as their favorite character from a comic, movie, or TV Show. There may be a Viper Pilot here, a 4th Doctor there, even a Stormtrooper or two. Browncoats wear the Jayne Hat. The hat is, and has been, a favorite item of do-it-yourselfers to sell on sites like Etsy.

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.

Earlier today, Tiffany and Company filed a lawsuit against Costco Wholesale Corporation in the U.S. District Court for the Southern District of New York. The purpose of the lawsuit is to prevent further sales of counterfeit diamond engagement rings and for damages associated with prior sales. The suit was filed, and alleges trademark infringement, dilution, counterfeiting, 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.

Tiffany & Co. (NYSE: TIF), renowned for its luxury goods, particularly diamonds, operates high-end jewelry stores and manufactures products through various subsidiary corporations. Its principal subsidiary is Tiffany and Company, which is the named plaintiff in the abovementioned litigation with Costco.  Tiffany and Company operates retail stores and boutiques in the Americas, Asia-Pacific, Japan, Europe and the United Arab Emirates and engages in direct selling through Internet, catalogue and business gift operations.

The dispute between Tiffany and Costco first came to light in November 2012 when a customer alerted Tiffany to the sale of what was promoted on in-store signs as “Tiffany” diamond engagement rings at a Costco store in Huntington Beach, California. Tiffany immediately launched an investigation, and later learned that for many years, and without Tiffany’s knowledge, Costco had apparently been selling different styles of rings that it has falsely identified on in-store signage as “Tiffany.” The rings are not in fact Tiffany rings, nor are they manufactured by, approved by, licensed by, or otherwise in any way properly associated with Tiffany.

Last week, theåç Supreme Court handed down its ruling in Nike v. Already, dba YUMS, 568 U.S. — (2013).  While this case is set against the backdrop of trademark infringement, the big issue here is tied up in the way the Constitution grants federal courts the power to hear cases.  For those who haven’t survived a Constitutional Law class, this can be a bit confusing.  The Nike case was “mooted out”, which is a phrase lawyers like to throw around when we want to sound like we know something.  Mootness is part of the larger doctrine of justiciability and requires a bit of an explanation before we can discuss what was really going on in Nike.  Bear with me-things are going to get a bit technical.

Article III of the United States Constitution establishes the judicial branch of our government and creates the Supreme Court (lower federal courts are created by Congress).   Section 2, Clause 1 has what’s known as the “Case or Controversy Clause”, which the Supreme Court has interpreted to tell us what limitations must be put on judicial review, e.g., what cases courts can or cannot decide.  There are several different limitations on a court’s power to hear a case, but for our purposes in discussing Nike, the justiciability concepts of standing and mootness are what we need to focus on.

On January 2nd, Amazon claimed a small victory in its battle with Apple. An Oakland, California judge sided with Amazon when she rejected Apple’s claim that Amazon’s Appstore was committing false advertising.

U.S. District Judge Phyllis Hamilton while there are similarities in the names of the digital application storefronts, Apple has not proved that Amazon has in fact tried to pass itself off as an official Apple app store.

In her order to dismiss the claim, Hamilton wrote, “There is no evidence that a consumer who accesses the Amazon Appstore would expect that it would be identical to the Apple App Store, particularly given that the Apple App Store sells apps solely for Apple devices, while the Amazon Appstore sells apps solely for Android and Kindle devices. Further, the integration of Apple devices has more to do with Apple’s technology than it does with the nature, characteristics, or qualities of the App Store.”

With cease and desist letter, Hasbro has shut down an unauthorized online multiplayer game that featured the characters from their widely popular cartoon, My Little Pony: Friendship is Magic.

ToastyJustice , the moderator of My Little Pony Online (found at MLPonline.net) stated on their website that:

Just over a month ago, we released our first episode of our game. After a year and a half since the outset of the project, we were happy to present our first Episode to you. Though our servers suffered, we were pleased with the response and the great feedback we received!

Shortly after that–exactly 4 weeks prior to now–we received a complaint about copyright and trademark infringement. We initially dismissed this it was most likely submitted by some trolls, as they could be submitted anonymously by anyone through our CDN. However, we continued to look into it, and by the following Monday, found it to be very real…

The matter was quite strict: there was little that we could do to work around it. We removed the download link and development was suspended. Discussions continued through the month, but it came down to one fact: MLP:Online had come to an end.

Crocs, Inc. (NASDAQ: CROX) announced earlier today that Chinese courts have sentenced 18 individuals to a total of more than 46 years in prison for producing and selling counterfeit Crocs goods. Seventeen individuals were convicted of counterfeiting, and two of the 17 also were convicted of offering bribes. Another individual also was convicted on bribery charges in connection with production of counterfeit Crocs™ shoes. In addition to prison sentences, the above men together face fines totaling RMB 2,832,500 (approximately $450,896).

These cases were originally tried by the Shanghai Yangpu District Court and the Dongguan City No. 1 District Court. Decisions were made between March 13 and September 27, 2012.  Some 128,752 pairs counterfeit Crocs products valued at roughly RMB 60,000,000 (approximately $9,550,690) been seized as a part of these recent investigations.

Throughout China, however, the amount of counterfeit trading involve Crocs is much greater. Through September 2012, more than 600,000 pairs of counterfeit Crocs shoes have been confiscated through factory raids and customs seizures, mainly in Guangdong, Shanghai and Fujiang Province. Typically the number of products confiscated is only the tip of the iceberg.  Counterfeiting is a terrible problem for companies who must constantly remain vigilant.

Stark Wine LLC has been granted a preliminary injunction against Diageo Chateau and Estate Wines. The injunction requires Diageo Chateau to immediately cease the sale, promotion, advertisement and distribution of its line of wines named “Stark Raving” within Sonoma County, California.

Stark Wine is based in Healdsburg, California, and hand-crafts their wine with minimal intervention. They use steam cleaning rather than washing their grapes, and rely on reputable local farmers for their stock. They produce Zinfandel, Chardonnay, Grenache Blanc, Grenache and Syrah and package all their wine in recycled glass bottles.

In a statement released by Stark Wine, they stated that the law suit was filed because “both brands start with the word ‘Stark’ and it was worried about consumer confusion. We don’t want consumers to think that Stark Raving wine is made by Stark Wine as Diageo floods the market with its Stark Raving wine.”

A non-profit industry group that focuses on reliable business practices, the Center for Responsible Enterprise and Trade (CREATe.org), released a white paper recently that outlined the problem with counterfeits in various industries and why they are harmful. CREATe.org speaks of the problem with counterfeit parts and pirated goods within big supply chains, and the various risks that are associated with these problems. They also list practical advice so that companies may thwart counterfeits, and reduce the risks in the work place.

CREATe.org is based in Washington, D.C., and dedicated to assisting companies and their suppliers and business partners to reduce counterfeiting, theft, piracy and corruption in the business community. It is their belief that by sharpening practices within the supply chains, companies and global economy can strive. To achieve these goals in the different industries, CREATe.org has created CREATe Leading Practices for IP Protection and CREATe Leading Practices for Anti-Corruption. They offer practical assessments and evaluations, as well as online training and resources to help avoid and prevent counterfeiting.

President and chief executive officer, CREATe.org, Pamela Passman, explained the need for the report, stating that: “Global supply chains are incredibly complex and open to vulnerabilities at every point. Increased focus and the sharing of leading practices are needed to help safeguard the health and safety of consumers while protecting intellectual property rights across the supply chain.”

Mexico’s Secretary of Economy Bruno Ferrari deposited his country’s instrument of accession to the Madrid Protocol for the International Registration of Marks with WIPO Director General Francis Gurry on November 19, 2012, bringing the total number of members of the international trademark system to 89.  The treaty will enter into force with respect to Mexico on February 19, 2013. The Madrid System for the International Registration of Marks (Madrid system) offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.

Mr. Gurry welcomed Mexico’s accession, noting that “Mexico is the third country in the Latin American region to join the Madrid trademark filing system.  Its accession to the Madrid Protocol will assist enterprises in Mexico that are seeking to expand their markets overseas.  It will also assist WIPO in achieving its objective of transforming the Madrid System into a system with truly global reach.” He also congratulated Mexico’s Institute of Industrial Property (IMPI) and its Director General, Dr. Rodrigo Roque, for putting in place state-of-the-art practices that are supported by a modern information technology infrastructure and by competent human resources.  Mr. Gurry said that “Mexico’s legal and institutional framework will guarantee the successful implementation of the Madrid Protocol in Mexico,” noting that IMPI is among the top fifteen IP offices receiving the highest number of trademark applications worldwide.

The technology that involves cooling fact cells to reduce the amount of body fat is the center of a new trademark complaint. Zeltiq Aesthetics, Inc has filed a claim against Dr. Marco Hallerbach, MD, and Dr. Hallerbach & Associates, Inc. claiming that they are not only unlawfully using a procedure they own, but that in so doing they are infringing various trademarks owned by the company. The complaint was filed in the United States Federal District Court for the Middle District of Florida, Tampa Division on October 9, 2012.  Zeltiq also filed a Motion for Preliminary Injunction simultaneous with the filing of the complaint, which requests an injunction to stop Dr. Hallerbach’s advertising and to prevent him from using any of Zeltiq’s trademarked products.

Zeltiq Aesthetics is a medical technology company that focuses on developing products that utilize its cooling technology. The procedure in question is called CoolSculpting, with the technology behind it called Cryolipolysis. It is an aesthetic procedure that is non-invasive, and supposedly breaks down the body’s fat cells. According to Zeltiq’s complaint, the technology permits the selective reduction of fat bulges through by a controlled cooling of subcutaneous fatty tissue. “The adipose tissue is broken down and absorbed by the body through a natural, biological process known as ‘apoptosis’ to gradually reshape body contours,” the complaint explains.  Zeltiq owns patent rights and exclusive license to this procedure.

Zeltiq’s Cryolipolysis was approved by the United States Food and Drug Administration in September of 2010 to be used on the body’s flank region, otherwise known as love handles. In May 2012, it was approved to be used on the abdomen as well.

A well-known sandwich and a little punctuation mark are at the heart of a lawsuit between a Philadelphia restaurant and the United States Patent and Trademark Office. Campo’s Deli in Philadelphia, is suing the director of the Patent and Trademark Office, David Kappos, in response the USPTO’s rejection of their application, which sought to trademark the name “Philadelphia’s Cheesesteak.” The complaint was filed on October 4, 2012, in the United States Federal District Court for the Eastern District of Pennsylvania.

In 2009, Campo’s Deli, a sandwich shop run by Mike and Denise Campo and their children Mike and Mia, applied to trademark the name “Philadelphia’s Cheesesteak.” Their application was rejected in 2010, they appealed, and it was rejected once again after a hearing in March 2012.

On August 7, 2012, the Trademark Trial and Appeals Board (TTAB) at the United States Patent and Trademark Office issued an opinion affirming the Trademark Examiner’s rejection of the Campo’s Deli trademark.

With every October comes a new Term at the United States Supreme Court.  Arguments are underway in the October 2012 Term, which will last through the end of June 2013.  As part of our continuing look at intellectual property and the United States Supreme Court, here is a bit of a SCOTUS primer on trademark law. For our primer on SCOTUS fair use cases please see Copyright Fair Use Cases of the United States Supreme Court.

In 1879 the United States Supreme Court first had the opportunity (and necessity) to address whether Congress had been granted in the Constitution the power to enact legislation to protect trademarks.  See In re Trademark Cases, 100 U.S. 82, 91-92 (1879) (“Are the acts of Congress on the subject of trade-marks founded on any rightful authority in the Constitution of the United States?”).

In so deciding this issue the Supreme Court addressed whether Congress could act pursuant to the Intellectual Property Clause, and then turned to whether Congress could act pursuant to the Commerce Clause.  The Supreme Court ultimately answered the first question in the negative and decided not to directly answer the second question posed. The Supreme Court did, however, give something of an advisory opinion when it pointed out that the Congress could regulate trademarks pursuant to their power to regulate interstate commerce if the regulation pertained not to trade between citizens of the same State, but rather to trade between citizens of different states.

Regular readers of my rants have figured out by now that I am a scotch drinker, a bit of a nerd, and have a penchant for the quirky (and good Scrabble® words). Now comes another confession- I’m a horror film aficionado.  My favorite movie of all time is George Romero’s 1968 Night of the Living Dead, so when I came across the concept of a “zombie” trademark, I found myself once again squealing with glee and clapping my hands like a schoolgirl.

The Trademark Office classifies marks as live or dead, which dovetails nicely into the zombie concept.  But a zombie trademark does not refer to the recent increase in popularity of zombie culture or the slew of trademark applications it has inspired.  It actually refers to the revival of an otherwise “dead” mark. This does not involve patching together pieces of dead trademarks to create a new living one, as Dr. Frankenstein would presume, but it does require resurrecting a mark from the trademark graveyard.