Posts Tagged: "trademark law"

n a memorandum decision handed down July 2, 2014, by the U.S. District Court for the Southern District of New York, most of the plaintiff claims in case 7:13-cv-02880, Leason Ellis LLP v. Patent & Trademark Agency LLC have been allowed to proceed in the face of the defendant’s motion to dismiss. The multi-count Federal Complaint filed in April 2013 alleged that the defendants marketed their promotional materials to cause consumers to wrongly believe that it is an official governmental entity. The complaint asserted claims of federal unfair competition under 15 USC 1125(a), federal false advertising under 15 USC 1125(a) and New York statutory law, unfair competition under New York common law, deceptive acts and practices under New York statutory law, and tortious interference with prospective economic relations. The complaint also specifically alleges that the defendants are engaged in the unauthorized practice of law.

While this decision will be widely cheered by many who are concerned with political correctness, there is absolutely no doubt in my mind that from a legal standpoint this decision is clearly wrong… This is not to say that the trademarks in question are not hurtful to some, but the law simply requires direct evidence that the relevant audience, in this case Native Americans, found the term disparaging when the trademarks were actually registered. On this critical question there was simply not competent legal evidence, which is not to say that the term in and of itself isn’t offensive or it hasn’t been used as a racial slur. Based on the appropriate legal standard those things simply are not relevant.

But deciding to apply for a federal trademark registration isn’t the end-all-be-all. Frequently a name or mark is selected for a business without a trademark search ever being done. That can be extremely costly if it is later learned that some other individual or company has been already been operating under that name or mark. Even in the situation where no trademark infringement liability attaches, the second comer will need to stop using, give up on any good will already developed and move on. This can be quite costly, just in terms of recalling and revising advertising campaigns, letterhead, business cards and the like. The best advice is, therefore, to always do a trademark search and file for a United States Trademark.

You have probably had circumstances when you have positively associated with a certain trademark. Perhaps you were traveling and had the option to eat at one of several restaurants… A trademark is a significant asset. A trademark not only becomes your company seal, but it is how consumers will relate to your goods or services. If you have high quality goods and services for a reasonable price then customers will associate your company with positive feelings and memories, so the next time they see your trademark they will conjure up in their minds a whole host of positives. This conjuring up of positive feelings, emotions and memories of satisfaction can be powerful.

It’s amazing how fast a successful product is counterfeited and how brazen the copying is. The figure above illustrates what counterfeiting looks like. Counterfeiters copy everything….except price and quality. They copy the shape, the color, and the style of the product. They copy the images straight from your Kickstarter campaign. They copy the packaging you designed and the name you developed. They cut your price anywhere from 10% to 1,000%. Their quality is at best sub-standard and at worst dangerously defective. I’ve personally purchased counterfeits that have broken on first use and I’ve read reports of counterfeits catching on fire when plugged in.

The firm is back at it again in 2013 taking on another alleged trademark scam operation after successfully prevailing in a similar claim just over 1 year ago against USA Trademark Enterprises. See Trademark Scammers Out of Business Thanks to Leason Ellis. In that case, 7:12-cv-0620 (SDNY), alleged that the defendants had engaged in false advertising and unfair competition by marketing a so-called “catalog” of trademark registrations. The case settled for $10,000, which the firm donated to the United States Patent and Trademark Office (USPTO). Thus, the defendants would do well to stand up and take notice. It seems that Leason Ellis is living by the the words that mark the youth of my generation — “We’re not gonna take it, no, we ain’t gonna take it, we’re not going to take it any more!”

Anybody who has any involvement with Intellectual Property (“IP”) knows full well that protecting IP means a multi-step process. Obviously, step one is the conception of the invention, idea, trademark, trade name, or other innovation where protection might be necessary. Step two is the decision about what to do with the “new” idea, etc. in terms of the need to try for exclusivity on it –or not. Many “new” things do not need IP protection – and other “new” things may not qualify for it. If the “new” idea fits into the area where protection is desirable and it qualifies, then the next step is to seek legal protection. Of course, such protection will have a cost – whether or not the protection is sought by the inventor/conceptualizer himself/herself or itself (in the case of an organization) or assistance of counsel is required.

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.

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. Now FOX wants unauthorized sellers to cease and desist.

In its complaint, UA stated that Nike started an ad campaign in the latter months of 2012 that misappropriated UA’s trademark by pretty much making the phrase “I WILL” the focal point of its ads on its FACEBOOK and YouTube video pages, as well as on nike.com. In particular, Nike has used video footage in its ads that has the catch phrase superimposed throughout the video in big bold letters. UA argues that Nike was well aware of its ongoing, long-term use of the “I WILL” trademark (much in the same way that most people in the industry know that Nike is well known for its phrase “JUST DO IT”) and suggests that Nike’s use of “I WILL” not only does harm to UA but to the public as well because customers currently associate the phrase with UA.

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.

The Court went to the actual terms of the Covenant to determine if Nike had met this very tough burden burden. In this case, though, Nike did. The terms of the Covenant were unconditional and irrevocable. They prohibited Nike from making any claim or demand, and even went so far as to shield YUMS’ distributors and customers. This coupled with the fact that YUMS did not provide a shred of evidence that it had plans to market a shoe that the Covenant wouldn’t cover was enough to convince the Court that the possibility of future harm was just too remote here.

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.”

Though the owners of the MLP Online site seemed to be aware of the fact that their game was infringing on the Hasbro trademark, they went ahead and constructed the game anyway. However, they are not upset with Hasbro for issuing the cease and desist. The moderator of the online fan site stated that, “Hasbro is not to be blamed here. As per U.S. Trademark law, as soon as an infringement comes to light, they are obligated to defend the trademark, or they will lose it. They had no choice in the matter, regardless of what they thought of the project or how it benefited them. At this time, our game is no longer in development.”

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).