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.

So, let’s assume the inventor/conceptualizer takes legal steps to protect the innovation – for the case of this discussion – a trademark.  Such protection involves both common law claims and filing of a registration application at the United States Patent and Trademark Office (USPTO). Legal protection has a cost – not only in money, but also in time and other resources such as market research and prior art and trademark searches.

But, it doesn’t end there.  If you must defend your property – that means litigation.  The costs of litigation may outweigh the value of your trademark.

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.”

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

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.

Senior decision-makers from governments, law enforcement, Customs and the private sector gather in Istanbul, Turkey, for the Seventh Global Congress on Combating Counterfeiting and Piracy, to seek innovative responses to the illicit trade in counterfeit and pirated goods.

Over 850 delegates from more than 100 countries are attending the three-day meeting from 24 to 26 April that is being chaired by the World Customs Organization (WCO) and hosted by Turkish Customs with the support of the Union of Chambers and Commodity Exchanges of Turkey.

United around a common goal to stop the trade in counterfeit and pirated products, the organizers and participants aim to share experiences and devise strategies to counteract this global phenomenon and the harm these goods can have on consumer health and safety, as well as intellectual property rights (IPR).

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.

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.

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.

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.

Recently Inc.com published an article titled The Art and Science of Corporate Icons, which discusses Skeeter the squirrel, who is apparently the only squirrel in the world allergic to nuts. Skeeter is also the cartoon mascot for Skeeter Snacks, a line of nut-free cookies created by Dave Leyrer and Pete Najarian, whose target audience is parents with children who have allergies to nuts.  The Inc.com article, discussed the creation of Skeeter from the drawing board to the finished product, including what aspects of this critter they wanted to depict their brand.  They wanted the product to not only be affordable and appealing to kids but also to show that they were “more playful than other allergen-free brands.”

When speaking of a company’s brand, most people are referring to the company’s name or logo.  But for many companies, it is the mascot that makes up the biggest and most memorable aspect of their brand, not only because it is recognizable to that company and it’s product but also because it gives the company an opportunity to showcase more of a personality behind its brand.

Promoting one’s Brand, including names, logos and mascots have become increasingly popular over the years, so much so that there are now board games and game apps dedicated solely to trivia of the recognition and knowledge of popular company brands.  Needless to say, reading the article on Skeeter Snacks got us thinking about other iconic mascots that have been used by companies over the years to promote their brands and products.  So, based on no scientific research, surveys or opinions other than our own, we compiled the following list of iconic characters that we feel are the best and most memorable, corporate character mascots of all times.  And what better time than the start of a new year (okay, we are less than 5 weeks into one anyway) to add a new Best of the Best list into the mix.

East Carolina University, also known as ECU, has filed a lawsuit against Cisco Systems, Inc., a huge multination communication company. Why take on a networking and communication giant? Because Cisco has been using the phrase “Tomorrow Starts Here” in their newest marketing campaign – a phrase that ECU has been using for over a decade, and has already federally trademarked.

Filed in the North Carolina Eastern District Court, ECU is asking for injunctive relief and damages. Chancellor Steve Ballard of the University said that: “ECU has used the mark ‘Tomorrow Starts Here’ for over a decade, including in national advertisements and publications such as Forbes and Wired. We feel it is essential to take action to protect that defining trademark of our identity and vision.”

ECU is both a public and research university in North Carolina. It was founded in 1907 and started off as a teacher training school. It is now the largest higher-learning institution in eastern North Carolina and the second largest in all of North Carolina. With the enrollment rates continuing to rise, it has been the fastest-growing college in the University of North Carolina system for the last six years running.

There’s something to be said for old school cool. The original Batmobile from the 60’s television show, with sleek design and red detailing, is going up for auction later this month. Unfortunately, in the midst of this superhero coolness, the Batmobile namesake owners are doing battle over replicas of this very car.

DC Comics, a subsidiary of Warner Bros., is pushing a lawsuit against California custom paint and auto body shop, Gotham Garage. Owned and operated by Mark Towle of Santa Ana, Gotham Garage specializes in customizing replicas of the various Batman vehicles. To date, Towle has sold two replicas of the original Batmobile, which was designed by a legend in the custom car business, George Barris. The cars have sold for $80,000 and $90,000, and Towle has also sold another replica that was based off the Batmobile version that was featured in the 1989 movie.

This lawsuit started nearly 2 years ago, when Warner Bros. claimed that Towle’s business was violating copyrights and trademarks that are owned by DC Comics. Both sides have been arguing their case, with DC Comics claiming that the copyright protection includes not only the actual Batmobile, but also the overall look and feel of the car.

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.

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.