Posts Tagged: "dilution"

On June 25, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Blumenthal Distributing v. Herman Miller, Inc. in which the appellate court reversed some parts of a Central District of California ruling on trade dress and trademark infringement claims related to office chairs sold by Herman Miller, and affirmed others. The Ninth Circuit’s decision discusses at length the issue of functionality, an area of trademark law which is undefined by statute and is notable for overturning parts of the district court decision because of an erroneous jury instruction based upon the Ninth Circuit’s own model rules. The decision also includes a partial dissent by Circuit Judge Michelle Friedland on the issue of dilution, with Judge Friedland arguing that Herman Miller hadn’t proven the requisite fame to prevail on its trademark dilution claims.

The Intellectual Property Owners Association and four other associations have filed amicus briefs with the Supreme Court in the case of Romag Fasteners v. Fossil, Inc., Fossil Stores, I. Inc., Macy’s Inc, and Macy’s Retail Holdings, Inc. The case will examine whether lower courts have discretion under the Lanham Act with respect to how to award damages in trademark infringement cases, or whether courts are required to establish that the infringement was willful before awarding profits. While the American Bar Association (ABA), the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Law Association of Chicago (IPLAC) support adopting a more flexible approach that would not make willfulness a prerequisite to recover profits, IPO argues that the plain language of the statute necessitates such a requirement.

On Sunday, September 30th, U.S. District Judge Alison J. Nathan of the Southern District of New York signed a memorandum opinion and order that was officially entered the following day in a trademark case brought by pop music superstar Beyoncé Giselle Knowles-Carter against Feyonce, Inc., a developer of merchandise marketed to engaged people using the brand name Feyoncé. Although the court found no dispute that the mark “FEYONCÉ” was chosen with the intent to capitalize on the famous “BEYONCÉ” mark, Beyoncé’s motion for a permanent injunction couldn’t be granted on summary judgment because there remains a genuine dispute of material fact regarding whether a jury would find that a rational consumer would mistakenly believe an affiliation between the two brands.

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…

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.

At issue in the trademark infringement suit is Amazon’s sale of counterfeit wheel center caps bearing distinctive Mercedes-Benz trademarks… Daimler argues that Amazon “facilitates the sale of an exorbitant number of counterfeit and infringing goods” through its platform, counterfeit activity which has increased since 2015 when the company began inducing Chinese manufacturers to list on its U.S. and European e-commerce platforms. Daimler notes that lawsuits over counterfeit products have been filed against Amazon by well-known consumer brands including a February 2017 suit filed by French luxury goods brand Chanel against the American e-commerce giant.

Characters for Hire also argued that the trademark infringement claims lacked the essential element of confusion. Citing to Naked Cowboy v. CBS, a case decided in Southern New York in 2012 involving trademark infringement claims asserted by a Times Square street performer against the use of his likeness in the soap opera The Bold and the Beautiful, Characters for Hire argue that the use of the names of fictional persons are merely descriptive of the entertainment services provided by the defendants. “Indeed, Plaintiff Disney is well aware of the limits of trademark enforceability having successfully defended a claim brought against them for using the famous ‘Caterpillar’ trademark for construction trucks in one of their films,” Characters for Hire argued. This statement references Caterpillar Inc. v. Walt Disney Co., a 2003 case decided in the Central District of Illinois wherein the court ruled that Disney’s use of construction vehicles with Caterpillar logos in the movie George of the Jungle 2 created no likelihood of confusion that Caterpillar either endorsed or sponsored the movie.

Smashburger asserts that In-N-Out stopped using the Triple Triple mark and thus, abandoned its rights, when the triple meat, triple cheese hamburger was rebranded as the 3X3 hamburger over three years ago, the generally understood benchmark for abandonment of rights. And, in my research of In-N-Out’s archived web pages, as far back as 2012, In-N-Out appears to have done exactly what Smashburger asserts – it replaced the Triple Triple hamburger from its Not-So-Secret Menu with the 3X3 hamburger. Magically, references to the Triple Triple mark reappear on its Not-So-Secret Menu in early September of 2017, right after Smashburger sought to cancel In-N-Out’s Triple Triple registration. This leapfrogging of rights may be the saving grace to Smashburger’s rights in its Triple Double mark.

On Monday, August 30th, national fast food chain In-N-Out Burger filed a lawsuit alleging federal trademark infringement and other claims against fellow fast food chain Smashburger. The suit, filed in the Central District of California, alleges that Smashburger has recently adopted certain promotional advertising marks which infringe upon both state and federal trademarks held by In-N-Out. In-N-Out holds a series of 10 federally registered trademarks as well as seven trademarks registered within the state of California.

Atari Interactive Inc. filed a lawsuit alleging trademark and copyright infringement claims against Swiss food and drink company Nestlé SA (VTX:NESN). The suit targets a worldwide and multi-platform advertising campaign produced by Nestlé for the company’s Kit Kat candy bars, which uses elements of Atari’s Breakout video game. The suit is filed in the Northern District of California. Atari’s suit alleges that Nestlé leveraged the look of Breakout for its Kit Kat ad campaign 40 years after Steve Jobs and Steve Wozniak created the game for Atari. “To be clear, this is not a case where a good faith dispute could exist between the rights holder and alleged infringer,” the complaint reads.