Posts Tagged: "dilution"

Trademark Food Fight: Did In-N-Out Burger Abandon the Triple Triple?

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.

Jennifer Ko Craft

October 5, 2017

In-N-Out files trademark suit against Smashburger over cheeseburger ad campaign

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.

Steve Brachmann

September 5, 2017

Atari files suit against Nestlé for Kit Kat ad campaign that infringed on Breakout video game

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.

Steve Brachmann

August 22, 2017

Almost Famous: Many Trademark Owners Find Dilution Claims Out of Reach

In a dilution claim, a trademark owner asserts that their famous mark is entitled to protection from use that causes harm to the mark’s reputation or distinctiveness. In effect, the trademark owner is saying that the mark is so famous that even use in connection with unrelated goods or services would result in an affiliation with its business and a resulting decrease in the value of the mark. For example, you are inviting a dilution claim if you begin selling McDonalds Cars or Chevy Hamburgers. But recent dismissals of trademark dilution claims at the motion to dismiss stage highlight that plaintiffs must be prepared to show early on that their mark is a “household name” before they can pursue their claims. These decisions also show that defendants are more often turning to this early path to attack an exaggerated claim to fame.

Eric Ball & Carly Bittman

December 21, 2016

Land O’ Lakes – No Harm, No Foul

Addressing the issue of whether a famous mark can be diluted by the identical mark of a much smaller company, the US Court of Appeals for the Seventh Circuit decided that the district court rightly dismissed trademark infringement claims and cross-claims where neither party had been, or was likely to be, harmed by the other. Hugunin, et al. v. Land O’ Lakes, Inc., Case No. 15-2815 (7th Cir., Mar. 1, 2016) (Posner, J).

Margaret Duncan

May 13, 2016

We Are Just Too Pretty to get Sued for Infringement

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.

Beth Hutchens

April 23, 2013

U.S. v. Alvarez: Trademark Dilution and the First Amendment

Earlier this week, the United States Supreme Court handed down its opinion on the Stolen Valor Act (18 U.S.C. §§704). This poor little First Amendment case has been largely ignored for the simple fact that it was published just before the Healthcare Decision. U.S. v. Alvarez answers the question of whether it is acceptable to lie about receiving military awards, more specifically, the Medal of Honor. What is interesting about the opinion for us Intellectual Property nerds is that the concurrence and the dissent both appear to suggest that the harm resulting from such behavior is analogous to dilution in trademark law.

Beth Hutchens

July 3, 2012

Trademark Tarnishment: Trademark Law’s Dirty Little Secret

Dilution by blurring slowly whittles away at a trademark’s distinctiveness whereas dilution by tarnishment is an attack on the reputation and positive image of a mark. Here’s the thing: dilution by tarnishment is an entirely separate analysis from your garden variety Likelihood of Confusion analysis. But before click up your heels and scream “Yahtzee!” you should know that it’s really hard to make a tarnishment argument stick so don’t get all antsy to trot this one out. The standard is all over the place because it’s typically analyzed under a state’s dilution laws (if there are any). And I hate to do that lawyer “well, it depends” thing, but in this case, a tarnishment cause of action really does depend on the jurisdiction.

Beth Hutchens

October 21, 2010

IHOP v. IHOP: House of Pancakes Sues House of Prayer

On September 3, 2010, IHOP IP, LLC, a Delaware limited liability company, the owner of various IHOP registered trademarks in the United States, sued the International House of Prayer alleging various trademark infringement theories. The plaintiff IHOP brings two causes of action against the defendant. The first being the claim that the defendant through the use of various IHOP marks is engaging in dilution under 15 U.S.C. 1125(c). The second claim is straight trademark infringement under 15 U.S.C. 1114. Notably, the plaintiff IHOP did not bring a cause of action alleging likelihood of confusion, which is typically a ubiquitous cause of action in these types of cases.

Gene Quinn

September 30, 2010

The Right of Publicity: A Doctrine Gone Wild?

The recent dispute involving Lindsay Lohan and ETrade provides an opportunity for critically examining the right of publicity. One defense that ETrade could raise would be parody since it is common practice – and a strongly protected free speech right – to make fun of people. Nevertheless, courts have distinguished between simply making fun of someone and making fun of someone in order to sell a product.

Andrew Beckerman-Rodau

March 11, 2010

American Idol Sues Stripper Idol Over Trademark

The owners of the trademarks on the popular American Idol TV program, FremantleMedia North America, Inc., have filed a lawsuit in the United States District Court for the Western District of Texas, Austin Division. This lawsuit came to my attention as I was watching Bill O’Reilly’s show on FOX, and his legal panel was discussing the merits of the lawsuit…

Gene Quinn

January 14, 2009