Posts Tagged: "likelihood of confusion"

Judge Denies Beyoncé Motion for Summary Judgment in Feyoncé Trademark Case

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.

OEM Trademarks in the AfterMarket: Exploring the Boundaries

While there are certainly limits on how—and how much—aftermarket sellers can use OEM trademarks to communicate key information about aftermarket parts, the legal boundaries for aftermarket sellers are not always clear. And, in the automotive industry, the question of legal boundaries is perhaps most intriguing when the trademark concerned is one of product configuration. Indeed, several U.S. auto companies own incontestable trademarks registrations for various source-identifying parts of their automobiles such as grilles, headlights, and fenders. In light of such perpetual trademark rights in these part configurations, how can aftermarket sellers offer visually identical replacement grilles, headlights or fenders without significant risk of a trademark infringement claim from the auto companies?

‘Cockygate’ Trademark Row Causes Heartbreak in U.S. Indie Romance Novel Publishing Industry

In recent weeks, the U.S. romance publishing industry has been roiling over a trademark issue which has been less-than-affectionately referred to as Cockygate. According to various news reports, romance writer Faleena Hopkins has been asserting a trademark she registered with the U.S. Patent and Trademark Office to prevent the use of the word “Cocky” in the titles of adult romance novels which have been published by other writers. This trademark policing campaign has sparked public outcry and has prompted action from industry organizations like the Romance Writers of America (RWA), which has consulted with an intellectual property lawyer to seek advice regarding the issue.

TTAB Says No Likely Confusion Between Rap Producer Dr. Dre and OB/GYN Specialist Dr. Drai

On May 3rd, the Trademark Trial and Appeal Board (TTAB) issued a decision in a trademark opposition proceeding which was petitioned by Andre Young, the rapper and record producer better known as Dr. Dre. The rap mogul filed the trademark opposition to challenge the registration of federal trademarks filed by Draion Burch, an obstetrics and gynecology (OB/GYN) medical specialist who had filed applications to protect trademarks related to his nickname, Dr. Drai. The TTAB’s found that, although Dr. Dre’s name has sufficient fame for trademark protection, the opposer did not prove a likelihood of consumer confusion or false suggestion of a connection.

Colgate-Palmolive Files Trademark Suit Over Use of ‘360’ Branding on Toothbrushes, Oral Care Products

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.

Jury Awards San Diego Comic Convention Corrective Advertising Damages Against Salt Lake Comic Con Organizers

A jury in the Southern District of California entered a special verdict form in a trademark case playing out between a couple of American pop culture conventions. The verdict shows that the jury found in favor of plaintiff San Diego Comic Convention against a group of defendants using the “COMIC-CON” mark to publicize a similar event organized in recent years in Salt Lake City, UT. The verdict also awards $20,000 in corrective advertising damages to San Diego Comic Convention for defendants’ infringement of multiple trademarks held by the San Diego event organization.

Mattel fais in Japanese trademark opposition to block ‘Salon BARBIES’

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.

Characters for Hire cite to Naked Cowboy in fighting Disney’s claims of copyright, trademark infringement

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.

The Trademark Management Process: Getting it Right in Challenging Times

The trademark landscape is evolving rapidly, with both brand owners and trademark professionals trying to keep up. The changes are mostly driven by the steep rise in trademark applications — there was a 13.7% increase in trademark filing activity in 2015, according to WIPO — and shrinking budgets as all involved are tasked with doing more with the same or fewer resources. Trademark professionals and brands alike need to be consistent in the way they approach search and make use of the same practices they have used in the past to avoid risk, while considering challenges they face and the way that the trademark landscape is evolving.

2nd Circuit upholds most of district court judgment in trademark case brought by Swiss army knife maker Victorinox

On Tuesday, September 19th, Victorinox AG, the manufacturer of the well-known Swiss army knife, saw a successful outcome of an appeal decided by the U.S. Court of Appeals for the 2nd Circuit, which affirmed in part a judgment in a trademark case filed in the Southern District of New York. The 2nd Circuit’s decision upholds a $1.75 million judgment entered in district court against Dallas, TX-based e-commerce company B&F System over the sale of red-handled, multi-functional pocket knives that infringed upon Victorinox’s registered trademark.

DAIRY PRIDE Act would clear up consumer milk confusion between dairy products and plant-based beverages

Both the U.S. House of Representatives and the U.S. Senate are currently contemplating versions of the Defending Against Imitations and Replacements of Yogurt, Milk and Cheese to Promote Regular Intake of Dairy Everyday (DAIRY PRIDE) Act; the House version is bill H.R.778 and the Senate’s is S.130. If passed, the bill would amend the Food, Drug, and Cosmetic Act to prohibit the sale of any food using the market name of a dairy product, is not the milk of a hooved animal, is not derived from such milk and doesn’t contain such milk as a primary ingredient. The findings section of the bill notes that the U.S. Food and Drug Administration (FDA) already has regulations finding that milk is “the lacteal secretion, practically free from colostrum, obtained by the complete milking of one or more healthy cows.” The Senate bill is originally sponsored by Sen. Tammy Baldwin (D-WI) while the House version is sponsored by Rep. Peter Welch (D-VT). The House bill includes five original co-sponsors: Rep. Michael Simpson (R-ID); Rep. Sean Duffy (R-WI); Rep. Joe Courtney (D-CT); Rep. David Valadao (R-CA); and Rep. Suzan DelBene (D-WA).

Music Artist will.i.am Cannot Trademark “I Am”

In re i.am.symbolic, llc, William Adams, better known by his stage name “will.i.am”, was refused registration of a Trademark for “I AM” on the ground of a likelihood of confusion with registered marks. The Federal Circuit affirmed the Trademark Trial and Appeal Board… Identical registrations for the same or similar goods may present overwhelming evidence of likelihood of confusion, regardless of other factors supporting registration.

Edwardsville Pierogi Festival alleges tortious interference over trademark allegations made by Whiting Pierogi Fest

In order to keep operating under the “Pierogi Festival” name, the Edwardsville committee has filed a suit against the coordinators of the Whiting Pierogi Fest in the Middle District of Pennsylvania. A complaint filed by the Edwardsville Hometown Committee against the Whiting-Robertsdale Chamber of Commerce seeks a declaration that “there is no possibility of consumer confusion between the Edwardsville event and the suburban Chicago event.” The Edwardsville committee is also seeking relief for tortious interference. It alleges that the Whiting-Robertsdale chamber has willfully interfered in business relationships forged by the Edwardsville committee to finance the Edwardsville Pierogi Festival.

Federal Circuit says Will.i.am not allowed to trademark I AM

William Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. Adams’ company – i.am.symbolic, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25. The trademark examining attorney refused registration of the standard character trademark I AM on the ground of likelihood of confusion with existing registered trademarks. The Trademark Trial and Appeal Board affirmed. Because the TTAB did not err in its likelihood of confusion conclusion the Federal Circuit, in an opinion by Judge Lourie (joined by Chief Judge Prost and Judge Schall) affirmed.

Federal Circuit returns dispute over Dale Earnhardt trademark rights back to USPTO

The Federal Circuit heard the case of Earnhardt v. Kerry Earnhardt, Inc., where Teresa Earnhardt appealed from the dismissal of its opposition to the trademark registration of EARNHARDT COLLECTION by Kerry Earnhardt, Inc (“KEI”). Teresa Earnhardt is the widow of Dale Earnhardt and the owner of common law rights and trademark registrations for the mark DALE EARNHARDT in typed and stylized form, in connection with various goods and services. Kelly Earnhardt is the co-founder and CEO of KEI, the son of Dale Earnhardt, and the stepson of Teresa Earnhardt.