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Posts Tagged: "trade dress infringement"

Trade Dress Considerations for Food and Beverage Products

Companies trying to compete for supermarket shelf space and consumer attention frequently turn to packaging and product designs that will stand out. If the product succeeds, one unfortunate side effect for the brand owner is the market can become flooded with “me too” products that attempt to ride on the coattails of that success. How do owners of unique products protect themselves? Trade dress protection is one legal tool that companies should consider.

Bad Spaniels Make Bad Law: Ninth Circuit Says Dog Toy is an Expressive Work Entitled to First Amendment Protection

The U.S. Court of Appeals for the Ninth Circuit held that a squeaking dog toy resembling a bottle of Jack Daniel’s whiskey is an expressive work entitled to First Amendment protection.  VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. Mar. 31, 2020).  The court  reversed a bench trial verdict that the toy infringed and diluted the JACK DANIEL’S trade dress and remanded for further reconsideration by the district court.  Before the district court may find that the toy infringed Jack Daniel’s famous trade dress, the Ninth Circuit held that the district court must first apply the Second Circuit’s Rogers test, which will require it to consider whether VIP’s use of the trade dress was artistically relevant to the toy’s expressive character, and whether VIP’s use of the trade dress explicitly misleads consumers as to the source of the toy.  The Rogerstest, though, has only been applied to expressive works such as books, songs, video games and movies; it has never been applied to consumer products like handbags and perfume, even if those products were intended as parodies.  The Ninth Circuit’s decision expands the scope of First Amendment protection far beyond traditionally expressive works, and risks exposing a wide variety of brand owners to infringements based on alleged parody.

YETI Lawsuit Asserts Breach of Settlement Agreement Claims Against Wal-Mart

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

Crocs Chase Dawgs With Motion for Sanctions After Allegations of Bad Faith Litigation

On December 1st, Niwot, CO-based shoe manufacturer Crocs, Inc. (NASDAQ:CROX) filed a motion for sanctions against Las Vegas, NV-based rival firm USA Dawgs Inc., which outlined a series of harassing legal moves in which Dawgs has engaged in recent years. Crocs is asking the District of Nevada to award Crocs costs and attorneys’ fees incurred by a lawsuit which Crocs alleges that Dawgs has pursued in bad faith.

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.

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.

Willful trademark infringement alleged after defendant admits infringement, promises to cease

According to the complaint, when the 2015 arose the defendant gave written representations that they had indeed infringed on the trademarks and trade dress of WRB, that the trademarks and trade dress were valid and enforceable, that they would cease any further use of the trademarks or trade dress, and that they promised to pay costs and attorneys’ fees in addition to any remedies available under the law. Unfortunately, the willful trademark infringement did not stop there according to WRB.