Posts Tagged: "trademark law"

The injunction, approved by Judge Rogers means that Diageo Chateau must stop production and sales within Sonoma County, California, which was the geographical limitation put on the injunction by Judge Gonzalez. The issuance of the preliminary injunction is contingent upon the plaintiff filing proof of issuance of a bond in the amount of $500. That is not a mistake, the bond required was only $500.

The white paper outlines just how these counterfeit parts are entering the global supply chains. Even though there are government regulations and precautionary measures taken by the industry, there seems to be a growing problem with counterfeit parts that can cause damage and even fatalities. The introduction of the whitepaper claims: “The complex and distributed nature of supply chains has created vulnerabilities for companies and organizations. Governments and regulations can only go so far. As such, industry can benefit from taking a more proactive approach to protecting the supply chain from counterfeit products and pirated materials.”

Mexico’s Secretary of Economy Bruno Ferrari deposited his country’s instrument of accession to the Madrid Protocol for the International Registration of Marks with WIPO Director General Francis Gurry on November 19, 2012, bringing the total number of members of the international trademark system to 89. The treaty will enter into force with respect to Mexico on February 19, 2013. The Madrid System for the International Registration of Marks (Madrid system) offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.

The technology that involves cooling fact cells to reduce the amount of body fat is the center of a new trademark complaint. Zeltiq Aesthetics, Inc has filed a claim against Dr. Marco Hallerbach, MD, and Dr. Hallerbach & Associates, Inc. claiming that they are not only unlawfully using a procedure they own, but that in so doing they are infringing various trademarks owned by the company. The complaint was filed in the United States Federal District Court for the Middle District of Florida, Tampa Division on October 9, 2012. Zeltiq also filed a Motion for Preliminary Injunction simultaneous with the filing of the complaint, which requests an injunction to stop Dr. Hallerbach’s advertising and to prevent him from using any of Zeltiq’s trademarked products.

A well-known sandwich and a little punctuation mark are at the heart of a lawsuit between a Philadelphia restaurant and the United States Patent and Trademark Office. Campo’s Deli in Philadelphia, is suing the director of the Patent and Trademark Office, David Kappos, in response the USPTO’s rejection of their application, which sought to trademark the name “Philadelphia’s Cheesesteak.” The problem? There are already registrations for nearly identical marks — just without the apostrophe.

In 1879 the United States Supreme Court first had the opportunity (and necessity) to address whether Congress had been granted in the Constitution the power to enact legislation to protect trademarks. Since 1879 there have been many cases involved trademark issues that have wound up the top Court in the United States. But a summary start to finish of all Supreme Court trademark cases is even a bit ambitious for us in a single article. Thus, what follows is a summary of those trademarks issues that have reached the Supreme Court over the last generation.

Unlike patents and copyrights, a trademark can exist in perpetuity so long as it is being used. And a mark has to be used to stay alive. But sometimes, and for a variety of reasons, a company will stop using a mark. This is known as “abandoning” it. A trademark can be abandoned while the application is still pending or it can be abandoned later after it has been in use for some time. Abandonment can happen for a few reasons, for example, failure to respond to an Office action or for failure file a required affidavit. But today, we’re talking about abandonment for non-use. Abandonment can be a tricky concept, but in terms of non-use, a trademark will be abandoned when an owner stops using it with no intention of resuming use of the mark. But abandonment is not necessarily permanent, hence the zombie nickname. A once dead trademark can spring back to life if a few conditions are met.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the selection of nine additional law schools to join the Trademark Law School Clinic Certification Pilot Program this fall. The program allows law students to practice trademark law before the USPTO under the guidance of a faculty clinic supervisor.

Still, it seems a little reckless to me to select a trademark that incorporates “ARMOR” or “ARMOUR” when entering an industry that has a heavyweight such as Under Armour with a large trademark portfolio and the means to enforce that portfolio. Is the name BODYARMOR so critical to the success of the company and selling their drinks? I doubt it. So then why run the risk of incurring the wrath of a well funded and well known trademark owner? It just doesn’t make business sense if you ask me. That is why I always advise companies to consider doing a rather exhaustive trademark search and obtaining an opinion from an attorney prior to spending money on adverting and marketing campaigns.

According to the FTC, coupons are a big business.  There are more than 3,000 manufacturers that annually distribute nearly 330 billion coupons that are worth an estimated $280 billion. With this type of marketplace it is easy to understand why opportunistic criminals would be interested in the industry, particularly given the economic plight of the moment caused by the Great Recession, which we cannot seem to escape.  Tough times cause people to be more cost conscious, but this also provides the perfect cover for con artists and scammers.  

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.

Criminals on all levels — from opportunistic, small-time thieves to major drug cartels — are finding that the penalties for intellectual property crimes pale in comparison to the penalties they would receive for trafficking drugs and engaging in other illicit activities. At the same time, the profit margin for counterfeit software, as well as for other counterfeit goods, is extremely high. So the combination of great riches, relatively low penalties and a low likelihood of being caught and you can see why criminal enterprises, including terrorist networks, are becoming major players in the counterfeit software black-market.

Colombia became the 87th member of the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks by Vice President Angelino Garzón with WIPO Director General Francis Gurry on May 29, 2012. Colombia is the second country in the Latin American region to join the Madrid trademark filing system. The treaty will enter into force with respect to Colombia, on August 29, 2012. The Madrid System for the International Registration of Marks (Madrid system) offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.

Trademark owners who attempt to file and prosecute their own trademark applications are really being pennywise and pound foolish. I appreciate the reasons for filing your own trademark applications, particularly in this economy. Many times, trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non-attorneys.

Which brings us to the recent gem of an opinion from the Sixth Circuit. Maker’s Mark has been using red sealing wax on its bourbon bottles since the 1950’s, which it trademarked in 1985 (Reg. No. 1469925). Then, in 1997, the company making Jose Cuervo brand tequila started using red sealing wax on some of its special bottles, which were sold beginning in 2001. Needless to say, the Kentucky bourbon company took issue with the tequila company’s use of dripping red sealing wax and requested that such practice immediately stop. Cuervo said “Nope”, so in 2003, Maker’s Mark sued them. It appears that Cuervo stopped using the dripping wax seal in favor of a straight edged seal around 2006, but it countersued to cancel the mark.