Las Vegas Trademark Attorney

Two more high profile trademark infringement lawsuits end with confidential settlements

noreply@blogger.com (Ryan Gile) — Sat, 07 Nov 2009 18:45:00 +0000

McDonald’s reached a confidential settlement with the Lion's Tap – an Eden Prarie, Minnesota restaurant which claimed trademark rights to the mark WHO’S YOUR PATTY in connection with restaurant services (registration application applied for on August 25, 2009) – over McDonald’s Angus burger marketing campaign which used WHO’S YOUR PATTY as a tagline (see billboard below). Original complaint here. Articles on the settlement from NYTimes and AmLawDaily. Duetsblog comments here.

Yahoo also settled on confidential terms the lawsuit filed against it by Mary Kay Cosmetics back in July (blogged here) over pop-up ads appearing from supposedly unauthorized resellers of Mary Kay cosmetics that would appear in the “Yahoo Shortcut” feature of Yahoo’s e-mail services (pictured above). Article on the settlement from Bloomberg.

Weekly Wrapup of Nevada District Court Trademark Lawsuits

noreply@blogger.com (Ryan Gile) — Sat, 31 Oct 2009 19:25:00 +0000

It was a busy week for trademark related lawsuit filings in the U.S. District Court for the District of Nevada (and not a single one of them filed by me).

Price Products, LLC v. Juvenile Solutions, Inc., Case No. 09-cv-02067 (D. Nev. October 27, 2009) (Complaint).

The owner of the DRIPSTIK ice cream/frozen treat holder (pictured above) sues for trademark and trade dress infringement over a knockoff product sold under the name FUN STIK by former Canadian distributor Petite Creations through Petite’s American distributor, Juvenile Solutions. Price Products discovered the products being marketed by Juvenile Solutions at an exhibitor’s booth at the ABC Kids Expo held on September 13-16, 2009, at the Las Vegas Convention Center (which is the only reason why an Idaho LLC is apparently suing a California corporation in Nevada district court).

M Holdings, LLC et al v. Hu Mei Lei, Case No. 09-cv-02071 (D. Nev. October 27, 2009) (Complaint) (Las Vegas Sun Article).
Las Vegas’ newest hotel and casino, The M Resort, files cybersquatting action against Chinese resident Hu Mei Lei over the website wwwmresort.com registered September 5, 2009, and purportedly featuring “provocative images of women” initially and changed thereafter to a typical pay-per-click landing page with links to discount hotel websites.

Rolex Watch U.S.A., Inc. v. Ryska et al, Case No. 09-cv-02093 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).

Rolex sues Las Vegas residents Angelika Ryska and Robert Mayer for counterfeiting over their sale of “replica” Rolex® watches through their website moreaffordable4u.com.

Mellow Beverage Co., LLC v. Nounna et. al, Case No. 09-cv-02090 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).

A company which sells a “relaxation and sleep aid” beverage under the unregistered trademark MELLOW (pending trademark applications here and here) filed a trademark infringement lawsuit against Shannon N. Nounna and Beverage Concepts, Inc. over a similar type of relaxation beverage using the name MELLOW (pictured below) (pending trademark application here) that Beverage Concepts is apparently launching soon.

CityCenter Land, LLC v. Papillon Airways, Inc. et al, Case No. 09-cv-02088 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).

The owner of the massive CityCenter project in Las Vegas is seeking a declaratory judgment that its proposed use of the name PAPILLON (pending trademark applications here and here) for one of CityCenter’s high-end retail stores located at CityCenter’s 500,000 square foot retail complex called “Crystals at CityCenter” does not infringe on the trademark rights of Papillon Airways, Inc. and Monarch Enterprises, Inc. which use the PAPILLON mark in connection with helicopter and bus tour services.

On September 3, 2009, Papillon Airways’ counsel sent a cease and desist letter to CityCenter, citing Paillion Airways’ trademark registration for PAPILLON for various goods and services (e.g., bumper stickers, clothing, helicopter and bus tour services) and claiming that CityCenter’s use of PAPILLON (logo version pictured above) is likely to lead consumers to believe there is an affiliation with Papillon Airways’ goods and services. CityCenter’s response is that Papillon Airways misrepresents the scope of its rights to the PAPILLON mark, which is always used in connection with “Grand Canyon Helicopters” (as pictured below), and thus the second claim for relief for misrepresentation.

Aloha Medicinals, Inc. v. Birkdale Medicinals, Inc., et al, Case No. 09-cv-00639 (D. Nev. October 29, 2009) (Complaint).

A convoluted lawsuit involving claims by Aloha Medicinals, a manufacturer of dietary supplements for people and pets, against former authorized distributor Birkdale Medicinals and one of its officers, Anthony “Tom” Peters, arising from Birkdale Medicinals’ apparent relabeling of Aloha Medicinals’ products to make it appear as if the products were Birkdale Medicinals’ own branded products. There are also claims relating to use of Aloha Medicinals’ copyrighted website, clinical and technical data for Aloha Medicinals’ products (used by Defendants as data for their products), using Aloha Medicinals’ unregistered trademarks as metatags and Google Adwords, and intentional misrepresentation regarding broken promises over special packaging provided by Aloha Medicinals to Birkdale Medicinals.

Nevada District Court dismisses some of Texas Domainer’s counterclaims against World Market Center

noreply@blogger.com (Ryan Gile) — Sat, 17 Oct 2009 01:06:00 +0000

In a case that pits the World Market Center against Texas’ most notorious domainer, Texas International Property Associates (“TIPA”), the Nevada District Court granted World Market Center Motion to Dismiss (with leave to amend) several counterclaims that sought cancellation of some of World Market’s Center registered trademarks listed in its complaint that did not form the basis of its trademark infringement and cybersquatting claims against TIPA. World Market Center Venture, LLC v. Texas International Property Associates, Case No. 08-cv-01753, 2009 U.S. Dist. LEXIS 95752 (D. Nev. October 14, 2009).

On December 12, 2008, World Market Center Venture, LLC, (“WMCV”), the owner and operator of the wholesale furniture trade show complex World Market Center in Las Vegas, filed a trademark infringement and cybersquatting lawsuit against TIPA the well-known domain name holding company that is no stranger to cybersquatting lawsuits, over TIPA’s registration of the domain name lasvagasmarket.com (the “typosquatting” variation of lasvegasmarket.com, used by WMCV to promote the World Market Center) on February 4, 2005, and subsequent use of the domain name in connection with a website that displays links to other websites related to Las Vegas activities (most likely your standard PPC landing page but its currently disabled).

WMCV owns the registered mark WORLD MARKET CENTER along with other variations on the mark including LAS VEGAS MARKET (filed in September 2004 with claimed first use going back to April 2001 and able to be registered on the Principal Register under section 2(f) on the basis of acquired distinctiveness). [Click here my posting on a Nevada district court decision earlier this year on the “genericness” of this particular registered mark].

Soon after the filing of its complaint, WMCV obtained a temporary restraining order requiring the registrar to lock the domain name and ordering TIPA to cease any use of Plaintiff's marks. The court later granted WMCV’s preliminary injunction and denied a motion to dismiss filed by TIPA.

TIPA answered the complaint on June 19, 2009, and included six counterclaims each of which sought to cancel one of WMCV's federal or state trademarks. The Third counterclaim sought to cancel the mark LAS VEGAS FURNITURE MARKET (Note: the court’s opinion seems to mistakenly cite the registration number for this mark as 3,259,971, which is actually WMCV's federal registration for LAS VEGAS MARKET) and the Fourth and Fifth counterclaims sought to cancel LAS VEGAS DESIGN CENTER.

WMCV filed a Motion to Dismiss these counterclaims for lack of standing to request cancellation since WMCV has not claimed that TIPA is infringing these particular marks and because TIPA has claimed no interest in the marks beyond that of the general public nor has it claimed will be damaged by WMCV's registration of the marks. TIPA argued that WMCV “bestowed standing” upon TIPA to counterclaim to cancel these marks when WMCV included claims in its Complaint that it owned these other marks in connection with the mark that it claims TIPA infringed.

The court described the “real interest” that must be demonstrated in the pleadings in order for a party seeking to cancel a registered mark to have standing:

In order to have standing, petitioner for cancellation need not prove actual damage, but only the likelihood of damage from the continuing registration of the mark. 3 McCarthy, Trademarks § 20:46, at 20-109 (4th ed. 2009) (citing Golden Gate Salami Co. v. Gulf States Paper Corp., 332 F.2d 184, 188 (C.C.P.A. 1964)). There must be a “personal commercial interest, rather than the interest of a mere intermeddler.” Golden Gate Salami Co., 332 F.2d at 188. If a party claiming cancellation “does not plead facts sufficient to show a personal interest in the outcome beyond that of the general public, the case may be dismissed for failure to state a claim. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028 (C.C.P.A. 1982) (citing Sierra Club v. Morten, 405 U.S. 727 (1972)). A party attempting cancellation must “demonstrate a real interest in the proceedings.” Id. (citing Universal Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122 (C.C.P.A. 1972)). The Lipton court identified many contexts in which a real interest could be shown, supporting standing: importation of products deterred by a registration, use of copyrighted appearance of an item, pecuniary interest of trade association, prior registration but not priority in use, protection of subsidiary's mark, descriptive use of term in registered mark, and advertising emphasis of American origin. Id. at 1029 (citations omitted).

WMCV argued that TIPA’s counterclaims did not show how TIPA might plausibly be damaged by WMCV's registrations of the LAS VEGAS FURNITURE MARKET or LAS VEGAS DESIGN CENTER marks. TIPA attempted to argue that WMCV “bestowed standing on TIPA” by suing TIPA for infringement and listing those registered marks in the Complaint as marks that were being infringed by TIPA, and thus giving TIPA a “real interest” in the continued registration of the marks.

While the court acknowledged that TIPA was correct that being sued for infringement is sufficient to support standing for a counterclaim for cancellation, the court took the common sense approach in recognizing that, although WMCV included a list of World Market Center-related marks in its Complaint, “it is clear from the complaint identifying the allegedly infringing Domain Name which mark or marks were alleged to have been infringed.” The mere fact that such marks were listed in WMCV's Complaint against TIPA “is not enough to find that Plaintiff has claimed these marks are being infringed. Plaintiff has made no such claim. . . . TIPA's only claim to a real interest in the two marks mentioned in the Third, Fourth, and Fifth Counterclaims is based on having been sued over them.”

As such, the court found that TIPA did not have standing to counterclaim to cancel the LAS VEGAS FURNITURE MARKET or LAS VEGAS DESIGN CENTER marks that were the subject of TIPA’s Third, Fourth, and Fifth Counterclaims, and dismissed those counterclaims, with leave to amend. The court also granted WMCV’s request for leave to amend its complaint to remove references to the LAS VEGAS FURNITURE MARKET and LAS VEGAS DESIGN CENTER marks.

So is the lesson learned that plaintiff’s shouldn’t engage in a long listing of that clearly are not the basis for the alleged infringement? Likewise, should defendant’s not bother seeking to cancel registered marks that clearly are not the basis for the alleged infringement?

Local Las Vegas companies in a trademark feud over “Appliance Doctor”

noreply@blogger.com (Ryan Gile) — Fri, 09 Oct 2009 00:55:00 +0000

The Las Vegas Sun ran a story today (link here) about a dispute between two appliance repair businesses in the Las Vegas valley using the name “Appliance Doctor” to identify their businesses.

Samuel and Mary Gravino, the owners of Applicance Doctor LLC, filed a lawsuit on Tuesday in Clark County District Court against a company operating as “The Appliance Doctor of Las Vegas” owned by Ken and Melissa Jagmin.

The Gravinos claim to have been using the name “Appliance Doctor” in Las Vegas for over 26 years. Of course, it wasn't until a little over a week ago on September 29, 2009, that their company actually registered APPLIANCE DOCTOR LLC as a trade name with the Nevada Secretary of State’s Office (claiming date of first use as October 2, 1989) for “appliance repairs” (of course, their Las Vegas Business license lists the date their business license was issued as October 23, 1989).

According to their complaint, the Gravinos claim to have been receiving calls from angry, disgruntled customers who believed that their company had provided services that it turns out were provided by “The Appliance Doctor of Las Vegas.” The Gravinos claim that the Jagmins, who received their business license on April 30, 2009, are trading off the name, reputation and goodwill that the Gravinos have established over the last 26 years.

When reached for comment, Mr. Jagmin stated that “Appliance Doctor” is commonly used by such companies around the nation and he’s unaware of any trademark covering the name.

A quick internet search does support Mr. Jagmin’s case about the term “Appliance Doctor” being commonly used in connection with appliance repair services. However, as for any trademark on the name, surprisingly, THE APPLIANCE DOCTOR and APPLICANCE DOCTOR are actually federally registered trademarks of a Wichita company named Appliance Doctor, Inc. Based on the widespread (but localized) use of “Appliance Doctor” it would appear that Appliance Doctor, Inc. has not done a very good job of enforcing its trademark rights nationwide. Of course, if it’s true that the Gravinos have been using the name APPLIANCE DOCTOR in the Las Vegas area for over 26 years – long before Appliance Doctor, Inc. received its first trademark registration in 1996– then they would have clear prior user rights to continue to use the name.

Mr. Jagmin also commented that his name was different than his competitor because it includes the phrase “of Las Vegas.” [Someone might want to explain to Mr. Jagmin that additional geographically descriptive words don’t really carry much weight in analyzing whether two marks are likely to cause confusion, especially when the services rendered by “Appliance Doctor” are in the Las Vegas area. I’m thinking about opening a competing hotel/casino called “Red Rock of Las Vegas” – no one would confuse that with “Red Rock” Hotel and Casino in Las Vegas, right?] Of course, Mr. Jagmin fails to mention that on the company's website, the logo (pictured below) is just “The Appliance Doctor” with the “of Las Vegas” used more in the text of the website.

I wonder if the Gravinos would have still claimed trademark infringement if the Jagmin’s had used “The Appliance Doc of Las Vegas.” Given the commonality of the phrase “Appliance Doctor” would use of just the shorthand “Doc” suffice to alleviate consumer confusion?

Nevada District Court rules that “The Rat Pack” is Generic in connection with “Rat Pack” tribute shows

noreply@blogger.com (Ryan Gile) — Fri, 02 Oct 2009 00:52:00 +0000

I previously posted (link here) about the trademark infringement lawsuit brought by TRP Entertainment, LLC (“TRP”) – the production company behind the “Rat Pack” tribute show “The Rat Pack is Back” playing at the Plaza Hotel and Casino in Downtown Las Vegas and which owns the registered trademark for THE RAT PACK IS BACK – against BC Entertainment, Inc. (“BCE”) and Barrie Cunningham (the “Defendants”). See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Case No. 08-cv-00579 (D. Nev.). A copy of the complaint can be downloaded here. In short, TRP claimed that the Defendants use of the term “The Rat Pack” in connection with the Defendants’ production of a Rat Pack tribute show infringed on TRP’s trademark rights.

My law firm was subsequently retained by the Defendants to represent them in the lawsuit. After counterclaims had been filed, but very early into discovery, a Motion for Partial Summary Judgment was filed on behalf of the Defendants on several of Defendants’ counterclaims, including counterclaims seeking a declaration that the term “The Rat Pack” is generic when used in connection with a “Rat Pack” tribute show and an order to the U.S. Patent and Trademark Office ordering that TRP’s registered trademark for THE RAT PACK IS BACK include a disclaimer of the term “THE RAT PACK.”

On September 29, 2009, nearly a year after the original Motion was filed (and long after our law firm unfortunately had to withdraw as counsel for the Defendants), Nevada District Court Judge Lloyd George entered an order granting in part Defendants’ Motion for Partial Summary Judgment, in particular, finding that “The Rat Pack” is generic when used in connection with a Rat Pack Tribute show. See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Document #49, Case No. 08-cv-00579-LDG-RJJ (D. Nev. September 28, 2009). A copy of the court’s order can be downloaded here.

The Court stated the following regarding the evidence of the meaning of the term “The Rat Pack”:

Stated succinctly, Cunningham’s evidence establishes that, long before TRP offered live musical shows, the term the “The Rat Pack” had a meaning that was used in connection with the joint performances of members of the Rat Pack during the 1960s. While some of these performances included movie appearances, typically the joint performances were live musical performances. Since the 1960s, the term “The Rat Pack” has been used by producers of many types of goods or services to indicate that the goods or services relates to members of the Rat Pack or to the joint movie or live (or recorded) musical or movie performances of the Rat Pack during the 1960s. From its initial use to refer to members of the group, particularly when jointly performing live musical entertainment, “The Rat Pack” did not and, indeed, could not refer to or identify TRP’s live musical show.

The court acutely recognized that Defendants’ Motion was not directed towards TRP’s registered trademark but rather merely to the component term “The Rat Pack”:

The question before the court on Cunningham’s partial motion for summary judgment is not whether “The Rat Pack is Back” identifies and distinguishes TRP’s show in tribute to members of the Rat Pack from all other such live shows. Rather, the only question is whether the component term “The Rat Pack” so distinguishes TRP’s live show from all others about or in tribute to the Rat Pack. The evidence establishes that it does not and that TRP cannot appropriate the term “The Rat Pack” for its exclusive use.

And just to make it abundantly clear to TRP about the scope of its trademark rights, the court held that “As the term ‘The Rat Pack’ is generic in the context of live shows about or in tribute to members of the Rat Pack, TRP does not have an exclusive right to use the term ‘The Rat Pack.’”

Furthermore, not only did the court grant Defendants’ declaratory relief counterclaim finding the term “The Rat Pack” generic in connection with Rat Pack tribute shows, the court also granted Defendants' counterclaim which requested that the U.S. Patent and Trademark Office enter a disclaimer of TRP’s “incontestable” Trademark Registration No. 2,640,066 to add a disclaimer of the term “RAT PACK” -- something that arguably should have been done during the original prosecution phase, but which for various reasons was not. The lack of a disclaimer in TRP’s trademark registration is very likely what has allowed TRP to take its aggressive position regarding its trademark rights to the term “The Rat Pack” for so long. Not anymore.

As an attorney always hoping for a win for my clients, I am understandably happy with the court’s decision given my personal, direct involvement in preparing the Motion. And while there is so much else I would like to say about this case as a commentary on our legal system, the price of getting justice in this country, the abusive use of trademarks, and even the unintended consequences of maintaining a legal blog, I will defer such remarks to those who would like to hear them from me in person.

Instead, I would like simply to share this victory (however pyrrhic it might be) with the world – and particularly, any other production companies out there that have wanted to produce a Rat Pack tribute show and use the phrase “The Rat Pack” in the title somewhere, but have been scared away from doing so by the aggressive efforts of TRP based on its registered trademark THE RAT PACK IS BACK (or other asserted trademark rights). You now have at least one decision from a court of law that will back you up in your argument that the term “The Rat Pack” when used in connection with a Rat Pack tribute show is generic and cannot be claimed exclusively by anyone. Sounds ridiculously obvious – and yet so much time, energy, resources, and money was spent litigating just this point.

Of course, what’s really sad is that TRP will certainly attempt to appeal the judge’s decision – after all, this decision has dealt a significant blow to one of TRP’s most valuable pieces of intellectual property (at least in the arena of “Rat Pack” tribute shows). And unless the Defendants are able to garner the financial resources to continue the fight, TRP’s appeal might go unchallenged. If such an appeal follows, one can only hope that the Ninth Circuit Court of Appeals will recognize the reasonableness of the district court’s decision.

Lastly, I want to give thanks to my law firm colleague, Mark Borghese, who pushed the idea of pursuing an early Motion for Partial Summary Judgment that was focused on getting a decision that the “The Rat Pack” is generic and who provided other invaluable direction along the way. This victory is as much his as it is mine.

[Update: The Las Vegas Sun has an article on the decision here.]

Potential Buyer of “Crazy Horse Too” Strip Club Wants “Crazy Horse 3” To Change Its Name

noreply@blogger.com (Ryan Gile) — Sat, 26 Sep 2009 02:30:00 +0000

How many times has a client wanted to buy a strip club that was seized by the federal government as part of a racketeering and tax evasion investigation into the club’s owner -- Rick Rizzolo, who had reputed ties to organized crime families -- but was worried that the “reputation and goodwill” (those in Las Vegas will understand why I put those words in quotes) of the club would be diluted by another strip club that opened up in the meantime by a third party using a similar mark to identify its strip club? (I know, another one of those cases).

The trademark angle is just one part of the story reported by the Las Vegas Sun today (link here) about the likely sale of the infamous Las Vegas strip cub “Crazy Horse Too.” The saga behind the Crazy Horse Too is a long and colorful one – for a collection of articles about Rick Rizzolo, including the saga of the Crazy Horse Too, visit Steve Miller’s “The Rick Rizzolo Connection.”

But as this blog is not so much interested in mobsters and strippers and focused squarely on all things trademark, I found it interesting that, according to the article, the agreement entered into by the U.S. Marshals and the yet to be named buyer hinges on the owner of another Las Vegas strip club giving up the name “Crazy Horse 3” (which was known as The Penthouse Club up until very recently when new owners took over – and apparently decided to trade off the “reputation” of the “Crazy Horse”) so that the buyer of the “Crazy Horse Too” can be assured of keeping intact the exclusive right to use the name Crazy Horse in connection with strip club services (not to mention all of the fantastic goodwill that goes along with that name in this town).

Pete Rinato, the attorney representing the prospective buyer, stated that a lawsuit was being prepared to be filed against the owners of the Crazy Horse 3 demanding that they give up the name.

Of course, that’s not the only trademark battle that Crazy Horse Too is fighting. A South Carolina man named Carl Reid applied for and received a trademark registration for the mark CRAZY HORSE for “Entertainment services, namely, exotic dance performances” in 2006. This registration served to block Crazy Horse Too’s own application in 2007 for registration of the mark CRAZY HORSE TOO GENTLEMAN'S CLUB for “Night clubs; Entertainment in the nature of dance performances.”

On July 9, 2009, Crazy Horse Too filed two cancellation proceedings against Reid (including a second one for the mark PURE GOLD'S CRAZY HORSE) with the Trademark Trial and Appeal Board. See Crazy Horse Too A Gentleman's Club v. Reid, Cancellation Nos. 92051211 and 92051225. Reid failed to answer and so the TTAB entered a default on September 8, 2009. Crazy Horse Too will likely get a default judgment and the two registered marks cancelled unless Reid steps forward soon.

But there is another “crazy horse” on the horizon. In fact, what I find most “crazy” about the competing use of this particular mark is how Sodipa (SAS) has never taken any action against any of them. Sodipa is the French company which owns the international registration for the mark CRAZY HORSE which is most famously associated with the showgirl revue Le Crazy Horse de Paris (which has an Americanized version showing nightly at the MGM Grand – although the show was originally named Le Femme when it first opened at the MGM Grand many years back). [Don’t you think that Crazy Horse Too was also trying to trade off a little bit of the “Crazy Horse” reputation and goodwill created by Sodipa – at least until Crazy Horse Too was able to create its own reputation (which it certainly has)].

Unfortunately for Sodipa, the company did not apply for a Request for Extension of Protection under the Madrid Protocol for its CRAZY HORSE international registration until very recently (March 20, 2008), and the request is currently suspended pending the outcome of several pending applications for the mark CRAZY HORSE with earlier effective filing dates, including the application filed by Crazy Horse Too on September 14, 2007.

Of course, I know what you’re all wondering – where does the “Crazy Horse 1” strip club fit into all of this? I do recall that there was at one time a very small strip club on the East side of the strip that was named “Crazy Horse” around the time that the “Crazy Horse Too” opened (and thus the basis for the play on the word “too”). Don’t know if it even exists anymore – difficult to find using a search engine with most of the hits being for “Crazy Horse Too” or the MGM production “Crazy Horse Paris.” Perhaps I should go out tonight and conduct some “research” in order to better write about these important trademark issues

[Update: Soonafter I published this post, the Las Vegas Review Journal posted an article (link here) on the lawsuit filed in Clark County District Court today by CC Holdings (managed indirectly by Christopher Condotti of Chicago) against Russell Road Food and Beverage, the company doing business as Crazy Horse 3.]

Fish & Richardson Files Foreclosure Action to Let the World Know “Who’s Your Daddy”

noreply@blogger.com (Ryan Gile) — Wed, 16 Sep 2009 01:40:00 +0000

Fish & Richardson, the powerhouse intellectual property law firm, filed an action in federal district court against Who's Your Daddy, Inc. (“WYD”) in order to foreclose on security interests the firm obtained on several trademark registrations owned by WYD for the mark WHO’S YOUR DADDY (including their apparent signature product, energy drinks, as well as for such products as cosmetics, jewelry, sunglasses and CDs, and “adult sexual aids”) See Fish & Richardson, P.C. v. Who's Your Daddy, Inc., Case No. 09-cv-01993 (S.D. Cal. September 10, 2009). A copy of the complaint with exhibits can be downloaded here.

In February 2005, WYD engaged F&R’s legal services (most likely in connection with a trademark infringement lawsuit filed by Who's Ya Daddy, Inc., the owner of the identical mark for clothing, against WYD in 2005 -- Who's Ya Daddy, Inc. v. Who's Your Daddy, Inc., Case No. 05-cv-00670 (S.D. Cal.).

Unfortunately (but not surprisingly given that in litigation, the only parties that win are the lawyers), WYD fell behind in paying its monthly legal services invoices. In September 2006, the parties entered into a Settlement Agreement whereby F&R received a first priority security interest against WYD’s trademarks which was recorded by F&R through a UCC Financing Statement filed with the California Secretary of State on September 27, 2006.

Nonetheless, WYD was still not able to make the payments required under the terms of the Settlement Agreement. F&R sued for breach of contract in California Superior court. After the action was filed, F&R recorded its Security Agreement against WYD’s thirteen trademarks with the United States Patent and Trademark Office (“PTO”).

F&R eventually was granted summary judgment in its state court breach of contract action and the court awarded F&R $348,651.18 [ed. – litigation is expensive]. F&R now seeks to foreclose on WYD’s trademarks against which F&R recorded its security agreement by obtaining a court order directing the PTO to certify that F&R is the owner of WYD’s trademark registrations.

With the economy hurting the revenue streams of so many law firms, perhaps F&R is looking to expand into the energy drink market by claiming ownership of WYD’s trademark registrations (and purpotedly the associated goodwill that goes along with those marks). I can’t wait to try a Who's Your Daddy energy drink where Fish & Richardson is responsible for maintaining the quality control of the goods. Of course, an outright sale of the marks to an existing energy drink maker is the more likely outcome if F&R successfully obtains ownership of the registrations, but it’s an interesting image – law firm licensing its marks and overseeing the quality control of the goods. This could also just be F&R's efforts to force WYD to pay off the judgment under threat of losing its trademark registrations.

Even more interesting is that even if F&R obtains the trademark registrations, are they really obtaining the underlying goodwill associated with the marks if F&R cannot also obtain and sell WYD’s particular energy drink recipes? If F&R resells the marks to another energy drink maker who then slaps those names on their own energy drink beverages, isn’t this misleading to consumers who are likely to believe the source of the goods and services is the same source that they have always known and associated with Who's Your Daddy brand energy drinks?

Blogging Hiatus

noreply@blogger.com (Ryan Gile) — Sat, 05 Sep 2009 04:07:00 +0000

As regular readers have probably noticed, I have not been posting as frequently or as substantively lately. Pre-trial work on top of all of the usual ongoing client matters that arise on a daily basis has been the major cause of the slowdown.

And with a trial beginning the day after labor day that is scheduled to last several weeks as well as various other upcoming court filing deadlines, the slowdown is certainly going to continue throughout most of the month of September.

I hope to have a few posts during the middle of the month and resume more regular postings by the end of the month. For now, I’m calling it a blogging hiatus.

Happy Labor Day to all! (and a day of labor it certainly will be for me).

Federal Circuit Clarifies Trademark Fraud

noreply@blogger.com (Ryan Gile) — Wed, 02 Sep 2009 00:37:00 +0000

In what will certainly be the most talked about court decision of 2009 for trademark practitioners, the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (T.T.A.B. 2007), which found that Bose had committed fraud when it filed a renewal for goods that it no longer sold under the mark WAVE. See In re Bose Corporation, Appeal No. 2008-1448 (Fed. Cir., Aug. 31, 2009).

The Court found that the Board had erroneously lowered the fraud standard to a simple negligence standard. The Federal Circuit went on to make its holding on fraud quite clear:

Thus, we hold that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

The TTABlog® discusses the decision here (and make sure to check out the numerous comments), Finnegan provides a detailed summary of the decision here, while Registration Ruminations opines about the decision here.

Another example of what happens when you don’t consult a trademark attorney

noreply@blogger.com (Ryan Gile) — Fri, 28 Aug 2009 00:35:00 +0000

I stumbled across five interesting intent-to-use trademark applications today for the following marks:

Each of the applications, filed in July, recite 13 different classes of goods – each of which consists of a laundry list of goods in that class. And who is listed as the trademark applicant for each of these application? Of course, it’s California residents Pamela Kidd and Paige Linn.

Who?

That’s right – it looks like another case of someone thinking that they can get rich through a trademark registration on a particular word that they know full well is associated by the public with a different source. And in all five applications (in addition to a 2(d) likelihood of confusion rejection in some cases and some provisional rejections), the PTO has rejected (yes – these applications were examined in a record time of about a month after filing) all of the applications under Section 2(a) on the basis of a false association with – guess who?:

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Michael Jackson’s estate. Although Michael Jackson’s estate does not appear to be connected with the goods and/or services provided by applicant under the applied-for mark, Michael Jackson was so famous that consumers would presume a connection.

While these applications – if they had been “legitimate” applications – would have cost $4225 per application in PTO filing fees for a grand total of $21,125 for all five applications, in this case, the ladies only paid the $325 per application fee for a single class of goods – all other classes are noted as inactive due to an insufficient fee paid. So instead of wasting $21,125, the ladies only wasted $1,625.

I guess they will just have to go back to working at their Palm Desert retail clothing and jewelry store PINK CLUB®.

Ninth Circuit Tackles Trademark Tacking in “O'” Trademark Dispute

noreply@blogger.com (Ryan Gile) — Wed, 26 Aug 2009 07:01:00 +0000

The Ninth Circuit addressed the unique issue of trademark tacking in affirming a lower court’s decision on a trademark lawsuit between two companies that produce clothing aimed towards participants of motor cross racing. See One Industries, LLC v. Jim O’Neal Distributing, Inc., No 08-55316, 2009 U.S. App. LEXIS 18967 (9th Cir. August 24, 2009).

On the one side is Jim O’Neal Distributing, Inc. (“O’Neal”), an apparent leader in the industry with 17.5% of the market for motocross apparel and helmets in 1998. Since 1991, O’Neal has used a stylized “O” followed by an apostrophe (the “O’ mark”) on its products. However, over the years, O’Neal used several different version of this O’ mark.

For purposes of this case, the relevant marks were the 1997 version – a thicker, boxier O’ mark with rounded corners (the “Rounded O’ mark”) – and the 2003 version – which abandoned the rounded corners of the 1997 mark in favor of an angular approach (the “Angular O’ mark”).

One Industries, LLC (“One Industries”) was originally founded in 1997 and began by selling stickers and decals; however, by 2003, One Industries had added helmets and clothing to its product lines which made it a competitor with O’Neal.

In 1999, One Industries developed the “One Icon” mark, which it describes as two interlacing number ones (pictured above), and also developed an angular version of the word “One” in its name (the “One Angular” mark) (pictured below). One Industries uses both of these marks on motorcycle-related apparel and headgear.

In 2006, O’Neal accused One Industries of infringing the 2003 Angular O’ mark as well as the O’NEAL mark. One Industries believed that O’Neal was misrepresenting the length of time that it had been using its O’ mark and that the One Icon and One Angular marks, which were created and registered in 1999, were actually senior to the Angular O’ mark created in 2003. One Industries filed a declaratory judgment action that its One Icon and One Angular marks did not infringe O’Neal’s trademarks. O’Neal in turn asserted counterclaims for trademark infringement.

Before discovery commenced, One Industries moved for a more definite statement under Federal Rule of Civil Procedure 12(e), arguing that O’Neal’s complaint did not identify the particular O’ mark that it claimed was allegedly infringed. O’Neal claimed that the O’ mark, with some slight changes over the years, was always the same mark.

The district court granted One Industries’ motion for a more definite statement reasoning that the two of the marks appear to be more than slightly different. O’Neal then amended its counterclaims to assert infringement of the 1997 Rounded O’ mark (in order to get around One Industries’ 1999 priority date for its own marks). The district court subsequently granted summary judgment to One Industries on all claims and O’Neal appealed.

O’Neal maintained that the district court erred by refusing to “tack” the different versions of the O’ mark dating back to 1991 since, according to O’Neal, each iteration of the O’ mark constituted a continuation of the same mark rather than a creation of a new mark.

As the Court of Appeals explains,

Tacking matters because One Industries first used the One Icon in 1999 -- after O’Neal developed the 1997 Rounded O’ mark but before O’Neal created the 2003 Angular O’ mark. It is a cardinal principle of federal trademark law that the party who uses the mark first gets priority. See Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1047 (9th Cir. 1999) (“It is axiomatic . . . that the standard test of ownership is priority of use . . . [T]he party claiming ownership must have been the first to actually use the mark in the sale of goods or services.” (internal quotation marks omitted)). Thus, if the Rounded and Angular O’ marks are the same mark, then the district court should have compared the One Icon with the 2003 Angular O’ mark; if the marks are different, however, then the district court correctly compared the One Icon with the 1997 Rounded O’ mark.

One issue raised by O’Neal was the fact that the district court resolved the issue on a Rule 12(e) motion for a more definite statement rather than in the context of a summary judgment motion. O’Neal felt that summary judgment was premature because discovery had not yet been completed and O’Neal had been deprived of the opportunity to demonstrate that evolving versions of the O’ mark created the same, continuing commercial impression to consumers. While the Ninth Circuit acknowledged that “tacking requires a highly fact-sensitive inquiry” and that the “better practice is to resolve it on summary judgment, after full discovery,” in this case, the court was persuaded that there was no reversible error because O’Neal failed to ask the district court to postpone ruling until after discovery and did not move for reconsideration. “Having acquiesced in the resolution of the issue in the disposition of the Rule 12(e) motion, O’Neal cannot now complain that the district court should have acted differently.”

As for the merits of O’Neal’s tacking claim, the court laid out the legal standard as follows:

A trademark owner may “claim priority in a mark based on the first use date of a similar, but technically distinct, mark--but only in the exceptionally narrow instance where the previously used mark is the legal equivalent of the mark in question or indistinguishable therefrom such that consumers consider both as the same mark.” Brookfield, 174 F.3d at 1047-48 (internal quotation marks omitted). Tacking is a question of fact. See Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 759 (9th Cir. 2006). “A question of fact may be resolved as a matter of law if reasonable minds cannot differ and the evidence permits only one conclusion.” Id.

“The standard for ‘tacking’ . . . is exceedingly strict: [t]he marks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked.” Brookfield, 174 F.3d at 1048 (internal quotation marks omitted). Our precedent demonstrates that tacking is allowed only in narrow circumstances. In Brookfield, we concluded that “moviebuff.com” cannot be tacked onto “The Movie Buff’s Movie Store.” Id. at 1049. There, we reasoned that “ ‘The Movie Buff’s Movie Store’ and ‘moviebuff.com’ are very different, in that the latter contains three fewer words, drops the possessive, omits a space, and adds ‘.com’ to the end.” Id. Similarly, in Quiksilver, we held that the district court erred in tacking “QUIKSILVER ROXY” onto “ROXY.” Quiksilver, 466 F.3d at 760. We reasoned that “a reasonable jury could easily conclude that ‘QUIKSILVER ROXY’ and ‘ROXY’ did not create the ‘same, continuing commercial impression’ at the time the ‘ROXY’ brand was introduced.” Id.

Because the district court decided the tacking issue as a matter of law, the court was faced with deciding whether O’Neal’s Rounded O’ mark, developed in 1997, and the Angular O’ mark, developed in 2003, differ to such a degree that no reasonable jury could conclude that they create the “same, continuing commercial impression.”

In affirming the lower court’s decision, the Ninth Circuit panel stated the following regarding O’Neal’s two marks:

We recognize that this is a close case, but we agree with One Industries and with the district court that O’Neal cannot meet the “exceedingly strict” standard for tacking. Although both marks consist of a styled O followed by an apostrophe, the similarities largely end there. The apostrophes are markedly different: in the Rounded O’ mark it is entirely separated from the O and appears to be a standard apostrophe. In contrast, the Angular O’ mark’s apostrophe is connected to the main image and looks like a triangle. The lower and upper horizontal lines on the Rounded O’ mark are thinner than the corresponding lines on the Angular O’ mark. While the Rounded O’ mark is boxy, the Angular O’ mark looks like the outline of a lemon. These differences, in our view, establish that the two marks are not “indistinguishable.” Brookfield, 174 F.3d at 1047. Like the marks at issue in Brookfield and Quiksilver, the Rounded O’ mark and the Angular O’ mark differ in several material respects.

The court also noted that cases from other circuits and from the Trademark Trial and Appeal Board have only allowed tacking when the marks are “virtually identical.” As such, the court concluded that the district court properly granted One Industries’ motion for a more definite statement because the differences between O’Neal’s Rounded O’ mark and Angular O’ mark are so material that they do not meet the “exceptional” instances where tacking should be allowed.

The remainder of the court’s decision addresses the district court’s decision finding no likelihood of confusion with O’Neal’s marks. The court, reviewing the lower court’s summary judgment decision de novo and applying the eight factor test used by the Ninth Circuit for determining “likelihood of confusion” set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), concluded that there was no likelihood of confusion in this case – primarily based on the dissimilarity of the marks, the lack of evidence of actual confusion, and the weakness of the mark given the presence of other similar O marks in the marketplace. “In the absence of evidence of actual confusion or intent to deceive, we decline to grant O’Neal a virtual monopoly on the use of the letter “O” on motorcycle helmets. The mere fact that the two companies are direct competitors and happen to use the same letter on their products is not sufficient to show infringement.” The same was true for the claims that One Industries’ marks infringed on O’Neal’s O’NEAL mark (marks were entirely different). And such lack of confusion also refuted O’Neal’s claims of trade dress infringement (which were based on the position of the O’NEAL on a helmet).

Accordingly, the Court of Appeals affirmed the district court’s granting of the motion for more definite statement and motion for summary judgment in favor of One Industries.

Judge Graber, concurring in part and dissenting in part, believed that the district court erred in resolving the tacking question as a matter of law in a motion for a more definite statement:

In my view, it was inappropriate for the court to decide that O’Neal was not permitted to tack its 2003 mark to its older marks as a matter of law in a pre-discovery Federal Rule of Civil Procedure 12(e) order. At that stage in the litigation, it would have been impossible for the district court to conclude that reasonable minds could not differ and that the evidence permitted only one conclusion regarding tacking. Indeed, the court made no such finding, and the majority itself concedes that this is a “close case.” Maj. op. at 11609. The order granting the motion states only that the “Court is unpersuaded by O’Neal’s claim that it uses only one mark that has been slightly altered over the years.” That conclusory statement, unsupported by any evidence in the record at that time, is not enough to decide the highly fact-dependent question of tacking as a matter of law. I would therefore reverse and remand.

Anytime Fitness Sues Las Vegas Franchisee

noreply@blogger.com (Ryan Gile) — Fri, 21 Aug 2009 21:30:00 +0000

On August 20, 2009, Anytime Fitness, Inc. (“Anytime Fitness”) filed a lawsuit in Minnesota Federal District Court against Las Vegas residents Lawrence Fagan and Linda Fagan and several of their Nevada limited liability companies (Rainbow Fitness, LLC; Fort Apache Fitness, LLC; and Blue Diamond Fitness, LLC) for breach of contract and trademark infringement. See Anytime Fitness, Inc. v. Rainbow Fitness, LLC et al, Case No. 09-cv-02185 (D. Minn.). A copy of the complaint (but without the over 100 pages of exhibits) can be downloaded here. [Update: The full complaint with exhibits can be downloaded here.]

AFI is the franchisor of the international Anytime Fitness franchise of small-scale 24 hour fitness centers. AFI owns the U.S. registered trademark ANYTIME FITNESS for “health and fitness club services.”

In April 2008, the Fagans, through their LLCs, entered into five year Franchise Agreements with AFI to open Anytime Fitness centers at three Las Vegas valley locations. The agreements each contained a forum selection clause choosing Minnesota as the sole forum for litigating disputes under the Agreement.

According to the complaint, as a franchisee of the Anytime Fitness “System,” the Fagans received information and know-how about operating a largely unstaffed 24-hour co-ed fitness center (with a limited “menu” of services that purportedly allows AFI’s business model to succeed where others have failed).

The Agreements included a covenant not to compete whereby the Fagans agreed that during the term of the Agreements, they would not start a competing fitness center business in their protected territory or within five miles of any Anytime Fitness location. The Agreements also gave the Fagans the right to use AFI’s trademarks in the promotion of their franchised locations.

Apparently, sometime in April 2009, AFI showed Lawrence Fagan a closed Anytime Fitness center location at 6300 West Charleston Blvd. in Las Vegas to see if he would be interested in taking over that location. The landlord had purchased the equipment from the former franchisee and had apparently been speaking with Fagan about reopening the center. Fagan declined AFI’s offer to open an Anytime Fitness location at this Charleston location.

Then, according to AFI, the Fagans turned around and began operating a fitness center at this location on Charleston under the name Lifestyle Fitness 24/7 (“Lifestyle Fitness”). Of course, according to the City of Las Vegas, the business license for the Lifestyle Fitness located on Charleston is in the name of Anthony Pasquale and was issued on July 23, 2009. [Of course, his own Linked-In page states that he is a co-owner and the City of Las Vegas’ records also reflect his title as President 100% although there is no indication of a corporation as owner].

AFI claims that Lifestyle Fitness is using AFI’s “System” including the same membership agreement, the same keyless entry system, same equipment layout, the same limited menu of services, and has been using materials and equipment obtained from AFI’s suppliers. [Query – if a third party came in and took over a location that was formerly an Anytime Fitness just as it was before it was closed but simply changed the name, wouldn’t one expect that the same equipment, keyless entry system, services menu, etc. would simply be part of what was left over to purchase.]

AFI also claims that the Fagans intend to open another fitness location (currently under construction) under the Lifestyle Fitness name at the intersection of Warm Springs Road and South Durango Drive in Las Vegas. AFI further claims that the Fagans are promoting their Lifestyle Fitness locations using AFI’s registered mark. AFI also claims that the “key fobs” located at the fitness center locations which allow patrons 24 hour access to the fitness center were purchased through an affiliate of AFI and use AFI’s proprietary software. [Weren’t the key fobs already installed at the Charleston location?]

AFI further alleges that the Fagans are planning on allowing members of its three Anytime Fitness locations access to their two Lifestyle Fitness centers. AFI also asserts that the Fagans are informing the members at their Anytime Fitness locations that they will either be converted to Lifestyle Fitness centers or closed down (and such members transferred to their Warm Springs & Durango location). Finally, AFI claims that the Fagans are soliciting employees and members at their existing Anytime Fitness locations to come over to their Lifestyle Fitness locations.

AFI sent a letter to the Fagans on August 7, 2009, reminding them of their non-compete obligations under the Franchise Agreements and demanding that they cease any competition. The Fagans responded to AFI’s letter with an e-mail on August 17, 2009, but apparently did not address the issue of whether they were competing with AFI. AFI responded to this e-mail with two specific questions about any involvement by the Fagans with the Charleston location or any other fitness center in Las Vegas. The Fagans answered “No” to both questions on August 19, 2009. Apparently, AFI did not believe the Fagans’ answers.

AFI’s causes of action are for breach of contract, federal and common trademark infringement, federal and common law unfair competition, violations of Minnesota’s deceptive trade practices act and unlawful trade practices act, unjust enrichment, misappropriation of trade secrets, and tortious interference with contractual relations and prospective economic relations. AFI is seeking the usual injunctive relief and damages (actual and treble), as well as costs and attorneys fees.

Arnold Sues Sara Lee Over SANDWICH THINS

noreply@blogger.com (Ryan Gile) — Wed, 19 Aug 2009 21:05:00 +0000

Arnold Products, Inc. (“Arnold”), a company known for its premium bread products (and which is part of the Bimbo Bakeries USA company), filed a trademark infringement lawsuit against Sara Lee Corporation (“Sara Lee”) in the U.S. District Court for the Southern District of California. See BBU, Inc. et al v. Sara Lee Corporation, et al., Case No. 09-cv-01787 (S.D. Cal. Filed August 17, 2009). A copy of the complaint can be downloaded here.

One of Arnold’s products is a sandwich-sized flatbread (a supposed healthier alternative to a traditional bread bun) which Arnold markets under the name “Sandwich Thins” (and sometimes under the brand name Oroweat instead of Arnold). On June 16, 2009, Arnold registered the mark SANDWICH THINS (SANDWICH disclaimed) for “Bread” with the U.S. Patent and Trademark Office.

According to the complaint, Sara Lee recently sent out some marketing information to grocery stores nationwide promoting a similar sandwich-size flatbread product under the marks SANDWICH THINS and THINS marks that Sara Lee was planning to launch on September 14, 2009 (pictures can be seen on page 6 of the complaint although they are not very clear). Sara Lee’s advertisements even mentioned how Arnold’s products have established public awareness about such flatbread sandwich products.

Arnold claims that Sara Lee’s imminent use of the marks SANDWICH THINS and THINS in connection with the intended sandwich-sized flatbread goods, is likely to cause confusion with Arnold’s registered mark and will trade on the goodwill Arnold has established in the SANDWICH THINS mark.

So does Arnold have a “thin” trademark infringement case? Or is this another example of a company being on the forefront of establishing a particular brand name for a product and a competitor trying to trade on such goodwill with its own competing product?

ICAAN Delivers Death Knell to Domain Tasting

noreply@blogger.com (Ryan Gile) — Fri, 14 Aug 2009 23:46:00 +0000

ARS Technica reports on the “end of domain tasting” after the implementation of ICAAN’s most recent excessive cancellation penalty of $6.75 per withdrawn domain name. ICAAN’s report on the results of its new policy can be downloaded here.

Not-so-wise trademark application for WISE LATINA

noreply@blogger.com (Ryan Gile) — Mon, 10 Aug 2009 22:01:00 +0000

It never ceases to amaze me how events in the news will drive enterprising individuals to file for trademark protection on some phrase that has captured the public's attention with visions of grandeur of having an exclusive monopoly on said phrase (typically in connection with using the phrase on a t-shirt).

In this case, the phrase is WISE LATINA – made famous by the too often repeated (and taken out of context) quote that so many Republican Senators focused upon in order to try and come up with some kind of criticism against now Supreme Court Justice Sonia Sotomayor from a lecture she gave at the University of California (Berkeley) School of Law in 2001: “I would hope that a wise Latina woman with the richness of her experiences would more often than not reach a better conclusion than a white male who hasn't lived that life.”

A Wise Latina Indeed!

On July 24, 2009, Cultural Communications LLC filed a trademark registraiton application with the U.S. Patent and Trademark Office (“PTO”) to register the mark WISE LATINA for the following goods: “Full line of clothing, footwear, and headgear, namely, aprons, bandanas, bathing suits, bathrobes, beachwear, belts, body shapers, bottoms, caps, coats, dresses, ear muffs, earbands, footwear, gloves, hats, head wear, infant wear, jackets, jeans, lingerie, neckwear, nightwear, pajamas, pants, rainwear, robes, shirts, shoes, shorts, skirts, sleepwear, slippers, socks, stockings, suits, suspenders, sweaters, swimwear, tops, undergarments, underwear, and vests.” The basis of the application was use-in-commerce with first use date in commerce of July 24, 2009.

Of course, what I find most interesting about this application is the specimen submitted to the PTO (see picture below) in order to show use of the mark WISE LATINA as a trademark identifying the clothing goods.

If you look closely, the shirt's tag reads “American Apparel.” So is this a “Wise Latina” brand t-shirt or is this just an “American Apparel” brand t-shirt that someone emblazoned with the ornamentation “Wise Latina”?

In addition, this is just a picture of t-shirt. While the PTO does not require an applicant to submit specimens showing use of the mark in connection with all of the goods listed in the application, in order for the application to not be deemed fraudulent, the applicant must still be using the mark in connection with all of the goods listed . . .or else the ultimate trademark registration (if it issues with goods on which the mark was not being used at the time of filing) is tainted by fraud. Do you think that Cultural Communications was really using the mark WISE LATINA as a mark (and not just ornamental use) in connection with all of the clothing items listed in the application?

And finally, does the trademark applicant in these circumstances really believe that a trademark registration for the mark WISE LATINA in connection with clothing is really going to be able to stop other people from printing t-shirts emblazoned with the words WISE LATINA (with most consumers associating that phrase more with Justice Sotomayor’s now famous quote than with a particular seller of goods)?

Justice Sotomayor practiced in the area of trademark law before moving to the judiciary. What do you think her thoughts would be regarding this application?

Pepsi Loses Motion for Preliminary Injunction Against Coke’s Energy Drink Ads

noreply@blogger.com (Ryan Gile) — Thu, 06 Aug 2009 16:50:00 +0000

I previously wrote (link here) about the false advertising lawsuit filed in U.S. District Court for the Southern District of New York by Stokely-Van Camp, Inc. (owned by Quaker Oats which is controlled by PepsiCo Inc.) – the maker of the Gatorade energy drink – against The Coca-Cola Co. and its energy drink division, Energy Brands Inc. , which makes the Powerade energy drink.

On Tuesday, a U.S. District Court denied Pepsi’s Motion for Preliminary Injunction after determining that Pepsi had not shown either a likelihood of irreparable injury or a likelihood of success on the merits. See Stokely-Van Camp, Inc. v. The Coca-Cola Company et al., Case No. 09-03741 (S.D.N.Y. August 4, 2009). A copy of the 54 page decision can be downloaded here. Reuters and Courthousenews both ran news coverage of the decision.

Pepsi came up with the idea for Gatorade ION+, its planned calcium-enriched sports drink formula with its “sweat-emulating reformulation,” when it learned of Coke’s Powerade's ION4 product that was coming to market. Unfortunately, Pepsi’s supply of calcium dried up and so Pepsi had to change its advertising to eliminate references to calcium and magnesium – something that Coke took advantage of in some comparative ads as part of its Powerade marketing campaign that sparked the lawsuit by Pepsi in the first place. The court noted that while Pepsi complains about Coke’s claims regarding the presence of calcium and magnesium in Powerade ION4, Pepsi had made virtually the same claims about its own Gatorade formula (before being forced by circumstances to eliminate such references). The court stated that Pepsi “cannot, having jumped on the bandwagon of calcium and magnesium first, now jump off and claim that Coca-cola must get off too.”

Of course, both sides have their own spin on the outcome. Coke described the decision as “a complete win” for its sports drink [ed. - leave it to PR people to turn a legal decision into a product endorsement]. On the other hand, Pepsi notes that Coke stopped its “disparaging claims” against Gatorade in its advertising (a campaign that Coke described as short-lived anyway) after the lawsuit was filed, so Pepsi feels that it accomplished what it set out to do [ed. – unless, of course, Coke decides to start the campaign back up again now that there is no threat of a preliminary injunction enjoining Coke from doing so].

Court Preliminarily Enjoins U.S. Government's Seizure of Items Bearing MONGOLS Membership Mark

noreply@blogger.com (Ryan Gile) — Tue, 04 Aug 2009 21:30:00 +0000

Pamela Chestek’s Property, Intangible blog provides an update on the Mongols trademark saga (previously blogged here) that dominated the headlines last October when, after the government seized the registered collective membership mark MONGOLS as part of a U.S. government racketeering indictment against the Mongols Motorcycle Club ("Mongols"), a court entered a broad injunction order which essentially prevented members of the Mongols from wearing any clothing bearing the MONGOLS mark. [Note: while there does exist a second registered trademark for M.C. (and Design), this registered mark was not part of the court’s amended restraining order at issue].

A Member of the Mongols (who was not part of the criminal indictment) brought a civil action seeking injunctive relief against the government from any seizure of his items bearing the MONGOLS mark which identified his membership in the Mongols. The court concluded that the government’s seizure of the trademark under the RICO statute was improper because the government’s RICO indictment was against individual members of the Mongols and not against the entity which owns the MONGOLS mark, and thus the U.S. government could not seize such property under RICO. Accordingly, the court granted the preliminary injunction enjoining the government from seizing any property items bearing the MONGOLS collective membership mark. See Rivera v. United States, Case No. 09-cv-2435 (C.D. Calif. Aug. 3, 2009).

Woman Sues Sirius-XM over SUNDAY BAROQUE

noreply@blogger.com (Ryan Gile) — Sat, 01 Aug 2009 00:57:00 +0000

The Connecticut Post reports (link here) on the trademark infringement lawsuit filed by an Ohio woman named Suzanne Bona-Hatem against satellite radio company Sirius-XM over the use of the mark SUNDAY BAROQUE for a radio music show featuring guess what kind of music which can be heard on guess what day of the week?

Bona-Hatem’s “Sunday Baroque” show is a four-hour syndicated Sunday morning program which is broadcast to over 90 stations and heard in over 30 states to an audience of 2.7 million people (according to the suit)

In addition, Bona-Hatem was able to procure her a trademark registration for the mark SUNDAY BAROQUE for “Entertainment in the nature of on-going radio programs in the field of Baroque music” from the U.S. Patent and Trademark Office (“PTO”). Of course, it was only after she first disclaimed the descriptive word “Baroque” from her mark. Moreover, anticipating an obvious descriptiveness refusal by the PTO, the application was initially filed with a claim of Section 2(f) acquired distinctiveness on the basis of Bona-Hatem’s claimed exclusive and continuous use in commerce of the mark for at least the five years prior to making the claim of acquired distinctiveness. The PTO did not raise any questions about her Section 2(f) claim or request any additional evidence to prove her acquired distinctiveness claim.

The lawsuit alleges that Sirius-XM is broadcasting a similar baroque show on Sunday – and using a name that is identical to her mark (although one wonders how you might describe a baroque radio show broadcast on Sundays without using some semblance of her mark).

While one wonders why Sirius-XM didn’t just change the name of its show in response to correspondence from Bona-Hatem’s attorney. After all, she cannot really prevent anyone from using the term Baroque in connection with playing Baroque music – and do you really have to use the word Sunday as part of the program title?

Of course, from Sirius-XM’s perspective, while Bona-Hatem may have a trademark registration for SUNDAY BAROQUE, can she really prevent other radio programs from using the words SUNDAY and BAROQUE in their descriptive sense when broadcasting a baroque music radio show on Sunday (i.e., would “Sunday Morning Baroque” or “Baroque on Sunday” be considered by Bona-Hatem confusingly similar?).

So who do you think is in the right here? Is Bona-Hatem’s trademark so ridiculously descriptive that she should not be allowed to claim any exclusive rights to the term SUNDAY BAROQUE in connection with a baroque radio show broadcast on Sunday? Or is Sirius-XM being ridiculous in not taking the simple step of simply renaming the show (is calling the show by the boringly descriptive “Sunday Baroque” so important that its willing to go to court over it)?

AAA loses UDRP action to obtain AAA.net

noreply@blogger.com (Ryan Gile) — Thu, 30 Jul 2009 00:15:00 +0000

DomainNameWire reports on the UDRP divided panel decision denying the request by the American Automobile Association, Inc. (“AAA”) to obtain the domain name www.aaa.net. (HT: DefendMyDomain.com). See The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns, FA0905001261364 (Nat. Arb. Forum July 25, 2008).

The decision is an interesting one in that it goes against the position of many trademark owners seeking to obtain a domain name under the UDRP that a pay-per-click advertising site cannot give rise to a legitimate claim to a domain name. The panel made clear that it was rejecting the argument that pay-per-click advertising is per se illegitimate and that whether the advertising is a bona fide offering of goods or services instead turns on whether the domain name owner is exploiting the trademark owner’s trademark by offering advertisements that confuse Internet users for commercial gain.

And in this case, the panel concluded that the domain name owner’s pay-per-click advertising was a bona fide offering of goods or services under the UDRP rather than an illegitimate exploitation of consumer confusion. The panel noted that the desirability of this particular three letter domain name (AAA is a top rating for a bond, a battery, a shoe size, and an acronym associated with many different organizations). The domain name is also a short, three-letter string. Kis v. Anything.com Ltd., D2000-0770 (WIPO Nov. 20, 2000) (recognizing the value of a three-letter domain name). Thus, the domain name owner may have registered for any of a number of reasons that have nothing to do with AAA’s business

Also important to this panel’s decision was that the pay-per-click advertisements were generally not related to any goods or services associated with AAA’s mark:

While [AAA] has found among the sea of auto-generated advertisements some related to its business, these appear to be few, and do not seem likely to create or exploit consumer confusion, and on this record could plausibly have been inadvertent. . . . Because such advertisements are auto-generated and rare, they do not appear to be targeted at [AAA’s] mark. The lack of targeted advertisements combined with the fact that is a desirable domain name for reasons unrelated to Complainant’s business suggest that Respondent’s pay-per-click advertising is a bona fide offering of goods or services.

And so the panel, by a vote of 2-1, refused to order the transfer of the domain name to AAA.

So does this decision represent a turn in the thinking of UDRP panelists regarding the business model of pay-per-click advertising? Based on the separate dissent filed by the lone dissenting panelist -- who made his disdain for the pay-per-click advertising business model quite clear -- there might still be some UDRP panelists that need some convincing:

Respondent’s business model is to take generic words and/or letter combinations and to register them as domain names. Once someone wants to acquire the domain name, Respondent will sell it (presumably at a profit, otherwise Respondent could not stay in business). This Panel believes such practices were intended to be prohibited by the policy, even though this case is a close call.

New York Federal Court Grants Preliminary Injunction in JAPONAIS Trademark Dispute

noreply@blogger.com (Ryan Gile) — Fri, 24 Jul 2009 20:00:00 +0000

I have previously written (link here) about the ongoing dispute between Roy Tuccillo and Geisha NYC, LLC (“Geisha NYC”) over the restaurant name “Japonais” (the “JAPONAIS mark”). In short, Geisha first opened its “Japonais” restaurant in Chicago in 2003. However, due to an oversight on the part of Geisha in not seeking to register its trademark with the USPTO right away, Tuccillo was able to file an intent-to-use trademark application in 2004 for the identical JAPONAIS mark before Geisha NYC had the chance to file its own registration application. Tuccillo’s application ultimately registered in March of this year. Tuccillo filed an action against Geisha for trademark infringement, and Geisha came back with counterclaims for cancellation of Tuccillo’s registration as well as trademark infringement.

On July 22, 2009, a federal court judge in the Eastern District of New York, in a very comprehensive and detailed opinion (and one that holds back no punches against Tuccillo), granted Geisha’s motion for preliminary injunction to enjoin Tuccillo from using the name “Japonais” in connection with restaurant and lounge services after finding a likelihood of success on the merits of Geisha’s counterclaim to cancel Tuccillo’s trademark registration on the basis of fraud. A copy of the court’s decision can be downloaded here. (HT: Marty Schwimmer).

In short, the court found Tuccillo’s evidence and testimony “incredible” (and not in the good way). In particular, the court did not believe Tuccillo’s claims that he was unaware of anyone else using the JAPONAIS mark when he filed his application in June 2004 . The court also found his statements for why he decided to use the word “Japonais” or how he developed the particular stylized lettering in his application completely lacking in credibility – and not helped out by the fact that there was evidence that he had copied and tried to register a different company’s unique logo as well.

Moreover, Tuccillo claimed in May 2008 that he had been using the JAPONAIS mark since April 1, 2008, in connection with restaurant and lounge services – a claim that the court found completely undermined the lack of any advertising, the lack of any sales records attributable to the restaurant, the lack of any health department permit, the fact that the telephone number listed on the menus were for Tuccillo’s “frozen food” business, and pictures showing that on March 23, 2009, at a time when the restaurant was purportedly open for lunch, there was a closed sign out on the front door with no employees and no food in sight.

All of this evidence paled in comparison to the evidence submitted by Geisha demonstrating the creation and development of the JAPONAIS mark in 2003 in connection with its Chicago restaurant, the subsequent opening of restaurants in New York City and Las Vegas in 2006, and Geisha's expert witness testimony that Tuccillo could not have created the JAPONAIS mark in the manner in which he stated he did.

In sum, the court agreed that the evidence supported the argument that Tuccillo submitted the trademark registration application for the identical JAPONAIS mark created by Geisha in a bad faith effort to “squat” on the mark in order to capitalize on Geisha’s failure to register the mark. And thus, Geisha demonstrated a likelihood of success on its counterclaims for cancellation of Tuccillo’s registration of the JAPONAIS mark based on Tuccillo’s false statements to the USPTO claiming to be the senior user of the mark.

Las Vegas Tropicana Hotel & Casino Files Nevada State Court Declaratory Relief Action to Keep Using the TROPICANA Name

noreply@blogger.com (Ryan Gile) — Wed, 22 Jul 2009 07:01:00 +0000

Las Vegas Sun reporter Steve Green reports (link here) on the brewing internal battle over the TROPICANA name.

It is a complicated story arising from the bankruptcy and reorganization of the company that owned Tropicana casinos in Las Vegas, Atlantic City, and throughout the United States and involving the competing interests of two different credit facilities. As part of the reorganization plans, one of the spun off companies received ownership of the “Tropicana” name while a second company, the one that would take over the actual Tropicana Hotel and Casino in Las Vegas (“TropicanaLV”), would be required to pay an annual license fee of $2 million to keep using the “Tropicana” name for the next five years.

The company that apparently now owns the TROPICANA trademarks and service marks (Tropicana Entertainment Holdings, LLC) recently filed two trademark applications for the design mark THE TROP LAS VEGAS EST. 1957 (pictured below) for casino services and for hotel, bar, and restaurant services.

Tropicana Las Vegas (est. 1957)

TropicanaLV – the “Tropicana” that was established in Las Vegas in 1957 – sees these trademarks filing as a threat in that it believes that the company which received the TROPICANA name in the reorganization is planning to eventually cut off TropicanaLV’s right to use the name TROPICANA. And so TropicanaLV is fighting back with a lawsuit in Clark County District Court seeking a declaratory judgment that TropicanaLV continues to have rights to use the TROPICANA name in connection with its hotel and casino (and indeed never even transferred those rights over).

Of course, because the mess is still in the jurisdiction of the bankruptcy court, Tropicana has filed a motion with the Delaware bankruptcy court to get confirmation that its lawsuit is not subject the stay or to ask that the stay be annulled for such action.

The history of the Tropicana and the details behind the 2008 bankruptcy and reorganization detailed in the complaint make for some great reading (for those of you interested in that sort of thing).

The Las Vegas Review Journal has its own article on the dispute (link here).

Update: Pamela Chestek over at Property, intangible provides her own detailed and insightful analysis of the dispute.

Incorp Services Sues Nevada Corporate Services for False Advertising

noreply@blogger.com (Ryan Gile) — Tue, 21 Jul 2009 00:40:00 +0000

I previously wrote (link here) regarding the lawsuit filed by Incorp Services, Inc., (“Incorp”), a corporate formation company which also offers registered agent services for business entities nationwide, against Legalzoom.com over some allegedly false statements being made by Legalzoom representatives about Incorp’s registered agent services. That case ultimately was settled by the parties.

On Friday, Incorp filed another action to fight against what it describes as false statements made by another competitor – Nevada Corporate Services, Inc. (“NCS”). See Incorp Services, Inc. v. Nevada Corporate Services, Inc., Case No. 09-cv-01300 (D. Nev. July 17, 2009). A copy of the complaint can be downloaded here.

Incorp claims that NCS sent out a letter in May to many of Incorp’s clients claiming that Incorp “may be discontinuing its services” and that such discontinuance of services may leave the client “vulnerable and at risk.” The letter supposedly included some criticisms about registered agent services and insinuating that such statements were about Incorp. Finally, the letter stated that Incorp’s clients may be “victimized by a lack of service and professionalism” by Incorp, that they may be “devastated by” and opened up to “strategic vulnerabilities” by Incorp’s failure to fulfill its statutory duties.

Incorp argues that NCS’s statements are false and defamatory, have caused Incorp immediate and irreparable harm, and were sent out knowingly, willfully, maliciously, and with the intent to harm Incorp. Incorp’s causes of action are for false advertising under 15 U.S.C. §1125(a) and defamation.

July 21, 2009 Update: Las Vegas Sun reporter Steve Green also reports (link here) on the lawsuit filing along with some interesting background regarding past litigation involving Incorp.

Wynn Resorts Files Declaratory Judgment Action Over XS

noreply@blogger.com (Ryan Gile) — Wed, 15 Jul 2009 00:40:00 +0000

On July 13, 209, Wynn Resorts Holdings, LLC (“Wynn Resorts”), the sole member of Wynn Las Vegas, LLC, which owns and operates the Wynn Las Vegas casino hotel and resort, filed a declaratory judgment action against NYLO Hotels, LLC (“NYLO”), in the U.S. District Court for the District of Nevada. See Wynn Resorts Holdings, LLC v. NYLO Hotels, LLC, Case No. 09-cv-01258 (D. Nev. July 13, 2009). A copy of the complaint can be downloaded here.

For those outside Las Vegas, the Encore Las Vegas is the latest hotel project by well-known hotel/casino developer Steve Wynn. As part of Encore, Wynn decided to develop a restaurant/bar/nightclub named XS. And as any good businessman does, Wynn filed for trademark protection for the mark XS (one application for night club services and one for restaurant and bar services – both filed February 4, 2008).

Wynn’s applications hit an initial stumbling block when its applications were rejected on the basis of likelihood of confusion over the registered (and incontestable) mark XS owned by XS Entertainment, Inc. ( for “entertainment in the nature of indoor and outdoor amusement complexes” and “restaurant services, namely, restaurant and bar services.”). The same office action noted that there was one other pending intent-to-use trademark application for XS filed by NYLO with an earlier effective filing date.

Wynn was able to overcome the likelihood of confusion rejection by simply acquiring the registered mark from XS Entertainment, Inc. (with all of its correspondence goodwill of course) Of course, if XS Entertainment knew that it was Wynn seeking the mark, XS Entertainment might jack up the price – and so Wynn had The Treadstone Group acquire the mark on July 18, 2008 on Wynn’s behalf and The Treadstone Group subsequently assigned the mark to Wynn on July 31, 2008 (click here for the PTO’s Assignment Records). Wynn subsequently renewed the registered mark on November 28, 2008 (with specimens showing the mark used in connection with the XS nightclub). [Comment: One wonders how much goodwill there was for Wynn to acquire along with the actual trademark registration?]

Of course, Wynn’s acquisition only allowed it to overcome half of the trademark battle. With Wynn owning the registered mark that was owned by XS Entertainment, Inc., the PTO still suspended prosecution of Wynn’s two pending applications pending the outcome of NYLO’s earlier filed intent-to-use application.

On April 22, 2009, NYLO sent a cease and desist letter to Wynn demanding that Wynn stop using the XS mark (and dropping the hint that it would be willing to discuss licensing opportunities). Wynn’s counsel responded to NYLO noting Wynn’s ownership of a trademark registration for XS as well as Wynn’s actual use in commerce of the XS mark (compared to NYLO’s pending intent-to-use).

NYLO’s counsel wrote back to Wynn on May 28, 2009, reiterating its demands that Wynn cease and desist and claiming that Wynn’s trademark registration for XS was invalid on the basis that a) when the registration was renewed, it was not being used for “indoor and outdoor amusement complexes” b) the original application was impermissibly broadened to include “bar services” and c) that the mark had been abandoned by XS Entertainment. NYLO argues that Wynn’s only rights are its common law rights acquired through its actual use of the XS mark in January 2009 – long after the constructive use date of NYLO’s application [ed.—and after Wynn had actual notice of NYLO’s pending intent-to-use application].

Based on this “reasonable apprehension” that Wynn is violating NYLO’s trademark rights and that NYLO will pursue injunctive relief against Wynn – when and if NYLO’s pending trademark application is ever registered – Wynn filed for a declaratory judgment that its use of XS is lawful and does not violate NYLO’s rights.

Of course, the big question here is how could NYLO have gotten its own XS trademark application approved by the PTO in light of the existing XS registration where there was a clear overlap of services in the area of “restaurant services.”

Looking at NYLO’s lengthy list of services, does Wynn have a possible argument that NYLO lacked a bona fide intent to use the mark in connection with all of the services described? After all, NYLO is still on its third extension of time to file a statement of use. Does NYLO have the business plan materials to show a bona fide intent back to when it first filed the application? We shall see.

Steve Green with the Las Vegas Sun, an avid trademark lawsuit watcher, has his own article on the lawsuit (link here).

Rosetta Stone Files Adword Infringement Lawsuit Against Google

noreply@blogger.com (Ryan Gile) — Tue, 14 Jul 2009 00:34:00 +0000

After going after several third parties for purchasing Rosetta Stone’s trademarks as Google Adwords (see prior blog posts here and here), Rosetta Stone decided to go straight to the source and join the bandwagon of Google Adword trademark infringement lawsuits by filing its own action against Google in Virginia District Court over Google’s use and sale of Rosetta Stone’s trademarks as Google Adwords to third parties. See Rosetta Stone LTD v. Google Inc., Case No. 09-cv-00736 (E.D. Va. July 10, 2009). A copy of the complaint can be downloaded here.

Eric Goldman’s Technology & Marketing Law Blog provides an insightful analysis of the complaint and adds the case to his growing list of Google Adword lawsuits that he is tracking.

Mary Kay Cosmetics Sues Yahoo Over “Yahoo Shortcuts” Feature In E-mails

noreply@blogger.com (Ryan Gile) — Fri, 10 Jul 2009 01:15:00 +0000

Both Mediapost and TheDomains have stories today about the trademark infringement filed by Mary Kay Cosmetics against Yahoo. See Mary Kay Inc. v. Yahoo! Inc., Case No. 09-cv-01278 (N.D. Tex. July 6, 2009).

The crux of the complaint is over the “Yahoo Shortcut” feature of Yahoo’s e-mail services whereby certain keywords in a particular user’s yahoo e-mail are highlighted and by scrolling the cursor over the text of the keywords a pop-up window appears which contains the search results generated by that particular term as searched through various types of integrated searches including Yahoo’s basic web search, HowStuffWorks.com, Wikipedia, and, as was apparently the case case here, “Shopping Offers.”

From Mary Kay’s perspective, an e-mail sent by an authorized May Kay representative to a customer using Yahoo’s e-mail is being “hijacked and manipulated by Yahoo and provide an unfair advantage for the unauthorized re-sellers and other competitors.” [Comment: hijacking and manipulating might be a little strong.]

One interesting point is the argument that e-mail recipients might "mistakenly believe that the hyperlinks and pop-ups which include ads associated with the Mary Kay marks were affirmatively included or authorized by either Mary Kay or the Independent Beauty Consultant sending the email." Of course, isn’t this only true for a short period of time during which yahoo e-mail users learn about the function and after which, they will clearly recognize it for what it is – a quicklink for Yahoo search engine results? After all, is there anybody out there who is truly confused anymore by the Google search engine results that appear at the top in the highlighted area that reads “Sponsored Links”? And don’t most internet users today recognize after typing (or mistyping) a particular domain name thinking that it is the website for the brand they are looking for only to find the standard landing page with click-through links that the page is simply not the page they were looking for and then simply brings up a new web browser page to use one of the major search engines to find the brand for which they were looking?

Of course, Mary Kay’s action suffers the same uphill battle as any of the “Google adword” trademark infringement cases. Indeed, Yahoo’s popup function appears to be nothing more than an interface that allows a user to see certain search engine results (Yahoo’s or otherwise) for a particular term in a pop-up screen. So is having the link in the e-mail what is really bothering Mary Kay – or is it the search results themselves? And as noted in one of the articles, while Mary Kay complains about “unauthorized resellers,” some of the products being sold may be authorized products that were properly purchased and being resold (in which case the use of the Mary Kay name in reselling them is not trademark infringement).

So let the Yahoo Shortcut based trademark infringement lawsuits begin. Can a “Yahoo E-mail Shortcut” class action lawsuit be far behind? Anything can happen in Texas!!!