Trademark Law Updates - Commentaries Only - from Lawupdates.com

In re Spirits Int’l: A Mark Is Geographically Deceptively Misdescriptive Only if Materially Deceptive to a Substantial Portion of the Intended Audience

2009-06-26T19:38:25+00:00

Trademark Law || Clarifying the application of the doctrine of foreign equivalents, the Federal Circuit held that a mark is geographically deceptively misdescriptive if a substantial portion of the relevant consumer market is likely to be deceived by the mark. In In re Spirits International, 563 F.3d 1347 (Fed. Cir. 2009), the Federal Circuit vacated a TTAB decision that had affirmed the Patent Office’s refusal to register a mark on the grounds that it was primarily geographically deceptively misdescriptive. The Federal Circuit remanded the case for a determination of whether a substantial portion of the target audience would be deceived by the mark.

LSU v. Smack Apparel: Trademark Protection for Color Schemes

2009-02-6T17:50:00+00:00

Trademark Law || In Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the Fifth Circuit upheld the district court’s finding that a t-shirt maker who used school color schemes in combination with specific facts and indicia about the school infringed on the schools’ trademark rights in those color schemes, even if neither the school logo nor other marks appeared on the t-shirt. The case is a huge victory for universities and their respective trademarks. More importantly, however, the case marks the first time a court has analyzed the trademark rights of a color scheme separate and apart from an accompanying word mark or logo.

Audi v. Shokan Coachworks: Trademark Infringement in Email Signature

2009-01-27T23:38:00+00:00

Trademark Law || In the case Audi AG v. Shokan Coachworks Inc., 2008 WL 4911730, No. 1:07-CV-00173 (N.D.N.Y. 2008), the federal district court grappled with a slew of trademark claims, combining into one opinion many of the issues raised by a number of other previous courts. Specifically, the court could not grant summary judgment in Audi’s favor on one issue because it did not properly authenticate archive.org website printouts. The court also joined the ranks of many federal district courts that chose the 9th Circuit test for nominative fair use over the 3rd Circuit court’s test. The parties’ previous settlement agreement, in which certain limited uses were allowed, played a major role in the outcome of the cross-motions for summary judgment.

E.S.S. Entm’t 2000 v. Rock Star Videos: First Amendment Trumps Trademark Rights

2009-01-7T03:43:41+00:00

Trademark Law || In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the 9th Circuit U.S. Court of Appeals confirmed that when trademark rights clash with the First Amendment, the First Amendment usually wins – at least in cases involving artistic or creative endeavors. The court affirmed the grant of summary judgment in favor of the creators and publishers of the Grand Theft Auto series of video games against the owner of a Los Angeles strip club who claimed that the game infringed on the club’s trademark and trade dress. Specifically, the court applied the Rogers v. Grimaldi two-prong analysis to find that the First Amendment protects the game’s use of the club’s mark in the face of a Lanham Act challenge.

Tiffany v. eBay: A Trademark Owner Must Police Its Own Marks on the Internet

2008-09-26T16:59:00+00:00

Trademark Law || In its significant opinion in Tiffany v. eBay, ___ F. Supp. 2d ___, 2008 WL 2755787 (No. 04 Civ. 4607) (S.D.N.Y. , July 14, 2008) the Southern District of New York rejected an effort by renowned jeweler Tiffany to expand the reach of contributory trademark infringement. Tiffany’s theory of secondary liability would have imposed liability for trademark infringement upon web-based intermediaries whose users infringe on trademarks by selling counterfeit goods. The opinion fills an important gap in the precedent of contributory trademark infringement, but it also emphasizes that trademark law is about consumer protection, not the suppression of speech. Tiffany has filed an appeal of the decision with the U.S. Court of Appeals for the 2nd Circuit.

Burck v. Mars: The Naked Cowboy Shall Ride On

2008-09-3T16:25:02+00:00

Trademark Law || Robert Burck, a.k.a. The Naked Cowboy, an iconic street performer in Times Square, had the foresight to trademark his name and image. When the Mars company developed an ad campaign depicting its famous M&M candies in and around New York City, they chose to dress up one of the candies as The Naked Cowboy, although they failed to seek or obtain his permission first. Burck sued for trademark infringement, claiming false endorsement; Mars claimed fair use as a parody. Even though that big blue M&M looked nothing like Robert Burck, the M&M’s outfit, setting, and potential for consumer confusion was enough. On motions to dismiss, a federal court in New York decided that Burck’s false endorsement claims could proceed to the factfinder, as could Mars’ defense of parody. Burck v. Mars, Inc., ___ F. Supp. 2d ___, 2008 WL 2485524, No. 08 Civ. 1330 (DC), (S.D.N.Y. 2008).

JA Apparel v. Abboud: When a Name Is More Than Just a Name

2008-07-17T16:31:00+00:00

Trademark Law || When clothing designer Joseph Abboud had a falling out with the new management of JA Apparel, the clothing company he had founded, he tried to start a competing clothing line called “jaz.” He planned to use his name in jaz promotions, identifying himself as the designer of the new line. One little problem – Abboud had sold the exclusive rights to the use of his name for commercial purposes to JA Apparel a few years earlier. JA Apparel sought an injunction against Abboud, seeking to prohibit Abboud from using his own name to promote any fashion line. The magistrate judge agreed, finding that Abboud had forever contracted away the rights to use his own name to promote any fashion line other than JA Apparel. Though the contract issue was decisive, the court noted that Abboud’s use of his name to promote jaz would also result in a high likelihood of confusion and therefore constituted trademark infringement as well.

Haute Diggity Dog Court Applies Tests in Determining What a Successful Parody Is

2008-02-25T17:33:46+00:00

Trademark Law || The case Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007) was the first case an appellate court heard under the Trademark Dilution Revision Act of 2006 (TDRA). Though the TDRA generally favors companies like Louis Vuitton that try to protect their famous trademarks from dilution, the Haute Diggity Dog court affirmed the lower court’s decision against Louis Vuitton, finding that the defendant’s successful parody would not dilute the Louis Vuitton brand.

Custom Manufacturing v. Midway Services Case: No Likelihood of Confusion If There Is No Actual Perception

2007-12-20T23:46:00+00:00

Trademark Law || Component parts manufacturers will want to pay attention to this case. In Custom Mfrg. V. Midway et al, 508 F.3d 641 (2007), the 11th Circuit found that when there is minimal likelihood that a potential customer will see the allegedly infringing product, there is no likelihood of confusion, and therefore no infringement. The Court also narrowly interpreted the notion of who might be a potential “customer” for purposes of analysis of the “likelihood of confusion” element.

Pebble Beach Court Examines Purposeful Direction of a Passive Website

2007-05-30T13:26:00+00:00

Trademark Law || Plaintiff Pebble Beach Company owned and operated a golf course resort in California. Defendant operated a small-business in southern England and ran a passive website located at www.pebblebeach-uk.com. Plaintiff sued for trademark dilution in the district court in California. The defendant moved for dismissal based on a lack of personal jurisdiction. The district granted the dismissal and denied Plaintiff's request to conduct jurisdictional discovery. The Ninth Circuit affirmed the district court's ruling, holding that mere ownership of a passive website that does not purposefully direct its activity at the forum cannot be subjected to personal jurisdiction there.