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Tag Archives: Trademark Law

Website Listing of Tequila Client Work Gets PR Firm a Trademark Shot

Posted in Copyright Law, Patent Law, Trademark Law

Can the owner of renowned tequila brand Patrón prevent a former marketing and PR firm from listing it as a client on its website and discussing the services it provided?  Patrón believes it can and has sued its former marketing firm, The Reindeer Group, for trademark infringement in Federal court in Texas. In 2009 Patrón… Continue Reading

Five IP Pitfalls That Start-Up (and Grown Up) Companies Can Easily Avoid

Posted in Copyright Law, Legal Info, Patent Law, Trade Secrets, Trademark Law

In business, there are numerous opportunities for pitfalls, mistakes and errors and they come up in all different legal areas – from basic formation issues to labor and employment to intellectual property. Mistakes and missteps involving intellectual property can be particularly problematic because IP is a company asset; it constitutes a part of (often a… Continue Reading

Pacifico Defends its Trademark Rights on Canadian Soil

Posted in Trademark Law

Another intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”), arguing the latter’s name was confusingly similar to PWB’s various brew-related trademarks. For those who do not know, Cerveceria del… Continue Reading

Does Trump Own “Make America Great Again?”

Posted in Trademark Law

As I frequently mention in my articles, trademark law is a much more prevalent part of the average person’s life than they realize. We are surrounded by the trademarks of numerous companies every time that we step outside, or even when we look around our own homes. However, we would not generally expect for trademark… Continue Reading

Tiffany & Company v. Costco Wholesale: Tiffany is far from Generic

Posted in Trademark Law

On September 9, 2015, the United States District Court for the Southern District of New York ruled that Costco was willfully infringing Tiffany & Co.’s trademarks by selling diamond engagement rings bearing the renowned jewelry retailer’s name. The suit started back in 2012 when a patron of Costco in Huntington Beach, California decided to reach… Continue Reading

California Homegrown: Protect Your Pot!

Posted in Trademark Law

Let’s face it, we live in a progressive era. Many things that were once taboo in the eyes of the law have become not only socially acceptable, but legal. For example, twenty years ago, if a California state police officer saw you walking down the street smoking what he knew to be marijuana, you were… Continue Reading

The Long Lashes of the Law: The Federal Circuit Rejects Nation-wide Application of An Injunction Based on California Unfair Competition Statutes

Posted in Legal Info, Trademark Law

By:David Gabor On December 30, 2013, the Federal Court of Appeals, in Allergan, Inc. v. Athena Cosmetics, Inc., et al., an as-yet unpublished decision, affirmed a California District Court ruling that has the potential significantly to affect advertising law and the use of the California unfair competition statute at B&P Code §17200, et seq. to… Continue Reading

GoldieBlox v. Beastie Boys – “Girls To Bring A Lawsuit”

Posted in Copyright Law, Entertainment Law, Trademark Law

 By: Scott Hervey From all appearances, it would have been a fight worth watching. In one corner was the Beastie Boys, the Brooklyn bread, 80s powerhouse rap group; they aggressively enforce their intellectual property rights and have never allowed their music to be used in advertisements.  (This commitment was so important to the group that in his… Continue Reading

Weaving a Trademark

Posted in Copyright Law, Patent Law, Trademark Law

 By: Lisa Y. Wang This month, the Trademark Trial and Appeals Board ruled that Bottega Veneta, a luxury Italian fashion brand, well known for its "weave design" handbags and accessories, could register a trademark for that specific design. Bottega Veneta handbags and accessories do not have obvious logos on the outside, signifying its origin. Instead, the weave… Continue Reading

Bad Domain Names

Posted in Trademark Law

Very often one of a business’ most valuable assets is its internet domain name. Even in large, well-established companies, a portfolio of well-chosen domains amount to a significant set of assets, often driving sales and advertising. Yet many businesses often make poor choices in connection with these assets. As the World Wide Web began to mature into… Continue Reading

THE NINTH CIRCUIT THROWS A PENALTY FLAG AGAINST ELECTRONIC ARTS

Posted in Privacy, Trademark Law

  By Dale C. Campbell On July 31, 2012, the Ninth Circuit issued its ruling protecting the right of privacy held by collegiate athletes against the use of their likeness in connection with video games. (Keller v. Electronic Arts, Inc. (2013) 9th Circuit Court of Appeals 10-15387. This decision joins the Third Circuit’s decision in Ryan Hart… Continue Reading

Keyword Advertising Quagmire

Posted in Trademark Law

  By Scott Hervey “Everyone does it” exclaimed the IT staffer in charge of the company’s website. "Everyone uses their competitor’s brand as a keyword to trigger a paid advertisement."   The company’s chief marketing officer remembers something her mother use to say about jumping off a bridge…but that’s not important right now. They received a letter from… Continue Reading

THE BREASTAURANT TRADEMARK – NOT SUCH, A BIG DEAL AFTER ALL

Posted in Trademark Law

By Scott Hervey What do Hooters, Twin Peaks, Canz, Tilted Kilt, and Mugs N Jugs have in common.  These are all “Breastaurants.” According to Wikipedia, a breastaurant is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”    However, on October 23, 2012  the United States Patent… Continue Reading

What’s In a Name? Trademark Infringement and Artistic Expression

Posted in Trademark Law

By Nathan H. Geronimo A recent case in California’s Sixth District Court of Appeal, Winchester Mystery House, LLC v. Global Asylum, Inc., illustrates California’s treatment of trademark infringement with regard to claims involving artistic works.  Winchester Mystery House is a well-known tourist attraction in San Jose, California.  It is a large, Victorian-style mansion built and… Continue Reading

The Voluntary Cessation Doctrine: An Escape from Troublesome Litigation?

Posted in Trademark Law

By Dale Campbell The United States Supreme Court issued a ruling in January 2013 clarifying the application of the Voluntary Cessation Doctrine in trademark actions. The case is entitled Already LLC, dba Yums v. Nike, Inc., 184 L.Ed.2d 553 and 2013 LEXIS 602. The Supreme Court’s decision provides important practical guidance for all practitioners. The Voluntary Cessation Doctrine… Continue Reading

Licensor Can Potentially Be Liable for Licensee’s Misappropriation of Third Party Athlete’s Likeness

Posted in Trademark Law

By Scott Hervey Licensing attorneys should take note of the recent decision by the Central District of California in Jason Bitzer v. Body Glove Int’l et al. In this case, Body Glove licensed its trademark to Sport Dimension who manufactures bodyboards. Sports Dimension allegedly had the permission to use the likeness of professional bodyboarder Jason Bitzer on… Continue Reading

Bridging the Gap in Cases of Trademark Infringement

Posted in Trademark Law

By: Scott Hervey Often in trademark cases, the goods or services at issue are either exactly the same, related or complementary.  In cases where the goods are non-competitive or not related, often that will be the end of the inquiry into likelihood of confusion.  However, in the case of non-competitive goods, infringement can be found… Continue Reading

Jack Daniels Proves That You Can Catch More Flies With Whiskey

Posted in Trademark Law

Jack Daniels “Old No. 7” Brand Tennessee Sour Mash Whiskey is marked with a distinctive black label including stylized white writing attached to a bottle of Tennessee’s finest sour mash whiskey.  For some, the image of a Jack Daniels bottle conjures images of drunken bar brawls, motorcycle gang members guzzling whiskey or the antics of… Continue Reading

Likelihood of Confusion analysis under the Lanham Act

Posted in Trademark Law

By: David Muradyan The Ninth Circuit, like many of its sister circuits, uses the “likelihood of confusion” analysis to determine whether one mark infringes upon another mark. For background, the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127, defines a trademark to mean “any word, name, symbol, or device or any… Continue Reading

Olympics Go For the Gold In Trademark Enforcement

Posted in Trademark Law

By: Scott Hervey Without fail, every two years I get a call from a client who wants to incorporate an element of either the Winter or Summer Olympics into a marketing scheme.  This year was no exception.  One of our clients – a fairly significant company in the wine industry – created a graphic featuring… Continue Reading