Under 15 U.S.C. §1065, subject to certain criteria, a registered mark that has been in continuous use for five consecutive years after the date of registration and is still in use shall be deemed incontestable. Incontestable status is not available for marks where (1) there has been a final decision adverse to the registrant’s claim of ownership or right to register the mark; (2) there is a pending TTAB or court action involving the mark; or (3) the mark is generic.Continue Reading TTAB Takes Up Question Whether Incontestable Status Lends To Mark’s Strength In Likelihood of Confusion Analysis
Nominative Fair Use of a Lexus
Farzad and Lisa Tabari are auto brokers specializing in matching customers with new Lexus automobiles through authorized Lexus dealers. They used two Internet domain names to market their business – buy-a-lexus.com and buyorleaselexus.com. Toyota Motor Sales U.S.A. (“Toyota”), the exclusive distributor of new Lexus vehicles, objected to the Tabari’s use of their trademark “Lexus” in the domain names, and sued for infringement. The district court found infringement after a bench trial, and granted Toyota’s request for an injunction. Specifically, it enjoined the Tabari’s use of the Lexus mark in any domain names. The Tabaris appealed to the Ninth Circuit, which agreed with the Tabaris and reversed. Toyota Motor Sales U.S.A., Inc. v. Tabari (9th Cir. July 8, 2010).Continue Reading Nominative Fair Use of a Lexus
Trademark Dilution: Visa vs. eVisa
James Kachmar is a shareholder in Weintraub Genshlea Chediak Tobin & Tobin’s litigation section. He represents corporate and individual clients in both state and federal courts in various business litigation matters, including trade secret misappropriation, unfair business competition, stockholder disputes, and intellectual property disputes. For additional articles on intellectual property issues, please visit Weintraub’s law blog at www.theiplawblog.com.
Continue Reading Trademark Dilution: Visa vs. eVisa
Co-existing with Another Trademarked Owner Through a Joint Consent Agreement
The following scenario is common when a business owner attempts to register a trademark with the United States Patent and Trademark Office (“USPTO”): The business owner decides upon a seemingly unique business trademark. The business owner conducts a quick internet search for similar trademarks being used in the same industry, and does not find anything. Confident in the uniqueness of the mark, the business owner files for registration of the trademark with the USPTO, pays the required fee, and presumes the application will fly through the registration process with a hitch. A few months later, the business owner receives an “office action” from an Examining Attorney at the USPTO.Continue Reading Co-existing with Another Trademarked Owner Through a Joint Consent Agreement
College Licensing Front: Former Star Student-Athletes, Recent Court Order Move NCAA Licensing Suit Forward
By: In February 2010, a U.S. District Court judge for the Northern District of California denied the National Collegiate Athletic Association’s motion to dismiss a class-action lawsuit that argues the NCAA and its licensees should compensate former student athletes for the use of their images and likenesses. Subsequent to the judge’s order, eleven former college football and basketball players joined former UCLA basketball star Ed O’Bannon in the litigation. O’Bannon alleges that the NCAA has and continues to enter into agreements that allow the use of his image without compensation paid to him, including a 2007 agreement between the NCAA and Thought Equity Motion, Inc. to offer “classic” college basketball games online. Continue Reading College Licensing Front: Former Star Student-Athletes, Recent Court Order Move NCAA Licensing Suit Forward