trademark infringement

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A few years ago, I wrote a column addressing a case in which Pom Wonderful LLC sued Coca Cola Company in connection with the marketing of one of its pomegranate-blueberry juice products.  That case dealt with whether one of Pom Wonderful’s claims were barred by the Federal Drug and Cosmetic Act with regard to labeling issues.

Ever protective of its brand, Pom Wonderful was recently successful before the Ninth Circuit in a trademark infringement case.  Pom Wonderful sued a competing pomegranate beverage maker doing business under the name Pur Beverages for trademark infringement.  After the district court denied Pom Wonderful’s motion for preliminary injunction barring the defendant from selling its competing beverage, Pom Wonderful appealed to the Ninth Circuit.

Pom Wonderful owns numerous trademark registrations that make up its “Pom” brand family.  Pom Wonderful spends significant sums in marketing its products and policing against other companies’ uses that may infringe on its trademarks.   In connection with these efforts, Pom Wonderful discovered that Pur was selling a pomegranate flavored energy drink that it called “Pŏm”.  When Pur refused to change its marking, Pom Wonderful sued it for trademark infringement and moved for an injunction.Continue Reading Protecting Trademarks and the Likelihood of Confusion Factor

Clearly there is no love lost between John Wayne Enterprises, LLC (“JWE”), the entity owned by John Wayne’s heirs which controls the intellectual property related to John Wayne, and Duke University.   Both have have been locked in battle over various trademarks incorporating the word DUKE.  The most recent skirmish involves a trademark application filed by John Wayne Enterprises, LLC (“JWE”)  for the following design mark for alcoholic beverages, excluding beer:

Duke University requested and was granted  an extension of time to potentially opposition to the registration of this mark.    Previously, Duke University opposed JWE’s’ application to register DUKE for restaurant services, claiming that the mark is likely to cause confusion with Duke University’s other DUKE trademarks and/or dilute Duke University’s famous trademarks. Specifically, Duke University alleged that:  “[JWE] seeks to register a mark that is substantially similar to [the University’s] famous mark DUKE, and that moreover is likely to be abbreviated simply as DUKE and expressed orally simply  as DUKE, for goods that are closely related to goods and services with which [the University’s] DUKE Marks are used…”

It appears that this time, JWE took John Wayne’s quote  “You tangle with me, I’ll have your hide.” literally and didn’t wait and see whether the University actually filed an opposition.  JEW filed a complaint for declaratory relief in the United States District Court for the Central District of California, requesting the court to declare that the above mark does not infringe or dilute any of the DUKE trademarks owned by Duke University.  In its complaint it alleges that “Duke University believes that products bearing John Wayne’s world renowned image and signature…will somehow be confused with being associated with Duke University.” Further, JWE alleges that “in light of the multiple Oppositions and Cancellation proceedings Duke University has filed against JWE and the claims made therein, JEW believes Duke University contends that JEW’s [registration and use of its marks] or any other mark that includes the term DUKE are likely to cause confusion with [the marks owned by Duke University] and intends to sue JWE for trademark infringement, notwithstanding that JWE’s use is directly associated with and expressly linked to John Wayne.”
Continue Reading The Duke and Duke Duke It Out In Trademark Rowe