The Trademark Trial and Appeals Board recently issued an interesting decision regarding standing to oppose the registration of trademark applications. United Trademark Holdings, Inc. filed for registration of the mark RAPUNZEL for use in conjunction with dolls and toy figures. However, after the USPTO’s examining attorney published the mark for opposition, a law professor filed… Continue Reading
Tag Archives: Trademark Law
Googling Google
Posted in Copyright Law, Cyberspace Law, Trademark Law, Web/Tech“I googled it …” has become ubiquitous in every day conversation. Many of us refer to “googling” as the act of searching the internet regardless of whether we use the Google search engine to do so. But has our everyday use of the verb “googling” rendered the Google trademark unprotectable? “Nope,” said the Ninth Circuit… Continue Reading
Is Marilyn Monroe Too Generic to Be Registered as a Trademark?
Posted in Trademark LawI’ve written on numerous occasions in the past about celebrities who registered their own names as trademarks with the United States Patent and Trademark Office. Just the other week, I wrote about how UFC superstar Conor McGregor had filed an application to register his name as a trademark, and in that same article, I mentioned… Continue Reading
Website Listing of Tequila Client Work Gets PR Firm a Trademark Shot
Posted in Copyright Law, Patent Law, Trademark LawCan 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
Small Burger Chain Has a Beef With Chipotle
Posted in Copyright Law, Patent Law, Trademark LawBy: Scott Hervey Chipotle’s entry into the burger business has a Boston based small burger chain up in arms. The Boston burger spot, which has been in operation since 2010 and goes by the name Tasty Burger, has a beef with the brand Chipotle has chosen for its restaurants, Tasty Made. Tasty Burger claims that Chipotle… 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 LawIn 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 LawAnother 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 LawAs 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 LawOn 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 LawLet’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
Gallo Whines Its Way Into the Tequila Business
Posted in Trademark LawIn the not so distant past, E & J Gallo Winery (“Gallo”) decided that it was not satisfied with only being a player in the wine business. It decided to expand his horizons and venture into the tequila business, which is currently filled with such players as Patron, Don Julio, Jose Cuervo, and perhaps most… Continue Reading
Red Rothko: Confidentiality Agreements in the World of Big Art
Posted in Copyright Law, Patent Law, Privacy, Trademark LawBy: David R. Gabor I. The Art World Is No Longer A Quiet Place Decades ago, a former counsel for the Metropolitan Museum of Art in New York City commented that transactions in the art world are generally very "hush-hush" and have always been that way. See Gabor, Deaccessioning Fine Art Works, 36 UCLA L…. 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 LawBy: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 LawBy: 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 LawBy: 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 LawVery 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 LawBy 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 LawBy 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 LawBy 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 LawBy 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 LawBy 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 LawBy 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 LawBy: 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 LawJack 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
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