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Tag Archives: Trademark Law

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

Atlas Shrugged – Hank Rearden and Trademark Infringement

Posted in Trademark Law

By: James Kachmar Two fans of Ayn Rand are slugging it out in federal court over each party’s use of one of Ms. Rand’s famous characters, Hank Rearden from Atlas Shrugged, in connection with their respective businesses.  The Ninth Circuit was forced to deal with the issue of whether plaintiff had produced enough evidence to… Continue Reading

Professional Athlete™ — Sports Figures Move to Protect Valuable Trademark Rights

Posted in Trademark Law

By: Zachary Wadlé  In this day and age, professional athletes increasingly understand the value of their persona and related trademark rights.  Earlier this year, Jeremy Lin of the New York Knicks exploded on the basketball scene and created a media frenzy in the process.  The interest was so intense that reporters started to refer to… Continue Reading

Fear the (Trademarked) Unibrow

Posted in Trademark Law

Anthony Davis is a well-known college basketball player who completed his freshman season in 2012 playing for the University of Kentucky Wildcats and thereafter declared his eligibility for the 2012 NBA draft.  Most people agree that Davis will be the number one overall pick in the 2012 NBA draft.  He is known for being a… Continue Reading

What’s in a Name?

Posted in Trademark Law

By: James Kachmar The Ninth Circuit recently dealt with the issue of whether the Federal Drug and Cosmetic Act (“FDCA”) prevents a plaintiff from bringing a Lanham Act claim alleging that the name and labeling of a juice beverage is deceptive and misleading.  The plaintiff Pom Wonderful LLC (“Pom”) produces and sells pomegranate juice and… Continue Reading

Where Is My Champagne?

Posted in Trademark Law

While champagne is rarely my drink of choice (the bubbles tickle my nose), those who prefer to imbibe champagne may have noticed that their favorite beverage might have quietly changed its name from “champagne” to “sparkling wine.”  In similar fashion, those who enjoy Basmati rice or Camembert cheese might also have noticed changes to the… Continue Reading

Six Key Points in Negotiating Brand Licensing Agreements

Posted in Trademark Law

By: Scott Hervey Brand licensing transactions can be structured in a wide variety of ways.  However the fundamental purpose remains the same; to give a third party the right to benefit from the goodwill and economic value associated with an established mark.  Regardless of the structure of the transaction, there are key deal terms that… Continue Reading

Skydiving and Trademark Infringement Damages

Posted in Trademark Law

By: James Kachmar The Ninth Circuit recently addressed the availability of a wide variety of damages in a trademark infringement case. In Skydive Arizona, Inc. v. Quattrocchi  (2012 U.S. App. LEXIS 5100), the Court analyzed the various types of damages that are available to litigants in a trademark infringement action. Skydive Arizona, Inc. (“Skydive”) operates… Continue Reading

The Blackberry Might be Addictive, but Don’t Call it a Crackberry

Posted in Trademark Law

So many of us have become hopelessly addicted to our Blackberry smartphones and personal messaging devices that the devices are frequently referred to as “Crackberries.”  Seeking to capitalize on this addiction, beginning in December 2006, Defining Presence Marketing Group (“DPMG”) sought to register four trademarks covering various iterations of the phrase “Crackberry.”  Claiming their use… Continue Reading

Naked Licensing: Trademark Owners Beware

Posted in Trademark Law

By: Jeffrey Pietsch  Naked licensing is not as fun as the name suggests. Rather it can mark the end of a trademark owner’s exclusive right to their trademark. Naked licensing occurs when the trademark owner fails to exercise adequate quality control over the licensee.  This usually occurs when a trademark owner grants a third party… Continue Reading

Court Finds Kinect and Kinbox Not Kinected

Posted in Trademark Law, Web/Tech

By Nathan Geronimo Kinbook, LLC, an online social networking company, recently sued Microsoft for unfair competition and reverse trademark infringement in United States District Court.  (Kinbook, LLC v. Microsoft Corp.,2012 U.S. Dist. LEXIS 8570.) Kinbook created a Facebook application called “Kinbox,” which allows Facebook users to create private sub-social networks for sharing of information within… Continue Reading

Protect your Brand from EXXXposure

Posted in Trademark Law

With the launch of each new Top Level Domain (“TLD”), brand owners are always concerned about protecting their trademark rights and preventing individuals from cybersquatting. The .xxx TLDs are coming and brand owners have only a very short period of time left to take proactive steps to prevent their brands from being used in connection with… Continue Reading

What’s in a Name?

Posted in Trademark Law

By Zachary Wadlé Satoru "Miles" Kobayashi opened a new jazz club and restaurant in Manhattan in April 2010. Kobayashi named his establishment the “Miles Café” and used the “Silhouette Profile” of jazz icon Miles Davis as part of his logo. The heirs of Miles Davis felt “Kind of Blue” about this development and sued Kobayashi in federal… Continue Reading

Best Buy Gets “Geeked Up” Over Trademark Protection

Posted in Trademark Law

By Zachary Wadlé The term “geek” is no longer a pejorative term. Just ask consumer electronic retail giant Best Buy. The chain recently threatened online rival Newegg.com with legal action, arguing that its Geek On advertising slogan sounded too similar to Best Buy’s tech support service, Geek Squad. Newegg responded by posting Best Buy’s cease-and-desist letter on Facebook… Continue Reading

Trademark Basics: Infringement

Posted in Trademark Law

by David Muradyan 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 combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to… Continue Reading

Levi’s Legal Department: The Ultimate Pocket Protectors

Posted in Trademark Law

by Nathan Geronimo Earlier this month, the Ninth Circuit addressed the standard for evaluating a claim for trademark dilution under the Trademark Dilution Revision Act of 2006 (“TDRA”), 15 U.S.C. §1125(c). The TDRA is meant to protect a property right in a trademark. Dilution prevents the use of a famous mark by others in any manner that… Continue Reading

How to Perfect a Security Interest in Intellectual Property (Copyrights, Trademarks and Patents)

Posted in Copyright Law, Patent Law, Trademark Law

by David Muradyan   When a creditor provides a loan to a debtor, the debtor will often grant to the creditor a security interest in the debtor’s collateral, including the debtor’s intellectual property. A creditor who receives a security interest in the debtor’s intellectual property, usually by a security agreement, must perfect the security interest… Continue Reading

Ninth Circuit Clarifies Position on Keyword Advertising Liability

Posted in Trademark Law

By Scott Hervey            Early this year, the Ninth Circuit issued its opinion in Network Automation v. Advanced Systems Concepts and clarified that the use of another’s trademark as a search engine keyword to trigger one’s own product advertisement is “use in commerce” and may violate the Lanham Act. Prior to its decision in this case, the… Continue Reading

Trademark Landmines

Posted in Trademark Law

By Matt Massari Trademarks and their accompanying goodwill are of tremendous importance to any company and are often a business’ most valuable asset.  Some business owners, in a rush to form a company or get their products to market, devise names in a hurry and do not clear them for trademark purposes.  Conducting trademark due… Continue Reading

Apple Sues Amazon for Trademark Infringement

Posted in Trademark Law

by David Muradyan Is Apple, Inc.’s (“Apple”) APP STORE mark worthy of trademark protection or is the mark merely a generic term which deserves no protection? This is among the questions that the U.S. District Court for the Northern District of California (the “Court”) will decide in Apple Inc. v. Amazon.com, Inc., Case No. 11-1327…. Continue Reading

Trademark Basics: Dilution

Posted in Trademark Law

by Jeff Pietsch Trademark law is traditionally concerned with protecting consumers. Trademarks protect consumers by helping consumers identify the source of the goods or service. For example, when a consumer buys a product, she knows exactly what she will get with the product based on its mark. Trademark law was designed to protect these consumers by protecting these… Continue Reading