Trademark Law

Subscribe to Trademark Law via RSS

transparentIn 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 importantly, 1800 Tequila (“1800”).  After placing a significant amount of time and effort into the release of its new tequila, Camarena, Gallo was informed that its supplier, Tequila Supremo, had received a cease and desist letter from Agavera Camichines S.A. de C.V. (“Agavera”), the holder of trademark and trade dress rights for the “1800 Tequila” brand.  Accordingly, Gallo brought suit for declaratory relief in the United States District Court in the Eastern District of California.

Agavera and co-defendant, Proximo Spirits Inc. (“Proximo”), counterclaimed that Gallo’s Camarena bottle design infringes Proximo’s registered trade dress and also constitutes false designation of origin under the Lanham Act and unfair competition under common law.  Gallo sought and prevailed on its motion for summary judgment before the Honorable Judge Lawrence J. O’Neill of the Eastern District of California.  Judge O’Neill found that Proximo failed to raise a genuine issue as to whether its trade dress was distinctive.  Furthermore, it was found that there was no likelihood of confusion between 1800 Tequila and Camarena.  Proximo moved for reconsideration on grounds that its trademark registration and related description of the 1800 Tequila bottle and stopper should have constituted sufficient evidence for a trier-of-fact to rely on in deeming the bottle distinctive.  Nonetheless, Judge O’Neill denied the request.  The court also denied Proximo’s motion to dismiss the declaratory judgment action on grounds that the court lacked subject matter jurisdiction.  As a result, Proximo appealed the decision to the Ninth Circuit to challenge the court’s ruling on the motion to dismiss and its grant of summary judgment on the counterclaims.  
Continue Reading Gallo Whines Its Way Into the Tequila Business

 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 will, Adam “MCA” Yauch stated that "in no event may my image or name or any music or any artistic property created by me be used for advertising purposes.") In the other corner was GoldieBlox, an upstart toy company, founded by a Stanford-educated product designer, with a goal to disrupt the current vision of “toys for girls” and inspire the next generation of female engineers.
Continue Reading GoldieBlox v. Beastie Boys – “Girls To Bring A Lawsuit”

 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 patterns, multiple thin strips of leather forming a weave pattern (much like a basket weave) at a 45 degree angle, serves as its "trademark" and source of origin. Bottega Veneta claims that it created this very specific leather weaving technique and pattern, known as intrecciato, in the 1960’s.   Since there is no logo, this easily made weave pattern is constantly copied by fast fashion retailers and other brands, hence Bottega Veneta’s attempt to register a trademark for that specific pattern.

Continue Reading Weaving a Trademark

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 a viable business method in the mid-1990’s, businesses began snapping up domain names. A significant number of startup companies began attempting to reinvent various categories of business by running them in an online or “virtual” presence. Most readers will recall failed businesses such as WebVan, pets.com and e-toys.com. Yet these businesses failed largely because of overly ambitious business plans which devoured enormous amounts of startup capital with elaborate advertising campaigns or, in WebVans’s case, an insanely ambitious attempt to build a nationwide grocery delivery logistics system from scratch with seed money.Continue Reading Bad Domain Names

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 v. Electronic Arts, Inc., U.S. App. LEXIS 10171 (3d Cir. 2013), finding that the collegiate athletes’ right to publicity outweighs Electronic Arts’ First Amendment rights. 

Sam Keller was a starting quarterback for Arizona State in 2005, before joining Nebraska in 2007. Electronic Arts ("EA") is the producer of a series of video games known as NCAA Football, in which EA seeks to replicate a school’s entire team as closely as possible. NCAA Football is an interactive game that allows the video gamer a wide range of playing options including modification of a player’s size and abilities as well as for which team he plays. Keller sued EA and the NCAA in a putative class action. EA filed a SLAPP motion ("Strategic Lawsuit Against Public Participation"), claiming that this conduct was protected by the First Amendment. The District Court denied the SLAPP motion, and EA appealed. 

The Ninth Circuit recognized that video games, like books, plays, and movies, are entitled to the full protections of the First Amendment.  (Brown v. Entm’t Merchs. Ass’n, 131 S.Ct. 2729, 2733 (2011). However, the First Amendment rights are not absolute, and states may recognize the right of publicity to a degree consistent with the First Amendment. (Zacchini v. Scripps-Howard Broad Co., 433 U.S. 562, 574-75 (1977).) 

Continue Reading THE NINTH CIRCUIT THROWS A PENALTY FLAG AGAINST ELECTRONIC ARTS