The IP Law Blog Focusing on legal trends in data security, cloud computing, data privacy, and anything E

Tag Archives: Trademark Law

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

Advertisers Beware: Using a Competitor’s Registered Trademark as a Keyword with Google’s AdWords Program can Constitute Trademark Infringement

Posted in Trademark Law

by David Muradyan Can an advertiser use a competitor’s registered trademark as a keyword with Google’s  AdWords program to advertise its own product or service? In Binder v. Disability Group, Inc., Case No. CV 07-2760-GHK (Ssx), 2011 U.S. Dist. LEXIS 7037 (C.D. Cal., Jan. 25, 2011) (“Binder”), defendants Disability Group, Inc., a law firm specializing… Continue Reading

“Obamification”: Barack Obama as a Trademark

Posted in Trademark Law

by Matt Massari People often attempt to register the names of public or famous figures as trademarks for use in association with novelty items. Section 2(c) of the Trademark Act “absolutely bars the registration of a designation that identifies a particular living individual absent written consent.”  In determining whether a particular living individual with that “name”… Continue Reading

Microsoft v. Apple In a “Generic” Trademark Dispute

Posted in Trademark Law

by Zachary Wadlé On July 17, 2008, Apple, Inc. applied to register the trademark “APP STORE” covering the Cupertino based company’s online store where users can buy various software applications for their iPhones, iPads, and/or iPods. Apple eventually completed the trademark examination process, and the mark proceeded to publication in the Trademark Official Gazette on January… 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. A trademark owner may grant a license to another to use the owner’s trademark. For example, following the San Francisco Giants’ World Series victory, the amount and type of… Continue Reading

Affiliated Companies and Likelihood of Confusion

Posted in Trademark Law

by Matt Massari It may make business sense to put ownership of related trademarks in different subsidiaries. Under In re Wella A.G., 787 F.2d 1549, 229 USPQ 274 (Fed. Cir. 1986), one can generally register similar marks owned by affiliated companies, as long as it’s done properly under the requirements of the Trademark Act. 

Naked Licensing and the Freecycle Case

Posted in Trademark Law

By James Kachmar On November 24, 2010, the Ninth Circuit announced its decision in FreecycleSunnvale v. The Freecycle Network, a case involving the naked licensing defense to trademark infringement. FreecycleSunnyvale is a member group of The Freecycle Network, an organization devoted to facilitating recycling. The Freecycle Network was formed in March 2003 as an Arizona non-profit corporation… Continue Reading

Can It Still Be On Like Donkey Kong.

Posted in Trademark Law

By: Scott Hervey In early November, 2010 Nintendo of America filed a trademark registration application for the mark ITS ON LIKE DONKEY KONG for, among other items, video games.   Nintendo filed its mark on an intent to use basis in preparation for the launch of its video game, Donkey Kong Country Returns, for the Wii… Continue Reading

Trademark Infringement: Factors Considered in Consumer Confusion

Posted in Trademark Law

By: Jeff Pietsch Trademark infringement occurs when a third party uses a mark in a way that infringes upon a trademark owner’s exclusive right and use of a trademark. Often, the third party will use a similar mark in a way that confuses consumers as to the source of the goods and services. For example, a fast… Continue Reading

Ansel Adams and Trademark Fair Use

Posted in Trademark Law

By: Matthew G. Massari Ten years ago, Rick Norsigian visited a garage sale in Fresno, California, and bought a box of sixty-five photographic negatives for $45.  Norsigian claims to have noticed that the negatives resembled Ansel Adams’ Yosemite National Park photos.  He hired an attorney to assemble a team of experts to authenticate the negatives. In… Continue Reading

TTAB Takes Up Question Whether Incontestable Status Lends To Mark’s Strength In Likelihood of Confusion Analysis

Posted in Trademark Law

By: Scott M. Hervey 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… Continue Reading

Nominative Fair Use of a Lexus

Posted in Trademark Law

By: W. Scott Cameron 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… Continue Reading

Trademark Dilution: Visa vs. eVisa

Posted in Trademark Law

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.

Co-existing with Another Trademarked Owner Through a Joint Consent Agreement

Posted in Trademark Law

By: Zachary M. Wadle 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… Continue Reading

College Licensing Front: Former Star Student-Athletes, Recent Court Order Move NCAA Licensing Suit Forward

Posted in Trademark Law

By: Matthew G. Massari 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… Continue Reading

Trademark Dilution and Sex: Victor’s Secrets v. Victoria’s Secrets

Posted in Trademark Law

By: Jeffrey Pietsch Victor’s Secret, a small store in Kentucky selling adult videos and sex toys, lost another battle in a trademark dilution case brought by Victoria’s Secret. Last month, the U.S. Sixth Circuit Court of Appeals affirmed an injunction granted by the District Court that concluded that the trademark Victor’s Secret or Victor’s Little Secret… Continue Reading

Supreme Court Strikes Blow to NFL’s Long-Standing Licensing Venture

Posted in Trademark Law

by Matthew Massari On May 24, 2010, the United States Supreme Court issued a unanimous decision that may ultimately change the way pro sports teams and leagues can license team-owned intellectual property for merchandise and apparel items. The Supreme Court’s ruling in American Needle, Inc. v. National Football League et al., case number 08-66, struck a… Continue Reading

Auto Gold: Trademark Infringement and the “First Sale” Doctrine

Posted in Trademark Law

by James Kachmar On May 6, 2010, the Ninth Circuit issued its opinion in the case Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., et al. in which it decided the issue of whether the sale of marquee license plates bearing Volkswagen badges that Au-Tomotive Gold (“Auto Gold”) had purchased from a Volkswagen dealer constituted… Continue Reading