Trademark Law

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By 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 expanded by Sarah Winchester, the wife of William Winchester of Winchester Repeating Arms Co. fame.  Legend has it that after her husband’s death in 1881, Sarah Winchester became convinced that she and her family were haunted by the ghosts of those who fell to Winchester rifles.  To combat the haunting, Sarah Winchester bought a farmhouse in San Jose and began the unrelenting task of adding rooms and peculiar features to the house, such as stairways that lead to ceilings in an effort to confuse and thwart the ghosts.  Construction at the Winchester mansion continued constantly for 38 years until Sarah’s death in 1922.  By this time the mansion had swelled to 160 rooms.

The mansion was later bought and established as a museum, and is now controlled by Winchester Mystery House LLC (“Winchester”), which owns the “Winchester Mystery House” trademark and an architectural mark comprised of the three dimensional shape of the Winchester mansion.  In 2008, Winchester granted Imagination Design Works the exclusive right to film at the Winchester Mystery House as well as the rights to use Winchester’s marks and copyrights in association with a film about the house.  Defendant Global Asylum (“Global”) thereafter asked Winchester for permission to film at the mansion, at which time Winchester informed Global of its deal with Imagine Design Works.  Nonetheless, Global produced and distributed a film called, “Haunting of Winchester House.”  The film claims to be a true story about a family that moves into the 160 room mansion to act as caretakers and is haunted by Sarah Winchester and other ghosts.  Winchester sued Global for trademark infringement, alleging that Global’s use of the term “Winchester House” and images of a Victorian-style mansion exploited Winchester’s marks and lead the public to believe that the film was sponsored or otherwise sanctioned by Winchester.  Continue Reading What’s In a Name? Trademark Infringement and Artistic Expression

By 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 is founded upon United States Constitution Article III’s requirement of a “case” or “controversy.” The case becomes moot when there are no longer live issues to resolve.

Nike originally sued Already, a competing footwear company, for alleged infringement of Nike’s trademark related to Nike’s Air Force 1® shoe. This infringement claim did not involve the famous Nike “swoosh.” Already filed a counterclaim, contending that the Air Force 1® trademark is invalid. Months after Nike originally sued, it issued a “Covenant Not to Sue” letter to Already and then filed a motion to dismiss its complaint with prejudice and to dismiss Already’s counterclaim without prejudice on the ground that the Covenant Not to Sue had extinguished any existing case or controversy.Continue Reading The Voluntary Cessation Doctrine: An Escape from Troublesome Litigation?

By 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 merchandise, including bodyboards. Body Glove separately had a sponsorship agreement with Bitzer which gave Body Glove the right to use Bitzer’s likeness in certain circumstances. Sport Dimension manufactured bodyboards containing Bitzer’s image and Body Glove’s trademark. Body Glove now faces potential liability for the alleged misappropriation of Bitzer’s likeness due to its use on the bodyboards.

Sports Dimension argues that it entered into an agreement with Bitzer to have Bitzer promote Sport Dimension products as a sales representative, and this agreement gave it the right to use Bitzer’s image on various Sport Dimension products such as bodyboards. Sport Dimension claimed that this agreement included the Body Glove branded bodyboards. Bitzer claimed that the agreement did not grant Sport Dimension that right and that Sport Dimension and Body Glove violated California Civil Code Section 3344. Continue Reading Licensor Can Potentially Be Liable for Licensee’s Misappropriation of Third Party Athlete’s Likeness

By: 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 where a junior user began using a mark for such goods before the senior user where the senior user is able to show it is likely that it will enter into this market.  Courts refer to this as “bridging the gap.” Some courts examine this under the framework of the senior user’s interest in preserving avenues of expansion and entering into related fields.   Other courts look at it as a question of whether it was likely that a senior user would enter into a different product market currently occupied by a junior user.  Either way, in certain cases it can be a crucial factor in determining likelihood of confusion.

The test of trademark infringement under state, federal, and common law is whether there will be a likelihood of confusion.  In the 9th Circuit, to determine whether there is a likelihood of confusion, a court will engage in an analysis of the eight factor test set forth in the seminal case of AMF Inc. v. Sleekcraft Boats.  Those factors are the, (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines, sometimes also referred to as “bridging the gap.” Some Sleekcraft factors, such as the first three, tend to get more attention and are considered more important than the others.   However, in trademark cases dealing with noncompeting goods, courts will look at the “bridging the gap” factor to determine whether it is likely that that trademark owner will expand its line of trademark products to include the type of product being sold by the defendant.Continue Reading Bridging the Gap in Cases of Trademark Infringement

Jack 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 inebriated 1980’s hard rock musicians.  But for Jack Daniels, the distinct black and white label on its Old No. 7 Brand whiskey represents valuable intellectual property which immediately identifies in the minds of consumers the distinct character and flavor of the contents of the bottle to which the label is affixed.  Because even those who do not consume Jack Daniels Sour Mash Whiskey recognize the label of this legendary intoxicating beverage, the Jack Daniels distillery actively confronts unauthorized users of its trademarked label in order to prevent its unauthorized use.

Many attorneys have written cease and desist letters on behalf of their clients, or at least have reviewed such letters after they have been received by clients.  These letters often are written in a fit of righteous indignation over the obvious theft of one’s brand, or the tarnishment and diminution of the value of a mark resulting from the use of a confusingly similar mark by another party.  More often than not, this results in a letter which is more capable of peeling paint off the walls or curling the recipient’s hair than it is able to clearly and concisely communicate the reasons why unauthorized use of a trademark can damage a trademark owner’s intellectual property.  Recently, however, a cease and desist letter written by counsel for Jack Daniels Distillery dispensed with the usual vitriol took a different approach.Continue Reading Jack Daniels Proves That You Can Catch More Flies With Whiskey