Trademark Law

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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 pomegranate juice blends.  In 2007, Coca-Cola Company (“Coca-Cola”) announced that it would start selling a new product called “Pomegranate Blueberry” and “Pomegranate Blueberry Flavored Blend of 5 Juices.”  Despite its name, only 0.5% of the juice was actually pomegranate/blueberry juice, while the rest of it was apple, grape and raspberry.  Believing that it was losing sales to Coca-Cola’s product, Pom sued Coca-Cola alleging that it violated the false advertising provision of the Lanham Act for making a false or misleading description or representation about its goods.

Coca-Cola moved to dismiss the complaint arguing that plaintiff’s claims were barred because in construing the product’s name and labeling, Pom’s claim “could improperly require the court to interpret and to apply FDA regulations on juice beverage labeling.”  After allowing Pom to file an amended complaint and conduct discovery, the court granted summary judgment to Coca-Cola and held that Pom’s Lanham Act challenge to the product’s name and labeling was barred by the FDCA’s implementing regulations.  Pom appealed this ruling.Continue Reading What’s in a Name?

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 names of their favorite products.  Many may wonder what has happened, and why we are now drinking sparkling wine when we used to enjoy champagne, or why we must settle for brie when we previously enjoyed Roquefort and Camembert.

Although the names have changed, the products probably have not.  Rather, many countries have created a system which recognizes and protects the value of the intellectual property associated with the geographic origin of certain products.  Functioning like a trademark, a geographical indication can represent valuable intellectual property by identifying a particular region as the source of a certain product.  Although not traditionally protected by trademark laws, geographical indications and designations of geographic origin have traditionally been afforded protection by various countries.  Long known for its famous varieties of cheese, wine, and, of course, champagne, France introduced one of the first systems designed to protect geographical indications, known as appellation d’origine contrôlée, or the “AOC.”  The AOC makes it unlawful to manufacture and sell a product under a geographical indication identified by the AOC if the product does not comply with a set of strict criteria, which includes production of AOC-protected products in particular regions.Continue Reading Where Is My Champagne?

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 all brand owners need to consider in all licensing transactions. 

1.         Consider Equity.           Most licensing transactions take the form of a contractual relationship whereby the brand owner (licensor) grants the licensee the right to use a brand for a specific purpose in exchange for a royalty.  Although this arrangement is fine for most instances, in certain circumstances it may be more advantageous to the licensor to take a different approach.   For example, the licensor and licensee can form an entity and then have the entity enter into a license agreement with the licensor, which has certain advantages.  First, if the venture is one that lends itself to possibly being acquired by a third party, by virtue of having an equity position, the licensor can participate in the purchase or any other liquidity event.  Obviously a license agreement could also be structured to protect against a licensor not participating in the sale of the licensee. There are however other good reasons to consider running the transaction through an entity.Continue Reading Six Key Points in Negotiating Brand Licensing Agreements

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 one of the largest skydiving operations in the world.  Defendants operated an internet and telephone based advertising service which made skydiving arrangements for its customers as well as offered coupons for various skydiving centers.  Defendants operated several internet domain names that were strikingly similar to Skydive’s trademark and apparently falsely advertised that it was the owner of several skydiving centers in Arizona.  In addition, Defendants sold skydiving certificates that allegedly misled customers into believing that Skydive Arizona would accept them for their skydiving center.Continue Reading Skydiving and Trademark Infringement Damages

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 was a parody of the ever popular Blackberry device, DPMG based their trademark registration on use of the Crackberry mark in connection with “Web-based marketing services, computer services, online chat rooms, and apparel.”  All four of the Crackberry marks were published for opposition in late 2007. 

Research in Motion (“RIM”), owner of the Blackberry trademark has been embroiled in patent litigation for most of the 21st century and apparently has not had its fill of intellectual property-related litigation.  Not long after DPMG’s applications were published, RIM initiated opposition proceedings challenging all four of the Crackberry marks.  DPMG defended its applications by asserting that Crackberry was a parody of the Blackberry name, and as such would not cause confusion among consumers.  RIM disagreed, claiming that use of the Crackberry marks was likely to cause confusion and ultimately would cause dilution of the Blackberry trademark. Continue Reading The Blackberry Might be Addictive, but Don’t Call it a Crackberry