Trademark Law

Subscribe to Trademark Law via RSS

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 court claiming trademark dilution, false advertising, and various violations of the Lanham Act. Davis’ heirs say Kobayashi changed his first name to Miles, claimed the real Miles Davis appeared to him in a dream and suddenly inspired him to open a restaurant bearing his name. They allege “[Kobayashi is] intentionally free-riding off the goodwill associated with the Miles Davis marks by using them to promote a jazz club entitled Miles’ Cafe in a way that is likely to mislead the public.” Davis’ heirs seek injunctive relief and the destruction of all of the "confusingly similar" Miles Café advertising and merchandise.

 

Davis’ heirs’ complaint relies on trademarks they own for the name “Miles Davis.” But you may ask how can Miles Davis’ heirs have exclusive rights over the “Miles Davis” name? Surely there are other people named Miles Davis that have just as much right to use their name as the jazz legend.  This is the reason why trademarking a personal name is difficult under trademark law. In particular, you have to demonstrate “secondary meaning” to qualify for trademark protection. Miles Davis won eight Grammys. His 1959 album "Kind of Blue" has sold more than 4 million copies. He was inducted into the Rock & Roll Hall of Fame in 2006 and was declared a national treasure’ by the U.S. House of Representatives in 2009. These kind of laurels helped prove the requisite “secondary meaning” of Miles Davis’ name, and allowed his heirs to assert trademark rights against Mr. Kobayashi.

 Continue Reading What’s in a Name?

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 and suggesting that Best Buy was attempting to subjugate geeks everywhere. Newegg.com’s posting generated substantial negative reaction towards Best Buy from other self-professed geeks who took issue with Best Buy’s efforts to claim sole rights to “geek” status (and trademark rights).

In its defense, Best Buy says it is just narrowly protecting its Geek Squad trademark against overzealous competitors like Newegg.com. In fact, federal records show that Best Buy has disputed more than a dozen geek-themed trademarks in the past decade, including Rent a Geek, Geek Rescue and Speak With A Geek. But why does a company like Best Buy risk the negative publicity associated with threatening competitors like Newegg.com with legal action over “geek” terminology? The answer is that companies that don’t aggressively defend trademarks, even against seemingly innocuous intrusions, risk having courts decide that they abandoned the trademarks later when more substantive disputes crop up.Continue Reading Best Buy Gets “Geeked Up” Over Trademark Protection

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 indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”). Continue Reading Trademark Basics: Infringement

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 lessens the uniqueness of the mark. Under the TDRA’s predecessor, the Federal Trademark Dilution Act (“FTDA”) and cases under the FTDA, to pursue a claim for trademark dilution, the offending junior mark had to be “identical or nearly identical” to the mark it was diluting. The new standard represents a more holistic approach, applying factors that focus on, among other things, the degree of similarity between the two marks.Continue Reading Levi’s Legal Department: The Ultimate Pocket Protectors

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 so that subsequent purchasers and creditors are on notice of the creditor’s security interest in the collateral. Rules relating to the creation, attachment, perfection and priority of security interests in personal property, including “general intangibles” which include intellectual property, are governed by Division 9 (Secured Transactions) of the California Uniform Commercial Code (“Article 9”), unless federal law preempts Article 9. In order to determine where to perfect a security interest for each type of intellectual property, and since copyrights, trademarks, and patents are all governed by different statutes and case law, it is important to review and analyze not only Article 9 but also the Copyright Act of 1976, 17 U.S.C. § 101 et. seq. (the “Copyright Act”), the Lanham Trademark Act of 1946, 15 § 1051 et. seq. (the “Lanham Act”), and the Patent Act of 1952, 35 U.S.C. § 101 et. seq. (the “Patent Act”).

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