by The United States Court of Appeals for the Second Circuit issued an opinion on April 1, 2010 that provides a compass for companies like eBay to navigate the murky waters of trademark infringement in the e-commerce marketplace. Tiffany & Co. v. eBay Inc., No. 08- 3947 (2d Cir. April 1, 2010)Continue Reading Tiffany v. eBay, Revisited
Is “ML” Confusingly Similar To “ML”?
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Mighty Leaf Tea sought to register the mark “ML” in standard character form to market, not tea, but rather personal care products and skin care products, including skin soap, body wash, foam bath, body lotion, body scrub, bath salts, massage oils, potpourri, and incense. It filed its application with the United States Patent and Trademark Office on July 2, 2007, claiming first use in November of 2004. The USPTO denied the application, however, because it found a likelihood of confusion with the mark “ML MARK LEES,” which had previously been registered for “skin care products, namely skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation, powder and blush.” Continue Reading Is “ML” Confusingly Similar To “ML”?
Establishing Trademark Rights Before Using Your Mark In Commerce
by United States trademark law provides for the filing of trademark applications to protect (or reserve) trademarks which are not yet actually in use in commerce. The law will allow for filing of a trademark application, with the benefit of constructive use and priority, based upon the
Applicant’s “bona fide intent to use” a mark. The question then becomes what constitutes “bona fide intent to use a mark?”Continue Reading Establishing Trademark Rights Before Using Your Mark In Commerce
Tavern on the Green – N.Y.C’s Gain is a $19 Million Loss
By Scott Hervey
The battle over the right to the trademark “Tavern on the Green” is over. In Manhattan earlier this month U.S. District Judge Miriam Cedarbaum ruled in favor of New York City, casting aside the prior concessionaire’s claim that it owned and controlled the famed “Tavern on the Green” trademark. The risk to New York losing were extremely high. Tavern on the Green, LP and LeRoy Adventures Inc. claimed ownership of the iconic brand that had recently been valued at $19 million and were seeking an injunction to prevent the new operator and the city from using the mark. Although the restaurant was the second-highest-grossing independent restaurant in the U.S. in 2008, with sales of $34.2 million. It’s almost certain that the new operator would renegotiate its winning bid if it was not able to use the Tavern on the Green mark, which would mean the city could lose millions of dollars in license fees.Continue Reading Tavern on the Green – N.Y.C’s Gain is a $19 Million Loss
Intel Claims Rights to “Intelligent” Trademarks
By Jeff Pietsch
Last week, a United States District Court for the Eastern District of Missouri denied a motion by Intel to dismiss a declaratory judgment suit brought by Express Scripts Inc. Since last February, Express Scripts has been marketing some of its health care and pharmaceutical consulting services under the trademark “Intellact.” Shortly thereafter, Express Scripts received a cease and desist letter from Intel claiming that Express Scripts’ “Intellact” trademark infringed on Intel’s trademark rights. Intel specifically stated that the “Intellact” trademark would likely deceive or confuse consumers as to the source of the goods, namely that consumers would believe “Intellact” was affiliated with Intel. According to the suit filed by Express Scripts for declaratory judgment, Intel claims that it owns “all rights to names that contain the root of the word ‘intelligent.’” This article will examine trademark infringement in light of Express Scripts’ request for declaratory judgment.Continue Reading Intel Claims Rights to “Intelligent” Trademarks