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 game system. The fact that Nintendo filed a trademark registration application for the upcoming release of a video game is not necessarily newsworthy. The interesting thing about Nintendo’s application is that the mark is a phrase that has become well entrenched in the common lexicon. This raises the question, will the common use of the phrase have an effect on Nintendo’s ability to register the mark?Continue Reading Can It Still Be On Like Donkey Kong.
Trademark Infringement: Factors Considered in Consumer Confusion
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 food restaurant named “Wendi’s” would likely cause confusion with “Wendy’s.” Trademark infringement can occur only when it is likely that consumers will be confused as to the source of the goods. The purpose of this article is to examine the test and factors that courts use to determine if such infringement exists.Continue Reading Trademark Infringement: Factors Considered in Consumer Confusion
Ansel Adams and Trademark Fair Use
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 a July 21, 2010 press release and a July 27, 2010 press conference, Norsigian and his lawyer proclaimed that the team of experts had analyzed the negatives for six months and concluded that the photos were created by iconic American photographer Ansel Adams "beyond a reasonable doubt." The “expert report,” which at the time of this writing is available on the website located at www.ricknorsigian.com, prominently features Ansel Adams’ name and trademark. Claiming that the collection is “the lost work of Ansel Adams” from the 1920s or 1930s, Norsigian is now offering for sale prints and posters made from the images for $1,500 to $7,500. Continue Reading Ansel Adams and Trademark Fair Use
TTAB Takes Up Question Whether Incontestable Status Lends To Mark’s Strength In Likelihood of Confusion Analysis
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 the registrant’s claim of ownership or right to register the mark; (2) there is a pending TTAB or court action involving the mark; or (3) the mark is generic.Continue Reading TTAB Takes Up Question Whether Incontestable Status Lends To Mark’s Strength In Likelihood of Confusion Analysis
Nominative Fair Use of a Lexus
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 “Lexus” in the domain names, and sued for infringement. The district court found infringement after a bench trial, and granted Toyota’s request for an injunction. Specifically, it enjoined the Tabari’s use of the Lexus mark in any domain names. The Tabaris appealed to the Ninth Circuit, which agreed with the Tabaris and reversed. Toyota Motor Sales U.S.A., Inc. v. Tabari (9th Cir. July 8, 2010).Continue Reading Nominative Fair Use of a Lexus