Trademark Law

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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

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

By W. Scott Cameron

The Ninth Circuit issued an interesting ruling last week regarding the ownership and status of a domain name as property. In Office Depot, Inc. v. Zuccarini, ___ F.3d ___, Feb. 26, 2010, the Ninth Circuit ruled that a judgment creditor can levy a domain name of a judgment debtor to satisfy his judgment. This ruling was interesting for a couple of reasons. First was the location where the domain name can be levied, and second the facts of the case make the result somewhat ironic.Continue Reading Need To Enforce A Judgment? Levy A Domain Name.

by Zachary Wadlé

The Heart Attack Grill in Chandler, Arizona (http://www.heartattackgrill.com) is unabashedly unhealthful. The morbidly titled restaurant proclaims its food has “a taste worth dying for,” and offers to feed all patrons 350 pounds and over for free. The menu features single through quadruple ”bypass burgers” (actual quadruple bypass burger pictured above), "flatliner fries" deep fried in pure lard, unfiltered “Lucky Strike” cigarettes, and Jolt Cola, amongst other fulsome fare. Continue Reading “The Heart Attack Grill” Commences Litigation Triage to Save Its Trade Dress

by Scott Hervey

A basic prerequisite for the ownership and registration of a trademark is that the mark is “used in commerce.”  The Trademark Act defines “use in commerce” as the bona fide use of a mark in the ordinary course of trade. Under the Act, a mark is deemed to be used in commerce when: (i) the mark is placed in any manner on goods, their containers, their displays, on the goods’ tags or labels and, in certain cases,  on documents associated with the goods or their sale; and (ii) the goods are sold or transported in interstate commerce.Continue Reading Why Establishing Trademark Use Is Not As Easy As One Would Think