Trademark Law

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By Jeff Pietsch

Last week, the Second Circuit affirmed a summary judgment against an advertising consultant in a suit against American Express. The consultant, Stephen Goetz, sued American Express for misappropriation and trademark infringement for the slogan “My Life, My Card” that Goetz claimed to have introduced to American Express. The court affirmed the summary judgment stating that Goetz never actually used the slogan in commerce. Since Goetz never used the slogan in commerce, he had no trademark rights in the mark.

In the summer of 2004, Goetz worked as a consultant for Mez Design. While at Mez Design, Goetz formulated an idea to allow credit card customers to personalize their credit cards by choosing a photograph to be displayed on the face of the card. Goetz then developed software to produce these cards with the idea of selling or licensing the software to credit card companies. After developing the software, Goetz mailed proposals to large credit card companies, including American Express. In these proposals, Goetz prominently displayed the slogan “My Life, My Card.” On July 30, 2004, Goetz mailed a proposal to American Express. Continue Reading American Express Wins Trademark Battle Over “My life. My Card.”

By Jeffrey Pietsch 

Plaintiffs in trademark infringement cases may not be eligible for attorney fees depending on their election of damages. This last December, the Ninth Circuit Court of Appeals examined whether or not electing statutory damages for trademark counterfeiting claims under 15 U.S.C. § 1117(c) precludes the awarding of attorney fees under 15 U.S.C. § 1117(b). The court held that an election for statutory damages does indeed bar the plaintiff from recovering attorney fees in counterfeiting cases.Continue Reading Election of Statutory Damages for Counterfeiting Bars Attorney’s Fees

By James Kachmar

On December 28, 2007, the Ninth Circuit issued its opinion in the case titled Applied Information Sciences Corp. v. eBay, Inc., in which it clarified the plaintiff’s burden in a federally registered trademark infringement action. The Ninth Circuit’s opinion demonstrates the importance of a plaintiff in a trademark infringement claim being prepared to offer evidence of the likelihood of confusion in order to avoid dismissal of its trademark infringement claims. Continue Reading Trademark Infringement and the Importance of Establishing Likelihood of Confusion

By Scott Hervey

In a trademark counterfeiting claim, the successful plaintiff is entitled to recover actual damages or can statutory damages. However, according to a recent decision by the 9th Circuit, depending on the recovery sought, the plaintiff may loose the ability to recover attorney fees.

In K and N Engineering, Inc. v. Bulat  the defendants were selling unauthorized decals bearing the K&N logo on eBay. The defendants created vinyl decals in the shape of plaintiff’s logo and sold 89 sets of those decals for a total of $267. After contacting the defendants, K & N filed a complaint alleging trademark infringement, trademark counterfeiting, and other related claims. K&N also elected to seek statutory damages under 15 USC 1117(c). The district court granted judgment in favor of K&N and awarded it statutory damages of $20,000 under 15 USC 1117(c) and $100,000 in attorney’s fees under 1117(b). The defendant appealed the attorney’s fee award and argued that K&N’s election to receive statutory damages under 15 UCS 1117(c) precludes an award of attorney’s fees under 1117(b).Continue Reading In The 9th Circuit, May Not Be Worth It To Elect Statutory Damages In Trademark Counterfeiting Claim

By Scott Hervey

Just how valuable are baseball statistics? Apparently very valuable. In fact, baseball statistics are so valuable that CBC Distribution and Marketing, which has run the CDM Fantasy Sports leagues since 1992, sued Major League Baseball and challenged its ownership claim over player statistics.   In a matter which rose all the way to the United States Court of Appeals for the 8th Circuit, CBC agued that baseball statistics become historical facts as soon as a game is over, and that it shouldn’t have to pay for the right to use them. Major League Baseball claimed that the right of publicity belonging to major league baseball players makes it illegal for fantasy leagues to commercially exploit the statistical profiles of its players.

Continue Reading Fantasy Sports League Hits It Out Of The Park In Challenging MLB’s Ownership Of Player Statistics