SDNY Asked To Explore Functionality of Sex Toys In Trade Dress Case

cotr plug

Plaintiff has sold the b-Vibe Rimming Plug device since the summer of 2017. It alleges that its plug, the remote control, the charger and the case are all “uniquely designed” and it claims trade dress therein (See exhibit A below). Defendant has offered for sale the XR Rimmer since January 8. Plaintiff alleges that defendant’s products infringes its trade dress in the plug, charger, remote and case (See exhibit B). Plaintiff has field for design patent protection as well.

Two points. Plaintiff refers to a beaded pattern in para. 29, which pattern seems to be copied by defendant, but not displayed in Exhibit 1.

Second – para. 38 reads “Alternative constructions perform the same adult toy product function as COTR’s trade dress. How would you edit that sentence?

Wikipedia on sex toys.


MJX Asset Manangement v MJX for Exchange Traded Cannabis Stock Fund


mjx asset managnement


Plaintiff MJX Asset Management manages ‘structured investment funds.’ Defendant ETFMG created an exchanged traded fund (ETF) specializing in stocks in the cannabis business, sold under the ticker symbol MJX and promoted at www.mjxetf.com.


Graspability of Knobs Considered In Sixth Circuit Trade Dress (Leapers v Sun Optics)

Leapers manufactures adjustable rifle scopes. A terminated manufacturing partner continued to make scopes similar in appearance to those of Leapers. Leapers sued, alleging infringement of its trade dress in the knurling (or texturing) of the knobs in its scopes. The exhibit to its complaint showing many side-by-sides is reproduced below. This is one of its scopes:

leapers scope

This is one of defendant’s scopes:

sun opitcs scope

Leapers has filed for a federal trademark registration. This is the drawing of the applied-for mark:

lepaers tm drawing

The description of the mark in the application is:

The mark consists of a three-dimensional design configuration that is applied to all relevant cylindrical adjustment surfaces (i.e. the knobs and bells) of an archery or rifle scope or sight. The design is marked by scalloped knurling that is: (1) uniform and proportional in the width of the elevations and depressions on the cylindrical adjustments; and (2) straight, unbroken and running parallel to the cylindrical adjustment surfaces. Only the scalloped design on the cylindrical adjustment surfaces, depicted in solid lines, constitutes the mark; the rest of the product design depicted in broken lines is not part of the mark and serves only to show the position of the mark on the scope or sight.

The application is suspended during the pendency of this suit.

The District Court dismissed at summary judgment, holding that plaintiff would not be able to show that the knurling design was non-functional.

The Sixth Circuit has reversed. A jury could reasonably conclude that the knurling is purely ornamental because plaintiff had introduced testimonies that plaintiff was unaware of any functional benefit to this particular knurling design, and had chosen this pattern for ornamental reasons.

Plaintiff had also shown that its competitors apply knurling that was more effective at making the knobs’ adjustment surfaces more graspable (page 9).

The Sixth Circuit held that the District Court’s discussion of knurling was over-broad, and had erroneously held that any pattern of knurling that provides graspability, must be functional. Pages 11-12

Discovery is resumed, and Plaintiff will now have to show non-functionality, secondary meaning, and the likelihood of confusion.


Delta Sues CheapFlightsFares.com for ‘Impersonation’

Delta sues discount flight aggregator CheapFlightsFares.com, alleging that defendant impersonates Delta (see para 44 of complaint).


Text of LegalForce v LegalZoom Complaint re Unauthorized Practice of Law re Trademark Filing / Doc Prep Services


legalzoom trademarks

LegalForce RAPC is a law firm that is a large filer of trademark applications. It is wholly owned by Raj Abhyanker. LegalForce Inc. is a corporation that offers the TRADEMARKIA search service. LegalZoom offers automated legal document preparation services, including trademark application and preparation and filing. It provides access to an ‘independent network of attorneys’ but it is not a law firm. What LegalZoom is, precisely, is part of the issue in this lawsuit.

LegalForce has sued Legalzoom for antitrust, unfair competition, and related state claims. The gist is that Legalzoom is providing legal services without authorization to do so.

The complaint, below, is 81 pages. Specifics as to what services LegalZoom performs in relation to trademark begins around page 18. In paragraph 51, LegalForce alleges that it placed two ‘trap filings’ with LegalZoom. LegalZoom allegedly provided legal advice ‘by selecting classification and modifying the good and services descriptions’ from LegalZoom’s online form. Furthermore, LegalZoom “provided legal advice as to which trademarks found in the search report may conflict with” the trademarks in question (para. 52, page 19).

Interestingly, LegalForce alleges in para 53 (page 19) that LegalZoom ‘surreptitiously’ does not document such modifications of the customer’s online form, presumably to avoid providing such advice in writing.

Paragraph 54 provides the blow-by-blow of the ‘trap’ filings.

In addition to all this, Paragraph 57 alleges that “LegalZoom does not refund $50 of the collected $275 government fee collected through its website if the non-lawyer staff at LegalZoom determine that the trademark qualifies as a TEAS Plus application with the lower filing fee of $225. (page 26-27). (note – if true – that sounds like a very straightforward class action suit).

ABAJournal coverage here.

Law360 coverage here.


Bill Lee, Non-Trademark Use, and Bonus Video of Eephus Pitch

bill lee sports illustrated

sporting times bill lee

Bill Lee was a left-handed pitcher, most notably for the Red Sox during the 70’s, at a time when left-handers were the target of unthinking prejudice. As a fellow-left-hander, I always had a soft spot for him after his quote that left-handers are the only one in the their right minds (brain hemisphere dominance joke).

Also – Bill Lee threw an eephus pitch which he referred to as his Leephus pitch. This history of the eephus refers to Lee but does not explain the name. (See video of greatest eephus pitches below)

In any event, Bill Lee was ‘colorful,’ which was a euphemism in those days for ‘takes drugs.’ He was known as the Spaceman and posed for Sports Illustrated wearing a spacesuit (See above).

Defendant released a biopic about Lee last year. The ‘he’s becoming famous montage’ depicts a recreation of the spacesuit photo on the cover of a fictitious magazine named SPORTING TIMES (See above). The cover appears for nine seconds in the movie and for two seconds in the trailer.

Owner of SPORTING TIMES registration protested, and defendant removed some but not all usages. Owner sues. Defendant moves to dismiss.

Held: Use of a name to denote a cover in a movie is not trademark use. To my mind there is a little muddiness in the decision in that the court states both that it is not plausible that the audience will perceive the name as a source of origin (which is a prerequisite for the confusion analysis), and that it is not plausible that the audience will perceive the name as indicating affiliation with the source of the film, which in my view, is the confusion analysis itself). Both conclusions seem true.

Also – as an alternative theory, use of the name passes the “Fred and Ginger” artistic relevance test so the use is protected First Amendment speech.

Apparently, Bill Lee lives in Vermont and ran for political office using the slogan “So Far Left, We’re Right.”


Online Service Providers: Register Your DMCA Agent By December 31 or Lose Your Safe Harbor

natucket shipwreck

Pictured above: OSP Losing DMCA Safe Harbor Protection Off Nantucket, William Bradford, ca. 1860, courtesy Met Museum of Art.

At the end of last year, the U.S. Copyright Office implemented a new online registration system for DMCA agent designations which replaces paper designations with online registration. At the end of this year, agent designations made under the old system will no longer be valid.

This affects online service providers, which includes any company that allows users to post or store material on the company’s systems, such as customer comments and reviews. Under the DMCA, online service providers may avoid liability for copyright infringement if they follow the DMCA’s safe harbor provisions.

Accordingly, all online service providers seeking to retain the benefits of the safe harbor protections of the DMCA must make new agent designations by December 31, 2017.

You can create a registered agent account here on the Copyright Office site.

If we can help, please reach out to one of our attorneys.


Amicus Brief by Walter Dellinger in Masterpiece Cakeshop

Amicus Brief by Walter Dellinger, signed by among others, Floyd Abrams and Kathleen Sullivan, in favor of the couple.

Background here.


Whether a Requirement to Bake a Wedding Cake Should be Viewed as a ‘Speech Compulsion’ – amicus brief in Masterpiece Cakeshop (Gay wedding cake case)

Amicus brief by Professors Eugene Volokh and Dale Carpenter in Masterpiece Cakeshop (the gay wedding cake case). Question presented:

Whether a requirement to bake a wedding cake should be viewed as a “speech compulsion” akin to a requirement to write, sing, paint, or photograph.


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