16
Mar/17

About Half Of This About Spuds MacKenzie Is True


Spuds McKenzie was a fictional dog character who appeared in Super Bowl commercials for BUD LIGHT in the late 80’s.  Trading on his reputation as The Original Party Animal, success came easy to Spuds and he reveled in the glamour and adulation.  But soon scandal caught up to him.  First, it was revealed that he was actually a female dog, which apparently was scandalous.  Then Spuds violated Ohio State law for appearing in an advertisement for alcohol, dressed as Santa.  Click the link if you don’t believe me. Then Senator Strom Thurmond argued that Spuds was intended to get children interested in alcohol.

Tired of the bad press, Anheuser Busch exercised the morality clause in its contract and fired Spuds in 1989. Spuds was last seen on an animated episode of Celebrity Rehab with Dr. Drew, appearing with Chester Cheetah, Joe Camel and the polar bear from the Coke commercials.

Plaintiff specializes in ‘re-claiming’ brands that had been, in its view, abandoned by the original owners. Brands that it has revived include AIWA, COLECO and BRIM.  It filed an application for SPUDS MacKENZIE for various pet products in 2013, and obtained a trademark registration.

In February, Bud brought back Spuds in a Super Bowl commercial entitled ‘Ghost Spuds.’  However, as Fitzgerald would say, there are no second acts in American dogs’ lives, and plaintiff has sued.

Sort of wonder about the copyright aspect to this.



13
Mar/17

California: Is Mountain Mike’s Pizza Any Good?


mountain mike buena parkmountain muike berkeley

A little unusual.  Mountain Mike’s Pizza is a pizza chain franchisor with over 150 locations, most of them in California.  Note defendant’s menu (above left) from Buena Park, California, and plaintiff’s (above right).  The signage is allegedly identical. You usually see allegations like this in a terminated franchisee or distributor fact pattern.  There are no allegations of a prior contractual relationship  in the complaint (which is not conclusive that there weren’t any).  I wonder if this that elusive thing – counterfeit services.

Follow up thought: why no motion for preliminary injunction?



13
Mar/17

Please Hold The Line For Information About Unwanted Telephone Calls


CruzSad1

If you were  thinking of suing the next unsolicited telephone caller, embedded below is a complaint under the Telephone Consumer Protection Act.

Information here about the Do Not Call Registry.

Information here about the Telephone Consumer Protection Act.



9
Mar/17

Kion.com: There is No Concept of Default Judgment in the UDRP, So Don’t Try This


KION Material Handling GmbH v. Kion Printing Inc., Case No. D2017-0025

Domain name registrant, Kion Printing of California, appears to have begun using the domain name KION.COM, around 2000 (the name was registered originally in 1996).  Kion seems to have used the name in connection with its printing business up to about 2010.  Presently, the name doesn’t resolve.  Kion’s status as a a California corporation is suspended.  The website is dark.  There’s no indication that Kion exists any longer.  The domain name registration is set to expire in July of this year.

Complainant is a German company that adopted the KION mark for machinery in 2006.  It can’t get in touch with anyone at Respondent.  It brings this UDRP.  Respondent does not, uh, respond.

Held: Complaint denied.  Respondent began use in 2000, before Complainant began using the trademark so Respondent couldn’t have registered in bad faith.  Complainant could not make out its prima facie case.

Practice pointer: Because the dropped-name process is unpredictable, it’s understandable why Complainant would not want to wait until July. Be that as it may, the UDRP (and ACPA) are not means of obtaining domain names where plaintiff’s trademark rights are clearly subsequent to respondent’s registration and use of a domain name, even if respondent has gone dark.  There is no use requirement for a domain name.  Also, there is no concept of default judgment in the UDRP.

 



6
Mar/17

Do you think there are raspberries in a Chocolate Iced Raspberry Filled doughnut?


krispy kreme raspberry filled

 

Krispy Kreme’s Chocolate Iced Raspberry Filled doughnut (pictured above) does not contain actual raspberries.  Maple Ice Glazed and Maple Bar doughnuts do not contain maple syrup or maple sugar.  Glazed blueberry cake doughnut does not contain blueberries but contains ‘imitation blueberries’ that ‘highly resemble actual blueberries due to their round shape and blue color.

Plaintiff alleges that if customers had known the doughnuts didn’t contain any real fruit or maple they wouldn’t have bought them, or at least wouldn’t have paid as much.

Krispy Kreme moves to dismiss, in part on Iqbal  plausibility grounds.

CD Cal, noting that the Iqbal implausibility fact pattern is unusual, denies the Motion to dismiss:

Kreme fails to explain why this is one of those rare situations. It is plausible that Plaintiff will be able to show that reasonable consumers believe that “Raspberry-Filled” doughnuts are filled with raspberries, “Maple Iced Glazed” and “Maple Bar” doughnuts contain maple syrup or maple sugar, and “Glazed Blueberry Cake” doughnuts contain actual blueberries.2 Cf. id. (a factual question existed as to whether a reasonable consumer would believe that a product called “fruit juice snack,” and sold in packaging featuring pictures of fruits, contained fruit juice); Henderson v. Gruma Corp., 2011 U.S. Dist. LEXIS 41077, *33 (C.D. Cal. Apr. 11, 2011) (reasonable consumer could believe that product marketed as “Guacamole Flavored Dip” contained avocado).



28
Feb/17

Complaint by Hospital for Special Surgery re HSS


HSS



22
Feb/17

‘Objective Baselessness’ Standard For Sham Exception For Noerr Pennington Doctrine As Applied To Trademark Demand Letter


mustang

 

Silverhorse Racing makes aftermarket parts for the Ford Mustang GT, including a bezel shifter, which is a bezel that goes around the shifter.  It is not licensed by Ford.  Ford sent a demand letter to Silverhorse’s dealer.  In the resulting trademark suit, Silverhorse brings a counterclaim alleging tortious interference resulting from the demand letter.  Ford alleges that its demand letter is immunized under the Noerr-Pennington doctrine, which protects litigants when ‘petitioning’ the government.  Silverhorse acknowledges that Noerr-Pennington has been extended from antitrust law, to trademark law, and has been extended to cover pre-litigation behavior such as demand letters.  However, Silverhorse argues that because it has, in its opinion, four good defenses to trademark infringement, the demand letter falls under the sham exception to the doctrine.

Held: Silverhorse’s assertions of its defenses did not establish that the demand letter was objectively baseless, which would have been required to establish that the demand letter was a ‘sham.’  Tortious interference claim dismissed.



22
Feb/17

adidas brings prelim against Puma in D Oregon


puma evopower left viewpuma evopower outer view

puma evopower front viewpuma vigor black

 

 



14
Feb/17

Topic Outline For My Trademark Talk Tomorrow at the Federal Bar Council


Here is the topic outline for my “trademarks in review” talk tomorrow night for the IP Committee of the Federal Bar Council. Watch this space for links to reference materials.

I. Failure to function as a mark (I BELIEVE THAT WE WILL WIN)

II. Use in Interstate Commerce (ADD A ZERO)

III. Irreparable Harm/Delay (AT&T THANK YOU)

IV. Nominative Fair Use (CISSP)

V. Scandalous! (SLANTS)

VI. Intermediate Liability (various)

VII. Parody (MY OTHER BAG)

VIII. Damages (OCTANE)

IX. Extraterritoriality/Reputation Without Use (BELMORA)



11
Feb/17

Judge Richard J. Daronco


Judge Richard J. Daronco was our trial advocacy professor in law school (he had been elevated to the District Court the year before and was continuing to teach as an adjunct). We were lucky. Once, one of us was flailing about trying to argue something, and he couldn’t control himself.  He jumped from behind the lectern. “Let me show you how to do it!” He was a pretty reserved guy but now, a switch was flown, and he became the real thing.  He’s jabbing the air, he’s raising his voice, he’s banging the desk.  And pulling it off.  Someone persuading you with their voice and their command.

After some more crescendos and some more majestic arm movements, he realized that we were staring at him in slack-jawed amazement. He came out of it, and he sheepishly said “I’m like the retired Dalmation barking when he hears the fire alarm.” He went back to his lectern.

On May 22, 1988, the father of a pro se litigant whom Judge Daronco had ruled against the previous day, broke into the Judge’s house and shot him to death. Judge Daronco is one of the four federal judges killed in office.

There are news reports that Judge Robart, the Federal Judge who handled the Travel Ban case in the District of Washington, has received death threats.  One ‘pundit’ blithely dismissed this: ‘Judges always receive death threats.’  In fact, Judge Robart, before this case, joked that by becoming a judge, he took a pay cut so that he could receive death threats.

It’s true – judges routinely receive death threats.  There are many disturbed people out there.  There is no reason to add to the number.   The President can use the bully pulpit to vigorously criticize decisions with which he disagrees.  Or maybe ask your attorney general to review the decision and have him lambast it.  Or take the time to write an EO that won’t be stayed 3-0.

But for the president to suggest to the public that they imagine a causal link between a judicial decision and a terror attack – the word ‘irresponsible’ doesn’t seem to cover it. ‘Criminal’ might.

The Westchester County Courthouse was re-named after Judge Daronco.  It’s three blocks from our offices in White Plains.  I can see it from my office.